TTAB Posts September 2018 Hearing Schedule

The Trademark Trial and Appeal Board (TTAB) has scheduled five (5) oral hearings for the month of September 2018. Three hearings will be held in the Madison Building in Alexandria, Virginia,. The third and fourth hearings listed below will be held at the University of San Diego School of Law, Warren Hall, Grace Courtroom, San Diego, CA. Briefs and other papers for these cases may be found at TTABVUE via the links provided.



September 4, 2018 - 10 AM: In re Paradyce Clothing Company, Inc., Serial No. 87562296 [Section 2(d) refusal of PARADYCE for various clothing items, in view of the registered mark PAR-A-DICE HOTEL-CASINO for overlapping clothing items].

September 6, 2018 - 2 PM: Royal Chain, Inc. v Mansur Gavriel LLC, Opposition No. 91214740 [Section 2(d) opposition to registration of MANSUR GAVRIEL for "Handbags; tote bags; purses; wallets," in view of the allegedly previously used mark PHILLIP GAVRIEL for jewelry].

September 20, 2018 - 11:10 AM: In re Cavium, Inc., Serial No. 86678199 [Section 2(e)(1) mere descriptiveness refusal of PACKET TRACKER for ethernet switches; semiconductor chips; ethernet switching chips; microprocessors, and related devices and software].

September 20, 2018 - 1:55 PM: Michael A. Robinson v Hot Grabba Leaf, LLC, Cancellation No. 92060394 [Section 2(d) petition for cancellation of a registration for the mark HOT GRABBA NATURAL TOBACCO LEAF for leaf tobacco, in view of the registered mark GRABBA LEAF, in standard character and design form, for cigar wraps, with counterclaims to cancel petitioner's registrations on the grounds of mere descriptiveness or genericness].

September 20, 2018 - 2:30 PM: Josephs Licensing Inc. v. Laguna Costa LLC, Opposition No. 91225944 and Cancellations Nos. 92063073 and 92063076 [Section 2(d) opposition to registration of LAGUNA COSTA & Design and for "Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Sport shirts; Sports caps and hats; Sports jackets; Sports jerseys; Sports pants; Sports shirts; Sports shirts with short sleeves," and petitions for cancellation of registrations for the marks LAGUNA COSTA in standard character form and in a second design form, for the same goods, in view of the mark LAGUNA registered in various stylized and design forms, for clothing].

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

Text Copyright John L. Welch 2018.

Invoking 13th duPont Factor, TTAB Reverses 2(d) Refusal of LA CHULA & Design over CHULA BRAND for Fruit Products

The Board reversed a Section 2(d) refusal of the mark LA CHULA & Design (shown immediately below) for "preserved, frozen, dried, and cooked fruits," finding no likelihood of confusion with the registered mark CHULA BRAND, in standard character form, for "fresh fruits and vegetables, namely, citrus, lemons, avocados, coconuts, papayas, pineapples" [BRAND disclaimed]. Although the marks are similar and the goods related, applicant's ownership of a more-than-five-years-old registration for the mark shown second below, for "fruit conserves," was dispositive. In re Daboub and Giner, Serial No. 87351674 (August 28, 2018) [not precedential] (Opinion by Judge Angela Lykos).

The Board found that because the involved marks "share the dominant, arbitrary term LA CHULA [sic], the marks overall are similar in sound, appearance, connotation and commercial impression." This is true even though in the applied-for mark the term "La Chula" is translated as "the beautiful one" or "the show-off," and in the cited registration "Chula" is translated as "sparkling." Evidence of third-party websites showed both applicant's and registrant's products sold under the same mark.

Typically this would suffice to find a likelihood of confusion. However, in some instances, a single du Pont factor may be pivotal, and such is the case here.

The 13th du Pont factor encompasses "any other established fact probative of the effect of use." Though "rarely invoked," it "accommodates the need for flexibility in assessing each unique set of facts." For example, "[w]here an applicant owns a prior registration that is over five years old and the mark is 'substantially the same' as in the applied-for application, this can weigh against finding that there is a likelihood of confusion. In re Inn at St. John’s, LLC , 126 USPQ2d 1742, 1748 (TTAB 2018) (citing In re Strategic Partners Inc., 102 USPQ2d at 1399 (no likelihood of confusion found with the registered mark ANYWEAR BY JOSIE NATORI and design where the applicant’s previously registered mark ANYWEARS was substantially similar to the applied-for mark ANYWEAR for identical goods))."

Here, applicant owned a more-than-ten-year-old registration for the mark shown below, for "fruit conserves." Under Section 14, that registration is "impervious to a challenge under Section 2(d)."

This prior registration has no claim to color, and so the mark is "not only 'substantially the same' as, but more importantly, legally identical to the applied-for mark." In other words, that prior registration covers the color scheme of the applied-for mark. Thus the applied-for mark does not "move [any] closer" to the mark in the cited registration. Compare In re Inn at St.John’s, LLC, 126 USPQ2d at 1748. Moreover, the fruit conserves of the prior registration are highly related to, if not identical with, the goods in the subject application.

The examining attorney, relying on Section 1207.01 of the TMEP, attempted to distinguish Strategic Partners on the ground that there, the cited registration and the applicant's prior registration had co-existed for more than five years, and so both registrations were immune from a Section 2(d) attack. The Board, however, rejected that narrow interpretation of the 13th du Pont factor. In short, "the fact that cited registration is not over five years old is not fatal."

The Board concluded that "even though the first and second du Pont factors weigh in favor of finding a likelihood of confusion, . . . the thirteenth factor outweighs them all, making confusion unlikely."

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TTABlog comment: At one point, applicant's two prior registrations are referred to as "incontestable." I continue to maintain that there is no such thing as an "incontestable" registration. The Lanham Act uses that term in connection with the right to use a mark, not in connection with the registration of a mark. See Section 15. Every registration is contestable (regardless of the filing of a Section 15 declaration) on, for example, the grounds of abandonment, genericness, functionality, and fraud. See Section 14.

Text Copyright John L. Welch 2018.

Precedential No. 28: TTAB Test - Is I'M SMOKING HOT Confusable With SMOKIN' HOT SHOW TIME for Cosmetics?

The USPTO refused registration of  I'M SMOKING HOT for cosmetics, makeup, and other personal care products, finding the mark likely to cause confusion with the registered mark SMOKIN' HOT SHOW TIME for cosmetics. FabFitFun appealed, arguing that SMOKIN' HOT is a weak term in light of third-party usage, and therefore that the marks are distinguishable. How do you think this came out? In re FabFitFun, Inc., 127 USPQ2d 1670 (TTAB 2018) [precedential] (Opinion by Judge Peter W. Cataldo).

The Goods:The involved goods overlap, and therefore the Board must presume that those goods (cosmetics) travel in the same trade channels to the same classes of consumers. Moreover, the goods as identified include lower cost make-up items that may be purchased without a high degree of care. All of those du Pont factors favored a finding of likely confusion.

Strength of the Cited Mark: As to the strength of the cited mark, the Board first considered the conceptual strength of "smokin(g) hot." A dictionary definition ("attractive, sexy looking, very hot") led the Board to conclude that "the purpose or intended result of the cosmetics offered under the marks at issue is to render the user's appearance 'smoking hot.'" Thus the term has some conceptual weakness and is at best highly suggestive for cosmetics.

