TTABlog Quarterly Index: October - December 2017

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Section 2(d) - Likelihood of Confusion:

• TTAB Test: Are Frozen Pizza and Restaurant Services Related For Section 2(d) Purposes? [Yes]
• Precedential No. 36: Claim of Conjoint Use Not Pleaded and Not Tried by Consent, Says TTAB
• TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?
• THE SAISON D'HERETIQUE Confusable with HERETIC BREWING COMPANY for Beer, Says TTAB
• TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?
• TTAB Test: Is FALL HARVEST Confusable With AUTUMN HARVEST BLEND For Coffee? [Yes]
• Precedential No. 34: TTAB Orders Cancellation of TAO VODKA Registration for Nonuse and Likelihood of Confusion With TAO Restaurants
• WYHA? CROME Confusable with CHROME GIRL for Hair Care Products, Says TTAB
• TTAB Finds "CREPES BONAPARTE" for Food Trucks Confusable With CAFÉ BONAPARTE & Design for Restaurants
• Finding Bicycles and Clothing Related, TTAB Sustains KÜHL Opposition to KU:L
• PARATI Confusable With PYRAT For Spirits, Says TTAB
• TTAB Test: Are These Two Word + Design Marks Confusable for Beer? [Yes]
• WYHA? "GOLF WITH PURPOSE" Confusable With "GOLF WITH A PURPOSE" For Golf Stuff, Says TTAB
• TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?
• TTAB Test: Is CAREBOARD Confusable with ECAREBOARD for Patient Information Systems? [Yes]
• TTAB Test: Are Distilled Spirits and Brewpub Services Related for Section 2(d) Purposes? [No]
• TTAB Orders Cancellation of AMIGOS FOODS Registration, Third-Party Evidence Fails
• TTAB Test: Is "SLAY OR PREY" Confusable With "PRAY THEN SLAY" for T-Shirts? [No}
• TTAB Test: Is SINFUL ZINFANDEL Confusable with ZINFUL for Wine? [Yes]
• TTAB Rejects Another Consent Agreement, Affirms Section 2(d) Refusal of "8-Bit Aleworks" for Beer
• TTAB Test: Are Department Store Services Related to Computer Store Services? [Yes]
• TTAB Dismisses 2(d) Opposition, Finding Chevron Marks Dissimilar for Footwear

• Finding Sound Equipment Related to Repair and Retail Services, TTAB Affirms SOUNDSCAPE Refusal
• TTAB Finds SUNBELT ORGANIC Confusable With SUNBELT and SUNBELT BAKERY For Some Food Items
• GREATER OMAHA Not Confusable With OMAHA STEAKS for Meat, Says TTAB
• TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?
• Precedential No. 31: TTAB Dismisses Section 2(d) Claim Due to Lack of Use of Opposer's Foreign Mark in USA

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

• TTAB Test: Is "BREATHLESS" Merely Descriptive of Idiopathic Pulmonary Fibrosis Information Services? [No]
• TTAB TEST: Is "UNI/FORM" Merely Descriptive of Clothing [Yes]?
• TTAB Test: Is TRAILERSHARING Merely Desctiptive of Trailer Rental Services? [Yes]
• TTAB Test: Is CRAWLER Merely Descriptive of SUV Suspension Parts? [No]
• TTAB Test: Is BAZAAR HOME a Double Entendre, or Merely Descriptive of Retail Furniture Services [Merely Descriptive]?
• TTAB Test: Is "PERSON" Merely Descriptive of Wearable Electronic Devices? [No]
• APPARATUS Not Generic But Merely Descriptive of Lighting Fixtures and Related Services

Section 2(e)(5) - Functionality:

• Precedential No. 35: TTAB Sustains Opposition to Honda Motor Configuration - Functional and, Alternatively, Lacks Aquired Distinctiveness
• Precedential No. 33: TTAB Orders Cancellation of Three Registrations for Bag Closure Configuration Marks Due to Section 2(e)(5) Functionality

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 35: TTAB Sustains Opposition to Honda Motor Configuration - Functional and, Alternatively, Lacks Aquired Distinctiveness
• TTAB Rejects 5-Year Acquired Distinctiveness Claim Due To Lack of Continuous Use

Misuse of Registration Symbol

• Virginia Tech's "HOKIE" Service Mark Application Survives Challenge From U. Va. Grad

Genericness:

• CAFC Affirms TTAB: MAGNESITA is Generic for .... Guess What?
• APPARATUS Not Generic But Merely Descriptive of Lighting Fixtures and Related Services

Nonuse/Abandonment/Specimen of Use/Failure to Function:

• DESIGNED WITH YOU IN MIND Fails to Function As a Service Mark, Says TTAB
• TTAB Affirms Refusal of OLANA for Jewelry and Clothing: Drawing Doesn't Match Specimen
• Precedential No. 34: TTAB Orders Cancellation of TAO VODKA Registration for Nonuse and Likelihood of Confusion With TAO Restaurants
• TAB Orders Cancellation of CROC-TAIL Registration: Nonuse and Abandonment

Discovery/Evidence/Procedure::

• SDNY Applies B&B Hardware Issue Preclusion Based on 2004 TTAB Decision
• E.D. Va Orders BOOKING.COM to pay USPTO $76k in Expenses
• USPTO Proposes to Remove Certain Rules Governing Trademark Interference Proceedings
• Precedential No. 32: TTAB Defers Decision on Motion to Strike Testimony Declaration
• Precedential No. 31: TTAB Dismisses Section 2(d) Claim Due to Lack of Use of Opposer's Foreign Mark in USA
• Precedential No. 30: Party that Cross-Examines Testimony Declarant Bears The Expenses
• Precedential No. 29: TTAB Refuses to Disqualify Itself in TRUMP-Related Cancellation Proceeding

CAFC Decisions:

• CAFC Rules That the Section 2(a) Bar For Immoral or Scandalous Marks is Unconstitutional
• CAFC Affirms TTAB: MAGNESITA is Generic for .... Guess What?
• CAFC Affirms TTAB's Section 2(d) Refusal of SENSI for Diapers: Extrinsic Evidence of Meaning Irrelevant

Recommended Reading:

• Recommended Reading: The Trademark Reporter Fashion Issue
• Profs. Beebe and Hemphill: "The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than The Weak?"

Other:

• USPTO Seeks Candidates for Deputy Chief Judge at the TTAB
• Wolf Greenfield Seeks Applicants for Trademark/Copyright Associate Position in Boston or New York City
• TTAB Posts December 2017 Hearing Schedule
• TTABlog Reaches its 13th Anniversary!
• TTAB Posts November 2017 Hearing Schedule
• TTABlog Road Trip: AIPLA Annual Meeting, Washington, D.C., October 21st
• TTAB Posts October 2017 Hearing Schedule

Text Copyright John L. Welch 2017.

