The TTABlog<sup>®</sup>: March 2019

TTABlog Quarterly Index: January-March 2019

We're off and running in a new TTAB year. Don't forget that e-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the TTABlog on Twitter: @TTABlog.

Section 2(a) - Deceptiveness:

TTABlog Test: Is "NEW SILK ROAD" Deceptive for Clothing Not Made of Silk? [No]

Section 2(a) - False Association:

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

Section 2(d) - Likelihood of Confusion:

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

Section 2(e)(1) - Mere Descriptiveness:

Section 2(e)(2) - Primarily Geographically Descriptive:

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

Section 2(e)(5) - Functionality:

Finding Aesthetic Functionality, TTAB Affirms Refusal to Register Copper Color for Irrigation Drip Tubes

Section 2(f) - Acquired Distinctiveness:

Abandonment:

Concurrent Use:

Precedential No. 39: TTAB Denies Concurrent Use Registrations For Wine Because Applicant Failed to Prove Prior Lawful Use in Commerce

Dilution:

Fraud:

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

Genericness:

Lawful Use:

Precedential No. 39: TTAB Denies Concurrent Use Registrations For Wine Because Applicant Failed to Prove Prior Lawful Use in Commerce

Mark/Drawing Issues:

Nonuse/Specimen of Use/Failure to Function:

Standing:

Precedential No. 37: Dismissing "NAKED" Condoms Cancellation, TTAB Finds Lack of Standing Due To Contractual Estoppel

Discovery/Evidence/Procedure:

CAFC Opinions:

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

Other:

Text Copyright John L. Welch 2019.

TTAB Posts April 2019 Hearing Schedule

The Trademark Trial and Appeal Board (TTAB) has scheduled five (5) oral hearings for the month of April 2019. Four of the hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The hearing on April 16th will be held at Georgia State University College of Law in Atlanta. Briefs and other papers for these cases may be found at TTABVUE via the links provided.

April 9, 2019 - 1 PM: OnePoint Patient Care, LLC v. Millennium Pharmaceuticals LLC, Opposition No. 91228995 [Opposition to registration of the mark 1 POINT for "Business administration of patient reimbursement program; Business administration of medication reimbursement programs; Providing insurance information and insurance reimbursement information; providing financial assistance for prescription cost; Providing medical and scientific research information to patients relating to the management of hematological malignancies, cancer, auto-immune and inflammatory diseases and disorders and regarding pharmaceutical products relating to the management of hematological malignancies, cancer, auto-immune diseases and inflammatory diseases and disorder; Providing medical information to patients relating to the management of hematological malignancies, cancer, auto-immune and inflammatory diseases and disorders; providing medical information regarding medical services and therapeutic properties of pharmaceutical products to patients relating to the management of hematological malignancies, cancer, auto-immune diseases and inflammatory diseases and disorders," in view of the registered mark OnePoint Patient Care, in standard character and design form, for "Pharmacy services for hospice providers and institutional healthcare facilities"].

April 11, 2019 - 1 PM: Carl's Junior Restaurants LLC v. Burma Super Star Inc., Opposition No. 91226465 [Opposition to registration of BURMA SUPERSTAR for: "restaurants; non-alcoholic beverages, namely, carbonated beverages; ginger ale; ginger beer; ginger lemonade; ginger flavored beverages; salad dressing; tea leaf snack bars; coconut rice, namely, cooked rice prepared with coconut milk; tea leaf-based snack foods, namely, tea leaf clusters; tea leaf salads in the nature of vegetable salads; lotus chips in the nature of vegetable chips; pre-cooked curry stew; packaged entrees consisting primarily of meat, fish, poultry or vegetables; prepared entrees consisting primarily of meat, fish, poultry or vegetables; frozen entrees consisting primarily of meat, fish, poultry or vegetables; nut and seed snack mix; prepared nut and seed mix for topping salads," on the grounds of nonownerhip, abandonment through naked licensing, and likelihood of confusion with and likely dilution of the registered marks SUPER STAR and SUPER STAR REWARDS, STAR-containing Marks, and Star Design Marks for restaurant services and various food items].

April 15, 2019 - 2 PM: Citizens for the Fair Us of "Ocala Horse Properties" v. Ocala Horse Properties, Cancellation No. 92061767 [Petition for cancellation of a registration for the mark OCALA HORSE PROPERTIES for "Real estate agencies; Real estate brokerage" on the grounds of genericness, mere descriptiveness, and fraud].

April 16, 2019 - 1:40 PM: Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., Cancellation No. 92057294 [Petition for cancellation of a registration for the mark MAXVOLINE for "lubricants for automobiles" on the grounds of abandonment, nonuse, and likelihood of confusion with the conjointly used and registered marks VALVOLINE and MAXLIFE for lubricants].

April 24, 2019 - 1 PM: In re Ocean Technology, Inc., Serial Nos. 87405201, 87405211, and 87405233 [Refusals to register the marks shown below for "crabmeat" [CRAB and CRABMEAT disclaimed] on the grounds that the marks are merely informational and that applicant failed to satisfy a Rule 2.61(b) request for information about the nature of the goods].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2019.

TTABlog Test: Are These Two Male Torso-Shaped Perfume Bottles Confusingly Similar?

The USPTO refused registration of the mark shown below left, comprising a bottle in the shape of a male torso, for "Perfumery, essential oils, articles for body- and beauty-care, namely, perfumes," finding it likely to cause confusion with the container design mark shown below right, for "perfumes" (lined for the color blue). The goods overlap, but are the marks confusable? Applicant argued that the torsos are different because "the registered mark consists of a male torso with a slender physique and no penis, while applicant’s mark consists of a muscular physique and penis." How do you think this came out? In re Coscentra B.V., Serial No. 79196465 (March 26, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).

Of course, because the goods are in-part identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Moreover, the Board noted that side-by-side comparison is not the appropriate approach for determining confusing similarity.

