Ordinary Consumer Has Standing to Oppose RAPUNZEL for Dolls, Says TTAB

The Board denied the Rule 12(b)(6) motion of Applicant, United Trademark Holdings, Inc., to dismiss this opposition to registration of the mark RAPUNZEL for dolls and toy figures. Opposer Rebecca Curtin, a professor at Suffolk University Law School, alleged that applicant’s mark fails 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. United asserted that Professor Curtin lacks standing because she is not a competitor and "has not used the mark in connection with the manufacture or sale of dolls." The Board, relying on the CAFC's Ritchie v. Simpson decision, disagreed, observing that "Consumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain." Rebecca Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (December 28, 2018) [not precedential].

Standing: Professor Curtin maintained that, as a consumer of dolls, "she has purchased and continues to purchase said goods, and that registration of the applied-for mark by Applicant would constrain the marketplace of such goods sold under the name 'Rapunzel,' raise prices of  'Rapunzel' dolls and toy figures, and deny consumers, such as herself, the ability to purchase 'Rapunzel' dolls offered by other manufacturers." The Board deemed these allegations sufficient to establish that she has a direct and personal interest in the outcome of the proceeding, in accordance with the "liberal threshold" established in Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).

The Board was unmoved by United's contention that Curtin did not differentiate herself from "any other potential consumer of dolls."

As the Federal Circuit has stated, “In no case has this court ever held that one must have a specific commercial interest, not shared by the general public, in order to have standing as an opposer. Nor have we ever held that being a member of a group with many members is itself disqualifying. The crux of the matter is not how many others share one’s belief that one will be damaged by the registration, but whether that belief is reasonable and reflects a real interest in the issue.” Ritchie v. Simpson, 50 USPQ2d at 1027 (citing 15 U.S.C. § 1063). Consumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain, “(1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language  involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.” In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978) (internal citation omitted) (Board emphasis).

Since Professor Curtin established standing as to her mere descriptiveness claim, she may also assert any other grounds in the opposition. Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1877 (TTAB 2011).

Asserted Claims: The Board dismissed with prejudice Curtin's Section 2(e)(5) functionality claim because Section 2(e)(5) "has no bearing on an application to register a word mark." The Board struck her fraud claim because she did not set forth allegations of specific facts upon which the claim was based. And the Board also struck Curtin's claim of genericness because she did not allege that consumers primarily understand the word "Rapunzel" to be the generic name or adjective for dolls and toy figures.

The Board found, however, that the claims of mere descriptiveness and failure-to-function were adequately pleaded.

Professor Curtin was allowed 30 days within which to submit a second amended notice of opposition with sufficiently pleaded fraud and genericness claims.

Read comments and post your comment here.

TTABlog comment: For more details and commentary, see the October 29, 2018 blog post by Kira-Khanh McCarthy: "Does a Law School Professor Have Standing to Oppose RAPUNZEL for Dolls and Toy Figures?" [here]

Text Copyright John L. Welch 2018.

TTAB Schedules Eleven (11) Oral Hearings for January 2019

The Trademark Trial and Appeal Board (T-T-A-B, not Tee-tab) has scheduled eleven (11) oral hearings for the month of January 2019. The hearings will be held in the USPTO's Madison Building in Alexandria, Virginia. Briefs and other papers for these cases may be found at TTABVUE via the links provided.



January 8, 2019 - 2 PM: Oakwon Demographics LLC v. Mission Escape Rooms LLC, Opposition No. 91227852 [Section 2(d) opposition to MISSION ESCAPE and MISSION ESCAPE ROOM for "Conducting live entertainment in the nature of games featuring room escape, puzzles, and team strategy," on the ground of priority and likelihood of confusion with the marks MISSION ESCAPE GAMES and MISSION for "Arranging and conducting entertainment by means of live interactive puzzle adventure games and challenges, namely, featuring room escape, problem solving, teamwork and strategy and social entertainment event"].

January 9, 2019 - 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”].

January 10, 2019 - 11 AM: In re Aramark Uniform & Career Apparel Group, Inc., Serial No. 87583832 [Section 2(d) refusal of ARAMARK FLEXFIT for various clothing items in view of the following registered marks: THE ORIGINAL YP FLEXFIT IT FITS YOUR LIFE with design; YP FLEXFIT TECH 110 ONE TEN with design; FLEXFIT DELTA; FLEXFIT UNIQUE TECHNOLOGY AND SUPERIOR COMFORT; FLEXFIT THE ONE AND ONLY ORIGINAL; PREMIUM FITTED CAP YP 210 FITTED FLEXFIT TECH with design; and FLEXFIT (different owners)].

January 15, 2019 - 10 AM: Los Santos, LLC v. Johnny D. Gabriel and Rosalie Gabriel, Opposition No. 91223574 [Opposition to registration of MEZQUILA for "alcoholic beverages except beer," on the grounds of lack of bona fide intent, genericness, mere descriptiveness, geographically deceptive misdescriptiveness, and deceptive misdescriptiveness].

January 15, 2019 - 11:30 AM: In re Wenger S.A., Serial No. 85157939 [Refusal to register SWISS MILITARY for "watches of Swiss origin" on the ground of genericness, and alternatively, mere descriptiveness].

January 15, 2019 - 1 PM: Volvo Trademark Holding AB v. Wolvol Inc, Opposition No. 91207836 [Opposition to registration WOLVOL for "Computer screens; Computer touchscreens; Electronic writing tablets; Laptop computers; Laptops; Notebook and laptop computers; Notebook computers; Overlays specially adapted for touchscreen displays; PC tablet; Tablet computer," on the grounds of likelihood of confusion with, and likely dilution of, the mark VOLVO registered and/or used for "a range of goods and services, including, automobiles, trucks, earth moving machines, and related goods and services, including . . . video screens, computers, computer software, and the like."

January 17, 2019 - 11 AM: In re Country Oven, Inc., Serial No. 87354443 [Section 2(d) refusal of COUNTRY OVEN for "Self-serve retail bakery shops; Retail bakery shops; bakery services, namely, online retail bakery shops" and "Bakery services, namely, the manufacture of bakery products to the order and/or specification of others" in view of the identical mark registered for "bread buns"].

January 17, 2019 - 1 PM: International Beauty Exchange, Inc. v. K & N Distributors, Cancellation No. 92063647 [Section 2(d) opposition to AFRICAN CLAIR FORMULA PLUS for "cosmetics,"in view of the registered mark AFRICAN FORMULA for "skin care products, namely, toilet soap, facial cream, and skin lotion; and hair care products, namely, shampoo, conditioner, straightener and mousse"].

