H New Media Law Seeks TM Paralegal for Miami Office

H New Media Law is seeking a trademark paralegal to manage a U.S. and International trademark portfolio at its Miami office at 1110 Brickell Avenue. Great pay and benefits. Send resume to Frank Herrera (fherrera at hnewmedia dot com)..

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Twin TTAB Test: Is ALLEN HOTEL Confusable With ETHAN ALLEN for Lodging Services? Is it Geographically Descriptive?

The USPTO refused registration of ALLEN HOTEL for “hotel accommodation services” [HOTEL disclaimed], finding the mark to be primarily geographically descriptive under Section 2(e)(2), and likely to cause confusion with the registered mark ETHAN ALLEN for, inter alia, inn and motel services. Applicant argued that the commonality of “ALLEN” is an insufficient basis for the Section 2(d) refusal, and that there are many geographical locations named “Allen” besides Allen Street in New York City. How do you think this came out? In re Allen Street Owner LLC, Serial No. 87138386 (October 26, 2018) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Likelihood of Confusion: The examining attorney maintained that ALLEN is the dominant portion of applicant’s mark, since “hotel” is disclaimed, and further that “Allen” could be perceived as a surname in both marks. Applicant asserted that ETHAN ALLEN is a well-known furniture company, and therefore consumers are likely to view ETHAN ALLEN as indicating “a hotel that promotes the Ethan Allen lifestyle” featuring ETHAN ALLEN furniture. The Board took judicial notice that Ethan Allen was an early American patriot, the leader of the “Green Mountain Boys” of Vermont.

The Board found that the marks have different meanings and commercial impressions: "ETHAN ALLEN suggests either the widely recognized historical figure, or a hotel emphasizing the Ethan Allen style aesthetic and containing Ethan Allen furnishings." ALLEN HOTEL, however, would be seen as the given name of surname of someone associated with the hotel. Nothing in the record suggested that ALLEN HOTEL would be perceived as a variant of the ETHAN ALLEN mark.
The Board concluded that the differing connotations and commercial impressions of the marks outweighed any similarities in sound and appearance. And so it reversed the Section 2(d) refusal.

Geographical Descriptiveness: The examining attorney issued this refusal after applicant stated that its services will be rendered between Orchard and Allen Streets in New York City. The first prong of the Section 2(e)(2) test requires that the primary significance of the term at issue be the name of a place generally known to the public.

The examining attorney relied on a map showing that “Allen St.” is a street in New York City, a photo of the street, a Wikipedia entry, and two website excerpts discussing “Allen Street Hotel.” According to Wikipedia, the street was named after Brigadier General William Henry Allen, the youngest person to command a ship in the War of 1812. Applicant did not dispute that Allen Street is a geographic location, but contended that it is not well known. Moreover, “ALLEN” by itself has no independent significance, since there are “at least 25 geographic locations named ‘ALLEN’ in the United States.”

The Board agreed with applicant that there are numerous geographic locations named “Allen,” and found that the record did not support a conclusion that applicant’s location is the most prominently associated with the name “Allen.” The Board, therefore, was not convinced that “Allen” primarily identifies a geographic location in New York City that is “known generally to the American purchasing public.”

In this case, the record reflects that Allen has non-geographic significance and can refer to numerous geographic locations. Additionally, the quantity and nature of the evidence regarding Allen Street in New York City does not establish that it is generally known to United States consumers. We lack persuasive evidence showing, for example, that Allen Street has a well-known historical significance, is a popular tourist destination, or has a widely recognized reputation for some other reason. Rather, we find a similarity to the situation in Societe Generale des Eaux Minerales, 3 USPQ2d at 1452, where the Court stated, “[t]here can be no doubt that the PTO has established that Vittel is in fact the name of a small town in the Voges mountain region of France ... but how many people in this country know that?”

And so the Board reversed the Section 2(e)(2) refusal.


Read comments and post your comment here.

TTABlog comment: Suppose applicant had applied to register THE ALLEN HOTEL. Would that have made the path easier?

Text Copyright John L. Welch 2018.

TTAB Finds Photo of Grumpy Cat Merely Descriptive of Grumpy Cat-Related Goods and Services

The Board affirmed two refusals to register the photograph of "Grumpy Cat" shown below, as a trademark for, inter alia, computer apps, paper goods, and stuffed toys, and as a service mark for entertainment services, all featuring "Grumpy Cat," finding the proposed mark to be merely descriptive under Section 2(e)(1). The Board also rejected applicant's claim of acquired distinctiveness under Section 2(f). In re Grumpy Cat Limited, Serial Nos. 85838010 and 85836812 (October 26, 2018) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Mere Descriptiveness: As some may know, "Grumpy Cat" is the nickname given a house cat named "Tardar Sauce," whose frowning image became an Internet meme in 2012. The evidence submitted by Examining Attorney Deborah E. Lobo showed that the applied-for mark is a significant feature or characteristic of the class 9 goods: for example, applicant’s “photo bomb” app allows the user to insert images of Tardar Sauce into photographs. For the class 16 goods, the Tardar Sauce image is used as a significant feature of the stamps, greeting cards and calendars. As to the class 28 stuffed toys, the image on tags or labels attached to those goods “immediately conveys to the consumer information that the stuffed toy or toy animal is a portrayal of Tardar Sauce.” And the subject or content of the class 41 entertainment services focuses on the cat shown in the mark. Therefore, the Board concluded that mark is merely descriptive of the identified goods and services.

Acquired Distinctiveness: Applicant relied on ownership of a prior registration as well as other evidence in claiming acquired distinctiveness.

Applicant’s prior registration covered the identical mark for goods in classes 9, 21, 25, and 28. Applicant claimed, without explanation, that “Class 9 protective covers and cases, mouse pads and magnets are sufficiently similar to its Class 9 downloadable videos and application software; its Class 21 mugs, coffee cups, tea cups and coasters (not of paper) are sufficiently similar to the Class 16 paper goods; its Class 25 clothing is sufficiently similar to its Class 41 entertainment services; and its Class 28 playing cards are sufficiently similar to its Class 28 stuffed or plush toys, action figures, dolls and toy animals.” It pointed to third-party registrations, three for each class, as its only evidence that the goods listed in the prior registration are related to the goods and services in its applications and may emanate from the same source. The Board was unimpressed, concluding that applicant’s prior registration did not support the Section 2(f) claim.

Applicant also submitted three declarations attesting to the fame, media attention, and licensing arrangements related to Grumpy Cat, contending that:

[T]hrough the Internet (where the meme of Grumpy Cat originated), “…a new trademark may achieve wide usage and ‘secondary meaning’ within a matter of days or weeks, compared to the many years required in the days of more leisurely advertising.” (quoting 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition at §§ 15:54 and 15:56 (4th ed.)). Indeed, “…the Internet has made it easier than ever to reach millions of people around the globe in a matter of seconds….” Id. Accordingly, the quick viral rise of the Mark on the Internet and its resulting use in advertising and on goods and services … should be enough length of use to lend towards a showing of acquired distinctiveness.