TTAB Test: Are Frozen Pizza and Restaurant Services Related For Section 2(d) Purposes?

The USPTO refused registration of the mark URBAN PIE PIZZA CO. & Design, shown below left, for "frozen pizza not sold or distributed through restaurants" [PIE PIZZA CO. disclaimed], finding the mark likely to cause confusion with the registered marks URBAN PI & Design (one design, adding the words "creative pizza," shown below right), for restaurant services. Applicant argued that the USPTO did not provide the "something more" needed to show that frozen pizza is related to restaurant services, and furthermore it contended that the weakness of the word URBAN supports a finding that the marks are not similar. How do you think this appeal came out? In re Palermo Villa, Inc., Serial No. 86836045 (December 20, 2017) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The goods/services: The evidence submitted by Examining Attorney Carol Spils suggested that pizzerias often offer frozen versions of their pizzas that are sold through retail stores (including Sbarro's, California Pizza Kitchen, and the beloved UNO brand pizza). The examining attorney also submitted "a sizable number" of third-party registrations identifying frozen pizza and restaurant services under the same mark.

The Board found applicant's statistical arguments regarding the rareness of one entity offering both frozen pizza and restaurant services to be flawed and unsupported by probative evidence. Similarly, applicant's arguments based on TESS search results were faulty. The fact that many registration for restaurant services do not include frozen pizza, and vice versa, begs the question. The issue is whether consumers are exposed to entities that offer both. Moreover:

There is no requirement for goods to be found related that all or even a majority of the sources of one product must also be sources of the other product. Therefore, evidence showing only that the source of one product may not be the source of another product does not aid applicant in its attempt to rebut the evidence of the examining attorney.

The Board also noted that "registrants may have registered the omitted goods/services in a separate registration or may have begun use on those goods/services at a later date."

The Board concluded that the record amply supports the relatedness of frozen pizza and restaurant services, and this evidence contributes to the required "something more."

The marks: Applicant pointed to 12 use-based third-party registrations for marks containing the word URBAN for restaurant, bar, or brewpub services. However, applicant provided no evidence of third-party use. Moreover, none of the registrations contain the term URBAN PIE or URBAN PI. "Thus, while the evidence may suggest that consumers can distinguish among marks that contain URBAN along with other matter, the record does not support such a finding as to marks containing the term URBAN PI(E) as a whole."

Comparing the marks at issue, the Board found them to be very similar. In all three marks, the phrase URBAN PIE/URBAN PI dominates. Applicant argued that "PIE" is "easily distinguishable" from "PI," but the Board noted that PI looks very similar to PIE and sounds identical. Also PI, in the cited marks, appears on a circular design of a pizza or pizza pan, and thus the context gives it the connotation of "pizza pie."

The Board concluded that the marks have a similar look, sound, meaning, and commercial impression.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: What do you think?

Text Copyright John L. Welch 2017.

DESIGNED WITH YOU IN MIND Fails to Function As a Service Mark, Says TTAB

The Board affirmed a refusal to register the applied-for mark DESIGNED WITH YOU IN MIND under Sections 1, 2, 3, and 45 of the Trademark Act, finding that the phrase is a "common informational message that fails to function as a service mark" for "wholesale distributorship services featuring consumer goods, namely, floor covering such as rugs and mats, flooring material such as laminates, bedding linens, animal beds, and bathroom accessories." Applicant Dynamix pointed to eight registrations for the identical phrase for various goods and services, but to no avail. In re Home Dynamix, LLC, Serial No. 87116576 (December 21, 2017) [not precedential] (Opinion by Judge David K. Heasley).

Informational phrases or slogans commonly used in advertising or promotions are not typically perceived as source indicators. They do not identify and distinguish one person's goods or services from those others, and they are merely informational and fail to indicate source.

The critical inquiry for the Board was this: Would the phrase DESIGNED WITH YOU IN MIND be perceived as a source indicator or as a common informational phrase or slogan? "That perception turns on the proposed mark's wording and the nature and context of its use in the marketplace."

Examining Attorney Emma Sirignano pointed out that in applicant's specimens of use, the phrase DESIGNED WITH YOU IN MIND is subordinated to applicant's more prominent HOME DYNAMIX mark. Newspaper excerpts retrieved from LEXIS showed use of the phrase by others in an informational manner, including examples from flooring showroom and wholesale businesses.

Applicant Dynamix argued that none of the examples cited by the examining attorney use the phrase in the context of wholesale distributorships for home products. Applicant caters to wholesale buyers, namely retailers, and not to retail consumers. The retailers, applicant contended, would perceive the phrase as a source indicator.

The Board found that applicant failed to rebut the examining attorney's evidence. A typical use of the phrase is to convey the idea that the goods are suitable for the intended customers. Applicant's specimens of use confirmed this informational interpretation: the slogan appears in small print in the phrase "Rugs|Mats|Linens - Designed With You In Mind™." The phrase would be perceived as modifying the list of home furnishings that precede it. The use of the "TM" symbol merely indicates applicant's intent that the phrase function as a mark, but does not transform the phrase into a trademark.

The term "YOU" could refer to retailers or to the end users, but they have a common interest in obtaining goods that are suitable for the intended purpose. The third-party evidence demonstrated the general use of the phrase in advertising directed to both consumers and businesses. Consumers and competitors would view the phrase as informational matter that all competitors may use.

Dynamix questioned how the examining attorney "could possibly know what consumers are 'accustomed to perceiving' without the benefit of any consumers surveys on the subject." The Board pointed out, however, that examining attorneys "with their limited resources, are not expected to conduct market surveys." If the examining attorney, as here, submits dictionary definitions, specimens of use of the applied-for mark, newspaper articles, and third-party Internet evidence, to support the refusal, the burden shifts to the applicant to show otherwise.

Applicant submitted copies of eight registrations for the slogan DESIGNED WITH YOU IN MIND for various goods and services. Nonetheless, the determination in this case must be made on the available evidence at the time of examination. The Board is not privy to the record in these other cases and, in any event, is not bound by the actions of examining attorneys in allowing those marks to register.

In the case of those eight registrations, unlike the present case, we are left to guess what the evidentiary record was: whether the specimens displayed the term under a more prominent mark; whether the term was set in the midst of a description of goods and services; whether dictionary definitions, newspaper articles, or third-party Internet evidence demonstrating common use was adduced. In short,"We do not know what records were before the Examining Attorneys in other cases. Thus, there is little persuasive value in the third-party registrations." In re Best Software Inc., 58 USPQ2d 1314, 1316 (TTAB 2001).

Here, the examining attorney's evidence "demonstrates that businesses and consumers are generally accustomed to encountering the subject phrase, and that they would not perceive it as a source indicator but rather as a common informational message."

And so the Board affirmed the refusal

Read comments and post your comment here.

TTABlog comment: Consistency is the hobgoblin of small minds.

Text Copyright John L. Welch 2017.

