TTAB Schedules Seven (7) Oral Hearings for March 2019

The Trademark Trial and Appeal Board (T-T-A-B, not Tee-tab) has scheduled seven (VII) oral hearings for the month of March 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.



March 7, 2019 - 2 PM: 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)].

March 19, 2019 - 1 PM: In re Elasticsearch BV, Serial No. 86882876 and 86882877 [Requirement to disclaim the word ELASTIC in the marks shown below, for downloadable and non-downloadable software for searching, indexing, organizing, managing, processing, storing, retrieving, analyzing and reporting information and data, not including software related to the balancing or scaling of resources to meet increased or decreased computing needs].

March 20, 2019 - 1 PM: In re Ocean Technology, Inc., Serial No. 87405211 [Section 2(d) refusal to register the mark shown below for "crabmeat" [CRAB and CRABMEAT disclaimed] on the grounds that the mark i merely informational, and that applicant failed to comply with the requirement to answer a request for information about the nature of the goods].

March 26, 2019 - 10 AM: In re Media Device Limited, Serial No. 79212632 [Section 2(d) refusal to register the mark EARSHOT for "wired and wireless headphones and earphones" in view of the registered mark shown below for "Computer software for coordinating real-time communication and feedback between businesses and individuals; Computer software providing social media tools through which users can share, interact and follow real-time feedback relating to businesses, individuals and places; Computer software for finding and sharing a user's location and displaying a user's real-time communication relating to the user's location"].

March 26, 2019 - 1 PM: Branded, LLC v. Summit Retail Solutions, Inc., Cancellation No. 92065995 [Petition for cancellation of two registrations for the mark NEW DOMAINE for shower heads, pillows, bed sheets, bed sheet sets and pillow case, on the ground of likelihood of confusion with the registered mare DOMAIN for, inter alia, various household goods, including bed sheets, pillow cases, comforters, bedspreads, pillow shams, bed ruffles, duvet covers, comforter covers, mattress pads, and bed blankets].

March 27, 2019 - 11 AM: In re Telecom (CHINA) Ltd., Serial No. 87440925 [Section 2(d) of the mark DIRTY LAUNDRY for "Hooded sweatshirts; Jackets; Jeans; Pants; Shirts; Shorts; T-shirts" in light of two registrations for the identical mark, owned by different owners, for "footwear" and for "luggage"].

March 28, 2019 - 2 PM: Triatomic Environmental, Inc. v. RGF Environmental Group, Inc., Opposition No. 91232746 [Opposition to registration of UPCO-QR for "Air purification units" in view of the registered mark APCO for the same goods].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2019.

WYHA? TTAB Affirms Disclaimer Requirement of “PETITS” in NUTELLA PETITS & Design for Pastry Related Goods

[This guest post was written by Kira-Khanh McCarthy, a 2L at University of Notre Dame Law School.] The Board affirmed a Section 6(a) requirement that Applicant disclaim the word PETITS in its applied-for mark NUTELLA PETITS in the design form shown below. Applicant sought registration of the mark for “Pastry and confectionery; biscuits, cookies; filled wafers,” but Examining Attorney Tracy Whittaker-Brown maintained that PETITS is merely descriptive of Applicant’s goods. The Board agreed. In re Soremartec SA, Serial No. 79204456 (February 20, 2019) [not precedential] (Opinion by Judge Frances Wolfson).

The Examining Attorney argued that the word PETITS is merely descriptive of the Applicant’s goods “in that it refers to their size because the goods are small.” To support the refusal, she submitted dictionary definitions which define PETIT as “small in size or scope; tiny.” Additionally, Internet search results and articles helped to establish that the term PETITS is often used in connection with pastry and bakery goods.

Applicant conceded that PETIT is recognized to mean “small,” but disputed that the goods sold under the mark at issue are “petit-size” since there is no equivalent “regular-size” version. The Board was unmoved since Applicant provided no evidentiary support for its claim that the goods are “regular” size.

The record is devoid of any information as to what “regular size” means or the extent to which the relevant industry recognizes a standard for regular size versus small or large size for such goods . . . . [C]onsumers will expect, upon encountering Applicant’s mark NUTELLA PETITS, that the term “petits” signifies that the goods are small in comparison to some larger version of themselves, or that they are packaged in small batches or portions. The term “petits” immediately conveys this meaning without any need for additional thought or imagination.

Furthermore, the Board was not swayed by Applicant’s submission of 19 third-party registrations where PETITS was not disclaimed. Most of those marks happened to be unitary phrases so that disclaimer of an individual word would not be required. Here, the mark NUTELLA PETITS would clearly be acknowledged as two separate words, especially given its design aspects.

In conclusion, since the relevant public would understand the word PETITS to describe something “small” about the goods, the Board affirmed the refusal to register. Notwithstanding, so long as Applicant submits a disclaimer to the Board within 30 days, its application "will proceed to registration in due course."

Read comments and post your comment here.

TTABlog comment: Although the Board said that if a disclaimer is filed, the application will "proceed to registration in due course," the application has to be published for opposition first. Maybe it will reach registration, maybe not.

Text Copyright John L. Welch 2019.

Fourth Circuit Affirms E.D. Va: BOOKING.COM is not Generic, USPTO Gets Attorneys' Fees

[This guest post was authored by John L. Strand, Trademark and Litigation Shareholder at Wolf Greenfield.] We’ve followed on this blog the juridical journey of Booking.com and that company’s attempts to register the mark BOOKING.COM for travel reservation related services, starting with the TTAB, then on a Section 1071 appeal of the decision before the U.S. District Court for the Eastern District of Virginia, and the E.D. Virginia’s decision to order Booking.com to pay the USPTO’s expenses. Now the U.S. Court of Appeals for the Fourth Circuit has affirmed the E.D. Virginia’s decision, though Judge Wynn wrote a separate opinion concurring in part and dissenting in part. Booking.com B.V. v. USPTO, 915 F.3d 171 (4th Cir. 2019). (re-hearing en banc denied, April 4, 2019; petition for writ of certiorari filed April 20, 2019).

Genericness – Finding of Descriptiveness

Below, the E.D. Virginia found that although the word “booking” is generic for the offered services, the term BOOKING.COM as a whole was descriptive. The USPTO conceded that if the mark is found descriptive, it is registrable under Section 2(f).

To analyze the issue of genericness, the Fourth Circuit confirmed that in a registration proceeding, it is the USPTO that “’always bears the burden’ of establishing that a proposed mark is generic.” (Slip Op. at 9.) The Fourth Circuit follows a three-part test to determine whether a mark is generic: “(1) identify the class of product or service to which use of the mark is relevant; (2) identify the relevant consuming public; and (3) determine whether the primary significance of the mark to the relevant public is as an indication of the nature of the class of the product or services to which the mark relates, which suggests that it is generic, or an indication of the source or brand, which suggests that it is not generic.” (Slip Op. at 10.)

