Despite Consent Agreement, TTAB Affirms Section 2(d) Refusal of NORDIC (Stylized) For Live Plants

Despite a consent agreement between Applicant and the cited Registrant, the Board affirmed a Section 2(d) refusal of the mark NORDIC in the stylized form below, for various live plants [NORDIC disclaimed], finding it likely to cause confusion with the registered mark NORDIC, in standard character form, both for "live plants, namely holly cultivars." In re A-Plant 2000 ApS, Serial No. 79162833 (August 25, 2017) [not precedential] (Opinion by Judge Angela Lykos).

Likelihood of Confusion: The Board found the marks to be similar in sound, appearance, connotation and commercial impression, the goods in part legally identical or closely related, and the channels of trade and classes of consumers the same.

As to the consent agreement, the Board observed that "there is no per se rule that a consent, whatever its terms, will always tip the balance to finding no likelihood of confusion, and it therefore follows that the content of each agreement must be examined." Here the agreement had "multiple failings."

First, the agreement that applicant will not use its mark on “holly cultivars” is not reflected in the broad identification of the application, and even if it were, it would not overcome the highly related nature of the remaining goods in the application. The assertion that applicant will be using its mark for "tough and hardy plants" does not distinguish the goods from registrant's "holly cultivars," which are sometimes marketed as "hardy" plants.

Moreover, there is there is no indication that the parties’ goods are restricted to different markets, trade channels and consumers. While applicant refers to its sophisticated customers, "it seems plausible that the ultimate consumer of both Applicant’s and Registrant’s goods in many instances will be the ordinary consumer who will only exercise ordinary care. No provisions have been made to diminish the likelihood of confusion for these consumers."

Applicant’s promise “to only use the registration that extends from the ‘833 application with the distinctive, stylized characters” does nothing to distinguish the marks as they may appear to prospective consumers. The agreement lacks a corresponding provision restricting Registrant’s depiction of its mark, which is highly similar to Applicant’s applied-for mark.

Finally, although the agreement provides for mutual notification in the event of consumer confusion, there are no specific measures that Applicant and Registrant agree to take steps to prevent consumer confusion: e.g., promises to use distinctly different packaging, labeling, or signs, etc., in association with their marks.

The subject application is based on an international registration, and Applicant has yet to use its mark in U.S. interstate commerce. Consequently, the agreement lacks the type of provision typically found in consent agreements, indicating that “each party had done business for many years under their present names, that each had been aware of the other’s use of its name as at present, and neither knew of any instances of customers’ confusion, mistake, or deception” in U.S. interstate commerce.

In sum, the Board found that Registrant’s consent is outweighed by the other relevant du Pont factors. Because confusion remains likely, the Board affirmed the refusal under Section 2(d).

Geographical Descriptiveness:The Board also affirmed a refusal to register Applicant's mark under Section 2(e)(2) on the ground that the mark is primarily merely geographically descriptive of the goods. Applicant disclaimed the word NORDIC, but the Board found that the stylization of the mark was not sufficient to render the mark inherently distinctive as a whole: "[T]he impression conveyed by Applicant’s mark is not separate from the disclaimed wording in the mark. Accordingly, we find that the stylization element does not render Applicant’s mark inherently distinctive as a whole, and therefore affirm the Examining Attorney’s refusal to register on this ground."

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TTABlog comment: A rather feeble attempt at a coexistence agreement, don't  you think? When you start off with highly similar marks and overlapping goods, you may have a problem crafting a coexistence agreement that will pass muster.

Text Copyright John L. Welch 2017.

TTAB Test: Is BIG KAHUNA DONUTS Confusable With BIG KAHUNA CLIFF'S HAWAIIAN COFFEE?

Okay, are you ready for another test? No? Too TTABad! The USPTO refused registration of the mark BIG KAHUNA DONUTS for "donuts" and "retail store services featuring donuts" [DONUTS disclaimed], finding a likelihood of confusion with the registered mark BIG KAHUNA CLIFF'S HAWAIIAN COFFEE for "coffee" and "on-line retail store services featuring coffee; retail store services featuring coffee" [HAWAIIAN COFFEE disclaimed]. Applicant argued on appeal that "Big Kahuna" is a weak formative in view of its widespread use for food services. How do you think this came out? In re Big Kahuna Donuts, Serial No. 86774996 (August 28, 2017) [not precedential] (Opinion by Judge Anthony R. Masiello).

The Goods and Services: The Examining Attorney maintained that donuts and coffee are complementary food items, submitting third-party registrations, media articles, and Internet evidence showing donuts and coffee offered under the same mark (Dunkin' Donuts, Starbucks, and Krispy Kreme). The Board found this complementary relationship to be relevant to the Section 2(d) analysis, although the Board perceptively noted that donuts and coffee are different in nature, one being a baked or fried food, the other a beverage.

Similar evidence established the stores that sell donuts are commercially related, for Section 2(d) purposes, to stores that sell coffee, although there may be some distinction between stores that specialize in coffee (Starbucks) but also sell donuts, and those that specialize in donuts (Doughnut Vault) but also sell coffee.

The Marks: Applicant argued that the cited mark refers to an individual (Cliff), but its mark does not refer to a person. The Board agreed that CLIFF'S is the "most specific source-identifying component" of the cited mark, and it also agreed that applicant' mark gives the impression that applicant's DONUTS are "great, preeminent, and perhaps large." The term HAWAIIAN COFFEE suggests a store that specializes in coffee, while DONUTS indicates a donut shop or bakery.

As to applicant's evidence of third-party uses of BIG KAHUNA in the names of restaurants, the Board was not impressed, since the evidence did not show that BIG KAHUNA is weak for donut shops or coffee shops. However, it did show, together with the dictionary definitions of record, that BIG KAHUNA has a laudatory suggestiveness. Consequently, the cited mark "is not entitled to such a broad scope of protection that will necessarily bar the registration of every mark comprising, in whole or in part, the expression BIG KAHUNA."

Decision: Noting that this is a "very close case," the Board found the marks to be sufficiently different to coexist, without creating a likelihood of confusion.

And so the Board reversed the refusal to register.

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TTABlog comment: How did you do? I think the Board got it right, but what do I know?

Text Copyright John L. Welch 2017.

TTAB Test: Is GLOBAL GROWERS Merely Descriptive of Frozen Fruits and Vegetables?

The USPTO refused registration of the mark GLOBAL GROWERS under Section 2(e)(1), finding it merely descriptive of "Frozen fruits; Frozen vegetables." The Examining Attorney maintained that "GLOBAL" is descriptive because the goods are offered on an international market," and "GROWERS" is descriptive because it indicates that the goods come from persons or entities that grow the fruits and vegetables. How do you think this came out? In re Global Growers Foods Company Limited, Serial No. 87036671 (August 24, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Examining Attorney also submitted statements from applicant's website: "We are growers, sourcing, and logistics professionals dedicated to delivering more than 100 items from the bounties of the earth to every continent." "Global Growers has forged together the best farmers from the 7 continents." [Sounds painful - ed.].

The Board observed that "GLOBAL" may convey some meaning about applicant - that it is an international company - but it says nothing about any ingredient, quality, characteristic, feature, function, purpose or use of the goods. Similarly, "GROWERS" suggests a person, company or place that grows the fruits and vegetables, but it does not convey any information about the goods.

Other evidence submitted by the Examining Attorney showed use of "global," "grower," and "global grower" as descriptions of the producer of fruits and vegetables, not of the fruits and vegetables themselves.