Precedential No. 36: Claim of Conjoint Use Not Pleaded and Not Tried by Consent, Says TTAB

The Board dismissed this opposition to registration of the mark INNOVATION BREWING for beer, finding that Opposer Bell's Brewery had failed to prove a likelihood of confusion with the registered mark INSPIRED BREWING, also for beer (the word BREWING being disclaimed in each mark). Opposer Bell's also pled likely confusion with its common law mark BOTTLING INNOVATION SINCE 1985, but it failed to raise that argument in its brief and so the Board deemed that claim to be waived. In its reply brief, Bell's for the first time asserted that confusion is likely under a "conjoint use" analysis: that the opposed mark INNOVATION BREWING combines elements of both of the opposer's marks. The Board, however, found that opposer had failed to plead that claim, and further that the issue of conjoint use had not been tried by consent. In any case, Opposer Bell's failed to prove the extent of any conjoint use. Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340 (TTAB 2017) [precedential] (Opinion by Judge Susan J. Hightower).

The Goods, etc.: Because the involved goods are identical, the Board presumed that they travel through the same, normal channels of trade to the same classes of consumers. The goods are low-priced and subject to impulse purchase, increasing the risk of likelihood of confusion. Opposer's marks, the Board found, are inherently distinctive. Evidence of third-party use and registration of marks containing formatives of INSPIRE or INNOVATION was insufficient to show that the terms "either have a descriptive significance or are in such widespread use that consumers have come to distinguish marks containing them based on minute differences." The Board concluded that opposer's marks are to be accorded to "the normal scope of protection to which inherently distinctive marks are entitled." [Whatever that means - ed.].

Comparing the Marks: As indicated above, the Board found that Opposer Bell's had pled a likelihood of confusion with each of its two marks, but "[n]owhere in the notice did Opposer allege that Applicant's mark would create a likelihood of confusion with Opposer's conjoint use of INSPIRED BREWING and BOTTLING INNOVATION SINCE 1985." In the leading cases on conjoint use, the claim had been clearly pled. See, e.g., Schering-Plough HealthCare Products, Inc. v. Huang, 84 USPQ2d 1323 (TTAB 2007) (finding applicant's mark DR. AIR likely to cause confusion with the jointly used marks DR. SCHOLL'S and AIR-PILLO). [TTABlogged here].

We hold that a likelihood of confusion claim based on the claimant’s use of two marks conjointly must be pleaded clearly enough to provide fair notice of the claim to the defendant. Our holding is analogous to our familiar requirement that a plaintiff must plead reliance on a family of marks.

The Board also found that the issue of conjoint use was not tried by consent. Opposer Bell's claimed that applicant consented because it did not object to evidence of such use, but the Board concluded that the testimony cited by opposer "does not directly address the specific extent to which the two marks are used together." Although the cited evidence does show use of the marks together, "this evidence also is relevant to Opposer's pleaded claim that confusion is likely as to each of its marks individually" and was insufficient to put Applicant on notice of a claim of conjoint use.

In any event, Bell's failed to establish that use of its pleaded marks together "has been effective to qualify them for conjoint analysis." According to Schering-Plough, two elements must be established for conjoint use: (1) the marks have been and are being used together, and (2) the marks "have been used in such a manner and to such an extent in connection with a single product that they have come to be associated together, in the mind of the consuming public, as indications of origin for opposer's product." Opposer satisfied the first element but not the second.

The Board found opposer's use of the two marks together on vehicle wraps, in three magazine issues, on a digital billboard, and at several beer festivals, insufficient to show that the marks "have been used conjointly to such an extent that together they have come to indicate source. Even for the evidence displaying both marks, there is no reason to assume that purchasers would see them as anything other than two distinct marks."

In sum, Opposer Bell's waived its claim of likelihood of confusion as to the mark BOTTLING INNOVATION SINCE 1895, and failed to plead or prove conjoint use.

Turning to opposer's mark INSPIRED BREWING, the Board concluded that it differs from the applied-for mark INNOVATION BREWING in sight, sound, meaning, and overall commercial impression to such an extent that the first du Pont factor is dispositive.

And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: Even if opposer had proven conjoint use, would you find confusion likely?

Text Copyright John L. Welch 2017.

Recommended Reading: The Trademark Reporter Fashion Issue

The latest issue of the The Trademark Reporter focuses on fashion, including articles or commentaries on blockchain technology, Star Athletica and its aftermath, personal name brands, and design protection here, in Canada, and in Europe. The entire issue may be downloaded here. The table of contents is set forth below.

Protecting Fashion: A Comparative Analysis of Fashion Design Protection in the United States and the European Union
Francesca Montalvo Witzburg

The Designer Formerly Known as . . .: Intellectual Property Issues Arising from Personal Names as Fashion Brands
George C. Sciarrino and Matthew D. Asbell

Cah-Nah-Dah, Cis-Boom-Bah: Star Athletica and Intellectual Property Protection of Fashion Products in Canada
Sheldon Burshtein

Commentary: Puma SE v. Forever 21, Inc.: Puma’s “Fenty” Slides May Not Have the Traction for the Uphill Battle Against Forever 21
Jessica Cohen-Nowak

Commentary: Cartwheeling Through Copyright Law: Star Athletica, L.L.C. v. Varsity Brands, Inc.: The Supreme Court Leaves as Many Open Questions as It Provides Answers About the Viability and Scope of Copyright Protection for Fashion Designs
Eleanor M. Lackman

Commentary: The Blockchain Is in Fashion
Rosie Burbidge

Read comments and post your comment here.

TTABlog comment: Once again, I thank The Trademark Reporter for granting permission to provide a link to this issue of TMR, which is Copyright © 2017 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 107 TMR No. 6 (November-December 2017).

Text Copyright John L. Welch 2017.

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

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 are three TTAB decisions rendered recently in Section 2(d) appeals. One refusal was reversed. Which one? [Answer in first comment].



In re Ben Zour, Serial No. 87210472 (December 19, 2017) [not precedential] (Opinion by Judge Francie R. Gorowitz) [Section 2(d) refusal to register the mark SHEPHERD ARTISAN COFFEE & Design (below left) for "coffee shops" [ARTISAN COFFEE disclaimed] in view of the registered marks SHEPHARD'S BEACH RESORT in standard character form, and SHEPARD'S BEACH RESORT & Design (below right) [BEACH RESORT disclaimed], for "hotel services and restaurant services"].

In re Delta Faucet Company , Serial No. 87044505 (December 19, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman) [Section 2(d) refusal of SATORI for “plumbing products, namely, faucets and showerheads" in view of the identical mark SATORI for "bathroom furniture"].

