TTAB Posts February 2018 Hearing Schedule

The Trademark Trial and Appeal Board (TTAB) has scheduled six (6) oral hearings for the month of February 2018. The first two hearings listed for February 28th will be held at Tulane University Law School in New Orleans. The remaining four hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. Briefs and other  papers for these cases may be found at TTABVUE via the links provided.



February 7, 2018 - 2 PM: In re Pan American Properties, Corp., Serial No. 86556214 [Section 2(e)(1) mere descriptiveness refusal of WHITE SANGRIIIA for "Prepared alcoholic cocktail; Alcoholic beverages except beers" [WHITE and SANGRIA disclaimed].

February 8, 2018 - 10 AM: In re i.am.symbolic, llc, Serial No. 85916778 [Section 2(d) refusal of #WILLPOWER for various clothing items, in view of the registered mark shown below, for  clothing and shoes].

February 21, 2018 - 11 AM: New Jersey Turnpike Authority v. Jersey Boardwalk Franchising Co., Opposition No. 91219067 [Opposition to registration of the mark shown below right for "restaurant services" on the ground of likelihood of confusion in view of the registered mark shown below left, registered for highway maintenance services and information services, and used by licensees for ancillary goods].

February 28, 2018 - 11 AM: In re David Copeland-Smith, Serial Nos. 85498107 [Section 2(d) refusal of BEAST MODE SOCCER for "T-shirts" and "Sporting goods and equipment for soccer training, namely, balls," in view of the registered mark BEAST MODE, owned by NFL player Marshawn Lynch, for "t-shirts" and "Men's, women's and children's clothing, namely, shirts, sweatshirts; headwear, namely, hats, caps"].

February 28, 2018 - 1 PM: Larry Pitt & Associates, P.C. v. Lundy Law, LLP, Opposition No. 91210158 [Opposition to registration of the slogan REMEMBER THIS NAME for legal services on the ground that the applied-for mark does not function as a mark and cannot be perceived by consumers as a source identifier].

February 28, 2018 - 1 PM: In re Woodbolt Distribution LLC dba Nutrabolt, Serial No. 86627384 [Section 2(a) deceptiveness refusal of P6 CHROME for Dietary and nutritional supplements that do not contain chromium].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2018.

Precedential No. 39: TTAB Again Cuts Some Procedural Slack Due to 2017 Rule Changes

In another decision involving application of the 2017 Trademark Rule changes, the Board refused to allow Applicant Rural Health to submit certain non-party discovery deposition transcripts by way of notice of reliance, but because the 2017 amendments changed the time for making a motion to allow use of a non-party discovery deposition, the Board looked kindly on Rural Health, allowing it time to take oral cross-examination of the witnesses whose testimony declarations had been submitted by Opposer Azalea. Azalea Health Innovations, Inc. v. Rural Health Care, Inc.., 125 USPQ2d 1236 (TTAB 2017) [precedential].

Rural Health submitted via Notice of Reliance thirteen (13) discovery deposition transcripts of witnesses who were employees of Azalea, but who were not officers, directors, or managing agents of Azalea. Rural Health contended that the discovery depositions were being used for impeachment purposes in connection with the testimony declarations of these employees. Azalea moved to strike, arguing that the Rules do not permit the introduction of non-party discovery depositions via notice of reliance, and that Rural Health should have elected to conduct oral cross-examination of the nine witnesses for whom Rural Health submitted testimony declarations.

The Board divided the discovery depositions into two groups. Four of these depositions involved individuals for whom Azalea did not submit trial declarations. Therefore there was no trial testimony to impeach. The Board granted Azalea’s motion to strike these four discovery deposition transcripts from the record.

The second group included nine discovery depositions of individuals whose testimony declarations were submitted by Azalea. Rural Health did not avail itself of the opportunity to cross-examine these witnesses.

The Board observed that under FRCP 32, FRE 613, and Trademark Rule 2.120(k)(6), a discovery deposition may be used during the examination or cross-examination of a party or a non-party witnesses. In addition, Rule 2.120(k)(1) permits the use, for all purposes, of a discovery deposition of a party in Board proceedings. For a non-party, however, the discovery deposition may be introduced only pursuant to a stipulation between the parties or by order of the Board upon motion. Here there was no stipulation and no Board order.
Having failed to cross-examine Azalea’s trial witnesses, Rural Health had two options: (1) file a motion at the time of its pre-trial disclosures seeking Board approval of its use of the discovery depositions, or (2) file a motion claiming exceptional circumstances. See Rule 2.120(k)(2). Rural Health did neither.

The Board therefore granted the motion to strike these nine discovery depositions.

However, the Board noted that Rule 2.120(k)(2) was amended on January 24, 2017, “to change the time for a motion to use a discovery deposition to when the offering party makes its pretrial disclosures and to clarify that the exceptional circumstance standard applies when this deadline has passed.” [Emphasis added by the Board]. Prior to the Rule change, the motion could be made at the time of the offer of the deposition into evidence (i.e., during the testimony period).

The Board, noting its April 2016 statement regarding flexible application of the revised rules in cases pending as of the effective date of the rules, decided to construe Rural Health’s response to the motion to strike as a motion to re-open the period for electing and taking cross-examination of these nine witnesses. The Board then reset the period for cross-examining these witnesses.


Read comments and post your comment here.

TTABlog comment: If applicant had filed a timely motion for permission to submit the nine discovery depositions, what would the grounds be? It still had declined the opportunity to cross-examine.

Text Copyright John L. Welch 2018.

TTAB Finds Two Puppy Marks Confusable for Bathroom Tissue

The Board sustained Kimberly-Clark's opposition to registration of the word + design mark shown below left, on the ground of likelihood of confusion with K-C's registered mark shown below right, both for bathroom tissue. The Board observed that, although the words in a word + design mark like applicant's are usually accorded greater weight, in this case opposer K-C's mark comprises only the image of a puppy with its paw on a roll of toilet paper, "so rather than using words to call for Opposer’s goods, consumers might identify Opposer’s brand another way, perhaps by recalling and mentioning the dog, or 'the puppy with toilet paper.'" Kimberly-Clark Worldwide, Inc. v. Matosantos Commercial Corp., Opposition No. 91218800 (January 26, 2018) [not precedential] (Opinion by Judge Michael B. Adlin).