Rather, a multistage reasoning process, or the utilization of imagination, thought or perception, is required to connect the international company/person who grow the fruits and vegetables with the end product (frozen fruits and vegetables). Based thereon, we find the mark GLOBAL GROWERS to be suggestive rather than descriptive.

And so the Board reversed the refusal.

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TTABlog comment: I'll bet you got this one right!

Text Copyright John L. Welch 2017.

TTAB Test: Is "FERET" Primarily Merely a Surname?

The USPTO refused registration of the mark FERET under Section 2(e)(4), finding it to be primarily merely a surname when use in connection with "Precious metals and their alloys and goods made from these materials included in this class, namely, statues and statuettes of precious metal and their alloys, boxes of precious metal; holiday ornaments of  precious metal; precious knobs and pulls; timepieces and chronometric instruments; watch cases; watch straps; watch dials; chronometers; watches; jewelry watches; watches made of precious metals or coated  therewith; wristwatches; watch movements; movements for watches; watch parts." Applicant argued that FERET is a rare surname with limited public exposure or notoriety, and that no person associated with applicant has that surname, while the Examining Attorney maintained that even rare surnames may be unregistrable. How do you think this came out? In re Carlo Ferrara SA, Serial No. 79162222 (August 25, 2017) [not precedential] (Opinion by Judge Linda A. Kuczma).

The Board once again considered the factors set forth in In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995).

Contextual clues: The Examining Attorney conceded that there was no evidence that anyone connected to Applicant has the surname FERET, and so this factor was neutral.

Non-surname meaning: The Board found that FERET has no ordinary language meaning, though it appears as an acronym in several specialized fields. However, there was no evidence that those acronyms had any widespread recognition.

Rareness: The surname FERET appears 375 times in the LEXIS/NEXIS surname database, and it ranks as the 54,269th most common surname in the U.S.  The Examining Attorney contended that even the most common surname would represent only a small fraction of a surname database. And even a rare surname may be unregistrable if it has been broadly exposed to the public. The Examining Attorney pointed to a handful of individuals with the surname FERET, but none of them had any notoriety. Applicant argued that "There are only ordinary references to one of the 300-400 people in the U.S. that has this name, such as a person’s online professional biography, a film credit, or a high school sports story." The Board was not impressed with the USPTO's evidence:

Although the record shows that FERET is a surname having 375 listings, there is very little evidence of media attention or publicity of persons having that surname. Moreover, there is no showing of any widely recognized public personalities with that surname. Thus, FERET has not been shown to have broad public exposure.

Structure and Pronunciation: The Examining Attorney pointed to surnames that share a prefix or suffix with FERET, such as FORET, FERRETTE, and FERRAT, but the Board pooh-poohed that effort: "without evidence of the uniqueness or recognition of such prefixes or suffixes as part of surnames, there is little association or correlation between those surnames and Applicant’s mark, rendering such evidence to be of little value."

Applicant contended that the term FERET is “most structurally and phonetically similar” to the word “ferret,” the name of an animal. The Examining Attorney argued that FERET would be pronounced with a long "A," like Monet or valet, but the Board pointed out that there is no correct spelling as a correct or proper spelling of a trademark. [How about "Black Cat" for firecrackers? - ed.]. Noting that this factor is highly subjective, the Board found the evidence insufficient to support a conclusion that FERET has a structure and pronunciation similar to that of other purportedly common surnames.

Conclusion:

Based on the evidentiary record showing that FERET has limited public exposure or notoriety as a surname in the social media references cited by the Examining Attorney and no contextual clues regarding any limited surname significance in the way Applicant actually uses the term, the record falls short of showing by substantial evidence that consumers would be likely to perceive FERET as primarily merely a surname.

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TTABlog comment: If a surname clears the first hurdle  - i.e., no one associated with applicant has that surname - then the notoriety factor now seems to be dispositive in these 2(e)(4) cases.

Text Copyright John L. Welch 2017.

TTAB Affirms Refusal For Failure to Comply with Rule 2.61 Information Request

The Board affirmed a refusal to register the mark GAUGEWEAR, in standard character form, for biometric data measurement devices (class 9) and various clothing items (class 25), because applicant failed to comply with the Examining Attorney Anne M. Farrell's request for information under Rule 2.61. Applicant provided a link to its website and identified a relevant utility patent, but that was not sufficient. In re gaugewear, Inc., Serial No. 86569473 (August 21, 2017) [not precedential] (Opinion by Judge Peter W. Cataldo).

The examining attorney requested product information in the nature of fact sheets, instruction manuals, advertisements, and other documentation regarding the goods, in order to "make clear how the goods operate, their salient features, and their prospective customers and channels of trade." Applicant referred the examining attorney to its website and suggested that she peruse a certain utility patent, a copy of which was not provided.

The examining attorney then repeated the requirement for information, stating that merely pointing to a website was not a proper response. The applicant provided nothing further.

On appeal, applicant argued that the examining attorney had in fact downloaded some material from the website, and so there was no need to provide more information. As to the patent, applicant pointed out that it did not just refer to a website, but to a specific patent number.

The Board found the examining attorney's request for information to be proper, particularly in a case such as this where the application is based on intent-to-use. Applicant was afforded three opportunities to comply and simply failed to do so.

The Board reiterated that providing a hyperlink to Internet material is not sufficient to make the contents of a website of record. Moreover, here there was no indication of the extent of the information on the website or what part of it the examining attorney downloaded. As to the patent, the USPTO has no duty to search its records for a referenced patent or take judicial notice thereof when applicant could easily have provided a copy. To be sure, the Board does not take judicial notice of USPTO records.

The information required by the Examining Attorney was “reasonably necessary to the proper examination of the application.” Trademark Rule 2.61(b). Product information from Applicant’s website and patent documentation relating to the goods clearly assist the Examining Attorney in determining, e.g., whether GAUGEWEAR or the terms GAUGE and WEAR comprising the mark are merely descriptive of some or all of the recited goods.

The Board observed that it would have been a simple matter for applicant to supply the requested information. The failure to comply with the request required affirmance of the refusal to register.

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TTABlog comment: What a waste of time and money!

Text Copyright John L. Welch 2017.

Precedential No. 24: Yellow Cheerios Box Lacks Acquired Distinctiveness, Fails to Function as a Trademark

Affirming a refusal to register the color yellow appearing on packaging for "toroidal-shaped, oat-based breakfast cereal," the TTAB found that the alleged mark lacks acquired distinctiveness and therefore fails to function as a trademark. Although Applicant General Mills submitted voluminous evidence to support its claim of acquired distinctiveness, the Board was convinced by proof of third-party use of yellow packaging for cereal products, that consumers "do not perceive the color yellow as having source significance for the goods." In re General Mills IP Holdings II, LLC, 124 USPQ2d 1016 (TTAB 2017) [precedential] (Opinon by Judge Anthony R. Masiello).

There is no doubt that a single color applied to a product or its packaging may function as a trademark and be entitled to registration under the Trademark Act. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995). However, such a color can never be inherently distinctive as a source indicator. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex at 1162-3).

Moreover, "[b[y their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character." In re Owens-Corning Fiberglas Corp., 227 USPQ 417, 424 (Fed. Cir. 1985)

In light of the evidence of staggering promotional and sales revenues, the Board recognized that General Mills "has worked assiduously to create an association between the color yellow and its 'regular' CHEERIOS brand cereal." The Board observed, however, that "no matter how hard a company attempts to make an inherently nondistinctive word or symbol serve as a unique source identifier, it is proof of results—that consumers so perceive the purported mark—that is the touchstone of our inquiry into acquired distinctiveness. E.g., Plastilite Corp. v. Kassnar Imps., 508 F.2d 824, 184 USPQ 348, 350 (CCPA 1975)."

