Precedential No. 2: #MAGICNUMBER108 Fails to Function as a Trademark for Shirts, Says TTAB

Finding that the term #MAGICNUMBER108 fails to function as a trademark for shirts, the TTAB affirmed a refusal to register under Sections 1, 2, and 45 of the Lanham Act. The Board concluded that the term conveys an informational message referring to the Chicago Cubs winning the World Series in 2016 after a 108-year drought, and does not serve as a source identifier. In re DePorter, 129 USPQ2d 1298 (TTAB 2019) [precedential] (Opinion by Judge Linda A. Kuczma).

Harry Caray's image on applicant's specimen t-shirt
Examining Attorney Kim Teresa Moninghoff submitted evidence showing that numerous third parties have used #MAGICNUMBER108 as part of messages posted on social media during and after the 2016 World Series, expressing support for the Cubbies. There was no dispute that applicant - who may be the World's leading expert in Cubs numerology - was the first to use the term.

The Board found that the USPTO's evidence shows "wide use of the proposed mark in a non-trademark manner to consistently convey information about the Chicago Cubs' World Series appearance and win after a 108-year drought." There is no requirement that the evidence show the term used for goods in commerce.

This evidence is competent to suggest that upon encountering Applicant's "mark," prospective purchasers familiar with such widespread non-trademark use are unlikely to consider it to indicate the source of Applicant's goods."

The presence of the hash mark in applicant's proposed mark reinforced the Board's finding.

In the social media context, a hashtag "is a word or phrase preceded by a hash mark (#), used within a message to identify a keyword or topic of interest and facilitate a search for it." Evidence in the record establishes that Applicant's proposed mark #MAGICNUMBER108 has been used extensively as a hashtag to identify the Chicago Cubs’ World Series appearance and win.

The Board observed that a hashtag, when used as part of an online social media search term, generally serves no source-identifying function. It "merely facilitate[s] categorization and searching within online social media." TMEP Section 1202.18. "Therefore, the addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable term typically will not render the resulting composite term registrable."

Applicant DePorter argued that his proposed mark has never been used in everyday speech, and instead is arbitrary and fanciful. The Board pointed out, however, that even if true, that does not necessarily mean the public perceives the term as a source indicator. Here, the evidence shows that the proposed mark is a "widely-used message to convey information about the Chicago Cubs baseball team."

The Board concluded that "#MAGICNUMBER108 is perceived as part of an online social media trend related to the phrase 'magic number 108,' expressing affiliation with the Chicago Cubs baseball team and their 2016 World Series win after 108 years rather than as an identification of source for the goods identified in the application."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Do any people beyond the North Side of Chicago know (or care) what this term is supposed to refer to? If the term is informational to the teeny-weeny percentage of Americans who are Cub fans, is that enough to invoke the failure-to-function bar?

Text Copyright John L. Welch 2019.

TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?

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

In re Yang, Serial No. 87183891 (January 25, 2019) [not precedential] (Opinion by Judge Linda A. Kuczma). [Section 2(d) refusal of FURY OFF ROAD for "tires" [OFF ROAD disclaimed] in view of the registered mark GOLDEN FURY, also for tires].

In re Lawrence Charles, Serial No. 87297780 (January 25, 2019)[not precedential] (Opinion by Judge Cindy B. Greenbaum). [Section 2(d) refusal of TEABLY for "Tea-based beverages" in light of the registered mark TEABLEE for "Houseware and glass products, namely, items used in the preparation or presentation of tea namely, coffee cups, tea cups, and mugs, drip mats for tea, tea infusers, infusers not of precious metal, tea strainers, tea balls, tea balls not of precious metal, tea caddies, tea canisters, tea sets; utensils used in the preparation of tea; Household utensils, namely; swizzle sticks, slotted spoons, mixing spoons; drinking vessels; drinking straws of non-precious metal; drinking straws of wood"].

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"].

Read comments and post your comment here.

TTABlog comment: How did you do? Any WYHAs?

Text Copyright John L. Welch 2019.

WYHA? TTAB Affirms Section 2(a) False Association Refusal of TSA-KIT for "Bottles, sold empty"

Finding that the mark TSA-KIT for "bottles, sold empty," falsely suggests a connection with the U.S. Department of Homeland Security Transportation Security Administration ("TSA"), the Board affirmed a refusal to register under Section 2(a) of the Lanham Act. Applicant feebly argued that consumers understand TSA to mean "travel sufficient alcohol," but the record was devoid of any evidence in support. In re Elisabeth Stecki DBA Whineware, Serial No. 87215481 (January 24, 2019) [not precedential] (Opinion by Judge Thomas W. Wellington).

Section 2(a), in pertinent part, bars registration of "matter which may . . . falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols . . . ." The Board applied its standard four-part test under Section 2(a), considering whether:

1. The mark TSA-KIT is the same as, or a close approximation of, the name or identity previously used by another person or institution (TSA);

2. The mark would be recognized as such because it points uniquely and unmistakably to the TSA;

3. TSA is not connected with the goods offered by the applicant under the mark; and,

4. The fame or reputation of TSA is such that, when applicant’s mark is used with applicant’s goods, a connection with TSA would be presumed .

It is established that government agencies fall within the scope of protectable "persons" for purposes of Section 2(a). Unlike Section 2(d), the false association bar is not designed primarily to protect the public, but rather to protect persons and institutions from exploitation. "'[I]t appears that the drafters sought by Section 2(a) to embrace concepts of the right to privacy,' even in the absence of likelihood of confusion." University of Notre Dame, 217 USPQ at 508-09.

Applying the four-part test, the Board first found that TSA-KIT is a close approximation of TSA. The word KIT in applicant's mark "merely describes the manner in which the goods are being sold, i.e. as a kit."

Next, the Board concluded that the evidence "overwhelmingly" supports the finding that the mark TSA-KIT will be understood by consumers to point uniquely and unmistakably to the TSA. Travel goods, including goods very similar to applicant's "bottles, sold empty" are offered by third parties and advertised as compliant with TSA travel regulations. Applicant herself highlights the fact that her bottles meet the TSA "standard for contents allowable by law."

