WHITE SANGRIIIA Merely Descriptive of Cocktails, Lacks Acquired Distinctiveness, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register WHITE SANGRIIIA for "Prepared alcoholic cocktail; Alcoholic beverages except beers" [WHITE and SANGRIA disclaimed], finding the mark to be highly descriptive of the goods and lacking in acquired distinctiveness. Applicant's claim of transferred distinctiveness from its mark GASOLINA SANGRIIIA missed the target. In re Pan American Properties, Corp., Serial No. 86556214 (February 26, 2018) [not precedential] (Opinion by Judge Frances Wolfson).

Mere Descriptiveness: The evidence established that the term "white sangria" is highly descriptive for a prepare alcoholic cocktail. The Board found that "sangriiia" will be readily recognized by relevant consumers as a play on the word "sangria." In general, a mere misspelling of a word is not enough to change a merely descriptive term into a inherently distinctive trademark.

Applicant pointed to its ownership of a registration for the marks GASOLINA SANGRIIIA for the same goods, and argued that the issuance of that registration indicates that the Office accepts SANGRIIIA as a fanciful or suggestive term, but applicant failed to make that registration of record. In any case, the Board noted, that registration would not help applicant because of the clear differences in the registered mark and the applied-for mark.

The Board concluded that each component of applicant's mark retains its merely descriptive connotation in relation to applicant's goods when the terms are combined, and that the combination WHITE SANGRIIIA is highly descriptive of applicant's goods.

Acquired Distinctiveness: Applicant argued that, even though it has not yet used the mark WHITE SANGRIIIA, the term SANGRIIA has become distinctive of its goods and that such distinctiveness will transfer to the mark WHITE SANGRIA when use commences. According to applicant, WHITE SANGRIIA has acquired secondary meaning through use of the mark GASOLINA SANGRIIIA. Applicant has spent $5 million advertising GASOLINA SANGRIA and has sold more than 10 million units of the product for each of the past five years.

The Board, not surprisingly, found clear differences between GASOLINA SANGRIIIA and SANGRIIIA by itself. The presence of the arbitrary term "gasolina" dramatically sets apart the registered mark from the applied-for mark.

Applicant supplied various items showing use of SANGRIIIA by itself but failed to show the extent to which consumers have been exposed to the term. Undated photos were not probative, and the unverified sales figures failed to show when and where the goods were sold or shipped.

Observing that the higher the degree of descriptiveness of a term, the higher the burden to prove acquired distinctiveness, the Board concluded that applicant's evidence was insufficient.

And so the Board affirmed the Section 2(e)(1) mere descriptiveness refusal.

Read comments and post your comment here.

TTABlog comment:  How about WHITE SANGRILLA?

Text Copyright John L. Welch 2018.

TTAB Posts March 2018 Hearing Schedule

The Trademark Trial and Appeal Board (TTAB) has scheduled five (V) oral hearings for the month of March 2018. The 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.


March 8, 2018 - 11 AM: In re Dead Bird Brewing, LLC, Serial Nos. 87140389 and 87140417 [Section 2(d) refusals to register the mark DEAD BIRD BREWING COMPANY (standard characters) [BREWING COMPANY disclaimed]  and the logo shown below, for beer, in view of the registered mark DEADBIRD for wines].

March 15, 2018 - 10 AM: In re Society of Health and Physical Educators, Serial No. 87107590 [Phantom mark refusal of SHAPE XXXX for educational journals, educational services, and clothing, where XXXX represents the "unabbreviated name of a state of the United States of America and Puerto Rico”].

March 15, 2018 - 2 PM: In re Funko, LLC, Serial Nos. 87171233 and 87171228 [Section 2(d) refusals of PINT SIZE HEROES in Standard Character and Stylized form for "Collectable toy figures," in view of the registered mark PINT SIZE PRODUCTIONS & Design for “plush toys; stuffed and plush toys; stuffed toy animals”].

March 20, 2018 - 11 AM: Galperti, Inc. v. Galperti S.r.L., Cancellation No. 92057016 [Petition for cancellation of a registration for the mark GALPERTI for "Ironmongery in the form of metal hardware, namely, flanges, ring-shaped fittings of metal, and forgings," on two grounds: likelihood of confusion with petitioner's identical common law mark for the same goods, and fraud in the procurement of the registration due to lack of ownership].

March 28, 2018 - 11 AM: In re Woolly Threads, LLC, Serial Nos. 86599450 and 86692160 [Three refusals of WOOLLY and WOOLLY THREADS for sweatshirts: Section 2(d) likelihood of confusion with the registered mark WOOLLY CLOTHING for "Clothing, namely, jackets, sweaters, underwear, socks, slippers made in whole or in part of wool; clothing for infants and children, namely, baby bodysuits, jumpers, rompers, pajamas, shirts, pants, jackets, sweaters, underwear, socks, and slippers made in whole or in part of wool" [CLOTHING disclaimed]; Section 2(a) deceptiveness; and deceptive misdescriptiveness under Section 2(e)(1)].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2018.

Precedential No. 5: Opposer Fails to Prove Priority, Apple's IPAD Mark Survives Opposition

The Board dismissed this Section 2(d) opposition to registration of the mark IPAD for various business and computer services, including storage and retrieval of data. Opposer RxD Media claimed prior use of the identical mark for "“providing temporary use of a web-based software application for mobile-access database management whereby users can store and access their personal information," but it failed to prove that its mark had acquired distinctiveness prior to applicant's constructive first use dates. RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801 (TTAB 2018) [precedential] (Opinion by Judge Marc A. Bergsman).

Preliminary matters: The Board began by chastising the parties for their introduction of thousands of pages of testimony and other evidence "without regard to what they needed to prove, apparently in the hope that in wading through it, we might find something probative." Furthermore, the parties failed to cite to TTABVUE docket entries and improperly designated testimony and evidence as confidential, which "made reconciling their references to evidence difficult and inordinately time-consuming, placing the persuasiveness of the presentations at risk."

This is not productive. “Judges are not like pigs, hunting for truffles buried in briefs.” United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991). The case was neither prosecuted nor defended based on any clear theory of the case. Neither party made a concise and compelling evidentiary showing, and neither was judicious in the introduction of only relevant testimony and evidence.