Examining Attorney Tasneem Hussain based the refusal to register primarily on a lack of substantially exclusive use of the color yellow by General Mills. The evidence showed that General Mills "is not alone in offering oat-based cereal, or even toroidal-shaped, oat-based cereal, in a yellow package." Moreover, the presence in the market of yellow-packaged cereals from various sources – even cereals that are not made of oats or are not toroidal in shape – further undermined any possible source significance for the color yellow.

When customers see a color appearing on products from many different sources, they are less likely to expect the color to point to a single source of goods. Instead, customers are likely to perceive the color on packages as a device designed to make the packages attractive and eye-catching. This is especially true of a primary color, like yellow, which is used by many merchants and is not 'a color that in context seems unusual.' Qualitex, 34 USPQ2d at 1162-63.

General Mills pointed to its survey evidence purporting to show that 48.3% of respondents associated the yellow box with the CHEERIOS brand. The Board, however, saw a hole in the survey, namely that the wording of the survey questions suggested that the respondents could name only one brand: after being shown a drawing of the applied-for mark, the respondents were asked, "If you think you know, what brand of cereal comes in this box?"

Because General Mills failed to demonstrate that the yellow background has acquired distinctiveness under Section 2(f), the Board found that the applied-for mark fails to function as a trademark for applicant's cereal.

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TTABlog comment: What do you think? Did General Mills recognize the problem of different types of cereals using a yellow background, which caused it to identify goods as toroidal and oat-based?

Text Copyright John L. Welch 2017.

Divided TTAB Panel Rejects Website Specimen of Use for Fabric

A divided Board panel affirmed a refusal to register the mark CASALANA for "knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories," on the ground that applicant failed to submit a proper specimen of use. Applicant contended that its website qualified as a display associated with the goods, but the panel majority disagreed. In re Siny Corp., Serial No. 86754400 (August 17, 2017) [not precedential] (Majority opinion by Judge Anthony R. Masiello).

Applicant's webpage depicts the CASALANA mark adjacent one of eleven choices of fabrics, and it includes an explanation of the nature of applicant's goods. It also provides an informational link and, near the bottom of the webpage under the heading "For sales information" a phone number and an email address. The Board assumed that the phone number would connect a prospective customer with sales personnel.

The panel majority framed the question thusly: "whether the purported point of sale display provides the potential purchaser with the information normally associated with ordering products of that kind." In re Anpath Group, Inc. 95 USPQ2d 1377, 1381  (TTAB 2010).

The Board cited In re U.S. Tsubaki, Inc., 109 USPQ2d 2002 (TTAB 2014), for the proposition that "a simple invitation to call applicant to get information - even to get quotes for placing orders - does not provide a means for ordering the product." Only after obtaining such information could the purchaser place an order.

Here, the panel majority found it implausible that the business representative of a manufacturer would be prepared to place an order on the basis of the information on the specimen of use. "It would be impossible for a customer to make an informed decision to choose the CASALAN brand from among the other goods offered on the webpage." Moreover, there was no pricing information, or information regarding weight and thickness, or the minimum order size, or how a purchaser would pay, or how the goods would be shipped. The majority found it unlikely that customers would be prepared to buy the goods without inspecting a sample. In short, customers would need a great deal more information in order to make a purchasing decision.

The majority distinguished In re Valenite, Inc., 84 USPQ2d 1346 (TTAB 2007), where substantial technical information was provided at the website and where a telephone call was the final step in the purchasing process. There the applicant provided a verified statement that orders were indeed placed over the phone. [The majority noted that an applicant would be "well advised" to provide the Office with additional information on how purchases are actually made through a website].

Judge Angela Lykos dissented, urging that a more flexible approach be taken in light of the "increasing prevalence in the marketplace of direct-to-consumer e-commerce sites." In her view, sufficient information was provided, as well as a mechanism for placing an order. In this situation, one would expect prices to be negotiable depending on the quantity and quality of the fabric.

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TTABlog comment: I agree with the dissent. Let's get real here.

Text Copyright John L. Welch 2017.

Precedential No. 23: MEDICAL EXTRUSION TECHNOLOGIES Lacks Aquired Distinctiveness, Says TTAB

In an enervating, yet precedential decision, the Board sustained an opposition to registration of the mark MEDICAL EXTRUSION TECHNOLOGIES, in standard character form, for polyurethanes for use in the manufacture of medical devices, finding applicant's evidence inadequate to support its Section 2(f) claim of acquired distinctiveness for this highly descriptive term. Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc., 123 USPQ2d 1844 (TTAB 2017) [precedential] (Opinion by Judge Jeffrey T. Quinn).

By seeking registration under Section 2(f) of the Trademark Act, applicant conceded that its mark was not inherently distinctive. An applicant who resorts to Section 2(f) bears the ultimate burden to prove by a preponderance of the evidence that the applied-for mark has acquired distinctiveness. Moreover, "the applicant’s burden of showing acquired distinctiveness increases with the level of descriptiveness; a more descriptive term requires more evidence of secondary meaning." In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005).

Degree of Descriptiveness: Dictionary definitions of the constituent words, numerous examples of third-party use of wording such as "medical extrusion," "extrusion technolog(y/ies)," "medical extrusion industry" and "medical extrusion technolog(y/ies)"in connection with similar goods, applicant's own use of the phrase, and applicant's testimony regarding the descriptiveness of the phrase, convinced the Board that the applied-for mark is highly descriptive of applicant's goods. "Clearly, no thought or imagination is required to immediately understand that medical extrusion products sold under the designation MEDICAL EXTRUSION TECHNOLOGIES are just that, namely, medical extrusion goods produced by using medical extrusion technologies (or methods or processes)."

Acquired Distinctiveness: The Examining Attorney accepted applicant’s claim of acquired distinctiveness based solely on a declaration of continuous use of the purported mark in commerce since 1990. Of course "the Board is not bound by the Examining Attorney’s decision to allow publication of the mark."

The Board found that the "nature and number of third-party descriptive uses in the record" demonstrate that applicant use has not been "substantially exclusive" as is required for a Section 2(f) showing. "Non-exclusive use presents a serious problem for Applicant in obtaining trademark rights in a designation that is not inherently distinctive, because it interferes with the relevant public’s perception of the designation as an indicator of a single source."

Applicant claimed that it is unaware of anyone else in the industry using the specific wording MEDICAL EXTRUSION TECHNOLOGIES as a trademark. The Board pointed out, however, that even if applicant were the first and only user of MEDICAL EXTRUSION TECHNOLOGIES as a purported mark in the industry, that would not overcome the highly descriptive nature of the wording nor suffice to establish acquired distinctiveness in this case.

The fact that this wording has been used repeatedly by unrelated entities in the industry is inconsistent with the requirement of acquired distinctiveness that the word indicate a single source. Given the number of third-party uses, consumers are likely to perceive the word “medical extrusion technologies” when used for medical extrusion goods, not as a trademark for one company, but rather as common terminology used by different entities in the industry to describe those goods.

The Board concluded that Applicant’s use of MEDICAL EXTRUSION TECHNOLOGIES has not been substantially exclusive as required under Section 2(f).