Applicant Coscentra expanded on its argument that the "physiques" of the marks are dissimilar by asserting that:

1. Consumers are accustomed to seeing the male form in all forms of media and can see that not all men have the same physique;
2. Applicant’s mark comprises more musculature and definition, with a well proportioned torso, while the registrant’s mark shows a slender upper body and a disproportionately larger buttocks;
3. A penis is not commonly shown in consumer products and applicant’s mark comprises a penis, which prospective consumers are likely to notice; and
4. The arms are cut shorter in the registrant’s mark, but cut longer in applicant’s mark, therefore highlighting broader shoulders.

The Board recognized that there are differences between the marks, but pointed out that it must consider the marks in their entireties. It noted that the mark in the cited registration is "lined for the color blue," while applicant's mark is not limited to a color. Moreover, the cited mark is "clearly a male torso, and is more anatomically correct than Applicant acknowledges."

There was no evidence that the cited mark is weak. Examining Attorney Tina L. Snapp submitted dozens of images of perfume bottles, none depicting a perfume package in the form of a male torso. Moreover, the cited registration issued on the Principal Register without any Section 2(f) claim.

The Board concluded that the marks are "similar in sight, connotation and commercial impression." Furthermore, both marks may be called for by consumers "as a perfume container in the shape of a male torso."

And so the Board affirmed the refusal to register.

comments and post your comment here.

TTABlog comment: Is this scenario likely:? Customer: "Excuse me, salesperson, do you have the perfume in the bottle that looks like a male torso?" Salesperson: "With or without ....?"

Text Copyright John L. Welch 2019.

TTABlog Test: Is ALACRAN Confusable with SCORPION for Mezcal?

The USPTO refused to register the mark ALACRAN for "alcoholic beverages except beers; distilled blue agave liquor," finding the mark likely to cause confusion with the registered marks SCORPION MEZCAL for "alcoholic beverages, namely, Mezcal" [MEZCAL disclaimed] and SCORPION & Design, shown immediately below, for "alcoholic beverages, namely, distilled spirits." The goods overlap, but are the marks confusable? The application states that the English translation of ALACRAN (from the Spanish) is SCORPION. In re Centruro, S.A. de C.V., Serial No. 77946053 (March 25, 2019)[not precedential] (Opinion by Judge George C. Pologeorgis).

The Board noted that applicant's original identification of goods included the word "tequila," but since that term is now a registered certification mark, applicant was required to delete it. Applicant substituted "distilled blue agave liquor" in its place.

Applicant Centruro's broadly worded identification of goods encompasses all of the goods in the cited registrations. In any event, third-party registrations showed that "tequila" and "mezcal" are related. Since the goods overlap, the Board must presume that those goods travel in the same channels of trade to the same classes of consumers.

Not surprisingly, the Board found the word SCORPION to be the dominant element in both cited marks. The key issue, of course, concerned that application of the doctrine of foreign equivalents.

The record clearly established that ALACRAN is the Spanish word for the English term "scorpion," and further that Spanish is the most widely spoken non-English language in this country. Examining Attorney Ronald McMorrow therefore asserted that the doctrine of foreign equivalents applies and the marks must be found identical in connotation.

Centruro argued that the differences in the sound and appearance of the marks makes confusion unlikely. The Board noted that these particular differences are not necessarily enough to eliminate the likelihood of confusion.

Centruro urged that the doctrine of foreign equivalents is not an absolute rule, but the Board found the rule applicable here.

The term, whether in English or Spanish, has no demonstrated meaning in the context of alcoholic beverages and will likely be understood as an arbitrary use of the word. Thus, the significance to the alcoholic beverage consumer of the terms ALACRAN and SCORPION will likely be the same.

The Board distinguished the Tia Maria decision, relied on by Centruro. That case involved restaurant services under the mark TIA MARIA versus AUNT MARY'S for canned fruit and vegetables. In determining the likelihood of confusion, the Board "clearly took into consideration the context in which consumers would encounter the respective marks . . . ." As the Board stated there:

[I]t is unlikely to expect that a person encountering “AUNT MARY’S” canned fruits and vegetables in a supermarket or other establishment where goods of this type are customarily sold would translate “AUNT MARY’S” into “TIA MARIA”, and then go one step further and associate these food products with applicant’s restaurant. Likewise, going the other route, it is difficult to perceive that a person who had purchased “AUNT MARY’S” canned fruits and vegetables on the shelves of a supermarket would, upon dining at the “TIA MARIA” restaurant in Mexican decor and surrounded by a menu of Mexican delicacies, translate “TIA MARIA” into “AUNT MARY” and then mistakenly assume that the “TIA MARIA” restaurant and “AUNT MARY’S” canned fruits and vegetables originate from or are sponsored by the same entity. In re Tia Maria, 188 USPQ 524, 526 (TTAB 1975)

Here, in contrast, consumers will encounter the marks on the same goods, alcoholic beverages, in the same channels of trade. Thus it is not "'difficult to perceive' that a consumer would stop and translate the two marks upon encountering them on alcoholic beverages."

The Board found that the similarity between the marks based on meaning and connotation outweighed the dissimilarities, and that confusion is likely. And so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: The Tia Maria case is often cited as an example of a case where a consumer would not stop and translate, but the facts there are worth noting.

Here's a trivia question for you: What song includes the lyrics "Gonna tell Aunt Mary 'bout Uncle John. He claim he has the misery but he's havin' a lot of fun . . . ," and who sang it? Answer here.

Text Copyright John L. Welch 2019.

TTABlog Test: Is "A MOTHER'S TOUCH MOVERS" Confusable with "A WOMAN'S TOUCH MOVING" for Moving Services?

