Saturday, June 30, 2018

TTABlog Quarterly Index: April - June 2018

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Section 2(a) - Deceptive:
Section 2(a) - False Association:
Section 2(d) - Likelihood of Confusion:


Section 2(e)(1) - Mere Descriptiveness:
Section 2(e)(1) - Deceptive Misdescriptiveness:
Section 2(e)(2) - Primarily Geographically Descriptive:
Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:
Section 2(e)(4) - Primarily Merely a Surname:
Section 2(e)(5) - Functionality:
Section 2(f) - Acquired Distinctiveness:
Abandonment:
Fraud:
Genericness:
Laches:
Nonuse/Abandonment/Specimen of Use/Failure to Function:

Discovery/Evidence/Procedure::
CAFC Decisions:
Recommended Reading:
Other:

Text Copyright John L. Welch 2018.

posted by John L. Welch @ 6/30/2018   0 comments

Friday, June 29, 2018

Trademark Expo July 27-28 Includes Free CLE on Right of Publicity and on Ethics

The Smithsonian's National Museum of American History, in collaboration with the United States Patent and Trademark Office, will host the 2018 National Trademark Exposition on July 27 and 28 at the National Museum of American History, 1300 Constitution Ave. N.W., Washington, DC 20560. The exposition is a free, family-friendly event featuring educational workshops, exhibits and hands-on activities demonstrating the important role trademarks play in our economy and our lives. Children's activities, including scavenger hunts, interactive games, and trademark design workshops, will be offered both days. [more details here and at www.uspto.gov/TMExpo.]


As part of the 2018 National Trademark Exposition, two free continuing legal education (CLE) seminars will be offered to legal professionals:

Who Owns You After You Die - Inside the Estates of Deceased Celebrities
Friday, July 27, 10:15 a.m. - 11:15 a.m.

This seminar will be moderated by Kareem Abdul-Jabbar, professional basketball legend, author, and registered trademark owner, and his business manager, Deborah Morales. Panelists will include Jennifer E. Rothman, a leading expert on right of publicity and Professor of Law at Loyola Law School, Los Angeles and Priya P. Royal, managing attorney and founder of the Royal Law Firm, PLLC.
Legal Ethics Seminar
Friday, July 27, 11:15 a.m. - 12:15 p.m.

This seminar will be delivered by William R. Covey, United States Patent and Trademark Office Deputy General Counsel and Director of the Office of Enrollment and Discipline (OED). OED is responsible for registering attorneys and agents to practice before the USPTO and the presentation will cover a variety of issues, including OED rules, programs and statistics, as well as related case law.

TO REGISTER send an email with your name, bar number, and seminar you wish to attend to TMExpo@USPTO.GOV with “CLE Registration” in the subject line. Registration is limited to 100 attendees per seminar and closes on July 10. The USPTO is seeking CLE accreditation for the seminars.

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

posted by John L. Welch @ 6/29/2018   0 comments

TTAB Reverses 2(d) Refusal of CARAT for Airplane Connectivity Services: Unrelated to Broadcasting Services

The Board reversed a refusal to register the mark CARAT (Stylized) for aircraft connectivity services that enable transmission of data to and from aircraft. The USPTO deemed the mark likely to cause confusion with the registered mark CARAT (standard characters) for "radio and television broadcasting services." However, the examining attorney did not provide any evidence of an overlap in trade channels or purchasers. In re P.G.A. Electronic, Serial No. 79191002 (June 25, 2018) [not precedential] (Opinion by Judge Albert Zervas).


The Marks Not surprisingly, the Board found the marks to be identical in sound, connotation, and commercial impression. As to appearance, the marks are legally identical, since registrant's standard character mark could be displayed in the same font as the applied-for mark.

The Services: The examining attorney pointed to seven existing registrations that cover both broadcasting services across various platforms, and data transmission services. He also provided webpages from three large telecommunications companies, but only one referred to television and radio services for aircraft.

The Board did not disagree with the examining attorney that registrant's customers include airline passengers (DirectTV offers programming on airplanes). But the examining attorney did not identify the purchasers of applicant's services. Although airline passengers may be the ultimate beneficiary of applicant's services, the evidence did not show that passengers are consumers of applicant's services "or would even be aware that Applicant is the entity providing the connectivity services."

Passengers do not participate in purchasing decisions involving an airplane’s connectivity services. Based on Applicant’s recitation of services, and the dearth of evidence in the record suggesting otherwise, we find that purchasers of Applicant’s services are "professionally trained and technical experts in the field of aircraft equipment, installation, maintenance and use thereof," as identified by Applicant. The question, then, is whether this group of purchasers are also purchasers of radio and television broadcasting services.

The Board found nothing in the record to show that the professionally trained individuals would also purchase radio and television broadcasting services. Nor was there evidence that the normal channels of trade for the involved services intersect. It also appeared that the relevant potential purchasers - who are not airline passengers - would be knowledgeable and sophisticated and would exercise greater care in their purchasing decisions.

Conclusion: The du Pont factors regarding channels of trade and classes of purchasers outweighed the other factors, and so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Don't airline passengers (i.e., the general public) also purchase broadcasting services, like DirectTV? Yes, but the overlapping purchasers are sophisticated and careful.

Text Copyright John L. Welch 2018.

posted by John L. Welch @ 6/29/2018   0 comments

TTAB Posts July 2018 Hearing Schedule

The Trademark Trial and Appeal Board (TTAB) has scheduled seven (7) oral hearings for the month of July 2018. The hearings will be held in the Madison Building, in Alexandria, Virginia. Briefs and other  papers for these cases may be found at TTABVUE via the links provided.


July 10, 2018 - 11 AM: In re Christopher Roth, Serial No. 86128405 [Section 2(d) refusal of  BUFFALO PHILLY'S for "Restaurant services featuring eat in, take-out and delivery restaurant services" in view of the registered mark BUFFALO PHIL’S & Design for "restaurant services"].

 

July 10, 2018 - 2 PM: Valentino S.p.A v. Darya Trading, Inc., Opposition No. 91227342 [Opposition to registration of the mark shown below, for various clothing items, on the ground of likelihood of confusion with and likely dilution of the registered mark VALENTINO for overlapping clothing items].


July 11, 2018 - 1 PM: In re Midwestern Pet Foods, Inc., Serial No. 86702878 [Refusal to register EARTHBORN REBORN for “Pet food” on the ground that the specimen of use fails to show use of the mark in connection with the goods].