The Board found most of the evidence to be irrelevant. The only issue was opposer's priority, and applicant's proof of post-filing use of its mark and of acquired distinctiveness was unnecessary. Similarly, the Board disregarded opposer's evidence regarding its activities after applicant's constructive filing dates.

Priority: Section 2(d) permits an opposition based on "a mark or trade name previously used in the United States." Because Opposer RxD Media relied on common law rights in the mark IPAD, it was required to establish proprietary rights in that mark, under the rule of Otto Roth. In other words it must show that its mark was distinctive, either inherently or through acquired distinctiveness, prior to applicant's actual or constructive use of its mark.

Applicant may rely on the filing date of its foreign applications under Section 44(d) of the Act as its dates of constructive use: July 16, 2009 (Trinidad & Tobago) and January 25, 2010 (Canada). The Board noted that even though the opposed applications were published under the provisions of Section 2(f) - a concession by applicant that its IPAD mark is not inherently distinctive - applicant was still entitled to rely on its foreign filing dates for purposes of priority.

RxD Media claimed use of its mark since September 1, 2007, but the evidence showed that, prior to applicant's constructive priority dates, RxD Media was using only the "IPAD.mobi logo" shown above. Moreover, in that logo, the pen design is an integral part of the term IPAD, and RxD Media did not show that the term IPAD creates a separate commercial impression from the composite logo. "Simply stating that .mobi is a generic TLD is not sufficient to show that the term IPAD creates a separate commercial impression . . . ."

Even assuming that the term IPAD created a separate commercial impression, the Board found that RxMedia failed to prove a proprietary interest in that term. Opposer neither asserted or proved that IPAD is inherently distinctive. As to acquired distinctiveness, the Board must first assess the degree of descriptiveness of the term, since the more descriptive a term, the more evidence is required under Section 2(f).

The Board found that, since prior to July 16, 2009, the letter "I" placed before a word or phrase may mean "Internet-based or enabled." Third party registrations, publications, and websites demonstrated the use of "I" formative marks for Internet-based goods and services. The word "Pad" is defined as, among other things, "a collection of sheets of paper glued together at one end." The word "Notepad" is " a pad of blank pages for writing notes."

When the “I” prefix is combined with the “Pad” suffix, and when considered in conjunction with Opposer’s services, the combination directly refers to an Internet-enabled or accessible medium for storing and accessing information, as one can do with a notepad. The combined term, IPAD, does not create a non-descriptive or incongruous meaning, and, thus, it is not an inherently distinctive mark. When used in connection with a web-based software application for mobile-access databases management whereby users can store and access their personal information, the term IPAD directly conveys to consumers the purpose and function of Applicant’s services.

Opposer's own use of the term IPAD corroborated its descriptive meaning: for example, in the tagline "Your Mobile Internet Notepad."

Turning to the issue of acquired distinctiveness, opposer was unable to say how many subscribers it had prior to the end of 2009. Its website never received more than 100 hits per day. As of 2010, RxD Media's revenues were small and it was not profitable. As of 2013, it had expended $412 on advertising the IPAD.mobi website. There was no evidence that the relevant public, as of July 16, 2009, understood the primary significance of IPAD to be a source-identifier rather than a descriptor of opposer's services.

And so the Board found that Opposer RxD Media had failed to establish acquired distinctiveness for the term IPAD. The Board therefore concluded that opposer had failed to prove proprietary rights in that term prior to applicant's constructive priority dates, and so the opposition was dismissed.

Read comments and post your comment here.

TTABlog comment: Reportedly, Apple formed the company IP Application Development LLC in order to acquire certain foreign third-party rights in the IPAD mark.

Text Copyright John L. Welch 2018.

TTAB Test: Are These Two Marks for Fruit Preserves Confusingly Similar?

The USPTO refused registration of the mark PANACHE (in standard characters) for "apple butter; apple purée; processed apples," finding it likely to cause confusion with the registered mark MANGO MANGO MANGO PRESERVES A PANACHE PARTY PRESERVE and design (shown below) for "fruit preserves" [MANGO and MANGO PRESERVES disclaimed]. How do you think this appeal came out? In re Panache LLC, Serial No. 87182253 (February 20, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Applicant's "processed apples" fall within the ambit of Registrant's "fruit preserves" because fruit includes apples and preserves are processed fruit. Also, apple butter and and fruit preserves are both used as "spreads" and therefore are related products. The evidence revealed that several entities sell apple butter and preserves under the same mark at their respective websites. The Board concluded that the goods are in part identical identical and are offered in the same channels of trade.

As to the marks, the Board found that MANGO MANGO with a mango design is the dominant portion of the cited mark.

They are by far the largest elements of Registrant’s mark and most likely to catch consumers’ eyes. As such, they are that part of the mark consumers use to call for Registrant’s preserves. It stretches credulity that consumers would refer to Registrant’s preserves as “A Panache Party Preserve” or “panache”.

"Mango Preserves" is name of the product and, therefore, has little or no source-identifying significance. The term “A Panache Party Preserve” is an advertising tagline telling consumers that Registrant’s MANGO MANGO preserves are high quality products.

The Trademark Examining Attorney argued that “Panache” is the dominant part of Registrant’s mark because the phrase “A Panache Party Preserve” “gives the general impression of being a house
mark.” However, an excerpt from Registrant’s website showed that Registrant refers to itself as MANGO MANGO, not as a “Panache” company. The tagline “A Panache Party Preserve,” creates the commercial impression that Registrant’s preserves have flair or style.

The Board concluded that the marks are not similar and that the first du Pont factor outweighed the other factors. And so it reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Is this a WYHRR? (Would you have refused registration?)

Text Copyright John L. Welch 2018.

Two Product Configurations Fail to Clear Section 2(f) Hurdle, Says TTAB

Product configurations can never be inherently distinctive trademarks. So says Wal-Mart v. Samara Bros. Moreover, such proposed marks face a heavy burden when the applicant attempts to establish acquired distinctiveness under Section 2(f). Here are two recent cases in which the applicants failed to clear the 2(f) hurdle.

In re Kronebusch Industries, LLC, Serial No. 86706847 (February 20, 2018) [not precedential] (Opinion by Judge Christopher Larkin). Kronebusch sought to register as a trademark the pistol-shaped handle of its fire extinguishers. (See drawing above). Applicant asserted that it intended to design a distinctive and recognizable handle (unlike standard nut-cracker type handles), but intent was irrelevant since the question was whether the consuming public perceives the design as a source indicator.