The Board found that consumers may believe that TSA has some connection with applicant's goods: e.g., that it has specifically approved the goods or certified the goods as being compliant with its regulations. There was no evidence to support the applicant's contention that consumers would understand TSA to mean "travel sufficient alcohol."

Applicant contended that consumers are aware that TSA neither sells nor sponsors novelty products, but that missed the point, said the Board. "[T]here is no need that TSA mark or sell related goods; rather the issue is whether consumers would assume the bottles have some connection with [TSA]."

Because TSA is uniquely involved in the regulation of what may be legally transported by travelers, it is likely that the inclusion of TSA in Applicant’s mark on goods designed to comply with TSA’s regulations will falsely suggest a connection with the governmental agency. Even if consumers do not mistakenly believe that TSA is the actual source or manufacturer of the goods, the inclusion of TSA in the applied-for mark may falsely suggest an affiliation between TSA and Applicant, or that TSA has formally approved or certified the goods as being compliant with TSA’s regulations.

As to the third and fourth elements of the applicable test, there was no dispute that applicant TSA is not connected with applicant or her products. Nor was there any dispute as to the fame or reputation of the TSA.

The Board concluded that "Applicant’s mark points uniquely to TSA and would be so recognized; TSA is not connected with Applicant or the goods being sold under the mark; and the fame or reputation of TSA is such that when Applicant’s TSA-KIT mark is used with her goods, such a connection would be presumed."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2019.

In 2018, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness Refusals?

I have again reviewed the TTAB's FOIA page in order to estimate the percentage of Section 2(e)(1) mere descriptiveness refusals that were affirmed by the Board during the last calendar year (2018). I counted 70 refusals, of which 63 were affirmed and 7 reversed. That's an affirmance rate of 90%. [Matching last year's 90% rate].


One of the mere descriptiveness reversals was precedential. It involved the mark SERIAL, where evidence of acquired distinctiveness overcame the Section 2(e)(1) refusals of the logo forms of the mark.

In re Serial Podcast, LLC, 126 USPQ2d 1061 (TTAB 2018) [precedential] (Opinion by Judge David K. Heasley]. [TTABlogged here]. The Board affirmed a refusal to register the term SERIAL in standard character form, finding it to be generic for "entertainment in the nature of an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling." However, the Board reversed refusals to register two design forms of the mark, shown below, finding that these two marks had acquired distinctiveness, but requiring a disclaimer of the word "SERIAL" in each mark. Applicant argued that use of the term “serial” as a noun is antiquated and archaic, and that the term in modern usage is an adjective describing a characteristic of audio programs. The Board, however, rejected the noun/adjective distinction, pointing out that both nouns and adjectives may be generic. Even though some articles refer to applicant’s podcast by its name Serial, "that amounts, at most, to 'de facto secondary meaning'’ in a generic term," and does not entitle applicant to registration. Because the applied-for mark is at best highly descriptive, "more substantial evidence" than media references was required to establish acquired distinctiveness. As to the word + design marks, the Board found, based on evidence of parodying and copying by third parties, that the composite logos have achieved public recognition as source indicators for applicant’s services.

The remaining reversals involved the marks: BRAND THERAPY; SCOREBOARD; GLOBAL FARMERS MARKET; CANINE CAVIAR (disclaimer of CAVIAR); THE HALAL SHACK; and JORDAN'S TORIDASU (disclaimer of TORIDASU).

Read comments and post your comment here.

Text Copyright John L. Welch 2019.

In 2018, What was the Rate of TTAB Affirmance of Section 2(d) Refusals to Register?

I have once again reviewed the TTAB's FOIA page in an attempt to estimate the percentage of Section 2(d) likelihood-of-confusion refusals that were affirmed by the Board during the last calendar year (2018). I counted 219 Section 2(d) refusals, of which 200 were affirmed and 19 reversed. That's an affirmance rate of 91.3%, or slightly more than 9 out of 10. [a few percentage points above last year's rate]. An unanswered question is: how many were WYHAs?


Two of the Section 2(d) decisions were precedential, involving the marks I'M SMOKING HOT and AMERICAN CONSTELLATION:

 In re FabFitFun, Inc., 127 USPQ2d 1670 (TTAB 2018) [precedential] (Opinion by Judge Peter W. Cataldo). [TTABlogged here]. The Board reversed a  Section 2(d) refusal of I’M SMOKING HOT for cosmetics, makeup, and other personal care products. finding the mark not likely to cause confusion with the registered mark SMOKIN’ HOT SHOW TIME for cosmetics. As to the strength of the cited mark, a dictionary definition of SMOKING (“attractive, sexy looking, very hot”) led the Board to conclude that the term has some conceptual weakness and is at best highly suggestive for cosmetics. As to marketplace strength, applicant pointed to screenshots evidencing ten third-party uses of SMOKIN’ HOT formatives as marks for cosmetics. Although this evidence was “more modest” than the amount of evidence in Jack Wolfskin, the Board found that the shared term SMOKIN’ [SMOKING] HOT is “somewhat weak in that it at best suggests a desired result of using the identified cosmetics, while the third-party uses ... tend to show consumer exposure to third-party use of the term on similar goods.” The Board concluded that the relative weakness of the component term SMOKIN’ HOT common to both marks weighs somewhat in favor of a finding of no likelihood of confusion. As for the marks, applicant’s mark “conveys the impression of a statement regarding one’s personal appearance and the registered mark conveys sexy entertainment.” The Board found the marks to be more dissimilar than similar, and it concluded that confusion is not likely.