Here, the first two prongs were uncontested; Booking.com conceded those factors went against it. Instead, Booking.com fought on the third prong of the test, and it succeeded in the appeal because (1) the USPTO failed to produce evidence that the public uses “booking.com”—as a whole—generically, and (2) Booking.com submitted a Teflon survey demonstrating that “74.8% of respondents identified BOOKING.COM as a brand name, rather than as a general reference to hotel reservation websites.” (Slip Op. at 16-17.) The Fourth Circuit deferred to the district court’s finding that the survey was “methodologically sound,” so it likewise found that the survey was “strong evidence” that BOOKING.COM is not generic. (Slip Op. at 17.)

Although the Fourth Circuit found that these facts supported the district court’s judgment, the Fourth Circuit rejected the district “court’s [legal] determination as to the trademark significance of the fact that a domain name like ‘booking.com’ necessarily refers only to a single source.” (Slip Op. at 13-14, n. 7.) The Fourth Circuit found that adopting such a legal rule would “effectively make any domain name distinctive, which oversteps the focus of our trademark jurisprudence on a mark’s primary significance to the public.” (Slip Op. at 21, n. 9.)

Genericness – USPTO Proposed “Rule”

On the opposite side of the spectrum of legally determining that a domain name refers only to a single source and is therefore descriptive, one of the USPTO’s arguments in support of a finding of genericness was that just adding a top-level domain (TLD) such as “.com” to a second-level domain (SLD) generic term, such as “booking,” is “necessarily generic.” (Slip Op. 19.)

The USPTO first analogized the addition of “.com” to a mark or term to be equivalent to adding “Corp.,” relying on Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602–03 (1888). As the Goodyear decision came down well before the Lanham Act, and other circuits have refused to adopt such a black-and-white rule, the Fourth Circuit likewise refused to adopt the rule.

Second, the USPTO argued that because the mark is nothing more than its component parts—two admittedly generic terms, “booking” and “.com”—the compound mark should also be generic. The Fourth Circuit likewise rejected this argument. But the court also held that “.com does not itself have source-identifying significance when added to an SLD like booking,” (Slip Op. 20-21), so doesn’t automatically create a non-generic mark from a generic SLD. Instead, a more searching inquiry is necessary to determine “whether the public primarily understands the term as a whole to refer to the source or the proffered service.” (Slip Op. 21).

USPTO Attorneys’ Fees

Title 15 U.S.C. § 1071(b)(3) states that an applicant in a Section 1071 appeal action must pay “all the expenses of the proceeding . . . whether the final decision is in favor of such party or not.”  There has been a clash between the Fourth Circuit’s interpretation of that language and the Federal Circuit’s interpretation of a similar provision in the patent statute (35 U.S.C. § 145), on whether “expenses” includes attorneys’ fees. The Federal Circuit said no. But, seemingly constrained by its own previous decision in Shammas v. Focarino, 784 F.3d 219, 225 (4th Cir. 2015), the Fourth Circuit once again held that when Section 1071(b)(3) uses the term “all expenses of the proceeding,” “expenses” includes the USPTO’s attorneys’ fees. It will be interesting to watch if Booking.com petitions for en banc review and/or seeks Supreme Court review of this important issue.

Judge Wynn’s Separate Opinion

In a separate 17 page concurrence-in-part and dissent-in-part, Judge Wynn writes that Booking.com is faced with a problem it “chose to bring upon itself” by adopting a generic term for its business. (Slip Op. at 29.) Although he agreed “with much of the analysis in the majority opinion,” ultimately he would not have affirmed the district court’s judgment.

Judge Wynn primarily relies on a number of previous decisions from other circuits that found generic domain names to be generic, including HOTELS.COM, LAWYERS.COM, ADVERTISING.COM, and MATTRESS.COM. Judge Wynn found that these cases came out the opposite of the majority opinion because of an incorrect legal standard applied by the Eastern District of Virginia, namely in holding that “when combined with a[] [Secondary Level Domain], a [Top Level Domain] generally has source identifying significance and the combination of a generic [Secondary Level Domain] and a [Top Level Domain] is generally a descriptive mark that is protectable upon a showing of acquired distinctiveness.” (Slip Op. 32.) The cases on which Judge Wynn relied upon did not apply this legal framework or presumption—a legal presumption that was rejected by the majority, despite the majority agreeing with the district court’s factual findings.

In the end, Judge Wynn gave greater weight to the risk of “monopolization of language” than the majority and would not have allowed the registration of a mark he sees as merely generic:

I believe that this Court’s affirmance of the district court’s judgment—even as it rejects the district court’s legal analysis—unjustifiably empowers Booking.com to monopolize language, thereby enclosing the linguistic commons and adversely affecting competitors in precisely the manner that trademark law seeks to forestall. Put simply, the majority opinion’s judgment will directly disadvantage Booking.com’s competitors by taking away their ability to use the term ‘booking’ in their own website domain names. Indeed, any competitors that attempt to use the term “booking” will face the risk of a costly, protracted, and uncertain infringement lawsuit.

Read comments and post your comment here.

TTABlog comment: There seems to be some dissatisfaction and/or disagreement with the Fourth Circuit's decision. What do you think?

PS: The USPTO has filed a petition for writ of certiorari in the Nantkwest case, seeking to overturn the CAFC's unfavorable ruling on attorneys' fees under the Patent Statute.

Text Copyright John L. Strand and John L. Welch 2019.

Precedential No. 3: TTAB Reverses Section 2(e)(2) Geographical Descriptiveness Refusal of BA BEEF for Beef

The Board reversed a Section 2(e)(2) refusal to register the mark BA BEEF for “beef; flavored nuts; frozen fish; pork; poultry; preserved fish; processed pecans; seasoned nuts; chicken" [BEEF disclaimed], finding that the USPTO had failed to prove that the mark is primarily geographically descriptive of the goods. The examining attorney contended that "BA" is an abbreviation for Broken Arrow, Oklahoma, where applicant is located, but the record evidence was insufficient to show that "BA" would be recognized as identifying "a place known generally to the beef-purchasing public in the United States." In re Broken Arrow Beef and Provision, LLC, 129 USPQ2d 1431 (TTAB 2019) [precedential] (Opinion by Judge Christopher Larkin).

Section 2(e)(2) of the Trademark Act bars registration on the Principal Register of a mark which “when used on or in connection with the goods of the applicant is primarily geographically descriptive of them." To establish that a mark is primarily geographically descriptive, the USPTO must prove three elements: "(1) the mark sought to be registered is the name of a place known generally to the public, (2) the public would make a goods/place association, i.e., believe that the goods for which the mark is sought to be registered originate in that place, [and] (3) the source of the goods is the geographic region named in the mark." In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448-49 (Fed. Cir. 2015) (internal quotations and citations omitted).

The Board found it necessary to consider only the first element of the Section 2(e)(3) test. The examining attorney relied on websites, search results, social media pages, and various printed materials as proof that the acronym "BA" is an abbreviation for "Broken Arrow" and that the primary significance of "BA" is a generally known geographic location.

Applicant argued that the average American beef consumer "would not likely associate the initials BA with any geographic location." Although local residents sometimes refer to Broken Arrow as "BA," applicant asserted, a beef consumer elsewhere in the country would not know what "BA" meant: "it might be Buenos Aries beef, Big Al's beef, Best Anywhere beer, British Airways beef, Bay Area beef, of simply BA (pronounced 'bah' or 'bay') beef."