The USPTO refused to register the mark A MOTHER'S TOUCH MOVERS for "transportation of household goods for others" [MOVERS disclaimed], finding a likelihood of confusion with the registered mark A WOMAN'S TOUCH MOVING for "moving and storage of goods; moving company services" [MOVING disclaimed]. The services overlap, as do the channels of trade and classes of consumers. Applicant pointed to two co-existing registrations for marks containing the phrases "MOTHER'S TOUCH" and "WOMAN'S TOUCH" for dentistry services as proof that its mark can co-exist with the cited mark. Are you moved by that argument? In re A Mother’s Touch Movers, LLC, Serial No. 87365368 (March 22, 2019) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Board found the involved marks to be similar in sight and sound. The words "MOTHER'S" and "WOMAN'S" are "interlinked, since the term 'mother' is defined as 'a female parent' and the term 'woman' is defined as 'an adult female person.'" Thus the two marks look and sound alike, and they "create a similar overall commercial impression of a female adding her 'touch' to the moving process."

Applicant relied on two prior registrations - namely, DENTISTRY WITH A WOMAN'S TOUCH and CHILDREN'S DENTISTRY WITH A MOTHER'S TOUCH" for dental services - in arguing that the USPTO has supposedly found that the phrases "a woman's touch" and "a mother's touch" used on similar services are sufficiently dissimilar that confusion is not likely.

The Board pointed out once again, however, that prior decisions and actions by other trademark examining attorneys in allowing the registration of marks have little evidentiary value and are not binding on the Board. Each case must be decided on its own record. Moreover, third-party registrations are entitled to little weight on the issue of confusing similarity because the registrations are "not evidence that the registered marks are actually in use or that the public is familiar with them." [That seems to miss applicant's point. - ed.]. Finally, the history of the commercial relationship between two third-party registrations is not of record, and it may be that one registrant consented to the other's registration.

The Board noted that when the involved services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. It concluded that confusion is likely here, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2019.

"The Trademark Office Comes to California" - April 2 (SF) and April 4 (LA)

"The Trademark Office Comes to California," set for April 2 in San Francisco, and April 4 in Los Angeles, is one of the flagship events hosted by the California Lawyers Association Intellectual Property Law Section, and it offers unparalleled value in addition to the chance to hear and meet the Commissioner and Deputy Commissioner for Trademarks, TTAB judges, and senior examining attorneys. There will also be panels presented by experienced practitioners, an interactive luncheon with table topic discussions, a networking reception, and the "TTAB Year in Review" presented by yours truly. Attendees receive 6.5 hours of CLE credit, including 1.0 hour of legal ethics. Register for the SF session here. For the LA session here.

Readers may find particularly interesting the panel featuring Chris Doninger, Managing Attorney at the USPTO, and Jason Lott, Attorney Advisor for Trademark Educational Outreach, USPTO. They will discuss and answer questions on a variety of examination issues, including how to avoid or overcome refusals, and will also give a live demonstration of USPTO examination systems.

Read comments and post your comment here.

TTABlog comment: See you there!

Text Copyright John L. Welch 2019.

TTABlog Test: Is TEMPUS for Beer Confusable With TEMPUS TWO for WInes?

The USPTO refused registration of the mark TEMPUS in the stylized form below, for "beer," finding a likelihood of confusion with the registered mark TEMPUS TWO for "wines." There was little doubt regarding the similarity of the marks, and the evidence failed to prove that the cited mark is weak. Applicant Cerveceria Primus pulled out all the stops in trying to show that the goods are not related, including an argument that all but one of marks in the cited third-party registrations covering beer and wine are not in use (based on their lack of COLA certificates). How do you think this came out? In re Cerveceria Primus, S.A. de C.V., Serial No. 87460794 [not precedential] (Opinion by Judge George C. Pologeorgis).

The Marks: Applicant submitted a "very modest amount" of third-party uses and registrations for marks containing the term TEMPUS for wine or distilled or potable spirits. This evidence was insufficient to show that registrant's mark is commercially weak for wine. Moreover, there was no evidence concerning the inherent weakness of TEMPUS or TEMPUS TWO for wine.

The Board found the word TEMPUS to be dominant in the cited mark, and it opined that consumers are likely to believe that registrants wine offered under the mark TEMPUS TWO is the second product in a line of goods. The stylization of applicant's mark was, not surprisingly, deemed insufficient to distinguish the marks.

The Goods: Examining Attorney Katherine S. Chang submitted 24 third-party use-based registrations each covering both beer and wine, as well as third-party Internet evidence from 21 websites offering both beer and wine.

Applicant argued that the third-party registrations have little probative value due to the USPTO's program to examine whether registered marks for which Section 8 or 71 declarations have been filed, are still in use.The Board noted, however, that applicant provided no evidence that any of the cited registrations have been cancelled or restricted under that program, and therefore applicant's argument was speculative and unavailing.

Next, applicant attempted to demonstrate that all but one of the third-party registered marks are not actually in use for both beer and wine, by submitted evidence "purportedly demonstrating that these registrations have not obtained Certificates of Label Approval ('COLA') from the TTB for both types of beverages." The Board pointed out, however, that its decision must be based on the goods identified in the third-party registrations, and not on actual use of the marks. An ex parte proceeding is not the proper forum for challenging an issue registration, which enjoys a presumption of validity under Section 7(b).

As to the third-party use evidence, applicant again argued that many of these third parties have not obtained the required COLA approval to offer both beer and wine, and therefore that the marks are not in use. The Board pointed out, however, that consumers are unaware of whether COLA approval has been obtained and therefore lack of such approval would not affect their understanding that beer and wine are provided by a single source, noting the website evidence showing beer and wine offered by the same source.

Applicant further maintained that an extremely small percentage of microbreweries or nanobreweries sell both beer and wine under the same mark. The Board observed that this evidence did not show that only a small percentage of all breweries (large and small) sell both beer and wine under the same mark. Nor did it refer to wineries that sell both beer and wine. In any case, applicant's "beer" is not limited to beer produced by a microbrewery.