In re American Cruise Lines, Inc., 128 USPQ2d 1157 (TTAB 2018) [precedential] (Opinion by Judge Marc A. Bergsman). [TTABlogged here]. Giving “great weight” to two consent agreements, the Board reversed a Section 2(d) refusal of AMERICAN CONSTELLATION, finding the mark not likely to cause confusion with the registered mark CONSTELLATION, both for cruise ship services. The examining attorney maintained that these were “naked” consents because they did not state the steps the parties would take to avoid confusion, but the Board pointed out that such terms, although preferred, are not essential for the consents to have probative value. “[N]o authority requires that parties explicitly agree to make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future as a prerequisite to giving some weight to a consent agreement.” The Board found that the second consent agreement was “clothed” because it included four reasons why applicant and registrant believed confusion was not likely. “Clothed”‘ consent agreements in which “‘competitors have clearly thought out their commercial interests’ should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.”

The remaining 17 reversals involved the following marks: FIT IN YOUR GENES; PANACHE; YUMMY'S; CREATE PAINT; AUBURN; CHIPPIE; CU BEAM; CARAT; MY MIXTAPEZ; TAMAL TAMAYO; LA CHULA & Design; SQUEEZE JUICE COMPANY; DIY AUTO; PARADYCE; ALLEN HOTEL; and HYDE NO. 1 PRESIDENTIAL CASK, and GO FRESH.


Read comments and post your comment here.

Text Copyright John L. Welch 2019.

TTAB Affirms Refusals of Color Pink for Tour Guide Services Due to Unacceptable Drawing and Lack of Acquired Distinctiveness

The Board affirmed two refusals to register the color pink for various tour and travel guide services, finding the drawing (shown immediately below) and the description of the mark unacceptable. The Board also found Applicant Herschend's proof of acquired distinctiveness inadequate. In re Herschend Adventure Holdings, LLC, Serial No. 87562135 (January 15, 2019) [not precedential] (Opinion by Judge Susan J. Hightower).

Description and Drawing: The application stated that the mark "consists of the color pink as applied to vehicles, brochures and websites (the mark consists of the color pink alone - the broken lines indicate the position of the mark and do not form part of the mark)."

TMEP 1202.05(d)(ii) states that an applicant seeking to register a single color service mark used on a variety of items not viewed simultaneously may submit a drawing displaying the mark as above: a solid-colored square with a dotted peripheral outline. "However, the examining attorney will generally require the applicant to submit a single amended drawing showing how the mark is used in connection with the services. The applicant must also submit a detailed description of the mark identifying the color and describing its placement."

Applicant's description of the mark was too vague and did not provide sufficient notice of the scope of applicant's claim. The Board noted that applicant had included an adequate description in a prior registration for the color pink: "The mark consists of the color pink as applied to the surface of a land vehicle." The drawing showed the placement of the mark:

The Board affirmed the requirement that  applicant submit an amended drawing depicting the manner in which the mark is used in connection with the services, and an amended description indicating the specific placement of the color. [Note: applicant operates as "Pink Adventure Tours" in the Scottsdale Arizona area. Its website and brochures employ a pink background. See the specimens of use].

Acquired Distinctiveness: Of course, a color mark cannot be inherently distinctive. Applicant's president asserted use of the color pink since at least 1998, pointed to numerous media mentions, and provided data regarding number of customers, visits to its website, and advertising expenditures.

The Board found that applicant had established acquired distinctiveness in the color pink as applied to the exterior of vehicles for tour and travel guide services (as reflected in its existing registration, issued under Section 2(f)). There was no evidence, however, of acquired distinctiveness in the color pink as applied to brochures and websites.

The Board agreed with Examining Attorney Linda M. Estrada that "Applicant's extensive sales and promotion may demonstrate the commercial success of applicant's services, but not that relevant consumers view the matter as a mark for these services." Applicant's raw numbers alone were "insufficient to meet the heavy burden to establish that consumers recognize Applicant's use of the color pink on brochures and websites as a service mark."

The Board therefore affirmed the refusals to register.

Read comments and post your comment here.

TTABlog comment: The Board also reversed, rather briskly, refusals on the grounds that applicant was seeking to register multiple marks, and that the applied-for mark differed on the drawing and specimens.

Text Copyright John L. Welch 2019.

#COVFEFE Fails to Function as a Trademark for Clothing, says TTAB

The Board affirmed a refusal to register the mark #covfefe (in standard character form) for "hats; T-shirts; wristbands as clothing; hoodies; jackets; jerseys; ties as clothing; tops as clothing," ruling that the term fails to function as a trademark for the identified goods. The Board found that the word “covfefe” has been widely used in public dialogue and on merchandise "in a non-source identifying manner, and it does not identify Applicant as the sole source of clothing identified by that term." In re Gillard, Serial No. 87469115 (January 11, 2019) [not precedential] (Opinion by Judge Christopher Larkin).

The term "covfefe" was born on May 31, 2017, when President Trump tweeted "Despite the constant negative press covfefe." The tweet went viral and engendered much discussion of the strange word "covfefe." On that same day, Applicant John E. Gillard filed the subject application to register "#covfefe."

“It is well settled that not every designation that is placed or used on a product necessarily functions as a trademark for said product and not every designation adopted with the intention that it perform a trademark function necessarily accomplishes that purpose.” D.C. One Wholesaler, Inc. v. Chien , 120 USPQ2d 1710, 1713 (TTAB 2016) (citing In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)). “The critical inquiry in determining whether a designation functions as a mark is how the designation would be perceived by the relevant public.” Id.

TMEP Section 1202 lists 15 grounds for refusal under the rubric "failure to function." Here, Examining Attorney Mark S. Tratos invoked the "informational matter" version, maintaining that #COVFEFE is "a social, political, or similarly informational message that is understood and commonly used as a reference to President Trump, typically expressing either support or disapproval of the President." Moreover, he asserted, consumers are accustomed to seeing the term (both COVFEFE and #COVFEFE) used by many different sources on a variety of goods and services, mostly in an ornamental manner.

Applicant Gillard, appearing pro se, contended that COVFEFE is a unique, coined term entitled to strong trademark protection. He professed his intention to "deal with" other users of his mark.

The Board turned to the record evidence to discern the public's perception of the term COVFEFE. The evidence showed the immediate "whirlwind of public discussion" regarding the term "covfefe," in newspapers, on the Internet, and in other media. Subsequently, media references to the term continued, and a Google search displayed a "wide array of memes" employing the term. In addition, the terms COVFEFE and #COVFEFE almost immediately began appearing on merchandise, including (of course) hats, t-shirts, and mugs, as well as personalized license plates, coffee, ale, balloons, beach balls, and so on.