The Board was unimpressed by several form statement from dealers and customers, in part due to their conclusory language, lack of geographical diversity, and missing information. Advertising expenditures were modest, and although the advertising depicted the fire extinguisher, there was nothing to call the attention of the consumer to the shape of the handle: i.e., no "look-for" advertising.

Similarly news articles regarding the products do not mention the handle design as a product feature that serves to identify source. Finally, the fact that Kronebusch's fire extinguishers have enjoyed significant exposure in media and at tradeshows does not mean that consumers have become conditioned to recognize this handle design as a trademark.

And so the Board affirmed the refusal to register under Sections 1, 2, and 45 of the Lanham Act. In other words, the handle design fails to function as a trademark.

In re NuWave, LLC, Serial No. 86761651 (February 20, 2018) [not precedential] (Opinion by Judge David K. Heasley). Applicant NuWave sought to register the product design shown immediately above for "electric induction cooktops." Applicant explained that induction cooktops may be placed on kitchen counters and "work without getting hot; rather they generate a magnetic field which causes the pan itself to get hot."

NuWave contended that the rounded shape of its product distinguishes it from competitive products, most of which are rectangular. The examining attorney pointed out, however, that cooktops are commonly offered in a variety of shapes, including round, and so applicant's shape is not particularly exclusive, distinctive, or source-indicating.

Reviews of applicant's product focused on the usefulness of the design or its attractive appearance, but did not equate the shape with a particular source. "Because the applied-for mark in this case is a nondistinctive product configuration, which consumers may appreciate for its utility or appearance rather than its source, a showing of five or more years' use is insufficient."

Applicant's advertising and sales number were "respectable," but its advertising and packaging consistently identify the product by the word mark "Nuwave," and so that evidence did not prove that the product design has consumer recognition. The sales figures may reflect the popularity of the product, not that the public recognizes the shape as a trademark.

NuWave claimed that the copying of its product by Farberware evidenced acquired distinctiveness, but the Board was unmoved. It is more common that competitors copy product designs for desirable qualities or features. Moreover, copying is proof of acquired distinctiveness only if the copier's intent is to confuse customers by passing off its product as the applicant's. Farberware displayed its own mark on the packaging and so was not attempting to pass off its product.

Finally, the Board noted in passing that NuWave's ownership of a design patent does not, without more, "bestow upon said device the aura of distinctiveness or recognition as a trademark."

Concluding that applicant failed to prove acquired distinctiveness, the Board affirmed the refusal to register under Sections 1, 2, and 45 of the Lanham Act.

Read comments and post your comment here.

TTABlog comment:  Of course, the first hurdle to be cleared for a product design is Section 2(e)(5) functionality. I wrote a paper about these hurdles (here) in 2004.

Text Copyright John L. Welch 2018.

TTAB Grants Summary Judgment Motion, Finding Fusible Link Configuration De Jure Functional

The Board granted Tyco Fire's motion for summary judgment, finding the product configuration marks shown below, for a "heat fusible link for use in fire protection," to be functional under Section 2(e)(5). The mark on the left "consists of a configuration of a copper rectangular heat fusible link with rounded edges with a transparent circle at the top and bottom." The mark on the right is identically described except for the word "copper." Tyco Fire Products LP v. Globe Technologies Corporation, Oppositions Nos. 91212425 and 91220233 (January 22, 2018) [not precedential].

Opposer’s expert explained that the fusible link consists of two plates placed under tension or load. The plates are held together by a fixed heat-sensitive material, which in the event of a fire melts or breaks once the ambient temperature reaches a certain degree, causing the plates to separate. When the plates separate the fire detection or suppression system is activated.

Generally, a product design or product feature is considered to be functional in a trademark sense if it is (1) “essential to the use or purpose of the article,” or if it (2) “affects the cost or quality of the article.” TrafFix, 58 USPQ2d at 1006 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). The Board found no genuine dispute of material fact "that the configuration of Applicant’s goods is essential to the use and purpose of the goods and affects the cost and quality of the article under the standard set forth in Inwood/TrafFix."

The evidence of record, including various utility patents (both applicant's and third-party patents) established that the use of identical, overlying plates serves a utilitarian function. At to the "transparent circles," which are actually holes in the plates, the circular shape depicted in the drawing of the patent "is the most logical and effective choice." The rounded ends are used to avoid sharp edges. As to the straight sides of applicant's device:

As the many patents of record show, we live in a world of straight edges and right angles. The straight parallel sides of Applicant’s goods would be essential to fitting the goods into mechanisms that have limited space. Competitors who are required to eschew the use of straight, parallel sides in order to avoid infringing upon Applicant’s trademark rights would be put to “a significant non-reputation-related disadvantage."

Applicant did not rebut Opposer’s contention that in certain applications, fusible links with straight, parallel edges and circular holes are one of the few available alternatives.

Finally, Applicant contended that the copper-colored design presented in one application is not functional for the additional reason that the application contains a claim to the color copper. However, the evidence showed, and applicant did not dispute, that the color is the result of the natural coloring of the commercial bronze, and that commercial bronze has utilitarian function in a fusible link. The Board concluded that "[c]ompetitors who are required to eschew the use of copper, bronze, or other metals having a copper-like color in order to avoid infringing upon Applicant’s trademark rights would be put to 'a significant non-reputation-related disadvantage.'" Nor should competitors have to paint their links to mask the copper color.

Therefore, the Board found no genuine dispute of material fact that the copper color of Applicant’s mark is dictated by a functional feature of the goods.

And so the Board entered judgment summarily in opposer's favor.

Read comments and post your comment here.

TTABlog comment: The Board is a bit fuzzy at times on the difference between utilitarian functionality [de facto functionality] and trademark functionality [de jure functionality]. Many configurations and features may have the former, but not necessarily the latter. E.g., the scoring on a Hershey bar.

Text Copyright John L. Welch 2018.

