TTAB Test: Are These Two Word + Design Marks Confusable for Beer?

The USPTO refused to register the mark shown below left for "beer" on the ground of likelihood of confusion with the registered mark on the right, for "Brewed malt-based alcoholic beverage in the nature of a beer." On appeal, applicant argued that the buyers of craft beer are sophisticated, that its logo is dominated by its well-known house mark MAD TREE, and that BLACK FOREST is highly suggestive of a type of beer. How do you think this came out? In re MadTree Brewing, LLC, Serial No. 86608588 (November 28, 2018) [not precedential] (Opinion by Judge Karen Kuhlke).

Because applicant's "beer" encompasses registrant's malt-based beverage in the nature of beer, the Board deemed the goods legally identical. It therefore presumed that they travel in the same channels of trade to the same classes of consumers.

The Board pooh-poohed the argument that consumers of craft beer are sophisticated, first because the involved goods are not limited to craft beer, and second because the Section 2(d) determination must be made based on the least sophisticated consumer - and the sophistication of the general consumer is not very high.

Applicant's argument that, as reflected in the marks, registrant is a home brewer located in Reading, PA and applicant is located in Cincinnati, had no merit, since both the application and registration are nationwide in scope.

As to the marks, the Board found the term BLACK FOREST to be dominant. Generally, the verbal portion of the word + design mark is the more likely to indicate source. The designs in the two marks at issue "do not overwhelm or distract from the wording BLACK FOREST." In fact, the designs reinforce the meaning of BLACK FOREST. The addition of MAD TREE to applicant's mark "is a difference between the marks" but "does not result in marks that are dissimilar for likelihood of confusion purposes." [Given the size of the words MAD TREE, how could they possibly be dominant? - ed.]

Applicant's argument that BLACK FOREST is geographically descriptive in registrant's mark constitutes an impermissible collateral attack on the cited registration. The Board may consider arguments regarding the strength of the registered mark, but as to the purported location involved - a hiking trail in Pennsylvania - there was no evidence that consumers (other than locals) would be aware of this geographical connection.

Finally, applicant claimed that BLACK FOREST is a type of beer, but the Board found applicant's meager evidence to be inadequate.

The Board found that the similarities in the marks outweigh the dissimilarities, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

TTAB Test: Is "BREATHLESS" Merely Descriptive of Idiopathic Pulmonary Fibrosis Information Services?

The USPTO refused registration of the mark BREATHLESS under Section 2(e)(1), finding the mark to be merely descriptive of "promoting public awareness of" and "providing medical information regarding" idiopathic fibrosis, its symptoms, its prevention and its treatment. On appeal, the examining attorney argued that the mark describes the main symptom of IPF: the shortness of breath. Applicant contended that the mark is merely suggestive, or is a double entendre because it refers to the "excitement and anticipation among IPF patients, their caregivers and loved ones about the progress being made in preventing and/or treating this serious condition." How do you think this came out? In re Boehringer Ingelheim Pharmaceuticals, Inc., Serial No. 86852106 (November 27, 2017) [not precedential] (Opinion by Judge Frances Wolfson).

The Board ignored applicant's feeble double entendre argument, but it agreed with applicant that the USPTO's evidence failed to show that the term "breathless" merely describes the subject services. "[W]hile breathlessness is an IPF symptom, there is no evidence that it relates to providing information or raising public awareness, even of IPF specifically."

We agree with Applicant that a multi-step reasoning process is required to move from the merely descriptive meaning of “breathless” as a word that describes a common symptom of lung disease in general, even of IPF specifically, to an understanding that the proposed mark conveys an immediate idea about providing medical information about IPF or raising public awareness thereof. In fact, some degree of thought or imagination is required to understand that Applicant’s services involve promoting public awareness and providing medical information about a disease that makes one “breathless.” That is, there is an element of incompleteness making the mark suggestive rather than merely descriptive.

Therefore, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

CAFC Affirms TTAB: MAGNESITA is Generic for .... Guess What?

In a nonprecedential ruling, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision (here) upholding a refusal to register the term MAGNESITA for refractory bricks and related products, on the ground of genericness, and for providing information via a global computer network regarding refractory products, on the ground of mere descriptiveness. In re Magnesita Refractories Company, Appeal No. 2016-2345 (Fed. Cir. November 27, 2017) [not precedential].

Genericness: The Board applied the doctrine of foreign equivalents, translating MAGNESITA as "magnesia" from the Italian and "magnesite" from the Spanish and Portuguese. Applicant did not challenge the applicability of the doctrine of equivalents. Nor did it challenge the Board's determination of the genus of the goods (refractory bricks and refractory patching and lining mixes) or the relevant public (ordinary consumers who purchase such refractory products). Instead, applicant contended that the only conclusion that could be drawn from the evidence was that magnesite and magnesia can be used in refractory products.

The record evidence, however, included numerous uses of magnesite and magnesia as key components in refractory products, and that was sufficient to establish genericness. See In re Cordua Rests., Inc., 823 F.3d 594, 603-04 (Fed. Cir. 2006) (holding that certain words referring to key aspects of a genus of services were generic for the services.)