January 22, 2019 - 11 AM: In re LedgerDomain, LLC, Serial No. 87159899 [Section 2(e)(1) mere descriptiveness refusal of LEDGERDOMAIN (standard characters) for "Downloadable software for creating, managing, and analyzing data on blockchains, distributed ledgers and peer-to-peer payment networks in the fields of financial management, asset management, resource management and decentralized applications" and for "Application service provider featuring application programming interface (API) for developing mobile and web-based applications in the fields of blockchains, distributed ledgers and peer-to-peer payment networks in the fields of financial, asset management, resource management and decentralized applications for creating, managing, and analyzing data on blockchains, distributed ledgers and peer-to-peer transaction and payment networks; Software as a service (SAAS) services, namely, software development tools developing mobile and web-based internet applications and client interfaces in the fields of blockchains, distributed ledgers and peer-to-peer payment and transaction applications for creating, managing, and analyzing data on blockchains, distributed ledgers and peer-to-peer transaction and payment networks; Platform as a service (PAAS) featuring computer software platforms for use in developing software in the fields of blockchains, distributed ledgers and peer-to-peer payment and transaction networks and decentralized applications for creating, managing, and analyzing data on blockchains, distributed ledgers and peer-to-peer transaction and payment network"].

January 24, 2019 - 11 AM: In re Creative Edge Design Group, Ltd., Serial No. 87287662 [Section 2(e)(5) functionality refusal of the packaging design shown below, for "milk].

January 31, 2019 - 10 AM: Fifty-Six Hope Road Music Limited v. Sandal Factory, Inc., Opposition No. 91212582 [Opposition to GNARLY MARLEY'S for "Retail store services featuring clothing, souvenirs, and novelty gift items;" Souvenirs and novelty goods, namely, ornamental novelty buttons, badges, and pins;" and "Apparel, namely, t-shirts, shirts, pants, shorts, and dresses," on three grounds: likelihood of confusion with, and likelihood of dilution of, the marks MARLEY, BOB MARLEY and others, registered and/or used for a variety of goods and services, and false association under Section 2(a).

Read comments and post your comment here.

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

Text Copyright John L. Welch 2018.

Precedential No. 36: Applying CAFC's Converse Factors, TTAB Finds SNOBALLS Concession Trailer Configuration Lacks Acquired Distinctiveness

The Board affirmed a refusal to register the product configuration mark shown below, for "Concession trailer for snowball vendors to operate a viable snowball business" [the word SNOBALLS being disclaimed], finding that Applicant SnoWizard, Inc. failed to prove acquired distinctiveness under Section 2(f). After rejecting SnoWizard's claim that the mark at issue constitutes packaging trade dress (which can be inherently distinctive), the Board applied the CAFC's recently-minted Converse factors to the Section 2(f) issue. In re SnoWizard, Inc., 129 USPQ2d 1001 (TTAB 2018) [precedential] (Opinion by Judge George C. Pologeorgis).

Product Packaging or Product Design?: The applied-for mark is described as "a three-dimensional configuration of a snowcapped roof with the word “SNOBALLS,” a snowball and associated beverage container positioned on top of a concession trailer for snowball vendors."

SnoWizard sought registration under Section 2(f) of the Lanham Act, thereby, according to the Board, "effectively" conceding that its mark is not inherently distinctive. See In re MGA Entm’t, Inc., 84 USPQ2d 1743, 1747 (TTAB 2007).  Nonetheless, SnoWizard had preserved its argument that the mark constitutes inherently distinctive product packaging, not product design. Wal-Mart Stores Inc. v. Samara Bros Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081 (1992)).

In Wal-Mart, the Supreme Court stated that, in close cases, “courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning,” 54 USPQ2d 1070, but the Board pointed out that "this is not a close case."

Clearly, the product at issue in this case is the concession trailer; that is the product offered for sale, purchased by, and used by snowball vendors. It is not a container for flavored shaved ice or snowballs sold to consumers, as suggested by Applicant. Accordingly, Applicant’s applied-for mark is properly characterized as a product design.

Acquired Distinctiveness: The Board applied the "secondary meaning" factors set out by the CAFC in its recent decision in Converse, Inc. v. ITC, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018).

[T]he considerations to be assessed in determining whether a mark has acquired secondary meaning can be described by the following six factors: (1) association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.

Snow Wizard annual sales of the "claimed trade dress concession trailer" averaged approximately $35,000 per year over the past nine years. The Board found this figure to be meaningless, since there was no information as to the cost of each concession trailer, how many consumers have purchased the trailers, or how many trailers SnoWizard sold per year. "Indeed, one could reasonably assume that the sales average is modest for large items such as concession trailers." In any case, even assuming that the sales were more than modest, "mere figures demonstrating successful product sales are not probative of purchaser recognition of a configuration as an indication of source."

The Board noted that “look for” advertising may be "particularly probative on the issue of whether a product design functions as a source identifier," but the record was devoid of any such advertising. Moreover, SnoWizard did not provide "any of the other kinds of evidence that may show that the mark has acquired distinctiveness, namely:  (1) advertising figures for its goods, (2) the number of customers for its goods, (3) evidence regarding its exclusivity of use, (4) the unit amount of concession trailers it has sold, (5) evidence demonstrating an association of Applicant’s applied-for product design or trade dress with Applicant by actual purchasers, (6) evidence showing that others have intentionally copied Applicant’s product design, or (7) unsolicited media coverage of its concession trailer product design." See, e.g., Converse, Inc., 128 USPQ2d at 1546.

Examining Attorney Carol Spils submitted evidence that concession trailers with decorative roofs having representations of ice, snow cones, and similar food items are "not uncommon." There was no indication that any of the third-party configurations were "perceived by consumers as indicators of source for any goods or services, let alone for the trailers themselves."

Moreover, while these third-party uses of concession trailer designs may not be substantially similar to Applicant’s applied-for mark, this evidence nonetheless shows that consumers are accustomed to seeing decorative roofs with snow cones, ice cream and similar food item designs on concession trailers and the like, presented in a non-source-indicating manner. Under such circumstances, consumers for concession trailers would look to differently designed concession trailer roofs as being aesthetic features, or generally advertising food items sold within, rather than acting as an indicator of source.

Weighing the Converse factors, the Board found that SnoWizard failed to prove acquired distinctiveness in its product configuration, and so the Board affirmed the refusal to register under Sections 1, 2 and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment: There was not a snowball's chance of reversal.

Text Copyright John L. Welch 2018.

Precedential No. 35: TTAB Enters Judgment as a Sanction for Discovery Abuses and Egregious Conduct

After four years of misconduct by Respondent Corcamore, LLC, the Board granted Petitioner SFM's motion for judgment under Trademark Rule 2.120(h)(1) and pursuant to the Board’s inherent authority to sanction, due to Corcamore's numerous discovery violations and repeated flouting of Board orders, rules, and procedures. SFM, LLC v. Corcamore, LLC, 129 USPQ2d 1072 (TTAB 2018) [precedential].

SFM, LLC petitioned for cancellation of Corcamore's registration for the mark SPROUT for "vending machine services," alleging priority and likelihood of confusion with its marks SPROUTS and SPROUTS FARMERS MARKET for "retail grocery store services."

In 2015, after determining that Corcamore had filed an “inordinate number of motions (all of which have been denied) at a very early stage in this proceeding,” the Board prohibited Respondent from filing any additional unconsented motions without first obtaining Board permission. Nonetheless, Corcamore continued to file unnecessary or procedurally improper motions, causing the Board to issue another prohibition on unconsented motions without first obtaining its permission. The Board ordered that, in the future, Corcamore contact the Board's interlocutory attorney to conduct a case conference with counsel for Petitioner SFM also present. Corcamore failed to comply.