As to marketplace strength, applicant submitted screenshots showing ten third-party uses of SMOKIN' HOT formatives as marks for cosmetics, and particularly eye makeup of various colors and shades. The CAFC held in Jack Wolfskin that "extensive 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." However,  FabFitFun's evidence was "more modest" than the amount of evidence in Jack Wolfskin (and Juice Generation).

Nonetheless, the Board found that the shared term SMOKIN' [SMOKING] HOT is "somewhat weak in that it at best suggests a desired result of using the identified cosmetics, while the third-party uses ... tend to show consumer exposure to third-party use of the term on similar goods."

In sum, the Board found the term SMOKIN' HOT to be "somewhat weak." The entire mark SMOKIN' HOT SHOW TIME, however, was not shown to be either particularly strong or weak.

On balance, we do not believe that, on this record, the relative strength of the cited mark in its entirety weighs significantly one way or the other. Rather, the relative weakness of the component term SMOKIN’ HOT common to both marks weighs somewhat in favor of a finding of no likelihood of confusion.

Comparing the Marks: The only common element is the term SMOKIN HOT/SMOKING HOT, a term that is a weak source identifier in the field of cosmetics. The differences in structure between the two marks renders them "only somewhat similar in sound and appearance." The connotations and overall commercial impressions of the two marks "are more different than they are similar."

While both generally connote attractiveness or sexiness due to the shared component SMOKIN’ HOT/SMOKING HOT, Applicant’s mark in its entirety conveys the impression of a statement regarding one’s personal appearance and the registered mark conveys sexy entertainment.

Considering the marks in their entireties, the Board found the marks to be more dissimilar than similar, and therefore the first du Pont factor weighed in favor of applicant.

Conclusion: Because of the overall differences between the marks and the weakness of the shared term, the Board concluded that confusion is not likely, and so it reversed the Section 2(d) refusal.

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TTABlog comment: Not sure why this is precedential.

Text Copyright John L. Welch 2018.

CAFC Affirms TTAB in TAI CHI Cancellation, Giving Deference to TBMP on Evidentiary Issues

The U.S. Court of Appeals for the Federal Circuit affirmed the Board’s decision [here] ordering cancellation of a registration for the mark WU DANG TAI CHI GREEN TEA & Design (shown below left) for “green tea; tea; tea bags,” in view of the registered mark TAI CHI (shown below right) for, inter alia, tea. The court ruled that the Board had properly refused to consider evidence contained in Respondent’s main brief and also properly rejected Respondent’s reply brief. The court then found that substantial evidence supported the Board’s finding of likelihood of confusion. Zheng Cai, d/b/a Tai Chi Green Tea, Inc. v. Diamond Hong, Inc., 127 USPQ2d 1797 (Fed. Cir. 2018) [precedential].

Evidentiary Rulings: The CAFC reviews evidentiary rulings for abuse of discretion. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1363 (Fed. Cir. 2012).

The TTAB considered the arguments presented in Mr. Cai’s Main Brief but did not “consider[] the factual assertions and ‘figures’ displayed and discussed in [Mr. Cai’s] brief, which are not evidence introduced into the trial record.” The Board also refused to consider Mr. Cai’s reply brief because the TBMP does not provide for such filings and gives the TTAB broad discretion in considering them.

Although the procedural guidelines in the TBMP do not have the force of law, see TBMP Introduction (explaining that “[t]he manual does not modify, amend, or serve as a substitute for any existing statutes, rules, or decisional law and is not binding upon the [TTAB or] its reviewing tribunals”), the TBMP is accorded a degree of deference to the extent that it has the “power to persuade,” Christensen v. Harris Cty., 529 U.S. 576, 587 (2000). 

The CAFC has previously affirmed TTAB determinations with regard to evidence admission, where they are clearly in line with the language of the TBMP. Mr. Cai's main brief contained numerous assertions of fact; such assertions “are not evidence under any of the relevant Rules.” And so the court concluded that the TTAB did not abuse its discretion in ruling that Mr. Cai submitted no evidence.

As to his reply brief, the TBMP plainly states that the TTAB is not required to permit “a party in the position of defendant” to file a reply brief. Mr. Cai was the defendant in the cancellation proceeding. Therefore, the Board did not abuse its discretion in refusing to consider the reply brief.

Likelihood of Confusion: The CAFC reviews the TTAB’s factual findings on each du Pont factor for substantial evidence, and its legal conclusion of likelihood of confusion de novo. Stone Lion Capital Partners, 746 F.3d at 1321 (citations omitted). The court concluded that the Board did not err.

The Board considered the first three du Pont factors, since the parties did not submit evidence on the other factors. Substantial evidence supported the Board’s findings. The goods are identical in part, and the Board correctly presumed that these identical goods move in the same trade channels and are available to the same classes of customers: general purchasers who purchase or consume tea. See In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012).

As to the marks, when the goods are identical, a lesser degree of similarity is necessary to support a conclusion of likely confusion. In re Viterra, 671 F.3d at 1363. When considered as a whole, the marks at issue are similar because both “invoke a large yin-yang symbol and prominently display the term TAI CHI.”

“The fact that color is not claimed as a feature of Diamond Hong’s mark . . . further highlights the likelihood of confusion because, as the TTAB correctly identified, Diamond Hong’s mark “could be presented in a green and- white color scheme like [Mr. Cai’s].”

Conclusion: “The TTAB’s findings as to the DuPont factors are supported by substantial evidence and the TTAB did not err in finding a likelihood of confusion." And so the CAFC affirmed.

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TTABlog comment: I guess the court's comments regarding the TBMP make this opinion precedential.

Text Copyright John L. Welch 2018.

TTAB Test: Does the Drawing of this Stylized "M" Mark Match the Specimen of Use?

The USPTO refused registration of a stylized and colorized  "M" mark for "retail store services featuring books, printed materials, and gifts," on the ground that the mark in the application drawing (shown immediately below) is not a substantially exact representation of the mark as used in connection with the identified services, as shown by the specimens of use (shown further below). Applicant argued that the applied-for mark creates a distinctive commercial impression apart from the remainder of the word "Marissa's.'" How do you think this appeal came out? In re Cynthia Dumas, Serial No. 87345342 (August 24, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).

Trademark Rule 2.51(a) requires that the applicant submit a drawing that is “a substantially exact representation of the mark as used on or in connection with the goods and/or services.” The Board has ruled that a drawing displaying only a “minor alteration” of the mark that “does not create a new and different mark creating a different commercial impression” from the matter shown in the specimens is acceptable.

Applicant described her mark as "an uppercase M incorporating an open book on its spine, with the pages pointing upward." The specimens of record are represented by the pictures below.

Examining Attorney Jessica Ellinger Fathy maintained that the stylized M in the first specimen shown above will not be perceived by consumers as a stand-alone mark, but instead will be viewed as the term "Marissa's." Without the letter "M" the mark would appear as the non-sensical word "arissa's." In the second specimen, the letter "M" appears alone but without any coloration, which does not match the applied-for mark, colorized mark.