The Board noted that the record was devoid of any sales figures whatsoever, and that applicant's promotional expenditures are "hardly impressive, falling far below levels deemed persuasive in other cases involving the acquired distinctiveness of marks that may be highly descriptive." There was no evidence regarding the number of visitors to applicant’s trade show booths or to its website, nor regarding the circulation of the trade magazines in which applicant advertised. "In sum, the record falls far short of establishing that Applicant’s promotional efforts have borne fruit with respect to acquired distinctiveness."

Given that the proposed mark is highly descriptive, much more evidence, especially in the quantity of direct evidence from the relevant purchasing public, than what Applicant has submitted would be necessary to show that the designation MEDICAL EXTRUSION TECHNOLOGIES has become distinctive for Applicant’s medical extrusion goods.

And so the Board sustained the opposition.

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TTABlog comment: Why is this precedential? BTW, I always try to use the term "acquired distinctiveness" rather than  "secondary meaning" because the latter applies only to word marks. How can a design mark or a sound mark have "meaning," let alone "secondary" meaning?

Postscript: In April 2021, pursuant to a settlement agreement between the parties, the U.S. District Court for the Southern District of California issued an order reversing the TTAB decision. (Civil Action No. 3:17-cv-02150-AJB (MSB)

Text Copyright John L. Welch 2017.

Precedential No. 22: Breast Cast Design Fails to Function as a Mark for Cancer Awareness Services

The TTAB affirmed three refusals to register the design shown below, comprising a "three-dimensional cylindrical cast of female breasts and torso," for associational, educational, and fund-raising services related to breast cancer awareness, finding that (1) applicant's specimens of use fail to show the applied-for-mark in use with the recited services, (2) the design fails to function as a service mark, and (3) assuming arguendo that the first two refusals were overcome, it constitutes nondistinctive trade dress that lacks acquired distinctiveness. In re Keep A Breast Foundation, 123 USPQ2d 1869 (TTAB 2017) [precedential] (Opinion by Judge Peter W. Cataldo).

Specimens of Use: "A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage." In re DSM Pharm., Inc., 87 USPQ2d 1623, 1624 (TTAB 2008). Applicant's original specimen of use, shown immediately below, gave no indication of the services involved.

Its first substitute specimen, shown in part immediately below, does not display the breast cast depicted in the application drawing, but rather six different breast casts. Applicant's own promotional materials state that these breast casts are "one-of-a-kind plaster forms of the female torso ... given to the castee to document a specific point in their breast cancer journey." The casts are individual works that lack uniformity and thus they fail to depict a "substantially exact representation of the mark." See Rule 2.51.

Furthermore, although this specimen refers to the services, it appears to identify the services by the more traditional word mark "The Keep A Breast Foundation:" i.e., the presence of other readily perceived source identifiers "makes it impossible to conclude that the public would perceive the casts themselves as source identifiers."

A second substitute specimen (above) displays five breast casts of different sizes and shapes on a table with other paraphernalia. Again there is no mention of or association with the recited services. This specimen neither depicts the design shown in the application drawing, nor does it associate the supposed mark with any services such that the breast casts would be perceived as a source indicator.

And so the Board affirmed the refusal on the ground that applicant's specimens fail to show use of the applied-for designation as a source indicator for the recited services.

Failure to Function: The USPTO is statutorily constrained, by Section 1, 2, 3, and 45 of the Trademark Act, "to register matter on the Principal Register only if its functions as a mark." The critical determination is how the proposed mark is perceived by relevant consumers.

The Board agreed with Examining Attorney Marlene Bell that applicant's proposed mark fails to function as a service mark. The specimens of use fail to associate the design with the services, "thus making it unlikely that the relevant consumers will perceive the casts as indicating source."

If anything, the applied-for mark appears to be created as part of the educational and associational services offered under the designation “Keep A Breast Foundation Treasured Chest Program.” As stated in Applicant’s pamphlet, "The Keep A Breast Foundation’s Treasured Chest Program strives to gives women that are newly diagnosed with breast cancer a unique opportunity to document their body and their feelings at a specific time in their treatment by turning their casted torso into a beautiful piece of art."

The evidence also showed that other charitable organizations similarly make breast/torso casts as part of their support services. The Board concluded that the cast will be perceived as part of applicant's services rather than as a source indicator.

Acquired Distinctiveness: If a term or design fails to function as a mark, no amount of evidence of acquired distinctiveness can overcome such a refusal. [Seems like a nonsequitur - ed.]. Nonetheless, for the sake of completeness, and assuming arguendo that the design serves as a source indicator and that the specimens of use are acceptable, the Board considered applicant's Section 2(f) claim.

Given that the alleged mark is not Applicant’s main identifier (Keep A Breast Foundation is), and given that it is in the form of a product, which consumers do not tend to view as marks but as what they are (products), we find Applicant’s use since April 2000 is insufficient, in itself, to demonstrate that consumers perceive the breast/torso cast as an indicator of source.

Applicant pointed to more than $1 million dollars in donations and $100,000 spent on advertising for its services, but that evidence was of minimal probative value because applicant failed to indicate what amounts were raised and spent in connection with the mark at issue. Applicant displays its breast/torso casts along with other potential source identifiers, and promotes its services under the name "Treasured Chest Program." Thus the Board could not infer that, from applicant's advertising, consumers will infer that the breast/torso cast is a source identifier.

Applicant provided declarations attesting that the 1,500 breast casts it has developed include those of numerous celebrities, musicians, and professional athletes, and that media outlets have published stories about "The Keep A Breast Foundation's Breast Casts and the organization's services associated with the Breast Cast campaigns." But there was no indication that the breast cast was displayed or discussed as a source indicator, for example, by way of "look for" advertising. Moreover, the fact that the breast casts differ from one another make it more unlikely that applicant could show that such individualized casts serve as a mark.

In addition, Section 2(f) requires that an applicant's use of a proposed mark be "substantially exclusive." The fact that third parties offer breast casting as part of breast cancer awareness programs "strongly undercuts Applicant's claim that it is making substantially exclusive use of its proposed breast cast configuration as a service mark or trade dress." Therefore, applicant's claim of acquired distinctiveness fails on that basis also.

Conclusion: The Board affirmed the three refusals to register.

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TTABlog comment: WYHA? Is this like a phantom mark? Is it an attempt to register an idea (breast casting) as a service mark? Applicant called it "akin to packaging," but isn't it some "tertium quid" that is neither product shape nor packaging?

Text Copyright John L. Welch 2017.

TTAB Test: Is UHAI (Swahili) Confusable with LIFE FOR HAIR & Design for Hair Care Products?

The USPTO refused registration of the mark UHAI for "Hair care products, namely, shampoo, conditioner, oil, gel, foam, spray, styling custard, hair regrowth kits comprised primarily non-medicated exfoliating scrub, scalp serum and temple balm for promoting hair growth," finding the mark likely to cause confusion with the registered mark LIFE FOR HAIR & Design (shown below), for "hair care product, namely, shampoo used to strengthen the hair [HAIR disclaimed]." Applicant contended that the Examining Attorney failed to prove that Swahili is a "common modern" language in this country, and thus failed to show that customers are likely to be confused as to the source of Applicant’s goods under Section 2(d). How do you think this came out? In re S Squared Ventures, LLC, Serial No. 86813357 (August 16, 2017) [not precedential] (Opinion by Judge Linda A. Kuczma).

Since the goods overlap, the Board presumed that they travel through the same, normal channels of trade to the same classes of customers.