Acquired Descriptiveness: Applicant challenged the Board's finding that applicant did not establish acquired distinctiveness for MAGNESITA for its Internet informational services. Applicant claimed the five years of use is by statute evidence of to show that MAGNESITA has acquired distinctiveness. The Board pointed out, however, that Section 2(f) of the Lanham Act says that the Director may accept as prima facie evidence of acquired distinctiveness, proof of substantially exclusive and continuous use of a mark for five years. The Board is not required to find acquired distinctiveness based on five years of use. "The Board has discretion to require more evidence, particularly for highly descriptive marks." In re Louisiana Fish Fry Prods., Ltd., 797 F.3d 1332, 1337 (Fed. Cir. 2015).

Here, the Board correctly found MAGNESITA to be highly descriptive of the services. Therefore, applicant had an elevated burden to show acquired distinctiveness by more than sales data and five years of use. The Board was within its discretion to require additional evidence, as it faulted applicant for not submitting any direct evidence showing how the public perceives MAGNESITA as a source identifier.

Conclusion: Substantial evidence supported the Board's findings that MAGNESITA is generic for refractory products and is highly descriptive for related information services.

Read comments and post your comment here.

TTABlog comment:  Keep moving. Not much to see here. Note that the CAFC rejected applicant's assertion that B&B Hardware has some applicablity to the evidentiary burdens in an ex parte appeal.

Text Copyright John L. Welch 2017.

WYHA? "GOLF WITH PURPOSE" Confusable With "GOLF WITH A PURPOSE" For Golf Stuff, Says TTAB

When a Section 2(d) refusal is affirmed in an opinion of a mere eight pages, that case is a prime candidate for the "WYHA?" label. But wait! The application for GOLF WITH PURPOSE included not only clothing, but golf ball markers and golf tee marker in class 28, whereas the cited registration for GOLF WITH A PURPOSE covered only clothing. Moreover, applicant argued that the marks have different connotations. Was there hope? Would you have appealed? In re Russell Ortiz, Serial No. 86817718 (November 22, 2017) [not precedential] (Opinion by Judge Thomas W. Wellington).

The class 25 goods were in part identical, As to applicant's class 28 goods, The Examining Attorney submitted evidence establishing that golf shirts are related to golf ball and tee markers because these items are featured in retail and online stores that specialize in golf-related goods.

As to the marks, applicant argued that the inclusion of the article "A" in registrant's mark is significant:

The differences in the use of the wording “purpose” instead of "a purpose" is not minor, and in fact distinguishes not only the appearance of Applicant’s mark from Registrant’s, but conveys a different meaning, as well. For example, to golf with purpose connotes the idea that there is a passion behind playing golf. In contrast, golf with "a purpose" connotes the idea that golf is for a specific charitable cause. *** In this case, "a purpose" for Registrant['s] mark is supporting a charitable organization for combatting cystic fibrosis.

The Board was unmoved, finding that consumers "will discern little, if any, different connotations conveyed by the marks." "In both cases, consumers viewing the two extremely similar marks, will likely understand the marks in the same manner. That is, viewed in the context of identical clothes or related golf goods, the marks invoke a passion for or dedication to the sport of golf."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: What if the Miami Dolphins held a fan event called "Golf With a Porpoise"? Confusion? Dilution? Offsides?

Text Copyright John L. Welch 2017.

Profs. Beebe and Hemphill: "The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than The Weak?"

Professors Barton Beebe and C. Scott Hemphill of New York University School of Law challenge trademark orthodoxy in their new article, "The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than The Weak?," 92 N.Y.U. Law. Rev. 1390 (November 2017). [pdf here]. It is a black letter principle of trademark law that the stronger the mark, the greater the scope of protection it is accorded. Not so fast, say the professors.

In this article, we challenge this conventional wisdom. We argue that as a mark achieves very high levels of strength, the relation between strength and confusion turns negative. The very strength of such a superstrong mark operates to ensure that consumers will not mistake other marks for it. Thus, the scope of protection for such marks ought to be narrower compared to merely strong marks. If we are correct, then numerous trademark disputes involving the best-known marks should be resolved differently—in favor of defendants. Our approach draws support from case law of the Federal Circuit—developed but then suppressed by that court—and numerous foreign jurisdictions.

* * * *
It makes strong intuitive sense that as a trademark grows increasingly famous, the likelihood that consumers will confuse similar marks with it declines. Consider the example of Coca-Cola. Having been exposed to the Coca-Cola logo countless times, the average consumer is likely sensitized to even the slightest differences between the distinctive appearance of the logo and closely similar logos.

* * * *
The Article examines the underpinnings of American courts’ mistaken analysis, explains the errors, and urges essential reforms in this core area of trademark doctrine in order to advance the overarching policy goal of trademark law, which is not to enable the strongest to grow even stronger, but rather to promote effective competition.

Read comments and post your comment here.

TTABlog comment: So as a mark becomes superstrong, it gains anti-dilution protection but gets less likelihood-of-confusion protection. Let's think about that.

