TTAB Posts May 2019 Hearing Schedule

The Trademark Trial and Appeal Board (TTAB) has scheduled nine (IX) oral hearings for the month of May 2019. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. Briefs and other papers for these cases may be found at TTABVUE via the links provided.



May 1, 2019 - 10 AM: William P. Thomas, III and Carolyn Thomas Walters v. Robert E. Auxier, Consolidated Oppositions Nos. 91219618 and 91221893 [Section 2(d) opposition to registration of the marks CHEETAH BTM & Design for "Clothing, namely, jackets, hats, caps, sweatshirts and t-shirts," and  BILL THOMAS RACE CARS 510 E. JULIANNA ANAHEIM, CALIF. & Design for the same clothing items and for "Providing information on racing, racing results, racing facts, racing films, and racing pictures; provision of a web site featuring information on racing, racing results, racing facts, racing films, and racing pictures; and provision of a web site featuring information on 1956 thru 1970 historical racing films and pictures, production history of replica Bill Thomas Cheetah race cars, and racing facts about the original Bill Thomas Cheetah race cars," in view of the identical marks, and others, for the same or related goods and services].

May 3, 2019 - 1 PM: Hollywood Casino Corp. v. Chateau Celeste, Inc., Opposition No. 91203686 [Opposition to registration of HOLLYWOOD HOTEL for "Bar and cocktail lounge services; Hotel, restaurant and catering services; Providing social meeting, banquet and social function facilities; Provision of conference, exhibition and meeting facilities" on the grounds of non-ownership and likelihood of confusion with the registered mark HOLLYWOOD CASINO for hotel services and casino services].

May 7, 2019 - 2 PM: Kate Spade LLC v. Thatch, LLC, Oppositions Nos. 91216585 and 91217168 [Consolidated oppositions to PATIO BY THE SPADES for clothing and handbags, and THE SPADES for fragrances, on the grounds of likelihood of confusion with, and likelihood of dilution by blurring of, the registered mark KATE SPADE and variations thereof for overlapping goods and related services].

May 14, 2019 - 11 AM: API Industries, Inc. v. Poly-America, L.P., Cancellations Nos. 92062601 and 92062517 [Consolidated petitions to cancel registrations for the mark shown below left, comprising "the color orange as used on the drawstring portion of the goods," for "plastic trash bags," and the mark shown below right, comprising "the color gray as used on the drawstring portion of garbage bags and liners for trash receptacles," for "plastic garbage bags; plastic liners for trash receptacles," on the grounds of functionality and genericness].

May 14, 2019 - 1 PM: In re International Barrel Distributors, Serial No. 87271602 [Refusal to register the mark DEEP TOAST for "wood barrels" on the grounds that the phrase is generic for the goods, or alternatively is not inherently distinctive and lacks acquired distinctiveness].

May 16, 2019 -2 PM: Abronette McDaniel aka Bonnie McDaniel v. Light Shine Media Group, LLC, Cancellation No. 92061045 [Petition to cancel a registration for the mark GOODLIVING for "General feature magazines" on the ground of likelihood of confusion with petitioner's common law rights in the mark GOOD LIVING for, inter alia, on-line non-downloadable general feature magazines].

May 29, 2019 - 10 AM: In re Airboss Of America Corp., Serial Nos. 87472750 and 87472766 [Refusals to register the mark AIRBOSS, in standard character and design form, for "Personal protective equipment for use by first responder, first receiver, military, healthcare, industrial, firefighting, emergency medical services, commercial, law enforcement and other safety-related personnel . . . , " on the ground of likelihood of confusion with the registered mark AIRBOSS for a "self-contained breathing apparatus for use in firefighting"].

May 29, 2019 - 2 PM: Chutter, Inc. v. Great Management Group, LLC, Opposition No. 91223018 and Cancellation No. 92061951 [Consolidated petition to cancel a registration for the mark DANTANNA’S for “steak and seafood restaurant" on the ground of fraud, and opposition to registration of DANTANNA'S for "spices and spice rubs" and DANTANNA'S TAVERN for "restaurant and bar services" on the grounds of likelihood of confusion with the mark DAN TANA'S for restaurant services and marinara sauce, and false association with plaintiff and its predecessor, Mr. Tana]. 