The Board sided with the Examining Attorney. As to the first specimen of use, "the spacing between the stylized M and the remaining letters is equidistant so as not to engender the impression of two separate and distinct terms. Furthermore, the letters “arissa’s” appear in the same color purple as the two vertical lines in the stylized letter M, reinforcing the consumer perception that Applicant’s stylized M mark "is intricately interwoven with the remaining letters that comprise the word 'Marissa’s.'"

While we acknowledge that our primary reviewing court and the Board have allowed owners of a composite mark to register separately one or more of its several elements, see, e.g., In re Servel, Inc., 181 F.2d192, 85 USPQ 257 (CCPA8 1950) (allowing registration for SERVEL where specimens of use displayed the mark as SERVEL INKLINGS); In re Sansui Electric Co., Ltd., 194 USPQ 202 (TTAB 1977) (Board allowed registration of QSE and QSD; specimens showed use as QSE-4 and QSD-4), the circumstances in these cases vastly differ from this case. In the cases identified above, the Board found that the additional wording in the specimens was either descriptive of the goods or services or constituted a series of model numbers. As such, these additional terms did not deter from the commercial impression of the drawing of the mark standing alone.

Here, however, the applied-for mark is so "intricately intertwined" in the term "Marissa's " as to constitute a single composite mark.

As to the second specimen of use, the Board again agreed with the Examining Attorney. "Because the display of the stylized letter M mark alone on these specimens is not displayed in the colors claimed as a feature of the mark, these specimens are also unacceptable because they are not a substantially exact representation of the mark as displayed on the drawing."

And so the Board affirmed the refusal to register.

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TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2018.

On Summary Judgment, TTAB Orders Cancellation of 3-Concentric-Loop Wastewater Ditch Registration on Functionality Ground

[Caveat: The Wolf Greenfield trademark team of Christina Licursi, Stephanie Stella, and Yours Truly represented Petitioner Lakeside Equipment in this case.]. The Board granted Petitioner Lakeside's motion for summary judgment in this cancellation proceeding, ruling that Respondent Evoqua's registered concentric-loop configuration (shown below) for an "oxidation ditch for wastewater treatment" is functional under Section 2(e)(5). Two expired utility patents, a published article, and Evoqua's own advertising convinced the Board that "there is no genuine dispute of material fact that the use of three concentric loops is essential to the use or function of the goods and affects their cost." Lakeside Equipment Corporation v. Evoqua Water Technologies LLC, Cancellation No. 92066259 (August 23, 2018) [not precedential].

A product design or product feature is considered to be de jure functional if it is (1) “essential to the use or purpose of the article,” or if it (2) “affects the cost or quality of the article.” TrafFix, 58 USPQ2d at 1006 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). The Board noted that the well-known "Morton-Norwich factors" are "legitimate source[s] of evidence to determine whether a feature is functional." Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002). However, if functionality is established under Inwood, "further inquiry into facts that might be revealed by a Morton-Norwich analysis will not change the result."

Based upon a careful review of the parties’ submissions, the Board finds that there is no genuine dispute of material fact that the concentric loop design claimed by Respondent is essential to the use and purpose of the goods and affects the cost and quality of the wastewater treatment system under the standard set forth in Inwood/TrafFix.

The two expired utility patents (one owned by Evoqua's predecessor), taken together, disclosed the functionality of using multiple chambers, or channels, in an wastewater oxidation ditch. Each channel has a specific utilitarian function, and both patents disclosed embodiments with three or four channels.

The 1972 article by Meiring discusses the utilitarian function of using multiple channels, specifically three or more. Respondent Evoqua advertises its three-channel configuration as capable of a higher percentage of total nitrogen removal than its two-channel configuration. The Board therefore found "no genuine dispute of material fact that the use of three channels in an oxidation ditch serves a utilitarian function."

As to Respondent Evoqua's concentric loops, Meiring U.S. Patent No. 3579439 (issued in 1971) describes the use of "concentric, annular basins or channels" in an "orbal wastewater treatment process" and includes the following drawing:

The Meiring article states that “the reason for the very good quality of effluent obtained from the orbal plant, with regard to biochemical oxygen demand (BOD) and total nitrogen, is to be found in the multicompartment aeration arrangement. Normally three or four channels are recommended.” (emphasis supplied by the Board). Respondent Evoqua advertises its three-channel configuration as capable of a higher percentage of total nitrogen removal than its two-channel configuration.

The Meiring '439 patent states that, in addition to creating an endless circuit for the flow of wastewater from one channel to another, “[t]he concentric arrangement of the channels permits the same shaft to be used for aerating all channels.”

Respondent Evoqua’s advertising brochure asserts that the treatment zones, or channels, operate in a series which is essential to the wastewater treatment process—specifically a simultaneous nitrification-denitrification process which “is the backbone” of the design.

Moreover, Evoqua’s advertising specifically touts the use of concentric channels in the shape of loops as partially responsible for the effectiveness of its oxidation ditch. (“The Orbal® system incorporates a unique Concentric Loop™ configuration that creates dedicated zones for specific treatment purposes . . . . The volume split of the Concentric Loop configuration naturally applies the correct volume to oxygen input ratio required in the design of a SND plant.”). The use of concentric “orbal” or loop channels also allows for “easy extension of capacity by adding extra channels.”

The Board found the evidence clear that the concentric loop design affects the cost of the product. According to Evoqua's brochure, “[t]he Concentric Loops also save on concrete and construction costs of the aerobic basin volume by using common wall construction.”

Thus, the evidence of record established that" the use of concentric loops creates an endless circuit that can use common walls, a single aeration shaft, and easily allow for the addition of further loops."

Moreover, the decision to use the concentric loop design is partly a function of population size and location:

The Meiring article further explains that the extended aeration orbal plant design is most useful for populations below 4,000, and that for larger populations, the choice between the extended aeration plant and a conventional plant would depend upon factors such as the topography of the area in which the plant is installed. *** According to the article, the design of the plant is therefore dictated in part by population size and topography. In other words, the orbal irrigation ditch design is dictated by functional considerations.

The Board concluded that "there is no genuine dispute of material fact that the use of three concentric loops is essential to the use or function of the goods and affects their cost." Therefore the mark in question is functional under Section 2(e)(5) and the Board granted the petition for cancellation of Evoqua's registration.

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Text Copyright John L. Welch 2018.

TTAB Reverses 2(d) Refusal of SQUEEZE JUICE COMPANY In View Of 12 Third-Party SQUEEZE Registrations

Third-party registrations may help an applicant overcome a Section 2(d) refusal under Juice Generation and Jack Wolfskin, but it depends on the quantity and quality. Here, twelve third-party registrations demonstrated the weakness of the word SQUEEZE and led the Board to reverse a Section 2(d) refusal of SQUEEZE JUICE COMPANY for “Fruit juices; Vegetable juices; Smoothies” and for "Juice bar services; Smoothie bar services; Cafe services" [JUICE COMPANY disclaimed], over the registered mark SQUEEZE & Design shown immediately below, for "bar services; juice bar services." In re Boston Juicery, LLC., Serial No. 86877537 (August 21, 2018) [not precedential] (Opinion by Judge Angela Lykos).

The goods and services: The Board found the involved good and services to be identical in part and otherwise related. Moreover they are likely to travel in the same channels of trade to ordinary consumers.