The Board pointed out that “evidence of acquired distinctiveness must relate to the specific mark and the goods and services for which registration is sought and not relate to recognition of Tardar Sauce herself, as an ‘Internet celebrity.’” Applicant’s evidence of commercial success did not make that connection.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: I suppose this decision will make that stupid cat even grumpier.

Text Copyright John L. Welch 2018.

Does a Law School Professor Have Standing to Oppose RAPUNZEL for Dolls and Toy Figures?

[This guest post was written by Kira-Khanh McCarthy, a 2L at University of Notre Dame Law School]. Here’s an interesting TTAB case to keep your eye on! Applicant, United Trademark Holdings, Inc., filed for registration of the mark RAPUNZEL for dolls and toy figures. Rebecca Curtin, a law professor, timely filed a Notice of Opposition, alleging that Applicant’s mark failed to function as a trademark under Sections 1, 2, and 45 of the Trademark Act on the grounds that it is purely informational and highly descriptive, if not generic, of the goods. Opposer Curtin argued that Rapunzel is “synonymous with the name of a well-known childhood fairytale character” and has long been in the public domain. In addition, Opposer Curtin claimed that the mark is functional under Section 2(e)(5) since it identifies the fictional character Rapunzel. Rebecca Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 [(documents here].

In response, Applicant United filed a Motion to Dismiss pursuant to Fed. R. Civ. P. 12(b)(6) for lack of standing. Applicant asserted that Opposer is a law professor at Suffolk University Law School (in Boston), and thus is not a competitor and “has not used the mark in connection with the manufacture or sale of dolls.” In fact, Applicant accused Professor Curtin of using the opposition proceeding as an academic exercise for students in the law school's IP clinic. Applicant therefore urged the Board to dismiss the opposition since Opposer did not sufficiently plead a “real interest” or a “reasonable belief in damage.” See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).

Professor Curtin then amended the opposition and contended that she does have a real interest in the proceedings even though she is not a competitor or manufacturer of the goods at issue. The Professor attested that she is a consumer of fairytale-themed goods and as such would be irreparably harmed by the registration of the mark RAPUNZEL. Indeed, the amended opposition cited two cases where opposers had standing despite the fact that they were not competitors. The Federal Circuit in Ritchie v. Simpson held that the plaintiff had standing to oppose a scandalous mark because his view was that of the affected public. 170 F.3d 1092 (Fed. Cir. 1999). Likewise, the Board in Andrew R. Flanders v. Dimarzio, Inc. found that a musician/consumer had standing to cancel the registration of cream-colored guitar picks, due to his purchasing ability. 2017 WL 3718339 (TTAB July 25, 2017) [not precedential].

Applicant’s response to the amended opposition attempts to distinguish both Ritchie and Flanders from the present case. It continues to argue that Opposer is simply a member of the general public and should not have standing to oppose the registration of the RAPUNZEL mark. The TTAB will likely not deliver a decision on this issue for another few months.

Considering Standing: In a recent case, the Supreme Court redefined the requirements for standing in Lanham Act cases. A plaintiff must “come within a zone of interest” to sue under 15 U.S.C. § 1125(a). See Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014). In order to determine whether a plaintiff falls within this zone of interest, a court should use traditional tools of statutory interpretation. Id. at 127. Consequently, the TTAB’s decision in this case may well hinge on whether Professor Curtin’s connection to the goods fits within the statutory language of Section 45 of the Trademark Act, and in particular the statement of the intent of the Lahnam Act:

The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations (emphasis added).

Letters of Protest: Here, Opposer filed a Notice of Opposition to prevent allowing one manufacturer to register RAPUNZEL for dolls and toy figures. However, challengers of pending marks may also file a Letter of Protest through the PTO. Any individual can file a Letter of Protest in order to provide an examining attorney with helpful documents and registrations. If a mark has been published, letters of protest will need to include clear evidence that the PTO erred in approving the mark for publication. For more information on the LOP process, go here.

Read comments and post your comment here.

TTABlog comment: Note that Disney obtained an extension of time to oppose the RAPUNZEL application, but did not pursue it. Why do you think so? BTW: How did this mark get past the examining attorney?

Kira comment: Special shout-out to Professor Robin Effron, my visiting 1L civil procedure professor! -- https://imgflip.com/i/kqmu6

Text Copyright Kira-Khanh McCarthy and John L. Welch 2018.

TTAB Grants Section 2(d) Petition for Cancellation Despite 20 Years of Concurrent Use Without Confusion

The Board granted a petition for cancellation of a registration for the mark CARDIO TONE, finding the mark likely to cause confusion with the registered mark CARDITONE, both for nutritional supplements. Although the record evidence showed more than 20 years of concurrent use of the marks without any reported incidents of confusion, the Board found that factor to be outweighed by the similarity of the marks, the partial identity of the goods, and the presumed identity of channels of trade and classes of consumers. Ayush Herbs, Inc. v. MDR Fitness Corp., Cancellation No. 92061544 (October 24, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Priority: Since both parties own registrations, priority of use was in issue. See Brewski Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1284 (TTAB 1998).  Respondent's testimony indicated first use in 1997, but petitioner's testimony and evidence proved use by at least 1995.

Likelihood of confusion Because the involved goods are in part identical, the Board must presume that those identical goods travel in the same channels of trade to the same classes of consumers. The facts that petitioner's products are Ayervedic and respondent's are not, and that the products are not sold by the same retailers were irrelevant, since there were no such limitations in the identifications of goods.

Respondent submitted 70 third-party registration for marks containing the term CARDIO for supplements, but only one containing the term CARDI. The Board concluded that "Cardio" is merely descriptive of supplements. But the evidence regarding "Cardi" was "not nearly as persuasive as that in either Jack Wolfskin or Juice Generation. In any event, none of the 71 registered marks submitted by respondent was as close to petitioner's mark as is CARDIO TONE since none contained the word "Tone."

The Board found the marks at issue to be similar in sound and appearance, and that each connote "something to do with heart health." Although each mark may be suggestive, "they convey the same basic idea - heart fitness - and, thus, engender similar commercial impressions"

Turning to the issue of lack of actual confusion, the Board observed that "[t]he absence of any reported instances of actual confusion is meaningful only if the record indicates appreciable and continuous use by Respondent of its mark for a significant period of time in the same markets as those served by Petitioner under its mark. *** In other words ... there must have been a reasonable opportunity for confusion to have occurred.