Turning to the marks, Applicant translated its mark from the Swahili to English as the word "life." Under the doctrine of foreign equivalents, a mark in a foreign language may be found confusingly similar to a mark that is its English equivalent. The doctrine applies when an ordinary American purchaser would "stop and translate" the foreign term into its English equivalent. The ordinary American purchaser includes all purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.

Applicant did not dispute that the Swahili language is spoken by people in the United States, but it argued that the USPTO's evidence did not show that Swahili is a "common modern" language in this country such that consumers are likely to be confused.

The Examining Attorney relied on evidence that Swahili, also called Kiswahili, is a "lingua franca" and is the primary or secondary language of approximately 80-100 million people around the world. Major universities in this United States offer classes and programs covering the Swahili language, and several have student Swahili clubs. Numerous media excerpts referred to Swahili broadcasts, religious gatherings, cultural awareness, and education.

Nonetheless, applicant, pointing to a survey showing that 88,685 individuals speak Swahili at home, contended that it is unlikely that purchasers would stop and translate the mark. [Seems like a nonsequitur to me - ed.]. The Board pointed out, however, that people may speak English at home but still may have studied another language in school; others may immigrate to a home where English is spoken. None of these people would be included in applicant's data.

The Board concluded that Swahili is not dead, obscure, or unusual. It is a common modern language for purposes of applying the doctrine of equivalents.

Because UHAI directly translates to the word "life" in English, it is similar to Registrant's mark, and this factor favors a likelihood of confusion.

The absence of "FOR HAIR" in applicant's mark does not create a separate and distinguishable commercial impression from Registrant's mark, since that phrase is descriptive of the goods. Moreover, that wording is displayed in smaller and less stylized letters.

The Board noted that applicant's standard character mark could be displayed in the same manner as the registered mark. The leaf design in the registrant mark is minimal and does not distinguish the marks.

And so the Board affirmed the refusal to register.

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TTABlog comment: When I first saw the registered mark, I thought it featured the letters LHE.

Text Copyright John L. Welch 2017.

TTAB Test: Is BON BON & Design Confusable With BON O BON for Candy?

Arcor S.A.I.C. opposed an application to register the mark BON BON in the design form shown below, for "Confectionery made of sugar, namely, candy, sweets, caramels" [BON BON disclaimed] in view of its registered mark BON O BON in standard character form, for "Chocolates, pastries filled with sweet fillings, alfojores, and wafers." Applicant "ROT FRONT" argued that consumers will distinguish the marks due to the "extreme weakness of the term 'BON BON.'" How do you think this came out? Arcor S.A.I.C. v. "ROT FRONT" Open-Type Joint Stock Co., Opposition No. 91222153 (August 15, 2017) [not precedential]. (Opinion by Judge Peter W. Cataldo).

After the Board denied cross-motions for summary judgment, the parties agreed to proceed under the ACR regime, streamlining procedures and stipulating to certain facts: that the goods are closely related and travel through similar channels of trade. Applicant introduced dictionary definitions of "bon bon" as candy, third-party registrations for candy with BON BON disclaimed, and screenshots of various websites advertising candies identified as "bonbons" or "bon bons." Opposer submitted third-party registrations and website pages showing the use of purple backgrounds in packaging and advertisements for candy.

The Board had no doubt that "bonbon" or "bon bon" is, at best, highly descriptive of the involved goods, if not generic. Thus the wording "BON BON" in applicant's mark has little, if any, source-identifying significance. The evidence showed that the highly descriptive term BON BON, combined with a purple background, is "quite weak."

Opposer's mark BON O BON has no recognized meaning, other than a suggestion of "good." Applicant pointed to ten registrations and numerous third-party uses of BON BON in connection with candies. In particular BON BON BON for chocolates is quite similar to opposer's mark. Accordingly, the Board found, BON O BON is entitled to "a narrower scope of protection than would be accorded an arbitrary mark."

As to the marks, the Board found that, because BON BON is at least highly descriptive of the goods, consumers are likely to look to the stylized font and the purple background as the distinguishing features of applicant's mark.

Since opposer's standard character mark could be displayed in a fond identical to that of applicant's mark, the Board considered the marks to be similar in appearance. The meaning of applicant's mark is a chocolate-covered candy, while BOB O BON has no known meaning, but it suggests that the goods are "good." Thus the marks differ in connotation.

"[W]hile there are similarities between the marks, differences in appearance and connotation leads the marks to convey overall commercial impressions that are more dissimilar than similar." Therefore the Board found that confusion is not likely between the involved marks, and it dismissed the opposition.

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TTABlog comment: What do you think? Should Arcor have opposed on the ground of mere descriptiveness?

Text Copyright John L. Welch 2017.

GOLDEN DOODLE Merely Descriptive of Retail Gifts Shops, Says TTAB

In a six-page opinion, the Board affirmed a Section 2(e)(1) refusal of GOLDEN DOODLE, finding the proposed mark merely descriptive of "On-line retail gift shops; On-line retail store services featuring apparel and accessories; Retail store services featuring apparel, accessories and gifts." Applicant acknowledged that among the many dogs represented in its designs is the "goldendoodle," a cross between poodle and a golden retriever. In re GoldenDoodle LLC, Serial No. 86717500 (August 11, 2017) [not precedential] (Opinion by Judge Albert Zervas).

The evidence submitted by Examining Attorney Tracy Whittaker-Brown established that the goods offered in applicant's retail stores may feature goods with images, slogans or information regarding the goldendoodle breed. The Board therefore agreed that the proposed mark merely describes a feature of applicant's services.

Applicant GoldenDoodle argued that GOLDEN DOODLE does not convey an immediate idea of the qualities or characteristics of its services with any degree of particularity because "goldendoodle" is only one of 56 breeds found at its website. The Board found that applicant's argument had more bark than bite. The Board noted that it considers the proposed mark in view of the services for which registration is sought, regardless of how applicant actually uses its proposed mark.

Applicant has crafted its recitation of services in a manner to allow for retail services offering apparel, accessories and gifts that feature wording or images pertaining to goldendoodles, even to the exclusion of other dog breeds.

Applicant pointed out that the USPTO has published for opposition a divisional application for goods [e.g., clothing, bumper stickers] that were divided out from this application but the Board pointed out once again that it is not bound by decisions of examining attorneys.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? WYHA not? BTW, where did the second "d" in "goldendoodle" come from? Should it be "goldenoodle?" Or does that look too much like "golden noodle?" On the other hand, who cares?

Text Copyright John L. Welch 2017.

TTAB Rejects Shape of Printed Label as a Phantom Mark

The Board affirmed a refusal to register, on the Supplemental Register, the product configuration mark shown below, for "printed paper labels; paper identification tags; printed paper labels; adhesive labels; paper die cut shapes; paper labels; paper tags; placards of paper or cardboard; printed paper labels; coupons," finding that "the changeable elements in Applicant’s proposed mark result in multiple marks that cannot be protected in a single registration." In re MPT, Inc., Serial No. 86316207 (August 9, 2017) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The supposed mark consists of "four rounded, convex corners and the call-out indicator of a generally rectangular speech bubble, with the call-out indicator located at the bottom of the speech bubble and formed by an extended pointed portion connected to the lower right corner by a concave line and connected to the lower left corner by a sloped line. The broken lines in the drawing are used to show the placement of the mark and are not part of the mark." During prosecution, applicant explained that "These unclaimed portions comprise portions of the straight walls at the four sides of the label that would fix their length."