Because the involved goods are legally identical, the Board must presume that they travel in the same channels of trade to the same classes of purchasers. These factors not only weigh heavily in favor of a finding of likely confusion, but also reduce the degree of similarity between the marks necessary for such a finding.

The Board noted that the marks have obvious differences but concluded that the differences are outweighed by the even more obvious similarities. "Perhaps most importantly, Applicant’s and Opposer’s dogs look similar."

Each party refers to its dog as a “puppy.” Both puppies are sitting and looking at the camera, and they are both light-colored. Applicant’s dog is described as having “beige ears,” the same color as Opposer’s dog’s ears. Applicant’s dog has “black eyes, and black nose,” while Opposer’s has “green and black eyes and black nose.” The puppies also appear to potentially be the same breed, in whole or in part. As Applicant states in its brief, “the images speak for themselves.”

In addition to the possibility that consumers may recollect K-C's brand by remembering the "puppy with toilet paper," some may believe, when encountering Applicant’s toilet paper, that K-C has begun using the words TENDER PUFF BATHROOM TISSUE to identify its product, which was formerly identified only by the dog design.

The Board pointed out that it has often found a likelihood of confusion when, as here, marks are used for highly similar or identical goods and include similar designs, even if there are also literal or other differences between the marks. Among the examples provided: In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (CCPA 1971) (both for bath products).

A common theme found in these cases is the recognition that "consumers generally do not encounter competing marks side-by-side, where their differences become more obvious." In sum, side-by-side comparison is not the proper approach. Here, the involved marks "both prominently display puppies, with significant similarities, to identify identical products, and the marks create the same general overall commercial impression."

The Board declined to find that K-C's mark is famous or even strong, due to lack of evidence. On the other hand, there was no evidence that dogs have any "toilet paper-related meaning" or that dog designs are used by any third party as a source-identifier for toilet paper. Finally, the Board observed that although some consumers may exercise some care in purchasing this product, the Board's decision must be based upon the least discriminating consumers who may exercise only an ordinary degree of care.

The Board concluded that confusion is likely, and it therefore sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Surprised? Have a tissue.

Text Copyright John L. Welch 2018.

Current Roster of TTAB Administrative Trademark Judges

With the recent retirements of Deputy Chief Judge Susan M. Richey and Judge T. Jeffrey Quinn from the Trademark Trial and Appeal Board, the Board’s membership now stands at twenty-four (XXIV) Administrative Trademark Judges. The current roster is set forth below, beginning with Chief Judge Gerard F. Rogers and then proceeding alphabetically.

Rogers, Gerard F. (Chief Judge): Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D. magna cum laude, New England School of Law.

Adlin, Michael B.: Appointed to TTAB in 2012; Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University; J.D., Boston University School of Law.

Bergsman, Marc A.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.

Cataldo, Peter W.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Coggins, Robert H.: Appointed to TTAB in 2017; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.S., Davidson College; J.D., Wake Forest University School of Law.

Goodman, Cheryl S.: Appointed to TTAB in 2014; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State College of Law.

Gorowitz, Francie R.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Los Angeles, California); Trademark Examining Attorney; Education: B.A., State University of New York at Cortland; J.D., Albany Law School.

Greenbaum, Cindy B.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Heasley, David K.: Appointed to TTAB in 2015; Prior Professional Experience: Private Practice (Washington, D.C.); Education: B.A., The Johns Hopkins University; J.D., University of Maryland School of Law.

Hightower, Susan J.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Austin, Texas); Education: B.A., Austin College; M.A., University of Texas; J.D., Stanford Law School.

Kuczma, Linda A.: Appointed to TTAB in 2011; Prior Professional Experience: Private Practice (Chicago, Illinois); Education: B.S., St. Mary's University; J.D., Loyola University Chicago School of Law.

Kuhlke, Karen: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Larkin, Christopher: Appointed to TTAB in 2016; Prior Professional Experience: Private Practice (Los Angeles, CA; New York, N.Y.); Education: B.A., Stanford University; J.D., Columbia Law School.

Lykos, Angela: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., The Johns Hopkins University; J.D., Duke University Law School.

Lynch, Cynthia C.: Appointed to TTAB in 2015: Prior Professional Experience: Private Practice; Attorney-Advisor at the International Trade Commission; USPTO Assistant Solicitor: USPTO Administrator for Trademark Policy and Procedure; Education: B.A., University of North Carolina; J.D., University of Virginia School of Law.

Masiello, Anthony R.: Appointed to TTAB in 2012; Prior Professional Experience: Trademark Examining Attorney; Private Practice (Boston, New York, and Washington, D.C.); Education: Harvard College; J.D., Harvard Law School.

Mermelstein, David: Appointed to TTAB in 2006: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Supervisory Interlocutory Attorney; Education: B.A., New College, Hofstra University; J.D., American University.

Pologeorgis, George C: Appointed to TTAB in 2015; Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Attorney in the Office of Trademark Quality Review and Training; Trademark Examining Attorney; Private Practice; Education: B.A., University of Pennsylvania; J.D., George Washington University National Law Center.

Ritchie, Lorelei: Appointed to TTAB in 2008; Prior Professional Experience: Private Practice; Arbitrator and Judge pro tem, Orange and Los Angeles Counties, California; Intellectual Property Manager, UCLA; Adjunct Professor of Law, Loyola Law School, Los Angeles; Assistant Professor, Florida State University School of Law; Education: A.B., Stanford University; J.D., Columbia University.

Shaw, Thomas: Appointed to TTAB in 2011; Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.

Taylor, Jyll: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of North Carolina at Chapel Hill; J.D., Howard University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Wolfson, Frances: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., U.C. Santa Barbara; J.D., U.C.L.A.

