TTAB Posts December 2018 Hearing Schedule

The Trademark Trial and Appeal Board (T-T-A-B not Tee-tab) has scheduled seven (VII) oral hearings for the month of December 2018. The hearings will be held in the Madison Building in Alexandria, Virginia. Briefs and other papers for these cases may be found at TTABVUE via the links provided.



December 4, 2018 - 10 AM: Progrexion IP, Inc. v. One Technologies, LLC, Opposition No. 91233945 [Priority contest over the mark BETTER CREDIT BETTER LIFE for the same goods and services related to credit repair and counseling].

December 4, 2018 - 2 PM: Marc Fisher, LLC v. Bottega Veneta, Opposition No. 91214253 [Opposition to registration of the product configuration mark shown below, for leather goods and shoes, on the grounds of ornamentality and lack of secondary meaning, genericness, and functionality. "The mark consists of a configuration of slim, uniformly-sized strips of leather, ranging from 8 to 12 millimeters in width, interlaced to form a repeating plain or basket weave pattern placed at a 45-degree angle over all or substantially all of the goods"].



December 5, 2018 - 2 PM: In re Catalyst Connection, Inc., Serial No. 87351233 [Section 2(d) refusal of MAKING YOUR FUTURE for “business consultation services for the manufacturing industry” and “providing training courses, workshops and webinars in the fields of employee development, leadership, sales and marketing strategies, manufacturing techniques, industry best practices and green manufacturing” in view of the registered mark MAKING THE FUTURE. TOGETHER  for goods and services including “arranging and conducting business conferences and expositions in the field of manufacturing” and “providing online non-downloadable e-books and e-newsletters in the field of manufacturing; education services, namely, providing live and on-line classes, seminars and workshops in the field of manufacturing”].

December 6, 2018 - 2:00 PM: In re RRRAWI Corp., Serial No. 86767410 [Section 2(d) refusal to register the mark MBAR for “restaurant and bar services” in view of the registered mark M BAR in the stylized from shown below, for “restaurant and bar services, excluding Italian cuisine and macrobiotic cuisine"].

December 11, 2018 - 2 PM: Bruce Kirby, Inc. v. Velum Limited, Cancellation No. 92057217 [Petition for cancellation of a registration for the mark LASER for "sailing competitions, and regattas; sailing schools"  on the grounds of nonuse and abandonment].

December 12, 2018 - 11 AM: American Express Marketing & Development Corp. v. Tung V. Bo, Oppositions Nos 91230559 and 91232714 [Oppositions to registration of AMERIXPRESS for "Import agency services" and AMERIXPRESS LLC for "Calcium supplements; Dietary supplements; Herbal supplements; Homeopathic supplements; Mineral supplements; Mineral nutritional supplements; Natural herbal supplements; Nutritional supplements; Probiotic supplements; Protein supplements; Soy protein dietary supplements; Vitamin supplements; Vitamin and mineral supplements" and for "Export agency services for the goods of others," on the grounds of likelihood of confusion with, and likelihood of dilution of, the mark AMERICAN EXPRESS  and formatives thereof for a variety of services in the fields of business, finance, communication, ticket reservation, travel, concierge, mail order and hotel services as well as printed materials in the fields of travel, dining and hotels].

December 18, 2018 - 11 AM: In re Central Dynamics, LLC, Serial Nos. 86906610 and 86906682 [Section 2(e)(1) mere descriptiveness refusals of ECONCIERGE for “Platform as a service (PAAS) featuring computer software platforms for hotels, resorts, casinos, hospitality and transportation providers to communicate with and support guests before, during and after stays regarding preferences, profiles, planning and management of stays, dining, transportation and activities; providing temporary use of online non-downloadable software for hotels, resorts, casinos, hospitality and transportation providers to communicate with and support guests before, during and after stays regarding preferences, profiles, planning and management of stays, dining, transportation and activities," and EPROPOSAL for "Platform as a service (PAAS) featuring computer software platforms for hotels, resorts, casinos, hospitality and transportation providers to create, send, monitor and track responses to requests for proposals; providing temporary use of online non-downloadable software for hotels, resorts, casinos, hospitality and transportation providers to create, send, monitor and track responses to requests for proposals"].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2018.

TTAB Test: Do the Design Elements Make This Mark Eligible for Supplemental Registration?

In a December 2017 decision the Board granted, in part, petitioner's motion for summary judgment [here] and ordered cancellation of a Supplemental Registration for the phrase MORE PROTEIN THAN SUGAR in standard character form, finding that the purported mark is incapable of functioning as a trademark for "yogurt." However, as to respondent's second registration, the Board left open the question of whether the word+design version of the mark (shown below) is registrable on the Supplemental Register (with a disclaimer of the phrase). In other words, are the design elements - the font style, stacked wording, and curved lines - capable of becoming distinctive? How do you think this came out? The Icelandic Milk and Skyr Corporation v. Saga Dairy, Inc., Cancellation No. 92062423 (November 26, 2018) [not precedential] (Opinion by Judge Frances Wolfson).

In its earlier ruling, the Board found that MORE PROTEIN THAN SUGAR is commonly used to describe the nutritional content of yogurt and would be perceived as merely an informational slogan and not as a trademark. Petitioner Icelandic Milk here argued that the word+design mark is likewise incapable of serving as a source indicator because the design elements are "nothing but ordinary in nature and do[] not create a commercial impression separate and apart from the unregistrable components."

Petitioner's CEO and its CFO testified that the use of stacked text, common geometric shapes, and minimal design features is commonplace in the yogurt industry. Documentary evidence supported their testimony. Geometric shapes and lines are commonly used to emphasize or separate generic wording from the rest of the packaging. (See applicant's label, below).

Petitioner uses a sans serif font, stacked text, and lines on its packaging to separate various phrases:

Third-parties in the yogurt industry also use lines to emphasize text. For example:

"In order for a term which is otherwise unregistrable to be capable of distinguishing the goods or services in connection with which it is used, the presentation thereof must be so striking, unique or distinctive in character as to overcome its inherent incapacity and render the mark capable of serving as an indicium of origin." In re Carolyn’s Candies. Inc., 206 USPQ 356 (TTAB 1980).

Based on the record evidence, though not extensive, the Board concluded that "the use of lines, including curved lines, is an ordinary and commonplace means to separate generic text on a product label, and that the additional design features in Respondent’s purported mark are not so striking, unique or distinctive as to have overcome the inherent incapacity of the mark as a whole."

And so the Board granted the petition for cancellation of the Supplemental Registration for the word+design mark.

Read comments and post your comment here.

TTABlog comment: I've never tried cucumber mint yogurt (or cucumber mint skyr), and I don't intend to. BTW, how does one feed yogurt with grass?