(click on photo for larger picture)

July 12, 2018 - 11 AM: TiVo Brands, LLC v. Tivoli, LLC, Oppositions Nos. 91227791 and 91221632 [Oppositions to registration of TIVOTAPE and TIVOBAR for electric lighting fixtures and related goods, on the grounds of likelihood of confusion with, and likely dilution of, the registered mark TIVO for computer hardware and software].


July 12, 2018 - 2 PM: UMG Recordings, Inc. v. Siggy Music, Inc., Opposition No. 91200616 and Cancellation No. 92053622 [Consolidated petition for cancellation of a registration for, and opposition to registration of, the mark J5 for various goods in classes 3, 14, 16, 18, 21, and 28, including books in the field of entertainment and musical performances and musical toys on the grounds of nonuse and abandonment, and likelihood of confusion with and likely dilution of the registered mark JACKSON 5 for entertainment services].


July 17, 2018 - 10 AM: In re Starbucks Corporation DBA Starbucks Coffee Company, Serial No. 86689423 [Refusal to register the two-dimensional design mark shown below on the ground that the drawing is not a substantially exact representation of the mark as shown on the specimens of use].


July 17, 2018 - 2 PM: In re Productos Alimenticios Bocadeli, S.A. de C.V., Serial Nos. 87039617 and 87057223 [Section 2(e)(1) mere descriptiveness refusal of FRIJOLI CHIPS, in standard character and design form, for "cereal based snack food; preparations made from cereals, namely, cereal bars, processed cereals, wheat-based snack foods, cereal based snack food; spices; pastry" [CHIPS disclaimed]].


Read comments and post your comment here.

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

Text Copyright John L. Welch 2018.

posted by John L. Welch @ 6/29/2018   0 comments

Thursday, June 28, 2018

TTAB Affirms Descriptiveness Refusal of “USR ID” For Security Software and Services

[This is a guest post by Susmita Gadre, a rising 3-L at Northeastern University School of Law, and a summer associate at Wolf, Greenfield & Sacks, P.C.]. The Board affirmed a Section 2(e)(1) refusal of registration of the mark USR ID for security, authentication, and identification software and services, finding that the mark immediately describes a feature or characteristic of Applicant’s goods and services. In re Universal Secure Registry LLC, Serial No. 87113726 (June 22, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).


Examining Attorney Katrina J. Goodwin contended that consumers would likely pronounce “USR” as “user”. The evidence, which included several websites, showed that the term “user ID” is commonly used in connection with authentication services.

The applicant made several innovative arguments in response, claiming that the misspelling makes the mark unpronounceable, the mark is not found in the dictionary, is a proprietary acronym of the company name, is not descriptive of the full extent of applicant’s actual services, and is a double entendre.

The Board was unconvinced by these arguments. There is no way to predict how the public will pronounce a mark, but considering applicant’s goods and services, they are likely to see it as the phonetic equivalent of the word “user”. Finding a mark in the dictionary is not necessary for it to be descriptive, and here the Examining Attorney found an acronym dictionary showing that “USR” is a common abbreviation for “user”. The Board further found that in the context of the goods and services, consumers would be more likely to see it as such, instead of an acronym for the company name. Applicant argued that the mark is not descriptive since the services include a three-factor authentication system, but the Board reiterated that a mark does not need to describe the full scope of services in order to be descriptive. Finally, there was also no evidence to show that the mark is a double entendre.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you first pronounce the mark?

Text Copyright John L. Welch and Susmita Gadre 2018.

posted by John L. Welch @ 6/28/2018   2 comments

Wednesday, June 27, 2018

Professor McCarthy Critiques the CAFC's ZERO Decision

Professor J. Thomas McCarthy has provided the following thought-provoking comments on the CAFC's ruling last week in the ZERO case [TTABlogged here], in which the appellate court vacated and remanded the Board's decision, ruling that the Board erred in its "legal framing" of the genericness issue and erred in failing to assess the level of descriptiveness of the term ZERO. What do you think of the Professor's comments?


Every trademark lawyer knows that the line between generic and descriptive is worth fighting over. If the designation is put into the “generic name” category, then it’s neither registerable as a mark nor protectable as a common law mark. If it’s a “generic name,” every competitor can use the words freely. If it’s “descriptive,” proving a secondary meaning can establish trademark rights.

The CAFC’s ZERO decision of June 20, 2018 smudged that crucial line and in doing so, made it easier to put words into the generic name category, free for all to use. Royal Crown Co. v. The Coca-Cola Co., __ F.3d ___, 2018 WL 3040163 (Fed. Cir. 2018). The CAFC reversed the T.T.A.B.'s decision that dismissed the Opposition of Royal Crown to Coca-Cola’s applications for various ZERO marks such as COCA-COLA ZERO and COKE ZERO without disclaiming “Zero.” Royal Crown argued that ZERO was a generic name for soft drinks with minimal or no calories and if it was not a generic name, it was descriptive and Coca-Cola had not acquired a secondary meaning for it.

The CAFC launched its analysis of the generic name issue with a mis-step that it has made over and over in recent years. The court quoted from its 1986 Marvin Ginn decision that: “A generic term ‘is the common descriptive name of a class of goods or services.’” That was what the Lanham Act said in 1986 but has not been the law for almost thirty years. A key 1989 statutory change deleted the confusing terminology “common descriptive name” to denote a generic name of a product or service. Yet, notwithstanding that statutory change, the Federal Circuit persists in mis-defining a generic name as “the common descriptive name.” This was the court’s first step in blurring the line between generic and descriptive.

In its second mis-step, the court stated, as it has repeatedly in the past, that “the critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.” In the Royal Crown decision, the court uses the terms “refer to” or “refers to” sixteen times. In my view, this is not the law. It is a misleading and incorrect way of asking the question because it smears the critical line between a generic name and a descriptive word. “Refers to” is such a vague phrase that it could easily include both product names and product descriptions. For a hypothetical example, “heart healthy” “refers to” the content of a food. But while it “describes” the food, it does not “name” a food. I don’t say that I had a glass of juice and a “heart healthy” for lunch. An order for a “heart healthy” at the deli counter will bring blank stares. While it’s probably next to impossible to prove a secondary meaning in “heart healthy” (unless in combination with something else) it’s hard for me to see how it should be categorized as a generic name of something. This is what the Federal Circuit was getting at in the “descriptive” part of its opinion, chiding the T.T.A.B. for not deciding if “zero” was “highly” descriptive and thus requiring much more convincing evidence of having acquired distinctiveness (secondary meaning.)

