TTAB Posts August 2018 Oral Hearing Schedule

The Trademark Trial and Appeal Board (TTAB) has scheduled three (III) oral hearings for the month of August 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.


August 2, 2018 - 2 PM: In re GJ & AM, LLC dba Cookinpellets.com, Serial No. 86858003 [Refusal to register COOKINPELLETS.COM (in standard character form) for "Processed wood fuel in the nature of pellets for use in barbecue grills"(class 4) on the grounds of genericness and, alternatively, mere descriptiveness; refusal for "Downloadable mobile applications for advertising barbecue grill fuels" (class 9) on the grounds of mere descriptiveness and failure to provide a specimen showing use of the mark with the identified mobile applications].

August 8, 2018 - 12 PM: In re Vive Health LLC, Serial No. 87009135 [Section 2(d) refusal of VIVE HEALTH for "On-line retails store services featuring a variety of medical equipment, medical supplies and home health products," in view of the registered mark VIVOHEALTH! (in standard character form) for "retail stores and online retail stores, all featuring health and wellness products ...].

August 15, 2018 - 11 AM: In re ERB Industries, Inc., Serial No. 86826889 [Section 2(d) refusal of COOLERZ for "Bandanas, hat liners, neck bands and headbands," on the ground of likelihood of confusion with the registered mark COOLER for various clothing items, including hats, caps, and berets]. 

Read comments and post your comment here.

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

Text Copyright John L. Welch 2018.

Erik Pelton Reports on the July 26, 2018 TPAC Meeting

Fellow Meet-the-Blogger Erik Pelton once again provides a report (here) on the latest meeting of the Trademark Public Advisory Committee (a/k/a TPAC).  The slides from the meeting are provided at the end of Erik's blog post.

With regard to our favorite tribunal, a/k/a the TTAB, Chief Judge Gerard F. Rogers presented the following information, as summarized by Erik:

• Hiring new judges (currently 22, started Fiscal Year with 24 but two retired).
• The volume of all filings (ex parte appeal, oppositions, cancellations) has increased this Fiscal Year, with Oppositions up 5% and Petitions to Cancel up 7.5%.
• However, the number of cases requiring a decision on the merits is down about 9% this year.
• Total pendency in cases decided thus far this Fiscal Year is down.
• TBMP revision was released.
• Revising standard protective order – still planning on reviewing possibilities in the coming months.

Notably, after receiving public comments, the Board has withdrawn the proposal for a streamlined cancellation procedure for cases of abandonment or nonuse:

• Pilot project underway to identify appropriate cases, and to possibly streamline procedures in those cases.
• So far identified about 20 cases.
• Some are proceeding via ACR mechanisms.
• May propose rulemaking in the future after learning more from these pilot cases.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

“CODE” Confusable With “CODE2040” for Educational Services, Says TTAB

[This is a guest post by Natali De Corso, a rising 2-L at Boston College Law School, and a summer associate at Wolf, Greenfield & Sacks, P.C.]. The Board affirmed a Section 2(d) refusal of the mark CODE, finding a likelihood of confusion with the registered mark CODE2040, both for education services in the field of technology, business and entrepreneurship. The Board declined to address the Examining Attorney’s 2(e)(1) refusal of the applied-for mark. In re Vox Media, Inc., Serial No. 87099703 (July 18, 2018) [not precedential] (Opinion by Judge Frances Wolfson).

The Services, Trade Channels, and Consumers: Applicant’s mark CODE is for “educational services, namely, arranging, organizing, and conducting educational events, conferences, seminars, and symposia” in various fields. The cited registration is for “educational services, namely, providing internships and apprenticeships in the fields of engineering and technology . . . [and] providing workshops, classes, and retreats” in various fields.

The Board concluded that the involved services were legally identical in part because each party “provide[d] education in various formats in the fields of technology, business and entrepreneurship.” Applicant Vox argued that services were not in the same market because Registrant provides “internships/apprenticeships and workshops primarily relating to job placement and careers,” while Applicant provides “conferences relating to media and technology.” The Board, however, responded that an applicant “may not restrict the scope of the services covered in the cited registration by argument or extrinsic evidence.” Rather, the Board must focus on the services as identified in the application and recited in the registration.

The Board then turned to respective trade channels, explaining that because “the services in the application and cited registrations are legally identical in part, we must presume that the channels of trade and classes of purchasers are the same.” The Board therefore concluded that the second and third du Pont factors regarding the services, and the channels of trade and classes of purchasers, favor a finding of likelihood of confusion.

The Marks: The Board pointed out once again that, because the services are in-part identical, “the degree of similarity between the marks necessary to find likelihood of confusion need not be as great as where there is recognizable disparity between the services.” The Board found the term “code” to be the dominant feature of Registrant’s mark and, as the first portion of the mark, more likely than “2040” to be remembered by a consumer. “2040” primarily serves the purpose of identifying a particular date referred to on Registrant’s website as “the start of the decade when the US will be majority people of color.”

Next, the Board found it notable that the term “CODE” comprised the entirety of Applicant’s mark. This was significant because “the likelihood of confusion has frequently been found where one mark incorporates the entirety of another mark.”

Lastly, because Registrant’s mark included a date (2040) and Applicant’s specimen of use displayed dates in connection with its mark (e.g., CODE COMMERCE SERIES: OCT 2016), “consumers, upon encountering Applicant’s mark CODE, are likely to recollect Registrant’s CODE2040 mark and mistakenly believe Applicant’s and Registrant’s educational services emanate from a single source.” The Board concluded that the first du Pont factor favored a finding of likelihood of confusion.

Third-Party Registrations: The Board disagreed with Applicant’s argument that Registrant’s mark was entitled to a narrow scope of protection because of nine third-party registrations for marks containing the term CODE for educational services. The Board explained that Applicant failed to offer evidence of use in connection with the third-party registrations and that its total of nine third-party registrations was neither “voluminous” nor “extensive.” Additionally, the third-party registrations contained additional words or designs that rendered them distinct from the cited mark. The Board therefore concluded that Applicant failed to prove that “CODE2040” is weak.

Sophistication of Purchasers: The Board also rejected Applicant’s argument that the relevant consumers are “sophisticated and knowledgeable.” Applicant failed to provide evidence of such sophistication or knowledge. Furthermore, the Board explained, it must base its decision “on the least sophisticated potential purchasers” at issue, and consumers for education services may include first-time students with no special knowledge or heightened care. The Board concluded that this was a neutral du Pont factor.

Actual Confusion: The Board explained that any lack of evidence of actual confusion between Applicant and Registrant’s marks (which had both been in use for over four years) “carrie[d] little weight in an ex parte context.” Additionally, the Board was mindful that the test under Section 2(d) is not actual confusion, but rather likelihood of confusion. The Board concluded that this was a neutral du Pont factor as well.

Balancing the relevant du Pont factors, the Board found confusion likely, and it affirmed the Section 2(d) refusal, finding it unnecessary to address the refusal to register the mark under Section 2(e)(1).

Read comments and post your comment here.

TTABlog comment: I wonder why the Board did not address the 2(e)(1) refusal, for the sake of completeness in case of appeal.

Text Copyright John L. Welch 2018.

TTAB Test: Is "TAMAL TAMAYO" for Tamales Confusable with "TAMAYO" for Restaurant Services?