In the discovery arena, Corcamore filed an "eleventh-hour" motion for a protective order, seeking to defer the deposition of its Fed. R. Civ. P. 30(b)(6) witness until the Board had ruled on Corcamore’s untimely motion to compel. The Board denied the motion. The Board then granted SFM's motion to compel supplemental responses to certain document requests and interrogatories.

Corcamore refused to provide its Rule 30(b)(6) witness for deposition, failed to timely and fully provide supplemental discovery responses, and failed to "Bates number" the documents it did produce, despite the Board's order that it do so.

Respondent has refused to cooperate in the discovery process for over sixteen months. Respondent’s discovery violations are repeated, egregious and demonstrate Respondent’s intent to thwart Petitioner’s discovery of information and documents the Board has already determined are discoverable. There is no reason to assume that, given additional opportunities, Respondent will fulfill its obligations under the Federal and Trademark Rules and the Board’s orders. Accordingly, Petitioner’s motion for discovery sanctions in the form of judgment is granted under Trademark Rule 2.120(h).

In addition, Corcamore violated two Board orders in numerous ways, as noted below. The Board concluded that Corcamore's conduct, taken as a whole, warranted the sanction of judgment pursuant to the Board’s inherent authority to enter sanctions. "In assessing sanctions under our inherent authority, we consider: (1)bad faith conduct; (2) willful disobedience of Board orders; (3) length of delay or clear pattern of delay; (4) due warning that sanctions may be entered; (5) reasons for noncompliance; and (6) effectiveness of lesser or alternative sanctions."

Respondent’s conduct has been particularly egregious. Respondent made good on its promise to impose a “procedural Rubicon” in this proceeding with Respondent’s campaign of filing frivolous motions, by, inter alia, refusing to meet and confer with counsel for Petitioner regarding Respondent’s discovery responses, hanging up on counsel for Petitioner during a meet and confer telephone conference on two separate occasions, outright refusing to “read or open” emails from Petitioner’s counsel of record for years, and refusing to work with counsel for Petitioner to reschedule depositions of its Fed. R. Civ. P. 30(b)(6) and 30(b)(1) witnesses. In violation of Patent and Trademark Office Rule 11.402(a), counsel for Respondent also communicated directly with Petitioner about this case, without authorization to do so, knowing that Petitioner was represented by counsel.

The Board found it "obvious from a review of the record that Respondent has been engaging for years in delaying tactics, including the willful disregard of Board orders, taxing Board resources and frustrating Petitioner’s prosecution of this case." The Board therefore granted SFM's motion for sanctions in the form of judgment a pursuant to the Board’s inherent authority to sanction.

Read comments and post your comment here.

TTABlog comment: What about a sanction against counsel?

Text Copyright John L. Welch 2018.

TTAB Reverses Disclaimer Requirement: ANAHEIM Not Geographically Descriptive of Clothing

The TTAB reversed a refusal based on the USPTO's requirement, under Section 6(a), that Applicant Red Flags Fly disclaim the word ANAHEIM in its mark ANAHEIM HILLBILLIES (Stylized) for various clothing items. The examining attorney maintained that ANAHEIM is primarily geographically descriptive of the goods. The Board, however, found no evidence that the goods will emanate from Anaheim, California (applicant is located in Los Angeles), and in any event, "the juxtaposition of ANAHEIM with HILLBILLIES creates an incongruity rendering Applicant’s mark unitary." In re Red Flags Fly, Inc., Serial No. 87104371 (December 20, 2018) [not precedential] [not precedential] (Opinion by Judge Angela Lykos).

A term is primarily geographically descriptive if (1) its primary significance is a generally known geographic location; (2) the goods or services originate in the place identified in
the mark; and (3) purchasers would likely believe that the goods or services originate in the geographic place identified by the term. The Board concluded that "at a minimum the second prong of the test has not been met."

There was no evidence in the record that applicant’s clothing products will originate from Anaheim, California. Because the application was filed under Section 1(b), there was no specimen of use that the Board could examine. The Board observed that proper Office procedure requires the examining attorney to either (1) contact the applicant to ascertain the origin of the goods and make a note to the file, or (2) issue an information request under Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b). SeeTMEP Section 1210.03.

Moreover, the Board found that "the juxtaposition of ANAHEIM with HILLBILLIES creates an incongruity rendering Applicant’s mark unitary."

The record shows that “Anaheim” is “a city outside Los Angeles, in Southern California. It’s home to the Disneyland Resort, a massive complex of family-friendly, Disney-themed rides, restaurants, hotels and shops.” According to MacMillan Dictionary, “hillbilly” is defined as “someone who lives in the countryside, especially someone who is not well educated.” Consumers are well aware that Anaheim is not “the countryside,” and therefore likely to perceive Applicant’s mark as a sardonic reference to the city’s populace and sprawling highly developed landscape. The intricate gothic stylization of the lettering in the mark creates another point of irony.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: As you may know, ANAHEIM HILLBILLIES is a brand created by Gwen Stefani, a native of Anaheim.

Text Copyright John L. Welch 2018.

TTABlog Test: Is PARSONS Primarily Merely a Surname for Golf Equipment?

The USPTO refused registration of the mark PARSONS for golf equipment and various ancillary goods and services (six applications, each in a different class), finding the mark to be primarily merely a surname under Section 2(e)(4). Examining Attorney April E. Reeves pointed out that the founder of Applicant PXG is Bob Parsons, whom applicant describes as a "well-known businessman, philanthropist and golf nut." Applicant argued that the word "parsons" has another meaning and therefore is not primarily a surname. How do you think this came out? In re Parsons Xtreme Golf, LLC, Serial Nos. 86666031, 86700421, 86701458, 86701787, 86702680, 86706223 (December 17, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Rareness: The evidence showed that tens of thousands of individuals in this country have the surname PARSONS. Wikipedia lists nearly 80 "[n]otable people with the surname of Parsons,” including Applicant’s founder, who is identified as an entrepreneur. Applicant introduced U.S. Census Bureau data to argue that the number of people with the PARSONS surname, as a percentage of total population, is extremely small. The Board was unmoved: "such a comparison with even the most common surname would represent only a small fraction of the U.S. population."

The widespread appearance of the surname in mainstream media, as well as indications that well-known celebrities bear the surname, contribute to public perception of PARSONS as a surname. Based on this evidence, we find that PARSONS is not rarely encountered as a surname, and therefore it is likely to be perceived by the public as having surname significance.

Bob Parsons: Applicant’s founder, Bob Parsons, bears the surname, and applicant publicizes that connection on its website and in its promotional materials. This evidence weights in favor of the surname refusal.

Bob Parsons By Gage Skidmore
Other Meaning: Applicant urged that because "parsons" can be defined as members of the clergy, the non-surname significance undercutting a claim that the proposed mark is primarily merely a surname. Applicant pointed to the reference to "Parson Brown" in the popular Christmas song "Winter Wonderland." The examining attorney argued that the surname meaning is far more familiar to consumers.