To determine genericness, the proper question to ask is if the designation is a name of the product or service. The Lanham Act does not ask if the word “refers to” a product or service. The statute in three places requires that the primary significance of the word be as a “generic name for the goods or services.” Lanham Act § 14, 15 U.S.C.A. § 1064(3) (Cancellation); Lanham Act § 45, 15 U.S.C.A. § 1127 (Defining “abandonment”); Lanham Act § 15, 15 U.S.C.A. § 1065 (Exception to incontestable status).

The CAFC in the Royal Crown case concluded: “The Board therefore must consider whether ZERO is generic because it refers to a key aspect of at least a sub-group or type of the claimed beverage goods.” This judicial re-writing of the statute smudges the line between descriptive and generic. It expands the “generic name” category to include words that describe but do not name the goods.

Read comments and post your comment here.

TTABlog comment: What do you think? I think the Board's recent MECHANICALLY FLOOR-MALTED decision [TTABlogged here] is an example of the expansion of the "genericness" category.

Text Copyright John L. Welch 2018.

posted by John L. Welch @ 6/27/2018   5 comments

Tuesday, June 26, 2018

TTAB Test: Is GUARDIAN AUDIO for Professional Audio Gear Confusable With EGUARDIAN for Consumer Electronics?

The USPTO refused registration of the mark GUARDIAN AUDIO for "audio equipment for use in commercial entertainment systems for use in large public venues, namely, amplifiers, speakers, receivers; all of the foregoing sold only to sound contractors for commercial installation, and to sound production companies, and none of which are targeted to or designed for use by the general consuming public," finding the mark likely to cause confusion with the registered mark EGUARDIAN for various "appliances and consumer electronic devices," including televisions, stereos, and audio and video recorders. How do you think this appeal came out? In re David Mottinger, Serial No. 87222396 (June 21, 2018) [not precedential] (Opinion by Judge Frances Wolfson).


The Marks: Not surprisingly, the Board found the word GUARDIAN to be the dominant portion of applicant's mark, since it appears as the first word in the mark and the word AUDIO is descriptive of audio equipment and has been disclaimed. The dominant word in the cited mark is also GUARDIAN. The letter "E" generally refers to electronics and describes a feature of registrant's goods. The Board concluded that the marks are similar in appearance, pronunciation, connotation, and overall commercial impression due to the common term GUARDIAN.

The Goods: The Board observed that it is not necessary for all the goods in the application and cited registration to be related in order to support a likelihood of confusion finding. It is sufficient if there is likely confusion as to any item in the application.

Examining Attorney Jonathan Robert Falk submitted seven use-based third-party registrations covering "amplifiers, speakers or receivers" and "public address system accessories," on the one hand, and "appliances and consumer electronic devices" such as televisions and cd players on the other. The evidence, though not extensive, was adequate to support a finding that the involved goods are related.

Channels of Trade: The cited registration has no restriction as to trade channels or classes of consumers, and in particular the term "appliances" is not limited to home electronics. The registration therefore covers televisions, stereos, and audio and video recorders that may be sold to sound contractors and sound production companies.

Thus, the restriction "sold only to sound contractors for commercial installation, and to sound production companies, and none of which are targeted to or designed for use by the general consuming public" in the application is not a material factor in our likelihood of analysis because Registrant’s description of goods is not restricted to any specific channels of trade.

Conclusion: The Board found conclusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: I think this could have gone either way.

Text Copyright John L. Welch 2018.

posted by John L. Welch @ 6/26/2018   1 comments

Monday, June 25, 2018

TTAB Reverses PETROSSIAN Surname Refusal Due to Transferred Distinctiveness

The Board reversed a Section 2(e)(4) refusal to register the mark PETROSSIAN in stylized form, for "Soaps; perfumery, essential oils, cosmetics; All of the foresaid good being sold in delicatessen shops." On appeal, applicant did not contest the underlying surname refusal but instead contended that it is entitled to rely on the transfer of acquired distinctiveness from its registration for the same mark in standard character form for "coffee, tea, chocolates, blinis, cakes, candy, caramels, mustard, vinegar, horseradish." The Board agreed. In re Petrossian Inc., Serial No. 79177698 (June 20, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch).


Under Rule 2.41(a), an applicant may establish acquired distinctiveness by, inter alia, "ownership of one or more active prior registrations on the Principal Register ... of the same mark ... if the goods or services are sufficiently similar to the goods or services in the application."

To establish that such a transfer will take place, Applicant must show a sufficient similarity or relationship between the goods in the prior registrations and those identified in the new application, so that the purchasing public will perceive that the mark’s primary significance when used on the new goods is to identify Applicant as the source. In re Olin Corp., 124 USPQ2d 1327, 1333-34 (TTAB 2017).

Applicant relied on three prior registrations, but the Board focused on just one of them. The Examining Attorney maintained that the goods in that registration (coffee, tea, chocolates, blinis, cakes, candy, caramels, mustard, vinegar, horseradish) were not sufficiently similar to the goods in the subject application to support the transfer of acquired distinctiveness.

Applicant submitted 13 registrations covering cosmetics/soaps and at least some of the goods identified in the prior registration, as well as webpages from Crabtree & Evelyn showing that mark used on teas, soaps and creams. The Board noted that applicant has specified that its goods are sold in delicatessens. The goods in the prior registration consist of food items that might be sold in delicatessens, which increases the likelihood that acquired distinctiveness would transfer because the goods will move in the same trade channels to at least some of the same consumers.

The Board concluded that applicant had met its burden to show acquired distinctiveness, and so it reversed the Section 2(e)(4) refusal.

Read comments and post your comment here.

TTABlog comment: A good case to remember.

Text Copyright John L. Welch 2018.

posted by John L. Welch @ 6/25/2018   0 comments

Friday, June 22, 2018

TTAB Test: Is NIGHT Confusable with NOCHE for Wine?