Respondent pointed out that petitioner's product is Ayurvedic while respondent's is not, and therefore "there is no opportunity for consumers to choose between CARDITONE and CARDIO TONE products." Moreover, respondent always displays the CARDIO TONE mark in close conjunction with its house marks MDR and "Medical Design Research." And respondent does not sell its products in brick-and-mortar stores. Petitioner's testimony indicated that it was not aware of any store or health care practitioner, or any on-line retailer, who sold the products of both parties.

The Board found that this lack of actual confusion weighed against finding a likelihood of confusion. It explained in a footnote the seeming contradiction between the presumption that the channels of trade overlap and its consideration of the actual channels of trade in connection with the issue of lack of actual confusion:

Because the description of goods are in part identical, we must presume that the channels of trade are the same for that Du Pont factor. *** However, in determining whether there has been a reasonable opportunity for confusion to have occurred, we must consider the evidence regarding how the goods actually have been sold. Therefore, we assess the evidence regarding the channels of trade and classes of consumers; otherwise, we would be make a finding of fact regarding the lack of any reported instances of confusion based on a presumption rather than reality.

Conclusion: Concluding that the lack of actual confusion is "not so clear cut as to outweigh the other du Pont factors, the Board found that respondent's mark is likely to cause confusion vis-a-vis petitioner's mark, and so it granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: Lesson: the sooner you register, the better.

Text Copyright John L. Welch 2018.

USPTO Proposes Rule Change Requiring Foreign Applicants Be Represented By US Licensed Attorney

The USPTO is proposing to change the Trademark Rules of Practice to require that foreign applicants be represented by a U.S. licensed attorney. [IMHO, this proposal appears to be a reaction to the flood of applications filed by Chinese individuals, and is designed to improve the quality of these application both by the efforts of the U.S. attorney representing the applicant, and by the enforcement of the USPTO disciplinary rules to hold the attorney accountable.] According to the announcement (here) a Notice of Proposed Rulemaking will be published on November 1, 2018, followed by a three-month comment period.

Abstract

The United States Patent and Trademark Office (USPTO) proposes to amend its rules to require foreign trademark applicants and registrants to be represented by a U.S. licensed attorney, i.e. an attorney in good standing of the bar of the highest court of a State in the U.S. (including the District of Columbia and any Commonwealth or territory of the U.S.) to file trademark documents with the USPTO. A requirement that foreigners be represented by a U.S. licensed attorney will (i) ensure that the USPTO can effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters; (ii) provide greater confidence to foreign applicants and the public that registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims; and (iii) aid USPTO efforts to improve accuracy of the U.S. Trademark Register.

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

ABBY & Hippo Design for Plush Toys Confusable with ABBY for Dolls, Says TTAB

The Board affirmed a Section 2(d) refusal of the word+design mark shown immediately below, for "plush toys," finding the mark likely to cause confusion with the registered mark ABBY, in standard character form, for "toys, namely, dolls, fashion dolls, electronic dolls, animated dolls, doll clothing and doll accessories." Applicant argued that the hippopotamus figure is the dominant element of its mark, but the Board disagreed. In re ChuChu TV Studios, aka ChuChu TV, Serial No. 87005177 (October 19, 2018) [not precedential] (Opinion by Judge Francie R. Gorowitz).

The Goods: The Board had little difficulty finding the involved goods to be related. Examining Attorney David Gearhart submitted numerous webpages showing that dolls and plush toys are sold on manufacturers' websites. While plush toys are typically animals, a doll in the shape of a human figure can also be "plush" (i.e., "stuffed."). See, for example, the Disney store:

The Marks: The Board observed that in a composites word+design mark, the verbal portion of the mark is the part most likely to indicate the origin of the goods. Applicant relied on In re Covalinski, 113 USPQ2d 1166 (TTAB 2014), where the the cited mark RACEGIRL was found to be different from the applicant's mark, shown here:


There, the Board noted, the literal portion of the mark REDNECK RACEGIRL was "difficult to distinguish from the design portion of the mark." Here, however, ABBY is separate and apart from the hippo design, and even though considerably smaller than the hippo, it is "readily discernible, and its location and use in the manner of a caption makes it appear to be the 'name' of the depicted hippo." The consumer is drawn to the word ABBY and invited to identify the hippo by that name.

Thus the word ABBY in applicant's mark is "considerably different than the words REDNECK RACEGIRL in Covalinski."

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

Read comments and post your comment here.

TTABlog comment: The word ABBY is awfully small in applicant's mark. Do you think consumers might perceive applicant's mark as the "hippo" brand?

Text Copyright John L. Welch 2018.

"OUR LAWYERS ARE DOCTORS" Fails to Function as a Service Mark, Says TTAB

The Board affirmed a refusal to register OUR LAWYERS ARE DOCTORS for legal services, finding that the phrase fails to function as a service mark and, alternatively, is merely descriptive of the services. Examining Attorney Meghan Reinhart submitted evidence showing "fairly widespread use of similar phrases in advertising for legal services" and Applicant Wilson provided no evidence that the phrase is perceived as a source indicator. In re Michael Moureau Wilson, Serial No. 87240575 (October 19, 2018) [not precedential] (Opinion by Judge Linda A. Kuczma).

Failure to Function: The Board observed that the more commonly a slogan is used, the less likely it will be recognized as a trademark or services mark. The record evidence showed that lawyers who are also doctors commonly use those terms together, sometimes in the phrase identical or very similar to the applied-for mark. The Examining Attorney therefore maintained that the phrase is merely informational.

Applicant argued that others have no competitive need to use the term because the number of lawyer/doctors who use the phrase is de minimis: in fact, the PTO's evidence included only one entity using the exact same phrase.

The Board, looking at all the evidence showing that "lawyers commonly tout that they are also doctors," found that the proposed mark "merely informs consumers that attorneys providing Applicant's legal services are also doctors."

There is nothing unusual about the phrase, its meaning or the way in which it is presented in connection with the identified legal services. Consumers will not perceive the applied-for mark as identifying the source of Applicant’s services. Rather, they will understand the wording to mean that Applicant’s lawyers are doctors.

Applicant pointed to 23 existing registrations for marks having the structure "OUR ___ ARE ____," claiming that consumers are accustomed to seeing such phrases used as trademarks, even if they convey some information. The Board was unimpressed. Only 12 have the same format as the applied-for mark, and only four of those are comprised of "Our ___ Are ___." One of those four marks, OUR BOARDS ARE BETTER, is a laudatory mark registered under Section 2(f). The remaining three are suggestive and thus not analogous to applicant's descriptive mark. Furthermore, applicant's mark contains two nouns, both of which describe the same person, unlike the marks applicant relies on. In any case, the Board pointed out once again that each case must be decided on its own merits.

Applicant insisted that its slogan is set apart from other text on its specimen of use, but the Board noted that there was no evidence regarding the perceptions of applicant's clients. The placement of the slogan is not alone enough to establish that it serves as a mark.