The USPTO refused registration of the mark TAMAL TAMAYO in the design form shown below, for "tamales," finding the mark likely to cause confusion with the registered (Supplemental Registration) mark TAMAYO for "restaurant services." On appeal, the USPTO and applicant agreed that TAMAYO is primarily merely a surname, and applicant argued that a mark registered on the Supplemental Register is weak and is entitled to only a narrow scope of protection. How do you think this came out? In re Productos Verdes Valle, S.A. de C.V., Serial No. 87110668 (July 25, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Supplemental Registration: The Board observed that most marks on the Supplemental Register reside there because they are descriptive, and "the weaker the mark on the fanciful to generic continuum, the less its ability to preclude registration of a similar mark under Section 2(d)." But there is no categorical rule that the USPTO may cite a Supplemental Registration only when the marks are substantially identical for substantially similar goods, or that a different test for likelihood of confusion should be applied. Nonetheless, the cited mark must be considered not inherently distinctive.

The Marks: The Board found TOMAYO to be the dominant portion of applicant's mark, since it is the larger word in the mark and since the English translation of "tamal" is "tamale." Therefore, TAMAL deserves little weight in the Section 2(d) analysis. Because TOMAYO is a surname, the source of applicant's goods would be perceived as a person with the surname TOMAYO. The English translation of "tamal" is "tamale." Consumers will perceive Registrant's TAMAYO as a shortened version of TAMAL TOMAYO, referring to the same person. And so the Board concluded that the marks are similar in appearance, sound, connotation, and commercial impression.

The Goods and Services: To prove likely confusion between marks, a party must show something more than that similar or identical marks are used for food products and restaurant services. Jacobs v. Multifoods Corp., 212 USPQ 641, 642 (CCPA 1982). The Board has found the required "something more" in the following circumstances:

• Applicant's mark made clear that its restaurant specialized in registrant's type of goods (E.g., AZTECA MEXICAN RESTAURANT confusable with AZTECA for tortillas).
• Registrant's wines were sold in applicant's restaurant (OPUS ONE).
• Registrant's mark was very unique and strong (MUCKY DUCK mustard).

The examining attorney submitted excerpts from nine third-party websites using the same marks to identify restaurant services and packaged tamales. A news article described a restaurant that mailed food, including tamales, to remote customers.

The Board found, however,  this evidence insufficient: the USPTO has to show something more than use of the same marks for tamales and restaurants services. Registrant's restaurant name TAMAYO does not indicate at all that Registrant serves tamales. The cited mark is not "very unique" and "strong," and in fact is registered on the Supplemental Register.

And so the Board concluded that the involved goods and services are not similar or related.

Conclusion: Even though the goods and services are sometimes offered in the same channels of trade to some of the same customers, because the registered mark is not inherently distinctive and because the goods and services were not shown to be sufficiently related, the Board reversed the Section 2(d) refusal.

Disclaimer Requirement: The Board, however, affirmed the USPTO's requirement that applicant disclaim the word TAMAL. Applicant claimed that TAMAL TAMAYO is a unitary phrase because consumers will perceive the TAMAL as the first name of the chef appearing in the drawing and thus that TAMAL TAMAYO is in essence a double entendre. The Board was not convinced.

"Tamal" is a generic name for applicant's goods and Spanish is a modern language spoken by some 37.6 million U.S. residents. Thus "tamal" has a definite English translation that ordinary consumers familiar with Spanish will stop and translate. The name "Tamal" is rare in the United States and it is "unlikely that consumers will perceive "Tamal" as being the given name of the character featured in the drawing of the mark." Therefore the applied-for mark does not create a double entendre, and TAMAL must be disclaimed.

Read comments and post your comment here.

TTABlog comment:  If the words TAMAL and TAMAYO were of the same size and typeface in applicant's mark, would its double entendre argument have been better?

Text Copyright John L. Welch 2018.

Precedential No. 25: "I LOVE YOU" Fails to Function as a Trademark for Bracelets AND is Confusable with "I LUV U" for Jewelry, Says TTAB

The Board showed no ♥ for this applicant, affirming a refusal to register the mark I LOVE YOU for bracelets. The Board found the phrase to be merely ornamental and therefore failing to function as a trademark. [It refused to consider the argument, raised for the first time in the examining attorney's brief, that the mark is a widely used informational message that is incapable of functioning as a mark.] To add insult to injury, the Board also affirmed a Section 2(d) refusal on the ground of likelihood of confusion with the registered mark I LUV U  for "jewelry, namely, necklaces, bracelets, rings and charms; pendants; earrings." In re Peace Love World Live, LLC, 127 USPQ2d 1400 (TTAB 2018) [precedential] (Opinion by Judge Marc A. Bergsman).

Applicant's specimen of use
In assessing a failure-to-function refusal, and particularly whether the mark is merely ornamental, the Board may consider whether the mark at issue is a common expression. TMEP Section 1202.03(a). The examining attorney did not request remand in order to make an alternative refusal that the mark fails to function because it is a common expression incapable of indicating source. And so the failure-to-function issue was ornamentality.

Failure to Function: The crucial question, of course, was whether the applied-for mark would be perceived as a source indicator. See In re Keep a Breast. Found., 123 USPQ2d 1869, 1879 (TTAB 2017); In re Hulting, 107 USPQ2d 1175, 1177-1179 (TTAB 2013); In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1686 (TTAB 2013).

Examining Attorney James F. Turner contended that the mark "conveys the common expression of endearment," supporting this assertion with numerous examples of I LOVE YOU, and variations thereof, used on bracelets and other jewelry. See D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1719, 1716 (TTAB 2016) (widespread ornamental use of I ♥ DC may influence how the mark is perceived).


The size, location, dominance and significance of the mark are relevant to the determination. In re Hulting 107 USPQ2d at 1178 (NO MORE RINOS fails to function as a trademark for bumper stickers, clothing, and campaign buttons). Here, the phrase I LOVE YOU is "essentially the bracelet itself." It "conveys a term of endearment comprising the bracelet and, thus, it is ornamental. It does not identify and distinguish the source of the bracelet, especially where there is so much jewelry decorated with the term I LOVE YOU in the marketplace." The ornamental nature of the applied-for mark is corroborated by third-party use on bracelets and other jewelry, such that consumers are accustomed to seeing the phrase on items from other sources.

Lucian Piccard "I LOVE YOU BRACELET"
Applicant contended that I LOVE YOU is the "theme of the product," but that contention merely supported the Board's finding that the words are an aesthetic feature of the goods, and that consumers will perceive the phrase as an important component of the product, rather than as a trademark. See D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d at 1716 (“the display [of the mark] itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term”).

Applicant also maintained that customers recognized the "common distinctive thread" of its products - "love and peace oriented themes having playful and chunky design elements." The Board pointed out, however, that applicant is seeking to register a word mark in standard characters. In any case, the "look of the letters as they appear on the goods in the specimen is a reason I LOVE YOU would be perceived as mere ornamentation ...." Moreover, applicant did not seek to register the subject mark under Section 2(f), and so the Board cannot consider applicant's argument regarding the renown of its business or customer recognition of a common style of its products.

In any case, the Board noted, the evidence appeared to preclude any claim of acquired distinctiveness under Section 2(f) because applicant's use has not been substantially exclusive.

And so the Board affirmed the failure-to-function refusal.

Likelihood of Confusion: Both the subject application and the cited registration include "bracelets," and the Board must assume that these items travel in the same channels of trade to the same classes of customers, namely, ordinary consumers. In re Viterra Inc., 101 USPQ2d 1905, 1908 (Fed. Cir. 2010). Moreover, when the involved goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Arguing that the cited mark is entitled to only a narrow scope of protection, applicant submitted seven third-party registrations for variations of I LOVE YOU for jewelry: I WILL LOVE YOU FOREVER, I LOVE YOU ALWAYS and Design, P.S. I LOVE YOU, THE NEW WAY TO SAY I LOVE YOU, I LOVE YOU EACH DAY OF THE WEEK, MORE THAN 100 WAYS OF SAYING LOVE, AND LUV HER. The Board, however, pointed out again that I LOVE YOU is a commonly used term of endearment displayed on jewelry. Consequently, "consumers are conditioned to look for differences among trademarks consisting of or including I LOVE YOU for jewelry."