Text Copyright John L. Welch 2017.

TTAB TEST: Is "UNI/FORM" Merely Descriptive of Clothing?

The USPTO refused registration of the mark UNI/FORM in standard character form, finding it to be merely descriptive of clothing, namely, belts, shorts, t-shirts, etc. On appeal, applicant contended that the mark is merely suggestive of its goods, which are "non-standardized, individual and voluntarily purchased medium to high price-point clothing." Applicant also claimed that UNI/FORM is a double entendre, referring to "UNIque FORMula," and furthermore is incongruous. How do you think this came out? In re John Patrick Allen, Serial No. 86800623 (November 16, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman).

Examining Attorney Annie M. Noble submitted a dictionary definition of "uniform" as "the distinctive clothing worn by members of the same organization or body or children attending certain schools" [This brings back painful memories of eight years of wearing a tan shirt and blue tie at St Leo's School on Chicago's South Side - ed.] or "an identifying outfit or style of dress worn by the members of a given profession, organization, or rank."

The Board noted, however, that the term "is broadly applied to include personal styles of dress so that most clothing in Applicant's description could be part of a uniform," referring to several media articles describing "uniform dressing," i.e., a personal "style uniform" that some women employ to simplify their lives by wearing the same look every day.

Applicant conceded that uniforms are a type/subset of clothing, but he pointed out that his mark is UNI/FORM, not UNIFORM. The Board was not impressed: "the addition of punctuation marks would not ordinarily change the term into a non-descriptive one." E.g., 3-0's for thirty-inch car rims, HA-LUSH-KA for haluska, AL-KOL for alcohol.

Applicant's assertion that his clothing items were "non-standardized, individual and voluntarily purchased medium to high price-point clothing" was pointless, since there was no such limitation in the identification of goods.

As to the double entendre argument, the Board observed that such a double meaning must be readily apparent from the mark itself, and the supposed second meaning "UNIque FORMula" was not. As to incongruity, the Board found none.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Is  this a WYHA?

Text Copyright John L. Welch 2017.

TTAB Test: Is TRAILERSHARING Merely Desctiptive of Trailer Rental Services?

The USPTO refused registration of the marks TRAILERSHARING under Section 2(e)(1), finding it merely descriptive of trailer rental services. It refused registration of U-HAUL TRAILER SHARING, U-HAUL TRAILERSHARING, U-HAUL TRAILER SHARE and U-HAUL TRAILERSHARE without a disclaimer of the word TRAILERSHARE and variations thereof. On appeal, Applicant U-Haul argued that because its services are offered for a fee, the ordinary meaning of "sharing" does not apply, and thus the term is at most suggestive. How do you think this came out? In re U-Haul International, Inc., Serial Nos. 86757544, 86757575, 86757589, 86757631 and 86757635 (November 17, 2017) [not precedential] (Opinion by Judge Michael B. Adlin].

Examining Attorney Michael J. Souders relied on dictionary definitions of "trailer" (a nonmotorized vehicle designed to be pulled behind a motor vehicle) and "share" (to allow someone to use or enjoy something that one possesses), as well as on U-Haul's online statement that it "is built on a model of sharing, where customers move each rental from one area to another to be shared continuously." The term "sharing" is also used by others with other types of vehicle rental, like "car sharing" (Wikipedia: "Carsharing or car sharing … is a model of car rental where people rent cars for short periods of time, often by the hour."), "truck sharing," and "RV sharing."

The Board had no doubt that "trailer sharing" is merely descriptive of a quality, feature, function, characteristic or purpose of applicant's services. "Indeed, all forms of the term at issue – TRAILERSHARING, TRAILER SHARING, TRAILERSHARE, and TRAILER SHARE – convey that Applicant 'shares' or rents 'trailers.'"

Applicant contended that "sharing" means "to allow another to use's one's  possession as part of a non-financial arrangement." According to applicant, it is using the term "as a metaphor, suggesting a more informal, personal and non-pecuniary relationship, rather than describing a financial transaction."

The Board was unmoved. First, applicant's services "allow someone to use or enjoy [trailers] that [Applicant] possesses." That is the dictionary definition of "sharing." The definition makes no mention of whether a financial payment is involved. Second, applicant's position is belied by its own specimen of use, which has the heading "Trailer Sharing" and states that its services "are built on a model of sharing," but goes on to refer to rentals for fees and asserts that "[s]hared use of U-Haul trailers reduces the cost ...."  The Board pointed out that evidence of the context in which the mark is used is probative of the reaction of prospective purchasers.

Furthermore the record included numerous example of the use of "sharing" by the media and by third parties to describe vehicle rentals for money.

Third-party registration evidence as to the treatment of the word "share" was inconclusive. However,  even if some prior registrations have some characteristics similar to applicant's mark, the Board is not Bound by the actions of examining attorneys in other cases.

And so the Board affirmed the Section 2(e)(1) refusal of TRAILERSHARING, and allowed applicant 30 days within which to submit an appropriate disclaimer in the other four cases.

Read comments and post your comment here.