In re Security Automation Systems, Inc., Serial Nos. 86885126 (December 14, 2017) [not precedential] (Opinion by Judge Lorelei Ritchie) [Section 2(d) refusal to register the mark SAS SECURITY AUTOMATION SYSTEMS and Design (shown below) for "installation of security systems for buildings and curtilage sold as subcontracted services to contractors engaged in building and construction of correctional institutions, namely, security systems for on-site monitoring and control of correctional institution buildings and curtilage by customers of said contractor" [SECURITY AUTOMATION SYSTEMS disclaimed] in view of the registered mark S-A-S ALARM SERVICE for "monitoring of security system" [ALARM SERVICE disclaimed].

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHA?s here?

Text Copyright John L. Welch 2017.

THE SAISON D'HERETIQUE Confusable with HERETIC BREWING COMPANY for Beer, Says TTAB

The Board affirmed a Section 2(d) refusal to register the mark THE SAISON D'HERETIQUE, finding the mark likely to cause confusion with the registered mark HERETIC BREWING COMPANY [BREWING COMPANY disclaimed], both for beer. Applicant conceded that "Saison" is a type of ale, but noted that the word also means "season" in French. SAISON plays a crucial role in creating a double entendre, applicant asserted, and significantly reduces the likelihood of confusionit. The Board disagreed. In re C G Asset Management Pty Ltd, Serial No. 87033933 (December 15, 2017) [not precedential] (Opinion by Judge Anthony R. Masiello).

Because the involved goods are in part identical, the Board assumed that those goods travel in the same, normal channels of trade to the same classes of consumers.

The marks have obvious differences in appearance, sound, and meaning. Examining Attorney Paul Ferrer argued that the descriptive wording in each mark should be given less significance: BREWING COMPANY obviously names the type of entity that produces beer; SAISON is a generic term for a type of beer.

As to Applicant's argument regarding the meaning of "season" in French and the alleged double entendre, "The season of a heretic," applicant pointed out that THE SAISON D' is the first part of its mark and asserted that "when the term THE SAISON D' is given fair weight (as it should to understand a double entendre), confusion with the cited mark is significantly reduced."

Considering the doctrine of foreign equivalents, the Board concluded that customers,"even if they know French, "are unlikely to stop and translate and would take the mark 'as it is.' They would perceive the mark as the generic name of the goods followed by the distinctive term D'HERETIQUE." The terms HERETIC and D'HERETIQUE are "sufficiently similar in appearance to be recognized as variants of one another; and despite their difference in endings, the two terms look alike due to their shared letters and could be pronounced substantially alike."

Moreover, even if customers were to translate applicant's mark, they could, in light of applicant's argument that the D' in D'HERETIQUE creates a possessive, perceive the mark to mean "Heretic's saison-style beer."

And so the Board affirmed the refusal to register vis-a-vis as to the beer-related products in the subject application. As to the other class 32 products (root beer, ginger ale, fruit juice), which the USPTO did not challenge, the application will proceed to publication.

In a concurring opinion, Judge Frances Wolfson opined that the consideration of the doctrine of foreign equivalents was improper because that doctrine applies only a "foreign mark," and a mark that comprises a foreign word or words combined with English words is not a "foreign mark."

Read comments and post your comment here.

TTABlog comment: Do you agree?

Text Copyright John L. Welch 2017.

CAFC Rules That the Section 2(a) Bar For Immoral or Scandalous Marks is Unconstitutional

The United States Court of Appeals for the Federal Circuit has ruled that the Section 2(a) bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech. The CAFC therefore reversed the decision of the TTAB (here) that had affirmed the USPTO's refusal to register the mark FUCT for athletic apparel on the ground that the mark is vulgar and therefore scandalous. In re Brunetti, 125 USPQ2d 1072 (Fed. Cir. 2017) (Opinion by Circuit Judge Kimberly A. Moore).

Scandalous or Immoral? Section 2(a), in pertinent part, provides that the USPTO may refuse to register a mark that "[c]onsists of or comprises immoral ... or scandalous matter." The USPTO does not distinguish between "immoral" and "scandalous" matter but rather applies the 2(a) bar as a unitary provision ("the immoral or scandalous provision"). In considering this disqualification, the USPTO asks whether "a substantial composite of the general public" would find the mark scandalous, defined as "shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable ... giving offense to the conscience or moral feelings; ... or calling out for condemnation." The USPTO may prove scandalousness by proving that a marks is "vulgar." The determination is made "in the context of contemporary attitudes."

The TTAB concluded that the mark FUCT is vulgar and therefore scandalous. Dictionary entries for the word "fuck" deemed it "almost universally vulgar." The Board found that "fuct" is the "phonetic twin" of "fucked," the past tense of "fuck." Evidence of applicant's use of the mark buttressed the Board's finding of a link between the mark and the word "fuck." The Board also found that applicant's assertion that "fuct' is a coined term for "Friends yoU Can't Trust" stretched credulity.

The CAFC ruled that substantial evidence supported the Board's findings and the Board did not err in concluding that the applied-for mark comprises immoral or scandalous matter.

Constitutionality: In In re Tam, the Supreme Court held that the disparagement provision of Section 2(a) was facially unconstitutional because it violates the Free Speech clause of the First Amendment. "It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend." Here the government contended that Tam does not resolve the constitutionality issue because the disparagement provision implicated viewpoint discrimination, whereas the immoral or scandalous provision is viewpoint neutral.

The CAFC, putting aside the question regarding viewpoint discrimination, concluded that the immoral or scandalous provision "impermissibly discriminates based on content in violation of the First Amendment."

The government restricts speech based on content when "a law applies to particular speech because of the topic discussed or the idea or message expressed." To survive a constitutional challenge, such a law "must withstand strict scrutiny review, which requires that the government 'prove that the restriction furthers a compelling interest and is narrowly tailored to achieve that interest.'"

The government contended that the immoral or scandalous provision does not implicate the First Amendment because trademark registration is either a government subsidy program or a limited public forum. The CAFC rejected those arguments.

Alternatively, the government asserted, trademarks are commercial speech requiring only the intermediate level of scrutiny of Central Hudson, and under this standard the immoral or scandalous provision is an appropriate content-based restriction tailored to substantial government interests. The CAFC, however, pointed out that trademarks convey a commercial message, but often have an expressive content as well. There is no question that the immoral or scandalous provision targets the expressive component. Therefore, the provision should be subject to strict scrutiny.

In any case, the CAFC concluded, the immoral or scandalous provision is unconstitutional even under the intermediate scrutiny framework. The government does not have a substantial interest in protecting the public from profane and scandalous marks. Nor does the provision advance the government's asserted interest, since Section 2(a) does not prevent applicants from using their marks. And the inconsistent application of the provision shows that the provision has not been "carefully tailored" to serve the government's alleged interests.

Finally, the court noted that it must construe statutes narrowly to preserve their constitutionality when possible. However, it found no reasonable definition of the statutory terms "scandalous" and "immoral" that would pass muster. In his concurrence, Judge Dyk proposed that the court narrow the scope of the provision to "obscene" marks in order to preserve the provision's constitutionality. The majority, however, found no basis for construing "immoral or scandalous" to mean "obscene," and stated that it could not re-write the statute.