Applicant contended that I LOVE YOU has a traditional feel, whereas I LUV YOU "is used as an abbreviation in telecommunications" such as texting and social media entries. The Board was not moved: "Even assuming I LOVE YOU has a traditional feel, the marks still look alike, sound alike, mean the same thing and engender the same commercial impression (i.e., a term of endearment)." The slight differences in spelling do not distinguish the marks.

The Board concluded that the "strong similarity" between the marks weighs in favor of a likelihood of confusion.

Balancing the relevant du Pont factors, the Board found confusion likely, and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: “Love is too weak a word for what I feel - I luuurve you, you know, I loave you, I luff you, two F's, yes.” ― Woody Allen, Annie Hall: Screenplay

Text Copyright John L. Welch 2018.

TTAB Affirms Refusal to Register EARTHBORN REBORN for Pet Food Due to Faulty Specimens of Use

[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 refusal of the mark EARTHBORN REBORN, in standard character form, for “pet food,” under Sections 1 and 45 of the Trademark Act. Applicant submitted two specimens of use, the original shown first below, and the substitute second below. The drawing of the mark was found to not be a substantially exact representation of the mark as depicted in the original specimen, and both specimens failed to show the applied-for mark in use for the identified goods. In re Midwestern Pet Foods, Inc., Serial No. 86702878 (July 18, 2018) [not precedential] (Opinion by Judge Angela Lykos).

(click on picture for larger image)
Substantially Exact Representation: Trademark Rule 2.51(b) requires that the drawing of the mark be a “substantially exact representation of the mark as used on or in connection with the goods and/or services.”

(click on picture for larger image)
The Board found that while applicant’s substitute specimen does display a substantially exact representation of the applied-for mark (see arrow), the original specimen does not. Midwestern argued that because the terms EARTHBORN and REBORN are displayed in a larger font size than the rest of the wording in the specimen, the consumer’s attention is drawn to them, thus presenting a distinct commercial impression. The Board disagreed, finding that the inclusion of design elements and other wording on the recycling bin meant that the aforementioned words could not create a separate commercial impression.

On the original specimen the word immediately after EARTHBORN is not REBORN as depicted in the drawing but is instead the word HOLISTIC. “EARTHBORN HOLISTIC” is displayed inside of a circular design above, not congruent with, the word REBORN. “EARTHBORN HOLISTIC” also appears as the tail end of the phrase LOVE YOUR PET, LOVE YOUR PLANT (sic). Thus, the word EARTHBORN is “entwined” both physically and conceptually with the word HOLISTIC.

Mark Associated With the Goods: Section 1(d)(1) of the Trademark Act requires that the applicant file a “specimen” or facsimile “of the mark as used in commerce.” Since the subject mark was not displayed on pet food itself, the issue here was whether the original or substitute specimen constitutes a display associated with the goods.

Applicant contended that the original specimen, an excerpt from its website, constituted a display associated with its goods. The Board disagreed, finding that the web page does not contain a picture or description of the goods, does not show the applied-for mark in association with the goods, and does not provide a means to order the goods. While the goods were identified as “pet food”, the product displayed on the specimen is a recycling bin.

Applicant also argued that the substitute specimen, an advertising flyer, clearly shows the connection between the mark and pet food, especially when displayed in the same retail stores where its pet food is sold. However, the Board observed that the applied-for mark serves as an identifier for Applicant’s recycling program, not for pet food.

As the Examining Attorney points out in his brief, the substitute specimen shows EARTHBORN HOLISTIC, not EARTHBORN REBORN, as a source indicator for pet food. All the record evidence points to Applicant offering a recycling program service, not pet food, under the applied-for mark. For the foregoing reasons, Applicant’s substitute specimen fails to show the applied-for mark used in connection with the identified goods.

Without further evidence, such as photographs or a more detailed explanation of how the flyer is used in conjunction with the marketing and sale of Applicant’s pet food in retail locations, the Board could not conclude that the flyer is “calculated to induce a sale of pet food.”

And so the board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Did you immediately notice the mark in the pictures above?

Text Copyright John L. Welch 2018.

USPTO Seeks Candidates for Administrative Trademark Judge at the TTAB

The USPTO is seeking applications for the position of Administrative Trademark Judge at the Trademark Trial and Appeal Board. The announcement is open until August 23, 2018. Further details may be found at the USA Jobs website, here.

Responsibilities:

The judges of the Trademark Trial and Appeal Board (TTAB) are responsible for hearing and deciding adversary proceedings involving oppositions to applications, petitions to cancel registrations, and concurrent use proceedings; and for hearing and deciding appeals from final refusals by trademark examiners to allow the registration of trademarks. Each appeal and adversary proceeding shall be heard and decided by at least three judges of the TTAB.

Judges of the TTAB:

- Exercise original jurisdiction in inter partes proceedings in the Patent and Trademark Office arising under the Federal trademark registration statutes; for example, opposition to an application for registration, consideration of applications to register as lawful concurrent users, and petitions to cancel registrations. In these inter partes proceedings, judges serve in a capacity similar to that of a trial judge and work in conjunction with TTAB attorneys conducting interlocutory proceedings, for determining interlocutory motions, and for issuing final decisions on the merits of cases, after briefing and, in some instances, oral arguments of adverse parties.

- Exercise appellate jurisdiction in adjudicating ex parte appeals from refusal of the examiner of trademarks to register a trademark. Such appeals are decided on records created during examination and on the briefs and, if requested by the applicant, oral arguments.

- Evaluate the evidence, arguments, and citations to authority, presented in the foregoing contested trademark cases and appeals, and render written decisions which explain the reasoning and conclusion of the Patent and Trademark Office. These decisions are rendered in accordance with the conclusions reached in conference by a majority of the judges sitting for each case, as a panel of the Board. A judge may decide to author a dissenting opinion when the judge is not in agreement with the majority opinion.

The proceedings must be conducted with imagination, discernment, and ingenuity for the purpose of detecting any improper practices or attempts to secure unjustified advantages and otherwise to preserve the legal, equitable, and procedural rights of the parties and ensure fair and expeditious conduct of the proceedings and final determination on the merits. The proofs presented by the parties, as well as their briefs and oral arguments, may involve voluminous testimony, documentary and physical exhibits, and other evidentiary material which must be analyzed and appraised in accordance with the established rules of evidence, to ascertain admissibility, weight, sufficiency, and pertinency to the issues. The judges’ findings in these particulars are incorporated into final decisions in accordance with sound legal principles and precepts. The preparation of such decisions requires outstanding skill in analytical techniques and in clear, comprehensive, and effective applications of legal logic, in addition to a thorough knowledge of, and application of, the common law and statutory trademark laws, the rules of evidence, and general principles of related and ancillary legal subjects.

While serving in the capacity of judge, the incumbent must conduct herself/himself with deportment of the highest order to ensure and maintain the dignity of the TTAB. Board judges must command the respect of the practicing attorneys and others with whom they come in contact because of their positions on the TTAB. The decisions of the TTAB are final in the Executive Branch and are subject to review, through appeal, only by the U.S. Court of Appeals for the Federal Circuit or by civil action in a U.S. District Court.