TTABlog comment: So U-Haul will receive four registrations, but with everything other than U-Haul disclaimed in the marks. Was it worth it? Please share this post with your friends - for free.

Text Copyright John L. Welch 2017.

TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?

Here we go again! I hear the trumpets blow again! Oh, nevermind. You may recall that a TTAB judge once remarked 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. Here for your consideration are three TTAB decisions rendered two days ago in Section 2(d) appeals. One was reversed. Which one? [Answer in first comment].


In re Lonely Hearts Club Limited, Serial Nos. 79174419 and 79176727 ((November 15, 2017) [not precedential] (Opinion by Judge Karen Kuhlke) [Section 2(d) refusal to register the marks LONELY, in standard character and design form, for  "Clothing, namely, lingerie excluding socks and stockings." in view of the registered mark LONELYSHOES for "Footwear, ballet shoes in the nature of flat shoes, slippers, shoes, half-boots, sandals, clogs being footwear, soles, socks and stockings"].

In re James Robinson, Serial No.86914326 (November 15, 2017) [not precedential] (Opinion by Judge Cindy B. Greenbaum) [Section 2(d) refusal of LEAF BY OSCAR in view of the registered mark OSCAR, both for cigars].

In re Q’Sai Co., Ltd., Serial No. 79157321 (November 15, 2017) [not precedential] (Opinion by Judge Lorelei Ritchie) [Section 2(d) refusal of the mark Q’SAI for fruit juice, concentrates for making fruit juice, vegetable juices, and food products, in view of the registered mark SAI for "soft drinks, namely, noncarbonated soft drinks; beauty beverages, namely, energy drinks containing mineral supplements"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

TTAB Test: Is CAREBOARD Confusable with ECAREBOARD for Patient Information Systems?

The USPTO refused to register the mark CAREBOARD for computer hardware and software for monitoring hospital patients, staff, and equipment, finding the mark likely to cause confusion with the registered mark ECAREBOARD for interactive computer platforms for providing information to patients. Applicant argued on appeal that the letter "E" distinguishes the marks, and that the goods/services are different because its goods are medical workstations whereas registrant's services are provided via the cloud. How do you think this came out? In re West-Com Nurse Call Systems, Inc., Serial No. 86935321 (November 14, 2017) [not precedential] (Opinion by Judge Linda A. Kuczma).

The Marks: The Board observed that the difference between the two marks is the single letter "E," which describes a feature or characteristic of registrant's services, namely, that they are electronic or Internet-related. "Indeed, the 'E' prefix is commonly recognized and understood as a designation for the Internet, particularly when followed by a separately identifiable term such as 'CAREBOARD.'" Therefore the prefix "E" is less significant in creating the overall impression of Registrant's mark. The Board concluded that the marks convey the same overall commercial impression and are "very similar."

The Goods/Services: Applicant's argument that its goods are clearly different from registrant's platform services "misses the mark." The goods and services need only be related in such a way that confusion as to source would likely arise. Here, the goods and services could be marketed to the same customers, namely, hospitals providing a patient information board for communication purposes. The respective websites of applicant and registrant contain highly similar promotional information. "In other words, the identified goods and services are marketed to the same consumers ... and provide the same functions, namely, providing patents with information on their care while hospitalized.

Applicant’s potential customers are likely to believe that Applicant’s electronic indicator board that is integrated into nurse-call systems used for equipment and patient monitoring and its computer hardware and software for gathering and transmitting real time equipment and patient monitoring data and staff information, used in hospitals and other healthcare facilities, are related products emanating from Registrant or that Applicant’s goods and Registrant’s services are associated with the same source.

Moreover, third-party registrations showed that the goods and services here at issue - software and platforms - are of a kind that may emanate from a single source under a single mark.

Finally, applicant argued that the purchasers of the involved goods and services would be sophisticated. The Board, however, observed once again that under these circumstances, where the marks are nearly identical, even sophisticated purchasers may be confused.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Do you think this is a WYHA?

Text Copyright John L. Welch 2017.

CAFC Affirms TTAB's Section 2(d) Refusal of SENSI for Diapers: Extrinsic Evidence of Meaning Irrelevant

In a nonprecedential per curiam opinion, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision (here) that upheld a Section 2(d) refusal of the mark SENSI for diapers. The Board found the mark likely to cause confusion with the registered mark SENSI-CARE for diaper rash ointments. On appeal, Applicant Arista did not challenge most of the Board's du Pont analysis, focusing only on the similarity or dissimilarity of the marks as to connotation and commercial impression. In re P.T. Arista Latindo, Appeal No. 2017-1292 (November 13, 2017) [not precedential].


Arista disputed the Board's refusal to consider certain "extrinsic" evidence, namely, use of the tagline "Sensible way of living" on Arista's website. According to Arista, customers seeing SENSI in that context would assume that SENSI means "sensible" in its mark, whereas in the context of the cited mark it means "sensitive." The CAFC was unmoved:

When determining the meaning of two marks, it is the marks themselves, as set forth in the application and cited registration, not extrinsic evidence, which determines likelihood of confusion. Indeed, it is well-established that the Board must only compare the mark in the prior registration with the mark in the application. “Registrability is determined based on the description in the application, and restrictions on how the mark is used will not be inferred.” In re Shell Oil Co., 992 F.2d 1204, 1207 n.4 (Fed. Cir. 1993).