The USPTO refused to register the mark NIGHT for wine, finding it likely to cause confusion with the registered mark NOCHE, also for wine. On appeal, Applicant argued the doctrine of equivalents should not be applied, and even if it is applied, the other differences between the marks require reversal of the refusal. How do you think this came out? In re Night Wines, LLC, Serial No. 87084959 (June 20, 2018) [not precedential] (Opinion by Judge Thomas W. Wellington).


Evidentiary issues: In its request for reconsideration and its appeal brief, Applicant submitted a list of third-party registrations, but a list alone does not suffice to make the registrations of record. Nor does the Board take judicial notice of third-party registrations. Applicant should have submitted copies of the registrations, or of the electronic records of the USPTO. See TBMP Sections 1208.02 and 1208.04,

Applicant also submitted a list of purported Certificates of Label Approval (COLAs) issued for wine by the Alcohol and Tobacco Tax and Trade Bureau (TTB), claiming that use of the word NIGHT within the term MIDNIGHT is not unique. Applicant did not submit copies of the COLAs, but in any case a COLA is evidence only that the label was approved by the TTB. It is not evidence that the label was in use in commerce, or of the extent of such use.  However, since the Examining Attorney did not object to this evidence, the Board considered it but noted that the probative value of the list is "severely limited."

The Marks: The similarity in appearance between the marks is slight, and there was no reason to believe that the marks will be pronounced similarly. As to connotation and commercial impression, Examining Attorney Esther Queen maintained that the doctrine of foreign equivalents should apply because NOCHE is a word in a common foreign language (Spanish) and applicant's mark NIGHT is the English equivalent of NOCHE.

The Board agreed that the doctrine of foreign equivalents is applicable here. The doctrine applies when the ordinary American consumer (including those proficient in Spanish) would stop and translate the mark into its English equivalent. NOCHE is not a term that consumers will take "as is," but rather will translate the word into English. The Board distinguished In re Tia Maria, Inc., where no likelihood of confusion was found between TIA MARIA for a Mexican restaurant and AUNT MARY'S for canned vegetables. There the Board took into account the differing contexts in which consumers would encounter the two marks. Here, in contrast, consumers would be encountering the marks on the same goods, and in the same channels of trade.

Under the circumstances, we find that the similarity between the marks based on them having the same meaning outweighs the differences based on sound and appearance, and the du Pont factor of the similarity or dissimilarity of the marks weighs in favor of a finding of likelihood of confusion.

Sophistication: Applicant argued that the sophistication of wine drinkers weighs against a finding of likely confusion, but it provided no evidence to support that assertion. The application and cited registration contain no restrictions on the the price or quality of the wines and thus could encompass the least expensive wine. The Board must base its decision on the "least sophisticated potential purchaser."

Conclusion: In sum, the Board found that the marks are similar in structure and identical in connotation, and will be used on identical goods presumably sold in the same channels of trade to the same classes of consumers. Consequently, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Pretty straightforward, no?

Text Copyright John L. Welch 2018.

posted by John L. Welch @ 6/22/2018   2 comments

Thursday, June 21, 2018

CAFC Vacates and Remands: TTAB Applied Wrong Test in Finding ZERO Not Generic for Soft Drinks

The CAFC vacated the TTAB's decision of May 23, 2016 [TTABlogged here], in which the Board found that opposers failed to prove that the term ZERO is generic for soft drinks, sports drinks, and energy drinks. The Board also found that Applicant Coca-Cola had established acquired distinctiveness in the term ZERO for soft drinks and sports drinks. The appellate court, however, ruled that the Board "erred in its legal framing" of the genericness issue and erred in failing to assess the level of descriptiveness of the term ZERO. Royal Crown Company, Inc. and Dr. Pepper/Seven Up, Inc. v. The Coca-Cola Company, 127 USPQ2d 1041 (Fed. Cir. 2018) [precedential].


Opposers asserted that ZERO is either generic for, or merely descriptive of, applicant's beverage products, and therefore that ZERO must be  disclaimed in the applied-for marks (including, for example, COCA-COLA ZERO).

Genericness: The court ruled that the Board "asked the wrong question" in determining the genericness of ZERO: "it failed to consider that 'a term can be generic for a genus of goods or services if the relevant public . . . understands the term to refer to a key aspect of that genus.'" In re Cordua Rests., Inc., 823 F.3d 594, 603 (Fed. Cir. 2016) (emphasis added). In Cordua, the CAFC also pointed out that "the test is not whether the relevant public would itself use the term to describe the genus but also whether the relevant public would understand the term to be generic." Id. at 602 (alteration in original) (quoting In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1364 (Fed. Cir. 2009)). Moreover, "a term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole." Id. at 605 (emphasis added).

In In re Cordua, we found that the term “churrasco” was generic, even for use in connection with a broad class of restaurant services, because the key public would understand the term to be referring to a specialty dish—a sub-aspect of restaurant services. Id. at 604. We made clear that “[t]here is no logical reason to treat differently a term that is generic of a category or class of products where some but not all of the goods identified in an application fall within that category.” Id. at 605 (quoting In re Analog Devices, Inc., 1988 WL 252496, at *3 (T.T.A.B. Mar. 21, 1988)). We pointed out, for instance, that the term “pizzeria” would be generic for restaurant services, even though the public does not understand the term to refer to the broad class of restaurants as a whole; the public need only understand that the term refers to “a particular sub-group or type of restaurant rather than to all restaurants.” Id.

The court explained that if the public understands ZERO, when used with a designated beverage name, refers to a sub-group or type of beverage that carries specific characteristics, then the term is generic. The Board "failed to consider whether consumers would consider the term ZERO to be generic for a subcategory of the claimed genus of beverages - i.e., the subcategory of the claimed beverages encompassing the specialty beverage categories of drinks with few or no calories of few or no carbohydrates."

The court instructed the Board to consider, on remand, whether ZERO is generic because it "refers to at key aspect of at least a sub-group or type of the claimed beverage goods."

Descriptiveness: The Board also erred by determining the issue of acquired distinctiveness without first properly determining the extent of opposers' burden of proof. Opposers asserted that ZERO was so highly descriptive that "the Board's assessment of [applicant's] evidence must be exacting."

The CAFC has long held that an applicant's burden of showing acquired distinctiveness increases with the level of descriptiveness. Steelbuilding.com, 415 F.3d at 1300; see also In re Boston Beer Co., 198 F.3d 1370, 1373 (Fed. Cir. 1999). The Board, however, did not make any finding as to the degree of descriptiveness of ZERO and thus did not view the evidence "through an exacting lens."