Supervision and Guidance Received:The TTAB judges serve under the general administrative direction of the Chief and Deputy Chief Administrative Trademark Judges, TTAB. All adjudicatory functions are performed without supervisory review, although performed in concert with other assigned judges on each panel.

Travel Required: 

Not required.
.

Finding the JACKSON 5 Trademark Famous, TTAB Tosses Out Siggy's J5 Registration and Application

In a 55-page opinion issued one week after the oral hearing, the Board granted Plaintiff UMG Recordings' petition for cancellation of a registration for the mark J5 for various clothing items, on the grounds of nonuse, abandonment, and likelihood of confusion with the registered mark JACKSON 5 and the common law marks JACKSON 5IVE and J5, for musical sound recordings. The Board also sustained UMG's  opposition to the same J5 mark for various goods in classes 3, 14, 16, 18, 21, and 28, on the ground of likelihood of confusion. UMG Recordings, Inc. v. Siggy Music, Inc., Opposition No. 91200616 and Cancellation No. 92053622  (July 16, 2018)  [not precedential] (Opinion by Judge Marc A. Bergsman).

Plaintiff UMG and Defendant Siggy - whose president is Sigmund "Jackie" Jackson, one of the Jackson Brothers - entered into a settlement agreement in 1980 regarding rights in the JACKSON 5 marks and recordings. The Board found that the agreement "does not provide that the Jackson brothers collectively or individually own or have the right to use the trademark J5 or any other marks."

Nonuse: Defendant Siggy provided no documentary evidence that it sold clothing under the J5 mark prior to the expiration of time for filing its statement of use in the underlying application, and so the Board granted the petition for cancellation on that ground.

Abandonment: Defendant's J5 registration issued in February 2006, but it did not use the mark in commerce until August 2010. This 4.5 year gap establishes a prima facie case of abandonment. In response, Defendant offered "unsubstantiated assertions of vaguely defined efforts to market or license J5 products," and there was no credible evidence of use of the J5 trademark or of a clear intent to resume (or even begin) use during that period. And so the Board upheld the abandonment claim.

Likelihood of Confusion: Because UMG's registration for the mark JACKSON 5 for "musical sound recordings" was of record, priority was not an issue as to those goods. As to the marks JACKSON 5IVE and J5, UMG relied on its common law rights (and had to prove priority in that context, which was not a problem). UMG argued in its briefs that Siggy's products are related to musical sound recordings, and so the Board focused on those goods.

Defendant Siggy conceded that the JACKSON 5 mark is famous, and in fact "is one of the most famous trademarks in connection with recordings in the United States." Plaintiff's evidence also established the fame of that mark, as well as of the JACKSON 5IVE mark. However, the evidence did not show that J5 is famous or commercially strong.

The Board found that Siggy's J5 mark is legally identical to the stylized J5 mark (shown above) used by Plaintiff UMG. The parties agreed that consumers will shorten JACKSON 5 and JACKSON 5IVE to J5. The Board concluded that these mark have the same meaning and engender the same commercial impression.

The Board acknowledged that UMG's musical sound recordings differ from Defendant Siggy's identified goods. However, the test is not whether the goods are likely to be confused but whether confusion is likely as to source or sponsorship. The Board found that "consumers will be confused into mistakenly believe that Defendant's products are somehow sponsored by or associated with Plaintiff."

Siggy Jackson conceded that it is common for record companies to sell merchandise featuring the name of a group. In fact, UMG sold t-shirts bearing the JACKSON 5 mark and board games under the J5 logo. Third-party registration evidence confirmed the relatedness of sound recordings and promotional items such as clothing, cosmetics, and plush toys. Furthermore, the Board observed that the licensing of trademarks for "collateral" products has become a common practice in recent years.

Defendant contended that the lack of evidence of actual confusion requires a finding of no likelihood of confusion, but the Board noted that Siggy has not used its mark on the goods listed in its applications. As to clothing items, only t-shirts have been offered for sale during the 2012-2014 time period. The Board observed that "[i]t is unlikely that consumers are going to register complaints about inexpensive t-shirts from which incidents of confusion might be identified."

The Board concluded that Defendant's mark J5 is likely to cause confusion with UMG's registered mark JACKSON 5 and its common law marks JACKSON 5IVE  and J5 (stylized) for musical sound recordings. And so it granted the petition for cancellation on that additional ground, and it sustained the opposition on that Section 2(d) ground.

Read comments and post your comment here.

TTABlog comment: I wonder what the WONDERBREAD 5 think of all this?

Text Copyright John L. Welch 2018.

"12TH MAN HANDS" for Handmade Soap Confusable With Texas A&M'S "12TH MAN" for Towels, Says TTAB

[This guest post was written by Stephanie Grace Stella, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. In a 36-page opinion, the Board sustained a Section 2(d) opposition to registration of the mark 12TH MAN HANDS, in standard character form, for “handmade loofah soap bar or puck” in view of Texas A&M University’s 12TH MAN-formative marks for a wide variety of goods and services, and particularly in view of its registration for 12TH MAN for towels. The Board found Opposer’s 12TH MAN mark to be “very strong,” the involved marks to be “virtually identical,” and the relevant goods to be complementary in use and to frequently emanate from the same source. Texas A&M University v. Washington Soap Company, Opposition No. 91223136 (July 12, 2018) [not precedential] (opinion by Judge Christopher Larkin).

Background: Texas A&M opposed Applicant’s registration for 12TH MAN HANDS on the grounds of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), and of dilution by blurring under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c). Applicant, appearing pro se, declined to file trial evidence or a brief, and admitted the basic facts regarding the origin of the term 12TH MAN —which was first associated with Texas A&M’s football team in 1922—by failing to deny the pertinent allegations set forth in Opposer’s Notice of Opposition.

Strength of Opposer's Mark: Opposer Texas A&M argued that its 12TH MAN mark is famous and “an extremely strong mark when used on branded merchandise such as towels or soap,” but the Board pointed out that a party that asserts fame must clearly prove it. The evidence established that Opposer’s 12TH MAN mark has been in use to identify Texas A&M and its athletic program for nearly 100 years, and that, since at least as early as 1985, Opposer’s football fans have waved the “12th Man Towel”—hundreds of thousands of which are produced and sold or given away each year—during football games to show support for the team.

The evidence further established that:

The mark has been exposed to wide swaths of the relevant purchasing public for the parties’ goods through multiple means, including television broadcasts of football games at which 12th Man towels have been waived, social media, alumni and fan outreach, and collateral licensing of the mark for use on a wide variety of goods and services, including towels, which has generated many millions of dollars in retail revenues. The record also reflects considerable coverage of the mark in the media, including coverage expressly associating the mark with Opposer. Finally, the record shows that Opposer has aggressively and successfully enforced its rights in the 12TH MAN mark, and there is no evidence of unlicensed third-party uses that might show commercial weakness.

The Board discussed the relevant evidence at length, including Opposer’s infringement suits against the NFL’s Indianapolis Colts and Seattle Seahawks, the former of which was settled when the Colts agreed to drop all use of the 12TH MAN mark, and the latter of which was settled via a licensing agreement, which license was significantly narrowed by Opposer upon its recent renewal. Applicant conceded during discovery that “it intended to associate its claimed 12TH MAN HANDS mark with football and specifically the Seattle Seahawks, Opposer’s licensee of the 12TH MAN mark when Applicant adopted and commenced use of the applied-for mark in 2013.” Applicant’s goods are illustrated below, including in the lower right-hand corner a soap puck bearing the applied-for 12TH MAN HANDS mark and the image of a football:

The Board concluded that Opposer’s mark “is very strong commercially.”