The Board recognized that COVFEFE is a "sui generis nonsense word" that does not fit into the usual categories of non-source identifying terms. However, it is more like familiar expressions such as DRIVE SAFELY that have failed to function as marks. The Board agreed with the USPTO that COVFEFE is often used to convey a political view, but some uses do not have an express or apparent political reference.

Although Applicant Gillard was correct that COVFEFE does not have a true meaning and is thus not laudatory or merely informational, the Board deemed the term to be "in the nature of a verbal Rorschach test, in which users and observers of the word can project onto it any meaning they wish, and, as a result, it has been used ubiquitously" in several non-trademark senses. The Board pointed out that "[t]he more commonly a phrase is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark."

The use of the hashtag symbol with COVFEFE is "particularly probative" because hashtags "are commonly employed to facilitate categorization and searching of topics of public discussion."

[T]he record makes it clear that #COVFEFE has served that purpose in promoting discussion of the mystery word in the President’s tweet, the public will not understand #COVFEFE to identify one, and only one, source of clothing, and to recognize Applicant as that source, when it appears on Applicant’s goods.

Moreover the widespread third-party use of COVFEFE and #COVFEFE on a variety of goods, including clothing, shows that consumers are not likely to view the term, as applied to Gilland's goods, as a source indicator pointing uniquely to him.

Finally, turning to Applicant Gilland's specimens of use (see photos above), the Board noted that Gilland has displayed the applied-for mark "in a non-ornamental manner that is conventional for the display of [a trademark], but that is not dispositive of the issue of whether the term actually functions as a mark." D.C. Wholesaler 120 USPQ2d at 1716 ("I ♥ DC" fails to function as a trademark, despite appearing on hangtags for the goods).

Given the non-source identifying nature of the word “covfefe,” and its admitted widespread ornamental use on merchandise, Applicant’s display of #COVFEFE in the manner of a trademark is insufficient to make it one. D.C. One Wholesaler, 120 USPQ2d at 1716.

And so the Board affirmed the refusal under Sections 1, 2, 3, and 45 of the Lanham Act.

Read comments and post your comment here.

TTABlog comment: Too bad this mark didn't reach publication. Perhaps the President would have opposed? Or at least tweeted out some pithy remark.

Text Copyright John L. Welch 2019.

TTAB Reverses Refusal to Register Starbucks' Green-Circle-on-White-Cup, but Green Circle Alone Lacks Acquired Distinctiveness

In a 52-page opinion, the Board reversed a refusal to register the mark shown below right, comprising a green circle on a white cup, for coffee, tea, and restaurant services, finding that the application drawing is a substantially exact representation of the mark as used on Starbuck's specimens of use. However, the mark shown below, comprising a green circle on a white cup of no particular size or shape, for the same goods and services did not fare as well. The Board upheld the refusal to register that mark on the ground that Starbucks failed to prove the acquired distinctiveness that it claimed. In re Starbucks Corporation, Serial Nos. 85792872 (left) and 86689423 (right) (January 17, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

Green Circle on White Cup: The Board rejected the Examining Attorney's contention that the drawing (above right) was not an exact representation of the mark in use, as required by Rule 2.51(a). As to the class 30 goods, the cup in the drawing has "the same shape as and appears identical to the cup in the specimen." (see specimen below). The "fluid paintbrush strokes" do not change the essence of the mark, nor does the differing shades of green on the specimen.

As to the specimen of use for the Class 43 services (below), the minor additional details in the specimen do not create a different commercial impression from the mark shown in the drawing. Nor does the fact that the specimen shows the cup in perspective change the commercial impression.

And so the Board reversed the refusal to register the white-cup-with-green-circle mark. [Starbucks' Section 2(f) claim based on five years of continuous and substantially exclusive use was not challenged].

Green Circle Alone (on white cup of no particular size or shape): Starbucks also sought registration of this mark under Section 2(f) (thereby conceding that the mark is not inherently distinctive), but this time the USPTO challenged that claim. The Board found that although Strabucks' sales and advertising evidence was staggering, the extent to which that evidence related to the green circle design rather than Starbucks' "siren design" (shown below) was unclear. Likewise, media references did not clearly refer to the green circle mark at issue. The Board found that the green circle does not create a "separate and distinct commercial impression" from the siren design. In fact, the background to the siren is not even mostly green and is not a circle. The green circle mark is not a "minor" alteration of the siren design that Starbucks uses. Thus the data regarding the siren design was not relevant anyway.

Starbucks submitted the results of a survey purporting to show that the green circle mark had acquired distinctiveness, but the Board found that, although the survey had some probative value, "it also has problems, and raises a number of questions."

Dr. Kaplan used an inappropriate control, selected an underinclusive universe and designed a survey and questions (and provided a data set) that do not reliably establish an association between the mark in question and Applicant.

Dr. Kaplan' choice for a control was the cup shown below, which he referred to as "generic." The Board found his control to be a major concern: "It would have been more logical, and reliable, for the 'control' cell to be shown a cup more analogous to Applicant’s mark. For example, the control cup would have been more effective if it was beige (or even white) and featured, for example, a blue triangle placed centrally on the front exterior side."

Moreover, many of the survey responses were ambiguous as to why the respondent named Starbucks when shown the applied-for mark on a cup. In addition, the dataset provided by Dr. Kaplan was not clearly segregated between different test groups. And, the Board concluded, Dr. Kaplan chose a universe that was too narrow: first, since the survey was conducted via the Internet, it did not include the 15% of consumers who do not use the Internet; and second, he also excluded participants who access the Internet by phone.

The Board noted that the result might have been different if the survey and other evidence "were more specifically targeted to assessing the mark in the ’872 Application." Instead it found that Starbucks failed to prove that the green circle mark has acquired distinctiveness, and so the refusal to register that mark was affirmed.