TTAB Affirms Failure-to-Function Refusal of Ribbon/Banner Background Design for Horse Tail Cleaners

The Board affirmed a refusal to register the design shown below, for "Non-medicated cleaning preparations for livestock, horses, and domestic animals, ...." and various other products for said animals, agreeing with Examining Attorney Barbara A. Gaynor that the design fails to function as a trademark. Said the Board: "Applicant’s applied-for design fails to emerge out of the background of the specimens and hit the prospective buyer in the eye, and [we] find that Applicant’s ribbon-shaped banner is a background design that does not create a commercial impression separate and apart from the word mark in conjunction with which it is used." In re W.F. Young, Inc., Serial No. 86454618 (February 14, 2018) [not precedential] (Opinion by Judge Albert Zervas).

The Examining Attorney maintained that the applied-for mark "is merely a background design that functions as part of a composite mark that incorporates additional designs or wording." (see excerpt from specimen of use, below).

The Board observed that when an applicant seeks to register a background design, the design must create a commercial impression separate and apart from the word mark with which it is used. Professor McCarthy has commented that "the more fanciful and distinctive the background design, the more likely it is to 'hit the buyer in the eye' and hence be more than background. In such a case, the so-called 'background' comes out into the spotlight of real trademark significance."

The Board noted that none of the specimens of use showed the ribbon-shaped banner alone; all have the word ABSORBINE superimposed thereon. The word ABSORBINE covers much of the design and follows the incline of the banner. This arrangement of wording and geometry suggests that they are part of the same mark. The color yellow is irrelevant since color is not claimed as part of the mark.

Ribbon-shaped designs are not uncommon for these type of goods, as evidenced by the two registrations cited by the Examining Attorney. The applied-for design appears to be nothing more than a refinement of a basic background design and would be regarded as such by consumers.

And so the Board affirmed the refusal under Sections 1, 2, and 45 of the Lanham Act.

Read comments and post your comment here.

TTABlog comment: Even if applicant had claimed the color yellow, I doubt that it would have made any difference. No look-for advertising, no use of the banner with words other than ABSORBINE. Is this a WYHA?

Text Copyright John L. Welch 2018.

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

A TTAB judge once stated that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the goods or services. Presented for your perusal are three recent TTAB decisions in Section 2(d) appeals. One was reversed. Which one? [Answer in first comment].


In re CID Resources, Inc., Serial No. 86828751 (February 13, 2018) [not precedential] [Section 2(d) refusal to register the mark GRACE (in standard character form) for "Medical wearing apparel, namely, scrub tops and bottoms; medical wearing apparel, namely, pants for emergency medical personnel" in Class 10; and "Nurse’s apparel, namely, tops and bottoms, uniforms, lab coats; scrubs not for medical purposes" in Class 25, in view of the identical mark registered for "women’s sportswear, namely, jackets, pants, skirts, blouses, dresses, shirts, and knit tops, but excluding pantyhose and hose"].


In re Advanced Total Marketing Systems, Inc., Serial No. 86860062 (February 14, 2018) [not precedential] [Section 2(d) refusal of the mark shown immediately below, for "Latin American style food products, namely, processed flavored plantains slices, processed flavored yucca chips; Latin American Style food products, namely, fired flavored peanuts and baked flavored peanuts"

in view of the registered mark shown below left for "candy for consumption on and off the premises" and "retail candy and gift store services," the registered mark shown below right for "Dairy-based snack foods excluding ice cream, ice milk and frozen yogurt; Fruit-based food beverage; Oils and fats for food; Snack food dips; Vegetable-based snack foods," and the registered mark YUMMYS in standard character form for "Vegetable-based snack foods; Fruit-based snack foods; Vegetable chips; Fruit chips; Milk products excluding ice cream, ice milk and frozen yogurt"].

In re Spartan Detective Agency, Inc., Serial No. 87172299 (February 9, 2018) [not precedential] [Section 2(d) refusal of WE DO IT ALL! for "detective agency services" in view of the registered marks JUST CALL – WE DO IT ALL! for "legal services" and MAKE THE CALL WE DO IT ALL! for "legal services; providing legal services in the field of injury law, workers' compensation law, and social security disability law"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

TTAB Test: Is TWEEDS Generic for Shirts and Sweaters?

The USPTO refused registration of TWEEDS for "shirts; sweaters" on the Supplemental Register, deeming the term to be generic for the goods. Applicant argued that "[t]weed is a fabric, not a shirt or sweater," and that "tweeds" is "merely descriptive of a type of sweater or shirt." How do you think this appeal came out? In re Branded LLC, Serial No. 86529647 (February 13, 2018) [not precedential] (Opinion by Judge Christopher Larkin). [Affirmed per curiam by the CAFC under Rule 36, April 8, 2019].

Applicant first pointed to its ownership of a now-expired registration for TWEEDS for the same goods. The Board shrugged that off, pointing out that each application must be examined on its own merits, and citing In re Cordua Rests., Inc., 118 USPQ2d 1632 (Fed. Cir. 2016) (CHURRASCOS in stylized form found generic for restaurant services despite subsisting "incontestable" registration for the word mark for the same services).

As evidence of the public's understanding of the word "tweeds," Examining Attorney John C. Boone relied on dictionary definitions ("Tweed" is defined as a rough, woolen cloth woven with different colored threads), webpages referring to various types of tweed fabric, webpages showing use of the words "tweed" and "tweeds" in connection with various items of woolen clothing, websites displaying shirts referred to as "tweed" shirts and "tweed" shirt jackets; and webpages and Google search results for "tweed sweaters

The Board observed that the USPTO must show more than that "tweeds" refers to other items of clothing. It must show that "tweeds" refers to a category of shirts or sweaters.

The evidence included multiple webpages offering "tweed" shirts and "tweed" sweaters. Many of the items were not made of wool. Applicant agreed that "it is possible to find shirts and sweaters that are made of tweed," and that the "examples given by the examining attorney use the word 'tweed' to indicate the type of sweater or shirt being offered." [Emphasis by the Board].

The Board pointed out that the use of "tweed" to indicate the type of shirt or sweater is use in adjectival form, rather than in noun form to identify a fabric. However, generic adjectives "are just as unprotectable as generic nouns:" for example, "footlong" for sandwiches excluding hot dogs. Sheets of Del., Inc. v. Doctor's Assocs. Inc., 108 USPQ2d 1341 (TTAB 2013).

Applicant effectively conceded that TWEEDS identifies a category of sweaters or shirts included within the relevant genus. The pluralization of the word "tweed" as TWEEDS does not alter its meaning as referring to categories of shirts and sweaters.