Finally, applicant submitted pairs of third-party registrations for allegedly similar mark owned by different registrants, one registration covering wine, the other beer, arguing that these registrations showed that the USPTO considers beer and wine to be unrelated goods. The Board was unimpressed. First, the paired marks are "clearly not identical," and furthermore the "history of the registrations or the commercial relationships between the pairs of parties" is not known. Therefore this evidence is entitled to little weight. The "nontrivial" amount of Internet evidence submitted by the Examining Attorney supported the conclusion that beer and wine are related.

The Board noted that, although there is no per se rule that all alcoholic beverages are related, its finding is "consistent with prior precedent." The Board acknowledged, however, that those prior decisions were based on different factual records.

As to trade channels and consumers, the evidence showed that beer and wine travel in overlapping trade channels (e.g., retail stores, grocery stores, restaurants) to the same classes of consumers (the adult general public) .

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

Read comments and post your comment here.

TTABlog comment: Beer and wine related under Section 2(d)? What else is new?

Text Copyright John L. Welch 2019.

JUST SAY IT for Books Confusable with and Dilutive of Nike's JUST DO IT, Says TTAB

Finding Nike's slogan JUST DO IT to be "exceedingly" famous for both Section 2(d) and Section 43(c) purposes, the Board sustained this opposition to registration of the mark JUST SAY IT in the design form shown below, for books and downloadable e-books in the field of "promoting healthy lifestyles encompassing physical, social, emotional and spiritual aspects of positive human oral communications.” The parties opted for ACR and applicant stipulated that JUST DO IT is famous for dilution purposes and became famous before her filing date. From there it was all downhill for applicant. Nike, Inc. v. Cheryl Bauman-Buffone, Opposition No. 91234556 (March 20, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

Fame: Noting applicant's admission regarding fame for dilution purposes, the Board nonetheless considered the degree of fame under Section 2(d), since "likelihood of confusion fame varies along a spectrum from very strong to very weak." Noting that Nike has spent $5 billion in advertising the JUST DO IT slogan, that it has been called "one of the most famous and easily recognized slogans in advertising history," that its advertising has featured various well-known athletes, etc., the Board found JUST DO IT to be a "household name" and "exceedingly famous."

The Marks: The Board found the marks to be "more similar than dissimilar, in how they look and sound and in the meaning they convey."

The main dissimilarity between the marks is that the middle word in Opposer’s mark is DO while the middle word in Applicant’s mark is SAY. But both DO and SAY are verbs, with DO being more general, in that it conveys performing an action of some unspecified type.13 The verb SAY is more specific, and means to speak.14 Thus, the command JUST DO IT could implore the listener to SAY something, depending on the circumstances. Furthermore, we do not need evidence to know that “saying” is often a precursor to “doing.” For example, people often talk about or “say” what their intentions are before performing or “doing” the act. The common expression “actions speak louder than words” also suggests that there is some relationship between the two terms. In short, while DO and SAY look and sound different, their meanings are not necessarily significantly different in the context of being commanded to take some action. See generally, Nike, Inc. v. Maher, 100 USPQ2d at 1022-23 (finding JUST JESU IT confusingly similar to JUST DO IT).

The Goods: Applicant goods are focused on "healthy lifestyles encompassing physical ... aspects of positive human oral communications." The Board presumed that the "physical" aspects of oral communications could encompass a variety of physical activities, including activities for which Nike's goods could be used.

Keeping in mind that fame plays a dominant role in the Section 2(d) analysis, the Board observed that Nike uses its slogan for more than just sports clothing and equipment. It also provides information regarding healthy lifestyles and the physical aspects thereof - not through books or e-books, but through its mobile training applications. And Nike also uses the slogan in connection with "social, emotional and spiritual aspects of human communications." [E.g., the Colin Kapernick ad campaign].

The Board observed that consumers might believe that applicant's books and e-books "are an extension of Opposer's JUST DO IT advertising campaigns."

Other du Pont Factors: There was insufficient evidence to show any overlap in channels of trade, but the classes of consumers overlap in part. The fact that Nike uses its mark on a variety of goods also weighed in its favor.

Conclusion Regarding Section 2(d): The Board sustained the Section 2(d) claim.

Dilution by Blurring: Applying the non exclusive factors of Section 1125(c)(2)(B)(i-vi), the Board wasted little time in finding the marks to be similar and Nike's mark to be inherently distinctive. Nike is the "substantially exclusive" user of its mark. And the slogan enjoys the "highest level of fame."

There was no evidence that applicant intended to create an association with the JUST DO IT mark, nor any evidence of any actual association by consumers.

The Board concluded the dilution is likely, and so it sustained the Section 43(c) claim.

Read comments and post your comment here.

TTABlog comment: The opinion seems like one long stretching exercise. What do you think?

Text Copyright John L. Welch 2019.

Current Roster of TTAB Judges

With the recent appointment of three (3) new TTAB Judges, the Trademark Trial and Appeal Board's membership now stands at twenty-five (XXV) Administrative Trademark Judges. The current roster is set forth below, beginning with Chief Judge Gerard F. Rogers and then proceeding alphabetically.

Rogers, Gerard F. (Chief Judge): Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D. magna cum laude, New England School of Law.

Adlin, Michael B.: Appointed to TTAB in 2012; Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University; J.D., Boston University School of Law.

Bergsman, Marc A.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.

Cataldo, Peter W.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Coggins, Robert H.: Appointed to TTAB in 2017; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.S., Davidson College; J.D., Wake Forest University School of Law.

Dunn, Elizabeth A.: Appointed to TTAB in 2019; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Boston University; J.D., American University Washington College of Law.

English, Christen M.: Appointed to TTAB in 2019; Prior Professional Experience: Private Practice; TTAB Interlocutory Attorney; Education: B.A., Boston College; J.D. Catholic University Columbus School of Law.

Goodman, Cheryl S.: Appointed to TTAB in 2014; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State College of Law.