A “phantom” trademark “is one in which an integral portion of the mark isgenerally represented by a blank or dashed line acting as a placeholder for a genericterm or symbol that changes, depending on the use of the mark.” In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513, 1515 n.1 (Fed. Cir. 1999).

A trademark application may seek to register only one mark, and a phantom mark is more than one mark. Phantom marks encompass too many possibilities to make effective searching possible, and thus do not provide proper notice to others.

Here, significantly different shapes could be created by varying the lengths and widths of the sides of this shape, demonstrating the unacceptable phantom nature of the proposed mark. (See examples below).

While Applicant’s proposed variations all may be talk bubbles, with three-dimensional configurations of the goods such as these, the form and shape of them are the essence of the mark, and Applicant’s proposed forms and shapes could diverge too much to be considered the same mark. *** More importantly, under the circumstances, Applicant’s use of broken lines in this drawing impermissibly opens the door to multiple marks, regardless of Applicant’s extraneous assurances to the contrary.

The Board also affirmed a requirement that the applicant submit a proper drawing and description of the proposed mark, because both encompass more than one mark.

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TTABlog comment: WYHA? Did applicant stand a ghost of a chance here?

Text Copyright John L. Welch 2017.

Reversing a Surname Refusal, TTAB Finds BROE (Stylized) Has Acquired Distinctiveness

Although finding that the term BROE is primarily a surname, and that the stylization shown below does not make the mark inherently distinctive, the Board reversed this Section 2(e)(4) refusal because applicant established acquired distinctiveness under Section 2(f). In re Broe Management Company, LLC d/b/a The Broe Group, Serial No. 86715987 (August 11, 2017) [not precedential] (Opinion by Judge Michael B. Adlin).

Surname?: The evidence established that applicant is named for its founder and chief executive officer, Pat Broe. On its website, applicant describes itself as a "family-owned business." Negative dictionary evidence indicated that "broe" has no non-surname meaning and a Wikipedia entry for "broe" states that the word is a surname. Other evidence identified individuals with the surname BROE, and the namesite.com website list 1,250 persons with that surname.

Even though BROE is a rare surname, the record evidence established that it is still primarily a surname. In re Eximius Coffee, LLC, 120 USPQ2d 1276 (TTAB 2016) (finding ALDECOA primarily merely a surname).

Stylization?: As to the distinctiveness of of applicant's stylized version of BROE, the Board noted that surnames are typically displayed with an initial upper case letter. Neither the particular font nor the green letter "o" alters the primary significance of BROE given the other evidence in the record. Cf. In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995) (stating that were it not for the marks “highly stylized” form, “we would find that the service mark BENTHIN … would be perceived as primarily merely a surname,” based on highly similar evidence to that presented here and in Eximius Coffee).

In short, the record leaves no doubt that when the purchasing public considers [the applied-for mark] in relation to Applicant’s investment and financial asset disposition services, it will primarily signify a surname, specifically that of Pat Broe whose family owns Broe Management Company d/b/a The Broe Group.

Acquired Distinctiveness? Although the applied-for mark had been in use for significantly less than five years, Applicant claimed acquired distinctiveness as to the word BROE, without regard to font or stylization, which mark had been in use for substantially more than five years (in fact, for more than forty years).

The Board observed that the USPTO has "a longstanding practice of allowing registration of surnames under Section 2(f) upon a showing of substantially exclusive and continuous use for five years. In re Adlon Brand GmbH & Co., KG, 120 USPQ2d 1717, 1722 n.33 (TTAB 2016). The Board found no reason not to follow that practice here, since it had already found that the applied-for mark creates the same commercial impression as the word BROE.

Judge Massielo, in the briefest of concurring opinions, agreed with the result but he would have found the stylization alone sufficient to avoid the surname refusal.

Read comments and post your comment here.

TTABlog comment: Since the stylization does not change the pronunciation or meaning of the term, I side with Judge Adlin.

Text Copyright John L. Welch 2017.

CAFC Affirms TTAB: In Context, FIRST TUESDAY Merely Descriptive of Lottery Services

In an eight-page opinion, the CAFC upheld the TTAB's decision in In re North Carolina Lottery, Serial No. 86411401 (July 12, 2016) [TTABlogged here], finding the mark FIRST TUESDAY to be merely descriptive of "lottery cards; scratch cars for playing lottery games" and of "lottery services." The court ruled that the Board did not err in considering the explanatory text appearing on applicant's specimens of use (see below) in determining the issue of descriptiveness. In re North Carolina Lottery, 123 USPQ2d 1707 (Fed Cir. 2017) [precedential].

North Carolina's specimens of use included explanatory text such as "[n]ew scratch-offs the first Tuesday of every month." The examining attorney found that, in the context of applicant's promotional materials, the mark "merely describes a feature of [its] goods and services, namely, new versions of the goods and services are offered the first Tuesday of every month." The Board agreed, concluding that "[n]o mental thought or multi-step reasoning is required to reach a conclusion as to the nature of the involved goods and services."

North Carolina argued that that the Board's reliance on the explanatory text of the specimens to supplement the meaning of the mark was improper, and that the inquiry should be limited to what a consumer with "only general knowledge" of the goods and services, and without additional context from the explanatory text, would immediately understand the mark to mean. Accordingly, the applicant maintained, the mark is merely suggestive because nothing in the mark itself conveys the understanding that the USPTO assigns to the mark, and therefore some imagination is needed to connect the mark to the goods and services.

North Carolina conceded that the USPTO is allowed to consider the specimens of use to discern how a mark is used, but it argued that explanatory text on the specimens cannot supply additional meaning when "the mark itself does not convey that meaning." When pressed, North Carolina "had difficulty articulating the significance of the explanatory text in this case if not to serve as evidence of the significance of FIRST TUESDAY in the commercial context." The court declined to "carve out" explanatory text from the USPTO's consideration of the commercial context in which a mark is used.

That is not to say, however, that the use of explanatory text with a mark necessarily renders that mark merely descriptive. “Placement of a term on the continuum [of distinctiveness] is a question of fact.” In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001). The distinctiveness of a mark in the context of explanatory text remains a case-specific analysis. As a legal matter, however, the TTAB did not err by considering the explanatory text of the specimens in the descriptiveness inquiry.

North Carolina further argued that the fact that it had to explain the meaning of the mark showed that the mark is not descriptive. The court, distinguishing several decisions from other circuits, found that the connection between the explanatory text, the mark, and the goods/services was not complicated: "That text simply uses the same two words as the mark—'first Tuesday'—along with words like 'new' and 'every month' to describe the relevant feature or characteristic of N.C. Lottery’s scratch-off lottery games."

The commercial context here demonstrates that a consumer would immediately understand the intended meaning of FIRST TUESDAY. In other words, the evidence shows that the mark is less an identifier of the source of goods or services and more a description of a feature or characteristic of those goods or services. Substantial evidence therefore supports the TTAB’s finding that FIRST TUESDAY is a merely descriptive mark.

And so the CAFC affirmed the Board's decision.

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TTABlog comment: Would you categorize this as a "failure-to-function" case?

Text Copyright John L. Welch 2016.