Conclusion: The court held that the immoral or scandalous provision is unconstitutional because it violates the First Amendment, and it therefore reversed the Board’s holding that applicant's mark is unregistrable under §2(a).

The First Amendment ... protects private expression, even private expression which is offensive to a substantial composite of the general public. The government has offered no substantial government interest for policing offensive speech in the context of a registration program such as the one at issue in this case.

Read comments and post your comment here.

TTABlog comment: Will Congress amend Section 2(a) to replace "immoral or scandalous" with "obscene? I wouldn't bet on it any time soon.

Text Copyright John L. Welch 2017.

Precedential No. 35: TTAB Sustains Opposition to Honda Motor Configuration - Functional and, Alternatively, Lacks Aquired Distinctiveness

In an exhaustive 130-page opinion (including a 12-page appendix), the Board sustained an opposition to registration of the product configuration shown below, for "engines for use in construction, maintenance and power equipment," finding the applied-for mark to be functional under Section 2(e)(5) and, alternatively, lacking in acquired distinctiveness. This summary of the Board's decision will discuss the high points of the Board's ruling. Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468 (TTAB 2017) [precedential] (Opinion by Judge Christopher Larkin).

The Board observed that the mark Applicant Honda seeks to register is depicted in the drawing. "[T]he drawing of the mark, not the words an applicant uses to describe it, controls what the mark is." In re Change Wind Corp. Matter not claimed must be shown in broken lines. The Board thus noted that Honda is seeking protection for what it described as "the configuration of an engine with an overall cubic design, with a slanted fan cover, the fuel tank located above the fan cover on the right, and the air cleaner located to the left of the fuel tank."

Evidentiary Issues: The parties raised many evidentiary objections, several of which merited the Board's discussion. Applicant Honda objected to the admission of copies of 14 utility model applications that it filed in Japan, contending that the Japanese utility model system has no counterpart in American law and that it is unclear whether the Japanese applications were ever examined or issued. The Board found this to be an issue of first impression. It overruled the objection, observing that the "analysis requires us to do what we must do in considering Applicant's issued United States patents - determine whether the claims and disclosures in the patent show the utilitarian advantages of the design sought to be registered as a trademark."

The Board sustained Honda's objection to the admissibility of a decision by the Office of Harmonization in the Internal Market (OHIM) affirming a refusal to register a depiction of an engine design and containing a summary of Honda's argument under European Community Law as to whether the design was inherently distinctive. The Board observed that European Community Law is "at odds with United States law" because in this country a product configuration mark cannot be inherently distinctive. The Board, however, overruled an objection to the admissibility of certain statements made by Honda's Turkish counsel before a Turkish court.

Section 2(e)(5) Functionality: Section 2(e)(5) bars registration of "a mark which … comprises any matter that, as a whole, is functional.” In general, "'a product feature is functional,' and cannot serve as a trademark, 'if it is "essential to the use or purpose of the article or if it affects the cost or quality of the article.'" (Citing Traffix, Qualitex, Inwood, and other cases). The functionality doctrine is intended to encourage legitimate competition by maintaining the proper balance between patent law and trademark law. See Qualitex, 34 USPQ2d at 1163-64.

The Board observed that its analysis may begin with a consideration of the functionality of individual features, as long as those features are considered in the context of the design as a whole. In particular, the Board considered the air cleaner cover (A), the fuel tank (B), the carburetor cover (C), and the fan cover (D):

In assessing the functionality of the design as a whole, the Board must determine whether the mark "is in its particular shape because it works better in that shape." Becton, Dickinson, 102 USPQ2d at 1376; see also Change Wind. The Board found that the fan cover (D) "is in its particular slanted shape because (as both experts agree) that slanted shape works better to direct cooling air to the hottest part of the engine than a non-slanted shape."

The shape of the fuel tank (B) has both utilitarian and design elements, but positioning and its overall "roughly rectangular" shape are "more prominent, thus making the features of the fuel tank as a whole primarily functional." As to the carburetor cover (C}, it also has utilitarian and decorative elements, but its relative positioning and placement make its features as a whole functional, despite its inclusion of purely decorative ribs.

The air cleaner cover (A) also includes functional and non-functional elements, but here the Board found its features not to be primarily functional. The choice to use a cube or rectangular shape was a design choice.

The "overall cubic design" of the engine has the utilitarian benefit that Honda sought to achieve when it designed its GX engine, including compactness and adaptability to a range of OEM options. The Board found that the "overall cubic design" of Honda's applied-for mark "is in its particular shape because it works better in that shape."

Finally, the Board considered the "critical question:" the degree of utility present in the overall design of the mark," taking into account the impact of any "specific styling components" of each feature. The Board found these styling components to be relatively insignificant, concluding that the overall appearance of the applied-for mark is essential to the use or purpose of the engine and affects its quality under the Inwood. test because the engine configuration mark as a whole "is in its particular shape because it works better in that shape."

Because the Honda engine design is functional under Inwood, there was no need to consider the CCPA's Morton-Norwich factors. Nonetheless, for the sake of completeness, the Board addressed these factors briefly. It found the seven United States patents proffered by Opposer Kohler to be non-probative of functionality, but found two of the Japanese utility models to be corroborative of its finding of functionality.

Honda argued that its expired design patent D282,071 is presumptive evidence of non-functionality. See Loggerhead Tools, 119 USPQ2d at 1432. The Board, however, found this design patent "not persuasive evidence of non-functionality" since the patented design differed from the mark at issue here.

Honda's advertising touted performance attributes of the GX Engine design, but did not specifically tie those benefits to the applied-for design. As to alternative designs, Honda did not show that other engines "offer the same performance benefits" as the applied-for mark. In any case, as explained in TrafFix, once a product feature is found functional based on other considerations, there is no need to consider the availability of alternative designs. The testimony regarding cost of manufacture was inconclusive, but in any case, since the Board already found that the design has use-related benefits, whether the design was more expensive to manufacture was not relevant.

Acquired Distinctiveness: Assuming arguendo that Honda's engine design was eligible for registration, the Board considered the issue of acquired distinctiveness. Of course, under Wal-Mart, a product configuration can never be inherently distinctive. Opposer Kohler had the initial burden to establish a prima facie case that Honda did not satisfy the acquired distinctiveness requirement of Section 2(f).

The burden to prove acquired distinctiveness is heavier when considering a product configuration. Furthermore, where, as here, many third parties use similarly shaped configurations, "a registration may not issue except upon a substantial showing of acquired distinctiveness."The Board found, based on the third-party uses together with other deficiencies in Honda's evidence, that Kohler had established a prima facie case that the applied-for mark does not serve as a source identifier.