Greenbaum, Cindy B.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Heasley, David K.: Appointed to TTAB in 2015; Prior Professional Experience: Private Practice (Washington, D.C.); Education: B.A., The Johns Hopkins University; J.D., University of Maryland School of Law.

Hightower, Susan J.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Austin, Texas); Education: B.A., Austin College; M.A., University of Texas; J.D., Stanford Law School.

Hudis, Jonathan: Appointed to TTAB in 2019; Prior Professional Experience: Private Practice (Washington, D.C. and Alexandria, Virginia); Education: B.A., State University of New York at Albany: J.D., Brooklyn Law School.

Kuczma, Linda A.: Appointed to TTAB in 2011; Prior Professional Experience: Private Practice (Chicago, Illinois); Education: B.S., St. Mary's University; J.D., Loyola University Chicago School of Law.

Kuhlke, Karen: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Larkin, Christopher: Appointed to TTAB in 2016; Prior Professional Experience: Private Practice (Los Angeles, CA; New York, N.Y.); Education: B.A., Stanford University; J.D., Columbia Law School.

Lykos, Angela: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., The Johns Hopkins University; J.D., Duke University Law School.

Lynch, Cynthia C.: Appointed to TTAB in 2015: Prior Professional Experience: Private Practice; Attorney-Advisor at the International Trade Commission; USPTO Assistant Solicitor: USPTO Administrator for Trademark Policy and Procedure; Education: B.A., University of North Carolina; J.D., University of Virginia School of Law.

Mermelstein, David: Appointed to TTAB in 2006: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Supervisory Interlocutory Attorney; Education: B.A., New College, Hofstra University; J.D., American University.

Pologeorgis, George C: Appointed to TTAB in 2015; Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Attorney in the Office of Trademark Quality Review and Training; Trademark Examining Attorney; Private Practice; Education: B.A., University of Pennsylvania; J.D., George Washington University National Law Center.

Ritchie, Lorelei: Appointed to TTAB in 2008; Prior Professional Experience: Private Practice; Arbitrator and Judge pro tem, Orange and Los Angeles Counties, California; Intellectual Property Manager, UCLA; Adjunct Professor of Law, Loyola Law School, Los Angeles; Assistant Professor, Florida State University School of Law; Education: A.B., Stanford University; J.D., Columbia University.

Shaw, Thomas: Appointed to TTAB in 2011; Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.

Taylor, Jyll: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of North Carolina at Chapel Hill; J.D., Howard University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Wolfson, Frances: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., U.C. Santa Barbara; J.D., U.C.L.A.

Zervas, Albert: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.

Text Copyright John L. Welch 2019.

TTABlog Test: Is BIKESTYLE Merely Descriptive of Cycling Apparel?

[This guest post was written by Amanda B. Slade, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. The USPTO refused registration of the mark BIKESTYLE, in standard character form, for cycling apparel including gloves, arm and leg warmers, pants, cycling shorts, cycling jerseys, shirts, rainwear, and hats, deeming the mark to be merely descriptive under Section 2(e)(1) On appeal, Applicant DashAmerica argued that because “consumers must engage in multiple steps of reasoning to understand how Applicant’s mark relates to Applicant’s goods,” its mark is suggestive rather than merely descriptive. How do you think this came out? In re DashAmerica, Inc., Serial No. 87564276 (Mar. 13, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).

Descriptiveness: During prosecution of the application, Examining Attorney Jonathan R. Falk concluded that the mark’s “wording merely describes a characteristic of applicant’s goods, specifically, a type of fashion made for riding a bicycle.” The Examining Attorney relied on dictionary definitions of “cycling” (“the act, sport, or technique of riding or racing on a bicycle, motorcycle, or similar vehicle”), “bike,” and “style” (“a particular fashion”). In response, DashAmerica contended that its BIKESTYLE mark “does not refer to ‘fashion made for riding a bicycle’ . . . but rather to all aspects that embody the interests of cyclists, and, in turn, the cyclists' way of life.” As a result, Applicant asserted, BIKESTYLE “does not make consumers immediately think ‘clothing,’ but instead invites them to pause for a moment to understand how the word relates to the company’s goods . . . .” The Examining Attorney was unpersuaded and maintained the refusal.

The Board agreed with the Examining Attorney and affirmed the refusal to register.. The opinion centered on three main conclusions. First, in its brief, Applicant asserted that “in evaluating descriptiveness, the Examining Attorney improperly split BIKESTYLE into the components BIKE and STYLE.” By dissecting “the mark into isolated elements,” the Examining Attorney allegedly failed to make a determination based on the mark’s overall impression. However, the Board underscored that “[i]n considering a mark as a whole, the Board may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components.” In re Oppedahl & Larson LLP, 71 U.S.P.Q.2d 1370, 1372 (Fed. Cir. 2004). Because the combination of BIKE and STYLE did not evoke “a new and unique commercial impression,” the Board found that the “composite mark BIKESTYLE also has a merely descriptive significance.”

Second, Applicant DashAmerica argued that “‘style’ has numerous meanings, many of which could apply here.” Applicant noted that, in addition to “a particular fashion,” “‘style’ can also be defined as a ‘quality of imagination and individuality expressed in one’s actions and tastes’ or ‘a mode of living.’” The Board rejected this line of reasoning, stating, “That a term may have other meanings in different contexts is not controlling.” In re Bright-Crest, Ltd., 205 U.S.P.Q. 591, 593 (T.T.A.B. 1979). The fact that “‘style’ may possess additional meanings in other contexts [did] not diminish the descriptive significance of the term in connection with the goods at issue.”

Finally, Applicant claimed that “there is no evidence of record that any third party uses ‘bikestyle,’ ‘bike style,’ ‘bicycle style,’ ‘cycling style,’ to describe any apparel, footwear, or any other goods to be used for either the sport of cycling or riding a bicycle in general.” The Board emphasized that it is unnecessary for the USPTO to demonstrate that others have used the mark or term to describe cycling apparel. There is simply “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.” In re Carlson, 91 U.S.P.Q.2d 1198, 1203 (T.T.A.B. 2009).