Like such unregistrable slogans as No More RINOs!, ONCE A MARINE, ALWAYS A MARINE, DRIVE SAFELY, AND THINK GREEN, the applied-for mark would be perceived as a merely informational slogan.

Mere Descriptiveness: No imagination, thought, or perception is necessary to understand the description provided by the applied-for mark. The terms "lawyers" and "doctors" describe features or characteristics of applicant's services. In short, there is "no doubt" that the applied-for mark describes applicant's services.

Applicant claimed acquired distinctiveness under Section 2(f), based solely on use of the applied-for mark for at least five years. He claimed more than 13 years of use and "extensive goodwill," but the latter claim was unsupported by any evidence. The Board found that the phrase is so descriptive of the services that the more-than-five-years of use is not sufficient under Section 2(f).

And so the Board affirmed the two refusals to register.

Read comments and post your comment here.

TTABlog comment: Aren't all lawyers Juris Doctors?

What about OUR LAWYERS ARE ATTORNEYS? That might cause a consumer to stop and think!

BTW: Is this a WYHA? I say yes.

Text Copyright John L. Welch 2018.

TTAB Grants Apple's Motion to Dismiss Seven Fraud Claims and Two Others

The Board granted Apple Inc.'s motion to dismiss all nine counts of this petition for cancellation of the mark APPLE for various educational and training services (in class 41). Petitioner Charles Bertini, appearing pro se, alleged seven counts of fraud, abandonment, and likelihood of confusion with his asserted common law mark APPLE JAZZ for entertainment services. However, the Board granted leave to petitioner to re-plead the abandonment claim and several of the fraud claims should petitioner be able to allege sufficient facts to support them. Charles Bertini v. Apple Inc., Cancellation No. 92068213 (October 9, 2018) [not precedential].

Likelihood of confusion: Because Apple's registration was more than five-years old [i.e., a "mature" registration, as I like to say - ed.] at the time the petition for cancellation was filed, Petitioner Bertini's Section 2(d) claim was time-barred by Section 14 of the Trademark Act.

Bertini argued that because Apple pleaded ownership of the subject registration in an affirmative defense (on the issue of priority) in another opposition proceeding brought by Bertini, the 5-year statute of limitations was tolled. Not so, said the Board. While tolling may be invoked when a registration is pleaded in an affirmative claim against a party (See TBMP § 307.02(c)(1) and cases cited therein), it is not true when the registration is merely included in an affirmative defense.

Fraud:  Bertini's first fraud claim was based on the now-discarded "knew or should have known standard," asserting that Apple's declaration that it believed itself to be owner of the applied-for mark was false and fraudulent. However, there was no evidence that others had clearly established legal rights in marks superior to Apple's rights and no evidence that Apple knew so and believed that consumers would be confused by the respective uses of the marks. See Daniel J. Quirk, Inc. v. Village Car Co., 120 USPQ2d 1146, 1149 (TTAB 2016) (“Fraud will not lie against an applicant who holds an honest, good faith belief in its right to register a mark and signs an application with the statutorily prescribed ownership statement which is phrased in terms of subjective belief.”). The Board cited Professor McCarthy's observation that:

[A]n allegation of fraud based in the application verification is a serious charge which is not easily proven ... Applicants and registrants should not be subjected to harassment by loosely framed and ill-considered charges of fraud. It is apparent that the courts and the Trademark Board have little patience with ill-founded fraud charges. 6 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 31:77 (5th ed. 2018).

The next three fraud claims were based on Apple's alleged failure to use the mark APPLE on or before the filing of its statement of use, but the Board pointed out that since Apple had also applied for an insurance extension of time, Apple had until the extended date to prove use. Furthermore, Bertini's allegations that the alleged false statements were made with the knowledge and intent to obtain a registration were conclusory and not supported by sufficient facts.

The fifth and sixth fraud claims asserted that Apple's specimens submitted with its statement of use and with its Section 8 & 15 declaration did not show use of the mark functioning as a service mark for the services, and were fraudulently submitted. The Board pointed out that this does not constitute an available claim: "It is well-settled that the adequacy of specimens submitted during the prosecution of an application is solely a matter of ex parte examination and, therefore, does not constitute grounds for opposing the registration of a mark."

The seventh fraud count was based on an allegedly false statement in Apple's Section 8 & 15 declaration that: "[T]here is no proceeding involving said rights pending and not finally disposed of either in the United States Patent and Trademark Office or in a court." Bertini again pointed to the other proceeding, but the Board point out that Apple's rights in the registered mark were not challenged in that proceeding; the registration was raised only as part of Apple's affirmative defense. [In any case, how is that statement, which relates only to Section 15 incontestability, relevant to the Section 8 requirement of continued use? In other words, how is a false statement in a Section 15 declaration material to the validity of the registration? - ed.].

Abandonment: Bertini failed to plead specific facts regarding Apple's alleged abandonment, but alleged only that the mark has not been used with "at least some services." The Board found that insufficient to satisfy the requirements of notice pleading.

Order: The Board allowed Petitioner until October 31, 2018 to file an amended petition to cancel with a legally sufficient claim of abandonment, and also to file an amended fraud claim based on the filing of the statement of use and Respondent’s failure to use the mark in connection with particular services "if Petitioner is able to allege sufficient facts to support a conclusion that Respondent intended to deceive the USPTO."

The first, fifth, sixth and seventh fraud counts were dismissed with prejudice as being either implausible or futile based on the alleged facts and relevant law. The Board advised Bertini to "review Rule 11 of the Federal Rules of Civil Procedure and ensure that he has a sound factual basis for alleging any grounds to refuse registration other than abandonment."

The likelihood of confusion claim was dismissed with prejudice, since the claim was untimely and any attempted amendment of the petition would be futile.

Read comments and post your comment here.

TTABlog comment: Again I suggest that the Board hold a Markman-type hearing as soon as fraud is pleaded, in order that these bogus claims can be discarded as early as possible in the proceeding.

PS: as a commenter noted, if one asks for Board participation in the discovery/settlement conference, the fraud claim(s) can be reviewed at that time. I've used that approach successfully on several occasions to get rid of fraud claims.

Text Copyright John L. Welch 2018.

AMERICAN VETERINARY NURSES ASSOCIATION Geographically Descriptive of Veterinary Services, Says TTAB

The Board affirmed a Section 2(e)(2) refusal of the mark AMERICAN VETERINARY NURSES ASSOCIATION, finding it to be primarily geographically descriptive of "veterinary medicine services." Applicant argued that the term AMERICAN has multiple different connotations and therefore that the mark as a whole is merely suggestive of the services. The Board disagreed. In re National Association of Veterinary Technicians in America, Inc., 2019 USPQ2d 269108 (TTAB 2019) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Section 2(e)(2) bar requires proof of the following:

1. the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public;
2. the source of the services is the place named in the mark; and
3. the public would make an association between the services and the place named in the mark by believing that the services originate in that place.