Similarity of the Marks: Applicant’s mark incorporates Texas A&M's mark in its entirety. Applicant conceded in its discovery responses that 12TH MAN is dominant portion of its mark and that the term HANDS merely describes the fact that Applicant’s product is made for washing hands. The Board concluded that, in addition to the marks being similar in appearance and sound, because the source-identifying 12TH MAN portion of Applicant’s mark is identical to Opposer’s mark, the shared term “gives the marks the same connotation and commercial impression.”

Similarity of the Goods: Opposer perceptively argued that “[c]ommon experience suggests that soaps and towels are inherently related products” because “[o]ne generally needs a towel after using soap to wash one’s hands.” The Board perceptively “t[ook] judicial notice under Rule 201(b) of the Federal Rules of Evidence, Fed. R. Evid. 201(b), that hand towels are commonly used to dry the hands after they are washed with soap and water.” Based on Opposer’s extensive evidence of the complementary nature of the goods, including website evidence of hand soap and towel sets, and 26 current use-based, third-party registrations of marks for both various types of “towels” and various types of “soaps,” the Board concluded “that consumers would readily expect handmade loofah soap sold under the mark 12TH MAN HANDS to originate from the same source as towels sold under the mark 12TH MAN.”

Channels of Trade/Classes of Consumers: The Board noted that neither Opposer’s nor Applicant’s identifications contained any restrictions as to trade channels or classes of consumers, and it concluded that “[g]iven the conjoint use of the goods, their classes of customers overlap by definition,” and “the channels of trade for soaps and towels overlap because both goods are offered on the same Internet websites, and … together in the brick-and-mortar world.”

Lack of Actual Confusion: Finally, the Board agreed with Opposer Texas A&M that the admitted absence of actual confusion bore little significance and was thus a neutral du Pont factor because “there is no evidence that Applicant has made any appreciable sales that might engender known instances of actual confusion.”

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely and sustained the opposition. The Board declined to reach Opposer’s dilution claim.

Read comments and post your comment here.

TTABlog comment: Stephanie, a graduate of the University of Florida, would like to add one comment:

Text Copyright 2018.

TTAB Grant MLB's Section 2(d) Petition for Cancellation of Registration for MAJOR LEAGUE ZOMBIE HUNTER & Design for Clothing

The Board granted Major League Baseball's petition for cancellation of a Supplemental Registration for the mark shown first below, for "clothing, namely, short and long sleeve t-shirts, sweatshirts,v jackets, baseball hats, and beanies," finding it likely to cause confusion with the registered mark shown second below, for "shirts." The Board found MLB's mark to be commercially strong and entitled to a broad scope of protection. Major League Baseball Properties, Inc. v. Christopher Webb, Cancellation No. 92060903 (July 18, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Strength of Petitioner' s Marks: Petitioner MLB claimed that its logo mark and the mark MAJOR LEAGUE BASEBALL are famous, but the Board noted that a party that claims fame must  clearly prove it. The evidence established that the MAJOR LEAGUE BASEBALL mark has been in use for 100 years and the logo for 50 years, that the marks are widely licensed, that goods bearing the marks are sold in many national retailers, and that the marks have received extensive, unsolicited media coverage. The Board concluded that the marks are "commercially strong, if not famous."

The Goods: MLB's marks are registered for shirts, which encompass Applicant Webb's t-shirts. Moreover, as to MLB's entertainment services, the Board noted that it is common for "commercial trademarks" to be licensed for collateral products. Since the goods in the application and MLB's registrations overlap, the Board must presume that they travel through the same channels of trade to the same classes of consumers.

The Marks: Since the involved goods are in part identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board focused on MLB's logo mark, since "if the petition cannot be granted on the basis of this registered mark, it could not be granted on the basis of the other pleaded registrations."

The Board found that the overall commercial impressions of the two marks outweigh any specific dissimilarities that might be apparent on a side-by-side comparison.

Under these circumstances, it is not unreasonable to assume that consumers encountering Respondent’s t-shirts displaying a mark which possesses marked similarities in appearance, sound, and commercial impression as Petitioner’s mark would likely mistakenly assume that the t-shirts originate from or are sponsored by the same source. That is, consumers could assume that Petitioner modified its MAJOR LEAGUE BASEBALL mark to play on popular entertainment trends such as movies featuring zombies.

The Board noted that a party's actual use of its mark may be relevant to demonstrate that the mark projects a confusingly similar commercial impression. It observed that Respondent's actual use of its registered mark is "remarkably similar" to MLB's actual use of its mark. "Both feature a central figure with a baseball cap in white against a background that is red to the right of the figure and blue to the left, all of which is surrounded by a band of white. In addition, the wording in both marks begin[s] with MAJOR LEAGUE"

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

Conclusion: Noting that there is "no excuse for even approaching the well-known trademark of a competitor," the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I'm not convinced that confusion is likely between the two logos. MAJOR LEAGUE SOCCER and MAJOR LEAGUE LACROSSE both co-exist with MAJOR LEAGUE BASEBALL, so the words MAJOR LEAGUE ZOMBIE HUNTER should be okay. As to the logos, I think it's a bit of a stretch to find that consumers would think that MLB is associated with the applied-for mark because of the broad-brush similarities in the logos. Dilution would seem a better fit, but MLB apparently couldn't clear the fame hurdle.

Text Copyright John L. Welch 2018.

TTAB Test: Are Fruit-Based Beverages Related to Nutritional Supplements?

The USPTO refused to register the mark KARUNA THE ROOT OF GOOD HEALTH & Design (shown below), for "a fruit infused plant-based drink, namely, filtered water infused with a fruit flavoring and plant-based ingredients,” deeming the mark likely to cause confusion with the registered mark KARUNA for "nutritional supplements." The Board found the marks substantially similar, but what about the goods? How do you think this came out? In re Fulfill Food and Beverages, LLC, Serial No. 76719598 (July 13, 2018) [not precedential] (Opinion by Judge Lorelei Ritchie).

The Marks: The word KARUNA is the dominant portion of applicant's mark, said the Board. Not only is that word in larger font, but as the first part of the mark it is the portion most likely to be impressed upon the consumer's mind and remembered. The phrase THE ROOT OF GOOD HEALTH is suggestive of a function of the goods and would be perceived as a slogan modifying KARUNA. The tree design merely reflects the fact that the goods contain plant-based ingredients. In any case, the literal portion of a mark is generally given greater weight.

The cited mark could be depicted in the same stylization as applicant's mark. The Board concluded that the marks are substantially similar in sight, sound, and commercial impression.

The Goods: Examining Attorney John E. Michos submitted third-party websites advertising fruit-flavored beverages that include or serve as nutritional supplements, as well as third-party registrations covering both nutritional supplements and fruit-flavored beverages. "It is therefore clear that the 'fruit infused plant-based drink, namely, filtered water infused with a fruit flavoring and plant-based ingredients' identified by Applicant can include or perform the same function as the 'nutritional supplements' identified in the cited registration, and are related thereto."

Therefore the Board concluded the involved goods and are likely to travel through the same channels of trade to the same classes of consumers, namely, member of the general public who are seeking products to better their fitness and health.

Purchaser Sophistication: Applicant contended that consumers will exercise care in their purchasing decisions regarding the involved goods, but it provided no supporting evidence. Neither the opposed application nor the cited registration contain any limitations as to classes of consumers. In any event, even sophisticated consumers are not immune from confusion when both the goods and the marks are similar. Moreover, the Section 2(d) determination must be made with the "least sophisticated potential purchaser" in mind.