Text Copyright John L. Welch 2018.

CAFC Affirms TTAB Dismissal of Surname Oppositions to SCHLAFLY for Beer, Finding Acquired Distinctiveness

In this rather quixotic appeal, the CAFC upheld the TTAB's decision of August 2, 2016 [TTABlogged here], dismissing two oppositions to registration of the mark SCHLAFLY for beer. The opposers, Dr. Bruce S. Schlafly and Phyllis Schlafly, claimed that SCHLAFLY is primarily merely a surname and therefore barred from registration by Section 2(e)(4), but the Board did not rule on the surname issue, instead finding that Applicant St. Louis Brewery (SLB) had in any event established acquired distinctiveness in the mark. Bruce S. Schlafly v. The Saint Louis Brewery, LLC, 128 U.S.P.Q.2d 1739 (Fed. Cir. 2018) [precedential].

The opposers/appellants contended that the TTAB failed to recognize that the mark SCHLAFLY is primarily merely a surname and improperly accepted SLB’s proof of acquired distinctiveness despite the lack of survey evidence. Appellants also claimed that their constitutional rights under the First and Fifth Amendments, as well as their rights to Due Process, were violated. The CAFC disagreed on all points.

Acquired Distinctiveness: Trademark Rule 2.41 provides that the following types of evidence may be considered to show acquired distinctiveness: (1) ownership of prior registration(s); (2) five years substantially exclusive and continuous use in commerce; and (3) other evidence (such as proof of duration, extent, and nature of use, advertising expenditures, verified statements from the trade and/or public, etc.). SLB submitted all three types of evidence and the Board considered fifteen different forms of evidence in reaching its conclusion, including proof of commercial success of SCHLAFLY branded beer, media coverage, continuous use of the mark for more than twenty-five years, and direct evidence in the form of press notices. “Both direct and circumstantial evidence may show secondary meaning.”

Appellants argued that the public primary perceives SCHLAFLY as the surname of Phyllis Schlafly, well-known activist (now deceased). They urged the CAFC to adopt a new test called the “change in significance” test, whereby a surname cannot be registered without showing a change in significance from a surname to a mark. Appellants provided no legal support for this argument, and in any case the Board had found secondary meaning with regard to beer products.

Appellants also argued that the Board refused to determine whether SCHLAFLY is primarily merely a surname, even though Section 2(e)(4) prohibits registration of such a surname. The Board, however, was correct in stating that the Lanham Act provides for registration of words that are primarily merely a surname but have acquired “secondary meaning.” See Section 2(f).

No law or precedent suggests that surnames cannot be registered as trademarks if they have acquired distinctiveness in trademark use. Because the Board found that the SCHLAFLY mark for beer had acquired secondary meaning, Section 2(e)(4) did not bar the registration.

Constitutional Claims: The Board gave short shrift to Appellants’ constitutional claims. Appellants failed to explain “how registration improperly impinges on their First Amendment rights.” The Fifth Amendment claim failed because trademark registration is not a taking for government use.

Appellants asserted that their Due Process rights were violated when the Board recognized secondary meaning in the SCHLAFLY mark without proof of change in public perception. The CAFC ruled, however, that the trademark opposition procedure “provides appropriate process of law.”

And so the CAFC affirmed the Board's ruling.

Read comments and post your comment here.

TTABlog comment: Thomas Schlafly co-founded the St. Louis Brewery in 1989 and began selling SCHLAFLY beer in 1991. His aunt, Phyllis Schlafly and her son, Dr. Bruce Schlafly, both filed oppositions. Andrew Schlafly (another son of Phyllis) served as their attorney in the oppositions and in this appeal.

Text Copyright John L. Welch 2018.

Precedential No. 33: TTAB Denies Reconsideration of Untimely Motion to Compel Filed on Deadline Day for Pre-Trial Disclosures

In yet another precedential decision dealing with the January 2017 rule changes, the Board rejected Opposer Asustek's motion for reconsideration of an order denying its motion to compel discovery responses as untimely: The motion to compel was filed on the day of the deadline for Opposer’s pretrial disclosures, and not before that day, as required by the applicable Rule. Asustek Computer Incorporation v. Chengdu Westhouse Interactive Entertainment Co., Ltd., Opposition No. 91225271 (October 31, 2018) [precedential].

Under Rule 2.120(f)(1), as amended on January 14, 2017, "[a] motion to compel discovery must be filed before the day of the deadline for pretrial disclosures for the first testimony period as originally set or as reset." The deadline for Asustek’s pretrial disclosures fell on Monday, September 25, 2017; therefore, under the rule, the last date to file a motion was “before the day of” that date—i.e, Sunday, September 24th.

Asustek filed its motion to compel on Monday, September 25, 2017. It maintained that it made "a reasonable interpretation" that Rule 2.196—which allows parties until the next business day to take action if a fixed deadline falls on a Saturday, Sunday or Federal holiday—applied to its situation. The Board, however, pointed out that Rule 2.196 does not apply to Rule 2.120(f)(1), because the latter rule does not fix a particular day by which a motion to compel must be filed, but instead requires that the motion be filed before the day another event (pretrial disclosures) occurs. Cf. Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268 (TTAB 2017) (holding that Rule 2.196 does not apply to the requirement that discovery be served early enough so responses will be due no later than close of discovery).

The phrase "“before the day of the deadline for pretrial disclosures” in Rule 2.120(f)(1) "means that the motion to compel must be filed sometime prior to the day pretrial disclosures are due." See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES; CLARIFICATION, 82 Fed. Reg. 33804, 33804 (July 21, 2017) (Clarification).

The inapplicability of Rule 2.196 remains similar to TTAB practice under the pre-amendment Rule. Under former Trademark Rule 2.120(e)(1), a motion to compel had to be filed prior to the commencement of the first testimony period. “Prior to” meant any time before the opening day of trial, i.e., before the first day of plaintiff’s testimony period. See Blansett Pharmacal Co. v. Carmrick Labs., Inc., 25 USPQ2d 1473, 1476 (TTAB 1992).

In short, Trademark Rule 2.120(f)(1) requires that a motion to compel be filed before the day of the deadline for plaintiff to file and serve pretrial disclosures. As Opposer’s motion to compel was filed and served on September 25, 2017, the due date for Opposer’s pretrial disclosures, it was not served “before” the date set for pretrial disclosures and is untimely.

Opposer Asustek argued that the Board should apply the flexible approach for cases that arise during transition to the Board’s new rules, as in the KID-Systeme case [TTABlogged here], where the Board allowed consideration of an otherwise untimely motion for summary judgment filed on the deadline for pretrial disclosures, rather than before that date. The Board pointed out, however, that KID-Systeme involved a motion that was filed prior to the Board’s July 21, 2017 Clarification of the rule. Here, Asustek's motion to compel was filed two months after KID-Systeme was decided and the Clarification issued.