Zervas, Albert: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.

Text Copyright John L. Welch 2018.

Transcript of Public Meeting Regarding Proposed Streamlined Cancellation Proceeding

On September 25, 2017, the USPTO hosted a public meeting to report on the comments to the TTAB's Request for Comments on possible streamlined version of cancellation proceedings on the grounds of abandonment and non-use (transcript here), for which the comment period closed on August 14, 2017. Additionally, the TTAB took the opportunity to update the public on developments with regard to the amended Trademark Rules, effective January 14, 2017. The meeting agenda included a summary report on received comments and involved discussion of topics of interest to the audience and those that appeared necessary to address in view of the comments.

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

USPTO Seeks Candidates for Deputy Chief Judge at the TTAB

In view of the recent retirement of Deputy Chief Judge Susan M. Richey at the TTAB, the USPTO has posted a vacancy announcement for the position (here).

The Deputy Chief Administrative Trademark Judge (Deputy CATJ) serves as a full voting member of the Trademark Trial and Appeal Board (Board) as provided by Title 15 U.S.C. § 6, and exercises full administrative, legal, and technical authority over the Board, as supervised by the Chief Administrative Trademark Judge (CATJ). The Deputy CATJ also is responsible for working with the Chief Judge to develop and deploy the strategic and policy initiatives of the Board, as needs may be identified by the Board or as strategic initiatives may be required by the Office of the Under Secretary and Director of the USPTO, to which the Board reports.

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TTAB Test: Are These Two Marks Confusable For Weight Loss Programs?

The USPTO refused to register the mark FIT IN YOUR GENES, finding it likely to cause confusion with the registered mark FITGENES & Design, shown below, both for weight loss programs. Applicant contended that the design element in the cited mark creates "a distinct, significant commercial impression[s] in the purchaser's mind such that this element alone should dictate no likelihood of confusion." How do you think this came out? In re Druz, Serial No. 86614598 (January 22, 2018) [not precedential] (Opinion by Judge Francie R. Gorowitz).

Of course, because the services overlap in part, the Board presumed that those overlapping goods travel in the same channels of trade to the same classes of consumers.

As to the marks, the Board disagreed with applicant's contention that the design element in the cited mark is enough to distinguish the marks. When evaluating a word + design mark, the word portion is most likely to indicate origin because it is the portion that consumers would use to refer to the services. In short, here the literal portion of the cited mark is dominant.

Although both marks incorporate the words "FIT" and "GENES," the meanings and commercial impressions of the mark are not similar. In applicant's mark, "FIT" is  used as a verb and means to "be the right shape or size," and "GENES" is a play on "jeans." The mark FIT IN YOUR GENES connotes the goal of the weight loss programs. In the cited mark, "FIT" is used as an adjective and means "physically healthy and strong." FITGENES connotes genetic characteristics of physical health and strength, and is suggestive of registrant's services of genetic testing and profiling, including weigh management services.

Thus the marks at issue do not have the same connotation and they also engender different commercial impressions. The design element in the cited mark further distinguishes the marks.

And so 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 2018.

In 2017, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness Refusals?

I have reviewed the TTAB's FOIA page in an attempt to estimate the percentage of Section 2(e)(1) mere descriptiveness refusals that were affirmed by the Board during the last calendar year (2017). I counted 107 refusals, of which 95 were affirmed and 12 reversed. That's an affirmance rate of about 89%. So the odds are almost 9 out of 10 for affirmance. [Slightly lower than last year's 90% rate, but then this is not an exact science].



Three of the mere descriptiveness cases were precedential.

In re Calphalon Corp., 122 USPQ2d 1153 (TTAB 2017) [TTABlogged here].[The Board affirmed a Section 2(e)(1) refusal to register the mark SHARPIN, in standard character form, finding it merely descriptive of "cutlery knife blocks which incorporate built-in sharpeners that automatically sharpen knives." Applicant Calphalon asserted that the examining attorney had failed to enter its amendment of the mark to the special form "SharpIN" and instead improperly treated the mark as a standard character mark (although the examining attorney accepted the amendment to the drawing). Calphalon further contended that SharpIN (in special form) is incongruous or a double entendre. No dice, said the Board.]

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

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

The twelve marks involved in the reversals were: FLIGHTLINK, PLUM, VOICE, TREAD LIGHTLY, PRESS PAPERS, TOP DOC, GLOBAL GROWERS, RAZYN, GEOMIMETIC, CRAWLER, PERSON, and PH CAGE.

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

What is the Likelihood of TTAB Affirmance of a Section 2(d) Refusal?

As I do every year since Hector was a pup, I have reviewed the TTAB's FOIA page in an attempt to estimate the percentage of Section 2(d) likelihood-of-confusion refusals that were affirmed by the Board during the last calendar year (2017). I counted 270 Section 2(d) refusals, of which 240 were affirmed and 30 reversed. That's an affirmance rate of about 88%. So the odds are almost 9 out of 10 for affirmance. [Slightly lower than last year's 91% rate, but then this is not an exact science].



Only one of the Section 2(d) decisions was precedential: In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790 (TTAB 2017) (Opinion by Judge Bergsman). In USA Warriors, The Board affirmed a Section 2(d) refusal of the mark shown below left, for "arranging and conducting ice hockey programs for injured and disabled members and veterans," finding it confusable with the mark shown below right, for entertainment and association services related to hockey. Applicant did not dispute that the marks are similar and the services related. Instead it contended that the registrant had consented to registration of the applied-for mark, and that under In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012), the 13th du Pont factor should be considered in light of applicant’s ownership of a registration for a slightly different color logo for the same services. Consent: Applicant pointed to the display of its registered mark on opposer’s website; however, there was no written consent agreement, and the Board will not infer that the registrant consented to registration based on its apparent knowledge of the previously-registered, slightly different mark. 13th du Pont Factor: In Strategic Partners the Board reversed a Section 2(d) refusal based on applicant’s ownership of a substantially similar mark that had co-existed with the cited registered mark for more than five years. Here, however, the involved marks had co-existed for less than five years, and applicant’s registration is still subject to possible cancellation under Section 2(d). This three-and-one-half year co-existence was a relevant consideration, but it did not outweigh the other du Pont factors

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

TTAB Grants Summary Judgment Re Bogus Fraud Counterclaim

The Board granted Opposer Kastle's motion for summary judgment, dismissing Applicant Lee's counterclaim alleging fraud in the procurement of one of Kastle's pleaded registrations. Applicant claimed that opposer made arguments in these proceedings that are contradictory to arguments opposer made to the USPTO in obtaining the pleaded registration, and therefore perpetrated fraud on the Board and on the USPTO. Kastle Systems International LLC v. Lee Strategy Group LLC, Oppositions Nos. 91227930 and 91236247 (December 21, 2017) [not precedential].