It is well-established, the CAFC observed, that one may not resort to trade dress to prove that the commercial impressions of two marks are different, since the trade dress may be changed at any time.

The court found nothing in the application indicating that SENSI should be understood to mean "sensible." And nothing in the marks or goods of the application and the cited registration provided a basis for concluding that the identical term used in the marks have "disparate definitions or connote different commercial impressions."

And so the court concluded that substantial evidence supported the Board's decision.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? You may recall that in the recent FIRST TUESDAY case (TTABlogged here), the CAFC ruled that the Board did not err in considering the explanatory text appearing on applicant's specimens of use in determining the issue of descriptiveness. So sometimes it's okay to look at external evidence. But not to distinguish marks under Section 2(d).

What about looking at extrinsic evidence (trade dress) to show that two marks create a confusingly similar commercial impression? The Specialty Brands case in footnote 1 says that this is permitted.

Text Copyright John L. Welch 2017.

TTAB Test: Are Distilled Spirits and Brewpub Services Related for Section 2(d) Purposes?

The USPTO refused to register the mark BSB for "distilled spirits," finding it likely to cause confusion with the registered mark shown below, for "brewpub services; taproom services; taproom services featuring beer brewed on premises." On appeal, the Board found that the similarity in the marks (the letters BSB) outweighed the differences.  But what about the goods and services? How do you think this came out? In re Heritage Distilling Company, Inc., Serial No. 86896656 (November 9, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Board noted that the fact that taprooms and brewpubs serve food and beverages is not enough to make those goods and services related. According to Coors Brewing and Jacobs v. Int'l Multifoods, something more is needed. The CAFC observed in Coors:

It is not unusual for restaurants to be identified with particular food or beverage items that are produced by the same entity that provides the restaurant services or are sold by the same entity under a private label. Thus, for example, some restaurants sell their own private label ice cream, while others sell their own private label coffee. But that does not mean that any time a brand of ice cream or coffee has a trademark that is similar to the registered trademark of some restaurant, consumers are likely to assume that the coffee or ice cream is associated with that restaurant. The Jacobs case [Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA 1982)] stands for the contrary proposition, and in light of the very large number of restaurants in this country and the great variety in the names associated with those restaurants, the potential consequences of adopting such a principle would be to limit dramatically the number of marks that could be used by producers of foods and beverages.

The Board has found the requisite "something more" in cases where: (1) the applicant's mark made clear that its restaurant specialized in registrant's type of goods (e.g., GOLDEN GRIDDLE PANCAKE HOUSE confusable with GOLDEN GRIDDLE for table syrup); (2) registrant's wines were sold in applicant's restaurant (OPUS ONE); and (3) registrant's mark was found to be "a very strong, unique mark" (MUCKY DUCK).

The examining attorney submitted excerpts from ten third-party websites showing use of the same mark for distilled spirits and restaurant or bar services, and from registrant's website where it offers "Black Shirt Bourbon." Applicant argued that this evidence was inadequate because it did not constitute a sufficient sample of the market. According to applicant, there are more than 1300 craft distilleries and 5000 craft breweries in this country, and only a handful of brewpubs and taprooms distill their own spirits.

The Board agreed with applicant: "the evidentiary record does not support finding that consumers are likely to conclude that spirits and taproom and brewpub services with similar marks emanate from the same source." It noted that in Coors the CAFC found that the degree of overlap between the sources of restaurant services and beer was de minimis.

The Board concluded that the USPTO had failed to satisfy the "something more" requirement, and so it ruled that the involved goods and services are not related and it reversed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Is BSB pronounced "bizbee"?

Text Copyright John L. Welch 2017.

TTAB Orders Cancellation of CROC-TAIL Registration: Nonuse and Abandonment

The Board granted a petition for cancellation of a registration for the mark CROC-TAIL & Design for “alcoholic beverages, namely, ready to drink mixed alcoholic drinks; alcoholic beverages containing more than one and two-tenth % of alcohol by volume, namely, ready to drink mixed drinks based on distilled spirits,” on the ground of abandonment and nonuse. In prior TTAB rulings in the case, the Board held that a Section 66(a) registration may be cancelled even though the International Registration is still viable (TTABlogged here), and it granted Saddle Springs' motion to add a fraud claim (TTABlogged here). SaddleSprings, Inc. v. Mad Croc Brands, Inc., Cancellation No. 92055493 (November 8, 2017) [not precedential] (Opinion by Judge Karen Kuhlke).

Respondent sells an energy drink called MAD CROC, mostly to distributors for resale in bars and restaurants. It obtained its U.S. Registration for the CROC-TAIL & Design mark on February 20, 2007. Because the registration issued under Section 66(a), the earliest date on which the three-year presumption of nonuse/abandonment may be triggered is three years after the registration date.