"The addition of highly descriptive matter to a geographic term does not detract from the mark’s primary significance as being geographically descriptive."

Applicant feebly argued that AMERICAN is a nebulous term because it could mean: (1) an association of veterinary nurses living in the United States; (2) an association of veterinary nurses from the United States (but perhaps no longer living in the United States); or (3) an association for veterinary nurses who speak English (vs. Chinese, French, etc.). The Board was unconvinced. "Even if this ambiguity is accepted, both interpretations are still a geographic meaning of the term, as opposed to any other type of meaning."
 
The Board noted that the words AMERICA or AMERICAN are sometimes found not to be primarily geographically descriptive, provided the word takes on an arbitrary meaning: for example, THE AMERICAN GIRL for shoes; AMERICAN PLAN CORPORATION for insurance brokerage services; THE GREAT AMERICAN BASH for wrestling exhibitions. In those cases, "the mere introduction of a subtle nuance may remove a mark from the primarily geographically descriptive category. That is, the overall commercial impression is no longer primarily geographic due to a new double meaning or another suggestive meaning." The Board, however, saw no new or double meaning here. "

Applicant’s mark contains a geographical component, “AMERICAN,” that is primarily geographically descriptive of the services within the meaning of Section 2(e)(2) of the Trademark Act. Indeed, if Applicant’s arguments were accepted, virtually every use of the term AMERICAN would become suggestive. In this case, the mark presents a textbook example of the unadorned use of the term AMERICAN to primarily denote the United States as the origin of services.

Applicant also contended that is use of VETERINARY NURSES is distinctive and exclusive, but the Board again disagreed, pointing to third-party websites using the same phrase. Even if applicant were the first and only user of that phrase, it is still merely descriptive of the services.

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

Read comments and post your comment here.

TTABlog comment: AMERICAN BASH seems geographically descriptive to me. Isn't the bash held in America?

Text Copyright John L. Welch 2018.

TTAB Test: Is "S&M" Merely Descriptive of Sex Therapy Services?

[This is a family blog, but perhaps your children shouldn't read this one. Nor should you read it to them. Unless you're prepared to answer a lot of questions.] The USPTO refused to register the mark S&M, in standard character form, for "sex therapy services," finding the mark to be merely descriptive under Section 2(e)(1). Applicant maintained that it has never provided services that involve sadomasochism. How do you think this came out? In re Therapy by Amanda LLC, Serial No. 87771775 (September 21, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Board relied on, inter alia, a dictionary definition of sex therapy ("treatment of sexual disorders that have psychological causes, employing psychiatric counseling, behavior modification and education") and on applicant's own website ("Sex Therapy: Let’s address any concerns you might have about pleasure, sexual functioning, intimacy, or bedroom activities. We embody a sex-positive philosophy and are fully welcoming to all lifestyles, genders, kinks, and more.").

S&M is an abbreviation for "sadism and masochism or "sadomasochism," defined as: "1. Interaction, especially sexual activity, in which one person enjoys inflicting physical or mental suffering on another person, who derives pleasure from experiencing pain. 2. Gratification, especially sexual, gained through inflicting or receiving pain; sadism and masochism combined."

S&M is synonymous with sadism and masochism or sadomasochism which is an approach to sexual interaction that may be treated through, or otherwise discussed in, sex therapy and, therefore, S&M is merely descriptive of a subject treated by Applicant’s services.

Applicant argued that "there is no evidence that the services at issue are ever associated in any way with 'sadism and masochism,'" but the Board pointed to several websites, including applicant's own website stating that Applicant addresses any concerns potential patients have about "pleasure, sexual functioning, intimacy, or bedroom activities," including all lifestyles and "kinks." Noting the definition of "kink" as "a bizarre or unconventional sexual preference or behavior," the Board concluded that "kinks" could include S&M. [I thought "kinks" was a British rock band - ed.].

Finally, as to applicant's assertion that it has never provided services that involve sadomasochism, the Board pointed out that, even if that is true, the determination of whether Applicant’s mark is merely descriptive must be based on the recitation of services set forth in the application.

Because the services at issue are sex therapy services and sex therapy services may include counseling about S&M, the mark S&M used in connection with those services merely describes an approach to sexual interaction that Applicant might treat or otherwise discuss.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Perhaps applicant intended S&M to stand for "Sex and Magic." But an applicant's intent is irrelevant to consumer perception, isn't it?

Text Copyright John L. Welch 2018.

TTAB Dismisses SUPERCORE Opposition: No Likelihood of Confusion with U-CORE and No Intent to Deceive in Misuse of the “R” Symbol

[This guest post was written by Kira-Khanh McCarthy, a 2L at University of Notre Dame Law School]. In a 30-page opinion, the Board dismissed this Section 2(d) and Section 29 opposition to registration of the mark SUPERCORE in light of WFI Global’s registered mark U-CORE, both marks in standard characters and both for insulating materials and polyurethanes. Upon balancing the relevant du Pont factors, the Board found there was no likelihood of confusion. In addition, the Board ruled that while Applicant had misused the federal registration symbol, there was no evidence that it intended to deceive the public. WFI Global, LLC v. MCNS Polyurethanes USA Inc., Opposition No. 91227865 (September 28, 2018) [not precedential] (Opinion by Judge Geogre C. Pologeorgis).

Likelihood of Confusion: The Board proceeded with a lengthy likelihood of confusion analysis discussing all relevant du Pont factors. It found that the parties’ goods are “identical in part and therefore presumably move in the same trade channels and [are] offered to the same classes of purchasers.” Third-party registration evidence showed that the term “CORE” is suggestive of insulation products and, although WFI Global had achieved some commercial success, the fifth du Pont factor “only slightly favors Opposer, if at all.”

As to the marks, the Board found them to be “more dissimilar than similar in appearance, sound, meaning and commercial impression.” It focused especially on “the suggestive nature of the shared ‘—CORE’ component…as well as the suggestive nature of the ‘U—’ prefix in Opposer’s mark,” the designation “U—” being a recognized term in the fenestration industry.

Accordingly, the Board concluded that Opposer had failed to establish its Section 2(d) claim by a preponderance of the evidence.

Misuse of the Registration Symbol: Improper use of registration notice with an unregistered mark, if done with the intent to deceive, will be grounds for refusing an otherwise registrable mark. Copeland’s Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298 (Fed. Cir. 1991).

WFI Global pointed to evidence that Applicant improperly used the registration symbol with the SUPERCORE mark on proposed advertising materials before the mark had been registered. There was also evidence that Applicant continued to use the registration symbol with its mark even after being put on notice of alleged improper use (by the filing of the Notice of Opposition).