For these reasons, the Board determined that “the mark BIKESTYLE immediately describes a characteristic [or] feature of Applicant’s various items of cycling apparel, namely, that it is apparel fashioned for bicycling or bike fashion, without the need for multistage reasoning” and issued a final decision refusing registration.

Request for Judicial Notice or To Reopen Prosecution: The opinion raises interesting procedural issues as well. Applicant had attached copies of third-party registrations to its reply brief and asked that the Board take judicial notice of the registrations or, in the alternative, suspend the appeal and reopen prosecution to allow their introduction. However, the Board stated that “[t]he Board does not take judicial notice of applications or registrations; they must be proved by competent evidence.” See, e.g., In re Jonathan Drew Inc., 97 U.S.P.Q.2d 1640, 1644 n.11 (T.T.A.B. 2011). Additionally, the Board reiterated that “the proper procedure for an applicant . . . to introduce evidence after an appeal has been filed is to submit a timely written request with the Board to suspend the appeal and remand the application for further examination.” See 37 C.F.R. § 2.142(d). The request must also include a showing of good cause (i.e. “a satisfactory explanation as to why the evidence was not filed prior to appeal”). As Applicant failed to provide such an explanation, Applicant’s request for remand was denied.

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TTABlog comment: The Chinese "Flying Pigeon" (depicted above) is the world's most popular vehicle; more than 500 million have been manufactured (according to Wikipedia).

Text Copyright John L. Welch and Amanda B. Slade 2019.

Three New Judges Appointed to TTAB

Chief Judge Rogers has announced that two Interlocutory Attorneys at the Trademark Trial and Appeal Board have been promoted to the position of Administrative Trademark Judge. In addition, a prominent attorney in private practice will be joining the Board. By my count, this brings the total to 25, including the Chief Judge.

Elizabeth A. Dunn has served the TTAB for many years as its senior Interlocutory Attorney and been instrumental in mentoring other Interlocutory Attorneys. She is a former Trademark Examining Attorney, a recipient of the Department of Commerce Bronze Medal for her performance in that position, and honed her focus on quality examination practices as a Senior Attorney supervising Examining Attorneys in one of the Trademark operation’s law offices. Her USPTO experience is varied and includes completion of a work project in the Office of the Solicitor and a Career Development Detail in the Office of the Commissioner for Trademarks. Judge Dunn is a cum laude graduate of Boston University and earned her law degree from the Washington College of Law at American University.

Christen M. English has served the TTAB as an Interlocutory Attorney for the last six years. Prior to joining the Board she spent eleven years with the law firm of Drinker Biddle & Reath, LLP, first as an Associate and later as Counsel. Her 20-year career as a trademark lawyer includes prior associate positions in the IP practices of Cooley LLP and the firm now known as Kelley Drye & Warren, LLP. During this career, Judge English counseled clients large and small and worked in secondment for the in-house legal department of a Fortune 50 company. The Board has benefitted from her diverse experience with these firms. Judge English is a summa cum laude graduate of Boston College and earned her law degree magna cum laude from the Catholic University Columbus School of Law.

Jonathan Hudis joins the Board from his position as a partner with the Washington, D.C. office of the firm of Quarles & Brady LLP, which he joined in 2015. His 30-year long career specializing in Trademark, Copyright, Trade Secret and Unfair Competition law included more than 20 years as a litigator of IP cases with the firm now known as Oblon, McClelland, Maier & Neustadt, LLP. Apart from his long and distinguished career in private practice, Judge Hudis has been a frequent public speaker and has served as the editor of the American Bar Association (ABA) publication titled A Legal Strategist’s Guide to Trademark Trial and Appeal Board Practice, now in its third edition. From 2014-2017, he served on the USPTO’s Trademark Public Advisory Committee (TPAC) and was a member of the Information Technology and TTAB sub-committees. Apart from his public service on TPAC, Judge Hudis has held many leadership positions in the ABA-IPL and AIPLA. Judge Hudis is a magna cum laude graduate of the State University of New York at Albany, and earned his law degree from Brooklyn Law School.

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Text Copyright John L. Welch 2019.

TTABlog Test: Is DAILY FILL Confusable with DAILY'S For Gas Station Convenience Store Services?

First Coast Energy opposed an application to register the mark DAILY FILL for "retail store services featuring convenience store items and gasoline," claiming a likelihood of confusion with the registered mark DAILY'S for the same services. The parties opted for ACR and stipulated to a many things, leaving one critical issue to be resolved: the similarity of the marks. How do you think this came out? First Coast Energy, L.L.P. v. Dhukani Holdings, LLC, Opposition No. 91231925 (March 8, 2019) [not precedential] (Opinion by Judge Susan J. Hightower).

Since the services are identical, the Board must presume that they travel in the same channels of trade to the same classes of consumers. The transactions involved in the parties' services are "commonplace and relatively inexpensive," and are often prompted by impulse or immediate need.

Strength of Opposer's Mark: The evidence indicated that opposer's mark has some consumer recognition, at least in Florida, where the mark has been in use for more than 15 years. Its annual gross revenues at its 37 stores, all in Florida, amounted to $369 Million. Customers transact business with opposer 73,000 times per day. It spends about $1.1 Million annually for marketing, primarily targeted at the Jacksonville market.

The mark DAILY'S, registered without a 2(f) claim, is presumed to be inherently distinctive. Applicant pointed to three third-party registrations for marks incorporating the word DAILY for convenience store services, but provided no evidence as to use of those marks. According to the Board, these registrations are probative but insufficient to affect the strength of opposer's mark.

The Board therefore accorded to opposer's mark "the normal scope of protection afforded to inherently distinctive marks."