The marks: The Board found the marks to be similar in sound, appearance, connotation, and commercial impression. The design in the cited mark merely underscores the literal meaning of SQUEEZE as suggesting freshly squeezed juice. Each mark conveys the impression that the respective goods and services "consist of freshly squeezed fruit juices and involve the service thereof."

Strength of the cited mark: Based on applicant's third-party registration evidence, the Board found the term SQUEEZE to be weak and entitled to a narrow scope of protection. Even without evidence of actual use, "third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used in a particular industry that the public will look to other elements to distinguish the source of the goods and services. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015)."

Applicant submitted 12 third-party registrations for fruit juices and related services (e.g., HAPPY SQUEEZE, KARMIC SQUEEZE, NATURE'S SQUEEZE), all owned by different entities.

The number of third-party registered marks all owned by different entities indicates that SQUEEZE is highly suggestive as applied to fruit juices, smoothies, juice bar services and cafe services. We can surmise that the word “squeeze” in this context alludes to freshly squeezed juices, smoothies made with this ingredient, or services offering freshly squeezed juice or smoothies.

The Board found that SQUEEZE is "so highly suggestive of juice, smoothies, juice bars, and cafes that the public will look to other elements to distinguish the source of the goods and services," and that "consumers are conditioned to look for differences between SQUEEZE and SQUEEZE formative marks to determine the source of a given product and therefore less likely to be confused."


Conclusion: The Board found no likelihood of confusion, and so it reversed the refusal.

Read comments and post your comment here.

TTABlog comment: In Juice Generation there were 26 third-party uses or registrations of marks containing the phrase PEACE AND LOVE, and in Jack Wolfskin, there were 16 paw print designs. Here, in light of the descriptive nature of SQUEEZE, 12 registrations sufficed.

Text Copyright John L. Welch 2018.

Precedential No. 27: TTAB Affirms 2(d) Refusal of #WILLPOWER - Hashtag Has No Trademark Significance

The Board affirmed a Section 2(d) refusal of #WILLPOWER for various items of clothing, in view of the registered mark shown below, for overlapping clothing items [WEAR disclaimed]. Applicant's argument that consumers would recognize that its mark refers to musical performer will.i.am, and that its goods are purchased by his fans, fell on deaf ears. In re i.am.symbolic, llc, 127 USPQ2d 1627 (TTAB 2018) [precedential] (Opinion by Judge Karen Kuhlke).

The Goods: Because the goods are identical in part, the Board must presume that these goods travel in the same channels of trade to the same classes of consumers. Applicant pointed out that its “founder is Will Adams, who is known globally under his stage name WILL.I.AM as the front man for the Grammy Award winning and platinum winning musical group The Black Eyed Peas." It argued that its goods "are targeted to, and purchased by, wholly different consumers, namely, consumers seeking merchandise in connection with Applicant’s album and with Applicant." The Board pointed out, however, that the "respective actual uses and marketing are not reflected in the identification of goods in the application or the cited registration."

While the Applicant may be associated with William Adams, there is nothing in the application that limits the marketing of the goods to methods that would unmistakably associate the goods with him, his persona, or his album. 

Moreover, in In re i.am.symbolic, llc, 123 USPQ2d 1744 (Fed. Cir. 2017), aff’g 116 USPQ2d 1406 (TTAB 2015) [TTABlogged here], the Board considered the same applicant's express limitation to goods “associated with William Adams, professionally known as ‘will.i.am,’” ruling that because the cited registrations contained no restriction as to trade channels or consumers, applicant's "will.i.am restriction does not distinguish the mark sufficiently from the registrants’ marks to overcome the evidence of likelihood of confusion."

The Marks: The Board pointed out once again that when the goods are identical, a lesser degree of similarity between the marks is necessary to establish a likelihood of confusion. As to applicant's mark, the word WILLPOWER is the dominant portion. As to the cited mark, the Board observed that “the verbal portion of a word and design mark [that] likely will be the dominant portion.” Here, the word WILLPOWER dominates the cited mark.

The design of stylized mountains in Registrant’s mark does not overwhelm, detract from, or change the commercial impression of, the wording WILLPOWER WEAR and HAVE THE WILL, but rather serves as an upper border that attracts the eye to the wording WILLPOWER WEAR. The mountains also resemble stylized W’s, focusing attention on the alliterative wording WILLPOWER WEAR, immediately beneath them, as the source identifier.

Moreover, the slogan HAVE THE WILL merely "reinforces" the word WILLPOWER. WILLPOWER WEAR “comes across as a single, unified component of the mark” and HAVE THE WILL “as a separate part of the mark.”

Applicant argued that the marks are "dramatically and substantially different in appearance," but the Board did not see it that way: "the focus of Registrant’s mark is on the word WILLPOWER, which would be retained by the consumer more than the other elements."

Applicant further contended that #WILLPOWER has a different connotation that the word "WILLPOWER" in the cited registration because in the applied-for mark the word "WILL" is "meant to play on" the first portion of will.i.am's stage name. The Board pointed out, however, that it must consider the perception of applicant's mark by consumers who are not familiar with will.i.am, and who would take from applicant's mark the ordinary word "willpower."

As to the significance of the hashtag in applicant's mark, Examining Attorney Brendan McCauley pointed to TMEP § 1202.18 which discusses the impact of the addition of a # character to a word. the Board agreed with the Manual that "a hash symbol or the word HASHTAG generally adds little or no source-indicating distinctiveness to a mark."

We find, in this case, the hash symbol does not have source-indicating distinctiveness and at most simply appears as the social media tool to create a metadata tag.

In sum, the Board found the dominant element in the involved marks to be the word WILLPOWER, and it concluded that the similarities in the marks outweigh the dissimilarities.

Strength of the Cited Mark: Applicant maintained that the word “willpower” is weak in the field of clothing, pointing to five examples of third-party use of the term “willpower” as part of a mark. The Board, however, found the evidence insufficient to “show that customers … have been educated to distinguish between different … marks on the basis of minute distinctions.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).

The third-party evidence here is far less in quantity and quality than that in Juice Generation, which included at least 26 uses or registrations of the same phrase for restaurant services, Juice Generation, 115 USPQ2d at 1673 n.1, or in Jack Wolfskin where there were at least fourteen, 116 USPQ2d at 1136 n.2.

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


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TTABlog comment: Do you think the marks are confusingly similar?

Text Copyright John L. Welch 2018.

TTAB Test: Is THE HALAL SHACK Merely Descriptive of Restaurant Services?

The USPTO refused registration of the mark THE HALAL SHACK  in standard character form, for "restaurant services" [HALAL disclaimed], finding the mark to be merely descriptive of the services. You may recall that, earlier this year, the BOARD found THE JOINT to be generic for "restaurant, bar and catering services." [TTABlogged here]. How do you think this appeal came out? In re The Halal Shack Inc., Serial No. 87633904 (August 17, 2018) [not precedential] (Opinion by Judge David K. Heasley).

The Board observed that “HALAL” describes the type of food featured in applicant’s restaurant: “Halal food and meats are sourced and prepared following Islamic dietary guidelines to ensure not only the highest quality but also the humane treatment of the animals they came from.” Therefore, the key question was the trademark significance of SHACK.