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

Read comments and post your comment here.

TTABlog comment: If you say that "even sophisticated consumers are not immune from confusion when both the goods and the marks are similar," then what impact could evidence of sophistication have in the Section 2(d) analysis?

Text Copyright John L. Welch 2018.

TTAB Orders Cancellation of KLIQUE CAR CLUB Registration Due to Non-Ownership

The Board granted a petition for cancellation of a registration of the mark KLIQUE CAR CLUB for "club services, namely, promoting the interests of lowrider car enthusiasts," finding that Registrant Jesse Fausto was not the owner of the mark and therefore the registration was void ab initio. The Board wasted no time in ruling in favor of petitioner, since respondent admitted that the name "belongs to the club." Klique E.L.A. Car Club v. Jesse Frausto, Cancellation No. 92063670 (July 16, 2018) [not precedential] (Opinion by Judge Frances Wolfson).

Only the owner of a mark can validly apply for, receive and retain a registration. 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 16:35 (5th ed.). If the entity filing the application was not the owner of the mark as of the filing date, the application is void ab initio. This is a statutory requirement and cannot be waived. Trademark Act §1(a), 15 U.S.C. § 1051(a). See, e.g., Wonderbread 5 v. Gilles, 115 USPQ2d 1296, (TTAB 2015) (cancelling registration less than five years old for mark of a musical band which was issued to one member of the band when the band as a partnership was the owner).

Respondent Frausto claimed that he was authorized by the car club to file the application for registration, but the evidence made clear that the club was the owner of the mark. Frausto testified in his discovery deposition:

Q. Have you assigned the rights under the trademark to anyone in the club? Do you know what I mean by that?
A. As far as the trademark, the trademark name, it belongs to the club.
Q. Is it held in the club’s name or is it held in your personal name?
A. It’s held in my personal name for the simple reasons that I put up the funds to trademark the name. But it's just to secure it for East L.A. and that was it
. . .

Q. Have you made any kind of formal agreement between yourself as an individual and the club regarding the mark?
A. Well, regarding the mark, the club already knows that we have talked about it at this -- I am going to do that once all this is over.
Q. And by “do that,” do you mean make an agreement with them about the mark?
A. Yes.

In addition, seven club members attested that "To the best of my knowledge, Jesse Frausto did not have permission to register a trademark solely in his name for ‘Klique Car Club’. That name belongs to all of the Chapters and all of the members."

The Board found "little question" that Respondent Frausto does not own the KLIQUE CAR CLUB mark, and so it granted the petition for cancellation.

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

Finding GUCCI Marks Exceedingly Famous, TTAB Sustains Opposition to UBERTO GUCCI Marks for E-Cigarettes

The Board sustained two oppositions filed by Gucci America, Inc., finding the marks shown immediately below, for electronic cigarettes, likely to cause confusion with the "exceedingly famous" GUCCI and GUCCI "signature" marks for a wide variety of goods and services, including leather goods, jewelry, and perfume. The opposed marks include the name "Uberto Gucci," great grandson of the founder of the GUCCI brand. Gucci America, Inc. v. UGP, LLC, Oppositions Nos. 91223733 and 91223735 (July 13, 2018) [not precedential] (Opinion by Judge Michael B. Adlin).

The Strength/Fame of Opposer's Marks: Applicant conceded that the GUCCI mark is famous. The Board found that "[i]n fact, GUCCI is a household name." The evidence established that GUCCI is "exceedingly strong, famous, and entitled to a broad scope of protection against confusion." Fame, when proven, plays a dominant role in the du Pont analysis, "independent of the consideration of the relatedness of the goods."

The Marks: Given the fame of the GUCCI and GUCCI "signature" marks (see below), "the Act's tolerance for similarity to those marks is quite low." Here, the degree of similarity between the marks is "quite high." The appearance of the phrase "by Uberto" before GUCCI in applicant's marks is of little significance. "Gucci" is an obvious and famous surname, and Uberto is an obvious Italian-sounding personal name.

Any claim that "By Uberto Gucci" would distinguish the marks was belied by the evidence. Uberto Gucci is related to Guccio Gucci, the founder of the GUCCI brand, and he is a former vice president of the Gucci Parfums Spa. Applicant admitted that the familial connection is public knowledge. It would be natural for consumers to assume that Uberto is still affiliated with the source of other GUCCI products. Moreover, the evidence showed that major fashion brands sometimes introduce "secondary" or "diffusion" product lines by adding a term to a house mark: e.g., Balmain's secondary line "Pierre Balmain."

As to applicant's shield mark, applicant admitted that the design element of this mark was created "with the 'use' of the Gucci family crest." (shown immediately above). The Board found the differences between this mark and the GUCCI word and "signature" marks to be "not particularly significant" in view of the word portion DESIGNED BY UBERTO GUCCI. In any case, the Board found the two crest designs to be similar in appearance: both feature a human figure, flowers, armor, shields, and a helmet or crown.

Finally the Board found applicant's marks to be similar to opposer's registered mark FLORA BY GUCCI. Given the fame of the GUCCI mark, consumers will likely perceive BY UBERTO GUCCI and FLORA BY GUCCI as brand or product extensions.

The Goods/Services: The evidence showed that Opposer "has a proven ability to offer, and a business practice of offering" a wide variety of goods, including cars, bikes, pens, money clips, mobile apps and other products "no more different from the clothes and handbags for which Opposer is perhaps best known than electronic cigarettes."

Therefore, it would not be a stretch, at all, for consumers to believe that Opposer -- which offers goods somewhat similar in kind or manufacturing requirements to electronic cigarettes (including essential oils and pens) -- could offer electronic cigarettes under the GUCCI Marks, given that it has already offered, if not everything under the sun, then at least an atypically wide range of products and services.

Although opposer is a famous "luxury" brand, many of the goods in its registrations (including essential oils, money clips, and pens) are without any limitations in price, type of consumer or otherwise. These relatively inexpensive items could be sold in, for example, convenience stores or drug stores that might also offer electronic cigarettes. The Board noted that its determination must be based upon the "least sophisticated purchasers" for the goods.

Consumers could well assume that BY UBERTO is a new line of GUCCI products. The inputs, know-how, and manufacturing or licensing abilities needed to offer essential oils and pens would not be substantially different from what would be required to offer an electronic cigarette.

In short, given the “known” family connection between Uberto Gucci and the famous Gucci family, Opposer’s history and fame, the nature of the goods and similarity of the marks, we find source confusion likely between, at the very least, Applicant’s mark UBERTO BY GUCCI for electronic cigarettes, and Opposer’s marks FLORA BY GUCCI for “essential oils for personal use” and “perfumes” (Reg. No. 3627729) and GUCCI for pens and moneyclips (Reg. Nos. 1093769 and 1200991).

Moreover, opposer's evidence showed that electronic cigarettes are sometimes marketed as luxury items or to style-conscious consumers, further supporting opposer's likelihood of confusion claim.

Conclusion: The Board found confusion likely, and so it sustained the oppositions.

Read comments and post your comment here.

TTABlog comment: I don't think the crests are similar, do you?

Text Copyright John L. Welch 2018.

Precedential No. 24: Finding Good Cause (Puerto Rico Hurricane), TTAB Extends Discovery Period to Allow Written Discovery

The Board granted Applicant JFC Tobacco's motion to extend discovery, filed on the last day of the discovery period, to allow it to receive responses to its late-filed written discovery requests and to respond to Opposer Trans-High's discovery demands. As to JFC's written discovery, Trans-High argued that, since JFC missed the written discovery deadline, it must show “excusable neglect” in order to justify re-opening discovery, but the Board ruled that the lesser, “good cause” standard applied. Trans-High Corp. v. JFC Tobacco Corp., 127 USPQ2d 1175 (July 2, 2018) [precedential] (Katie W. McKnight, Interlocutory Attorney).