On the basis of the record as a whole, we find that the Examining Attorney has established, by clear evidence of generic use, that Applicant’s claimed mark TWEEDS is understood by the relevant purchasing public to refer to categories of shirts and sweaters that are made of tweed fabric, or that have the appearance, look, or style of tweed fabric. The proposed mark is thus incapable of distinguishing Applicant’s goods, making it ineligible for registration on the Supplemental Register.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: If the evidence showed use of "tweed" only with shirts and sweater made of wool, would "tweed" be merely descriptive but not generic?

Text Copyright John L. Welch 2018.

Precedential No. 4: TTAB Reverses Rejection of Downloadable Software Specimen Showing Mark in On-Screen Display

The TTAB reversed a refusal to register the mark AWLVIEW for, inter alia, warehouse inventory management software, overturning the USPTO's rejection of applicant's specimen of use. Because the mark appears on the login and search screens of Applicant’s downloadable software when the software is in use, the Board concluded that the specimen "shows the applied-for mark used in connection with the goods ... and would be perceived as a trademark identifying the source of those goods." In re Minerva Associates, Inc., 125 USPQ2d 1634 (TTAB 2018) [precedential] (Opinion by Judge Linda A. Kuczma).

(Click on photo for larger version)
The first page of applicant's two-page specimen (the login screen shot shown above) displays the wording "AWLview WMS for Sterling Jewelers" appearing above "AWL Logon WS 202" shown in the title bar of the login page. The second page (the SKU search query page shown below) contains the wording "AWLview WMS for Sterling Jewelers WS 202 - LCM" appearing above "Inventory By SKU Report-WS 202" shown in the title bar of the SKU search query window.

(Click on photo for larger version)
The Board observed that, according to Section 904.03(e) of the Trademark Manual of Examining Procedure (Oct. 2017), an acceptable specimen for software "might be a photograph or printout of a display screen projecting the identifying trademark for a computer program."

Because software providers have adopted the practice of applying trademarks that are visible only when the software programs are displayed on a screen, see TMEP § 904.03(e), an acceptable specimen might be a photograph or screenshot of a computer screen displaying the identifying trademark while the computer program is in use. The second substitute specimen features screenshots of Applicant’s mark appearing on the log-in and search screens viewable by Applicant’s customers utilizing the downloaded software. Because the mark appears on the login and search screens of Applicant’s downloadable software when the software is in use, we find that the second substitute specimen shows the applied-for mark used in connection with the goods in Class 9 and would be perceived as a trademark identifying the source of those goods.

Finally, the Board noted that, again according to Section 904.03(e) of the TMEP, "[i]t is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce. See, e.g., In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (holding that stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, is sufficient use)."

Read comments and post your comment here.

TTABlog comment: AWL set, in my VIEW.

Text Copyright John L. Welch 2018.

TTAB Will Hold Two Final Hearings at Tulane Law School - February 28th

The TTAB, in a combined program with the PTAB, will take its "Stadium Tour" to Tulane University Law School in New Orleans on February 28th. The TTAB panel will hear oral argument in the two cases summarized below. The day-long program will include an "Overview of the Trademark Trial and Appeal Board" by Chief Judge Gerard F. Rogers, and a panel discussion on advocacy, featuring judges from both the TTAB and the PTAB. Full agenda may be found here.

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, for "t-shirts" and "Men's, women's and children's clothing, namely, shirts, sweatshirts; headwear, namely, hats, caps"].

February 28, 2018 - 1 PM: Larr 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].

Read comments and post your comment here.

TTABlog comment: Looking forward to full reports from attendees.

Text Copyright John L. Welch 2018.

Recommended Reading: Prof. Ouellette, "Does Running Out Of (Some) Trademarks Matter?"

Lisa Larimore Ouellette, Associate Professor of Law at Stanford Law School, responds to the article posted here yesterday, in a note entitled, Does Running Out Of (Some) Trademarks Matter?, 131 Harv. Law. Rev. Forum 116 (2018) [pdf here]. While praising the work of Professors Beebe and Fromer, Professor Ouellette suggests further avenues of research regarding the actual costs or the countervailing benefits of either depletion or congestion, before recommending any change in the current trademark system.

In this short space, I wish to laud the remarkable descriptive contribution of Are We Running Out of Trademarks? while sounding a note of caution on the normative implications. Beebe and Fromer’s data convincingly demonstrate that short, common word marks are becoming depleted and congested, and they present a number of plausible hypotheses about the negative welfare impact of this trend. Their findings suggest that trademark policy has been based on false assumptions and should be closely reexamined. But their data cannot elucidate the actual costs of depletion or congestion — particularly without noting how the market will adapt to reduce these costs — and cannot reveal if there are countervailing benefits. Generating concrete evidence of these costs and benefits seems like a necessary next step before recommending any significant changes to the current trademark system. After offering a laudatory evaluation of the value of Beebe and Fromer’s descriptive work, I explore why reforms in reaction to their research should proceed cautiously, and I suggest important avenues for future empirical work to build on these results.

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Text Copyright John L. Welch 2018.

Recommended Reading: Professors Beebe and Fromer, "Are We Running Out of Trademarks?"

"Conventional wisdom" says that the number of available trademarks is infinite, or nearly so. Professors Barton Beebe and Jeanne C. Fromer of New York University School of Law challenge that assertion in their enlightening article: Are We Running Out Of Trademarks: An Empirical Study of Trademark Depletion and Congestion, 131 Harv. Law Rev. 948 (February 2018). [pdf here].

American trademark law has long operated on the assumption that there exists an inexhaustible supply of unclaimed trademarks that are at least as competitively effective as those already claimed. This core empirical assumption underpins nearly every aspect of trademark law and policy. This Article presents empirical evidence showing that this conventional wisdom is wrong. The supply of competitively effective trademarks is, in fact, exhaustible and has already reached severe levels of what we term trademark depletion and trademark congestion.  * * *  These data show that rates of word-mark depletion and congestion are increasing and have reached chronic levels, particularly in certain important economic sectors. The data further show that new trademark applicants are increasingly being forced to resort to second-best, less competitively effective marks. Yet registration refusal rates continue to rise. The result is that the ecology of the trademark system is breaking down, with mounting barriers to entry, increasing consumer search costs, and an eroding public domain. In light of our empirical findings, we propose a mix of reforms to trademark law that will help to preserve the proper functioning of the trademark system and further its core purposes of promoting competition and enhancing consumer welfare.