The Board found instructive its decision in In re Trans Cont'l Records, 62 USPQ2d 1541 (TTAB 2002), in which the Board reversed a requirement for disclaimer of the word O-TOWN, a nickname for Orlando, Florida. There, despite evidence of use of the nickname in national media, the Board found that, "[a]lthough people in Orlando and parts of Florida may be aware of the nickname," it could not find that "consumers elsewhere in the country are aware that O-TOWN is another name for the city of Orlando." The Board concluded that "the limited number of articles reflecting that O-TOWN is a nickname for Orlando is not sufficient for us to conclude that O-TOWN is anything but an obscure geographic term."

Here, applicant's evidence regarding the meaning of "BA" was "quantitatively more extensive" than that for O-TOWN, but was "no better qualitatively." Website searches showed that "BA" has "a handful of geographic meanings, but most are obscure, and none pertain to Broken Arrow, Oklahoma." Unlike O-TOWN, which refers on its face to a geographic place, "the letters 'BA' have no obvious, generally known geographic significance, much less as an abbreviation for Broken Arrow, Oklahoma."

The examining attorney submitted evidence of use of the letters "BA" as an abbreviation for Broken Arrow in online references to a wide variety of businesses, schools, churches and media, all located in and around Broken Arrow, including in newspaper articles in THE DAILY OKLAHOMAN, TULSA WORLD, BROKEN ARROW WORLD, THE CHRISTIAN SCIENCE MONITOR, and the DALLAS MORNING NEWS, and on the city's governmental website.

The Board found it "hardly surprising" that "most locals" refer to Broken Arrow as "BA." The Board has previously found that it is common for cities to be referred to by nicknames or abbreviations: e.g., THE ATL, and CUBA L.A.). The relevant issue, however, is not whether "locals" recognize "BA" as an abbreviation for Broken Arrow, but "whether beef consumers throughout the entire United States would understand that 'BA' in the mark relates to a geographic place."

Here, Applicant’s goods are directed to the general public, not just to consumers in Broken Arrow, Oklahoma. Even assuming that "'BA' is likely a well-known geographic term to the more than 1 million people in the Tulsa metropolitan area,” as the Examining Attorney claims, . . . and that the articles in the non-Oklahoma publications have exposed the abbreviation BA to some beef consumers outside Oklahoma, we cannot find, based on the entire record, that the letters BA in the applied-for mark BA BEEF identify "a place known generally to the relevant American public." Newbridge Cutlery, 113 USPQ2d at 1450.

The Board agreed with applicant that "BA" "is no NYC, LA, or even ATL," particularly in view of the multiple non-geographic meanings of "BA." In sum, based on the record evidence, "BA" is "'a relatively obscure term which would not be perceived as a geographic reference to' Broken Arrow, Oklahoma by beef consumers outside Broken Arrow."( quoting Trans Cont’l Records, 62 USPQ2d at 1544.)

And so, because the USPTO did not establish the "threshold element" of geographic descriptiveness, the Board did not, and was not required to, consider the other elements of the Section 2(e)(2) test. Newbridge Cutlery, 113 USPQ2d at 1451; Trans Cont’l Records, 62 USPQ2d at 1544.

Read comments and post your comment here.

TTABlog comment: This ruling brings me back to my question [here] regarding the recent decision finding that #MAGICNUMBER108 fails to function as a trademark for shirts. Does anyone beyond the North Side or Chicago know or care about what that term refers to?

Text Copyright John L. Welch 2019.

TTABlog Test: Is SKYRIZI Confusable with IZIRIZE for Pharmaceuticals?

Novartis AG opposed an application to register the mark SKYRIZI for various pharmaceutical preparations, alleging a likelihood of confusion with its registered mark IZIRIZE, also for various pharmaceutical preparations. The parties stipulated that the goods "are related and overlap in part," and that the trade channels "will be substantially identical." But what about the marks? How do you thing this came out? Novartis AG v. AbbVie Biotechnology Ltd., Opposition No. 91238564 (January 24, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).

Strength of Opposer's Mark: Applicant AbbVie contended that the letter sequence "RIZ" is entitled to a narrow scope of protection because the term is in common use in the pharmaceutical industry. Applicant submitted a list of numerous registrations for marks containing "RIZ" in Class 5 for "pharmaceuticals," including CARIZAX; BACTRIZOLE; BRIZO; HORIZANT; OBRIZANDA; ORIZON; PRIZEMBA; RIZAPORT; RIZIMO; RIZLATET; RIZOPRAD; RIZUPA; TRIZELL; TRIZIVIR; VARIZIG; VORIZE; WELTRIZ; and the following two marks owned by Opposer: VISPRIZA and RIZARG.

The Board observed that third-party registrations alone, although not probative as to commercial strength, "may be relevant to show the sense in which a mark is used in ordinary parlance; that is, an element common to both parties’ marks may have a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is inherently relatively weak." Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)).

In light of the third-party registration evidence, the Board found that "the letter sequence “RIZ” is a weak source indicator for pharmaceutical products." [Query? What is the well-recognized or suggestive meaning of "RIZ"? - ed.].

Comparing the Marks: The Board found that the marks look different. The lead element of a mark may be perceived as having a position of prominence, and the lead elements differ here. Neither mark has any meaning.

Although there is no correct pronunciation of a coined term, the parties agreed that there are several possible pronunciations of each mark. They disagreed, however, as to what those pronunciations are likely to be. The Board found, "[b]ased on typical conventions of pronunciation in English, . . . Applicant’s mark is likely to be pronounced SKĪ RĪZ E or SKĪ RIZ E and Opposer’s mark is likely to be pronounced as EASY RISE or IZZY RISE."

Since the only comment element in the marks is the weak letter string "RIZ," the Board concluded that the marks are more dissimilar than similar.

Conditions of sale: Applicant AbbyVie argued that the likely consumers of the products are prescribing medical professionals and pharmacists, who are sophisticated and are likely to exercise increased care in their purchasing decisions. The Board, however, observed that it must make its determination based on the least sophisticated consumer," which in this case may include members of the general public who have a medical need for a pharmaceutical product, but who have neither medical nor legal expertise."

In particular, as our precedent dictates, where competing medical products are at issue, “there is no reason to believe that medical expertise as to pharmaceuticals will ensure that there will be no likelihood of confusion as to source or affiliation.”

And so the Board found this factor to be neutral.

Conclusion: Citing Kellogg Co. v. Pack’e Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142,1145 (Fed. Cir. 1991) ("We know of no reason why, in a particular case, a single du Pont factor may not be dispositive"), the Board concluded that, in light of the differences in the marks, confusion is not likely, and it dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2019.

Finding No Fraud and Naked Licensing Barred by Licensee Estoppel, TTAB Denies TREE'S WINGS & RIBS Cancellation Petition

The Board dismissed this petition for cancellation of a registration for the mark TREE'S WINGS & RIBS, in standard character form, for restaurant services, ruling that petitioner's abandonment-by-naked-licensing claim was barred by the doctrine of licensee estoppel, and rejecting its fraud claim as legally and factually groundless. A & M Wings, Inc. v. Glenn Thompson, Cancellation No. 92064044 (February 14, 2019) [not precedential] (Opinion by Judge Susan J. Hightower).