Discovery in this proceeding was set to close on January 22, 2018. Trademark Rule 2.120(a)(3) requires that written discovery requests be served early enough in the discovery period so that responses thereto will be due no later than the close of discovery. Therefore the deadline for serving written discovery requests was December 23, 2017.

Applicant JFC served written discovery on January 10, 2018, and opposer promptly pointed out that this discovery was untimely. JFC sought Trans-High's consent for an extension of time for written discovery and for close of discovery, but opposer did not provide a definitive response. And so on January 22nd, JFC filed a motion to extend the close of discovery by thirty days.

JFC pointed out that it is located in Puerto Rico and it encountered some delays during the proceeding due to the hurricanes that recently devastated the region, making it difficult for counsel to reach applicant. It noted that it had not requested any other extensions of time and argued that it would be prejudiced if it did not receive responses to its discovery requests.

Opposer Trans-High contended that applicant's motion was "in fact" a motion to reopen its time to respond to written discovery, and therefore the FRCP 6(b) standard of excusable neglect applied. Trans-High maintained that JFC failed to meet that standard, or even the lower good cause standard that applies to request for extensions of time filed before the expiration of the relevant deadline.

The Board pointed out that, under Rule 2.120(a)(2)(iv), the Board may grant limited extensions of the discovery period. Under FRCP 6(b)(1)(A), the appropriate standard for allowing an extension of a specific time period prior to its expiration is "good cause." In that regard, JFC's request was timely.

The Board was not persuaded by Trans-High's argument that the higher "excusable neglect" standard applied. The Notice of Final Rulemaking (October 7, 2016) stated that the amendment to Rule 2.120(a)(3) with regarding to the timeliness of written discovery "has no impact on Board practice concerning the ability of parties to seek extensions of the discovery period." Moreover, when the time to respond is extended , discovery responses must be due no later than the close of discovery, as extended.

While the Board encourages early service of discovery instead of reliance upon motions to extend the discovery period, a party wishing to serve discovery requests at a point in the discovery period when the last day for responding to the requests would fall after the close of discovery may seek an extension of the discovery period when appropriate and if it can establish good cause for the extension. Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1271 n.6 (TTAB 2017) (emphasis added).

In sum, "where the close of discovery has not yet passed, the time for serving requests is effectively reset under the good cause standard and the excusable neglect standard is inapplicable. [N.B. The key factor under the excusable neglect standard is whether the delay was within the control of the movant. JFC may have been able to meet that standard as well. - ed.].

The Board found no evidence of bad faith on JFC's part. Due to the impact of the hurricane and the difficulty for counsel to reach JFC over the holiday period in order to respond to Trans-High's discovery requests, the Board concluded that JFC had demonstrated the requisite good cause for extending both the discovery period and the time for responding to Trans-High's discovery demands.

And so the Board re-set the dates for discovery responses and for the remaining schedule of dates

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

New York IP Law Association: Hot Topics in IP Law - July 17, 2018

The Trademark Law and Practice Committee of the New York Intellectual Property Law Association (NYIPLA) will host a half-day program entitled "Hot Topics in IP Law" on Tuesday, July 17th, from 12 noon to 5 PM at the Princeton Club of New York, 15 W 43rd Street, New York, New York 10036. The agenda is set out below. Registration here.

TTABlog comment: The TTABlogger will be in attendance.

Text Copyright John L. Welch 2018.

Finding Clothing Related to Athletic Training Services, TTAB Affirms 2(d) Refusal of MAVA

The Board affirmed a Section 2(d) refusal to register the mark MAVA for various clothing items, including t-shirts, pants, gym suits, athletic uniforms, and footwear, finding the mark likely to cause confusion with the identical mark registered for "personal training services in the field of athletic performance." Applicant contended that, because it owns registrations for MAVA for weight-lifting gloves and work-out gloves, it already owns "senior trademark rights in the product space." The Board did not agree. In re Zencom Global, Serial No. 87399153 (July 6, 2018) [not precedential] (Opinion by Linda A. Kuczma).

The Marks: The identity of the marks "strongly favors a finding of likelihood of confusion."

The Goods/Services: As we know, when the marks at issue are identical, a lesser degree of similarity between the involved goods/services is needed to support a finding of likely confusion. There need be "only a viable relationship between the goods and services."

Applicant's t-shirts, pants, gym suits, athletic uniforms, and footwear, and registrant's services all relate to athletic performance. Examining Attorney Claudia Garcia submitted website evidence showing that individuals and businesses provide personal training services as well as their own branded clothing. Moreover these goods and services are provided through the same channels of trade to the same class of consumers, which would include the general public. Therefore the Board concluded that the involved goods and services are related  for Section 2(d) purposes.

Eleventh du Pont Factor: This du Pont factor considers "[t]he extent to which applicant has a right to exclude others from use of its mark on its goods." Applicant argued that its prior registrations give it the right to exclude others from using its mark MAVA in its natural zone of expansion. In other words, it owns the senior federal trademark registrations "in the product space asserted in this case."

The Board, however, pointed out that the "zone of natural expansion" doctrine has limited applicability in ex parte proceedings. It typically is invoked in inter partes proceedings to claim priority. In ex parte proceedings, "the concept is considered through a traditional relatedness of goods and services approach." The co-existence of applicant's two prior registrations with the cited registration does not compel a different result.

Moreover, the Board determination must be based on the record before it, and it is not bound by the determination of an examining attorney that the cited mark was entitled to registration over applicant's marks.

Each case must be decided on its own facts, and occasionally an applicant with registrations for the same of very similar marks may be unable to obtain subsequent registrations. *** Even when one registration issues over the other and both exist side-by-side for some period of time (in this case only a little over a year), that is just one element “which is placed in the hopper with other matters which ordinarily are considered in resolving the question of likelihood of confusion, but which is not in the least determinative of said issue.”

Conclusion: The identity of the marks and the relatedness of the goods and services outweigh the point raised by applicant. Because there is a likelihood of confusion, it is not appropriate to allow applicant's mark to be published. The Board pointed out that, if applicant believes the cited registration should not have issued over its prior registrations, it may petition for cancellation.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Note that the Morehouse defense is available only in the inter partes context. See In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) [precedential]. [TTABlogged here]. Here the goods in the prior registrations and the pending application were not that close anyway.

Text Copyright John L. Welch 2018.

TTAB Test: Is "SECOND OPINION" Generic for Cancer Testing Services?

The USPTO refused registration, on the Supplemental Register, of the term SECOND OPINION, finding it to be generic for "medical testing for diagnostic or treatment purposes in the field of cancer." On appeal, the Board rendered a split decision. How do you think this came out? In re Chronix Biomedical, Inc., Serial No. 86612457 (July 10, 2018) [not precedential] (Opinion by Judge Michael B. Adlin; dissenting opinion by Judge Linda A. Kuczma).

Section 23(c) requires that a mark, to be eligible for registration on the Supplemental Register, must be "capable of distinguishing the applicant's goods or services." Generic terms are incapable of doing so. The ultimate test for genericness is the primary significance of the term to the relevant public. The USPTO bears the burden of making a "strong" showing, with "clear evidence" that the applied-for term is generic.

The panel agreed that the genus in question is "medical testing services for diagnostic or treatment purposes," and that the relevant purchasing public includes both patients who seek medical testing, and doctors and other health care providers who order or purchase the tests. The panel did not agree on the relevant public's understanding of the term SECOND OPINION.