Read comments and post your comment here.

TTABlog comment: The criticism of the Kaplan survey because it was conducted via the Internet must be somewhat disturbing to survey professionals. Is the Board suggesting that we should go back to mall intercept surveys? Nationwide? How expensive would that be?

BTW- See Rule 2.52(b)(1) concerning how to claim a particular shade of color. And also see Covidien LP v. Masimo Corporation, 109 USPQ2d 1696 (TTAB 2014) [precedential] [TTABlogged here], concerning a Section 18 petition to restrict a color registration for red to a particular shade of red.

Text Copyright John L. Welch 2019.

TTABlog Jobs: Uber Seeks Trademark Paralegal for its San Francisco Office

Uber is seeking to hire a trademark paralegal for its San Francisco Office. Full details and application form may be found here.

.

TTABlog Test: Which of These Three Section 2(d) Refusals Was Reversed?

I've heard it said (by a TTAB judge) 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 Iron Balls International, Serial No. 87299536 (January 16, 2019) [not precedential] (Opinion by Judge Albert Zervas) [Section 2(d) refusal to register the mark IRON BALLS ENGINEERED ALCOHOL & Design for "gin" [ENGINEERED ALCOHOL disclaimed] in view of the registered mark IRON BALLS for "beer"].

In re Reproductive Medicine Associates of New Jersey, LLC, Serial No. 87042698 (January 15, 2019) [not precedential] (Opinion by Judge Angela Lykos) [Section 2(d) refusal of ARTEMIS for “Computer software platforms for use by fertility healthcare providers for the purpose of accessing patient electronic medical records" in view of the registered mark ARTEMIS HEALTH for "Software as a service (SAAS) services featuring software, namely, for analysis, monitoring, report generation, planning, risk and expense management and decision making regarding health care information and utilization of employees" [HEALTH disclaimed].

In re HEG Inc, Serial No. 87061391 (January 16, 2019) [not precedential] (Opinion by Judge Susan J. Hightower) [Section 2(d) refusal to register the mark KICKSMART & Design for "retail convenience store services" in view of the registered mark KICKS for the identical services].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2019.

Precedential No. 1: Wal-Mart's "INVESTING IN AMERICAN JOBS" Fails to Function as a Service Mark, Says TTAB

The Board affirmed a refusal to register the purported mark INVESTING IN AMERICAN JOBS for "promoting public awareness for goods made or assembled by American workers" and for various retail and online store services, finding that the phrase fails to function as a service mark. The Board concluded that, as used by Wal-Mart, the phrase "would be perceived by customers as a merely informational phrase," and not as an indicator of source. In re Wal-Mart Stores, Inc., 129 USPQ2d 1148 (TTAB 2019) [precedential] (Opinion by Judge Linda A. Kuczma).

The Board observed that the CAFC and its predecessor, the CCPA, as well as other federal courts, "draw a distinction between words used to 'identify and distinguish' source, and words used in their ordinarily-understood meaning to convey information other than source-identification." For example, DRIVE SAFELY, THINK GREEN, and YOU HAVE MAIL were deemed unregistrable as trademarks.

A critical question is "whether the phrase sought to be registered would be perceived as a mark identifying the source of the services, or as something else." See, e.g., D.C. One Wholesaler v. Chien, 120 USPQ2d at 1713. In making this determination, the Board reviews the specimens and other evidence that shows how the purported mark is used in the marketplace.

Looking first to Wal-Mart's own use of the phrase, its specimen of use (displayed above) appears on a shelf-talker in close proximity to products that are made by American workers. The phrase also appears on a web page with that phrase as the title, the web page stating "We believe we can create more American jobs by supporting more American manufacturing."

The slogan INVESTING IN AMERICAN JOBS is like other statements that would ordinarily be used in business or industry, or by certain segments of the public generally, to convey support for American-made goods, and thus would not be recognized as indicating source and are not registrable. (citing cases).

The Board therefore found that the applied-for mark would be perceived by consumers as merely an informational statement that Wal-Mart is selling certain goods that are made or assembled in America, and it would not be perceived as a service mark.

Although the Board deemed the evidence of Wal-Mart's usage to be sufficient to establish that the phrase does not function as a mark, the Board also considered use of the phrase by third parties. Examining Attorney Barbara Brown submitted many examples of third-party usage showing that “investing in American jobs” is commonly used in several industries to convey the same general idea (supporting American jobs) as does Wal-Mart. This evidence further demonstrated the public perception of the phrase as merely informational.

Wal-Mart pointed to search engine results, advertising expenditures of more than $10 million, attendance by 5,700 people at promotional events featuring the slogan, and more than 300,000 visits at its website, as evidence that the phrase is recognized as a mark. Wal-Mart also criticized the USPTO's evidence as failing to show how many visits the third-party websites offered in evidence had received. The Board was unimpressed.

[T]here is no requirement that the Examining Attorney establish that a particular online source or website “has significant web traffic” to establish its competence, just as with print articles, the Examining Attorney need not establish the circulation of the magazine or newspaper or that the cited article has actually been read. *** Even websites that are not frequently visited still demonstrate how the authors use the term or phrase and how that term or phase will be perceived by the readers. 

The Board found that the third-party evidence "shows common usage of the phrase 'investing in American jobs' by commercial businesses in various industries, as well as in media articles and blogs, to convey the goal or aim of investing in U.S. business to promote employment opportunities in America."

None of Wal-Mart's evidence demonstrated that the applied-for mark serves as a source indicator. The number of searches and the ranking in search results reveal nothing about the impression that the phrase makes on consumers. The evidence of promotional expenditures, attendance at events, and website traffic statistics "fares no better."

In sum, the USPTO's third-party evidence supported the Board's conclusion that consumers will not perceive the applied-for mark as an indicator of a single source for the identified services. "Rather, consumers will perceive the words merely as conveying the common, informational message that Applicant, like others, promotes American-made goods by investing in American jobs."

The Board therefore affirmed the refusal to register under Sections 1, 2, 3, and 45 of the Lanham Act.

Read comments and post your comment here.