To the extent flexibility was warranted in KID-Systeme because of any perceived ambiguity in the Rule as originally amended, both the decision in that case and the subsequent Clarification resolved that ambiguity, putting Opposer and other Board litigants on notice of the proper application of the Rule. When Opposer filed its motion, the amended Rule had been in place more than eight months, and explicitly required filing before the day of the deadline for pretrial disclosures.

Read comments and post your comment here.

TTABlog comment: Docketing people, take note!

PS: As noted in the first comment, Opposer Asustek has filed a petition to the Director to review this decision.

Text Copyright John L. Welch 2018.

TTAB Test: How Did These Three Section 2(d) Oppositions Turn Out?

Here are three recent Board decisions in Section 2(d) oppositions. I'm not giving any hints this time, so you're on your own. How do you think these cases turned out? [Answer in first comment].

Constellation Brands U.S. Operations, Inc. v. LeVecke Corporation, Opposition No. 91223426 (November 15, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Section 2(d) opposition to registration of DUBOIS for "distilled spirits," in view of the registered mark CLOS DU BOIS for wine].

Peter Piper, Inc. v. OTG Experience, LLC, Opposition No. 91230289 (November 15, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).[Section 2(d) opposition to registration of PETER PIPER for "Motor vehicles, namely, automobiles that accepts orders for, dispenses and packages for delivery  various food and retail items; Order fulfillment services; Wholesale and retail store services featuring mobile vending machines for order fulfillment; leasing and rental of mobile vending machines; Mobile vending in the field of convenience store items; and Mobile automated machine that accepts orders for, dispenses and packages for delivery various food and retail items; Vending machines, mobile vending machines, and automatic vending machines," and the mark and PETER PIPER SMARTRUCK for the services listed above, in view of the registered mark PETER PIPER PIZZA for pizza and restaurant services].

Del Monte Foods, Inc. v. Yordan Bojidarov Dabov, Opposition No. 91233082 (November 9, 2018) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) opposition to registration of the mark DELMARTE & Design for "tea," in view of the concededly famous registered mark DEL MONTE, in various forms, for fruits, vegetables, soft drinks, fruit juice, and other products].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

On Remand, TTAB Reverses Course and Finds EARNHARDT COLLECTION to be Primarily Merely a Surname

On remand from the CAFC, the TTAB sustained these two (consolidated) oppositions, finding the mark EARNHARDT COLLECTION for "furniture" and "custom construction of homes" to be primarily merely a surname under Section 2(e)(4). In February 2016, the Board had dismissed the oppositions [TTABlogged here] but in July 2017, the CAFC vacated the Board's findings on the surname issue and remanded the case with instructions to determine "(1) whether the term 'collection' is merely descriptive of KEI’s furniture and custom home construction services, and (2) the primary significance of the mark as a whole to the purchasing public." [TTABlogged here]. Teresa H. Earnhardt v. Kerry Earnhardt, Inc., 91205331 (parent) and 91205338 (November 19, 2018) [not precedential] (Opinion by Judge Francie R. Gorowitz).

Dale Earnhardt
The CAFC pointed out that the Board had misread its decision In re Hutchinson by interpreting that decision to mean that the addition to a surname of a term that is capable of becoming distinctive (i.e., not generic) removes the mark from the Section 2(e)(4) bar. Not so, said the CAFC. In Hutchinson, the added word TECHNOLOGY was neither generic nor merely descriptive, and so the question remained open as to a merely descriptive term.

Descriptiveness: Dictionary definitions and third-party furniture-related websites convinced the Board that COLLECTION is merely descriptive of furniture because it "provides information to the consumer about the manner in which the furniture is grouped to effectuate sale, which, as discussed above, may be by brand, place of use (dining room collection) or composition (wood collection)."

Similarly, as to home constructive services, the record demonstrated that COLLECTION "conveys information to consumers, for example, that houses of similar styles or characteristics are grouped together for marketing."

Primary Significance: The question then was whether the term COLLECTION "detracts from or displaces the surname significance of the name “Earnhardt” in the mark EARNHARDT COLLECTION." The Board found nothing in the combined mark EARNHARDT COLLECTION that "diminishes or transforms the immediate connotation that the furniture or custom construction of homes services involves a grouping under the EARNHARDT name."

Taken together, the primary significance of the mark EARNHARDT COLLECTION is that it merely indicates that the goods and services are sold in a group or collection by a person named EARNHARDT.

The Board therefore found that EARNHARDT COLLECTION is primarily merely a surname, and it sustained the oppositions on the Section 2(e)(4) ground.

Read comments and post your comment here.

TTABlog comment: The applicant’s co-founder and CEO, Kerry Dale Earnhardt (Kerry Earnhardt), is the son of Dale Earnhardt and stepson of Opposer Teresa H. Earnhardt.

Text Copyright John L. Welch 2018.

TTAB Test: Is RICHARD RAWLINGS' GARAGE Confusable With RAWLINGS for Clothing?

The USPTO refused registration of the mark RICHARD RAWLINGS' GARAGE for "Headgear, namely, hats, caps, bandanas and beanies; Hooded pullovers; Hooded sweatshirts; Jackets; Pullovers; Sweatshirts; T-shirts; Tank Tops; Socks; Underwear; all of the aforementioned goods bearing ornamental designs that associate the goods with the persona of Richard Rawlings or his businesses," finding the mark likely to cause confusion with the registered mark RAWLINGS (in standard character and stylized form), for various clothing items, including caps, socks, t-shirts, underwear, and jackets." Applicant argued that consumers will be able to distinguish the source of its goods because of their connection with the persona of Richard Rawlings. How do you think this came out? In re Richard Rawlings’ Garage, LLC, Serial No. 87039427 (November 16, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Goods: Applicant argued that Rawlings' goods consist primarily of sporting apparel, while its goods are related to Richard Rawlings or his persona. The Board was unmoved. First, nothing in the subject application excludes sporting apparel, and some of Rawlings' goods are not athletic apparel. Second, the inclusion of the exclusive language "all of the aforementioned goods bearing ornamental designs that associate the goods with the persona of Richard Rawlings or his businesses" in the subject application is insufficient to distinguish the involved goods.

The CAFC addressed a similar situation in In re i.am.symbolic, LLC, in which the identification of goods included the wording "associated with William Adams, professionally known as ‘will.i.am.'" The court there ruled that the restrictive language did not (1) limit the goods "with respect to either trade channels or class of purchasers"; (2) "alter the nature of the goods identified"; or (3) "represent that the goods will be marketed in any particular, limited way, through any particular, limited trade channels, or to any particular class of customers." The CAFC upheld the Board's determination that "the will.i.am restriction does not impose a meaningful limitation in this case for purposes of likelihood of  confusion analysis."