On remand, the Board "must make an express finding regarding the degree of the mark's (sic) descriptiveness on the scale ranging from generic to merely descriptive, and it must explain how its assessment of the evidentiary record reflects that finding."

Evidentiary Issues:  The CAFC noted several concerns with the treatment of the relevant evidence. First, opposers were not required, despite the Board's intimations otherwise, to provide direct evidence of consumer perception to support their genericness claim. Evidence regarding genericness may be obtained from any competent source, including consumer surveys, dictionaries, newspapers and other publications. Survey and/or dictionary evidence is not required.

Second, the Board's was wrong in its position that the ubiquity of applicant's ZERO product and its massive sales figures helped to outweigh opposers' evidence of genericness. Generic terms "cannot be rescued by proof of distinctiveness or secondary meaning no matter how voluminous the proffered evidence may be." Northland Aluminum, 777 F.2d at 1558 (alteration in original) (quoting  Examiner); see also Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 847–48 (CCPA 1961). This type of evidence may be relevant to the issue of acquired distinctiveness, but not to genericness.

Finally, the Board also noted that applicant's survey evidence was of questionable probative value, since the survey was conducted more than five years before the testimony periods in these proceedings and thus could not reflect contemporary public perception, particularly in light of the evidence of third-party use in the intervening years.

Conclusion: "Because the Board applied the incorrect legal standard in assessing whether TCCC’s ZERO marks (sic) are generic, and did not adequately consider Royal Crown’s evidence with respect thereto, we vacate the Board’s dismissal of Royal Crown’s oppositions on that ground. We also vacate the Board’s acquired distinctiveness determination to allow it, in the first instance, to assess the nature of TCCC’s burden on that point and to explain how the evidence presented meets that precise burden."

Read comments and post your comment here.

TTABlog comment:  Don't recall seeing the terms "key public" and "exacting lens" before. Also, the case concerned the term ZERO by itself, not whether the entire marks are generic or lack acquired distinctiveness.

Text Copyright John L. Welch 2018.

posted by John L. Welch @ 6/21/2018   2 comments

Wednesday, June 20, 2018

TTAB Test: Are Collectible Toy Figures Related to Plush Toys For Purposes of Section 2(d)?

The USPTO refused registration of the mark PINT SIZE HEROES in standard character and Stylized form for "Collectable toy figures," finding confusion likely with the registered mark PINT SIZE PRODUCTIONS & Design for “plush toys; stuffed and plush toys; stuffed toy animals" [PRODUCTIONS disclaimed]. On appeal, applicant argued that it was not seeking to register its mark for plush or stuffed animals, that registrant's customers are shopping for baby board books that are accompanied by stuffed toys, and that the marks are different because applicant's mark is "ironic" while the cited mark is literal. How do you think this came out? In re Funko, LLC, Serial Nos. 87171233 and 87171228 (March 15, 2018) [not precedential] (Opinion by Judge David K. Heasley).


The Goods: As to applicant's assertion that it is not seeking registration of its mark for plush toys, the Board observed that "the identifications are not mutually exclusive, as collectable toy figures can consist of stuffed and/or plush toys." Applicant itself sells plush toys that are collectable toy figures and so the good in the identifications can overlap. Applicant also argued that registrant's customers are shopping for baby books sold with accompanying stuffed toys, but the Board must consider the goods as described in the application and cited registration, without extrinsic evidence of actual use.



Examining Attorney Katerina D. Satanovsky submitted a raft of evidence to show the relatedness of the goods, including Internet web pages and some 40 use-based third-party registrations covering the types of goods at issue. The Board found these registrations to be "persuasive evidence that the identified goods are of a type that may emanate from a single source under a single mark."

Thus the second du Pont factor weighed in favor of a finding of likely confusion.

Channels of Trade: The evidence showed that toy figures and stuffed toys are offered for sale in the same channels of trade - retail toy stores like Buy Buy Baby and Disney Store - to the same classes of consumers.

The Marks: As to the standard character mark PINT SIZE HEROES, applicant contended that its mark "immediately communicates irony, especially when used in connection with collectable super-her figures. In contrast, PINT SIZE PRODUCTIONS is literal: the goods feature and are for babies and toddlers." The Board, however, found the marks to be "more similar than dissimilar, in important respects."

The first two words in the marks are the same, and the prominence of PINT SIZE is enhanced by its placement at the beginning of both marks. The pronunciation and meaning of PINT SIZE would be the same in both marks. Moreover, the marks have the same structure, with the dominant component PINT SIZE followed by a single word. "Applicant's attempt to distinguish its mark's 'ironic' commercial impression is unavailing, for if the dominant portion of both marks is the same, then the marks may be confusingly similar notwithstanding peripheral differences." Given the related nature of the goods, the applied-for mark could be taken by consumers as another line of goods produced by PINT SIZE PRODUCTIONS.

As to its stylized mark, applicant contended that the marks differ in appearance, emphasis, and pronunciation. It claimed that HEROES is the dominant part of its mark, since it is twice the size of PINT SIZE, and the letter "H" is the leftmost portion of the mark and will be the first read. The cited mark, on the other hand, emphasizes PINT SIZE. Moreover, the registered mark is in pastel colors with a child-like handwriting style. "Funko's brand is built on striking pop-culture graphics, and PSP's is built on soft, warm, cuddly graphics."

The Board, however, agreed with the examining attorney that the verbal similarity between the marks outweighs their dissimilarity in design. The "verbal portion" of a word + design mark will likely appear alone in text and will be spoken when consumers ask for the goods. Of course, applicant's mark (with no color claim) could be used in colors similar to those of the registered mark.

Applicant's suggestion that HEROES would be the first word read in its mark was belied by its own application and its appeal brief, which refer to the mark as consisting of "the stylized text "PINT SIZE HEROES.'" The smaller sized text used for PINT SIZE serves to "reinforce the connotation and commercial impression that the toy figures are PINT SIZE - i.e., very small." Therefore the term PINT SIZE is likely to make a greater impression upon consumers.

Conclusion: Finding that confusion is likely, the Board affirmed the Section 2(d) refusals.


Read comments and post your comment here.

TTABlog comment: What do you think?