Similarity of the Marks: Applicant argued that the marks engender different commercial impressions: "DAILY FILL is a common expression for a quantity that satiates for a 24-hour period. DAILY'S is a possessive that implies a business owned or operated by a person named Daily."

The Board acknowledged that use of the possessive in opposer's mark may contribute to the perception that it is a surname, but "marks may not be meaningfully distinguished by the use of the same term in possessive form." [E.g., BINION and BINION'S ROADHOUSE; WIN-WAY DOLLAR STORE and WINN'S].

The Board noted that there was no evidence that anyone associated with opposer has the surname "Daily," and the dictionary definition of the term did not refer to it as a surname. The Board's analysis "must take into account the fact that 'daily' also is a common word that is suggestive in association with the identified services and could be perceived as conveying this meaning even in possessive form."

Moreover, there was no evidence that DAILY FILL is a common expression. The leading word DAILY is in the "position of prominence" and is likely to be noticed and remembered by consumers and so to play a dominant role in the mark.

The fact that opposer's mark "is essentially subsumed" in applicant's mark increases the overall similarity of the marks.

For all these reasons, we find that consumers of retail store services featuring convenience store items and gasoline, who are likely to shop on impulse and retain only a general impression of marks, would be likely to assume a connection between the parties due to the similarity of the marks DAILY’S and DAILY FILL, considered in their entireties. The first du Pont factor also supports a finding that confusion is likely.

Conclusion: The Board sustained the opposition.

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TTABlog comment: I think DAILY FILL is a unitary term, and DAILY does not dominate. What do you think?

Text Copyright John L. Welch 2019.

WYHA? TTAB Rejects Applicant's Attack on Cited Registration That Was "Wrongly Issued"

The Board affirmed a refusal to register the mark WATER BABIES in the design form shown below, for various swimming instruction services, finding a likelihood of confusion with the registered mark WATERBABIES for "swimming instruction." Applicant maintained that the refusal was improper because its application had priority and the USPTO should have refused registration to the WATERBABIES mark. The Board disagreed. In re Water Babies Limited, Serial No. 79147272 (February 21, 2019) [not precedential] (Opinion by Judge David K. Heasley).

The Board dealt with a similar situation in In re House Beer, LLC, 114 USPQ2d 1073 (TTAB 2015) [TTABlogged here], where it observed that Section 2(d):

makes no reference to the filing date of the application underlying the registration cited as the basis for the refusal. If the mark is registered, it may be cited as grounds for refusing registration. … Applicant asks us to find that a refusal that is clearly authorized by Section 2(d) is invalid because certain examination procedures were not followed during the independent examinations of Applicant’s application and the Underlying Application. We cannot give the internal examining procedures of the USPTO such primacy over statutory law. … [T]he owner of the cited registration is not a party to the appeal now before us, and we can neither cancel nor ignore the registration. Id. at 1076-77.

Examining Attorney John M.C. Kelly pointed out that the cited registration is entitled to a presumption of validity under Section 7(b) and can be cited under Section 2(d) as a ground for refusal. Applicant cannot effectively challenge the registration's validity in an ex parte appeal. In fact, the House Beer case was cited against this same applicant in another appeal involving the same cited registration. Applicant now argued that the instant case was different because here the USPTO errors took place during examination of the application at issue in this appeal. The Board was unmoved.

Nonetheless, the applicable principles remain the same. Regardless of any procedural irregularities in the cited Registration’s path to registration, once registered, it was and is entitled to a presumption of validity under 15 U.S.C. § 1057(b). In re Solid State Design Inc., 125 USPQ2d 1409, 1410 (TTAB 2018). It cannot be collaterally attacked in this ex parte proceeding. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018).

The Board then turned to the Section 2(d) refusal. Applicant feebly argued that the marks are dissimilar due to the color, font, and "bubble" over the letter "i," and because of the lack of a space in the cited mark, which prevents the mark from being displayed on two lines like applicant's. The Board, not surprisingly, found the marks highly similar, and since the services are in part identical, it affirmed the Section 2(d) refusal.

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TTABlog comment: Well, would you have appealed?

Text Copyright John L. Welch 2019.

TTABlog Test: Are These "ALL STAR" Logo Marks Confusable for Auto Part Services?

The USPTO refused registration of the mark ASM ALL STAR MOTORSPORTS & Design (shown first below), for catalog and online auto parts services, finding a likelihood of confusion with the two registered word+design marks shown next below, the first for "Wholesale and retail store services featuring automotive headlights," and the second for "Wholesale distributorship in the field of high performance and racing automotive parts and accessories." [MOTORSPORTS, AUTO LIGHTS, and PERFORMANCE disclaimed in the respective marks.] ALL STAR seems like a weak formative, doesn't it? How do you think this came out? In re Karapetian, Serial No. 87034208 (March 14, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).

The Marks: The Board observed that the term ASM in applicant's mark "appears to simply be an initialism for 'All Star Motorsports' and thus reinforces that wording in the mark." On its website, applicant displays the phrase with the first letters highlighted.

As to the first cited mark, the literal element is emphasized, as it is in applicant's mark. The "star" design in applicant's mark "emphasizes the 'All Star' aspect of its mark." The Board took judicial notice that "All Star" is somewhat suggestive of automotive services "that are promoted as best in class." However, there was no admissible evidence that the term is weak. The Board concluded that the applied-for mark is confusingly similar to the first cited mark.

The second cited mark is dominated by the term ALLSTAR, since PERFORMANCE is disclaimed. The Board found that "the term 'ASM' in applicant's mark, which is likely to be perceived as an acronym," does not distinguish these marks. Both marks contain "star" designs, which emphasize the term ALL STAR. There was no evidence that star designs are weak in this field.

The Board again concluded that, despite some dissimilarities in sight and sound, these two marks are confusingly similar.