Abandonment: The Board gave short shrift to Petitioner's abandonment claim. Petitioner alleged that Respondent Glenn Thompson has abandoned his mark by uncontrolled or “naked” licensing to Petitioner itself and to third parties.

Petitioner submitted evidence that Respondent licensed it to use the name “Tree’s Wings and Ribs” in 1995, and that in 2004 the parties extended the license agreement for 99 years, until 2103. * * * Because Petitioner is licensed to use the subject mark, the doctrine of licensee estoppel bars Petitioner from bringing a claim that Respondent abandoned the mark through uncontrolled licensing. See, e.g., Freeman v. Nat'l Assn. of Realtors, 1700, 1703 (TTAB 2002).

The Board therefore dismissed the abandonment claim.

Fraud: Petitioner asserted that Respondent Thompson committed fraud on the USPTO when he renewed his registration, by submitting a picture of Petitioner’s restaurant and website as specimens. According to Petitioner, its use of the mark is not “controlled” by Respondent, and therefore Petitioner’s use as depicted in the renewal specimens does not inure to Respondent’s benefit.

Respondent, when he submitted the Section 8 specimens of use, stated that "the mark is in use in commerce" and that the specimens "show the mark as used in commerce." These statements were true. The USPTO does not require "an application to specify if the applied-for mark is not being used by applicant but is being used by one or more related companies whose use inures to the benefit of applicant." Applying this policy to respondent's Section 8 Declaration, he was not required to disclose that the claimed use was by petitioner. "[T]his omission was immaterial and cannot serves as the basis for a fraud claim."

In any event, Petitioner has not shown that Respondent intended to deceive the Office. There was no false allegation that Respondent had the requisite control over Petitioner’s use, because there was no such allegation in Respondent’s submission to the Office. And Petitioner has not proven that Petitioner knew the use claimed in the Section 8 affidavit did not inure to his benefit, but falsely represented to the Office that it did. Rather, Petitioner argues that Respondent submitted the specimen “knowing that Petitioner did not consider such use to inure to Respondent.” Petitioner’s Brief at 32, 30 TTABVUE 33. Petitioner’s own belief does not establish Respondent’s intent to deceive the Office.

And so the Board dismissed the fraud claim.

Read comments and post your comment here.

TTABlog comment: Not the clearest explanation of the fraud issue, but there you have it.

Text Copyright John L. Welch 2019.

E.D. Va. Dismisses Bayer's Section 43(a) Claims but Affirms TTAB's Cancellation of Belmora's FLANAX Registration

When we last visited (here) the long-running Bayer versus Belmora battle over the mark FLANAX, the U.S. Court of Appeals for the Fourth Circuit had reversed and remanded the case to the U.S. District Court for the Eastern District of Virginia. The lower court had ruled that Bayer lacked standing to bring its Section 43(a) claims of unfair competition and its Section 14(3) claim for cancellation of Belmora's FLANAX registration, because Bayer was not using the FLANAX mark in the United States. The Fourth Circuit, however, found that under a proper reading of Lexmark, Bayer has standing for all its claims. On remand, the district court has now dismissed, on summary judgment, Bayer's Section 43(a) claims, affirmed the TTAB's Section 14(3) decision, and dismissed various counterclaims brought by Belmora. Belmora LLC v. Bayer Consumer Care AG, 338 F. Supp. 3d 477 (E.D. Va. 2018).


Belmora's FLANAX
Bayer's Section 43(a) claims: The district court found that Bayer's Section 43 claims for unfair competition and false advertising, and its similar claims under California law, were barred by the applicable statute of limitations. The court concluded that, whether it applied a three-year or four-year statute of limitations in accordance with California law (there was some split in the Ninth Circuit courts), "Bayer's filing of this action [in 2014] misses the statute of limitations by almost a decade. There are at least six different dates [in 2004, 2005, 2006, and 2009] that establish that Bayer either knew or should have known of its Lanham Act rights."

Bayer's Section 14(3) cancellation claim: With regard to the TTAB's ruling under Section 14(3), the court observed that Belmora did not produce any new credible new evidence that Belmora's principal was not aware of Bayer's Mexican FLANAX product when he chose that mark, or that Belmora's packaging and advertising was not as the Board found, and that "the Board's decision was not arbitrary, capricious, or otherwise not in conformance with the law." And so it affirmed the Board's decision.

Belmora's Counterclaims: The  court dismissed Belmora's seven counterclaims. As to the first three, for trademark infringement and unfair competition, the court found no evidence that Bayer sold its Mexican FLANAX product in the United States, and so no likelihood of confusion. As to the fourth and fifth cpunterclaims, for importation of unauthorized or infringing goods under 19 USC Section 1526 and 15 U.S.C. Section 1124, the court again pointed to the lack of evidence that Bayer imported Mexican FLANAX into the United States. The sixth counterclaim, for monopolization under Section 2 of the Sherman Act, failed due to lack of expert testimony establishing the relevant market. And the seventh counterclaim, for tortious interference with a contract or prospective economic advantage, also failed for lack of evidence that Bayer had interfered with any orders that Belmora had received.

Both parties have appealed from the district court's ruling.

Read comments and post your comment here.

TTABlog comment: This brouhaha began in 2007 at the TTAB. Belmora remains the owner of the FLANAX mark in the United States. Its ownership of the mark is not in dispute.

Text Copyright John L. Welch 2019.

In view of Applicant's 11 Existing Registrations, TTAB Reverses 4 Failure-to-Function Refusals of RANDOM ACTS OF KINDNESS

The Board reversed four failure-to-function refusals of the mark RANDOM ACTS OF KINDNESS, in the special form shown below, for goods and services relating to the promotion and encouragement of the "doing of good deeds for others." The examining attorney maintained that the subject phrase is "merely informational and constitutes a widely used common slogan" that does not indicate source. The Board, however, pointed to applicant's eleven existing registrations for the phrase or variations thereof, and found this departure from the USPTO's prior position to be inexplicable and unacceptable. In re The Random Acts of Kindness Foundation, Serial Nos. 87245967, 87245971, 87245973, and 87245975 (February 15, 2018) [not precedential] (Opinion by Judge Angela Lykos).

The examining attorney relied upon excerpts from various websites encouraging people to perform good deeds, charitable activities, and acts of compassion, as well as on articles regarding altruism. Applicant argued that its previously registered marks, all on the Principal Register, preclude a finding that the applied-for marks fail to function as source indicators. In response, the examining attorney cited In re Nett Designs, Inc.,  57 USPQ2d 1564, 1566 (Fed. Cir. 2001), for the principle that each case must be decided on its own facts, and that the Board is not bound by prior decisions of examining attorneys in other cases.

The Board observed that it was faced with a "unique situation." Each of Applicant’s eleven prior registrations issued on the Principal Register and is entitled to a presumption of validity under Section 7(b). The marks of the prior registrations either constitute or incorporate the same phrase at issue. Six of the registrations are more than five years old, and the remaining five issued from applications filed on the same day as the four applications here at issue. None include a disclaimer of the phrase.