Text Copyright John L. Welch 2018.

posted by John L. Welch @ 6/20/2018   1 comments

Tuesday, June 19, 2018

TTAB Test: Is "FOUNDIT THEFT RECOVERY" Confusable With "IFI I FOUND IT" for GPS Tracking Devices?

The USPTO refused registration of the mark FOUNDIT THEFT RECOVERY for "GPS tracking devices, namely, personal asset tracker, personal tracker, vehicle tracker" (THEFT RECOVERY disclaimed), finding it likely to cause confusion with the registered mark IFI I FOUND IT (in stylized form with design) for "electronic devices for locating and tracking lost articles using radio frequency, global positioning systems, and/or cellular communication networks." The Board found that applicant’s goods are broad enough to encompass the cited goods, making the goods legally identical in-part. But what about the marks? How do you think this came out? In re Spy Tec International Inc., Serial No. 87543668 (June 13, 2018) [not precedential] (Opinion by Judge Francie R. Gorowitz).


We know that when the involved goods are identical (in-part) a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Moreover, "when a mark contains both words and designs, the verbal portion of the mark is normally more likely to indicate the origin of the goods to which it is affixed because it is the portion of the mark that consumers would use to refer to or request the goods."

The Board found the dominant part of the cited mark to be the literal phrase I FOUND IT. The dominant part of applicant’s mark is the term FOUNDIT since it is both the first part of the mark and the only element that is not disclaimed. "The first part of a mark is frequently the most dominant portion thereof."


Applicant argued that “the word ‘found’ in relation to Registrant’s electronic devices for locating lost articles is not very distinctive.” The Board acknowledged that the word, “found” may be weak in connection with registrant’s goods, but it pointed out once again that “even suggestive or weak marks are entitled to protection from the use of a very similar mark for legally identical
[goods].”

Viewing the marks in their entireties with the non-dominant features appropriately discounted, we find the Cited Mark and the mark FOUNDIT THEFT RECOVERY are similar in meaning and sound and that the similarities in the marks outweigh any dissimilarities. Similarity as to one element (e.g., sight, sound, or meaning) has been held sufficient to support a finding of confusing similarity. Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910, 1914 (TTAB 2000) (“It is not necessary that marks be similar in all three of the elements of sight, sound, and meaning to support a finding of likelihood of confusion.”).

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

Read comments and post your comment here.

TTABlog comment: Well, how did you do?

Text Copyright John L. Welch 2018.

posted by John L. Welch @ 6/19/2018   0 comments

Monday, June 18, 2018

TTAB Sustains Opposition to SCOTTSDALE TAXI: Geographically Descriptive and Lacks Acquired Distinctiveness

The Board sustained an opposition to registration of the mark SCOTTSDALE TAXI for "taxi transport" services [TAXI disclaimed], finding the mark to be "highly geographically descriptive" and lacking in acquired distinctiveness. Despite applicant's use of the alleged mark since 1994, its evidence of advertising and extent of use was inadequate and it failed to prove substantially exclusive use. Zero Transportation, LLC v. Scottsdale Taxi Sedan Service Co., Opposition No. 91218718 (June 14, 2018) [not precedential] (Opinion by Judge David Mermelstein).


Geographical Descriptiveness: In order to overcome the USPTO's refusal to register under Section 2(e)(2), applicant claimed acquired distinctiveness under Section 2(f), based solely on five years of consecutive and substantially exclusive use. Applicant thus conceded that its mark is primarily geographically descriptive and not inherently distinctive.

The Board found it readily apparent that Scottsdale, Arizona "is the name of a place known generally to the public." Applicant's customers would immediately make a goods/place association, because the customers and Applicant are located there, and because the services are provided there. The inclusion of the word TAXI "will not obviate a refusal under Trademark Act § 2(e)(2) if the mark as a whole retains its primarily geographic significance."

The Board concluded that the applied-for mark "is highly geographically descriptive, and that Applicant bears a commensurately high burden to prove that it has acquired distinctiveness."

Acquired Distinctiveness: Although applicant has used the term SCOTTSDALE TAXI since 1994, its evidence regarding the nature and extent of use was meager. Applicant established that it listed its business in telephone directories prior to 2008 but it failed to provide any other evidence of promotion of the term. After 2008, applicant established a website and created social media pages, but applicant provided no evidence as to how many potential customers were exposed to these efforts. Advertising expenditures were a paltry $3000 per year. Not enough, said the Board.

Moreover, opposer's evidence showed that others used the term "Scottsdale taxi" in advertising their taxi transport services. The Board concluded that applicant's use of the applied-for mark was not substantially exclusive, and that relevant consumers are not likely to view the term as a source indicator.

Applicant contended that opposer's use of the term was causing actual confusion, but the Board deemed such confusion irrelevant, observing that by choosing a highly descriptive phrase applicant ran the risk that confusion would result when competitors legitimately used the phrase to describe their own businesses. See, e.g., KP Permanent Make-Up Inc. v. Lasting Impression I Inc., 543 U.S. 111, 72 USPQ2d 1933, 1938 (2004).

Equitable Defense: Applicant argued that opposer's business behavior constituted unclean hands, but the Board declined to apply that defense (regardless of applicant's allegations) because the public interest is not served by allowing registration of primarily geographically descriptive terms.

Conclusion: The Board found that applicant failed to meet its burden to demonstrate that SCOTTSDALE TAXI has acquired distinctiveness for its services, and so the opposition was sustained.

Read comments and post your comment here.

TTABlog comment: Applicant improperly use the R-in-circle symbol in a cease-and-desist letter to opposer, but the Board found that to be an honest mistake that caused no harm to opposer.

Text Copyright John L. Welch 2018.

posted by John L. Welch @ 6/18/2018   0 comments

Friday, June 15, 2018

Finding Beer and Wine Related, TTAB Affirms Section 2(d) Refusals of DEAD BIRD BREWING COMPANY and Dead Bird Design for Beer

The Board affirmed Section 2(d) refusals to register the mark DEAD BIRD BREWING COMPANY (standard characters) [BREWING COMPANY disclaimed] and the design mark shown below, for beer, in view of the registered mark DEADBIRD for wines. Applicant submitted evidence of several dozen registrations and uses of mark for beer owned by one entity and for wine by a different entity, but the Board was unmoved. In re Dead Bird Brewing, LLC, Serial Nos. 87140389 and 87140417 (June 13, 2018) ]not precedential] (Opinion by Judge Thomas W. Wellington).