The Services: Although applicant had tried to swerve around the two cited registrations by excluding "auto lights, high performance and racing parts," the Board still found auto part retail and wholesale services to be related based on Internet and third-party registration evidence. This same evidence demonstrated the similarity of the channels of trade.

Conditions of Sale: Even assuming that relevant consumers may exercise some care in purchasing auto parts, especially wholesale purchasers, the Board once again noted that even sophisticated purchasers are not immune to source confusion when the involved goods or services are similar. The Board found that this factor weighed slightly in applicant's favor.

Conclusion: The Board found confusion likely and it affirmed the refusal based on both cited registrations.

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TTABlog comment: Applicant referred in its brief to third-party registrations for marks containing the term "ALL STAR," but failed to make of record copies. The Board sustained Examining Attorney Angela Duong's objection to consideration of that third-party evidence.

Text Copyright John L. Welch 2019.

TTABlog Test: Are Snack Bars Related to Energy Drink Powder and Bicycles?

Trek Bicycle opposed an application to register the mark TREK & Design (shown below) for nut, grain, and dried fruit-based snack bars, alleging a likelihood of confusion with the registered marks TREK for bicycles, bicycle parts and accessories, for retail store services, and for various other goods, including powders for making energy drinks, TREK STOP for vending machine services in the field of bicycle parts and energy bars, and TREK BICYCLE STORE for retail store services. The marks are similar given the dominance of TREK in all the marks. But are the respective goods and services related? How do you think this came out? Trek Bicycle Corporation v. Natural Balance Foods Limited, Opposition No. 91221706 (March 13, 2019) [not precedential] (Opinion by Judge Frances Wolfson).

Strength of Opposer's Mark: The Board found that Opposer’s mark TREK has received significant public exposure in connection with bicycles and bicycle accessories, but it is not famous or commercially strong for food or beverages.

As to the conceptual strength of the marks, applicant argued that TREK is weak, since it is a term used in the snack food industry in combination with the term mix," for a type of snack food that consists of a combination of nuts, fruits, seeds, chocolate chips and the like, known as "TREK MIX."

The evidence supports applicant's contention that "trek mix" has a meaning in the snack food industry as denoting a sweet and/or salty high-energy mixture of seeds, nuts, dried fruits, chocolate and the like. We agree that the term "trek" may therefore have some meaning in relation to snack foods that decreases its conceptual strength as a trademark for snack foods. However, the fact that “trek mix” may impart a particular meaning to a snack bar (such as that it is a trail mix or trek mix based product), this purported meaning does not carry over to TREK bicycles, on-line retail store services, or powders for making energy drinks.

Furthermore, the word “trek” has another meaning connected with hiking and outdoor activity: “to make one’s way arduously.” "Conceptually, the duality of these meanings points to TREK as being suggestive in connection with snack bars, energy drinks, and retail bicycle services."

The Board concluded Opposer’s TREK marks may not be considered strong for any goods other than bicycles, bicycle parts, and retail stores featuring bicycles. It accorded the TREK mark "the scope of protection to which suggestive marks are entitled, keeping in mind the mark’s wider scope of protection in the bicycle industry."

Given the dominance of the word TREK in the applied-for mark, the Board found it to be similar in appearance, sound, connotation and commercial impression to Opposer’s TREK and TREK STOP marks, and thus the first du Pont factor "strongly favors" a finding of likelihood of confusion.

The Goods, Services, Customers, and Trade Channels:

The Board agreed with applicant that snack bars do not fall within Opposer’s "natural realm of expansion." Furthermore, even though opposer owns a TREK registration for powdered drinks, and a TREK STOP registration for the distribution of vending machines that dispense snack bars, opposer did not prove that these goods and services are related to applicant's snack bars.

Nonetheless, the evidence and testimony showed an overlap of trade channels and classes of consumers under buying conditions that "strongly favor a finding of likelihood of confusion." Opposer’s registrations for “online retail and wholesale store services featuring a wide range of consumer products except footwear all provided via the Internet,” “retail stores featuring bicycles,” and “powders used in the preparation of sports drinks and energy drinks” "have probative value to the extent that they serve to suggest that a bicycle retail store may sell a wide variety of consumer products over the Internet, sell powdered drinks both online and at retail stores, and distribute snack bars via vending machines." In addition, opposer established that it is common for bike shops to sell snack bars and that snack bars are a significant food source for cyclists

Although we agree with Applicant that common sales by mass retailers are generally insufficient to show relatedness, here there are common trade channels in a niche market (snack food sold in bike shops) and the common sales are directed to a discrete class of purchasers (cycling enthusiasts). We thus find Opposer’s limited activities, coupled with its dominance in the bicycle industry, sufficient to make confusion likely, at the least as to a perception of sponsorship or affiliation between the parties were both to use similar marks for their respective goods.

Thus, although the second du Pont factor - the similarity or dissimilarity of the goods - favors a finding of no likelihood of confusion, the third factor - the identity of specific channels of trade (bike shops) and classes of consumers (cyclists) for the parties’ goods and services - is "particularly significant" and favors finding of likelihood of confusion.

Conclusion: The Board found confusion likely and so it sustained the opposition.

[I]f consumers already familiar with Opposer’s TREK powder mix for sports and energy drinks, Opposer’s TREK retail store services, and Opposer’s well-known TREK mark for bicycles were to encounter Applicant’s snack bars sold under its TREK and design mark in one of Opposer’s or a third-party’s bike store, they would likely consider Applicant’s goods to be produced, sponsored, or affiliated with Opposer.

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TTABlog comment: Last year, opposer Trek won another Section 2(d) opposition (here), involving the marks TREKGUIDE for "Barometers; Magnetic compasses; Thermometers, THERMOTREK for "electric hand warmers," and TREKCEL for "Transformers; Portable electrical power chargers for cell phones, smart phones, tablet computers, MP3 players and wireless headsets"

Text Copyright John L. Welch 2019.

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Sunday, March 31, 2019

TTABlog Quarterly Index: January-March 2019