The Board observed that the mere existence of other non-surname meanings of a mark does not preclude a finding that it is primarily merely a surname. See, e.g., Mitchell Miller, PC v. Miller, 105 USPQ2d 1615, 1621 (TTAB 2013) (MILLER primarily merely a surname).

Applicant’s golf-related goods and services and other promotional items do not relate in any way to the clergy, and Applicant offers no reason why a consumer would associate that meaning of PARSONS with its mark, rather than the surname meaning. Particularly given Applicant’s own extensive promotion of PARSONS as the surname of its founder, we find that the consumers would apply the surname meaning to Applicant’s mark.

Structure and Pronunciation: There was no evidence that PARSONS is structured like other surnames. The examining attorney contended that PARSONS is like other English occupational surnames, and is derived from historical use as a surname for relatives or servants of a clergyman. The Board was not impressed, since this evidence did not show any similar pronunciation with or structural similarity to other common surnames.

Conclusion: The Board found that "the record, taken as a whole, establishes that the primary significance of PARSONS to the purchasing public is merely that of a surname within the meaning of Section 2(e)(4)."

Read comments and post your comment here.

TTABlog comment:  How many people named Parsons can you name?

Text Copyright John L. Welch 2018.

TTABlog Test: Are Cell Phone Covers Related to Sunglasses Under Section 2(d)?

Oakley, Inc. opposed an application to register the mark FROGSKINS (standard characters) for "protective covers and cases for cell phones, laptop computers, tablet computers and portable media players," claiming a likelihood of confusion with its identical mark registered for "eyewear, namely sunglasses and accessories for sunglasses, namely, replacement lenses, ear stems and nose pieces." Because the marks are identical, a lesser degree of similarity between the goods is necessary to support a finding of likely confusion. But are the goods close enough? How do you think this came out? Oakley, Inc. v. JMM Lee Properties, LLC, Opposition No. 91231865 [not precedential] (Opinion by Judge Marc A. Bergsman).

Strength of Opposer's Mark: "In determining the strength of a mark, we consider both its inherent strength, based on the nature of the mark itself, and its commercial strength, based on marketplace recognition of the mark." The Board found Oakley's mark FROGSKINS to be inherently distinctive. The mark is registered on the Principal Register without a Section 2(f) claim, and there was no evidence or testimony regarding third-party use or registration of similar marks for similar goods.

As to commercial strength, Oakley claimed that its mark is famous but its proofs fell short. The record showed that Oakley has used the mark since 1985, has sold an average of about $15 million worth of the goods on an annual basis, that it has expended $62,500 per year on advertising, and has sold about 156,250 units per year. The Board, however, noted that long use alone does not establish fame. Oakley offered no evidence of market share and no evidence as to how its advertising expenditures compare to those of competitors. Moreover, the FROGSKINS mark does not appear without the OAKLEY house mark.

Nonetheless, the Board found that FROGKSINS is a "commercially strong mark entitled to a broad scope of protection or exclusivity of use in connection with sunglasses and related accessories, but it does not have the extensive public recognition and renown of a famous mark."

Comparing the Goods: Oakley argued that the goods are related because it sells "goods that compete with the goods identified in Applicant's Application, under its house brand," namely, computer bags and "wristlets" that are able to hold cell phones. These goods, Oakley asserted, are sold in close proximity to its eyewear products.

The fact that Oakley sells the same goods as applicant, even under a different mark, is relevant for the issue of relatedness of the goods. However, there was no testimony or evidence that any other third-party manufactures or sells eyewear and eyewear accessories and "protective covers and cases for cell phones, laptop computers, tablet computers and portable media players."

Oakley submitted a copy of Applicant JMM Lee’s cancelled use-based registration for the mark FROGSKINS for “sunglasses, sunglass lenses, eyewear cases . . . ," but the Board observed that a cancelled or expired registration has no probative value other than to show that it once issued. [Not sure why this doesn't have some probative value on the issue of the relatedness of the involved goods. - ed.].

Oakley also contended that because it sells the products that applicant identified, its planned expansion of the FROGSKINS line to those products lends support that Applicant’s protective covers and cases for cell phones are within Oakley's natural zone of expansion for eyewear and sunglasses. The Board, however, found "no evidence from which to determine if Applicant’s goods are or are not a distinct departure from Opposer’s eyewear and eyewear accessories."

There is no testimony or evidence establishing that the nature or purpose of Opposer’s eyewear and eyewear accessories is related to Applicant’s protective covers. There is no testimony or evidence establishing that the channels of trade for Opposer’s eyewear and eyewear accessories are similar to Applicant’s protective covers. There is no testimony or evidence establishing that other companies sell both eyewear and eyewear accessories and protective covers.

Therefore Oakley failed to prove its natural zone of expansion claim.

Trade Channels and Purchasers: There was no evidence or testimony as to how and to whom eyewear products and protective covers are sold, how those products would be encountered by the same consumers, or how the marketing efforts of the parties overlap. In short, Oakley failed to meet its burden to prove that the involved goods are offered in the same channels of trade to the same classes of consumers.

Bad Faith: Oakley claimed bad faith under the thirteenth du Pont factor, asserting that applicant has a business model of trading on the well-known brands of others. In support, Oakley relied on certain documents produced by applicant in response to its production requests. However, documents produced in response to a Rule 34 request are not admissible by way of notice of reliance. Trademark Rule 2.120(k)(3)(ii), 37 C.F.R. § 2.120(k)(3)(ii) (A party that has obtained documents from another party through disclosure or under Rule 34 of the Federal Rules of Civil Procedure may not make the documents of record by notice of reliance alone, except to the extent that they are admissible by notice of reliance under the provisions of § 2.122(e), or the party has obtained an admission or stipulation from the producing party that authenticates the documents.”). And so this evidence of purported bad faith was rejected as inadmissible.

Conclusion: Balancing the relevant du Pont factors, the Board found that applicant's mark is not likely to cause confusion with Oakley's registered mark, and so it dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: I wonder whether a civil action for review under Section 1071 is in the offing, so that Oakley can add additional evidence in a trial de novo?

Text Copyright John L. Welch 2018.

TTABlog Test: Is "T MARK" Confusable With "TJ MARC & Design" for Jewelry?

The USPTO refused to register T MARK, in standard character form, for jewelry, finding it likely to cause confusion with the registered mark shown below, also for "jewelry." Applicant Chai Tai Fook argued that "TJ" is a weak formative because it is a common nickname and it appears in six third-party registered marks. How do you think this came out? In re Chai Tai Fook Jewellery Company Limited, Serial No. 87374361 (December 13, 2018) [not precedential] (Opinion by Judge Thomas W. Wellington).

Since the goods are identical (in part), the Board must presume that they travel in the same normal channels of trade to the same classes of consumers. Although applicant argued that jewelry is purchased with care (because it is a "very personal" item and "can often be expensive"), neither the application or cited registration restricts the identified goods as to quality or price point. Therefore the Board must presume that the goods include inexpensive jewelry that may be purchased with ordinary care. Furthermore, the Board's determination must be made based on the least sophisticated purchaser.