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TTABlog comment: Should we take some small comfort from the fact that Matal v. Tam and In re Brunetti have freed up more words for registration as trademarks? On the other hand, Bayer v. Belmora says that one need not own a trademark in the United States to bring a Section 43(a) claim (Bayer owned the mark FLANAX in Mexico). Does that further narrow (slightly) the number of marks available in this country?

P.S. I'm sorry to see the Professors use the terms "trademark" and "trademarking" as verbs, instead of "register" and "registering."

Text Copyright John L. Welch 2018.

Applying Claim Preclusion, TTAB Summarily Dismisses Petition for Cancellation of "THE EBONYS" Registration Despite Added Claim

The Board granted respondent's motion for summary judgment, dismissing this petition for cancellation of a registration for the mark THE EBONYS for entertainment services by a musical group. The Board ruled that claim preclusion barred petitioner's fraud and likelihood-of-confusion claims in light of a prior Board decision (here) dismissing petitioner's closely similar fraud claim. David S. Beasley v. William H. Howard DBA The Ebonys, Cancellation No. 92066369 (January 19, 2018) [not precedential].

In the prior cancellation proceeding, Petitioner Beasley alleged that Respondent Howard knowingly made false statement regarding his (Howard's) use of the mark THE EBONYS. Beasley, however, failed to submit evidence to support the fraud claim, and so the Board dismissed the proceeding.

In this, the second proceeding, Beasley provided more detailed allegations regarding the alleged fraud, but the Board found that "the core transactional facts in each proceeding are the same." Therefore it concluded that Beasley's renewed fraud claim is barred under the doctrine of claim preclusion.

As to Petitioner Beasley's likelihood-of-confusion claim, the Board observed that claim preclusion bars "a subsequent assertion of the same transactional facts in the form of a different cause of action or theory of relief." A party cannot avoid claim preclusion merely by bringing additional claims in a second proceeding based on the same transactional facts as the first proceeding.

We find that there is no genuine dispute that Petitioner’s likelihood of confusion claim in this proceeding is based on the same transactional facts as, and should have been litigated in, the Prior Action. Specifically, Petitioner has alleged in both proceedings prior use and ownership of THE EBONYS mark for a vocal music group. In addition, with respect to the involved registration in each proceeding, Respondent had alleged use of THE EBONYS mark for the same or similar services to those offered by Petitioner. In view thereof, Petitioner could (and should) have asserted his likelihood of confusion claim in the earlier case.

And so the Board granted respondent's motion for summary judgment and dismissed the proceeding.

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Text Copyright John L. Welch 2018.

TTAB Test: Are Nutritional Supplements And Fruit Beverages Related Under Section 2(d)?

The USPTO refused registration of the mark CODEGREEN for "nutritional supplements in pill and/or powder form," finding the mark likely to cause confusion with the registered mark CODE GREEN for "fruit beverages" and "vegetable-based food beverages." Applicant Spin80 argued that the goods are not related because its supplements are geared toward the training, exercise, and fitness industries whereas the cited goods have no particular application. How do you think this came out? In re Spin80, Inc., Serial No. 87116915 (January 31, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Because the marks are nearly identical, a lesser degree of relatedness between the goods is necessary to support a finding of likely confusion.

Examining Attorney Jillian Cantor submitted website pages showing nutritional supplements in pill form and fruit beverages sold under the same mark. In addition, 11 use-based third-party registrations that identify both nutritional supplements and fruit beverages suggested that the goods many emanate from the same source.

As to applicant's argument that its goods are "highly specialized," the Board found no evidence to support that assertion. [Irrelevant anyway, since there are no such limitations in applicant's identification of goods - ed.]. There was ample evidence that "the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the emanate from the same source."

The evidence showed that the channels of trade for the involved goods, and the classes of consumers, overlap. There was no evidence to support applicant's contention that "consumers of nutritional supplements necessarily are overly dedicated to fitness and wellness," and are "specifically pursuing the results and effects" of the supplements. The Board noted that while some consumers may exercise a certain degree of care in selecting supplements, they are not necessarily likely to exercise a high degree of care in examining the trademarks. Moreover, the Board must consider the least sophisticated potential purchasers in making its determination.

Finally, applicant argued that the difference in price of the goods would prevent confusion, but applicant failed to prove that all of its goods are expensive. In any case, the identification of goods in the application has no price limitation, and the evidence showed that supplements can sell as low as  $4-10. And even if consumers exercised a degree of care in purchasing these goods, it is well established that even sophisticated consumers are not immune from source confusion when encountering substantially identical marks.

And so the Board affirmed the refusal.

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TTABlog comment: Was this a WYHA?

Text Copyright John L. Welch 2018.

TTAB Test: Is "PEACEFUL PIRANHA" Confusable With "PIRAÑA" for Snack Foods?

The USPTO refused to register the mark PEACEFUL PIRANHA for potato chips, processed nuts, and other snack items, finding the mark confusingly similar to the registered mark PIRAÑA for potato chips, nut-based snacks, etc. Applicant argued that there is an incongruity in its mark that creates an entirely different connotation to the consumer as compared to the cited mark. How do you think this came out? In re Hy-Vee, Inc., Serial No. 87120774 (February 6, 2018) [not precedential] (Opinion by Judge Frances Wolfson).

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

As to the marks, the Board found the word "piranha" to be the dominant portion of Applicant’s mark "because it is modified by the term 'peaceful' in the same manner as an adjective modifies a noun." Even though "peaceful" is the first word in applicant's mark, consumers are likely to focus on the word "piranha."

Moreover, "for English language speakers who are unfamiliar with Spanish, the differences between the terms PIRANHA and PIRAÑA are insignificant."

Without knowledge of the purpose of the tilde in a Spanish “n” (i.e., that it changes the pronunciation of the letter “n” to the “ny” sound such as is used in the English word canyon), a consumer of Applicant’s goods may perceive the tilde as simply a design feature of the mark or consider Registrant’s mark as a misspelling of the English word “piranha.” Those consumers who do not speak or understand Spanish are unlikely to pronounce the “ny” sound and will consider the pronunciations of the terms to be the same. For these reasons, such consumers will associate both the terms PIRANHA and PIRAÑA with the fish.