The Marks: Not surprisingly, the Board found the words DEAD BIRD to be the dominant portion of applicant's mark DEAD BIRD BREWING COMPANY, since BREWING COMPANY is disclaimed and since DEAD BIRD is located as the first part of the mark. The word marks at issue both connote a "dead bird," and the term has no significance in connection with beer or wine. In sum, the marks are "extremely similar." Consumers may believe that the added term BREWING COMPANY "is simply being used in connection with a variant mark to designate Registrant's attempt at brewing beer, a concept that would be plausible in the minds of the relevant consumers."

As to applicant's design mark, it is the pictorial equivalent of the words "dead bird." Under the doctrine of legal equivalents, a pictorial depiction and equivalent wording are likely to make the same mental impression on purchasers. Applicant described the mark as an "upside down dead bird." Consumers are likely to use the words "the dead bird design (or mark or logo)" when describing applicant's mark, and are likely to ask for "dead bird beer" when ordering the product. The Board therefore found the similarity between this mark and the cited mark to be "very strong."

The Goods: In demonstrating the relatedness of beer and wine, Examining Attorney Amy E. Thomas relied on 24 use-based registrations covering both, on websites showing beer and wine featured in festivals, on websites showing beer and wind made and offered by a single entity under the same mark, and on websites advertising retail establishments that feature beer and wine.

Applicant acknowledged that the Board has often found beer and wine to be related for purposes of its likelihood of confusion analysis. However, applicant argued that the record here demonstrates that the goods are not related. It relied primarily on the contention that the same, or very similar, mark is used or registered by one entity for beer and by a different entity for wine (including some 60 pairs of registered marks and approximately 30 websites).

Applicant asserted that its evidence showed that the USPTO has treated inconsistently the beer-versus-wine issue, that consumers are accustomed to seeing the same mark used to indicate different sources of beer and wine, and that beer and wine makers do not view their products as creating potential trademark conflicts.

The Board found that applicant's pairs of existing registration have some probative value in that they "may reflect the views of coexisting registration owners." As to the USPTO's inconsistency, the Board again acknowledged that consistency is desirable, but nonetheless "prior decision and actions of other examining attorneys in registering other marks or approving marks for registration have little evidentiary value and are not binding on the Board." The Board's own case law suggests that the relatedness of beer and wine typically has resulted in a finding of likely confusion.

The Examining Attorney's evidence showed that there are a significant number of examples of third-party use of a single mark by the same entity for beer and wine, including several businesses that call themselves "winery and brewery." Third-party registration evidence helps corroborate that beer and wine are the type of goods that may emanate from a common source under the same mark. The evidence also showed that beer and wine may be sold together to the same consumers, including at stores, restaurants, and festivals.

We have considered the entire record and, to be clear, our determination regarding the relatedness of the involved goods is not based upon who has submitted the most third-party registrations or examples of use to support their arguments. Rather, our determination is based on finding that the respective goods are "related in some manner and/or the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the respective goods] emanate from the same source."

Consumers may be aware of coexisting marks, but that does not mean that they may not also be aware of the same mark being used in connection with beer and wine by the same entity.

Conclusion: The Board affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: Compare the PIRATE PISS case of a few days ago [TTABlogged here], where an opposer failed to prove the relatedness of beer and wine.

Text Copyright John L. Welch 2018.

posted by John L. Welch @ 6/15/2018   5 comments

Thursday, June 14, 2018

TTAB Test: Is GAVIOTA for Faucets Confusable With SEAGULL for Water Purification Units?

The USPTO refused registration of the mark GAVIOTA, in standard character form, for “Luxury bathroom faucets; Water control valves for bathroom faucets; Plumbing fittings, namely, spouts for bathroom fixtures; Tub Spouts; Shower Heads; Handles for shower faucets; Plumbing fittings, namely, [and] shower control valves,” on the ground of likely confusion with the registered mark SEAGULL for "water purification units and parts thereof." The Examining Attorney maintained that "gaviota" is Spanish for "seagull." Applicant argued that the goods are unrelated and that consumers would understand its mark as referring to the southern California beach town of Gaviota and to the famous Gaviota State Park. How do you think this appeal came out? In re California Faucets, Inc., Serial No. 87029512 (June 11, 2018) [not precedential] (Opinion by Judge Thomas Shaw). [Corrected opinion issued June 20, 2018].


The Goods: Examining Attorney Louis Kolodner introduced third-party registrations and website pages to show that the involved goods are offered under the same mark. Additional evidence showed that water purification units (including Registrant's) include faucets and shower heads. Applicant pointed to the limitation of its goods to bathroom fixtures, but the Board was unmoved: registrant's goods are not limited to "producing water in a kitchen," as applicant asserted. The Board therefore found the goods to be related.

There were no limitations in the application or registration as to price of the goods, channels of trade, or classes of consumers. Both applicant's and registrant's goods are sold online and at similar price points, suggesting that the channels of trade and classes of purchasers are similar.


The Marks: Applicant's mark GAVIOTA means "seagull" in English. The record showed that Spanish is the most common foreign language spoken in the United States. Therefore the doctrine of foreign equivalents applied.

Applicant contended that the doctrine does not apply because GAVIOTA has another meaning: "the word 'GAVIOTA' predominantly refers to the southern California beach town of Gaviota, California, and the famous Gaviota State Park, as well as other tourist attractions in the Gaviota area." However, the evidence did not demonstrate that the Gaviota region or the town is well known outside of Southern California. Moreover, the record indicated that "Gaviota State Park takes its name from the Spanish word for seagull, given to the area by soldiers of the Portola Expedition who supposedly killed a seagull while camping here in 1769."

Applicant’s evidence does not establish that the alternate geographic meaning would be understood by the relevant purchasing public. Rather, given the large number of Spanish speakers in the United States and the fact that consumers who know of the Gaviota region also might know that it derives its name from the Spanish word for “seagull,” we find it likely that these Spanish speakers would “stop and translate” GAVIOTA into its English equivalent, SEAGULL.

The Board acknowledged that the application of the doctrine of foreign equivalents is only part of the analysis, since the similarity in connotation "must be weighed against the dissimilarity in appearance, sound, and all other factors, before reaching a conclusion on likelihood of confusion as to source." Noting that "seagull" is a direct translation of "gaviota," and that SEAGULL is arbitrary for the involved goods and thus a conceptually strong mark, the Board concluded that these factors outweighed the dissimilarities in appearance and sound.