Purported Weakness of "TJ": Applicant argued that "TJ" has the connotation of a nickname and, as demonstrated by third-party registration evidence, is a "somewhat weak mark." It pointed to a Wikipedia entry for "T.J. (given name)," a printout from "eBabyNames" for "TJ," and six third-party registrations for marks continaining "TJ." According to applicant, in light of the weakness of "TJ," those six marks are able to co-exist on the register for the same or highly related goods.

The Board disagreed. Only one of the six third-party registrations for marks containing "TJ" were for jewelry while the others involved apparel or other "facially unrelated goods." Moreover, third-party registration evidence of marketplace weakness "is unavailing because third-party registrations standing alone, are not evidence that the registered marks are in use on a commercial scale, let alone that consumers have become so accustomed to seeing them in the marketplace that they have learned to distinguish among them by minor differences."

There was no evidence that "TJ" or the letter "T" has any special meaning vis-a-vis jewelry. In sum, the Board found no commercial weakness in "TJ" or any other element in the marks.

Comparing the Marks: As we know, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likelihood of confusion. The Board found that the marks at issue are "more similar than not." They are "very close" in sound because consumers are likely to verbalize each mark by its initial letter or letters followed by the phonetic equivalents MARK or MARC.

Because the applied-for mark is in standard characters, applicant seeks protection for any font in which the mark my be displayed, including that employed by the registrant. The crown design in the registered mark is relatively insignificant, and consumers will focus on the literal portion of the mark in calling for the goods. And although "TJ" may be a common nickname, the Board did not find it "so different from the single initial 'T.'" [Tell that to Mr. T - ed.].

In sum, the Board found that the similarities in the marks outweighed their differences.

Finally, applicant pointed to the two registered marks shown immediately below (the one on the left being owned by registrant), both for jewelry. Applicant argued that the co-existence of these two marks on the register shows that the USPTO has previously found that the registration of MARK for jewelry can co-exist with the registration of MARC.

The Board, however, pointed out once again that in ex parte prosecution of a particular application, neither the examining attorney nor the Board is bound by the decision of other examining attorneys made in other applications. See In re Nett Designs Inc., 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).

Conclusion: Finding confusion likely, the Board affirmed the Section 2(d) refusal.

Mr. T with Nancy Reagan, Christmas 1983
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TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2018.

Finding Confusion and Dilution Likely, TTAB Sustains AMERICAN EXPRESS Oppositions to AMERIXPRESS

One day after oral argument, the Board issued its 38-page decision sustaining the oppositions of American Express to registration of AMERIXPRESS for "Import agency services" and AMERIXPRESS LLC for nutritional supplements and "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, registered for various financial and credit card services, and for "general merchandise mail order services." Opposer's staggering revenues and advertising figures convinced the Board that AMERICAN EXPRESS is a famous mark for credit card services, enjoying both "likelihood of confusion fame" and fame for purposes of likelihood of dilution. American Express Marketing & Development Corp. v. Tung B. Vo, Oppositions Nos 91230559 and 91232714 (December 13, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Likelihood-of-Confusion Fame: "In determining the strength of a mark, we consider both its inherent strength, based on the nature of the mark itself, and its commercial strength, based on marketplace recognition of the mark." There was no evidence or testimony regarding third-party use or registration of AMERICAN EXPRESS or variations thereof that would suggest that the mark is not inherently distinctive.

As to commercial strength, the evidence showed that in the years 2010-2016, some 50 million AMERICAN EXPRESS credit cards were in force in the U.S., with total billing near or above $500 billion per year and annual revenues in the $10-$13 billion dollar range. On average, AmEx has invested $2 billion per year since 2013 in advertising and promotion in the United States. (Emphasis by the Board). An internal survey indicated 98-99% consumer recognition. The AmEx website has generated about 1.7 billion page views since 2013, with more than 400 million unique visitors. Forbes ranked AMERICAN EXPRESS as the world's 23rd most valuable brand.

The Board concluded that AMERICAN EXPRESS is a famous mark in connection with credit card services. The Board agreed with applicant that the mark is not famous for import or export services or for supplements, but it observed that this does not undercut the scope of protection accorded a famous mark. See Recot Inc. v. M.C. Becton, 54 USPQd at 1897. Accordingly, the Board concluded that the AMERICAN EXPRESS mark is entitled to "a very broad scope of protection."

The Marks: Not surprisingly, the Board found applicant's marks to be similar to the AMERICAN EXPRESS mark in appearance, sound, meaning, and commercial impression. Consumers will interpret AMERI as a shortened form of AMERICAN and XPRESS as a shortened form of EXPRESS. The disclaimed term LLC has no source-identifying significance.

The Goods and Services: The Board acknowledged that applicant's goods and services differ from those of Opposer AmEx. However, the Section 2(d) test is not whether the goods/services are likely to be confused, but whether purchasers are likely to be confused as to source, connection, or sponsorship between the providers of the goods and services. The Board concluded that consumers will likely mistakenly believe that applicant's products and services are somehow sponsored by or associated with AmEx. It observed that the fame of opposer's mark plays a role in the analysis of this factor, since famous marks "cast a long shadow."

Consumers familiar with Opposer’s famous AMERICAN EXPRESS credit card services, as well as its cross border payment services, local currency corporate cards, foreign remittance services, electronic funds transfer services and foreign currency exchange and payments services, upon encountering Applicant’s AMERIXPRESS import and export services will mistakenly believe that the services emanate from the same source or are otherwise somehow affiliated because of the similarities of the marks. Likewise, consumers familiar with Opposer’s famous AMERICAN EXPRESS credit card services and its “general merchandise mail order services” upon encountering Applicant’s AMERIXPRESS vitamin, mineral and nutritional supplements are likely to mistakenly believe that Applicant’s goods emanate from or are associated with 0pposer’s services.

Trade Channels: There are no restrictions on trade channels or classes of consumers in the involved applications and cited registrations. A consumer of applicant's services may also utilize AmEx's various credit card and financial services. And applicant's supplements may be sold through AmEx's general merchandise mail order services.

Purchaser Care: Despite the sparse evidence, even assuming that consumers will exercise a high degree of care, "the potential for confusion is accentuated by the significance of Opposer's AMERICAN EXPRESS mark, as well as the similarity of the marks because many potential consumers may not notice the differences in the marks."

Conclusion: The Board found confusion likely and it therefore sustained opposer's Section 2(d) claim.

Likelihood of Dilution: Keeping in mind that, for dilution purposes, a famous mark is one that has become a "household name," the Board found that AMERICAN EXPRESS is famous and "was so prior to the filing date of Applicant's applications [in 2016]"

As to the marks at issue, the Board found them to be "sufficiently similar in their overall commercial impression" that "consumers encountering Applicant's AMERIXPRESS mark will immediately be reminded of Opposer's famous AMERICAN EXPRESS."

The Board also found that AMERICAN EXPRESS is inherently distinctive, that opposer is engaging in substantially exclusive use of the mark, and that the mark has a high degree of consumers recognition. There was no evidence that applicant intended to create an association with the mark, nor was there evidence of actual association.