For consumers having a knowledge of Spanish, the terms will be perceived as equivalents, under the doctrine of foreign equivalents.

As to the incongruity in applicant's mark, the Board that piranhas may be considered vicious and that a peaceful piranha "does not jibe with that perception, although given the popular understanding of what characterizes a piranha, even a 'peaceful piranha' may be seen to have an incipient propensity to be vicious." The Board did not agree, however, that applicant's mark "is so counterintuitive in its word-play on 'piranha' that confusion with the cited mark PIRAÑA would be obviated." In short, the presence of the additional term PEACEFUL in applicant’s mark "is not likely to distinguish the marks since it would merely indicate an atypical piranha, possibly for use with a subset of snack foods offered under the PIRAÑA mark."

And so the Board affirmed the refusal.

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TTABlog comment: Was this a WYHA?

Text Copyright John L. Welch 2018.

TTAB Test: Are Cigars Related to Alcoholic Beverages for Section 2(d) Purposes?

The USPTO refused registration of the mark TERNURA for cigars, finding it likely to cause confusion with the identical mark registered for "liquor; tequila; vodka; wines."Applicant contended that, under applicable precedent, tobacco and alcohol are not considered "related" unless the prior registered mark is well-known or famous and the applicant is seeking to exploit the registered mark. Since the cited mark is not well-known, applicant asserted, confusion is not likely. How do you think this came out? In re El Galan, Inc., Serial No. 86961428 (February 1, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).

Not surprisingly, the Board found the marks to be identical in sound, appearance, meaning (Spanish for "kindness" or "tenderness"), and commercial impression.

As to the goods, Internet evidence submitted by Examining Attorney Clare Cahill showed that third parties produce and offer for sale cigars and alcoholic beverages under the same mark. The examining attorney also provided evidence that cigars and alcoholic beverages are complementary in that they are consumed together. Prior Board decisions found JOHNNY WALKER for cigars confusable with the same mark for whiskey, and CASCADE for whiskey confusable with the same mark for cigarettes.

Applicant relied on Schenley Distillers, Inc. v. Gen. Cigar, 166  USPQ 142, 143 (CCPA 1970), for the proposition that, because the cited mark is not well-known or famous and is not marketed in a way to gain recognition, confusion is not likely here. The Board first noted that the fame of a prior mark is generally considered only in an inter partes context. Moreover, here the evidence suggests that "alcohol industry practice has evolved since the issuance of the Schenley decision . . . to the extents that in the current marketplace it is not an uncommon industry practice for distillers and  vintners, and not just those with 'a famous name or trademark,' . . . to produce and offer both cigars and alcoholic beverages under the same mark."

To be clear, we are not finding that cigars and alcoholic beverages in general are related based upon some abstract similarity between alcohol and tobacco. The record in this case establishes that cigars and alcoholic beverages are not only produced and offered for sale by third parties under the identical mark, but they are also complementary products that are marketed together for simultaneous consumption. As such, when both products are offered under the identical, arbitrary trademark, consumers are likely to believe that the goods originate from the same source.

The evidence further established that alcoholic beverages and cigars travel in the same channels of trade, such as liquor stores and online marketplace retailers. In fact they are complementary products that are marketed together for simultaneous consumption.

As to the conditions of purchase, the items identified in the application and cited registration include inexpensive products purchased by the public at large. Even assuming that the prospective purchasers are knowledgeable and sophisticated, they are not immune from source confusion. In any case, likelihood of confusion must be assessed from the standpoint of the least sophisticated consumer.

The Board therefore concluded that confusion is likely and it affirmed the refusal.

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TTABlog comment: So all alcoholic beverages are related to each other, and also to all tobacco products?

Text Copyright John L. Welch 2018.

Louis Vuitton's APOGÉE for Perfume Confusable with APHOGEE for Hair Products, Says TTAB

Despite Applicant Louis Vuitton's attempt to sidestep the refusal by narrowing its identified channels of trade, the Board affirmed a Section 2(d) refusal to register the mark APOGÉE for perfumery products "for non-professional use and sold only within Louis Vuitton Malletier stores, on Louis Vuitton Malletier's website and within Louis Vuitton Malletier's store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier's exclusive distributor network." The Board found the mark confusable with the registered mark APHOGEE for hair care preparations. In re Louis Vuitton Malletier, Serial No. 79165769 (February 2, 2018) [not precedential] (Opinion by Judge Angela Lykos).

The marks: The Board found the marks to be similar in appearance, sound, connotation and commercial impression. "[E]ven if consumers were to perceive Applicant’s mark APOGÉE as the French word for “height,” because the marks are so alike in appearance and could be pronounced similarly, it is likely that consumers would perceive the cited mark as having the same meaning and commercial impression."

The goods: The record evidence showed that "it is not uncommon for perfumery and hair care products to be sold under the same trademark." The Board concluded that the involved products "are related, complementary items intended to be used together as part of one’s beauty care regime."

Applicant contended that "Registrant has no nexus to the alchemic ambit of luxury French perfume," and argued that Registrant’s goods are limited to professional grade products. Irrelevant, said the Board, since there are no such limitations in the application and registration at issue.

Channels of trade: A key issue in the appeal concerned whether the trade channel restrictions in the application - “sold only within Louis Vuitton Malletier stores, on Louis Vuitton Malletier’s website and within Louis Vuitton Malletier’s store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier’s exclusive distributor network” - eliminate any likelihood of confusion.

Because the cited registration has no restriction on channels of trade, the Board must presume that registrant's hair care products travel in all trade channels appropriate for these goods, including traditional brick-and mortar and online department stores, and direct business-to-consumer (B2C) websites offering for sale hair care products and perfumes to the general public.

The Board agreed with applicant that Louis Vuitton's own stores and websites "are specialized trade channels that do not overlap with the ordinary channels of trade for Registrant’s products." However, that is not the case with regard to "Louis Vuitton Malletier’s store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier’s exclusive distributor network." Since high-end retail stores often sell the types of goods at issue, they are an appropriate trade channel and therefore one in which registrant’s goods may travel. This factor favored a finding of likely confusion.