The Board concluded that this second du Pont factor strongly favored a finding of likely confusion.

The Marks: Applicant argued that the marks engender different commercial impressions because the applied-for mark would be perceived by consumers as referring to Richard Rawlings, an allegedly famous TV reality show personality. The Board noted, however, that "the fame of a junior party does not obviate a finding of likelihood of confusion." In any case, applicant failed to proved that "Mr. Rawlings’ persona or his brand has achieved such a level of’ notoriety or fame that would change the commercial impression of Applicant’s mark in any meaningful way so as to distinguish it from Registrant’s marks."

As to the marks themselves, the words "RICHARD RAWLINGS" would likely be understood to be a personal name of one Richard Rawlings. "Because the literal portion of the cited marks consist only of the surname RAWLINGS, consumers seeing the marks on identical goods are likely to assume that RICHARD RAWLINGS is the same person, or is affiliated with, the person referred to in Registrant’s RAWLINGS marks."

We also find that the addition of the term GARAGE at the end of Applicant’s mark is insufficient to differentiate the marks. Likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding or deleting other distinctive matter. If an important portion of both marks is the same, as is the case here, then the marks may be confusingly similar notwithstanding some differences.

The Board found that the similarity between the marks weighs in favor of a finding of likelihood of confusion.

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

Read comments and post your comment here.

TTABlog comment: What do you think?

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 was reversed. Which one? [Answer in first comment].



In re Hibernia Distillers Limited, Serial No. 86523391 (October 1, 2018) [not precedential] (Opinion by Judge Cindy B. Greenbaum). [Section 2(d) refusal to register the mark shown immediately below, for "Whiskey; Irish whiskey; single malt whiskey; bourbon whiskey; whiskey cocktails," in view of the registered marks HYDE for “herbal flavored liqueur,” HYDE PARK for “spirits; wines,” and JAMES F.C. HYDE for "spirits and liqueurs" (different owners)].

In re Kiona Vineyards, LLC, Serial No. 87356605 (November 6, 2018) [not precedential] (Opinion by Judge Robert H. Coggins). [Section 2(d) refusal of KIONA VINEYARDS (Stylized) for "wines" [VINEYARD disclaimed], in view of the registered mark KIANA for "wine"].

In re PEM Management, Inc., Serial No. 86957812 (November 14, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of the mark PENN AUTO in the design form shown below, for "Product engineering services for others, namely, design engineering of hardware components and fasteners for the automotive industry," in view of the registered mark PENN UNITED for "Design and testing for new product development; Design and testing of new products for others; Designing of machines, apparatus, instruments or systems composed of such machines, apparatus and instruments; Product development; Product development for others; Product research & development; Product safety testing; Research and development for new products for others"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

CAFC Vacates and Remands TTAB's OMAHA STEAKS v. GREATER OMAHA Decision

The CAFC vacated the TTAB's September 30, 2017 decision in Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., Consolidated Opposition No. 91213527 and Cancellations Nos. 92059629 and 92059455 [TTABlogged here] in which the Board found the mark GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF & Design (shown below) for "meat, including boxed beef primal cuts" not likely to cause confusion with the registered mark OMAHA STEAKS for meat. The appellate court found that the Board's analysis regarding the fame of the OMAHA STEAKS mark was "legally flawed," and that the Board's consideration of third-party uses "improperly relied on marks found on dissimilar goods and services not directed to the relevant public." Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., 128 USPQ2d 1686 (Fed. Cir. 2018) [precedential].

Omaha Steaks challenged the Board's decision in three areas: first, it contended that the Board ignored evidence of the fame of the OMAHA STEAKS marks under the fifth du Pont factor; second, it argued that the Board relied on a much broader range of goods lacking any similarity to meat products when evaluating the sixth du Pont factor, which examines the number and nature of third-party uses of similar marks on “similar goods;” and third, it maintained that the Board’s analysis of the similarity between the marks was flawed because the Board ignored the word “BEEF” in Greater Omaha's slogan "Providing the Highest Quality Beef."

Fame: As to the evidence of fame (i.e., commercial strength) under the fifth du Pont factor, the court agreed with Omaha Steaks that the TTAB's discounting of its evidence of fame was "legally flawed." The Board concluded that Omaha Steaks' "raw" figures regarding sales and advertising expenditures lacked context and it therefore disregarded them. The Board interpreted Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1370 (Fed. Cir. 2002), as requiring evidence of "market share," not just sales and advertising figures. Not so, said the CAFC: "Though Bose expressly approves of using market share, it does not require it."

Omaha Steaks provided considerable contextual evidence of the type of advertisements and promotions it uses to gain sales, including testimony as to how it promoted its products through catalogs, direct mailings, e-mail marketing, customer calls, tradeshows, retail stores, national television, radio, magazine and newspaper campaigns, digital marketing, and social media. The CAFC concluded that the Board finding of lack of context for Omaha Steaks' "raw" sales and advertising figures lacked substantial evidence.

In light of our holding in Bose, the Board took an overly restrictive view of evidence related to Omaha Steaks’ sales figures, advertising expenditures, and related evidence of the relevant public’s exposure to its branded meat products bearing on the relative fame of the mark. Accordingly, we vacate and remand to allow the Board to conduct a proper analysis of this factor.

The CAFC ruled that the Board did not err in finding that Omaha Steaks' survey evidence was flawed and lacked probative value because the universe surveyed was too narrow. Nor did the Board err in refusing to take judicial notice of the contents of the complaints filed in various litigations identified by Omaha Steaks. "The Board is not required to scour, not just the dockets, but the multiple pleadings referenced in those dockets to determine the substance of the litigations referenced."

Third-party uses: The sixth du Pont factor considers “[t]he number and nature of similar marks in use on similar goods.” In re du Pont, 476 F.2d at 1361. Third-party use is “relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection,” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373 (Fed. Cir. 2005), because consumers have become accustomed to distinguishing between different marks "on the bases of minute distinctions." Id. at 1374.

Although the Board found the involved goods to be legally identical, it "considered a variety of services and products that include the word 'Omaha,' regardless of whether they involve meat." Although finding that this evidence was “not overwhelming," the Board deemed the evidence sufficient to support a finding that the term OMAHA "may be perceived as an indication of the geographic location of the producer of the goods or the geographic origin of the goods themselves." The Board then determined that "OMAHA" is weak as a source indicator and that marks including the word OMAHA are entitled to only a narrow scope of protection.

The Board’s analysis was flawed. As we underscored in Century 21, the “relevant du Pont inquiry is ‘[t]he number and nature of similar marks in use on similar goods.’” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992) (quoting Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 1548 (Fed. Cir. 1990)).