The examining attorney contended that SHACK merely describes the facility in which applicant’s restaurant services are provided, observing that restaurants offer their services in a wide variety of buildings, including a SHACK, defined as “a simple, small building.” He pointed to an Internet article referring to various SHACK-named restaurants and to registrations for names such as CRAZY CLAM SHACK (with CLAM SHACK disclaimed), THE POKE SHACK (on the Supplemental Register, with POKE disclaimed), and RAMEN SHACK (on the Supplemental Register, with RAMEN disclaimed).

Applicant argued that SHACK is merely suggestive, not descriptive, since restaurants do not literally provide services in "shacks," although a restaurant may choose to use a rustic décor that resembles the appearance of a "shack." Applicant pointed to eleven registrations in which SHACK was not disclaimed for restaurant services: e.g., BURGER SHACK, FRAPPE SHACK, and SALAD SHACK.

The Board, noting that there is a fine line between suggestiveness and mere descriptiveness, reasoned as follows:

[T]he term SHACK, as used in connection with Applicant’s restaurant services, appears at first blush to describe the sort of building in which the services are provided. But to articulate the way the term conveys information about the restaurant services, one must engage in a mental process involving imagination, thought and perception, realizing that the term is more figurative than literal, more connotative than denotative, conveying the commercial impression of informal ambiance.

The registration evidence demonstrated that SHACK is "not necessarily descriptive of restaurant services, and may, depending on the record, be found inherently distinctive."

Concluding that applicant's mark fall on the suggestive side of the line, the Board further observed that "the term SHACK, when coupled with HALAL, which describes food sourced and prepared following strict Islamic dietary guidelines, creates a degree of incongruity that carries the mark as a whole even further across the fine line dividing the merely descriptive from the suggestive."

The Board, noted, however, that the subject mark "appears to us to be highly suggestive and commercially weak, and thus easily distinguished from other composite marks by minor differences." Nonetheless, the Board found that THE HALAL SHACK is inherently distinctive, and therefore the Section 2(e)(1) refusal to register was reversed.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

Precedential No. 26: TTAB Affirms Phantom Mark Refusal of "SHAPE XXXX" for Educational Journals

The Board affirmed a refusal to register SHAPE XXXX for educational publications and services on the ground that the term is a phantom mark that comprises more than one mark. A miscellaneous statement in the application indicated that "[t]he 'XXXX' in the mark denotes the unabbreviated name of a state of the United States and Puerto Rico." The crux of the issue was whether all permutations of SHAPE XXXX legally constitute "one mark." In re Society of Health and Physical Educators, 127 USPQ2d 1584 (TTAB 2018) [precedential] (Opinion by Judge Marc A. Bergsman).

Under the Trademark Act, “a trademark application may only seek to register a single mark.” In re Int’l Flavors & Fragrances, Inc., 51 USPQ2d 1513, 1516 (Fed. Cir. 1999). A mark that contains a changeable or phantom element resulting in more than one mark must be refused registration. In re Primo Water Corp., 87 USPQ2d 1376, 1378 (TTAB 2008). One reason for this rule is that a trademark registration must provide adequate notice to potential users of the same or a similar mark. In re Int’l Flavors & Fragrances Inc., 51 USPQ2d at 1517-18 ("The registration of such [phantom] marks does not provide proper notice to other trademark users, thus failing to help bring order to the marketplace and defeating one of the vital purposes of federal trademark registration.") Whether a changeable element is permissible depends on whether the various possibilities represent a single mark. Id. at 1517.

In Int’l Flavors & Fragrances, the CAFC found that the mark LIVING XXXX FLAVORS violated the one-mark-per-application requirement. The application stated that the variable element "XXXX" "indicated 'a botanical or extract thereof, to wit: ‘flower’, ‘fruit’, ‘yellow sunset orchard’, ‘osmanthus’, ‘fragrance’, ‘raspberry’ and the like,” because the variable element encompassed too many combinations and permutations to make constructive notice meaningful." Recently, in In re Constr. Research & Tech. GmbH, 122 USPQ2d 1583 (TTAB 2017), the TTAB found the marks NP - - - and SL - - - , in which the variable element “represents up to three numeric digits,” to be phantom marks, in part because the possible range of meanings that could arise from the digits was unclear.

In contrast, the CAFC found the mark 1-888-M-A-T-R-E-S-S to be the legal equivalent of the mark (212) M-A-T-T-R-E-S, in which the term (212) was defined as a changeable element: "it is apparent . . . that the missing information in the mark is an area code, the possibilities of which are limited by the offerings of the telephone company." In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1813 (Fed. Cir. 2001). (Dial-A-Mattress I). The Board, in a case involving the mark 1-800-MATTRESS (the numerals representing a changeable area code), reversed a phantom mark refusal, stating "[i]t is immediately apparent that the phantom portion consists of a three-number combination which is an area code. There is no ambiguity. It is a telephone mnemonic." In re Dial-A-Mattress Operating Corp., Serial No. 76290744, 2004 WL 1427390, at *3 (TTAB June 15, 2004) (nonprecedential). (Dial-A-Mattress II).

Together, these decisions teach that when an applicant seeks to register a mark with a variable element, we must decide whether the permutations of the variable element affect the commercial impression so as to result in more than one mark. Put differently, if such a mark is to be registered, the possible variations of the mark must be legal equivalents. See Dial-A-Mattress I, 57 USPQ2d at 1813 (“Although the registration of the ‘(212) M-A-T-R-E-S-S’ mark is a ‘phantom’ mark, … ‘1-888-M-A-TR-E-S-S’ is the legal equivalent of the ‘(212) M-A-T-T-R-E-S-S’ mark.”); Dial-A-Mattress II, 2004 WL at 1427390, *4 (1- --- --- --- -MATTRESS was approved for registration because, inter alia, the different variations of the mark were legal equivalents).

Here, the applied-for mark is capable of 51 variations. Although the scope or definition of the variable element is specified in the subject application at issue (in a "miscellaneous statement" that would not appear on any registration certificate), that statement "only confirms that this application is not for a single mark and that this variation would inhibit effective searching because the 51 geographic locations are not listed in any searchable portion of the application." [The Board noted that even if the 51 locations were stated in the description of the mark, that field "is not generally searched when looking for similar marks."].

The crux of the issue, however, is whether all permutations of SHAPE XXXX, where XXXX is a state name or Puerto Rico, may be considered to be one mark (e.g., whether SHAPE MICHIGAN is the same mark as SHAPE OHIO).

Two marks are the "same marks" if they are legal equivalents. "A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark. Whether marks are legal equivalents is a question of law …. No evidence need be entertained other than the visual or aural appearance of the marks themselves. Dial-A-Mattress I, 57 USPQ2d at 1812 (citing Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991)."

[I]n a phantom mark in which the changeable elements are arbitrary or fanciful, it is correspondingly likely that the various permutations of the mark will result in different commercial impressions and therefore constitute different marks. In contrast, where the changeable elements are generic or merely descriptive, it is conceivable that the permutations of the mark may constitute a single mark. However, there can be no hard and fast rule, because even generic and descriptive matter may contribute to the commercial impression of a mark in certain circumstances.