Honda's sales and advertising figures, although very substantial, are not probative of purchaser recognition. The declarations from Honda distributors were not persuasive: they were substantively identical, were based on both the trademark drawing and a color photo of the engine, and were conclusively worded and failed to explain what it was about the design that was unique or distinctive.

Both parties submitted surveys, which the Board reviewed in some detail. Honda's survey purported to show a 42% level of recognition while Kohler's survey showed 18%. The deficiencies in the Honda survey, conducted by George Mantis, significantly impacted its probative value: it employed a photograph of the Honda engine rather than the application drawing, as well as poorly chosen control. The Kohler survey conducted by Hal Poret contained some flaws, but they did not significantly reduce the value of the survey. The Board concluded that the true level of association "is likely closer to the net level reported by the Poret survey." In any case, however, a net level of association between 18 and 42% has "little evidentiary value" on the issue of the distinctiveness of the applied-for mark.

As to the circumstantial evidence, Honda's long use of the applied-for design has diminished importance in light of the many third-party engines with similar configurations. Sales volume and advertising expenditures, though very substantial, are not probative of consumer recognition of the engine design as a source indicator. Although the advertising displayed a picture of the Honda engine, none of the advertising directed consumers to the specific features of the applied-for mark.

Finally, Honda claimed that intentional copying of the design supported a finding of acquired distinctiveness, but the Board found this evidence of limited value. Although Honda enjoyed some success in enforcing its purported rights, such evidence may show a desire to avoid litigation rather than a confirmation of the distinctiveness of the design.

The Board ruled that Honda failed to establish that the applied-for mark has acquired distinctiveness under Section 2(f), and it therefore sustained Kohler's opposition.

Read comments and post your comment here.

TTABlog comment: I am glad to see the Board note the distinction between de facto and de jure functionality. See footnote 34. "De facto functionality simply means that a design has a function .... Such functionality is irrelevant to the question of whether a mark as a whole is functional so as to be ineligible for trademark protection."

Text Copyright John L. Welch 2017.

SDNY Applies B&B Hardware Issue Preclusion Based on 2004 TTAB Decision

In a trademark infringement suit in the Southern District of New York, the U.S. district court granted plaintiff's motion for summary judgment, ruling that issue preclusion applied to the issue of likelihood of confusion based on a 2004 TTAB decision [pdf here]. The court found defendant's mark LIANA for wine confusable with plaintiff's previously registered mark LIANO for wine. Defendants argued that "their actual marketplace usage of LIANA is materially different from that with the TTAB adjudicated," but the court disagreed. Did the court properly apply B&B Hardware? Cesari S.R.L. v. Peju Province Winery L.P. et al., Civil Action No. 17 Civ. 873 (NRB) (S.D.N.Y.  Dec. 11, 2017).

According to B&B Hardware, issue preclusion applies to TTAB adjudications, the Court concluding that "[s]o long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply."

Defendants pointed out that their actual usage is limited to wines from grapes grown in Northern California, wines purchased by sophisticated customers, new world wines, wines priced between $40 and $60 per bottle, and wines sold on specific websites and at specific wineries.

The court, however, found this to be a "distinction without a difference in this context."

The specific trade channels and classes of consumers that purportedly characterize the LIANA mark’s usage are among the “reasonable trade channels” and “usual classes of consumers” the TTAB considered. In other words, the marketplace usage the TTAB considered, wines, entirely encompasses the narrower usages defendants proffer in this litigation. Wines purchased by sophisticated consumers, after all, are still wines. Because defendants have not offered any evidence that LIANA is used with respect to goods other than wines (bicycles or soda, for instance), there are no “non-disclosed” usages that might necessitate a successive adjudication. See B&B Hardware, 135 S. Ct. at 1307-08.

The court therefore granted plaintiff's motion for summary judgment against the one defendant involved in the prior TTAB proceeding, but not to the other defendants because plaintiff failed to prove that they controlled the applicant in the TTAB proceeding or in this litigation.

Read comments and post your comment here.

TTABlog comment: Is this a correct reading of B&B Hardware? I think not. The Board did not limit its consideration to actual marketplace conditions, and therefore I think the Board's decision does not automatically end the discussion. Remember what Justice Ginsburg said in her concurring opinion in B&B Hardware. She concurred on the understanding that "for a great many registration decisions issue preclusion will obviously not apply," because the decisions often involve "a comparison of the marks in the abstract and apart from their marketplace usage."

Text Copyright John L. Welch 2017.

Wolf Greenfield Seeks Applicants for Trademark/Copyright Associate Position in Boston or New York City

Wolf, Greenfield & Sacks, PC is seeking an attorney to join our Boston or New York office in the Trademark and Copyright Group. Qualified applicants will have up to 3 years of experience in trademark matters, including domestic and international clearance, prosecution, and enforcement, as well as experience in managing a global trademark portfolio. The position will also involve drafting motions and other pleadings for the TTAB and Federal Court. Previous experience preparing and responding to cease and desist letters and handling other enforcement matters is preferred. Excellent writing skills, strong academic credentials, business acumen, and strong interpersonal and communication skills are required. An interest in public presentation, writing articles, and active marking and business development are also required. Interested applicants should contact Legal.Recruiting at WolfGreenfield.com.

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

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 Northern Brewer, LLC, Serial Nos. 86973148 (December 12, 2017) [not precedential] (Opinion by Judge Francie R. Gorowitz) [Section 2(d) refusal to register the mark TROPICAL BLISS for kits for making wine, in view of the registered mark BLISS for wines].

In re Hy-Vee Inc., Serial No. 86749605 (December 12, 2017) [not precedential] (Opinion by Judge Frances Wolfson) [Section 2(d) refusal of THE SOAP & WATER COMPANY for "retail store service within a section of a retail supermarket featuring bath and body products" [SOAP and COMPANY disclaimed], in view of the registered mark SOAP & WATER CLEAN WATER THROUGH SOAP for "soaps for personal use; personal care products, namely, body lotion, bath gels, shower gels, body sprays, bath soaps, body scrubs and cosmetic preparations for cosmetic body wrap applications for general personal care" and for "retail store services and online retail store services featuring cosmetics, skin care and personal care products" [SOAP disclaimed]].

In re European Specialties, LLC DBA Holy Cow! Kosher and Albert Mayzels, Serial No. 86859900 (December 13, 2017) [not precedential] (Opinion by Judge Cindy B. Greenbaum) [Section 2(d) refusal to register the mark HOLY COW KOSHER for certified Kosher meats [KOSHER disclaimed], in view of the registered mark HOLY COW for "sandwich spreads, namely, sweet fruit based spread and savory vegetable based spread" and "condiments, namely, ketchup, mustard, and mint; spices; sauces for curry and rice"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

TTAB Test: Is FALL HARVEST Confusable With AUTUMN HARVEST BLEND For Coffee?