The Board observed that applicant's motion was more in the nature of a motion to dismiss for failure to state a claim on which relief can be granted (i.e., FRCP 12(b)(6)). However, because the motion was filed after opposer's answer, and because there was no need to consider matters outside the pleadings, the Board construed the motion as one seeking judgment on the pleadings.

As noted, the ground for Applicant’s counterclaim of fraud consisted of statements made by Opposer Kastle during its successful ex parte appeal of a refusal to register on of its pleaded marks. [The statements concerned purchaser sophistication and the strength of the term CASTLE or KASTLE]. Applicant Lee alleged that those statements "were contradictory to claims currently being made by Opposer in support of this opposition proceeding."

The found applicant's fraud claim to be procedurally flawed and substantively meritless: "Applicant has failed to allege any facts that would, if proven, demonstrate the materiality of the allegedly false representations, Opposer’s knowledge of the falsity of its representations and Opposer’s intent to deceive the USPTO."

The Board pointed out that the Federal Rules of Civil Procedure explicitly allow for the pleading of inconsistent claims or defenses in a proceeding (see Fed. R. Civ. P. 8(d)(3) (“party may state as many separate claims or defenses as it has, regardless of consistency”)), and the Board has consistently recognized a party’s right to plead in the alternative.

Moreover, the Board observed, Applicant Lee’s counterclaim "is fundamentally flawed because it necessarily assumes that Opposer’s legal arguments in the ex parte proceeding were false, material and relied upon by the Board in rendering its decision in favor of Opposer; in other words, the Board would not have rendered its decision favoring Opposer but for the false arguments made by Opposer in support of registration."

The Board concluded that Lee "misapprehends the nature of legal advocacy and improperly accords Opposer’s legal argument the weight of evidence."

In short, "a claim of fraud based simply on a perceived inconsistency in legal argument before the Board is legally insufficient to plead a claim of fraud in the procurement."

And so the Board granted Opposer Kastle's motion for summary judgment as to the fraud claim.

Read comments and post your comment here.

TTABlog comment: Not even close.

Text Copyright John L. Welch 2018.

CC & Design for Accounting Services Dilutes Chanel's Famous CC Monogram, says TTAB

In a rare Section 43(c) dilution decision, the Board sustained Chanel's opposition to registration of the mark shown below left, for accounting services, finding the mark likely to cause dilution by blurring of Chanel's famous CC Monogram mark, shown below right. Applicant Camacho & Camacho, appearing pro se, submitted no evidence or testimony and did not file a brief. The Board found that Chanel's Monogram mark is a "household name" synonymous with high fashion and style, and that the two marks are "highly similar" in appearance and commercial impression. Chanel, Inc. v. Camacho & Camacho, LLP, Opposition No. 91229126 (January 12, 2018) [not precedential] (Opinion by Judge Christopher Larkin).

In order to prove dilution, Opposer Chanel was first required to show that its Monogram mark became famous before applicant's first use date of January 8, 2002. Chanel submitted numerous pre-2002 advertisements for fashion and cosmetic products in which the Monogram mark appears. Its advertising and promotional expenditures were very substantial. The Monogram mark has been used for more than 90 years on Chanel's products, and many millions of units have been sold.

Although Chanel offered no probative evidence regarding the extent of actual recognition of the Monogram mark, the Board found that the Monogram mark became famous prior to 2002. The evidence persuaded the Board that the Monogram mark "enjoys widespread recognition among the general public and is a 'household name' synonymous with high fashion and style for the products and services identified in its pleaded registrations, and is therefore famous for dilution purposes."

As to the marks, the Board found their differences "insignificant," pointing out that side-by-side comparison is not the relevant test. Concluding that the marks are "highly similar in appearance and commercial impression," it found that "the appearance of the marks overall is sufficiently similar that Applicant's mark 'will trigger consumers to conjure up' Opposer's famous mark."

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: I'm not convinced. The marks are too dissimilar in my view. I can't imagine the Camacho mark calling to mind the Chanel logo. And I have doubts about the "household name" finding in view of the lack of survey evidence or any other evidence of consumer recognition.

Text Copyright John L. Welch 2018.

Precedential No. 1: TTAB Okays Service Mark Specimen of Use Thanks to Applicant's Clarifying Information

In the first precedential decision of the new year, the Board reversed the USPTO's refusal to register the mark shown below, for various mailing services, overturning the Examining Attorney's rejection of applicant's specimen of use. The Examining Attorney maintained that applicant's webpage specimen described a self-service kiosk that consumers use to mail and ship items, but did not clearly indicate that applicant itself provides the subject services. The Board, however, ruled that "Applicant's explanation of the specimen and how Applicant provides the outsourced mailing services referenced on the specimen resolved the ambiguity, and the refusal should not have been maintained." In re Pitney Bowes, Inc., 125 U.S.P.Q.2d 1417 (TTAB 2018) [precedential] (Opinion by Judge Cynthia C. Lynch).

Applicant's specimen of use displayed the applied-for mark next to the wording “pitney bowes” in the upper left corner of a webpage, directly above the wording “Outsourced Mailing Services.” The webpage text states that the postal kiosk pictured and described on the webpage “allows users to mail bills [and] ship packages.”