Conclusion: The dilution factors, other than intent and actual association, favored a finding of likelihood of dilution, and so the Board sustained opposer's Section 43(c) claim.

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TTABlog comment: Is AMERICAN EXPRESS inherently distinctive? It's an American company that provides fast services.

Text Copyright John L. Welch 2018.

TTAB Test: Is ULTIMATE GEL Merely Descriptive of Bedding Products?

The USPTO refused to register the mark ULTIMATE GEL, finding it merely descriptive of "Beds for household pets; Chair cushions; Mattress toppers; Mattresses; Pillows." Applicant Comfort Revolution pointed to five existing registrations for marks that include the word ULTIMATE for the same or related products, without disclaimer of ULTIMATE. Examining Attorney Brittany Cogan relied on nine third-party registrations either on the Supplemental Register, or registered under Section 2(f), or containing a disclaimer of ULTIMATE. How do you think this came out? In re Comfort Revolution, LLC, Serial No. 87357126 (December 12, 2018) [not precedential] (Opinion by Judge Linda A. Kuczma).


The Board found the word ULTIMATE to be laudatory and therefore merely descriptive of applicant's goods. "Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods." Wording like "ultimate," "best," "greatest," and the like are generally considered laudatory and descriptive of an alleged superior quality of the goods.

The word GEL describes the nature of applicant's goods. Third-party website evidence showed the use of "gel" to describe mattresses, dog beds, seat cushions,etc. Applicant's website uses the word descriptively to describe pillows. From this evidence, the Board concluded that GEL is a commonly used term for bedding products to describe a feature that includes gel to keep the user of the device cool.

Finally, the Board found that the components of the applied-for mark retain their laudatory and descriptive meaning when combined. The composite mark offers no unique, incongruous, or nondescriptive meaning in relation to the goods.

Comfort Revolution lamely contended that ULTIMATE GEL could be used to sell a wide variety of products unrelated to bedding - like hair care products and boat sealant. It argued that a consumer must gather additional information in order to perceive the significance of the phrase, and therefore the mark is at most suggestive of its goods.

The Board pointed out, however, that the determination of descriptiveness must be made in relation to the goods at issue. Whether the applied-for mark has different meanings in other contexts is simply irrelevant.

The Board had no doubt that ULTIMATE GEL is merely descriptive of applicant's bedding products, and so it affirmed the Section 2(e)(1) refusal.

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TTABlog comment: WYHA?

Text Copyright John L. Welch 2018.

TTAB Finds SEAHORSE JAPANESE CUISINE, in Chinese Characters, Confusable With SEAHORSE for Restaurant/Bar Services

The Board affirmed Section 2(d) refusals to register the two Chinese character marks shown below, for "restaurant services," finding a likelihood of confusion with the registered mark SEAHORSE for "bar, lounge services." Each application provided a statement that the characters in the mark "transliterate to 'Haima rìben liàoli,'" which means "seahorse Japanese cuisine" in English. Applicant Crystal Cruises argued that, even if consumers would stop and translate the marks, the visual and phonetic differences arising from the appearance of the marks and the transliterated pronunciations change the commercial impressions and outweigh the similarity in meaning. The Board disagreed. In re Crystal Cruises, LLC, Serial Nos. 86950812 & 869508411 (December 6, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine whether they are confusingly similar to English word marks. The Board found, based on U.S. Census data, that Chinese qualifies as a common, modern language. Among foreign languages, it is the second most common primary language in U.S. homes, after Spanish.

The doctrine of equivalents is not an absolute rule, but merely a guideline, and it is applied "only when it is likely that the ordinary purchaser would 'stop and translate' [the word] into its English equivalent." Here, because the English translation is "unambiguously literal and direct," the Board found it appropriate to apply the doctrine. There was no evidence that the relevant consumer would not stop and translate the mark.

Applying the doctrine of equivalents, the Board found that SEAHORSE is the dominant element of applicant's marks. Applicant argued that "the visual and phonetic differences arising from the appearance of its marks in Chinese characters and the transliterated pronunciation change the commercial impression and outweigh the similarity in meaning." The Board noted, however, that "this argument could be made in any foreign equivalents case, almost all of which by definition involve comparing marks in different languages that typically look and sound different."

The Board concluded that the differences in sound and appearance are outweighed by the significant similarity in connotation and commercial impression.

As to the services, third-party registration and use evidence established that "restaurant services," on the one hand, and "bar and lounge services," on the other hand, are related.

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

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TTABlog comment: How do you say WYHA? in Chinese?

Text Copyright John L. Welch 2018.

TTAB Finds "THUNDER" Weak, Dismisses THUNDERBIRD Wine Opposition to THUNDER ROAD for Moonshine and Whiskey

This is one of those relatively rare occasions when a party gathers enough evidence of third-party use and registrations to affect the outcome of a Section 2(d) proceeding. The Board dismissed Gallo's opposition to registration of the mark THUNDER ROAD for "alcoholic beverages, namely, Tennessee sour mash whiskey and moonshine," finding the mark not likely to cause confusion with the registered mark THUNDERBIRD for "alcoholic beverages except beers." E. & J. Gallo Winery v. Thunder Road Brands, LLC, Opposition No. 91222284 (December 6, 2018) [not precedential] (Opinion by Judge Albert Zervas).

Fame: Opposer Gallo claimed that its THUNDERBIRD mark is a "very strong, if not famous, mark," relying on use of the mark since 1957 and on pertinent sales and advertising data. However, its advertising expenditures from 2009-2015 were minimal. One article called THUNDERBIRD an "old brand," one whose glory days were 30 years ago. And its financial figures lacked context. One YouTube comment stated "[i]t's been so long, I didn't think they made that crap anymore, guess they do," suggesting a lack of notoriety for the brand.

Two brand awareness studies were of limited probative value because no one with first-hand knowledge of the studies testified, and because the studies were not particularly recent.

The Board concluded that Gallo had established "a moderate degree of renown," particularly for low-priced wine with a high alcohol content, and therefore the mark has some strength and is entitled a "broader than normal scope of protection."

The Goods: Because the goods are legally identical, the Board presumed that they travel in the same channels of trade to the same classes of consumers.

Purchasing Conditions: Gallo's wine sells for $5.00, and the evidence showed that moonshine sells for $2.99 per bottle. Consumers are likely to exercise a low degree of care when making a decision to purchase these goods. [particularly after the first bottle - ed.].

Third-party Marks: Many of the third-party registrations and uses of THUNDER-formative marks involved beer, but the Board found these to be relevant "because beer is a good similar to wine, whiskey and moonshine." They are all alcoholic beverages marketed in the same trade channels to the same customers.

In all, the Board counted 25 registrations and 13 Internet uses of THUNDER-formative marks for beer, wine, and other alcoholic beverages. The Board found that these third-party registrations and uses "establish weakness of the term THUNDER as a source indicator for alcoholic beverages. See Juice Generation (at least 26 third-part uses and registrations) and Jack Wolfskin ("voluminous" third-party evidence). Thus the THUNDERBIRD mark "is not entitled to such a broad scope of protection that it is a bar to the registration of any mark comprising in part, the word 'thunder.'"