TTABlog comment: I wonder what percentage of the goods sold at Wal-Mart are made in America?

Text Copyright John L. Welch 2019.

CAFC Vacates and Remands Guild Mortgage Decision: TTAB Failed to Consider 8th DuPont Factor

The CAFC vacated the TTAB's decision affirming a Section 2(d) refusal of the mark GUILD MORTGAGE COMPANY & Design for "mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans" [MORTGAGE COMPANY disclaimed] in view of the registered mark GUILD INVESTMENT MANAGEMENT for "Investment advisory services" [INVESTMENT MANAGEMENT disclaimed]. The appellate court concluded that the Board had "failed to consider pertinent evidence and argument under DuPont factor 8," and it remanded the case to the Board for reconsideration of its determination in light of all the evidence. In re Guild Mortgage Co., 129 USPQ2d 1160 (Fed. Cir. 2019) [precedential].

The CAFC pointed out that "[i]n every case turning on likelihood of confusion, it is the duty of the examiner, the board and this court to find, upon consideration of all the evidence, whether or not confusion appears likely.” DuPont, 476 F.2d at 1362 (emphasis in original). "In discharging this duty, the thirteen DuPont factors 'must be considered' 'when [they] are of record.'" In re Dixie Rests., Inc., 105 F.3d 1405, 1406 (Fed. Cir. 1997) (quoting DuPont, 476 F.2d at 1361).

DuPont factor 8 requires consideration of "the length of time during and conditions under which there has been concurrent use without evidence of actual confusion."  Guild argued that it has coexisted with the Registrant for more than 40 years without any evidence of actual confusion. Its President and CEO attested that Guild has never received any communications from third-parties regarding any confusion, nor has it received any charge of infringement from the registrant.

The Board's opinion provided no indication that it considered the 8th DuPont factor or the evidence and argument directed thereto.

In this case, although Guild did not submit declarations from the owner of the registered mark or other parties testifying as to the absence of actual confusion, Guild nonetheless presented evidence of concurrent use of the two marks for a particularly long period of time —over 40 years —in which the two businesses operated in the same geographic market—southern California—without any evidence of actual confusion. Further, the Board has found that Guild’s and Registrant’s services are similar and move in the same channels of trade, which is relevant when assessing whether the absence of actual confusion is indicative of the likelihood of confusion. The Board erred in its analysis by failing to consider this evidence and argument as to factor 8. Because this evidence weighs in favor of no likelihood of confusion, we do not deem the Board’s error harmless.

The CAFC made "no assessment as to the evidentiary weight that should be given to Guild’s CEO’s declaration." The Board was directed to "reconsider its likelihood of confusion determination in the first instance in light of all the evidence."


Read comments and post your comment here.

TTABlog comment: The CAFC noted that in Majestic Distilling, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003), the court considered 16 years of concurrent use with no evidence of confusion, but still found confusion likely. In Majestic the court also observed that, under DuPont factor 7 ("the nature and extent of any actual confusion'), the lack of evidence of actual confusion, by itself, has "little evidentiary value" in the ex parte context. Factor 8 requires a separate consideration.

Text Copyright John L. Welch 2019.

The Top Ten TTAB Decisions of 2018 (Part II)

This is the second of two posts; the first five selections were posted here. Additional commentary on each case may be found at the linked TTABlog posting. The cases are not necessarily listed in order of importance (whatever that means).


Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (December 28, 2018) [not precedential]. [TTABlogged here]. In a controversial nonprecedential ruling, the Board denied the Rule 12(b)(6) motion of Applicant United Trademark Holdings 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 in Boston, alleged that United'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 lacked standing because she is not a competitor and "has not used the mark in connection with the manufacture or sale of dolls." 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, meeting the "liberal threshold" established in Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). The Board observed that "[c]onsumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain."

In re Peace Love World Live, LLC, 127 USPQ2d 1400 (TTAB 2018) [precedential] (Opinion by Judge Marc A. Bergsman). [TTABlogged here]. The Board showed no ♥ for this applicant, affirming a refusal to register the mark I LOVE YOU, in standard character form, for bracelets, finding that phrase is merely ornamental and therefore fails to function as a trademark. The crucial question, of course, was whether the applied-for mark would be perceived as a source indicator. In assessing a failure-to-function refusal, and particularly whether a mark is merely ornamental, the Board may consider whether the mark is a common expression. Moreover, the size, location, dominance and significance of the mark are relevant to the determination. The Board found that the phrase I LOVE YOU is "essentially the bracelet itself." It "conveys a term of endearment comprising the bracelet and, thus, it is ornamental. It does not identify and distinguish the source of the bracelet, especially where there is so much jewelry decorated with the term I LOVE YOU in the marketplace." To add insult to injury, the Board also affirmed a Section 2(d) refusal on the ground of likelihood of confusion with the registered mark I LUV U for "jewelry, namely, necklaces, bracelets, rings and charms; pendants; earrings."

Applicant's specimen of use
In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181 (TTAB 2018) [precedential] (Opinion by Judge Frances Wolfson; concurring opinion by Judge Lorelei Ritchie). [TTABlogged here]. The Board affirmed a Section 2(d) refusal to register the mark shown below, for "Wine of French origin protected by the appellation of the origin Cité de Carcassonne" [CITÉ DE CARCASSONNE disclaimed], finding it likely to cause confusion with the registered mark CHATEAU LAROQUE for "Wines having the controlled appellation Saint-Emilion Grand Cru" [CHATEAU disclaimed]. The Board concluded, not surprisingly, that both the applied-for mark and the cited mark are dominated by the word LAROQUE. Applicant Aquitaine and the examining attorney jousted over whether the Board must consider only "reasonable variations" of the cited, standard character mark. The Board held that "when we are comparing a standard character mark to a word + design mark for Section 2(d) purposes, we will consider variations of the depictions of the standard character mark only with regard to 'font style, size, or color' of the 'words, letters, numbers, or any combination thereof.'" Judge Ritchie concurred in the result but disagreed with the majority’s rationale. Specifically, Judge Ritchie found "the pronouncement of the majority that it will not consider ‘design features’ to be both unnecessary and ultimately unhelpful." "Given the definition of 'chateau,' consumers may certainly expect a picture or design of a house or chateau to be depicted with Registrant’s CHATEAU LAROQUE."