(click on photo for larger image)
According to the Examining Attorney, the specimen does not show that applicant actually provides the mailing and shipping services. It shows only that applicant provides a kiosk where a purchaser may purchase postage, weigh letters and packages and compare rates. "The Examining Attorney infers from the webpage reference to third-party services, such as those of USPS (the U.S. Postal Service), that the only services provided through the kiosk are not Applicant’s."

Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a service mark is used in commerce “when it is used or displayed in the sale or advertising of services.” See also Trademark Rule 2.56(b)(2). “To determine whether a mark is used in connection with the services described in the [application], a key consideration is the perception of the user.” Relevant to Applicant’s specimens in this case, the webpage must show the mark used or displayed as a service mark in advertising the services.

For advertisement specimens such as Applicant’s webpage, “[i]n order to create the required ‘direct association,’ the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source.” Thus, an acceptable specimen must show “some direct association between the offer of services and the mark sought to be registered therefor.”

Both precedent and examination guidance make clear that in assessing the specimens, consideration must be given not only to the information provided by the specimen itself, but also to any explanations offered by Applicant clarifying the nature, content, or context of use of the specimen that are consistent with what the specimen itself shows.

In the response submitted and signed by Applicant’s in-house counsel, Applicant stated that “[t]hese kiosks are furnished by Applicant and are placed in different locations for use by consumers. Consumers use the kiosk to place postage on a letter or package, and then place that [letter or package] in the receptacle that is part of the kiosk system for Applicant to pick up the letter or package and place it in the mail stream for delivery.”

The response signed by Applicant’s in-house counsel clarified the specimen’s direct reference to “Mailing Services.” Cf. In re U.S. Tsubaki, Inc., 109 USPQ2d 2002 (TTAB 2014) (disregarding outside counsel’s conclusory unverified statements made without proper foundation regarding marketing of goods).

The Board found that applicant's webpage specimen "supports Applicant’s identified 'postal delivery services for letters and packages,' given the proximity of Applicant's mark to the reference to 'Outsourced Mailing Services,' along with the other explanatory text on the webpage (e.g., 'Kiosk allows users to mail bills [and] ship packages').

While the Examining Attorney reasonably found the specimen unclear as to whether Applicant, rather than a third party, provides the services, Applicant’s explanation of the specimen and how Applicant provides the outsourced mailing services referenced on the specimen resolved the ambiguity, and the refusal should not have been maintained.

The Board concluded that the webpage specimen "demonstrates use of the mark in a manner that creates in the minds of potential consumers a direct association between the mark and at least some of the services in the class, and the explanation corroborates this in a manner that removes any doubt."

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Rather fact-specific for a precedential decision, I think. Breaks no new ground as far as I can see. Apparently an in-house counsel's explanation is more probative than an outside counsel's representations (Tsubaki).

Text Copyright John L. Welch 2018.

Precedential No. 38: TTAB Excuses Failure to Plead Compulsory Counterclaim in Answer

Here's another 2017 precedential interlocutory ruling that slipped under the TTABlog radar. In this consolidated opposition and cancellation proceeding, the Board considered whether an answer may be amended to add an omitted counterclaim "when justice so requires," or whether under FRCP 15 a compulsory counterclaim must be pleaded in the original answer (unless based on newly discovered grounds). The Board ruled that the failure to plead a compulsory counterclaim in an original answer is not a per se bar to its later assertion in the same proceeding. Jive Software, Inc. v. Jive Communications, Inc., 125 USPQ2d 1175 (TTAB 2017) [precedential].

This proceeding began with an opposition filed on October 14, 2014. Applicant Jive Communications filed its answer on November 5, 2014, without any counterclaim. Beginning on December 12, 2014, the parties sought and obtained numerous suspensions of the opposition in view of settlement negotiations, and the proceeding remained in suspension until May 11, 2017.

Each of the parties then filed two petitions for cancellation. Shortly thereafter, Applicant Jive Communications also filed a motion for leave to amend its answer in the opposition to add a counterclaim for cancellation, and it also sought to amend its answer as a matter of course in one of the cancellation proceedings brought by opposer, to add a counterclaim for cancellation of two of opposer's registrations. Applicant also moved to consolidate all five proceedings.

Opposer Jive Software challenged applicant's amendments and its two petitions for cancellation on the ground that the new claims were compulsory counterclaims that should have been raised in applicant's original answer and therefore were time barred.

The Board observed that, under Trademark Rule 2.106(b)(3)(i),  a "defense attacking the validity of a registration pleaded in an opposition is a compulsory counterclaim if grounds for the counterclaim exist at the time when the answer is filed or are learned during the course of the opposition proceeding."

The purpose of the compulsory counterclaim rule is to avoid multiple proceedings. The Rule states that "[i]f grounds for a counterclaim are known to the applicant when the answer to the opposition is filed, the counterclaim shall be pleaded with or as part of the answer. If grounds for a counterclaim are learned during the course of the opposition proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned." The Board observed that the language of the Rule "does not suggest that the answer may never be amended to include an omitted counterclaim."

The Trademark Rules explicitly provide that “[p]leadings in [Board proceedings] may be amended in the same manner and to the same extent as in a civil action in a United States district court.” Trademark Rule 2.107(a) (oppositions), 2.115 (petitions for cancellation). Federal Rule 15(a), made applicable to inter partes proceedings by Trademark Rule 2.116(a), further provides that “leave [to amend a pleading] shall be freely given when justice so requires.”

The Board has ruled on motions to amend to add an omitted compulsory counterclaim under the Trademark Rules, in view of the flexible standard of Fed. R. Civ. P. 15(a), allowing amendment when justice so requires, even in cases where the counterclaim was not included in the original answer and was not based on newly discovered evidence. [see cited cases].

To be clear, Trademark Rules 2.106(b)(3)(i) and 2.114(b)(3)(i) do not require that, after a defendant’s initial answer, amendment to add an omitted compulsory counterclaim must be denied where the movant has not demonstrated that the counterclaim is based on newly-acquired evidence.