The Board cited to a list of businesses with OMAHA in their names, offering diverse products like popcorn, wine, oriental food, and alcoholic beverages. The CAFC observed that "these goods bear no relationship to meat or meat-based products. Accordingly, such goods are not 'similar' to meat products."

Greater Omaha argued that these third party products are "similar" to meat because they are food products. The court was unmoved. It found no evidence that these other products are related to meat.

GOP’s mark on meat products cannot escape a likelihood of confusion with Omaha Steaks’ prior use on meat products in the relevant market for meat purely because other “Omaha” marks are being used by third parties on popcorn, alcoholic beverages, or other food products. Independent of these third-party uses on other goods, there may still be confusion between Omaha Steaks’ marks and GOP’s new mark for consumers purchasing meat.

Because the Board's analysis under the sixth du Pont factor was "fatally flawed," the court vacated its finding and remanded the case with instructions to the Board to "reweigh the limited, relevant evidence of third-party use." [The remaining evidence consisted of third-party meat products from meat processing or packaging companies, such as B.I.G. Meats Omaha, Omaha Beef Company, and Omaha Meat Processors.]

Where's the BEEF? Omaha Steaks' third argument rested on a single sentence in the Board opinion: "Defendant’s mark is dominated by the words GREATER OMAHA; they are the first words in the mark, are visually larger than the laudatory slogan, 'PROVIDING THE HIGHEST QUALITY,' and are the words that would be used to call for the goods." The CAFC observed that the omission of the word BEEF appeared to be a typographical error, and it noted that on seven other occasions the Board correctly referred to the entire slogan.

The CAFC concluded that the Board had "adequately assessed the slogan," and in fact had found the slogan to be one of the differences in the overall appearances of the involved marks. In short, there was no error in the Board's analysis.

However, because the Board's findings regarding the strength of the term OMAHA were vacated, the Board must reconsider its conclusion under the first du Pont factor.

Conclusion: "For the foregoing reasons, we vacate the Board’s decision that there is no likelihood of confusion between Omaha Steaks’ and GOP’s marks, and we remand for further proceedings consistent with this opinion."

Read comments and post your comment here.

TTABlog comment: The CAFC's treatment of third-party uses leaves something to be desired. Don't the uses of OMAHA-containing marks for popcorn, wine, etc., show the weakness of OMAHA as a formative because they confirm that the term is used as a geographic descriptor for food that originates in Omaha, where Omaha Steaks is located?

Text Copyright John L. Welch 2018.

TTAB Finds AIR NZ Legally Equivalent to Registered AIR NEW ZEALAND, Acquired Distinctiveness Overcomes Geographical Refusal

Applicant Air New Zealand overcame a Section 2(e)(2) geographical descriptiveness refusal of AIR NZ for various air transportation services, convincing the Board to find acquired distinctiveness under Rule 2.141(a)(1) in view of applicant's ownership of a registration for AIR NEW ZEALAND for the same or related services. The examining attorney unsuccessfully argued that, although NZ means NEW ZEALAND, it also has other meanings and therefore the two marks are not legally equivalent. In re Air New Zealand Ltd., Serial No. 79192386 (November 9, 2018) [not precedential] (Opinion by Judge David K. Heasley).

Applicant pointed out the incongruity in the Examining Attorney's position that, for purposes of the Section 2(d) refusal, the primary significance of ‘NZ’ is New Zealand, but as to the Section 2(f) claim, AIR NZ does not convey the same commercial impression as AIR NEW ZEALAND. Applicant argued that "[I]t is inconceivable that a consumer who comes across the Applicant’s mark ‘AIR NZ’ is going to think of any other airline besides ‘Air New Zealand’ or any other airline company besides the Applicant."

Applicant's unconditional claim of acquired distinctiveness under Section 2(f), in response to the refusal to register, was a concession that its mark is primarily geographically descriptive of the services [or at lest a concession that it's not inherently distinctive - ed.].

Trademark Rule 2.41(a)(1) provides that "[i]n appropriate cases, ownership of one or more active prior registrations on the Principal Register . . . of the same mark may be accepted as prima facie evidence of distinctiveness if the goods or services are sufficiently similar to the goods or services in the application; however, further evidence may be required."

Applicant's registration for AIR NEW ZEALAND issued in 2012 based on acquired distinctiveness. Applicant maintained that AIR NZ and AIR NEW ENGLAND are legal equivalents. Under Rule 2.41, "same mark" does not mean "identical mark."

A proposed mark is the ‘same mark’ as a previously registered mark if it is the ‘legal equivalent’ of such mark,” that is, “if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark." In re Dial-A-Mattress, 57 USPQ2d at 1807, 1812 (Fed. Cir. 2001).

Applicant submitted various items of evidence, including dictionary definitions of "NZ," Google brand search engine results showing that a search for "NZ" yields the result "New Zealand, and evidence that NZ is the the country code for the New Zealand Internet top level domain.

The examining attorney contended that NZ can have other meanings: "An algebra book shows NZ means 'not zero,' The Neutral Zone is an online store and uses NZ to reference its website, and Sporting Charts shows NZ is used to explain neutral zone starts." He also pooh-poohed applicant's evidence, claiming that it did not show how consumers will interpret “NZ” in connection with airline services.

The Board noted that the two marks are highly descriptive, and so the Section 2(f) hurdle is "commensurately high." There was no dispute that applicant’s prior registration and current application "recite essentially the same airline services," i.e., they are “sufficiently similar.” The issue was "whether consumers of those same airline services would view AIR NZ as conveying the same, continuing commercial impression." The Board found that they would.

"[N]icknames and even abbreviations and maps of geographical areas and the name of the geographical area that they identify are, for purposes of registration, identical, and . . . the same criteria for registration must necessarily apply thereto." In re Charles S. Loeb Pipes, Inc., 190 USPQ 238, 246 (TTAB 1975) (emphasis added by the Board).

Applicant's mark must be viewed in the context of airline services; the alternative meanings proposed by the examining attorney are not probative. "Taken as a whole, AIR NZ retains the same structure as AIR NEW ZEALAND, a structure consumers would tend to recognize and associate with Applicant."

And given the consuming public’s penchant for shortening place names, see In re South Park Cigar Inc., 82 USPQ2d 1507, 1512 (TTAB 2007), Applicant’s contraction of the country name NEW ZEALAND into the initialism NZ neither adds nor subtracts anything to or from the origin-indicating significance of AIR NEW ZEALAND. The relevant public would tend to view AIR NZ as a shorthand version of the original mark.

Conclusion: The Board found that AIR NZ is the legal equivalent of AIR NEW ZEALAND, and further that AIR NZ has acquired distinctiveness by virtue of Applicant’s prior active registration of AIR NEW ZEALAND. "Because it has acquired distinctiveness, the mark AIR NZ no longer causes the public to associate the services with a particular place, but to associate them with a particular source."