The Examining Attorney’s refusals thus constitute a departure from the Office’s prior position. * * * There is no evidence, or even argument, to suggest that the alleged incapability of this phrase to identify source could not have been discerned at the time any of the prior registrations were examined. The same types of evidence the Examining Attorney now relies on was previously available. Furthermore, the Office offers no reason for its inconsistent treatment of the five registrations which recently issued that were filed on the same day as the four applications before us. In light of these unusual circumstances, we are compelled to reverse the Examining Attorney’s refusals. To find otherwise would result in inconsistent examination.

And so the Board reversed the refusals.

Read comments and post your comment here.

TTABlog comment: Should this decision be precedential?

Text Copyright John L. Welch 2019.

TTABlog Test: Is "PINK COW & Design" Confusable With "RED BULL & Design" for Soft Drinks?

Red Bull GmbH opposed an application to register the mark PINK COW & Design (shown first below) for "Beers; mineral and aerated waters; soft drinks; smoothies; vegetable juice; fruit drinks and fruit juices; concentrates for making fruit drinks; syrups for making non-alcoholic beverages; excluding energy drinks," alleging a likelihood of confusion with its registered mark RED BULL & Design (second below) for "soft drinks; and sports drinks." The goods overlap ("soft drinks"), but what about the marks? Are they confusable? How do you think this came out? Red Bull GmbH v. Morganti Flavio Innovaciones Gastronomicas, S.L., Opposition No. 91223317 (January 18, 2019) [not precedential] (Opinion by Judge Susan J. Hightower).

du Pont factors 2, 3, and 4: Because the goods are identical in part, the Board presumed that those goods move in the same channels of trade to the same classes of consumers. These factors "weigh heavily" in opposer's favor. Moreover, because the involved goods are relatively inexpensive, "the risk of likelihood of confusion is increased because purchasers of such products are held to a lesser standard of purchasing care."

Strength of Opposer's Mark: The Board found Red Bull's mark to be inherently distinctive. As to commercial strength, Red Bull claimed that its mark(s) are famous. It provided "significant evidence of fame" (all under seal). Although Red Bull's evidence had some shortcomings, it "easily supports a finding that Opposer's mark is famous on the spectrum employed" in the du Pont analysis. This fifth du Pont factor heavily favored opposer. [Note, although this evidence of fame related to "energy drinks," which are expressly excluded from applicant's identification of goods, the evidence was pertinent because the Board found that energy drinks are "soft drinks." - ed.].

Similarity of the Marks: The Board found some similarity between the marks in sound and appearance, and "strong similarity" in connotation and overall commercial impression. "The verbal portion of each mark totals seven letters and comprises two short, one-syllable words denoting a color followed by a term for a bovine."

As the connotation, the Board observed that "pink is a lighter shade of red." Furthermore, "'Bull' is defined as a 'male bovine; especially: an adult uncastrated make domestic bovine,' while definitions of 'cow' included both 'the mature female of cattle' and 'a domestic bovine animal regardless of sex or age.'"

Thus, “bull” and “cow” can mean male and female bovines, respectively. But in common vernacular, a “bull” also can be a “cow,” that is, “a domestic bovine animal regardless of sex or age.” Per the record, therefore, consumers can interpret BULL and COW either as designating bovines of the opposite sex or as synonyms.

The fact that the involved marks each incorporates bovine imagery increases their similarity. "Indeed, consumers are likely to construe Applicant's mark as a feminized version of Opposer's mark."

The Board therefore found that the first du Pont factor favors a finding of likely confusion.

Conclusion: Noting that fame plays a dominant role in the du Pont analysis, and keeping in mind that any doubts must be resolved against the newcomer, the Board found confusion likely and it sustained the opposition. The Board declined to rule on Red Bull's dilution and false association claims.

Read comments and post your comment here.

TTABlog comment: What do you think? Please avoid any barnyard epithets.

Text Copyright John L. Welch 2019.

"OOPS! WRONG ANSWER" Fails to Function as a Mark for a Trivia Website, Says TTAB

[This blog post is a collaborative effort of yours truly and members of the IP CO-LAB Clinic at Northeastern University]. The Board affirmed a refusal to register the phrase OOPS! WRONG ANSWER, finding that it fails to function as a mark for trivia website services. The Board likewise affirmed the same refusal for CONGRATULATIONS! YOU ARE CORRECT! Applicant Trivia Today feebly argued that it uses the phrases "prominently appearing by themselves or in different font colors," unlike the third-party uses cited by the examining attorney, and that the USPTO has registered other OOPS and CONGRATULATIONS marks. In re Trivia Today, LLC, Serial Nos. 86760550 and 86745338 (February 8, 2019) [not precedential] (Opinion by Judge David K. Heasley).

To function as a service mark, a proposed mark must, by definition, “identify and distinguish the services of one person ... from the services of others and … indicate the source of the services, even if that source is unknown.” Lanham Act Section 45. "The critical inquiry in determining whether a designation functions as a service mark is how it would be perceived by the relevant public." In order to assess how consumers would perceive the phrases sought to be registered, the Board looks to the specimens of use and to the evidence of record showing the phrases as used.

Examining Attorney Lauren E. Burke maintained that the applied-for marks convey information "that a question has been answered correctly or incorrectly, but do not indicate the entity asking the question." She pointed to a number of uses of the same or similar phrases from third-party websites. Applicant Trivia Today pointed to its use of varying font colors, and to several third-party registrations for marks containing CONGRATULATIONS or OOPS (none of which were in the trivia field).

The Board, however, noted that applicant sought registration of the phrases in standard character form, not in any particular colors or font. As to the third-party registered marks:

None are similar to the subject applications, where the wording of the proposed marks, CONGRATULATIONS! YOU ARE CORRECT! and OOPS! WRONG ANSWER., functions as a part of the services, indicating whether one’s answers to a trivia guessing game are correct or incorrect.

The Board concluded that the applied-for marks are merely informational and fail to identify the source of the services.

They must accordingly remain in the public domain, available to all competitors. In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460 (TTAB 1998). As McCarthy puts it, “as a matter of competitive policy, it should be close to impossible for one competitor to achieve exclusive rights” in common phrases or slogans. 1 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7:23 (5th ed. Nov. 2018 update).

And so the Board affirmed the refusals to register.

Read comments and post your comment here.

TTABlog comment:  Interesting point about the phrases functioning as part of the services. Compare that with registered, arguably common phrases, like JUST DO IT, or the SMILE MORE mark discussed here.

Text Copyright John L. Welch et al. 2019.