The USPTO refused registration of the mark FALL HARVEST for "coffee for use in single-serve brewing machines," finding the mark likely to cause confusion with the registered mark AUTUMN HARVEST BLEND for "whole roasted coffee beans, ground roasted coffee beans and processed ground coffee beans" [BLEND disclaimed]. Applicant pointed out that its goods would be used by consumers only for single-service machines, and it argued that in view of 14 third-party registrations, HARVEST is a weak formative. How do you think this came out? In re Trilliant Food and Nutrition, LLC, Serial No. 87400795 (December 11, 2017) [not precedential] (Opinion by Judge Albert Zervas).

The Board found that the involved goods overlap. Registrant's goods are broadly described and its coffee beans include ground roasted coffee beans "for use in single serve brewing machines." The evidence showed that fresh ground coffee can be used in a coffee maker instead of pods. Because the goods overlap, the Board must presume that they travel in the same channels of trade to the same classes of consumers.

As to the strength of the cited mark, applicant submitted 14 third-party registrations covering coffee, for marks containing the word HARVEST, including PERFECT HARVEST, FIELD HARVEST, DAKOTA HARVEST, and WORLD HARVEST. The Board noted that under Jack Wolfskin and Juice Generation, registration and use of a particular term for the same or very similar goods can be "powerful" evidence of weakness.

The Board noted, however, that even though HARVEST is a weak formative for coffee, (1) registrant's mark includes other terms, (2) applicant has not established any weakness in registrant's mark as a whole, and (3) even weak marks are entitled to protection against registration of similar marks for identical goods. The Board concluded that this factor slightly favored applicant.

As to the comparison of the marks, Examining Attorney Amanda Galbo contended that the marks are similar because the word FALL in applicant's mark is identical in meaning to AUTUMN in the cited mark. Furthermore, she argued, the term BLEND does not sufficiently distinguish the marks.

The Board agreed with the examining attorney. Even if HARVEST is a weak formative for coffee, the terms AUTUMN and FALL have the same meaning and the word BLEND is highly descriptive or generic. The Board therefore found that that marks are similar in meaning and commercial impression. Even if the marks are somewhat different in appearance and sound, similarity in meaning and commercial impression is sufficient to support a finding of likely confusion.

Balancing the relevant du Pont factors, the Board found confusion likely, and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Easy-peasy?

Text Copyright John L. Welch 2017.

TTAB Affirms Refusal of OLANA for Jewelry and Clothing: Drawing Doesn't Match Specimen

The Board affirmed a refusal to register the mark OLANA for jewelry and various clothing items on the ground that the drawing is not a "substantially exact representation of the mark" as it appears on the specimens of use. The word OLANA does not appear by itself on the specimens, but rather is preceded by HALAU HULA or HULA. In re Ai, Serial No. 86842205 (December 7, 2017) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Trademark Rule 2.51(a) requires that the drawing of the mark be a "substantially exact representation" of the mark as used on or with the goods. The word "substantially" means that only inconsequential variations are permitted in the mark as it appears on the drawing. However, the Board observed, an applicant may seek to register an element of a composite mark if that element presents a separate and distinct commercial impression.

Among the circumstance in which a portion of a composite mark was found to be egistrable are:

(1) The two components include a corporate name or house mark along with another trademark or a descriptive term. [SERVEL INKLINGS]
(2) The other component is a surname. [RESPONSER MEYER]
(3) The component is a non-descriptive element that is part of a phrase. [ANOTHER 8-48 FROM MATHATRONICS]
(4) The other component is a part number. [TRO6AI-TINEL-LOCK-RING]

Here the question was whether OLANA is a separate and distinct mark in itself. "In other words, are 'HALAU' and 'HULA' essential and integral subject matter missing from the drawing?"

Applicant argues that separation of the words on the clothing, and the capitalization of the letter “O” in OLANA on the jewelry provides OLANA with a distinct commercial impression. However, on the jewelry, the letter “H” in the words HALAU and HULA are also capitalized such that the terms are equally emphasized, and although the words on the clothing are not physically connected, they are displayed as a single phrase in similar size and font.

The Board noted that HALAU and HULA are not suggestive or descriptive of applicant's goods. HALAU HULA is a Hawaiian term for "Hula School." Consumers would view the terms here as a reference to a particular school, rather than separating OLANA from the other words. There was nothing in the record to suggest that customers would divide the phrase into component parts and use OLANA alone to call for or refer to the goods.

And so the Board affirmed the refusal under Sections 1 and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment: Would you have appealed?

Text Copyright John L. Welch 2017.

Precedential No. 34: TTAB Orders Cancellation of TAO VODKA Registration for Nonuse and Likelihood of Confusion With TAO Restaurants

The Board granted a petition for cancellation of a registration for the mark TAO VODKA for “alcoholic beverages except beer" [VODKA disclaimed] on two grounds: nonuse and likelihood of confusion with petitioner's registered and famous mark TAO for restaurant and nightclub services. Respondent's "eyebrow-raising activities" in choosing its mark after petitioner refused to purchase its vodka, including adoption of a font very similar to the font used by petitioner, factored into the Board's Section 2(d) ruling. Tao Licensing, LLC v. Bender Consulting Ltd. d/b/a Asian Pacific Beverages, 125 USPQ2d 1043 (TTAB 2017) [precedential] (Opinion by Judge Cynthia C. Lynch).

Nonuse: Under Section 45 of the Trademark Act, a trademark is in "use" when the goods bearing the mark "are sold or transported in commerce." Here, the Board considered whether the importation or distribution of samples of the goods met the use in commerce requirement. Respondent conceded that, prior to filing its Statement of Use on April 24, 2012, it had not sold any goods under the mark TAO VODKA, but it contended that the distribution of samples sufficed. It appeared to concede that mere importation of the goods from the Vietnamese manufacturer did not constitute use in commerce. See Avakoff v. Southern Pacific Co., 765 F.2d 1097, 226 USPQ 435, 436 (Fed. Cir. 1985) (shipment of goods from the manufacturer to the trademark owner did not satisfy the use or transportation in commerce requirement, as "it was a shipment of the goods in preparation for offering the goods for sale. It did not make the goods available to the purchasing public").

Turning to the issue of distribution of samples, the Board first observed that alcohol is distributed in a three-tiered system: a manufacturer may sell only to a distributor, who may sell only to a retailer, who may sell only to the public. The Board also noted that the testimony of Respondent's witness showed a lack of knowledge of the underlying facts and the lack of corroborating documentation. Cf. Research in Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926 (TTAB 2009) (lack of documentation contributes to finding lack of bona fide intent to use a mark)

Respondent testified that it distributed samples to three entities. The first, J.M. Stevens, was not a distributor of alcohol but rather was a shareholder of Kai Vokda, an entity related to respondent. There was no evidence as to the disposition of those samples.