The Board found that SHAPE XXXX is not one mark because the different permutations thereof are not legal equivalents.

Even though geographic terms are generally considered not to be inherently distinctive, they are capable of acquiring distinctiveness. Thus, for example, SHAPE MICHIGAN signifies educational services emanating from Michigan while SHAPE OHIO signifies services emanating from OHIO. The distinction is important in this case where geographic terms are capable of acquiring distinctiveness, which would further distinguish the marks.

Each variation of SHAPE XXX would have a different appearance and pronunciation. The range of variation is "undoubtedly broader" than that of the three-digit variable area code of the Dial-A-Mattress cases. Even though there may be more area codes than the number of states plus Puerto Rico, "the area codes were not only numerical and fixed in length, but also were part of a telephone number mnemonic, and so varied less in appearance and pronunciation. See, e.g., Dial-A-Mattress II, 2004 WL 1427390, at *3."

The Board also noted that applicant conceded that it had not yet used SHAPE XXXX with all 51 variations of state names and Puerto Rico. "This emphasizes the problem with Applicant’s phantom mark application, as it has filed a use-based application where all the variations of the changeable element are not in use." [Were all the Dial-A-Mattress area codes in use? - ed.].

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: On its face, the 1-XXX-M-A-T-T-R-E-S-S mark tells you that the variable element is an area code. SHAPE XXXX, on its face, tells you nothing about what the XXXX might be. What other variable marks might pass muster? When XXXX is a year? How about THE TOP TEN TTAB DECISIONS OF 20XX?

Text Copyright John L. Welch 2018.

WYHA? COLORGANICS for Hair Care Products Confusable With KOLORGANICS for Cosmetics, Says TTAB

Wrapping up WYHA Week (TM) .... The Board affirmed a Section 2(d) refusal to register the mark COLORGANICS for various hair care products, finding the mark likely to cause confusion with the registered marks KOLORGANICS and KOLORGANIQUE for various make-up products. Applicant SMA argued that the K versus the C "creates a distinct and different commercial impression," but it provided no evidence in support and the Board was not impressed. In re SMA Srl, Serial No. 86714378 (August 13, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The Marks: The letters C and K produce the same sound, as evidenced by dictionary evidence providing pronunciation guidance, and so the marks COLORGANICS and KOLORGANICS would sound identical when consumers call for the goods.  Both marks appear to be a combination of the word “organics” and the word “color," and they have the same connotation and commercial impression.

 As to the cited mark KOLORGANIQUE, it is uncertain how consumers will pronounce the last syllable:

One possible pronunciation of the last syllable – ik – sounds almost identical to the last syllable of Applicant’s mark, while another possible pronunciation – eek – sounds a bit different, but still results in a similar sounding mark overall. Regardless of the relatively insignificant variation in pronunciation of the last syllable, consumers who hear the marks spoken by others might not notice, or could easily forget, the difference.

The Board found that the marks sound quite similar and resemble each other, and engender the same connotation and commercial impressions as combinations of the words "color" and "organic."

The Board concluded that the first du Pont factor weighed in favor of a finding of likelihood of confusion.

The Goods: Examining Attorney Siddharth Jagannathan provided "substantial evidence of consumer exposure to goods of this type emanating from the same sources under the same marks." Applicant maintained that the goods are different and serve different purposes, but the Board observed that, "in the broader sense, the goods at issue serve a similar purpose as personal care products." In any event, the goods need not be identical or serve the same purpose to be related.

The Board found the marketplace evidence persuasive and it concluded that the goods are related for Section 2(d) purposes.

Trade Channels and Customers: The marketplace evidence demonstrated that cosmetics and hair care products are promoted and sold together through the same websites, reaching the same classes of consumers. The Board therefore found that the trade channels and classes of consumers overlap.

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

Read comments and post your comment here.

TTABlog comment: What a week!

Text Copyright John L. Welch 2018.

WYHA? TTAB Finds "OPTIMUM BENEFITS PACKAGE" Confusable With "OPTIMUM" for Insurance Underwriting Services

Continuing with WYHA? Week (TM) .... The Board affirmed a Section 2(d) refusal of the mark OPTIMUM BENEFITS PACKAGE for "insurance administrative services, insurance brokerage services, insurance underwriting services in the field of life, health, accident, disability and longterm care insurance" [BENEFITS PACKAGE disclaimed], finding the mark likely to cause confusion with the registered mark OPTIMUM for "underwriting, brokerage and management of all types of life insurance and reinsurance; and actuarial consulting services." Applicant argued that Examining Attorney Howard Smiga improperly focused on the word OPTIMUM while discounting the significance of BENEFITS PACKAGE. The Board disagreed. In re John M. Fickewirth Associates Insurance Services, Inc., Serial No. 87026036 (August 15, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Services: both the application and the cited registration encompass life insurance underwriting and brokerage, and are therefore the involved services are identical in part.

Trade Channels and Purchasers: Since there are no restrictions in the application or cited registration, the Board must presume that the involved services, to the extent they overlap, travel in the same channels of trade to the same classes of consumers.

The Marks: The only difference between the marks is the inclusion of the disclaimed phrase BENEFITS PACKAGE in applicant's mark. Applicant contended that the examining attorney's analysis was faulty and that the addition of BENEFITS PACKAGE suffices to distinguish the marks. Not so, said the Board. There is nothing wrong in giving more weight to a particular feature of a mark, provided that the ultimate conclusion rests on a consideration of the marks in their entireties. The disclaimed term is less likely to make an impact on the minds of consumers.

The Board noted that likelihood of confusion has often been found when the applicant's mark incorporates the cited mark. Moreover, the first part of a mark is the part most likely to be remembered by consumers when making their purchasing decisions. And the degree of similarity between marks needed to support a finding of likely confusion is diminished where, as here, the involved services are in part identical.

The Board concluded that the marks are substantially similar.

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

Read comments and post your comment here.

TTABlog comment: Would you have?

Text Copyright John L. Welch 2018.

WYHA? TTAB Finds FREESTYLE for Comforters Confusable With FREESTYLE for Pillows

The Board affirmed a Section 2(d) refusal of FREESTYLE for "comforters, namely, comforters and comforter sets and comforter sets sold in a bag," finding the mark likely to cause confusion with the identical mark registered for "pillows." Applicant pointed to nine third-party registrations in class 20 for marks incorporating the word "freestyle," but the Board was not impressed. Examining Attorney Meredith Maresca relied on other third-party registrations to show the relatedness of the goods. In re BCP Home Inc., Serial No. 87202411 (August 13, 2018)[not precedential] (Opinion by Judge Marc A. Bergsman).

Strength of the Cited Mark: The description of goods in the nine third-party registrations proffered by applicant were not as close to registrant's pillow as are applicant's comforters and comforter sets. Moreover, there was no evidence of usage of these third-party marks. "This is a far cry from the large quantum of evidence of third-party use and third-party registrations that was held to be significant" in Jack Wolfskin and in Juice Generation.

Similarity of the Marks: They are identical.

Similarity of the Goods: The examining attorney submitted ten third-party registrations covering comforters and pillows, as well as numerous websites showing the same mark identifying pillows, comforters, and comforter sets. The Board therefore concluded that the goods are related. This evidence also established that the involved goods travel in the same marketing channels to the same consumers.