The panel majority had no doubt as to the genericness of SECOND OPINION, "especially because 'the determination of whether a proposed mark is capable of achieving significance as a source identifier must be made in relation to the goods and services for which registration is sought, not in the abstract.'" Dictionary definitions are consistent with applicant's own use of the term: applicant promotes the fact that its SECOND OPINION test is intended to "help doctors" or "clinicians" decide what to do in response to prior tests or examinations.

In other words, these materials reveal that Applicant’s “second opinion” test is conducted by or at the direction of a physician/clinician in order to provide an opinion, examination or evaluation to verify or challenge another physician’s diagnosis or recommendation, or to better understand the results of a first medical test.

The panel majority concluded that the genus "medical testing services for diagnostic or treatment purposes" encompasses medical testing services that are part of providing a "second opinion." Just as the term ATTIC was found to be "more in the nature of a type of sprinkler than of a source identifier," a "second opinion is a type or purpose of medical testing: 'second opinion medical testing.'" Therefore SECOND OPINION is generic and incapable of functioning as a mark.

In dissent, Judge Kuczma contended that SECOND OPINION may be merely descriptive of the end purpose of applicant's testing, i.e., to render second opinions, but "it does not refer to any class or type of medical tests and is not generic for 'medical testing services for diagnostic or treatment purposes.'"

Judge Kuczma acknowledged that, under the case law, "a term that names the central focus or subject matter of a service or the goods to be sold in connection with a service are regarded [is] regarded as 'generic'" for the services themselves. "However, that is not what we have here."

According to the definition of “second opinion” cited in the majority opinion, SECOND OPINION is “an opinion from a second qualified person . . . on a health . . . problem.” Under this definition, Applicant’s applied-for mark does not identify, nor is it generic for, medical testing services. At most, Applicant’s applied-for mark SECOND OPINION is merely descriptive of the medical testing services for diagnostic or treatment purposes which may be considered by doctors when providing a “second opinion.”

Judge Kuczma concluded that the USPTO failed to make the requisite substantial showing that SECOND OPINION is generic.

Read comments and post your comment here.

TTABlog comment: What do you think? I side with the dissent. Blood tests are a type of procedure. A second opinion is just a way of describing a blood test done to confirm the results of the first test. Maybe it's time to re-think the ATTIC decision.

Text Copyright John L. Welch 2018.

Bullet-Shaped Antenna Not Aesthetically Functional, But Lacks Acquired Distinctiveness, Says TTAB

The Board granted a petition for cancellation of a registration for the product configuration mark shown below (shaped like "a bullet cartridge") for "automobile antennas," finding that the mark lacked acquired distinctiveness. The Board rejected petitioner's claim that the design is aesthetically functional because petitioner failed to prove a competitive need for use of that shape. JVMAX, Inc. v. ESR Performance Corp., Cancellation No. 92063873 (June 29, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Aesthetic Functionality: Petitioner claimed that the registered design is functional under Section 2(e)(5) because "[c]onsumers purchase bullet shaped antennas based on the ornamental appearance of the antennas." Therefore, the shape is "essential to the purpose of the product which is purchase[d] in large part for the way it looks."

The Board observed that a mark is aesthetically functional if there is a "competitive need" for the feature. See, e.g., Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120, 1122 (Fed. Cir. 1994) (the color black for boat engines is functional because it has color compatibility with a wide variety of boat colors and it makes the engines appear smaller); In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1787 (TTAB 2013) (competitors need to use black packaging for flower arrangements in order to convey an appropriate message or sentiment, and the exclusive appropriation of the color black to single entity would severely limit the availability of appropriate color choices).

Petitioner failed to establish a competitive need for use of a bullet-shaped antenna. The parties and others sell equivalent antenna with many diverse designs. Petitioner alone sells 20 to 30 different types of antenna.

Petitioner has not proven that the bullet-shaped antenna design serves an aesthetic purpose independent of any source-identifying function. Because a product design is aesthetically pleasing and commercially successful does not mean that it is aesthetically functional. See Florists’ Transworld Delivery Inc., 106 USPQ2d at 1789. “[F]unctionality hinges on whether registration of a particular feature hinders competition and not on whether the feature contributes to the product’s commercial success.” M-5 Steel Mfg. Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1097 (TTAB 2001).

Therefore the Board concluded that the bullet-shaped antenna is not aesthetically functional.

Acquired Distinctiveness: Of course, a product shape can never be inherently distinctive and may be registered as a trademark only upon a showing of acquired distinctiveness. The burden of proof to show acquired distinctiveness is heavier for product designs than for word marks.

The party seeking cancellation bears the initial burden to "establish a prima facie case of no acquired distinctiveness." It must overcome the record evidence of acquired distinctiveness, including everything submitted by respondent during prosecution. The burden of production shifts to registrant only if the petitioner established a prima facie case. The ultimate burden of persuasion rests on petitioner.

The Board first determined that petitioner had established a prima facie case of no acquired distinctiveness. The Board described in detail the evidence submitted in respondent's application for registration, which included sales figures (44,780 antenna sold for total revenue of $508,900 from 2010-2014), advertising expenditures (totaling $203,000), the distribution of tens of thousands of catalogs, and 104 identical customer declarations purportedly attesting to their recognition that bullet shaped antennas come from a single source. Petitioner provided testimony from two third-parties who sold bullet-shaped antennas, one beginning in 2007.

The Board concluded that petitioner had established its prima facie case. It found that at the time of filing its application to register, respondent's use of the design was not substantially exclusive. Moreover, respondent provided no testimony or evidence that would allow its sales and revenue figures to be evaluated in context. Sales figures may show that the product is commercially popular, but they are not necessarily indicative of acquired distinctiveness. The advertising figure of $203,000 was questionable, since it represents an unlikely 40% of respondent's revenues, and the assertion was undermined by respondent's testimony that it does not keep records of advertising expenditures per product.

In addition, respondent's advertising did not show the design alone, but only with other marks, and the bullet-shaped antenna was just one of many products displayed in respondent's catalogs. There was no "look for" advertising and nothing that highlighted or emphasized this shape. Finally, the customer declarations suffered from many deficiencies, leading the Board to question whether the statements accurately reflect the declarants' personal recollections and experience, or whether they merely "signed what was put before them."

The Board then looked at the rest of the record evidence. It found that respondent's nine years of use is "significant but not necessarily conclusive or persuasive considering the mark is a product configuration." Respondent never used the "tm" or "R" symbols in connection with its antennas, and prior to the filing of its application it took no action to notify competitors that it considered the shape to be a trademark. The only action it took after the registration issued was to send cease-and-desist letters.

There was no evidence of unsolicited media coverage identifying the design uniquely and exclusively with respondent and no evidence that any alleged copiers of the design did so to trade on respondent's goodwill, as opposed to adopting a desirable design.

The Board concluded that the record, viewed in its entirety, "is insufficient to prove that the primary significance of the bullet cartridge shaped automobile antenna identifies the source of the automobile antenna."

[The Board declined to consider petitioner's fraud claim in view of its ruling of no acquired distinctiveness].

Read comments and post your comment here.

TTABlog comment: Shouldn't the Board's conclusion have been that petitioner carried its burden to prove that there was no acquired distinctiveness? See page 11: "The Board must ... decide whether the party seeking cancellation has satisfied its ultimate burden of persuasion, based on all the evidence made of record ...." Instead, the Board said respondent failed to prove acquired distinctiveness.

Text Copyright John L. Welch 2018.