Conditions of sale: There are no restrictions in the application or cited registration as to purchasers or price points. Even assuming, as applicant asserts, that its perfumes are purchased by sophisticated and discriminating consumers, even careful purchasers are likely to be confused when highly similar marks are used in connection with related goods.

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

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TTABlog comment: Suppose applicant LV filed a new application limiting the goods to perfume sold only in Louis Vuitton Malletier stores?

Text Copyright John L. Welch 2018.

Precedential No. 3: TTAB Refuses to Limit Goods in Cited Software Registration, Affirms Section 2(d) Refusal

The Board affirmed a Section 2(d) refusal to register the mark shown below left, for "Computer application software for mobile phones and desktop computers, namely, software for visualizing the popularity of places in real time, that uses an underlying map capability for navigation, sold as ‘business to consumer’ (B2C) software, and not as ‘business to business’ (B2B) software," finding it likely to cause confusion with the registered mark shown below right, for "Downloadable mobile applications for mobile phones and mobile electronic devices, primarily software for travel and destination marketing organizations and travel marketing professionals." Applicant Solid State argued, to no avail, that the registration improperly failed to specify the function of the software, but the Board observed that it lacked the power to read limitations into the unrestricted identification of goods in the registration. In re Solid State Design Inc., 125 U.S.P.Q.2d 1409 (TTAB 2018) [precedential] (Opinion by Judge Christopher Larkin).


The marks: The Board found the word "populace" dominant in both marks, and the marks identical in sound, similar in appearance, and highly similar in connotation and commercial impression.

[W]e agree with the Examining Attorney [Erin R. Zaskoda] that "the average consumer is most likely to recall generally the literal element ‘POPULACE’ . . . rather than making a very nuanced distinction that the outline of a person emphasizes the social aspect of the applicant’s goods and the arguably globe or orb image emphasizes the travel and tourism aspect of the cited goods . . . ."

The goods:  The only limitation on the goods in the cited registration is that they are "[d]ownoadable mobile applications for mobile phones and mobile electronic devices." The Board is required to consider that identification as including "all good of the nature and type described therein." In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). Therefore, the goods in the registration must be deemed to encompass Applicant's more specifically identified "computer application software for mobile phones."

Applicant asserted that the cited registration is inconsistent with the guidance provided by the USPTO's Acceptable Identification of Goods Manual, which states that "[m]obile applications are software applications design for smartphones, tablet computers, and other mobile devices, and require specification of the function of the software." The ID Manual further provides that "[s]tating that the 'downloadable mobile applications' are 'for use with mobile devices' is not acceptable" to specify the function of such applications. It provides the following form language: "Downloadable mobile applications for {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use}." [Emphasis by the Board].

The Board noted that "[t]his appeal illustrates the problems that can arise when the requirement to specify the function of a computer program such as a downloadable app is not satisfied." It pointed out, however, that the TTAB lacks the authority to read limitations into the identification of goods, In re i/am/symbolic, LLC, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017), including a specification of the function of the apps, or to "grant relief under Section 18 sua sponte." In re Cook Med. Tech. LLC, 105 USPQ2d 1377, 1384 n.6 (TTAB 2012). The Board observed that, in such a situation, the applicant has the option of seeking a consent from the owner of the cited registration, or seeking a restriction of the registration under Section 18. Id.

Trade channels and consumers: Because the involved goods are legally identical, the Board presumed that they travel in the same channels of trade. As to the classes of consumers, the Board must also deem these to be identical. Although both the application and cited registration "contain purported restrictions on the classes of consumers for the respective apps, ... they do not negate the presumptive overlap in the classes of consumers." The language "sold as 'business to consumer (B2C) software, and not as 'business to business' (B2B) software" in the application is aspirational and marketing-related and does not exclude businesses (which range from individuals to large multinational corporations). The word "primarily" in the cited registration does not specify the exclusive classes of consumers as limited to only the listed travel professionals.

We therefore find that the apps identified in the cited registration may be sold to general consumers as well as travel professionals. We also find that Applicant's software could be purchased by businesses. Accordingly, we find that the classes of customers in the application and registration overlap.

And so the Board affirmed the refusal to register.

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TTABlog comment: The ID Manual argument was never going to work.

Text Copyright John L. Welch 2018.

Precedential No. 2: TTAB Again Lets Party off the Hook Based on January 2017 Rule Changes

On June 29, 2017, the day its pretrial disclosures were due, Opposer Kid-Systeme filed a motion to reopen its time to file a motion for summary judgment. Trademark Rule 2.127(e)(1), as amended in January 2017, provides that a summary judgment motion must be filed "prior to the deadline for pretrial disclosures, as originally set or reset." The Board noted that "prior to" means the day before the deadline. Opposer missed the deadline. Would the Board reopen? Not to worry! Because opposer's motion was filed during the period of transition to the amended Rules, and because the Board clarified Rule 2.127(e)(1) in a July 21, 2017 notice issued after opposer's filing, the Board chose to consider the summary judgment motion and to treat the motion to reopen as moot. KID-Systeme GmbH v. Türk Hava Yollari Teknik Anonim Sirketi, 125 U.S.P.Q.2d 1415 (TTAB 2018) [precedential] (Order by Interlocutory Attorney Katie W. McKnight).

Before January 14, 2017, the deadline for filing a motion for summary judgment was “prior to the commencement of the first testimony period, as originally set or as reset." In January 2017, that was changed to "prior to the deadline for pretrial disclosures, as originally set or reset." The Board's July 21, 2017 clarification of Rule 2.127(e)(1) merely changed the words "prior to the deadline" to "before the day of the deadline." In any event, the Board looked kindly on opposer and its predicament, pointing to the Notice of Proposed Rulemaking of April 4, 2016, which states:

[A]ny issues that may arise concerning the transition to the revised rules for cases pending as of the effective date of the rules would be addressed by the Board and the parties on a case-by-case basis, allowing for flexibility to respond to the unique needs in each case, particularly with respect to scheduling matters.[Emphasis by the Board].

The Board therefore declared opposer's motion to reopen as moot, and it allowed applicant thirty days to respond to the motion for summary judgment.

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TTABlog comment: Opposer apparently recognized that it missed the deadline under the new rules. That's why it filed a motion to reopen. So what did the transition to the new rules have to do with it? Opposer wasn't confused about the Rules.

Text Copyright John L. Welch 2018.