Therefore the Board affirmed the Section 2(e)(2) refusal but "the refusal on the ground that it has not acquired distinctiveness under Section 2(f) is reversed."

Read comments and post your comment here.

TTABlog comment: I disagree with the wording of the Board's conclusion. Section 2(f) is not a ground for refusal. Section 2(f) allows an applicant to overcome a refusal, such as geographical descriptivenes. So marks may be registered "under" Section 2(f) but they can't be refused under Section 2(f).

Text Copyright John L. Welch 2018.

TTAB Test: Is ATHLETE INTELLIGENCE Merely Descriptive of Wearable Monitoring Devices?

The USPTO refused registration of the mark ATHLETE INTELLIGENCE, in standard character form, for wearable monitoring devices and systems. Applicant argued that the mark is merely suggestive of the goods because "multistep reasoning" would be need to extract any information from the mark, and further argued that the mark is a double entendre. How do you think this came out? In re i1 Sensortech, Inc., Serial No. 87249539 (November 9, 2018) [not precedential] (Opinion by Judge Angela Lykos).

Examining Attorney Andrew Leaser submitted dictionary definitions of "athlete" and "intelligence," one of the definitions of "intelligence" being "information." Competitors use "intelligence" to describe biometric data or information collection products for athletes.

Within the context of Applicant’s Class 9 and Class 10 goods, purchasers will immediately recognize that the word ATHLETE in Applicant’s mark designates the person wearing Applicant’s “monitoring device and system … comprised of electronic sensors”, and that INTELLIGENCE refers to the gathering of information measuring an individual athlete’s biometrics, positioning and speed, physiology as well as the magnitude and effects of any physical impacts.

The Board concluded that applicant's mark immediately conveys a feature and purpose of the goods: they are designed to collect intelligence from athletes, such as information and data, regarding the performance, health and medical safety of athletes." Applicant's website supports this finding.

Applicant offered various other meanings of its mark, but the Board observed that the marks must be considered in the context of the goods. "[T]he question of whether a proposed mark is merely descriptive is not determined by asking whether one can guess, from the mark itself, what the goods are, but rather by asking, when the mark is seen on or in connection with the goods, whether it immediately conveys information about their nature." Here, no imagination or thought is required to discern the nature of applicant's goods.

As to the double entendre argument, applicant relied on an article on degenerative brain disease suffered by athletes who have sustained multiple concussions. Since concussions are in the news, according to applicant, ATHLETE INTELLIGENCE could be perceived as a reference to or "play" on the idea of preserving the intelligence of an athlete engaged in contact sports.

The Board pointed out that the double connotations of the mark "must be associations that the public would make fairly readily." Both meanings must be readily apparent from the mark itself, without reference to other indicia. The record did not support "a finding that [the] alternative meaning of a 'play' on an athlete's intelligence is well-known or readily apparent such that this alternative meaning might be called to mind."

Read comments and post your comment here.

TTABlog comment:  Mere descriptiveness is not a guessing game. How did you do?

Text Copyright John L. Welch 2018.r

TTAB Awards Junior User USA Minus Oregon in GREENFIELD Concurrent Use Proceeding

In this concurrent use proceeding, the Board ordered restriction of a registration for the mark GREENFIELD for various healthcare services, to the state of Oregon. Applicant successfully sought concurrent use registrations for the marks GREENFIELD ASSISTED LIVING and GREENFIELD SENIOR LIVING for assisted living facilities in the remainder of the United States. Greenfield Senior Living, Inc. v. Greenfield Health System, LLC, Concurrent Use Proceeding No. 94002722 (November 7, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Applicant began use of its marks in 2002 and 2005, more than seven years before registrant filed its application to register, but after Registrant's alleged first use date. It has expanded to five states, expended more than $100 million in expansion efforts, and spent hundreds of thousands of dollars on advertising and marketing.

Registrant's services are offered at two locations in Portland, Oregon. Applicant's uncontroverted testimony indicated that it adopted its marks in good faith without knowledge of registrant or its mark.

The question, then was what are the "registrable rights" of the parties as to the parts of the United States in which they have not used their respective marks?

The senior user is prima facie entitled to a registration covering the entire United States. "Such a prior user, who applies for a registration before registration is granted to another party, is entitled to a registration having nationwide effect no less than if there were no concurrent user having registrable rights." Those rights should be limited "only to the extent that any other subsequent user, who can establish the existence of rights earlier than the prior user's application for registration, can also prove a likelihood of confusion, mistake, or deception." In re Beatrice Foods Co., 429 F.2d 466, 166 USPQ 431, 436 (CCPA 1970)). However, this presumption in favor of the senior user can be overcome.

The Board first considered the likelihood of confusion issue, and concluded that confusion would not be likely if an appropriate geographic restriction were imposed. The lack of actual confusion over the 15 years of coexistence was relevant to this determination. Moreover, it is not necessary that all possible confusion be eliminated. And the fact that both parties' services are advertised online is not enough to result in a likelihood of confusion, particularly since there was no evidence that registrant has expanded beyond two locations in Oregon or that it enjoys a reputation beyond Oregon.

The next issue was the appropriate geographic restriction. Actual use in an area is not necessary to establish rights there. The inquiry should focus on a number of factors, including the party's past business activity, previous expansion (or lack thereof), and planned expansion. Applying those criteria, the Board found that "the general policy of favoring the first to register is inapplicable and that all other relevant factors favor Applicant. Indeed, Applicant, as the prior user [in its territory], would likely prevail, on the facts present herein, in a petition to cancel the registered mark [actually, the registration, not the mark - ed.], had such a course of action been taken."

Registrant (appearing pro se), did not present any evidence as to its promotional efforts or expansion plans. The Board found that registrant, through inaction over a considerable time period, has abandoned its right to expand use of its mark beyond its trading area. It therefore cannot preclude applicant from "filling the territorial void left by Registrant."

The Board concluded that "the purpose of the statute is best served by granting Applicant registrations for the entire United States except for Registrant's trading area, i.e., the state of Oregon."

Read comments and post your comment here.

TTABlog comment: In concurrent use proceedings involving service marks, Internet usage doesn't seem to matter much since the services are typically rendered locally. What about Software as a Service?

Text Copyright John L. Welch 2018.

A Few New Orleans Photos From INTALM

TTABlog Celebrates 14th Anniversary!

The TTABlog was launched on November 8, 2004, with a blog post entitled "Leo Stoller Loses Again" (here). Remember him? Here we are, thousands of blog posts (and more than 10,000 tweets) later.  Thank you to all you readers!  Greetings from INTALM in New Orleans!