Robert Mitchum
The Marks at Issue: Although THUNDER is the first word in each mark, it is a weak source indicator, and so consumers will look to other parts of the marks to distinguish the source of the goods.

Of particular significance in our analysis is the meaning of the marks considered as a whole. A “thunderbird” is a mythical bird, while THUNDER ROAD on its face refers to the name of a road. “Thunder Road” may also be associated with the name of a movie released in 1958 starring Robert Mitchum, the father of Applicant’s principal James Mitchum, or the name of a song by Bruce Springsteen from 1975. The marks have entirely different connotations and hence different commercial impressions.

he Board concluded that the differences in the marks outweigh their similarities.

Conclusion: Balancing the relevant du Pont factors, the Board concluded that Opposer Gallo had filed to prove a likelihood of confusion, and therefor the Board dismissed the opposition.

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TTABlog comment: Here's a trivia question: on what early tv show did Chief Thunderthud appear? No googling!

Text Copyright John L. Welch 2018.

Precedential No. 34: In "Expedited Cancellation" Proceeding, TTAB Denies Petition to Cancel MYST Registration for Musical Entertainment Services

Under a recently established USPTO pilot program "to explore procedures for expediting certain cancellation proceedings to further the goal of maintaining the accuracy and integrity of the U.S. Trademark Register," the Board initiated an "expedited cancellation" proceeding involving Jeffrey E. Martin's registration for the mark MYST, in the stylized form shown below, for "entertainment services, namely live performances by a musical group." The Board dismissed the petition for cancellation because Petitioner TV Azteca failed to establish a prima facie case of abandonment based on its pleaded claim of nonuse during the three-year period immediately preceding the filing of the petition to cancel. TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, 128 USPQ2d 1786 (TTAB 2018) (Opinion by Judge Frances Wolfson) [precedential].

Procedure: This new expedited cancellation procedure is initiated by the Board. [It is not to be confused with the "streamlined" cancellation procedure that the Board has been considering. See comment below]. Under this program, the Board identifies cancellation cases that have not resulted in disposition by default and in which the only claims are abandonment or nonuse (or both). Cases with counterclaims are ineligible for the program. [What if the respondent wants to challenge petitioner's standing? What about affirmative defenses? - ed.]. Once a case is identified as a candidate for the expedited cancellation program, the Board participates in the parties’ discovery conference to discuss voluntary stipulation to one or more of the Board's several Accelerated Case Resolution (ACR) options, including pretrial final disposition on the merits, or abbreviated trial on the merits. See TBMP §§ 528.05(a)(2) and 702.04.

The Board participated in the parties' discovery conference and the parties agreed to litigate this case as an expedited cancellation proceeding. The parties agreed to exchange initial disclosures but dispense with formal discovery. Both parties filed testimony and documentary evidence together with their main briefs, and petitioner filed a rebuttal brief.

Abandonment: As the sole ground for cancellation, Petitioner TV Azteca alleged that Respondent Martin abandoned his MYST mark by discontinuing its use "for at least three years [March 2015 to March 2018] preceding the filing of this Petition to Cancel, with no intent to resume use."

Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a mark is deemed abandoned "When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment."

“Because registrations are presumed valid under the law, the party seeking their cancellation bears the burden of proving a prima facie case of abandonment by a preponderance of the evidence.”Yazhong Investing, 126 USPQ2d at 1533; see also On-line Careline, 56 USPQ2d at 1476. If the petitioner presents a prima facie case of abandonment, the burden of production, i.e., of going forward, then shifts to the trademark holder to rebut the prima facie showing with evidence of either: (1) use of the mark during the statutory period; or (2) an intent to resume use. Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998); Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1311 (Fed. Cir. 1989). The burden of persuasion, however, always remains with the petitioner.

Respondent Martin, appearing pro se, submitted several documents bearing the word MYST, but many were undated and none were dated during the March 2015 to March 2018 time period at issue. He also submitted an unsworn and therefore nonprobative statement regarding those documents. Thus Martin did not establish use of the mark MYST during the relevant period - but TV Azteca had the initial burden to show that Martin did not use his mark during that period.

In short, TV Azteca faced the unenviable task of trying to prove a negative. It focused on one particular document that had a partial date, namely, a flyer promoting a "MYST" concert on "March 25th" [no year specified] at the Pennant East in Bellmawr, New Jersey, and attempted to prove that the Pennant East had closed in 2011. Petitioner relied on several newspaper articles reporting the closing and on local certain records indicating that Pennant East had lost its liquor license, and thus any performance by Martin could not have occurred during the relevant three-year time period.

TV Azteca submitted six newspaper articles and a blog post discussing the closing of Pennant East, but Martin objected to these items as inadmissible hearsay. TV Azteca pointed to the "residual hearsay" exception of Fed. R. Evid. 807(a) for statements that have "equivalent circumstantial guarantees of trustworthiness" analogous to those of a public record and are "more probative on the point for which it is offered than any other evidence that the proponent can obtain through reasonable efforts" The Board noted that the residual hearsay exception is intended to "be used only rarely, in truly exceptional cases." Pozen Inc. v. Par Pharm. Inc., 696 F.3d 1151, 104 USPQ2d 1969, 1976 n.6 (Fed. Cir. 2012) (applying Fifth Circuit law and citing United States v. Walker, 410 F.3d 754, 757 (5th Cir. 2005)). The Board was unmoved: "Even assuming no reasonable effort could have discovered more probative evidence, the articles and blog post do not possess 'circumstantial guarantees of trustworthiness' equivalent to official records or witness testimony. We therefore sustain Respondent’s objection to the news and blog articles."

TV Azteca also pointed to certain official records in an attempt to show that Pennant East closed its doors in 2011. Again, the Board was unimpressed:

These records do not support Petitioner’s contention that Pennant East closed. Even if Pennant East twice lost its liquor license, that alone does not establish that the premises were shuttered, did not move elsewhere, or did not continue operating as an alcohol-free establishment or in violation of the licensing laws. Furthermore, even if the evidence could suggest that Pennant East closed in 2011, it is at best inconclusive as to whether Respondent discontinued use of his mark from March 2015 to March 2018.

The Board ruled that TV Azteca had failed to establish a prima facie case of nonuse.

We recognize that in attempting to prove a negative, as in proving abandonment through nonuse, “without resort to proper inferences the burdened party could be faced with an insurmountable task.” Cerveceria Centroamericana, 13 USPQ2d at 1310. But even in expedited proceedings, inferences must be based on proven foundational facts. Here, drawing all reasonable inferences available based on the evidence presented by Petitioner or contained in Respondent’s initial disclosures, we find that Petitioner has failed to establish a prima facie case of Respondent’s nonuse.

And so the Board dismissed the petition for cancellation.

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TTABlog comment: After this decision, why would a petitioner ever agree to a streamlined or expedited procedure (unless petitioner had a smoking gun)? Seems to me a petitioner needs to take discovery to prove its case, or else it will face the same nearly insurmountable task faced by TV Azteca: proving a negative.