The second was a restaurant called Tango Cafe, but Tango was not a distributor. The testimony indicated that this activity was "preliminary and exploratory, and Respondent was not yet ready to introduce the product in the ordinary course of trade."

The third was a distributor named Northern Wine & Spirits who, according to respondent, "were going to review [the product] and see if they had interested parties in their market." There was no written follow-up and so sales were ever made to or by Northern.

None of the three entities purchased or sold any TAO VODKA. In fact the first sale did not occur until two and one-half years later. The Board found that "the record as a whole reflects that Respondent was not yet using or even ready to use the mark in the ordinary course of trade, but was merely exploring such use at some point in the future." The "sharing of these samples ... was more in the nature of a preliminary advisory consultation than bona fide use of the TAO VODKA mark in the ordinary course of trade."

Therefore the Board concluded that respondent did not use the mark TAO VODKA in commerce prior to the Statement of Use deadline (September 20, 2012).

Likelihood of Confusion: Petitioner's evidence of customer volume and revenue, advertising expenditures, unsolicited media coverage, and industry awards convinced the Board that TAO is a famous mark for restaurant services. The Board noted, however, that even if the mark were of "average strength," its conclusion under Section 2(d) would be the same. [Note that the Board cited the CAFC's Phelps decision for the proposition that the 5th du Pont factor "involves assessing the mark "'along a spectrum from very strong to very weak.'" In other words, fame for Section 2(d) purposes is not an all-or-nothing determination. - ed.].

Respondent argued that, based on third-party registration and use, TAO is weak and diluted. The Board, however, discounted the third-party use evidence [two dozen or so restaurants] because it was somewhat outdated, because it lacked specifics regarding the extent of use [So much for Juice Generation and Jack Wolfskin - ed.], because respondent's witness did not collect the information, and because petitioner successfully challenged some of the restaurants. The third-party registrations submitted by respondent were mostly for unrelated goods or services. Only one related to alcoholic beverages.

The third-party evidence did show, however, that "tao" suggests that the restaurant has an Asian theme or serves Asian food. Nonetheless, in light of the "compelling evidence" of the fame of petitioner's mark, the third-party evidence did not convince the Board that TAO is weak of entitled to a limited scope of protection. "The commercial strength of Petitioner's TAO mark outweighs any conceptual weakness." [I thought the Board just said that the fame of the TAO mark didn't matter? - ed.].

Not surprisingly, the Board found the marks to be similar in look, sound, meaning, and commercial impressions. As to the involved goods and services, the Board recognized that it is not enough to show that restaurants serve food and beverages: "something more" is required to establish that alcoholic beverages and restaurant and nightclub services are related.

The evidence showed that petitioner uses its TAO mark to promote alcoholic beverages, that its restaurants offer drinks, including at least one vodka drink, that bear TAO-formation names (e.g., Tao-love potion #9), that it sometimes engages in joint promotional efforts with vodka manufacturers, and that it advertises "Vodka Open Bars" at events in its venues. The evidence also showed that "private-label" bottling is an industry trend, and the Board concluded that "consumers on a widespread basis must be aware of it." [If private label bottling is widely recognized - which is news to me - then are all bottled alcoholic beverages related to restaurant services? - ed.].

Moreover, respondent's own actions "show that it believed that consumers would view Respondent's vodka and Petitioner's services as related." The record showed that respondent rebranded an existing vodka product, Kai Vodka, as TAO VODKA after its unsuccessful attempt to sell its Kai Vodka to TAO venues. Respondent also initially displayed the mark in a stylized font very similar to petitioner's font. It then sought an agreement to sell its registration to petitioner at a "high price" and to supply petitioner with large volumes of vodka. From this evidence, the Board found that "Respondent anticipated a benefit from implying a connection to Petitioner, a benefit that could only exist if Respondent believed that consumers would actually see Respondent's products as related to Petitioner's restaurant services."

The Board therefore concluded that consumers would likely infer that respondent's goods "emanate from the same source as Petitioner's services, or are sponsored by Petitioner."

Because respondent's goods may be sold to individual consumers in restaurants and nightclubs, the channels of trade and classes of consumers overlap. As to the lack of actual confusion evidence, the Board agreed with petitioner that because of respondent's limited use of its mark, there was little opportunity for actual confusion to occur.

Finally, under the catch-all 13th du Pont factor, petitioner maintained that respondent's bad faith weighed in favor of a finding of likely confusion. The Board agreed that respondent's "more eyebrow-raising activities," discussed above, were further evidence that confusion is likely.

And so the Board found confusion likely and it ruled that Section 2(d) is a second, independent ground for granting the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: Suppose someone independently came up with the mark TAO VODKA and got a registration. Same result?

NB: Petitioner also argued that the distribution of samples to Tango and Northern was merely intrastate (in Hawaii) and therefore could not be use in commerce. The Board, however, pointed out that the CAFC in Christian Faith Fellowship v. Adidas AG, "noted that the appropriate inquiry should focus on whether the general category of such transactions would cause a substantial effect on interstate commerce." Congress may regulate activity under the Commerce Clause even if the goods do not cross state lines, and "there is likewise no such per se condition for satisfying the Lanham Act's 'use in commerce' requirement.'" Id. 120 USPQ2d a6 1647.

Text Copyright John L. Welch 2017.

WYHA? CROME Confusable with CHROME GIRL for Hair Care Products, Says TTAB

The USPTO refused registration of the mark CROME for various hair care products, finding the mark confusingly similar to the registered mark CHROME GIRL for, inter alia, hair care products [GIRL disclaimed]. Would you have appealed? In re Azam, Serial No. 85863664 (December 6, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman).

Because the goods in the application and cited registration are, in part, identical, the Board presumed that those goods travel in the same channels of trade to the same classes of consumers.

As to the marks, the Board could not find, and applicant did not provide, any definition of the word "crome," and so the Board found that "crome" is a misspelling of the word "chrome."

Applicant contended that its mark CROME "creates a commercial impression of goods that make anyone shine and glow, similar to chrome when it is hit with the sun," whereas CHROME GIRL "creates a commercial impression of a female who is either made of chrome, a female who endorses chrome, or a shiny girl." The Board saw little difference in these purported meanings and impressions. "In essence, Applicant argues that its mark means and engenders the commercial impression of goods that will make you shine and glow and the Registrant's mark means and engenders the impression of a shiny girl."

The Board concluded that the marks are similar in appearance, sound, connotation, and commercial impression.

Applicant pointed out that there have been no instances of actual confusion during the several years of co-existence of the marks in the marketplace. The CAFC in Majestic Distilling, however, pointed out that "[t]he lack of evidence of actual confusion carries little weight ..., especially in an ex parte contest." [since the registrant has not had an opportunity to address the issue - ed.]. Moreover, there was no evidence regarding the extent of use of the involved marks and thus no showing that there has been meaningful opportunity for confusion to have occurred.

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

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2017.