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Text Copyright John L. Welch 2018.

TTAB Test: Is MISEL DISEL Confusable with DIESEL for Pre-Shave Liquids?

Diesel S.p.A. opposed an application to register MISEL DISEL for "smooth shave enhancer, namely, pre-shave liquid," claiming a likelihood of confusion with its registered mark DIESEL for, inter alia, pre- and after shave creams and lotions. The goods are essentially identical, or at least closely related, but what about the marks? How do you think this came out? Diesel S.p.A. v. Misel Disel, LLC, Opposition No. 91225389 (November 5, 2018) [not precedential] (Opinion by Judge David Mermelstein).

The Marks:The Board spent little time discussing the similarity or dissimilarity of the marks. It found the word DISEL to be "highly similar" to the word DIESEL: they look similar and applicant' mark is likely to be pronounced the same as DIESEL because it looks like a misspelling of the common word"diesel." Although applicant's mark begins with MISEL, and the first word in a mark is the portion that consumers notice first [DUH! - ed.], MISEL is itself similar to DISEL and invites a rhyming pronunciation of MISEL similar to "diesel:" i.e., mee-zul dee-zul. Because of the rhyme, MISEL does not creat a separate commercial impression from DISEL. The Board concluded that the marks are "substantially similar."

The Goods: The Board spent more time coming to the conclusion that the goods are in part identical or closely related. Applicant's goods comprise a "smooth shave enhancer," whatever that is. The Board found that it is encompassed by opposer's "pre- and after shave creams and lotions." But even if the goods did not overlap, they are closely related.

The Board presumed that the overlapping goods travel in the same, normal trade channels to the same classes of consumers. The items are relatively low-priced and would be purchased "without such careful consideration as would alleviate confusion."

Applicant argued that the fame of the DIESEL mark (for apparel) works against Opposer, but the Board pointed out that the fame of a mark is never a negative factor: "no mark is too famous to be confused." Indeed, the more well-known a mark, the easier it will be to find a likelihood of confusion under the du Pont factors. However, the Board agreed with applicant that the fame of DIESEL in the apparel field does not suggest that purchasers are more likely to believe that Opposer is the source of applicant's products.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: How did you do? FWIW: I would pronounce applicant's mark MISSLE DISSLE.

Text Copyright John L. Welch 2018.

TTAB Test: Is COCOON BY SEALY Confusable With SLEEP COCOON for Mattresses and Pillows?

The USPTO refused registration of the mark COCOON BY SEALY in standard character and design form (shown below), finding the mark likely to cause confusion with the registered mark SLEEP COCOON, both for mattresses and pillows (SLEEP disclaimed). Applicant contended that the "famous" SEALY house mark distinguishes its mark from the cited mark. How do you think this came out? In re Cocoon International Sales, LLC, Serial Nos. 87102115 and 87102130 (November 1, 2018) [not precedential] (Opinion by Judge Linda A. Kuczma).

Because the goods are identical, they presumably travel through the same, normal channels of trade to the same consumers. Applicant contended that its mattresses are priced between $399 and $1149 and its pillows at $49 each, and so consumers thereof will be "sophisticated." The Board noted, however, that the application and cited registration do not limit the goods as to price. Although mattresses are typically not purchased on impulse, mattresses and pillow are purchased by all types of consumers, and so "it is difficult to conclude that all of the respective consumers are sophisticated or that any care taken in the purchase of the goods would mitigate the likelihood of confusion resulting from the use of similar marks on identical goods."

Moreover, applicant did not prove that purchases of pillows are sophisticated, and the Board must consider the least sophisticated purchaser. In any case, even sophisticated consumers are not immune to source confusion when encountering similar marks and identical goods.

As to the marks, the Board found COCOON to be the more dominant portion of registrant's mark, the word SLEEP having been disclaimed. [I think neither word is dominant - ed.]. As to applicant's design mark, COCOON is clearly dominant.

Applicant contended that its registered and "famous" house mark SEALY is sufficient to distinguish the marks. The Board noted that its precedents hold that addition of a house mark generally does not avoid confusion, and may actually aggravate the situation.

However, the addition of a house mark may be impactful when there are "recognizable differences" in the marks, or the marks are "highly suggestive or merely descriptive or play upon commonly used or registered terms."

In this case, even if “SEALY” is a famous house mark, that does not dictate a finding of no likelihood of confusion. When we consider that Applicant’s identified goods are identical to Registrant’s goods and that their respective marks contain the identical term “COCOON” which is mildly suggestive of the goods, the addition of Applicant’s house mark in the nature of a tag line after the term “COCOON” does not eliminate the likelihood of confusion. Consumers familiar with Registrant’s SLEEP COCOON mark for its mattresses and pillows are likely to believe that there is some association or sponsorship with Applicant’s COCOON BY SEALY mattresses and pillows.

The Board observed that the Trademark Act protects against "reverse confusion," when a "significantly larger or prominent junior user, such as Applicant, is perceived as the source of a smaller, senior user's goods such that the 'senior user may experience diminution or even loss of its mark’s identity and goodwill due to extensive use of a confusingly similar mark by the junior user' for related goods."(quoting In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1752 (Fed. Cir. 2017) (quoting In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993))).

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

Finally, applicant argued that the cited mark is weak in view of four existing registrations for marks containing the word COCOON for bedding and bedding accessories (three owned by the same entity). The Board found that this evidence fell far short of the "voluminous" and "extensive" evidence presented in Jack Wolfskin and Juice Generation. Moreover, third-party registrations, standing alone, have limited probative value because they are not evidence that the marks have actually been used in commerce.

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

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

TTAB Test: Is SONIA for Sauces Confusable with SONIA SONI LIFE IS A RECIPE for Spices?

The USPTO refused registration of the mark SONIA for "sauces; chili sauce; hot sauce," finding a likelihood of confusion with the registered mark SONIA SONI LIFE IS A RECIPE for "spices, spice blends; spice rubs." Applicant argued that the marks are distinguishable because SONIA is a weak element in the cited mark in light of various third-third party registration and applications for marks containing the letters "S," "O," "N," and "A" in the food classes, and third party use of those and other marks. How do you think this came out. In re Productos Verde Valle, S.A. de C.V., Serial No. 87137207 (November 2, 2018) [not precedential] (Opinion by Judge Albert Zervas).

Goods: Based on third-party registrations and Internet excerpts submitted by Examining Attorney Parker Howard, the Board found the goods to be related and complementary: not only are the goods sold by third parties under the same mark, but "[t]he evidence also shows that spices may be a key ingredient in sauces, or may be interchangeable in a recipe, for example, using hot sauce instead of chili powder."