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

Read comments and post your comment here.

TTABlog comment: Well, would you have appealed?

Text Copyright John L. Welch 2018.

WYHA? LYNKD Merely Descriptive of Security Devices Controllable by Mobile Phone, Says TTAB

In a six-page decision, the Board affirmed a Section 2(e)(1) refusal to register the mark LYNKD, finding it merely descriptive of electronic monitoring and safety devices controllable by mobile phone, and related software. Applicant's own website stated that "using your smartphone . . . you can LYNK anything!" In re RPH Engineering, LLC, Serial No. 87166080 (August 9, 2018) [not precedential] (Opinion by Judge Susan J. Hightower).

Examining Attorney Jeffrey S. DeFord relied on a dictionary definition of "linked" (Connected, especially by or as if by links) and on printouts from applicant's website. Applicant did not dispute that its goods are "linked," the phonetic equivalent of LYNKD, but argued that this is not a significant feature; rather it is "merely an expected feature of technology device[s] in the age of the Internet of things." The Board was not impressed.

Essentially, Applicant contends that LYNKD is not merely descriptive of its goods because many other goods also are "linked.” This argument is unpersuasive. It is clear from the description of goods that linkage to mobile devices enabling remote control is a key feature and function of Applicant’s electronic monitoring and security devices. Whether other goods share this feature and function is not dispositive. Indeed, Applicant’s argument underscores the fact that registration would be inconsistent with the rights of competitors to use the term "linked" in marketing their own goods

That a word describing a feature of applicant's goods may also describe other goods does not make the word less descriptive. Furthermore, a term may be descriptive even if it does not describe the full scope and extent of the goods; it need describe only a single future or attribute.

Finally, applicant feebly contended that "LYNKD is a very broad term which could include many categories of goods." The Board pointed out once again that mere descriptiveness is not a guessing game; one must consider the mark in the context of the identified goods, not in the abstract.

The Board found that LYNKD immediately conveys information about the features and functions of applicant's goods. Therefore the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have appealed?

Text Copyright John L. Welch 2018.

WYHA? LEGION OF GOOD WILL Confusable with GOODWILL for Charitable Services, Say TTAB

Sometimes not-so-good things happen to good people. The Board affirmed a refusal to register the mark LEGION OF GOOD WILL (in standard character form) for "Charitable services, namely, organizing and developing projects that aim to improve the lives of underprivileged and impoverished people; and Education services in the nature of early childhood instruction," finding it likely to cause confusion with the registered mark GOODWILL (in standard character form) for charitable services "for purposes of providing education, training, career, and other personal opportunities and services to benefit people with disabilities and disadvantaging conditions;" and "Child and adult day care service." Applicant also failed to submit verification of its specimens of use, another basis for refusal that the Board affirmed. In re Legion of Good Will aka LGW, Serial No. 87164803 (August 10, 2018) [not precedential] (Opinion by Judge Peter W. Cataldo).

Evidentiary Issues: With its appeal brief, applicant included dictionary definitions of the words in its mark, as well as webpage excerpts from its website. It also made reference in its brief to a third-party registration that had not been submitted during examination of its application. Examining Attorney Jonathon Schlegelmilch objected to all of this evidence as untimely.

The Board took judicial notice of the dictionary definitions but otherwise upheld the examining attorney's objection. The evidentiary record in an application should be complete prior to the filing of an appeal.The proper route for applicant would have been to request that the Board suspend the appeal and remand the file to the Office for further examination.

Strength of the Cited Mark: As to conceptual strength, the dictionary definitions submitted by applicant demonstrated that the GOODWILL mark "is at worst suggestive of the benevolent nature of the services at issue." There was no evidence that the cited mark is commercially weak: i.e., no evidence of third-party registration or use of similar marks. The Board therefore accorded the GOODWILL mark "the normal scope of protection to which suggestive marks are entitled."

Similarity of the Marks: The Board found the marks to be "similar in appearance and sound to the extent that Applicant’s LEGION OF GOOD WILL mark fully encompasses the registered GOODWILL mark." As to connotation, the mark GOODWILL "connotes kindness and benevolence and the applied-for mark very similarly connotes a great number or multitude of persons engaged in kindness and benevolence." Therefore, the marks are "far more similar than dissimilar in connotation or meaning." The Board observed, moreover, that consumers often use shortened forms of names, and "it is possible that Applicant and its services are referred to as 'Good Will.'" The presence of the words "LEGION OF" in applicant's mark "does not significantly diminish the strong similarities in connotation and overall commercial impression engendered by these two marks."

The Services: Registrant’s charitable services and volunteer programs, as recited in its registration, are encompassed by applicant’s projects intended to benefit the underprivileged and impoverished. Thus the class 35 services are identical in part.

As to applicant's educational services (class 41), the examining attorney introduced website evidence of entities offering, under the same marks, childhood education services like those identified in the subject application and child care services of a type identified in the GOODWILL registration. In addition, the examining attorney submitted 10 use-based third-party registrations covering services identified in the involved application and cited registration.

The Board must presume that the overlapping services travel in the same, customary channels of trade to the same classes of consumers.

No Actual Confusion: Applicant asserted that the absence of actual confusion, despite concurrent use of the marks since 1985, indicates that there is no likelihood of confusion. However, the Board pointed out once again that it is not necessary to show actual confusion in order to establish likelihood of confusion. Moreover,

[p]articularly in an ex parte proceeding, Applicant’s assertion of the absence of actual confusion is of little probative value in our determination on the issue of likelihood of confusion because the Board cannot readily determine whether there has been a significant opportunity for actual confusion to have occurred, such that the absence of confusion is meaningful. See In re Opus One Inc., 60 USPQ2d 1812, 1817-1818 (TTAB 2001); In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984); In re Jeep Corp., 222 USPQ 333, 337 (TTAB 1984). In those situations where the Board has recognized the absence of actual confusion as probative in an ex parte setting, there existed a “confluence of facts” which together strongly suggested that the absence of confusion was meaningful and should be given probative weight. See In re Opus One Inc., 60 USPQ2d at 1817; In re Jeep Corp., 222 USPQ at 337. Such a "confluence of facts" is not present in this record.

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

Specimens of Use: Applicant ignored the examining attorney's requirement that it verify its specimens of use, as required by Rule 2.20, and applicant did not address the issue on appeal. "In consequence thereof, Applicant has failed to submit sufficient evidence of actual use of the applied-for mark in commerce as required under Sections 1 and 45 of the Trademark." And so the Board affirmed the second refusal to register.

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TTABlog comment: As to actual confusion, it is often noted that the registrant may have evidence of actual confusion but has no opportunity to submit same in this ex parte exercise.

Text Copyright John L. Welch 2018.

USPTO Seeks Candidates for Deputy Chief Administrative Trademark Judge at the TTAB

The USPTO is seeking applications for the position of Deputy Chief Administrative Trademark Judge at the Trademark Trial and Appeal Board. The announcement is open until  September 28, 2018. Further details may be found at the USA Jobs website, here.