Mad Croc contended that, although it did not sell alcoholic beverages to the consuming public, sales of the goods were made by its licensees - i.e., bars that prepare the CROC-TAIL brand alcoholic drink - according to respondent's guidance and instructions pursuant to verbal agreements with the licensees. Furthermore, since it did not itself sell alcoholic beverages, it did not need any governmental certification or permit. Mad Croc's witness testified that Respondent does not sell any alcoholic beverages.

The Board concluded that the mark was not in use in commerce and was abandoned:

The cocktails sold at third-party bars and restaurants are not Respondent’s goods and these third parties are not related companies, as contemplated by the Trademark Act. Moreover, Respondent’s activities were clearly directed at promoting the sales of its energy drink sold under the MAD CROC mark. Finally, Respondent’s asserted activities do not evidence an intent to commence or resume use. In view of the lack of use for over three years since the date of registration and no intent to commence use, Petitioner has established its abandonment/nonuse claims.

The Board declined to reach the fraud claim.

Read comments and post your comment here.

TTABlog comment: MAD CROC is not a registered trademark, according to my search of the USPTO records. Why not?

Text Copyright John L. Welch 2017.

TTABlog Reaches its 13th Anniversary!

The TTABlog was launched on November 8, 2004, with a blog post entitled "Leo Stoller Loses Again" (here). Remember him? Here we are, thousands of blog posts (and nearly 10,000 tweets) later.  Thank you to all you readers!  Maybe I'll see you at INTALM !



Read comments and post your comment here.

Text Copyright John L. Welch 2017.

TTAB Orders Cancellation of AMIGOS FOODS Registration, Third-Party Evidence Fails

The Board granted a petition for cancellation of a registration for the mark AMIGOS FOODS for "Wholesale distributorships featuring meat products" [FOODS disclaimed], on the ground of likelihood of confusion with Petitioner's identical, common law mark AMIGOS FOODS for "Prepared Tortillas, Taco Sauce, Picante Sauce (Hot Sauce) and Taco Shells" and "Manufacturing and Packaging Food to the Order and Specification of Others." Respondent argued that AMIGOS FOODS is extremely weak in view of numerous third-party registrations and uses, but the Board found that evidence inadequate. Durrset Amigos, Ltd. d/b/a Amigos Foods v. Amigos Meat Distributors, L.P., Cancellation No. 92060896 (November 3, 2017) [not precedential] (Opinion by Judge T. Jeffrey Quinn).

There was no dispute that Petitioner has standing and priority of use. Petitioner first used the AMIGOS FOODS mark in 2001, nine years before Respondent's first use date.

The Board found the marks to be identical, or (as actually used by Petitioner) nearly so, and this factor weighed heavily in Petitioner's favor. The Board observed that, although the involved services are not identical, "manufacturing and packaging of food products, and their distribution, are part and parcel of the process of getting food from producers to the grocery store."

A grocery store purchasing agent, when ordering food to be produced and packaged from Petitioner under the mark AMIGOS FOODS, will be likely to mistakenly believe, upon encountering Respondent's distribution services of meat products under the mark AMIGOS FOODS, that the services are rendered by the same entity or that there is some affiliation or connection between them.

And so the Board found that the similarity of the services favors a finding of likely confusion.

The Board next found that the channels of trade overlap, since each party renders services "through grocer pipelines." The purchasers are the same: grocery stores. There was no evidence that different purchasing agents are responsible for different lines of products (e.g., private label Mexican food items versus meat). However, the buyers are likely to be relatively sophisticated, and this factor favored Respondent.

Invoking the CAFC's Juice Generation and Jack Wolfskin rulings, Respondent submitted 45 third-party registrations and applications for mark that include AMIGO or AMIGOS for goods or services "somewhat related to food," according to Respondent. It also provided Internet search results showing more than 90 restaurants with names that included AMIGOS, a Google search of "amigos" and "food" showing more than 90 websites and other examples of various AMIGO marks in use in connection with "food-related goods and services." The Board was not impressed.

First, the evidence did not show extensive registration or use of AMIGOS marks "coexisting for the same or similar services as those involved herein." None showed use of AMIGOS in connection with the manufacture and packaging of food products.

Second, Juice Generation and Jack Wolfskin are distinguishable because there the involved marks were not identical.

Respondent has not pointed to any record evidence to support a finding that multiple third parties use any AMIGOS mark, let alone AMIGOS FOODS for services similar to manufacturing and packaging food to the order and specification of others. (citation omitted). Indeed, Mr. Moreno [Respondent’s General Manager] stated that other than Petitioner, he is not aware "of any companies by the name Amigos Foods."

To the extent that this evidence did demonstrate any weakness in Petitioner's mark (which the Board found not to be the case), that weakness is outweighed by the other du Pont factors.

The Board rejected Petitioner's claim of actual confusion because the testimony of its witness, Mr. Moreno, as to what its employees encountered was hearsay. Finally, the Board found Petitioner's survey evidence to be of little probative value due to the poor design of the surveys.