Since there are no limitations on channels of trade or classes of consumers in the application or cited registration, the Board presumed that the goods travel in the normal channels for those goods, including online and in grocery and specialty food stores, to ordinary consumers. The goods are relatively inexpensive items that are purchased without a great deal of care.

Third-Party Marks: As indicated, applicant relied on third-party uses and registrations in the food classes to argue that that the cited mark is entitled to a narrow scope of protection: SONYA,  SOHNA, SANIA, SONIA'S SWEETS, and SONA for various food items. The Board found SOHNA, SANIA, and SONA to be so different in commercial impression from SONYA that they had no probative value. The remaining two uses - SONYA for apples and and SONIA’S SWEETS for tea and soy sauce - "do not evidence such a widespread and significant use of the name 'SONIA,' or its phonetic equivalent 'SONYA,' in the food and food flavoring industries that we can conclude that the cited mark is so weak that the public would be able to distinguish the source of Registrant’s goods from those of Applicant by the differences in their respective marks."

The Marks: The Board found the marks to be similar in appearance, sound,  connotation, and commercial impression. It deemed SONIA SONY to be the more prominent portion of Registrant's mark, since LIFE IS A RECIPE "imparts a connotation that simply highlights use of the spices sold under the cited mark." The first name SONIA "is a notable component of SONIA SONI given its location as the first part of the mark and, thus, the first word to appear on any label or to be articulated when pronouncing the mark." Furthermore, registrant might emphasize the word SONIA by displaying it in larger, bolder typeface.

The Board observed that customers are "likely to believe that Applicant’s mark is simply a shortened version of Registrant’s mark, because of 'the penchant of consumers to shorten marks.'"

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: If a mark is registered in standard character form, should the registrant later be able to claim that the registration covers a use in which, as the Board suggests here, one word of the mark is used in a way that it dominates the other words in prominence?

Text Copyright John L. Welch 2018.

Three Section 2(d) TTAB Cases: How Do You Think They Came Out?

Here are three recently decided Section 2(d) cases: one opposition and two appeals. See if you can "guess" how they came out. [Answer in first comment].

In re I.L.L.A. S.P.A., Serial No. (October 30, 2018) [not precedential] (Opinion by Judge Robert H. Coggins) [Refusal to register OLLIA-TECH for "Non-stick coatings for pans, cookware, baking trays, small electric kitchen apparatus and utensils; and Frying pans; skillets; earthenware saucepans; saucepans; pots for cooking; household utensils, namely, graters; kitchen utensils, namely, splatter screens," in view of the registered mark OLIA DESIGN for “glass wares, namely, decorative, and handcraft art objects of glass; beverage glassware; mugs; cups and mugs” [DESIGN disclaimed] Applicant maintained that the marks are pronounced differently and have different connotations ("tech" versus "design."]

Vineyard 29, LLC v. 29 Wine Company, LLC, Opposition No. 91227774 (October 29, 2018) [not precedential] (Opinion by Judge Jyll Taylor) [Opposition to registration of HIGHWAY 29 for wine in view of the registered mark 29 for wine. Applicant pointed to five other entities using "29" as part of a mark].

In re 8415927 Canada, Inc., Serial Nos. 87056710 and 87056720 (October 25, 2018) [not precedential] (Opinion by Cindy R. Greenbaum) [Refusal to register the mark DIVE PRIME SEAFOOD in standard character and the design form shown below left for "bar services; restaurant services; take-out restaurant services" [PRIME SEAFOOD disclaimed]  in view of the registered marks DIVE COASTAL CUISINE in standard character and the design form shown below right for restaurant services [COASTAL CUISINE disclaimed]. Applicant cited 22 third-party registrations for restaurant mark containing the word DIVE, and also contended that the word has differing meanings in the respective marks.]

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

TTAB Posts November 2018 Hearing Schedule

The Trademark Trial and Appeal Board (T-T-A-B) has scheduled six (6) oral hearings for the month of November 2018. The hearings will be held in the Madison Building in Alexandria, Virginia. Briefs and other papers for these cases may be found at TTABVUE via the links provided.



November 7, 2018 - 10 AM: In re WGVS USA, LLC, Serial No. 87205484 [Section 2(e)(1) mere descriptiveness refusal of WORLD'S GREATEST VIDEOS for "Providing a web site that gives computer users the ability to upload and share user-generated videos, on a wide variety of topics and subjects; Entertainment services, namely, conducting contests and sweepstakes by broadcasting audio and video clips over the Internet or other communications network; and Audio and video broadcasting services over the Internet or other communications network featuring the uploaded, posted, shown, displayed, and tagged videos of others; electronically transmitting information, audio, and video clips"].

November 8, 2018 - 11 AM: Moonlite Bar-B-Q Inn, Inc. v. Moonlight Brewing Company, Opposition No. 91222542 [Section 2(d) opposition to registration of MOONLIGHT BREWING COMPANY for beer [BREWING COMPANY disclaimed] in view of the registered mark MOONLITE for restaurant services, food items, and ancillary goods].

November 13, 2018 - 1 PM: Peter Piper, Inc. v. OTG Experience, LLC, Opposition No. 91230289 [Section 2(d) opposition to registration of PETER PIPER for "Motor vehicles, namely, automobiles that accepts orders for, dispenses and packages for delivery  various food and retail items; Order fulfillment services; Wholesale and retail store services featuring mobile vending machines for order fulfillment; leasing and rental of mobile vending machines; Mobile vending in the field of convenience store items; and Mobile automated machine that accepts orders for, dispenses and packages for delivery various food and retail items; Vending machines, mobile vending machines, and automatic vending machines," and the mark and PETER PIPER SMARTRUCK for the services listed above, in view of the registered mark PETER PIPER PIZZA for pizza, restaurant services, and video game arcades].

November 13, 2018 - 2:30 PM: In re Synthon Holding B.V., Serial No. 87464096 [Section 2(d) refusal to register SYNTHON, in standard character form, for various pharmaceutical-related goods and services in International Classes 5, 35, 40, 42 and 45, in view of the registered mark SYNTHEON  for services in in International Classes 40 and 42 for design, development and testing of medical devices].

November 14, 2018 - 10 AM: Trek Bicycle Corporation v. Natural Balance Foods Limited, Opposition No. 91221706 [Section 2(d) opposition to registration of TREK & Design for snack bars in view of the registered mark TREK for bicycles, bicycle parts and accessories, and various other good, including powders for making energy drinks].

November 14, 2018 - 1 PM: In re ETA SA Manufacture Horlogère Suisse, Serial Nos. 87224039 and 87275493 [Refusals to register the two marks shown first below, for "watch movements" in view of the registered mark shown further below, for "Clocks and watches, movements for watches and clocks; cases for watches and clocks, dials for watches and clocks; watch bracelets and watch straps; watch crowns"].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2018.