* * * * * * * *
The rules require compulsory counterclaims to be pleaded in the answer, if known, but under Fed. R. Civ. P. 15(a), where justice requires, answers may be amended to add an omitted compulsory counterclaim, subject to the same rules applicable to other amendments to pleadings.

Turning to the circumstance of this case, the Board found that Applicant Jive Communications did not unduly delay by waiting two years after filing its answer to introduce the counterclaim. Applicant’s delay in attempting to amend its answer and assert its counterclaim was limited to the brief period of time during which the case was not suspended. Neither party pointed to any evidence of prejudice caused by the short delay.

Although it would have been better practice for Applicant to plead the counterclaim with its original answer, Applicant’s forbearance from filing an amendment as a matter of course, or later with a motion for leave to amend was not unreasonable.

Moreover, the Board observed, it would be unfair to deem Applicant’s motion to amend untimely just because a few weeks passed after the answer was filed and before proceedings were formally suspended. Opposer Jive Software would not be prejudiced by the amendment, whereas a refusal to allow a compulsory counterclaim "could preclude Applicant from raising those claims in any subsequent proceeding between these parties."

Taking all circumstances into account, and applying the liberal standards of Rule 15, the Board ruled in favor of applicant on the subject motion to amend and it deemed the two petitions for cancellation to be timely. The Board also ordered consolidation of the proceedings in view of their common claims of priority and likelihood of confusion as to the parties’ marks.

Read comments and post your comment here.

TTABlog comment: Lack of prejudice seems to be the key, provided one doesn't wait too long.

Text Copyright John L. Welch 2018.

Precedential No. 37: Applying Revised Rules, TTAB Denies Motion for Judgment on the Pleadings as Untimely

Here's a 2017 ruling that slipped under the TTABLog radar. In this precedential order, the Board denied an FRCP 12(c) motion for judgment on the pleadings, directed at applicant's counterclaims, because the motion was untimely. The Board followed its established practice of applying to motions for judgment on the pleadings the same deadline applicable to summary judgment motions under recently amended Rule 2.127(e)(1). Shared, LLC v. SharedSpaceofAtlanta, LLC, 125 USPQ2d 1143 (TTAB 2017) [precedential].

A motion for judgment on the pleadings, like a summary judgment motion, is "a pretrial device intended to save the time and expense of a full trial when a party is able to demonstrate, prior to trial, that there is no genuine dispute of material fact to be resolved, and the moving party is entitled to judgment on the substantive merits of the controversy as a matter of law."

According to TBMP § 504.01 (June 2017), a motion for judgment on the pleadings should be filed "[a]fter the pleadings are closed, but within such time as not to delay the trial." More significantly, FRCP 12(c) states that "After the pleadings are closed — but early enough not to delay trial — a party may move for judgment on the pleadings." The Board’s "established practice" has been to apply to such motions the deadline that applies to summary judgment motions as set forth in Trademark Rule 2.127(e)(1).

Before January 14, 2017, the deadline for filing a summary judgment was, according to Rule 2.127(e)(1), "prior to the commencement of the first testimony period, as originally set or as reset." That Rule was amended as of January 14, 2017, and clarified on July 21, 2017, to provide that a summary judgment motion "must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset." [Emphasis supplied].

Applying the new summary judgment deadline to the subject FRCP 12(c) motion, the Board ruled that a motion for judgment on the pleadings must likewise be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset.

Here, the deadline for opposer’s pretrial disclosures, as reset in the Board’s July 26, 2017 order, was August 7, 2017 (fifteen days before the opening of opposer's testimony period on August 22). Opposer’s motion filed August 19, 2017 was therefore untimely, and so the Board denied the motion.

Read comments and post your comment here.

TTABlog comment: Well, that's a neatly wrapped little package.

Text Copyright John L. Welch 2018.

TTAB Test: Are These Two Stylized "P" Marks Confusingly Similar for Cigars?

The USPTO refused registration of the mark shown below left, finding it likely to cause confusion with the mark shown below right, both for cigars. On appeal, applicant argued that the customers for its "high-end" cigars are sophisticated and selective, and furthermore that four third-party registrations for marks containing the letter "P" demonstrate that the cited mark is weak. How do you think this came out? In re Plasencia 1865, LLC, Serial No. 87147187 (January 9, 2018) [not precedential] (Opinion by Judge Karen Kuhlke).

Of course, because the goods in the application and cited registration are identical, the Board must presume that they travel in the same channels of trade to the same classes of consumers. Applicant's argument regarding the nature of its cigars and the sophistication of its consumers was irrelevant, since no such limitations appear in the application at issue. Moreover, the was no evidence that consumers of cigars, in general, are sophisticated or careful in selecting these products, and in any event the Board must consider the "least sophisticated potential purchasers" in making its determination.

As to the marks, both include a conventional typeface that is "not particularly distinctive." The most significant distinction is the slightly different position of the letter P within the circle, but the Board found the overall visual differences to be minor. The marks are similar in pronunciation and, to the extent they have any meaning, the meanings would be the same. Any differences in how the marks are actually used - i.e, always with another trademark - are irrelevant.

The four registered marks cited by applicant different from the marks at issue in significant ways because they included design or additional lettering or words, and are not for the letter P by itself or in a design. (see opinion, page 7). Without evidence of actual use, these four registrations have no impact on the issue of the weakness of the cited mark

Applicant submitted photographs showing that two cigar brands use the term "SERIES P," but there was no evidence that the letter P has any significance or meaning in connection with cigars. The cited mark, on this record, is apparently arbitrary and therefore inherently distinctive for cigars.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: My favorite cigar brand is "It's a Girl!"

Text Copyright John L. Welch 2018.