The Board noted that it recently explored the possibility of establishing a "streamlined cancellation proceeding,” that would be initiated by a potential petitioner when it filed its petition to cancel. Under that plan, the petition would be limited to the grounds of nonuse or abandonment (or both), and the petition would be accompanied by any evidence or testimony in support of the claim(s). Counterclaims would not be permitted, very limited discovery would be allowed only when granted by the TTAB for good cause shown, proceedings would be conducted on an abbreviated schedule, there would be no oral hearing, and the TTAB would issue a decision within an expedited timeframe. The USPTO published a Request for Comments on streamlined proceedings in the Federal Register, 82 Fed. Reg. 22517 (May 16, 2017). However, consideration of the streamlined procedure is presently on hold while the Board explores the efficacy of the current pilot program, called the “expedited cancellation proceeding.” Unlike the streamlined model, the stipulations into which parties may enter in an expedited cancellation proceeding include all options available under the Board’s general ACR procedures.

Text Copyright John L. Welch 2018.

TTAB Test: Is "OVER THE FLOOR" Merely Descriptive of Rugs and Mats?

The USPTO refused to register the mark OVER THE FLOOR, finding it to be merely descriptive of "bath mats; personal exercise mats; meditation mats; gymnasium exercise mats; yoga mats; door mats; floor pads and non-skid floor mats in the nature of non-slip pads for use under rugs or carpet to prevent slippage; rugs; area rugs." Applicant argued that “the ‘mental link’ between the mark OVER THE FLOOR and Applicant’s goods as recited in the application is neither immediate nor instantaneous, and that its goods are placed on the floor, not over the floor. How do you think this came out? In re Mats & Rugs LLC, Serial No. 87594162 (December 4, 2018)[not precedential] (Opinion by Judge Jyll Taylor).

Examining Attorney Sahar Nasserghodsi relied on dictionary definitions of "over" ("above so as to cover or protect"), "floor," "rug" ("a small carpet that covers part of a floor”), and "mat," and on applicant's specimens of use, which include a “no-slip rug pad” the label for which states that the pad has “sturdy and sleek rug pad construction [that] prevents slips and falls” and “adds extra cushioning and comfort to your home.” The Board sided with the examining attorney:

It is clear that the wording “OVER THE FLOOR,” as a whole, immediately describes a characteristic, purpose or function of the identified mats, floor pads and rugs, namely, that they cover, or are placed over, the floor and provide comfort, protection and/or decoration. The combination of terms is not incongruous, and no additional information is needed for the merely descriptive significance thereof to be readily apparent to prospective purchasers of rugs, mats and other floor coverings.

Applicant maintained that its goods do not "'cover' the floor; that is, they do not hide it." Nor are they principally used to "protect" the floor. According to applicant "the principal intent … [is to] provide an aesthetic element to the space in which it is placed, . . . [and] greater comfort for feet on a hard or cold surface."

The Board was not impressed: "That Applicant’s goods are intended to be multi-functional does not detract from their protective function, or, more to the point, where they are placed in relation to flooring, even if protection is not the featured function."

Applicant asserted that the phrase OVER THE FLOOR is not in common usage or needed by competitors to describe goods placed "on the floor." Again, the Board was unimpressed: "That the phrase OVER THE FLOOR is not in common parlance is not controlling. That Applicant may be the first and only user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive."

Finally, applicant urged than any doubt as to registrability should be resolved in its favor, but the Board had no doubt that the mark is merely descriptive of the goods.

And so it affirmed the Section 2(e)(1) refusal.

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TTABlog comment: WYHA? Can a mark be refused registration on the ground of obviousness? I mean, where else would you put a rug or mat? Under the floor?

Text Copyright John L. Welch 2018.

TTAB Test: Is SNAP FUNNEL Confusable with SNAP & POUR for Funnels?

The USPTO refused registration of the mark SNAP FUNNEL for funnels [FUNNEL disclaimed], finding the mark likely to cause confusion with the registered mark SNAP & POUR for a “funnel which snaps onto plastic containers, including automotive fluids and household cleaners and detergents.” The goods overlap, but what about the marks? Isn’t SNAP & POUR rather weak? How do you think this came out? In re Gabor Alex Stibinger, Serial No. 87144063 (December 4, 2018) (Opinion by Judge Thomas W. Wellington) [not precedential].
 

 
The Goods: Applicant’s “funnels” encompass registrant’s snap-on funnels, and so the involved goods are legally identical. Consequently, it is presumed that these overlapping goods travel in the same trade channels to the same classes of consumers. These factors weighed “heavily” in favor of a finding of likely confusion.

Strength of the Cited Mark: Applicant argued that the cited mark SNAP & POUR and the term SNAP are weak due to the existence of “a crowd” of SNAP marks for similar goods. Moreover, Applicant contended that the registered mark “describes the goods” and “is a directive –‘snap, then pour.’” The record evidence, however, did not support the “crowded field” argument. Although applicant cited dozens of third-party registrations, there was no evidence that any of the marks were in use. Registrations alone have no impact on the commercial strength of the cited mark.

Moreover, none of the  third-party registrations involved goods that are related to funnels for household use. However, the record evidence did establish that SNAP is suggestive of features of funnels: i.e., funnels can be snapped onto a container for a tight fit.

The Board disagreed with applicant's assertion that SNAP & POUR is "extremely descriptive." In this ex parte appeal, since the cited mark is registered on the Principal Register, the Board must assume that it is at least suggestive. And the Board found that the mark is suggestive of a feature of funnels. The third-party registrations submitted by applicant corroborate the suggestive nature of the term "snap."

In sum, the Board found no commercial weakness in the term SNAP or in the cited mark, but the term and the mark possess a degree of inherent weakness due to their suggestive connotations. The suggestiveness of SNAP "may decrease the significance of the involved marks' sharing of this same term."

The Marks: The Board found the marks to be more similar than not. The initial and sole source-identifying term in applicant's mark is SNAP. The addition of the generic term FUNNEL does not help distinguish the marks. [Why not? - ed.]. Both marks begin with the mark SNAP, and the first term in a mark is "more likely to be noticed and remembered by consumers and thus plays a dominant role in the mark." [I think consumers will remember SNAP & POUR, not just SNAP - ed.]

We have given consideration to Applicant’s argument that the mark SNAP & POUR conveys an instruction of use to the consumer and, at least with respect to the second part (“pour”), this directive is not expressed in Applicant’s mark. We also bear in mind our finding that the term SNAP and the mark SNAP & POUR are suggestive of the goods and thus possess some inherent weakness. However, we cannot ignore that the same suggestive meanings, i.e., that the funnels can be attached by clipping onto containers and/or are easy (a “snap”) to use, may be conveyed by both two marks.

The Board found that the marks are visually and aurally similar, and also have similar commercial impressions.

Conclusion: Noting that even weak marks are entitled to protection against registration of similar marks for identical goods, the Board affirmed the refusal.

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TTABlog comment: What do you think? Did the Board look through the wrong end of the funnel?

Text Copyright John L. Welch 2018.