TTAB Dismisses 2(d) Opposition to "M" Mark for Medication Costing Software

The Board dismissed this Section 2(d) opposition to registration of the mark shown below left, for software "for providing information to medical personnel and patients regarding the cost of a patient’s prescription medication taking into account that patient’s insurance coverage," finding that opposer had failed to prove a likelihood of confusion with the two registered marks shown below right, for various medical services and publications. H. Lee Moffitt Cancer Center and Research Institute, Inc. v. Milligram, Inc., Opposition No. 91228243 (February 11, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Goods and Services: Opposer Moffitt failed to prove that its goods and services are related to applicant's software. Although "intuitively the 'evaluation and testing of drug and treatment effectiveness relating to cancer and other diseases' should have a connection to pharmacy services," applicant’s description of goods and services does not involve pharmacy services. There was no testimony or evidence "that other treatment or research centers provide information regarding the cost of prescription medications taking into account that patient’s insurance coverage."

As to trade channels, the Board noted that "some patients in need of cancer treatment will need prescription medications and will want a means for determining the price for the prescription medications. Accordingly, Opposer’s goods and services will be offered to some of the same consumers as Applicant’s goods and services."

Strength of Opposer's Marks: Opposer is a well-known center for cancer research, but opposer failed to show that consumers associate the stylized letter “M” design mark with Opposer or that the "M" is a well-known trademark. Moreover, opposer uses its "M" mark primarily adjacent to the phrase MOFFITT CANCER CENTER. Thus opposer failed to show that its "M" mark is commercially stronger than any other mark.

The Board considered various third-party "M" marks in the medical field and concluded that "companies create use logos incorporating the first letter of their trade name. Presumably, consumers encountering logos incorporating the first letter of an entity’s trade name are likely to associate the logos with the trade names and, that without evidence that consumers identify the letter logos as standalone marks, such marks should not entitled to a broad scope of protection." As to opposer's stand alone "M" mark, the Board placed in the middle of the spectrum between weak and very strong.

The Marks: The Board found that the involved marks are not similar, "[g]iven the conditions under which or the degree of care consumers will naturally exercise in selecting goods and services in the field of health care, cancer protection, prevention, detection and treatment."

Conclusion: Although some consumers may encounter the marks of the parties, because the marks are not similar and the goods and services are not related, the Board found no likelihood of confusion.

Read comments and post your comment here.

TTABlog comment:  Well, this was not the most exciting case I've ever read, but there you have it.

Text Copyright John L. Welch 2019.

TTABlog Test: Are These Two "I-10" Marks Confusable for Beer?

The USPTO refused registration of the mark shown immediately below, for beer, finding the mark likely to cause confusion with the registered mark I-10 for "beer, ale, lager, stout and porter." The goods overlap, but what about the marks? How do you think this came out? In re RPD Management, LLC, Serial No. 87573250 (February 11, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Board found that the du Pont factors regarding of the goods, channels of trade and classes of consumers "weigh heavily in favor of likelihood of confusion."

As to the marks, the Board not surprisingly found "I-10" to be the dominant portion of the applied-for mark (the remaining terms appearing in the mark were disclaimed). Applicant's mark is likely to be shortened to "I-10" by consumers.

Applicant argues that the facts of this case are similar to those presented in In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) [TTABlogged here], in which the Board found no likelihood of confusion between the applied-for mark (shown below) for various clothing items and the registered mark RACEGIRL for clothing items that encompassed in part the applicant’s goods.

Here, however, "the vintage wagon in Applicant's mark "clearly displays the wording emblazoned upon the sides, hood and front of the car. The design does not draw the viewer’s attention away from the wording, but rather draws attention to the wording by incorporating it into the design."

A consumer viewing Applicant’s mark cannot look at the design without noticing and reading the wording that covers large portions of the car. The largest lettering, “I-10” and “IPA” are particularly prominently displayed on the door and hood of the wagon. There is no separate design element, such as the “RR letters” in the Covalinski mark to either draw attention away from the wording or render the wording difficult to read. As a result, we find the facts of Covalinski to be distinguishable from those in the instant appeal.

The Board concluded that "the fact that each mark is dominated by the same term 'I-10' simply outweighs the points of
dissimilarity."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2019.

Denying Cancellation Petition, TTAB Finds that Roman Atwood's "SMILE MORE" Functions as a Mark

The Board dismissed this petition for cancellation of Roman Atwood's registration for the mark SMILE MORE for various goods (stickers, backpacks, shirts) and for retail store service featuring clothing, denying petitioner's claim that the term fails to function as a mark. The evidence of a very small number of third-party uses for related goods was insufficient to undermine the source-identifying significance of the phrase. Disorderly Kids, LLC. v. Roman Atwood, Cancellation No. 92062027 (November 28, 2018) [not precedential] (Opinion by Judge Peter W. Cataldo).

YouTube personality and comedian Roman Atwood
Although Atwood's specimens of use in the underlying application displayed the mark in an ornamental fashion on his goods (e.g., the t-shirt above), his service mark specimens did not. Those specimens showed the SMILE MORE mark used with "The Official Smile More Store" and the "Roman Atwood Pranks" YouTube channel, and "clearly associate the SMILE MORE mark with Respondent."

Moreover, as to the goods, the term SMILE MORE "conveys to the public a secondary source, namely, Respondent Roman Atwood, his YouTube channel and the content he posts there, and is registrable on the Principal Register." In re Paramount Pictures Corp., 213 USPQ at 1112 (in this case, wording on a T-shirt “inherently tells the purchasing public the source of the T-shirt, not the source of the manufacturer but the secondary source.”).

Petitioner submitted evidence of a "modest number" of third-party uses of the wording "Smile More" and formatives thereof for t-shirts, hats, stickers, and the like. But the record evidence also showed that Atwood "actively and vigorously polices his SMILE MORE mark and views such uses as infringement."

Respondent has successfully prevented or stopped such uses by Café Press, Zazzle.com, USCD Apparel and RedBubble, i.e., the very third parties Petitioner relies upon for its assertion of widespread use of “Smile More” in connection with the relevant field of goods and services. The record further establishes that fans of Respondent actively report such uses when they encounter them. In addition, the record reflects that some of the third-party users point to Respondent when advertising their “Smile More” merchandise in an attempt to associate their goods with him.

Petitioner pointed to eight registrations of SMILE MORE and SMILE-formative marks for dental services and snack foods, but none related to the goods in Atwood's registration.The Board concluded that this is "not a case in which widespread ornamental use of the phrase SMILE MORE by third parties" may influence how the mark is perceived. "To the contrary, the record evidence . . . supports a finding that SMILE MORE, as used in connection with the goods and services recited in the Registration, serves to indicate a single origin or source, namely Respondent."

The Board therefore dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I suspect that Mr. Atwood is smiling more after this ruling.

Text Copyright John L. Welch 2019.

TTAB Reverses Descriptiveness Refusal of “CANNABIS CANNIBALS” for Cartoons Featuring Cannabis-Smoking Cannibals

[This guest post was written by Stephanie Grace Stella, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. The Board reversed a Section 2(e)(1) mere descriptiveness refusal of CANNABIS CANNIBALS for “entertainment services, namely, an ongoing series featuring animated cannabis smoking cannibals provided through network or cable TV and the internet,” finding that the mark’s primary significance is to indicate to viewers “an ongoing entertainment series and the fanciful animated fictional, principal characters of the series.” In re Jeffrey Butscher, Serial No. 87572095 (January 29, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Examining Attorney concluded that the proposed mark CANNABIS CANNIBALS “merely describes the subject matter of [Applicant’s] series.” In response, Applicant Jeffrey Butscher conceded that the series features animated cannabis-smoking cannibals, but argued (1) “the mark is suggestive because viewers will have to use their imagination to discern the thematic content and genre of the show,” and (2) the Board should apply the competitors' use and competitors' need tests, relying on the Board’s 1985 decision in No Nonsense Fashions. The Board noted, however, that it has rejected the tests set forth in No Nonsense Fashions, and it reiterated that the test for descriptiveness is “whether a mark immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.”