TTAB Issued 40 Precedential Rulings in 2017

The TTAB issued forty (40) precedential opinions in calendar 2017. Among the more interesting ones, the Board considered the registrability of the color yellow for a cereal box, again deemed PRETZEL CRISPS generic for pretzel crackers, and affirmed two refusal under the flag/insignia prohibition of Section 2(b). It rejected three product configuration marks due to functionality under Section 2(e)(5), continued to downplay the rareness factor in Section 2(e)(4) surname refusals, and dealt with two phantom mark refusals, affirming one and reversing one.

Section 2(a) - Deceptiveness:

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

Section 2(b) - Flag, Coat of Arms, or Other Insignia:

• Precedential No. 7: TTAB Affirms Section 2(b) Refusal of Mark Simulating the Prince of Wales Emblem
• Precedential No. 3 = TTAB Test: Does this Mark Include a Simulation of the Swiss Flag? [Yes]

Section 2(d) - Likelihood of Confusion:

• Precedential No. 36: Claim of Conjoint Use Not Pleaded and Not Tried by Consent, Says TTAB
• Precedential No. 34: TTAB Orders Cancellation of TAO VODKA Registration for Nonuse and Likelihood of Confusion With TAO Restaurants
• Precedential No. 26: Licensee Cannot Establish Priority Based On Licensor's Use
• Precedential No. 11: TTAB Affirms Section 2(d) Refusal of Hockey Logo, Finding No Consent to Registration, 13th Factor Outweighed

Section 2(e)(1) - Mere Descriptiveness

• Precedential No. 23: MEDICAL EXTRUSION TECHNOLOGIES Lacks Aquired Distinctiveness, Says TTAB
• Precedential No. 15: LITTLE MERMAID Merely Descriptive of Dolls, Says TTAB
• Precedential No. 14: TTAB Affirms Mere Descriptiveness Refusal of WELL LIVING LAB for Research Services
• Precedential No. 4: Despite Amendment of Drawing to "SharpIN," TTAB Treats Mark as Standard Characters and Affirms Descriptiveness Refusal

Section 2(e)(4) - Primarily Merely a Surname::

• Precedential No. 28: TTAB Affirms Surname Refusal of OLIN, Rejects Transfer of Acquired Distinctiveness under 2(f)
• Precedential No. 16: Rejecting Equivalents Argument, TTAB Affirms Surname Refusal of WEISS WATCH COMPANY
• Precedential No. 10: TTAB Sustains Surname Claim Against AZEKA'S RIBS, But Proceeds to Find Opposer's Mark Abandoned
• Precedential No. 9: TTAB Affirms Surname Refusal of BELUSHI'S for Travel and Restaurant 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
• Precedential No. 19: TTAB Affirms Section 2(e)(5) Functionality Refusal of Wind Turbine Configuration

Section 2(f): Acquired Distinctiveness:

• Precedential No. 35: TTAB Sustains Opposition to Honda Motor Configuration - Functional and, Alternatively, Lacks Aquired Distinctiveness
• Precedential No. 28: TTAB Affirms Surname Refusal of OLIN, Rejects Transfer of Acquired Distinctiveness under 2(f)

Abandonment/Nonuse:

• Precedential No. 34: TTAB Orders Cancellation of TAO VODKA Registration for Nonuse and Likelihood of Confusion With TAO Restaurants
• Precedential No. 18: Finding Abandonment of Opposer's Mark, TTAB Dismisses ARMBRUSTER STAGEWAY Opposition

Application Requirements/Lawful Use/Specimen of Use:

• Precedential No. 24: Yellow Cheerios Box Lacks Acquired Distinctiveness, Fails to Function as a Trademark
• Precedential No. 17: TTAB Affirms Refusal of PHARMACANN for Medical Marijuana Services Due to Illegality under CSA
• Precedential No. 13: TTAB Reverses Mutilation and Phantom Mark Refusals of U. Miami Ibis Design
• Precedential No. 6: Applicant Complied With Rule 2.61(b) Request for Information, Says TTAB
• Precedential No. 4: Despite Amendment of Drawing to "SharpIN," TTAB Treats Mark as Standard Characters and Affirms Descriptiveness Refusal
• Precedential No. 2: TTAB Affirms Rejection of Specimen of Use for CONEY ISLAND BOARDWALK CUSTARD

Certification Mark Control:

• Precedential No. 1: TTAB Dismisses Opposition to TEQUILA Certification Mark Application

Failure to Function/Phantom Mark:

• Precedential No. 22: Breast Cast Design Fails to Function as a Mark for Cancer Awareness Services
• Precedential No. 13: TTAB Reverses Mutilation and Phantom Mark Refusals of U. Miami Ibis Design
• Precedential No. 12: Return of the Phantom Mark Refusal

Fraud:

• Precedential No. 1: TTAB Dismisses Opposition to TEQUILA Certification Mark Application

Genericness:

• Precedential No. 25: On Remand, TTAB Again Finds PRETZEL CRISPS Generic For Pretzel Crackers
• Precedential No. 21: TTAB Finds "COFFEE FLOUR" Generic for ...... Guess What?
• Precedential No. 1: TTAB Dismisses Opposition to TEQUILA Certification Mark Application

Discovery/Evidence/Procedure:

• Precedential No. 40: TTAB Strikes Evidence of Common Law Rights Not Listed By Madrid Opposer On ESTTA Cover Sheet
• Precedential No. 39: TTAB Again Cuts Some Procedural Slack Due to 2017 Rule Changes
• Precedential No. 38: TTAB Excuses Failure to Plead Compulsory Counterclaim in Answer
  
• Precedential No. 37: Applying Revised Rules, TTAB Denies Motion for Judgment on the Pleadings as Untimely
• 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
• Precedential No. 27: TTAB Suspends LATEA Opposition In View of Arbitration Clause
• Precedential No. 20: TTAB Forgives Party for Untimeliness of Discovery Requests Under New Board Rules
• Precedential No. 10: TTAB Sustains Surname Claim Against AZEKA'S RIBS, But Proceeds to Find Opposer's Mark Abandoned
• Precedential No. 5: TTAB Rejects Untimely, Fee-less Paper Opposition Filed Sans Petition to Director

Text Copyright John L. Welch 2017-2018.