On balance, the Board found that the relevant du Pont factors weighed in favor of a finding of likelihood of confusion, and so it granted the petition for cancellation.

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TTABlog comment: Some TTAB decisions give a narrow reading to Juice Generation and Jack Wolfskin. This is one of them. I'd like to see one of those cases go up to the CAFC.

Text Copyright John L. Welch 2017.

TTAB Test: Is "SLAY OR PREY" Confusable With "PRAY THEN SLAY" for T-Shirts?

The USPTO refused registration of the mark SLAY OR PREY, in standard character form, for various clothing items including T-shirts, finding it likely to cause confusion with the registered mark PRAY THEN SLAY & Design (specimen below) for "T-shirts; T-shirts for adults." How would you decide this appeal? In re Manuel E. Tellez, Serial No. 87229195 (November 3, 2017) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Because the goods are in part identical, the Board must presume that they travel in the same, normal channels of trade to the same classes of consumers.

As to the marks, the Board took judicial notice of the meanings of "pray," "prey," and "slay" from dictionary.com (the Random House Dictionary).

Clearly, although “prey” and “pray” are phonetic equivalents, their meanings differ sharply. Taking into account this significant difference, we find that Applicant’s mark most likely gives the impression of presenting a choice to either kill or become a victim by falling prey to a predator. By contrast, we find that the registered mark most likely conveys a command to first confer with the divine through prayer, and next to impress others (the slang meaning of “slay”). The mark may suggest that prayer will lead to making a strong impression on others – i.e. if you pray, then you will slay. Alternatively, Registrant’s mark could be viewed as a call to faith-inspired violence – i.e. to pray and then slay, in the traditional sense of the word.

The Board therefore found the overall connotations and commercial impressions of the two marks to be dissimilar. Moreover, because of the transposition of the words, the marks do not look or sound identical, though there is some similarity. Consumers reading the marks would recognize the different meanings of "pray" and "prey."

The Board noted that the transposition of words does not necessarily avoid a likelihood of confusion between two marks, but here there is not only a transposition but different words with different meanings.

Overall, we find the marks in this case dissimilar, particularly because of their very different connotations and commercial impressions.

Noting that a single du Pont factor may be dispositive, especially when it is the first factor, the Board reversed the refusal.

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TTABlog comment: How did you do? Was this a close call? What are these PRAY/SLAY marks all about? Why was there no ornamental refusal of the PRAY THEN SLAY mark?
BTW: How about SLEIGH AND PRAY, which brings to mind the image of a small child kneeling before a stocking-lined chimney fireplace at Christmas?

Text Copyright John L. Welch 2017.

TTAB Test: Is SINFUL ZINFANDEL Confusable with ZINFUL for Wine?

The USPTO refused registration of the mark SINFUL ZINFANDEL for "wine created primarily from Zinfandel grapes" [ZINFANDEL disclaimed], finding it likely to cause confusion with the registered mark ZINFUL for "Distilled spirits; Wines." On appeal, applicant contended that confusion is unlikey because wine consumers would "research and spend time on offerings made by the respective parties." How do you think this came out? In re Peter Wood, Geoffrey Dean-Smith, and Tasha Mudd, Serial No. 87022288 (October 25, 2017) [not precedential] (Opinion by Judge Cynthia C. Lynch).

As to the goods, registrant's "wines" encompass all types of wine, including applicant's zinfandel, and so the involved goods are identical in part. The Board must presume that those overlapping goods move in the same normal channels of trade to the same classes of customers. These factors weighed heavily in favor a finding of likely confusion.

As to the marks, the word SINFUL dominates applicant's mark: it is the first word in the mark and thus the most likely to be remembered, and the word ZINFANDEL has been disclaimed. The combination of the two words does not significantly impact the overall impression of the mark, "although ZINFANDEL does make Applicant's mark look and sound more similar to Registrant's mark."

Applicant's dominant term SINFUL rhymes with registrant's mark ZINFUL and the two words look similar. Customers will pronounce SINFUL and ZINFUL very similarly.

As to meaning and commercial impression, the word ZINFUL, when used on zinfandel wine, brings to mind zinfandel "and also evokes something 'sinful' or perhaps 'sinfully' good because of ZINFUL's rhyme with and similarity to the word 'sinful.'"

The Board therefore found that the resemblance in sound, appearance, connotation, and commercial impression renders the marks, as a whole, similar.

Applicant's contention regarding the sophistication of purchasers lacked supporting evidence. In any case, the identifications of goods in the application and the cited registration contain no limitations as to types of wine. Some wines are expensive while others are not. In its analysis, the Board must consider all potential purchasers of the goods, and it cannot infer that all are sophisticated.

In sum, the Board found confusion likely and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: Would ZINFUL SINFANDEL be confusable with SINFUL ZINFANDEL? After a few glasses, definitely.

Text Copyright John L. Welch 2017.

TTAB Test: Is CRAWLER Merely Descriptive of SUV Suspension Parts?