Applicant contended that it took remedial action as soon as it was informed that it should not use the trademark registration symbol prior to actual registration of its mark. Moreover, Applicant asserted that it was “unfamiliar with U.S. trademark procedures and the use of appropriate symbols” and it “never intended to deceive the public or any other person or entity in the trade into believing that its mark was registered.”

The Board found that Opposer failed to present evidence that Applicant expressly intended to deceive the public. In addition, it noted that “Applicant’s confusion regarding the proper use of the registration symbol falls within the ambit of the types of misunderstandings that the Office lists in the TMEP as ‘common reasons for improper use…that do not indicate fraud.’” See TMEP Section 906.02. Therefore, the Board dismissed the Section 29 claim.

Conclusion: Finding no likelihood of confusion and no intent to deceive while misusing the federal registration symbol, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: I guess you could say that opposer's claims were defenestrated.

The Defenestration of Prague
Text Copyright Kira-Khanh McCarthy and John L. Welch 2018.

TTAB Test: Is The Design/Stylization of This USA SUPPLEMENTS Mark Inherently Distinctive?

This patriotic applicant sought registration of the word+design mark shown below for "dietary and nutritional supplements" [USA SUPPLEMENTS disclaimed]. Examining Attorney Ira Goodsaid issued a final refusal on the ground that Applicant’s mark, as a whole, is primarily geographically descriptive of the identified goods. By its disclaimer, applicant conceded that USA SUPPLEMENTS is geographically descriptive. But are the stylized lettering and the design element inherently distinctive so that the mark is registrable on the Principal Register? How do you think this came out? In re United States of America Supplements, LLC, Serial No. 87737243 (September 18, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).

As the Board stated in In re Sadoru Group, Ltd., 105 USPQ2d 1484, 1486 (TTAB 2012):

A display of descriptive or otherwise unregistrable matter is not registrable on the Principal Register unless the design features of the asserted mark create an impression on the purchasers separate and apart from the impression made by the words themselves, or if it can be shown by evidence that the particular display which the applicant has adopted has acquired distinctiveness.

As to the literal portion of the mark, the Board concluded that "the block-style lettering comprising the wording USA SUPPLEMENTS does not convey to the consumers any source-indicating function." The Board distinguished four cases cited by applicant that involved more stylized and distinctive marks, including these two:




As to the design element, the Board observed that "common geometric shapes such as circles, ovals, rectangles, triangles, diamonds and stars, when used as backgrounds for the display of word or letter marks, are not regarded as trademarks for the goods to which they are applied absent evidence of distinctiveness of the design alone." Here, the design element, consisting of two stacked parallelograms, "merely serves as a background carrier for the literal portion of Applicant’s mark."

Although applicant did not make a claim of acquired distinctiveness under Section 2(f), the Board searched the record for any evidence of same. Finding none, it understandably concluded that the applied-for mark had not achieved acquired distinctiveness.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2018.

TTAB Test: Is "I.W. SUISSE" Confusable with the SWISS Certification Mark, Both for Watches?

The USPTO refused registration of the mark I.W. SUISSE for "Clocks and watches; Parts for watches; Watch bands and straps; all of which are of Swiss origin as defined by the Swiss Ordinance governing the use of the appellation 'Switzerland' or 'Swiss' for watches, timepiece dial faces, and parts for timepieces made in Switzerland," finding the mark likely to cause confusion with the registered certification mark SWISS for “Horological and chronometric instruments, namely, watches, clocks and their component parts and fittings thereof” in Class A. According to the registration, "[t]he certification mark, as used by persons authorized by the certifier, certifies geographical origin of the goods in Switzerland." How do you think this came out? In re Pearl 9 Group LLC, Serial No. 86539117 (October 11, 2018) [not precedential] (Opinion by Judge Lorelei Ritchie).

The Board first pointed out that applications and procedures for certification marks "shall conform as nearly as practicable to those prescribed for the registration of trademarks." Section 1054 of the Trademark Act. The Board has observed that classification as a certification mark "has very little effect on our determination as to whether or not there is a likelihood of confusion."

The test for determining likelihood of confusion with respect to certification marks is the same as that applied to trademarks, i.e., the du Pont analysis. However, because the certification mark owner does not itself use the mark, the question of whether there is a likelihood of confusion is based on a comparison of the mark as applied to the goods or services of the certification mark users. (citations omitted). Other issues relating to the goods and services, including the channels of trade and purchasers therefor, are determined from the standpoint of the users as well. (quoting In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012)).

Because the identified goods are legally identical, the Board must presume that they travel in the same channels of trade to the same classes of consumers.

As to the marks, the Board noted the dictionary definitions of SUISSE (the French name for Switzerland) and SWISS (a native or inhabitant of Switzerland). "Thus, the term SUISSE is understood as referring to the country of Switzerland, from which SWISS things come." Applicant conceded that the terms are "no doubt related," but they are not identical, since SWISS refers to the people, whereas SUISSE refer to the region. The Board was not impressed, finding the terms to be highly similar in commercial impression: "clocks, watches, and their component parts that are Swiss, because they originate from Switzerland."

Observing that there is no correct pronunciation of a trademark that is not a recognized word, the Board found that SUISSE may be pronounced the same as SWISS.

Citing CAFC and Board precedent, Applicant argued that the first term in its mark is most likely to be remembered and noticed. It maintained that "I.W." stands for "International Watchman," the name of its company, and that International Watchman is a well-knows and very successful watch brand. The Board, however, pointed out that addition of a house mark does not necessarily avoid likelihood of confusion, and may enhance it.

Finally, applicant argued that the cited mark SWISS is weak because it is "merely descriptive." The Board pointed out, however, that Section 2(e)(2), which bars registration of marks that are primarily geographically descriptive, specifically exempts "indications of regional origin." Section 4 of the Trademark Act provides for registration of certification marks, "including indications of regional origin."

The Board concluded that consumers are likely to perceive I.W. SUISSE as a variant of the certification mark SWISS for the same goods, and so it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: The SWISS certification mark registration survived a challenge in 2012 on five grounds, including genericness, in Swiss Watch International, Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731 (TTAB 2012) [precedential]. [TTABlogged here].

Text Copyright John L. Welch 2018.

TTAB Test: Is YAMSAFER (Arabic) Merely Descriptive of Travel Agency Services?

Almosafer Travel petitioned to cancel a registration for the mark YAMSAFER for travel agency services, on the ground of mere descriptiveness. The registration states that the English translation of YAMSAFER, an anglicized version of an Arabic word, is YOU THE TRAVELER. Does the doctrine of foreign equivalents apply to Arabic? How do you think this came out? Almosafer Travel and Tourism Company v. Yamsafer Inc. dba Yamsafer, Cancellation No. 92063145 (October 5, 2018) [not precedential] (Opinion by Judge Thomas W. Wellington).

Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine, inter alia, descriptiveness. The doctrine applies when ordinary American consumers, including those proficient in the foreign language, would stop and translate the word into English.

Data from the U.S Census Bureau indicated that Arabic is one of the top ten commonly spoken foreign languages in the United States as of 2017. More than 924,000 people speak Arabic at home, of whom more than 500,000 also speak English "very well" or better. Therefore the doctrine of foreign equivalents is applicable.

The Board then turned to the question of the meaning of YAMSAFER. Neither party introduced a translation of the Arabic term from an authoritative source. Respondent admitted in its discovery responses that YAMSAFER means "you the traveler" and two other admissions indicated that YAMSAVER is "a transliteration of 'the same or nearly identical Arabic word' that means 'traveler.'"

The word "traveler" is merely descriptive of the intended consumer of respondent's travel services. The Board saw little meaningful difference whether YAMSAFER means "traveler" or "you the traveler," since "the same essential information with descriptive significance will be conveyed to the relevant consumers, namely that the involved services are for 'travelers' or for 'you the traveler.'"

The Board concluded that petitioner had overcome the presumption that the registration is valid, and had proven by a preponderance of the evidence that "consumers of Respondent's travel agency services who are knowledgeable of Arabic would immediately understand YAMSAFER to convey information about a feature of those services, namely, that travelers are the intended recipients of the services." Therefore the mark is merely descriptive of the services, and the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: Is YAMSAFER generic for travel agency services? Petitioner argued that it identifies a "key aspect" of the services, but the Board declined to reach that issue. Note that the Board refused to take judicial notice of printouts from the "Google Translate" website.

If a person knowledgeable were knowledgeable in Arabic (or any foreign language), wouldn't the meaning of the foreign term be recognized and understood by that person even without translating it into English? 

Text Copyright John L. Welch 2018.

CAFC Renders Split Decision in CORN THINS and RICE THINS Appeal: Affirming Mere Descriptiveness But Remanding on Genericness

The CAFC issued a spit decision in this appeal from the TTAB's February 21, 2017 ruling [TTABlogged here] sustaining oppositions to registration of CORN THINS for "crispbread slices predominantly of corn, namely popped corn cakes," and RICE THINS for "crispbread slices primarily made of rice, namely rice cakes" [CORN and RICE disclaimed]. The appellate court upheld the Board's findings that the marks are merely descriptive of the goods and lack acquired distinctiveness. However, the court vacated the Board's conclusion that the marks are not generic for the goods, remanding the case for reconsideration of the genus selected by the Board for its analysis. Real Foods Pty., Ltd. v. Frito-Lay North America, Inc., 128 USPQ2d 1370 (Fed. Cir. 2018) [precedential].



Mere Descriptiveness: Substantial evidence supported the Board's finding that the marks are "highly descriptive" of the goods. The terms "corn" and "rice" are descriptive because "they identify 'ingredients,' which are 'qualities or properties' of Real Foods' goods." The term "thins" describes physical characteristics of the goods. The composite terms do not create a different commercial impression; they immediately convey information of a quality or characteristic of the products.

Appellant Real Foods urged that the marks are double entendres, but the CAFC agreed with the Board that the marks have no additional suggestive meaning, since the word "thins" has been used with food products that are thin in shape. The existence of several third-party registrations for marks containing the word "thins" was of limited probative value, because each trademark application must be examined on its own merits.

Acquired Distinctiveness: Substantial evidence supported the Board's finding that Real Foods had failed to prove that the applied-for marks have acquired distinctiveness. According to the Board, Real Foods "has done little or no advertising," and its sales figures "while  not  insignificant,  are  not  high." Moreover, the use of the term "thins" is not limited to applicant. Opposer Frito Lay's survey, showing less than 10% recognition of the mark as a source indicator, established the "limited recognition of CORN THINS as a mark."

Genericness: The Board identified the genus of the goods as "popped corn cakes" for CORN THINS and "rice cakes" for RICE THINS. The CAFC pointed out, however, that "[A] term can be generic for a genus of goods or services if the relevant public understands the term to refer to a key aspect of that genus." Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1367 (Fed. Cir. 2018).

Furthermore, the question of registrability must be decided on the basis of the identification of the goods set forth in the application, regardless of the actual nature of the applicant's goods. In re Cordua at 602.

The TTAB improperly narrowed the genus of the goods at issue. The Applications initially identified the goods as “[c]rispbread slices predominantly of corn,” J.A. 53, and “crispbread slices primarily made of rice,” J.A. 209. During the opposition proceedings, Real Foods moved to amend the goods as “crispbread slices predominantly of corn, namely popped corn cakes” and “crispbread slices primarily made of rice, namely rice cakes,” J.A. 279 (emphases added), and the TTAB granted Real Foods’ motion to amend, Frito-Lay, 2017 WL 914086, at *21. In its Opinion, the TTAB defined the genus of the goods strictly by reference to the newly added portion of the amended language, identifying the genus as “popped corn cakes” for the CORN THINS mark and “rice cakes” for the RICE THINS mark. Id. at *4.

The Board failed to consider that the applications' popped corn cakes and rice cakes are types of crispbread slices, "which, in turn, the record defines as types of crackers." This was error. "[C]orn cakes and rice cakes are the species, not the genus." The Board provided no reasoning for choosing the narrowed identification of goods as the genus.

The CAFC therefor remanded the case to the Board "to reconsider its selected genus and conduct is genericness analysis in light of that genus."

Read comments and post your comment here.

TTABlog comment: Even though the marks were unregistrable under Section 2(e)(1), Frito-Lay still had standing to pursue its genericness claims, since the subject "marks" were eligible for registration on the Supplemental Register.

BTW, if Real Foods had amended its applications to only "popped corn cakes" and "rice cakes," would this appeal have come out differently? The CAFC seems determined to widen the goal posts when it comes to genericness.

Text Copyright John L. Welch 2018.

WYHA? DIAMONDS ON THE ROCKS Confusable With SILVER ON THE ROCKS for Jewelry, Says TTAB

[This guest post was authored by John S. Strand, Trademark & Litigation Shareholder at Wolf Greenfield.] As we’ve noted before on this blog, third-party registrations and uses may help an applicant overcome a Section 2(d) refusal under Juice Generation and Jack Wolfskin, but it depends on the quantity and quality of those registrations and uses. Here, the mark at issue was DIAMONDS ON THE ROCKS for “jewelry, namely diamond jewelry.” Applicant attempted to overcome a Section 2(d) refused based on a registration for SILVER ON THE ROCKS for “jewelry made in whole or significant part of silver.” Ultimately, the Board stranded the Applicant on the rocks and upheld the Examining Attorney’s rejection, even after applicant presented five common law uses of the phrase ON THE ROCKS. In re Don Vintache Inc., Serial No. 86186795 (Sept. 27, 2018) [not precedential] (Opinion by Judge Francie R. Gorowitz).