Consumer sophistication: As stated above, there were no limitations in the involved application and cited registration as to classes of purchasers, and so the Board must consider all normal classes of consumers. The involved goods are sold online and therefore purchasers may include consumers who are not design or construction professionals. The Board must make its decision in light of the "least sophisticated potential purchasers, which may be ordinary consumers exercising only an ordinary degree of care." Moreover, even careful or sophisticated consumers are not immune to source confusion when similar marks are used for related goods.

Conclusion: The Board found confusion likely, and so it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: The Board also affirmed the requirement that applicant submit an English translation of its mark, which applicant failed to do. See Rule 2.32(a)(9).

Text Copyright John L. Welch 2018.

posted by John L. Welch @ 6/14/2018   3 comments

Wednesday, June 13, 2018

Precedential No. 21: TTAB Extends Safer Requirements to Internet Evidence Submitted by Applicants

In yet another decision involving the admissibility of Internet evidence, the Board made clear that its recent ruling in In re Mueller Sports Medicine [TTABlogged here] extends to trademark applicants as well as examining attorneys. In Mueller, the Board held that Internet evidence submitted by an examining attorney that did not include the date of access and the pertinent URL was objectionable. Here, the evidence at issue was submitted by the applicant. However, since this applicant's faulty submission occurred prior to issuance of the Mueller decision, the Board decided to consider the evidence. Nonetheless, the Board affirmed Section 2(d) refusals of the mark INDIGO in standard character form and in the design forms shown below [AR disclaimed] for "optical lenses, namely, corrective lenses sold through eye care professionals," in view of the registered mark INDIGO for "ski glasses, ski goggles, goggles for sports, protective sport helmets; sunglasses, bags specifically adapted for protective helmets.” In re I-Coat Company, LLC, 126 USPQ2d 1730 (TTAB 2018) [precedential] (Opinion by Judge Peter W. Cataldo).



Internet evidence: In the past, the Board preferred, but did not require, that a webpage submitted by an applicant "be identified by the full address (url) for the web page, and the date it was downloaded, either by the information printed on the web page itself, or by providing this information in an Office action or an applicant's response." TBMP Section 1208.03; see also In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 n.6 (TTAB 2010). [The Board noted that the better practice is to print or otherwise display the URL and access date on the documents themselves. Alternatively, the URL and access date may be provided by declaration].

Website evidence submitted without the URL and access date "lacks authenticity and cannot be readily verified by the non-offering party." In In re Mueller Sports Medicine, Inc., 126 USPQ2d 1584, 1587 (TTAB 2018), the Board ruled that "to properly make such website evidence of record, a trademark examining attorney must include the URL and the date when the material was accessed, and . . . if an examining attorney fails to do so, and the applicant objects, the material will not be considered. According to the Board, it there "stated [its] intention" to hold applicants to the same standard. [In Mueller, the Board did not merely state its intention to extend the Safer requirements to applicants. It said: "we further extend these requirements to both examining attorneys and applicants in ex parte proceedings." - ed.].

In accordance with our decision in Mueller Sports Medicine, we will no longer consider Internet evidence filed by an applicant in an ex parte proceeding to be properly of record unless the URL and access or print date has been identified, either directly on the webpage itself, or by providing this information in a response, except where the examining attorney does not object.

Here, because applicant submitted its evidence during prosecution of the subject applications (with its request for reconsideration), prior to the Mueller decision, the Board chose to consider the website evidence submitted by Applicant .

Likelihood of confusion: The Board's Section 2(d) analysis was straightforward. Applicant I-Coat, in an effort to show the weakness of the word "INDIGO," submitted three third-party registrations and Internet evidence from three websites. The Board again recognized that, in determining the degree of weakness of the shared terms, it must “adequately account for the apparent force of [third-party use and registration] evidence,” regardless of whether “specifics” pertaining to the extent and impact of such use have been proven. Juice Generation, Inc. v. GS Enters. LLC, 115 USPQ2d 1671, 1674-5 (Fed. Cir. 2015). “[E]xtensive evidence of third-party use and registrations is ‘powerful on its face,’ even where the specific extent and impact of the usage has not been established.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (2016) (citing Juice Generation v. GS Enters., 115 USPQ2d at 1674).

As to the three websites, the Board found that this evidence fell "well short of the volume of evidence found convincing in Jack Wolfskin and Juice Generation." The three registrations involved marks (GREAT NORTHWEST INDIGO, INDIGOFERRA, and INDIGO SCHUY) significantly different from the marks at issue. Moreover, only two of the registrations recited goods identified in the cited registration, and none of the marks are as similar to the cited mark INDIGO as are applicant's marks.

In sum the totality of applicant's evidence failed to show that INDIGO is significantly weak in connection with the involved goods.

As to the two word + design marks, the Board found the word INDIGO to be the dominant feature. The evidence established that the disclaimed term "AR" is an acronym for "anti-reflective" and identifies a feature of the goods. In addition, "AR" is displayed in much smaller type than INDIGO. The rectangle-with-folded-corner design does not create a commercial impression separate from the wording but rather serves merely as a frame therefor. Of course, it is settled that the literal portion of a word + design mark will likely be the dominant portion. And so the Board concluded that the differences between the cited mark INDIGO and applicant's word + design marks were outweighed by the similarity in appearance sound and meaning.

Third-party website and registration evidence established that registrant's sunglasses and applicant's optical lenses travel in the same channels of trade. Although applicant's goods are limited to sale "through eye care professionals," there are no limitations in the cited registration. Examining Attorney Jonathan Ryan O'Rourke submitted evidence that both corrective lenses and sunglasses are sold on the same webpages.

Assuming that the purchasers of the involved goods will be more careful purchasers - seeking vision correction and vision enhancement by eye protection - the Board observed once again that even careful, sophisticated consumers are likely to believe that such goods emanate from the same source when sold under identical or similar marks.

Conclusion: The Board found confusion likely and it affirmed the refusals to register.

Read comments and post your comment here.

TTABlog comment: The Board called applicant's evidence of third-party use and registration, "modest." I sometimes use the word "feeble" in such circumstances.

Text Copyright John L. Welch 2018.

posted by John L. Welch @ 6/13/2018   0 comments