There is no requirement that the Office prove actual competitor use or need; it is well established that even if an applicant is the only user of a merely descriptive term, this does not justify registration of that term. . . . Descriptiveness must be evaluated in relation to the particular goods [or services] for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods [or services] because of the manner of its use or intended use. [Citations and quotation marks omitted.]

Applying the appropriate test, the Board concluded that the proposed mark is not merely descriptive because “the primary significance of CANNABIS CANNIBALS to a prospective viewer indicates an ongoing entertainment series and the fanciful animated fictional, principal characters of the series.” The Board reasoned that “[to] hold to the contrary would lead to the inequitable result that this Applicant, as well as countless other applicants in the creative industries, could not register their marks because the marks identify their characters or the subject matter of the televisions shows.” The Board relied on several precedential decisions involving similar marks, including MORK & MINDY for decals ornamented with the mark, and design marks comprising drawings of Superman, Batman and the Joker for toy dolls of those characters.

The Board distinguished this case, where Applicant owns intellectual property rights in the work from which the “cannabis-smoking cannibal” characters arose, from those where the character is in the public domain. For example, in In re Carlson Dolls Co., 31 USPQ2d 1319, 1320 (TTAB 1994), the Board held that LITTLE MERMAID for dolls is merely descriptive because "a fictional public domain character like the Little Mermaid of the Hans Christian Anderson fairy tale is not necessarily linked to a specific commercial entity and may be presented in various embodiments . . . and, thus. describes the purpose or function of the goods (i.e., to represent the Little Mermaid of the fairy tale)." (quoting In re United Trademark Holdings, Inc. 122 USPQ2d 1796, 1799 (TTAB 2017).

The Board further distinguished cases such as In re Weather Channel, Inc., 229 USPQ 854 (TTAB 1986), in which the Board found THE WEATHER CHANNEL to be generic for “a television transmission whose subject matter exclusively concerns the weather because viewers would understand that term as the apt descriptive name for television channel dedicated to the weather.” The Board reasoned that, in this case, the mark CANNABIS CANNIBALS connotes “the fanciful animated, fictional subjects of Applicant’s entertainment services created by Applicant rather than a factual subject matter.”

Finally, the Board noted that the alliterative use of the letter “C” as the first consonant in both terms of the CANNABIS CANNIBALS mark, “while not dispositive in and of itself, adds to the character of the mark.”

And so the Examining Attorney’s descriptiveness refusal went up in smoke.

Read comments and post your comment here.

TTABlog comment: Stephanie is still working on her punsmanship

Text Copyright Stephanie Grace Stella and John L. Welch 2019.

TTABlog Test: Are Automobile Dealerships and Car Washing Services Related?

White Horse Wash opposed the application of White Horse Auto to register the mark WHITE HORSE AUTO for automobile dealerships [AUTO disclaimed], claiming a likelihood of confusion with opposer's mark WHITE HORSE AUTO WASH for "automobile and vehicle washing; automobile and vehicle detailing" [AUTO WASH disclaimed]. The marks are nearly identical, but are the services related under Section 2(d)? White Horse Wash, LLC v. White Horse Auto, LLC, Opposition No. 91230312 (January 29, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

The Board noted that applicant's automobile dealership is located less than two miles from opposer’s carwash, both located in Warrenton, Virginia. [How relevant is this fact, given that applicant is seeking a nationwide registration and it can be assumed that its services could or would be offered right next door to opposer's carwash? - ed.].

The Board found probative "a meaningful number of mistaken inquiries and assumptions about these two businesses that are two miles apart in a relatively small town, and use essentially the same marks in connection with automobile-related services." It observed, however, that certain testimony of opposer's owner and employees was of minimal probative value "in the absence of testimony from the third parties themselves 'as to whether they were confused and, if so, what caused their confusion'") (quoting Corp. Fitness Programs, Inc. v. Weider Health and Fitness, Inc., 2 UPQ2d 1682, 1691 (TTAB 1987), set aside on other grounds, 7 USPQ2d 1828 (TTAB 1988)).
 
Of course, the fact that the parties both provide automobile-related services is not enough to establish a relationship between the services for Section 2(d) purposes. However, the Board pointed out once again that because the parties’ marks are "so highly similar," the degree of similarity between the services needed to support a finding of likelihood of confusion is reduced. Indeed, "[c]onsumers could very well perceive WHITE HORSE as an 'umbrella' mark or name for a group of local automobile-focused businesses each of which provides different goods or services." "In this case, customers who buy their used cars from Applicant’s dealership may very well encounter or use one of Opposer’s car washes."

The Board found that the channels of trade and classes of consumers "overlap to the significant extent that both parties by definition target their sales and advertising to motorists, car owners and car buyers."

Thus, they travel in primarily local trade channels, with Opposer’s customers by definition having to bring their cars to Opposer’s place of business for a wash, and most of Applicant’s customers having to visit Applicant’s place of business to negotiate for, or ultimately pick up, a car. In doing so, some are likely to encounter the other business with a similar name, simply by driving by it, or being exposed to, for example, its Warrenton focused marketing efforts, heightening the likelihood of confusion. This factor weighs in favor of finding a likelihood of confusion

The Board agreed with applicant that the likelihood of confusion is lessened because applicant’s services are significantly more expensive than opposer’s and thus "applicant’s customers are likely to exercise much more care in purchasing than Opposer’s customers." [But what about opposer's customers? - ed.]  In any case, in view of the near identity of the marks "used in the same general field in local in local trade channels," even sophisticated purchasers are likely to be confused.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: I guess you could say that opposer had more horsepower.

Text Copyright John L. Welch 2019.

TTABlog Test: Is "THE OFFICIAL SEXIFIT & Design" Confusable with "IFIT" for Fitness Services?

ICON Health & Fitness opposed Procheer's application to register the mark shown immediately below, for "providing fitness instruction services in the field of dance, and physical fitness," alleging a likelihood of confusion with its registered mark IFIT for, inter alia, physical fitness instruction. The services overlap, but what about the marks? Are they confusable? ICON Health & Fitness, Inc. v. Procheer Fitness and Dance, Opposition No. 91230219 (February 1, 2019) [not precedential] (Opinion by Judge Albert Zervas).

Fame: Opposer ICON claimed that its mark is famous, pointing to sales figures for its fitness machines and other products, the number of apps that have been downloaded, the number of visits to its website and blog, its advertising in various media, the availability of its products at major retailers such as Walmart and Amazon.com, its trade show participation, various awards it has received, and use of the IFIT mark since the 1990s. The Board found this evidence "impressive," but much of it concerned opposer's goods and not fitness instruction services. Nonetheless, the Board found that "Opposer has established that its mark is very strong in the field of fitness instruction due to its impressive showing concerning its many fitness-related products."