CAFC Affirms TTAB: Limitation of Goods to Those Associated with "will.i.am" Found Meaningless

The CAFC upheld the TTAB's decision in In re i.am.symbolic, llc, 116 USPQ2d 1406 (TTAB 2015) [TTABlogged here], affirming Section 2(d) refusals to register the mark I AM for cosmetics and personal care products, sunglasses, and jewelry “all associated with William Adams, professionally known as will.i.am,” in view of the the mark I AM, registered in standard character and stylized form, for the same or related products. The Board correctly concluded that the "will.i.am" restriction "does not impose a meaningful limitation in this case for purposes of likelihood of confusion. In re i.am.symbolic, llc, 123 USPQ2d 1744 (Fed. Cir. 2017) [precedential].


The Board found that William Adams is the well-known front man for the music group, The Black-Eyed Peas, and is known as "will.i.am." The Board also found that the evidence failed to establish that Adams is well known as "i.am" or that "i.am" and "will.i.am" are used interchangeably.

Symbolic argued that the Board erred by deeming the "will.i.am" restriction" to be "precatory" and "meaningless;" by ignoring third party use and registration of other I AM marks; and by finding a likelihood of reverse confusion.

The restriction: The CAFC ruled that the Board correctly determined that the first du Pont factor weighed heavily in favor of a likelihood of confusion: the involved marks are legally identical in appearance, identical in pronunciation, have the same meaning, and engender the same overall commercial impression. Nothing in the record indicated that the "will.i.am" restriction changed that.

As to the second, third, and fourth du Pont factors, Symbolic maintained that the restriction fundamentally changes its goods and channels of trade. According to Symbolic, consumers purchase goods associated with celebrities in order to associate themselves with the celebrity. The CAFC, however, concluded that the Board did not err in holding that the restriction does not limit the goods with regard to trade channels or classes of purchasers, alter the nature of the goods, or represent that the goods will be marketed in any particular, limited way. In the absence of meaningful limitations in the application or cited registrations, the Board was correct in presuming that the goods travel through all usual channels of trade to the usual classes of consumers.

Other I AM marks: The court agreed with the TTAB that, because there is no evidence of extensive or voluminous third-party use or registration of I AM marks for the same or related goods, the Jack Wolfskin and Juice Generation decisions are inapposite. Those two cases involved oppositions to marks that were not identical to the opposers' marks. Based on evidence showing the frequency of use of certain components of the applied-for marks, the CAFC there concluded that the Board had not adequately considered the weakness of registrant's marks in the likelihood of confusion analysis.

In sharp contrast, this case involves identical word marks. Symbolic's evidence of third-party use of I AM for the same or similar goods fell short of the "ubiquitous" or "considerable" use of the mark components in the two cited cases. .

Reverse confusion: "Reverse confusion" refers to a situation in which a significantly larger or prominent newcomer "saturates the market" with a mark that is confusingly similar to a smaller, senior registrant for related goods or services.

The Board suggested in a footnote that, to the extent that Adams or symbolic’s marks mark are well known and reverse confusion exists, “such fact supports refusal of [Symbolic’s] application, because when confusion is likely, it is the prior Registrant which must prevail. Even if it eclipses the renown of the prior Registrant, Applicant’s fame does not entitle it to usurp the cited Registrant’s rights in the mark. However, the Board did not make a finding of fame, and it did not make a finding of reverse confusion.

The court concluded that the Board's factual findings were supported by substantial evidence and its legal conclusions were not erroneous. Therefore, the court affirmed the Board's decision.

Read comments and post your comment here.

TTABlog comment:  The Board gave a similar nod to the possibility of "reverse confusion" in a footnote in a "celebrity" case involving the legendary Ringo Starr, TTABlogged here.

Text Copyright John L. Welch 2017.

Republished from 2015: Some Thoughts on de facto and de jure Functionality

Section 2(e)(5) of the Lanham Act bars registration of a proposed mark that “comprises any matter that, as a whole, is functional.” The shape of a product or a feature of a product may have a function – i.e., it may have utility – but still be registrable as a trademark. In other words, the product or feature may be de facto (in fact) functional but not de jure (in law) functional.

Confusion over these concepts sometime arises when, in considering the registrability of a product shape, the TTAB or a court encounters design patents or utility patents that are related to the product. Utility patents, as the name indicates, concern things that have utility: “any new and useful process, machine, manufacture, or composition of matter.” Design patents concern the ornamental features of useful objects: the way things look rather than the way they work. Thus both utility and design patents are directed to things that are useful (or de facto functional).

A particular device may be the subject of a both a utility patent, because it incorporates a useful invention – say, a corkscrew that operates in a new way – as well as a design patent, because the device has a novel and nonobvious shape – suppose the corkscrew is shaped like a kangaroo.

In the trademark realm under Section 2(e)(5), when one considers whether a product configuration or feature may be registrable as a trademark, one must first determine whether it has utility – i.e., whether it is de facto functional. A purely ornamental feature (i.e., purely non-functional) – such as the decorations on a monster truck (for entertainment services) – by definition has no utility and is therefore eligible for registration as a trademark.

What about a shape or feature that does have utility? For example, in our corkscrew, the tail of the kangaroo, which functions as the handle or lever that operates the corkscrew? It has utility, it performs a function, and therefore it is de facto functional in a trademark sense. But is it de jure functional and therefor unregistrable? That’s where the Inwood and Morton-Norwich decisions come in play.

One approach to assessing the registrability of product shape or feature is to ask the following questions:

1. Does the configuration or feature have utility? If yes, proceed to the next question. If no, the feature is ornamental and may be registrable. A showing of acquired distinctiveness is required, says Wal-Mart, unless the feature may be considered product packaging (or, as in the recent monster truck case, trade dress for services). Product packaging and other trade dress may be inherently distinctive, but first it must pass the Seabrook test.

2. If the configuration or feature has utility (for example, the kangaroo tail), is the shape the only one that will work? No it is not, for the kangaroo tail. The handle of the corkscrew, and the corkscrew itself, could take on many shapes. What, then, is an example of a design that can be useful in only one shape? Patent attorneys point to a case involving the blade or shank (the business end) of a key, which had to be in the particular shape in order to operate the corresponding lock. So that design patent was held to be invalid because the shape was "functional" in a design patent sense, not ornamental. If question 2 is answered yes, then the configuration or feature is not eligible for a design patent (or a trademark registration).

3. If the answer to question 2 is no, then a design patent is available. An invention is functional in the design patent sense only if the design is the only one that will work: think key blade. But functionality for trademarks requires a different standard. Even if there are alternative designs that will work, a product configuration or feature may be unregistrable as a trademark – i.e., de jure functional – if the design meets the Inwood test: if it is "essential to the use or purpose of the device or ... affects the cost or quality of the device." The CCPA’s Morton-Norwich factors are meant to assist in the determination of trademark functionality. In the recent "bladeless" fan decision, the Board found that the shape of the product met the Inwood test.
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The Board and the courts sometimes go astray when utility patents are involved. It is tempting to conclude that any feature discussed in a utility patent must ipso facto be de jure functional and therefore unregistrable as a trademark. But the Supreme Court in TrafFix was careful to limit the effect of utility patents as follows: it said that if a feature is claimed in a patent (not merely discussed in the specification), that is strong evidence that the feature is de jure functional. Not conclusive evidence, but strong. That is because even if a feature is claimed in a patent (for example, the lever on the cork screw), it still may be possible to design that element in a number of shapes that work equally well (the kangaroo tail being one).

Some of these principles were discussed in two recent TTAB decisions: the monster truck case, in which the Board found the decorations on a monster truck to be ornamental trade dress that was inherently distinctive under Seabrook, and the “bladeless” fan case, in which the Board applied Inwood and Morton-Norwich in affirming a Section 2(e)(5) functionality refusal of the shape of the fan elements.