In re FCA US LLC, 126 USPQ2d 1214 (TTAB 2018) [precedential] (Opinion by Judge Anthony R. Masiello). [TTABlogged here]. The Board affirmed a Section 2(d) refusal to register the mark MOAB for “Motor vehicles, namely, passenger automobiles, their structural parts, trim and badges’” finding it likely to cause confusion with the registered mark MOAB INDUSTRIES for “Automotive conversion services, namely, installing specialty automotive equipment” [INDUSTRIES disclaimed]. While the subject application was pending (and suspended), the federal court in Arizona ruled in favor of Applicant FCA US LLC (f/k/a Chrysler Group LLC) in a trademark infringement and unfair competition action brought by the cited registrant, but the Board found that the court rulings had no estoppel effect on the Board’s determination of this ex parte appeal. At the district court, registrant failed to prove that FCA's use of the mark MOAB in connection with its "JEEP WRANGLER MOAB Special Edition" vehicles "was likely to cause confusion on the part of reasonably prudent customers for [Registrant’s] upfitted vehicles." FCA here argued that “The Board … should defer to the more fulsome record upon which the District Court relied to draw its conclusions.” The Board, however, observed that "although there is some overlap between Applicant’s defense and counterclaims in the federal court action and the basis of refusal of Applicant’s application, they also raise discrete issues. In other words, the issues are not identical."

In re Pitney Bowes, Inc., 125 USPQ2d 1417 (TTAB 2018) [precedential] (Opinion by Judge Cynthia C. Lynch). [TTABlogged here]. Overturning the examining attorney’s rejection of Pitney's specimen of use, the Board reversed a refusal to register the mark shown here , for various mailing services. The examining attorney maintained that Pitney’s webpage specimen described a self-service kiosk that consumers use to mail and ship items but did not clearly indicate that applicant itself provided the subject services. The Board, however, ruled that "Applicant’s explanation of the specimen and how Applicant provides the outsourced mailing services referenced on the specimen resolved the ambiguity, and the refusal should not have been maintained." For advertisement specimens such as applicant’s webpage, "[i]n order to create the required 'direct association,' the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source." "Both precedent and examination guidance make clear that in assessing the specimens, consideration must be given not only to the information provided by the specimen itself, but also to any explanations offered by Applicant clarifying the nature, content, or context of use of the specimen that are consistent with what the specimen itself shows."

(click on photo for larger image)
Read comments and post your comment here.

Text Copyright John L. Welch 2018-19.

The Top Ten TTAB Decisions of 2018 (Part I)

The TTABlogger has once again bravely (?) chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year (i.e., 2018). This is the first of two posts; the first five selections are set out below. Additional commentary on each case may be found at the linked TTABlog posting. The cases are not necessarily listed in order of importance (whatever that means).


In re American Cruise Lines, Inc., 128 USPQ2d 1157 (TTAB 2018) [precedential] (Opinion by Judge Marc A. Bergsman). [TTABlogged here]. Giving “great weight” to two consent agreements, the Board reversed a Section 2(d) refusal of AMERICAN CONSTELLATION, finding the mark not likely to cause confusion with the registered mark CONSTELLATION, both for cruise ship services. The examining attorney maintained that these were “naked” consents because they did not state the steps the parties would take to avoid confusion, but the Board pointed out that such terms, although preferred, are not essential for the consents to have probative value. “[N]o authority requires that parties explicitly agree to make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future as a prerequisite to giving some weight to a consent agreement.” The Board found that the second consent agreement was “clothed” because it included four reasons why applicant and registrant believed confusion was not likely. “Clothed”‘ consent agreements in which “‘competitors have clearly thought out their commercial interests’ should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.”

In re Serial Podcast, LLC, 126 USPQ2d 1061 (TTAB 2018) [precedential] (Opinion by Judge David K. Heasley]. [TTABlogged here]. The Board affirmed a refusal to register the term SERIAL in standard character form, finding it to be generic for "entertainment in the nature of an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling." However, the Board reversed refusals to register two design forms of the mark, shown below, finding that these two marks had acquired distinctiveness, but requiring a disclaimer of the word "SERIAL" in each mark. Applicant argued that use of the term “serial” as a noun is antiquated and archaic, and that the term in modern usage is an adjective describing a characteristic of audio programs. The Board, however, rejected the noun/adjective distinction, pointing out that both nouns and adjectives may be generic. Even though some articles refer to applicant’s podcast by its name Serial, "that amounts, at most, to 'de facto secondary meaning'’ in a generic term," and does not entitle applicant to registration. Because the applied-for mark is at best highly descriptive, "more substantial evidence" than media references was required to establish acquired distinctiveness. As to the word + design marks, the Board found, based on evidence of parodying and copying by third parties, that the composite logos have achieved public recognition as source indicators for applicant’s services.

Stawski v. Lawson, 129 USPQ2d 1036 (TTAB 2018) [precedential] (Opinion by Judge David K. Heasley). [TTABlogged here]. Concluding that Applicant Scott Stawski was not entitled to concurrent use registrations for the marks PROSPER ESTATE and PROSPER RIDGE for wines, the Board dissolved this concurrent use proceeding. Stawski claimed rights to his marks in nine states, as an exception to John Gregory Lawson's registration for the mark PROSPER for wines, but Stawski failed to show prior, lawful use of his marks (and he also failed to prove that confusion is not likely). Stawski had to prove "technical use of his trademarks" in commerce prior to Registrant Lawson’s February 29, 2012 filing date: i.e. use sufficient to support a trademark registration. The Lanham Act's concurrent use provision expressly requires "lawful use in commerce" prior to the filing date of an excepted user’s application or registration. 15 U.S.C. § 1052(d). “Use in commerce” means “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127. Applicant Stawski failed to establish that his use satisfied the "in commerce" requirement, and he also failed to prove that, if his use was in commerce, it was lawful. Thus he did not satisfy the jurisdictional requirement of Section 2(d). The Board squarely ruled, for the first time, that failure to obtain a Certificate of Label Approval (COLA) from the Alcohol and Tobacco Tax and Trade Bureau (TTB) renders the use of a mark unlawful and thus insufficient to support a trademark registration.