Turning to the marks, the Board first noted that Opposer's mark is in standard character form, and is thus not limited to any particular font, style, color, or size of display. In applicant’s mark, the large wording SEXIFIT is the dominant part of the mark both because it is the wording in a word+design mark that consumers will use to call for the services, and because the term SEXIFIT is substantially larger than the other wording in the mark.

Of course, the first letter “I” is in the shape of a slim barbell; consumers would likely view this as part of the term SEXIFIT and not as an independent design element separating the wording SEX and FIT.

The Board found that the marks are similar in commercial impression because of applicant’s inclusion of the entirety of opposer’s mark in the applied-for mark.

Balancing the relevant duPont factors, the Board found confusion likely and it sustained the opposition.

The services, trade channels and classes of consumers overlap. Opposer’s mark is a very strong mark and there is no evidence of third-parties using similar marks. Opposer’s and Applicant’s marks are similar, and consumers are likely to exercise a relatively low degree of care when making purchasing decisions for the involved fitness instruction services.

Read comments and post your comment here.

TTABlog comment: Well, what do you think? It seems to me that applicant's mark would be perceived as SEXI-FIT, not SEX-IFIT.

Text Copyright John L. Welch 2019.

TTAB Finds COMBAT ROSARY Generic for . . . Guess What?

[This guest post was written by Kira-Khanh McCarthy, a 2L at University of Notre Dame Law School]. The TTAB affirmed a refusal to register COMBAT ROSARY (in standard characters, “Rosary” disclaimed) for “rosaries” on the ground of genericness. Applicant conceded that the term is merely descriptive by amending its initial application to seek registration on the Supplemental Register, but insisted that the mark is not generic after Examining Attorney Sophia S. Kim refused registration under Section 23(c) and Section 45. In re Deus Vult, LLC, Serial No. 87186211 (January 30, 2019, corrected February 11, 2019) [not precedential] (Opinion by Judge Frances Wolfson).

The Board sought to determine what is the genus of the goods at issue and whether relevant purchasers understand the designation primarily to refer to that genus of goods.

Genus of the Goods at Issue: The Examining Attorney asserted that the proper genus of the goods, as identified in the application, is “rosaries.” Applicant contended that the proper genus is “prayer beads” because “a rosary is a specific type of prayer bead (a species within the genus ‘prayer beads’).” The Board reviewed Applicant’s website and found that “Applicant’s specimen of use shows that Applicant identifies its product as a rosary, not as ‘prayer beads.’” Therefore, the Board found that there “is no need to broaden the genus to include all types of chains of beads or knots used for counting prayers.”

The Relevant Purchasers Understanding of “Combat Rosary”: Next, the Board needed to determine who are the relevant purchasers and how would those purchasers understand “combat rosary?” The Board found that dictionary definitions of “combat” and “rosary” exemplify that both words are “common English terms whose meanings would be grasped by all relevant purchasers.” Accordingly, any consumer who purchases rosaries is considered a member of the relevant public regardless of religious affiliation.

Then, to establish how the relevant public would understand the term, the Board turned to printouts from websites submitted by the Examining Attorney. While Applicant claimed that “all of the hits showing ‘COMBAT ROSARY’ branded rosaries are Applicant’s own goods,” it failed to submit any record evidence, declarations, or affidavits. Instead:

Several of the sites describe the combat rosary as a “pull chain rosary that was commissioned and procured by, believe it or not, the U.S. government and issued by the military, upon request, to soldiers serving in World War I. Some of these rosaries were also seen in WWII.” The majority of the websites are selling replicas of the originals.

The website evidence demonstrated that the public is likely to view the term “combat rosary” as generic and as “a military-issued rosary given to soldiers in combat during World Wars I and II, as well as replicas of these originals.” And so, the Board affirmed the refusal to register Applicant’s mark on the Supplemental Register.

Read comments and post your comment here.

TTABlog comment:  Is this a WYHA?, pray tell.

Text Copyright Kira-Khanh McCarthy and John L. Welch 2019.

WYHA? TTAB Finds CREATINE GUMMIES Merely Descriptive of Supplements Containing Creatine

The Board affirmed a Section 2(e)(1) refusal to register the mark CREATINE GUMMIES, finding it to be merely descriptive of "Dietary and nutritional supplements containing creatine" [GUMMIES disclaimed]. Applicant argued that the mark is incongruous and would require a multi-step reasoning process "to determine what the goods are." The Board was unimpressed. In re BPI Sports, Serial No. 87199476 (January 31, 2018) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Applicant BPI Sports feebly contended that CREATINE GUMMIES suggests “creative candies,” which is not descriptive of the product. It argued that multi-stage reasoning is required to determine what the goods are [That's not the test - ed.]. According to applicant, CREATINE GUMMIES creates an effect of surprise because gummies generally are candies for children and do not commonly contain creatine, which is harmful to children. And finally, BPI asserted that the applied-for mark is unique and incongruous because it is contradictory to the purpose of dietary and nutritional supplements.

Examining Attorney Alicia Collins Edwards submitted eight third-party registrations for dietary and nutritional supplements or vitamin supplements with disclaimers of the term "gummies." A Google brand image search for "gummies" revealed a number of vitamin and nutritional supplements in gummy form, including the one depicted above. A Wikipedia entry for "gummies" included a sub-section entitled "Vitamin Gummies." A Google search for "creatine gummies" revealed two such products.

Furthermore, Internet evidence showed that creatine, an amino acid that is produced by the body, and that creatine supplements are used by body builders and competitive athletes to help increase lean muscle mass and enhance performance.

The Board once again pointed out that the determination of mere descriptiveness must be made in the context of the goods; i.e., it is not a guessing game as to what the goods are. Because the goods contain creatine, the word CREATINE is merely descriptive of the goods. Moreover, producers of creatine supplements use the word "creatine" in the supplement name, a fact that also supports a descriptiveness finding. Internet articles provided by both the Examining Attorney and Applicant BPI showed that creatine may be offered as a type of dietary and nutritional supplement, further establishing the descriptiveness of the term in relation to Applicant’s goods.

The term “gummies” in Applicant’s mark describes the chewable form of Applicant’s vitamins/supplements, similar to gummy candy. The third-party registrations evidence the descriptive significance of the word “gummies” for vitamins and dietary and nutritional supplements. The Google searches showing third-party use of “gummy” and “gummies” by producers of dietary and nutritional supplements, and the use of the term “gummy” or “gummies” in articles relating to dietary and nutritional supplements further establish that the term “gummies” and its singular form “gummy” are at best merely descriptive of dietary and nutritional supplements.

Finally, the Board found that the combination of the two individual terms does not evoke a new and unique commercial impression apart from their descriptive meanings. Although there was no evidence of any use of the term CREATINE GUMMIES in the marketplace by anyone else, that was not relevant. "It is well-established that where an applicant is the first and only user of a descriptive term, that does not make the term registrable."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2019.