The goods and channels of trade: The Board found the involved goods and channels of trade are at least “in-part identical” because the Examining Attorney put forth evidence to show “that both ‘jewelry made in … significant part of silver’ and ‘diamond jewelry’ may encompass silver jewelry containing diamonds.”

The marks: The Board found that the marks at issue differed only in the highly descriptive or generic element – “silver” versus “diamonds.” The Board found the phrase “ON THE ROCKS” to be the dominant, unitary portion of the mark, defined as “(of a drink) served undiluted and with ice cubes” and “(of a relationship or enterprise) experiencing difficulties and likely to fail.”

The Board rejected the Applicant’s attempts to isolate the word “ROCKS” from the unitary phrase “ON THE ROCKS.”

Strength of the cited mark: Applicant contended that the phrase “ON THE ROCKS” was highly diluted. It did not introduce any other registrations, but instead introduced web pages from five different web sites related to various jewelry stores. The Board found that “merely five potential uses of the phrase ‘ON THE ROCKS,’ [was] not sufficient to establish that the phrase carries a suggestive or descriptive connotation in the jewelry industry and thus is weak.” The Board continued by expressly finding that this evidence was “easily distinguishable” from the evidence presented in Juice Generation and Jack Wolfskin.

Interestingly, if the Board would not have found the phrase “ON THE ROCKS” to be unitary, the Board likely would have had to evaluate the strength of the cited mark based on 15 different registrations for jewelry items containing the word “ROCKS” that the Applicant introduced.

Conclusion: The Board found DIAMONDS ON THE ROCKS likely to cause confusion with the cited registered mark SILVER ON THE ROCKS, 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.

Precedential No. 32: Giving "Great Weight" to Two Consent Agreements, TTAB Reverses Section 2(d) Refusal of AMERICAN CONSTELLATION for Cruise Ship Services

Giving "great weight" to two consent agreements, the Board reversed a Section 2(d) refusal of AMERICAN CONSTELLATION, finding the mark not likely to cause confusion with the registered mark CONSTELLATION, both for cruise ship services. The Examining Attorney maintained that these were "naked" consents because they did not state the steps the parties would take to avoid confusion, but the Board pointed out that such terms are not essential for the consents to have probative value. In re American Cruise Lines, Inc., 128 USPQ2d 1157 (TTAB 2018) [precedential] (Opinion by Judge Marc A. Bergsman).

Purchaser Care: Because the services involved are identical, the Board must presume that the channels of trade and the classes of consumers are the same. See In re Viterra. Applicant asserted that selecting a cruise is not an impulse purchase, but is "based on careful research and investigation in light of the purchaser's travel goals and travel budget." Applicant supported this assertion with the testimony of one its officers, and by a statement from Registrant's CEO in one of the consent agreements. The Examining Attorney contended these two (self-serving) statements must be corroborated by additional evidence, but the Board disagreed: the Examining Attorney "disregards that the statements were made by two people who work in the cruise ship industry" and even if the statement of applicant's officer were deemed less persuasive, "the statement of Registrant's officer certainly must be considered probative evidence on this point."

The Board found that customers for the involved services exercise a heightened degree of care when selecting cruise ship services.

The Marks: The Board found that the marks have a similar meaning and convey a similar commercial impression "because the name AMERICAN CONSTELLATION means and engenders the commercial impression of an American star or group." The fact that the cited mark is contained in the applied-for mark increases the similarity between the two.

Consent Agreements: In the second consent agreement, the parties set forth reasons why they believe there will be no likelihood of confusion: they provide cruise ship services in different parts of the world; applicant agreed not to refer to its ship as CONSTELLATION, but always as AMERICAN CONSTELLATION; cruise ship customers exercise heightened care when selecting a cruise; customers know that applicant uses "American" as a house mark; there has been no actual confusion during ten years of coexistence; and confusion is unlikely, since other cruise lines operate many ships under names that share a common term (e.g., LEGEND and LEGEND OF THE SEAS).

The Examining Attorney maintained that the consent agreements were not probative because they were "naked": i.e., they do not describe the arrangements to avoid confusion and do not contain any agreement regarding efforts to avoid confusion. The Board, however, found that the the second consent agreement was "clothed" because it included four reasons why applicant and registrant believed confusion was not likely.

A provision in the consent agreement that the parties agree to make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future may render the agreement more probative, but it is not an essential provision for the agreement to have probative value. *** [N]o authority requires that parties explicitly agree to make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future as a prerequisite to giving some weight to a consent agreement.

In sum, "[w]hile the inclusion of provisions to avoid any potential confusion are preferred and probative in consent agreements, they are not mandatory."

The Board pointed out that the provision that applicant and registrant operate in different areas of the world is not probative, since that restriction is not reflected in the application or cited registration. However, the remaining four (sic) provisions "are probative that the consent agreement reflects the reality of no likelihood of confusion in the marketplace." Therefore the subject consent to use and register "weighs heavily" against a likelihood of confusion.

"[C]lothed” consent agreements where “competitors have clearly thought out their commercial interests” should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.

See In re Four Seasons Hotels Ltd., 26 USPQ2d at 1073 (quoting In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985)); see also du Pont, 177 USPQ at 568 ("A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing lot that it is not.")

Conclusion: The Board found that confusion between the subject marks is not likely, and so it reversed the refusal to register.


Read comments and post your comment here.

TTABlog comment: "Naked consent agreements are effective only in nudist colonies." David Perlsack Perlsack on Trademarks, 3rd ed. 2017.

BTW: The Board lists six reasons that were included in the consent agreements (pp. 11-12), but points out that one is not probative and the remaining "four" are probative (p. 14). Either the Board is mis-counting or I am.

Text Copyright John L. Welch 2018.

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

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


In re Norková, Serial No. 79199465 (September 28, 2018)  [not precedential] (Opinion by Judge Christopher Larkin). [Section 2(d) refusal of ZIPZAP for "“drying racks for laundry; clothes pegs" in view of the identical mark registered for "scissors, in particular hair cutting scissors, manicure scissors, sheet-metal shears, poultry shears, cable scissors; tree pruning shears; nippers, nail nippers, cuticle nippers; files; utility knives and pliers"].

In re Treehouse Pictures, LLC, Serial No, 87142861 (September 28, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis) [Section 2(d) refusal of the TREEHOUSE PICTURES & Design for “Film production; television show production" [PICTURES disclaimed] in view of the registered mark TREEHOUSEDIRECT for "Entertainment services, namely, the provision and distribution of prerecorded television programs and films via a global computer network"].


In re Paradyce Clothing Company, Inc., Serial No. 87562296 (October 1, 2018)  [not precedential] (Opinion by Judge Frances Wolfson) [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].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.