The next time you read a decision in a product configuration case or trade dress case, look closely to see how the court or the Board applies these principles and makes these distinctions. Of course, if you don't agree with my understanding, let me know.

Read comments and post your comment here

Text Copyright John L. Welch 2015.

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

It has been said that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the goods or services. Presented for your contemplation are four recent TTAB decisions in Section 2(d) appeals. At least one was reversed. What do you think? [Answer in first comment].


In re Inca Tea, LLC, Serial No. 85886579 (August 3, 2017) [not precedential] (Opinion by Judge Anthony R. Masiello). [Section 2(d) refusal to register the mark shown below left, for "Teas comprised of purple corn; tea blends comprised of purple corn" [TEA, 100% ALL NATURAL INGREDIENTS, and ORIGINAL disclaimed] in view of the registered mark shown below right for "teas, namely, linden and chamomile" [FOOD disclaimed]].

In re A.H.C.S., Inc., Serial No. 86782221 (August 3, 2017) [not precedential] (Opinion by Judge Karen Kuhlke) [Section 2(d) refusal of the mark GWYN'S for "Restaurant services; Restaurant services featuring fine dining on ski area mountain," in view of the registered mark GWIN’S LODGE for "Resort lodging services"].

In re Adrenalin Gaming, LLC, Serial No. 86877784 (August 4, 2017) [not precedential] (Opinion by Judge Peter W. Cataldo). [Section 2(d) refusal of the mark ADRENALIN ATTRACTIONS for "amusement part rides" [ATTRACTIONS disclaimed] in view of the registered mark ADRENALIM for "amusement park rides and water park rides"].

In re Primary Investments Grp. Ltd., Serial No. 86732652 (August 4, 2017) [not precedential] (Opinion by Judge Peter W. Cataldo). [Refusal to register MULTI-FIBER COLON CLEANSE on the Supplemental Register, for "vitamins and nutritional supplements," in view of the registered mark COLON CLEANSE for "bulk forming fiber laxative"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

Precedential No. 21: TTAB Finds "COFFEE FLOUR" Generic for ...... Guess What?

Affirming a refusal to register COFFEE FLOUR on the Supplemental Register, the Board found the term to be generic 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." After an exhaustive review of the evidence, the Board concluded that relevant consumers understand the term to refer to flour made from the skin, pulp, and pectin of the coffee cherry portion of the coffee plant. "Applicant itself has communicated this meaning of the term 'coffee flour' to the public, and the articles in the record, from which we can infer the public's understanding of the term, show that this message has been received and understood." In re Empire Tech. Dev. LLC, 123 USPQ2 1453 (TTAB 2017) [precedential] (Opinion by Judge Christoper Larkin).

The test for determining whether a proposed mark is generic is its primary significance to the relevant public. Emergency Alert, 122 USPQ2d at 1089 (citing In re Am. Fertility Soc’y, 188 F.3d 1341, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999)). “Making this determination ‘involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered . . . understood by the relevant public primarily to refer to that genus of goods or services?’” Id. (quoting Marvin Ginn, 228 USPQ at 530). The Examining Attorney must demonstrate that COFFEE FLOUR is generic by “clear evidence” of generic use. In re Hotels.com, L.P., 573 F.3d 1300, 87 USPQ2d 1100, 1104 (Fed. Cir. 2009); Emergency Alert, 122 USPQ2d at 1830 (citing cases).

Genus:The Board first determined that the genus of applicant's goods is adequately defined as "flour made from coffee cherry skins, pulp, and pectin," a definition that "captures the essence of the genus involved herein, using somewhat fewer words than [was] required by the Office in order for this Applicant to present a definite identification of goods...." Quoting Active Video, 111 USPQ3d at 1602.

Understanding of Relevant Consumers: The Board found that the relevant purchasing public consists of persons who use flour for baking, including retailers of food and beverages, restaurants, bakeries, food and beverage producers, and members of the general public who bake.

The Board noted that this appeal involves the rare situation in which an applicant has created a new genus of goods by being the first (and apparently the only) producer and seller of a new product. Professor McCarthy has noted the branding challenges involved: "If the public adopts as the generic name of the the thing the word that the seller thinks is a mark, then it is no longer a mark at all.... The critical period is when the product first hits the market." Prof. McCarthy suggests that the creator adopt two new words - the mark and the generic name. McCarthy on Trademarks and Unfair Competition, Secs. 12.25, 12.26 (4the ed. June 2017 update).

The Board particularly focused on "(1) whether Applicant has adopted an existing generic term, or developed a new one, and has used that generic term together with its proposed COFFEE FLOUR mark; (2) whether Applicant has promulgated to the relevant purchasing public a generic term other than "coffee flour" for its new product; and (3) whether Applicant has policed the misuse of "coffee flour" as the generic term for the new genus, and otherwise has taken steps "to educate the public to use some name other than the term [it] wants to call [its] mark." Id.

Applicant conceded that "flour" is a generic term as used in its proposed mark. The Board found this to be significant because the public is accustomed to seeing different types of flour identified by the name of the grain, fruit, etc., from which they are made: e.g., apple flour, corn flour. The Board agreed with Examining Attorney Yatsye I. Lee that the combination of "coffee" and "flour" yields "essentially the apt or common name for the genus of goods at issue." The aptness of the term is confirmed by applicant's use of "coffee flour" in its application to patent a process for making flour from coffee.

Aptness, however, is insufficient to establish genericness. While aptness makes it likely that consumers will understand the term as the generic name of the goods, the question was whether the public did so, or whether the public recognizes it as a trademark.

Applicant did not state what the generic term is for its product, nor has the public so used any other term. Applicant's label, promotional video, and website use of "coffee flour" in lower case lettering as a compound none, without an accompanying generic term constituted a "classic example of the use of a putative mark as a generic term." In short, applicant's own use of the term provided "damaging evidence that its alleged mark is generic." Gould, 5 USPQ2d at 1112.

Applicant maintained that media articles using the term "coffee flour" are all "about applicant and/or Applicant's products," and it asserted that no third party uses "coffee flour" as a generic term. However, the relevant question is how the public perceives the proposed mark.

The Board distinguished the THUMBDRIVE case (In re Trek 2000 Int'l Ltd., 97 USPQ2d 1106 (TTAB 2010), where applicant used other terminology to identify the goods ("external storage device") and successfully policed the mark, and the record showed no use of the term by competitors after ten years in the marketplace. Here there was no mixed record regarding use of the term, and the absence of competitive use was explained by the lack of any competitors.

Applicant acknowledged that consumers who see the term COFFEE FLOUR will likely recognize that applicant's product is "a coffee product ground up into a powder like flour." That, the Board found, is essentially a confirmation of genericness.

In sum, applicant failed to develop and promulgate a generic term other than "coffee flour," itself used the term generically, encouraged the public to use the term generically, and failed to take steps to correct media uses of the term in a generic manner.

[T]he record here shows that the relevant purchasing public understands "coffee flour" to refer specifically to flour made from the skin, pulp, and pectin of the coffee cherry portion of the coffee plant. Applicant itself has communicated this meaning of the term "coffee flour" to the public, and the articles in the record, from which we can infer the public’s understanding of the term, show that this message has been received and understood.

Therefore, finding that the USPTO established by clear evidence that "coffee flour" is generic for applicant's goods, the Board affirmed the refusal to register.

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Text Copyright John L. Welch 2017.