The USPTO refused registration of the mark CRAWLER under Section 2(e)(1), finding it merely descriptive of "light truck and sport utility vehicle aftermarket suspension parts, namely, link arms and coil springs." Applicant stated that its goods may be used in off-road vehicles referred to as "Rock Crawlers." The evidence showed that "crawler" is a British term for a "slow-moving vehicle." How do you think this appeal came out? In re Fabtech Industries, Inc., Serial No. 86916673 (October 27, 2017) (Opinion by Judge Cheryl S. Goodman).

Applicant's Specimen of Use
The Examining Attorney maintained that consumers seeking automotive parts for rock crawling will understand the connection between CRAWLER and off-road crawling of all types. She asserted that the specimen of use shows that the goods raise the vehicle's center of gravity and turn the vehicle into a "crawler," a vehicle designed to move slowly in order to drive over rocks and rugged terrain.

The Board, however, found no evidence that "crawler" refers to full-size (as opposed to toy) trucks and SUVs with altered suspensions. The website evidence refers to "rock crawlers," not "crawlers," and to vehicle shocks, not link arms and coil springs. The definitions that the Examining Attorney relied on to conclude that "crawler" means a full-size vehicle used on rough terrain comprise "British English" and lack probative value.

The Examining Attorney urged consideration of the use of "crawler" in connection with scale radio-controlled vehicles referred to as "comp crawlers," "rock crawlers," or "R/C crawlers," which perform "the same function as a standard automotive rock crawler." The Board, however, was unimpressed, noting that a term that is descriptive of one type of goods is not necessarily descriptive of another type, even if the goods are closely related.

The Board concluded that the USPTO had failed to show that CRAWLER is merely descriptive of the identified goods, and so it reversed the refusal.

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TTABlog comment: I think the Board is slicing the baloney pretty thin here.

Text Copyright John L. Welch 2017.

TTAB Rejects Another Consent Agreement, Affirms Section 2(d) Refusal of "8-Bit Aleworks" for Beer

Last year, in the TIME TRAVELER BLONDE case (TTABlogged here), the Board rejected a consent agreement while affirming a Section 2(d) refusal of that mark in view of the registered mark TIME TRAVELER, both marks for beer. Here, the Board did it again with two beer marks. It upheld a Section 2(d) refusal of 8-Bit Aleworks, in standard character form, finding it likely to cause confusion with the registered mark 8 bit Brewing Company, also in standard character form [BREWING COMPANY disclaimed]. Applicant submitted a consent agreement entered into with registrant, but the Board found the agreement to be ambiguous and inadequate to overcome the other du Pont factors pointing to a likelihood of confusion. In re 8-Brewing LLC, Serial No. 86760527 (October 30, 2017) [not precedential] (Opinion by Judge Thomas W. Wellington).

The Board found the involved marks to be "extremely similar," and the goods are identical. The focus of attention was on the tenth du Pont factor, the market interface between applicant and registrant, including the proposed consent agreement.

Among the factors to be considered when assessing a consent agreement are the following:

(1) Whether the consent shows an agreement between both parties;
(2) Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels;
(3) Whether the parties agree to restrict their fields of use;
(4) Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and
(5) Whether the marks have been used for a period of time without evidence of actual confusion

The Board noted that there is no per se rule that a consent will always tip the balance in favor of a finding of no likelihood of confusion. The contents of each agreement must be examined.

The Board found that the agreement at hand "does little to alleviate the concern of likelihood of confusion." The applied-for mark is in standard characters, but the exhibit to the agreement depicts the composite mark shown above. Many of the terms of the agreement relate to the marks shown in the exhibit and thus it is unclear whether registrant is consenting only to the coexistence of applicant's design mark in Exhibit A or the standard character mark.

The period of coexistence without confusion has been very short: barely five months, a length of time "hardly indicative that confusion is unlikely." The agreement also fails to illustrate how the trade channels differ and how the parties will restrict their fields of use. Consumers will exercise only ordinary care in their decisions to purchase beer, and there are no provisions to diminish the likelihood of confusion for these consumers.

The parties agree to use their marks in "commercially distinct product packaging that features highly dissimilar hyphenation, capitalization, formats, color schemes, and design element," but there are no examples of this distinct packaging. Thus the Board cannot gauge how effective the packaging design would be in diminishing the likelihood of confusion.

Finally, the parties have agreed to limit their use of their marks to, respectively, California and Arizona, but the agreement is silent as to other states. Moreover, applicant is not seeking a concurrent use registration (with a corresponding restriction in the cited registration), but rather a nationwide registration. This geographic restriction would not be reflected in a registration that would issue from the involved application.

The Board concluded that this tenth du Pont factor does not weigh in favor of lessening the likelihood of confusion, and accordingly it deemed the factor neutral.

In view of the identity of the goods and their trade channels and the overall similarity in the marks, the Board concluded that confusion is likely. "Registrant's consent is ambiguous and outweighed by several other relevantdu Pont factors. In other words, the shortcomings in the consent agreement are such that consumer confusion remains likely."

And so the Board affirmed the refusal.

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TTABlog comment: Geographical limitations that are not reflected in the involved application and/or registration are a real problem in consent agreements.

Text Copyright John L. Welch 2017.