In re Forney Industries, Inc., 127 USPQ2d 1787 (TTAB 2018) [precedential] (Opinion by Judge Linda A. Kuczma). [TTABlogged here]. In a case of first impression, the Board ruled that a color mark consisting of multiple colors applied to product packaging cannot be inherently distinctive. Consequently, since Applicant Forney Industries did not seek registration under Section 2(f) in the alternative, the Board affirmed a refusal to register the mark shown below, comprising the colors “red into yellow with a black banner located near the top as applied to packaging” for applicant’s metal hardware, welding equipment, safety goods, and marking products. Forney maintained that the applied-for mark is not a “color mark” but should be treated as product packaging. The Board disagreed: reviewing applicant’s drawing, which showed the mark surrounded by dashed lines, the Board concluded that the mark should be treated as a color mark, consisting of multiple colors applied to product packaging. The Board noted that Qualitex (green press pad) and Owens-Corning (pink insulation) involved a single color applied to a product. The question here was whether multiple colors applied to product packaging can be inherently distinctive. Citing Wal-Mart and In re General Mills, and finding no legal distinction between a single color mark and one consisting of multiple colors "without additional elements, e.g., shapes or designs,” the Board said no: although a “color applied to a product or its packaging may function as a trademark . . . color can never be inherently distinctive as a source indicator."

In re Minerva Associates, Inc., 125 USPQ2d 1634 (TTAB 2018) [precedential] (Opinion by Judge Linda A. Kuczma). [TTABlogged here]. Reversing a refusal to register the mark AWLVIEW for, inter alia, warehouse inventory management software, the Board overturned the USPTO’s rejection of applicant’s specimen of use. Because the mark appears on the login and search screens of applicant’s downloadable software when the software is in use, the Board concluded that the specimen “shows the applied-for mark used in connection with the goods . . . and would be perceived as a trademark identifying the source of those goods.” According to Section 904.03(e) of the Trademark Manual of Examining Procedure (Oct. 2017), an acceptable specimen for software “might be a photograph or printout of a display screen projecting the identifying trademark for a computer program.” The Board noted that, again according to Section 904.03(e), “[i]t is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce. See, e.g., In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (holding that stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, is sufficient use)."

(Click on photo for larger version)
Read comments and post your comment here.

Text Copyright John L. Welch 2018-19.

TTABlog Test: Is "INCOGNITO" for Footwear Confusable with "STS INCOGNITO & Wolf Design" for Clothing?

The USPTO refused registration of the mark INCOGNITO for "footwear; footwear for men; footwear for women; shoes; shoes for men and women," finding it likely to cause confusion with the registered mark STS INCOGNITO & Wolf Design, shown below, for "hats; hooded sweatshirts; jackets; shirts; t-shirts." The goods are surely related, but are the marks close enough to cause confusion? How do you think this came out? In re Primeway International LLC, Serial No. 87059786 (January 9, 2019) [not precedential] (Opinion by Judge Frances Wolfson).

The Board found the wolf design (a wolf in sheep's clothing making a menacing expression) and the letters STS to be the "most visually prominent feature" of the cited mark. "The wolf design and letters STS immediately draw one’s attention and engage the viewer before he or she may notice the smaller word 'incognito' in quotation marks below the picture of the wolf." In this regard, the Board pointed to four oft-cited cases: In re Covalinski, In re White Rock Distilleries, Inc., Parfums de Coeur Ltd. v. Lazarus, and Steve’s Ice Cream v. Steve’s Famous Hot Dogs, in all of which a word mark and a word+design mark were found not confusable because the design portion was the "most visually prominent feature."

The examining attorney argued that the design portion of the cited mark merely emphasizes the word INCOGNITO, since the wolf has disguised itself as a sheep. The Board disagreed. "The phrase 'wolf in sheep’s clothing' refers to a threat that may appear to be benign, and the term 'incognito,' defined as 'with one’s identity concealed,' does not imply anything about whether the entity concealing its identity is a threat."

The Board also rejected the arguments that consumers are less likely to remember strings of letters than real words and would tend to shorten the cited mark to INCOGNITO. "Here, to the extent that consumers would shorten Registrant's mark, they are at least as likely to recall STS as they are to recall 'INCOGNITO' because of the prominence of STS relative to 'INCOGNITO,' and because STS appears first when reading the mark, as would be usual, from left to right."

The Board concluded that the marks are not similar in meaning or commercial impression, and only somewhat similar in appearance and pronunciation. This factor "weighs heavily in applicant's favor." Indeed, the Board concluded that it was dispositive.

The Board also considered the relatedness of the goods and their channels of trade and likely consumers. To show relatedness, the examining attorney relied on webpages from several retailers, but the Board found this evidence not to be very strong.

All of the websites offer clothing and footwear on different web pages. A consumer searching for shoes on the Target website will not be exposed to clothing because the web pages do not include any links from clothing to footwear or vice versa or images of other goods. Likewise, consumers searching on the Nike or Adidas websites for shoes or for clothing may not be aware that each offers both items, because not all of the pages include tabs that link to both clothing and footwear.

The Board found that the "similarity of the goods factor"  weighs only slightly in favor of a finding of likelihood of confusion.

The relevant purchasers of the involved goods comprise the general public. The only evidence as to channels of trade was the webpage evidence. However, "[i]nternet evidence alone is insufficient to prove that the goods may be encountered in overlapping channels of trade by the same classes of consumers." See In re St. Helena Hosp., 113 USPQ2d 1082, 1087-88 (Fed. Cir. 2014). The Board found this factor to be neutral.

As indicated, the Board found the first du Pont factor to be dispositive, and so it reversed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2019.