The Top Ten TTAB Decisions of 2017 [Part II]

This is the second of two posts; the first five selections were posted here. Additional commentary on each case may be found at the linked TTABlog postings. The cases are not necessarily listed in order of importance (whatever that means).



Estudi Moline Dissey, S.L. v. BioUrn Incorporated, Cancellation No. 92061508, 123 USPQ2d 1268 (TTAB 2017) [precedential] [TTABlogged here]. Addressing the revised Trademark Rules of Practice that came into effect on January 14, 2017, the Board found that petitioner had served its discovery requests too late. Rule 2.120(a)(3) now requires that written discovery requests be served early enough in the discovery period that responses will be due no later than the close of discovery. A responding party must serve its responses (by email) within 30 days of service of the requests. Here, the last day to serve discovery (31 days before the end of the discovery period, not counting the day of service) was February 19, 2017. Because that was a Sunday, petitioner concluded that, under Rule 2.196, it had until the next business day, Monday, February 20, to timely serve its discovery requests. Not so, said the Board. In light of the revision of Rule 2.120(a)(3), Rule 2.196 no longer applies to the deadline for service of written discovery requests. Nonetheless, because this case was commenced under the old rules, the current dispute arose during the transition to the new rules, and the dispute involves a scheduling matter, the Board exercised its discretion to reopen discovery for the limited purpose of allowing respondent time to respond to petitioner’s (tardy) written discovery requests.

In re United Trademark Holdings, Inc., 122 USPQ2d 1796 (TTAB 2017) [precedential] (Opinion by Judge Marc A. Bergsman). [TTABlogged here].  Affirming a Section 2(e)(1) refusal of LITTLE MERMAID, the Board found the mark merely descriptive of “dolls,” concluding that consumers will not perceive LITTLE MERMAID as a source identifier but instead will “understand the mark to describe the public domain character in the Hans Christian Andersen fairy tale, as well as a young or little mermaid.” The Board observed that its case law draws a distinction between “situations where the character is in the public domain and where the applicant owns intellectual property rights in the work from which the character arose.” [E.g., SUPERMAN]. A fictional public domain character like the Little Mermaid is not necessarily linked to a specific entity. “[P]rospective purchasers expect dolls labeled as LITTLE MERMAID to represent the fairy tale character and, thus, [the mark] describes the purpose or function of the goods (i.e., to represent the Little Mermaid of the fairy tale).” Other doll makers have a competitive need to use the name LITTLE MERMAID to describe their products.

In re Shabby Chic Brands LLC, 122 USPQ2d 1139 (TTAB 2017) [precedential] (Opinion by Judge Thomas Shaw) [TTABlogged here]. The TTAB affirmed a Section 2(b) refusal of the mark shown below left, for various goods including furniture, dinnerware, and fabrics, on the ground that the mark comprises a design that simulates a governmental insignia of the United Kingdom, namely, the Prince of Wales’ emblem, shown below right. Section 2(b) bars registration of a mark that “[c]onsists of or comprises the flag or coat of arms or other insignia ... of any foreign nation, or any simulation thereof.” The Government of the United Kingdom identified the emblem as “[t]he official emblem of the Prince of Wales” when it notified WIPO in 2005, under the Paris Convention, that this emblem is a ‘state emblem’ of the United Kingdom. The emblem is included in the USPTO database and may form the basis of a Section 2(a) or 2(b) refusal. The Board concluded that the Prince of Wales’ emblem is an “insignia of national authority” on a par with a coat of arms. In determining whether the mark is a “simulation” of the emblem, the Board must consider the “first impression gathered from a view of such mark without a careful analysis and side-by-side comparison ....” The Board concluded that that the similarities in the commercial impressions of the marks outweighed their differences and it found that the applied-for mark is a simulation of the Prince of Wales’ emblem. Applicant also asserted that its mark has co-existed with the Prince of Wales' emblem for 13 years without objection or confusion, but the Board pointed out that absence of objection or confusion is irrelevant, since Section 2(b) is an absolute bar, and confusion plays no part in the analysis.

In re Empire Tech. Dev. LLC, 123 USPQ2d 1268 (TTAB 2017) [precedential] (Opinion by Judge Christopher Larkin) [TTABlogged here]. Affirming a refusal to register COFFEE FLOUR on the Supplemental Register, the Board found the term to be generic for “flour made by processing and blending together coffee cherry skins, pulp, and pectin for use, alone or in combination with other plant and milk based products, as a dry ingredient in food and beverage products for consumer use.” After an exhaustive review of the evidence, the Board concluded that relevant consumers understand the term to refer to flour made from the skin, pulp, and pectin of the coffee cherry portion of the coffee plant. “Applicant itself has communicated this meaning of the term ‘coffee flour’ to the public, and the articles in the record, from which we can infer the public’s understanding of the term, show that this message has been received and understood.” The Board noted that this appeal involves the rare situation in which an applicant has created a new genus of goods by being the first (and apparently the only) producer and seller of a new product. Professor McCarthy has noted the branding challenges involved: “If the public adopts as the generic name of the thing the word that the seller thinks is a mark, then it is no longer a mark at all....” He suggests that the creator adopt two new words - the mark and the generic name.

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) [TTABlogged here]. 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. Nonuse: Respondent conceded that, prior to filing its Statement of Use, it had not sold any goods under the mark TAO VODKA, but it contended that the distribution of samples to three entities – a restaurant, a distributor, and a shareholder of a related entity – sufficed. The Board concluded that 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.” Likelihood of confusion: The Board found the “something more” required to establish that alcoholic beverages and restaurant services are related, in the facts that Petitioner uses its TAO mark to promote alcoholic beverages and sometimes engages in joint promotional efforts with vodka manufacturers, and in 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, showing that respondent itself “believed that consumers would view respondent’s vodka and petitioner’s services as related.”

Read comments and post your comment here.

TTABlog comment: Do you have other cases to suggest?

Text Copyright John L. Welch 2017-18.