Duties: Summary

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

The Office of Human Resources strongly encourages applicants applying for positions to read the vacancy announcement in its entirety before submitting application materials for this position. If you have any questions or concerns about the application procedure or processes, please contact the individual listed under 'Contact Information.' Failure to follow instructions in the announcement will result in your application not receiving consideration.

Responsibilities:

The Deputy Chief ATJ will serve as part of the Trademark Trial and Appeal Board along with the Under Secretary and Director, Deputy Director, Chief ATJ, Commissioners of Patents and Trademarks, along with Administrative Trademark Judges. Any three of the previously listed employees can comprise a legal panel of the Board to render a decision in a trademark appeal or an opposition, cancellation, concurrent use or interference proceeding.

The Deputy CATJ is also responsible for the following:

• Working with the CATJ to develop and deploy the strategic and policy initiatives of the Board, as needs may be identified by the Board or as strategic initiatives may be required by the Office of the Under Secretary and Director of the USPTO, to which the Board reports.
• Developing and implementing the USPTO’s rules of practice governing trademark appeals and trademark opposition, cancellation, and concurrent use proceedings.
• Developing and implementing the Standard Operating Procedures necessary for the internal operation of the Board. Furthermore, the CATJ is responsible, by delegation, for adjudicating certain petitions to the Director of the USPTO; which responsibility may be further delegated to and shared with the Deputy CATJ, Board Senior Level attorney, or individual ATJs.
• Serving under the administrative direction of the CATJ who reports to the Office of the Under Secretary and Director of the USPTO. The Deputy CATJ is also responsible for the comprehensive executive management, strategic planning, policy development, and financial functions essential to effective Board operations.
• Assigning panels of administrative trademark judges to adjudicate all trademark appeals and trademark opposition, cancellation, concurrent use and interference proceedings and periodically serves on such panels. The CATJ and Deputy CATJ also develop and maintain quality, timeliness, and productivity performance standards for the administrative trademark judges, attorneys and support staff. The Deputy CATJ serves as the Acting Chief Administrative Trademark Judge during the absence of the CATJ and serves on a variety of USPTO's enterprise-level committees.
• Interacting with the legal community, including the Court of Appeals for the Federal Circuit, bar associations, etc.; actively participates in public conferences and meetings; and makes presentations to foreign dignitaries or officials regarding the Board and its operations.

Travel Required

Occasional travel - There may be occasional travel.

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Applicant's Renunciation of Underlying International Registration Results in Judgment for Opposer

WHB Licensing, owner of the mark BRAUM'S for restaurant services and various food items, opposed a Section 66(a) application (request for extension of protection) to register the mark BRAM'S, in design form, for restaurant services and various food items. Applicant Ladage Beheer BV, a Netherlands limited liability company, based its U.S. application solely on its International Registration. Applicant renounced its International Registration (effective June 18, 2018), and on July 26, 2018 the International Bureau of WIPO transmitted to the USPTO  a NOTIFICATION OF DEATH OF INTERNATIONAL REGISTRATION. The USPTO issued a Notice of Abandonment on July 28, 2018. WHB Licensing, LP v. Ladage Beheer BV, Opposition No. 91237279 (August 8, 2018) [not precedential].

Trademark Rule 7.30 states:

When the International Bureau notifies the Office of the cancellation or expiration of an international registration, in whole or in part, the Office shall cancel, in whole or in part, the corresponding pending or registered extension of protection to the United States. The date of cancellation of an extension of protection or relevant part shall be the expiration of the corresponding international registration or relevant part.

Consequently applicant's extension of protection is considered cancelled as of June 16, 2018 and the subject application stand abandoned. Rule 2.135 provides that if an applicant in an inter partes proceeding files an abandonment without the written consent of the other party, judgment shall be entered against applicant. And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Braum's has some 300 stores in operation in Oklahoma, Texas, Kansas, Arkansas, and Missouri.

Text Copyright John L. Welch 2018.

Finding PILLOW PODS Confusable With PILLOW PAWS for Socks, TTAB Grants Cancellation Petition, Dismisses Section 18 Counterclaim

The Board granted a petition for cancellation of a registration for the mark PILLOW PODS for "socks," finding a likelihood of confusion with the registered mark PILLOW PAWS for "slipper socks, slippers, socks." Respondent's evidence of third-party use and registration of PILLOW-formative marks was not sufficiently voluminous or extensive to seriously weaken the pleaded mark. Respondent's Section 18 counterclaim, seeking to narrow the application and petitioner's registration, was rejected because the amendments would not avoid a likelihood of confusion. Principle Business Enterprises, Inc.v.DML Marketing Group, Ltd., Cancellation No. 92061653 (August 6, 2018) [not precedential] (Opinion by Judge Lorelei Ritchie).

The Goods: Because both the application and the pleaded registration include identical goods (socks), the Board must presume that they travel in the same trade channels to the same classes of customers.

Strength of Petitioner's Mark: Respondent contended that PILLOW is suggestive of petitioner's goods and therefore the pleaded mark is entitled to only a narrow scope of protection. Respondent submitted eleven (11) third-party registrations, with accompanying website evidence, for PILLOW-formative marks for socks and footwear, along with a dictionary definition of "pillow." The Board, however, found that the third-party evidence fell short of the "voluminous" and "extensive" evidence presented in Jack Wolfskin, and therefore the Board accorded this evidence minimal weight. Moreover, respondent's mark was closer to the pleaded mark than any of the third-party marks.

Nonetheless, the Board found PILLOW PAWS to be suggestive because "pillow" suggests that petitioner's goods are soft and comfortable. In short, "PILLOW PAWS is not as conceptually strong as a term that is entirely arbitrary."

The Marks: As we know, when the goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion.

The Board found that the commercial impression of PILLOW PODS is very similar to PILLOW PAWS: "a 'pillow pod' is likely to be perceived by consumers with regard to Respondent’s identified socks as either a cushioned pouch, or a cushioned place to put one’s foot, very much the same as 'pillow paws' is likely to be perceived with regard to Petitioner’s identified socks and slippers as a cushioned place for one’s foot." The marks are also similar in sight and sound.

The Board ruled that this du Pont factor weighed in favor of petitioner.

Conclusion: Finding that petitioner demonstrated a likelihood of confusion by a preponderance of the evidence, the Board granted the petition for cancellation.

Section 18 Counterclaim: Respondent proposed to amend both its registration and the pleaded registration in the event that the Board found amendment necessary to avoid a likelihood of confusion. See, for example, Embarcadero Techs. Inc. v. RStudio Inc., 105 USPQ2d 1825 (TTAB 2013).

Respondent proposed to amend the its registration to "socks excluding newborn baby booties and nonslip socks," while the cited registration would be amended to "nonslip slipper socks, nonslip slippers, nonslip socks, and newborn baby booties with or without a nonslip tread."

Looking to the definitions of "sock," "slipper," and "bootie," the Board found that the amended identifications overlap: infant baby booties are a type of "sock." Furthermore, respondent sells nonslip socks under the same marks as its other socks, indicating that consumers would expect these goods to derive from a single source.

Since the proposed amendments would not avoid a likelihood of confusion, the Board dismissed the Section 18 counterclaim.

Read comments and post your comment here.

TTABlog comment: Section 18 is way under-utilized, in my opinion.

Text Copyright John L. Welch 2018.