May 30, 2019 - 1 PM: Lupin Pharmaceuticals, Inc. v. Ampel, LLC, Opposition No. 91226322 [Section 2(d) opposition to registration of LuPPiN (in stylized form) for "Education services, namely, providing seminars and one-on one mentoring in the fields of Lupus, Lupus treatment options and the importance of clinical trials; training Lupus patients to teach other Lupus patients about the nature of Lupus, available treatments and the importance of clinical trials," in view of the registered marks LUPIN for a "house mark for full line of pharmaceuticals for medical purposes, but excluding dietary supplements and edible flour" and LUPIN & Design for pharmaceutical preparations for the treatment of various diseases and disorders].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2019.

Precedential No. 9: TTAB Rules That Testimony Declarations Must Be Executed During Testimony Period

Petitioner Michael A. Robinson saw his petition for cancellation go up in smoke when the Board granted respondent's counterclaim for cancellation of Robinson's registrations for the mark GRABBA LEAF, in standard character and design form, for cigar wraps. Robinson alleged that respondent's mark HOT GRABBA NATURAL TOBACCO LEAF for leaf tobacco would likely cause confusion with his registered marks. The Board, however found his marks to be merely descriptive, and so it granted the counterclaim and dismissed Robinson's petition for cancellation. Robinson v. Hot Grabba Leaf, LLC, 2019 U.S.P.Q.2d 149089 (TTAB 2019) [precedential] (Opinion by Judge Lorelei Ritchie).

Testimony Declaration: During his testimony period, Petitioner Robinson submitted a declaration that had been filed in the applications that matured into his two registrations. He asserted that Rule 2.123(a)(1) permits testimony to be submitted in affidavit or declaration form. Respondent argued that these declarations were inadmissible as untimely because Rule 2.121(a)(1) states that "[no] testimony shall be taken or evidence presented except during the times assigned, except by stipulation of the parties approved by the Board, or upon granted by the Board, or by order of the Board." The Board agreed with respondent:

Absent a stipulation or Board order, a testimony affidavit or declaration must be taken—that is, executed—during the assigned testimony period, as required by Rule 2.121(a).

The Board, however, pointed out that this problem may be avoided by submitting such a declaration "under a timely taken affidavit or declaration attesting to the continued accuracy of the information residing therein." The Board also noted that, had the declaration been considered, it would not have changed the outcome of the case.

Mere Descriptiveness: In response to the counterclaim, Petitioner Robinson argued only that his marks are inherently distinctive and did not claim acquired distinctiveness. Robinson had disclaimed any rights in the word LEAF, and the Board took that disclaimer as an admission that LEAF is merely descriptive of cigar wraps.

Third-party website evidence submitted by respondent showed the terms "grabba" and "grabba leaf" used in connection with tobacco products, including cigar wraps. A definition of "grabba" from the Urban Dictionary was also probative: "A Jamaican term used to describe something mixed with marijuana when smoked so as to keep the sent [sic] down and to get rid of the bad aftertaste."

Moreover, statements made by Robinson in the declaration from his application files were also pertinent, since they contradicted his claim of non-descriptiveness:

Paragraph 6: Since my use of the GRABBA LEAF trademarks, the term GRABBA has entered pop culture vernacular, through amongst other things, the use in songs in the Caribbean, namely Vybz Kartel featuring Popcaan – Hot Grabba, released June 2010.

Paragraph 7: The entry of the term GRABBA into pop culture vernacular postdates my use of the GRABBA LEAF trademarks.

The Board observed that [w]hether Petitioner was the first user of the term is irrelevant, since we evaluate the question of whether a term is merely descriptive as of the time of trial."

Petitioner further admitted in his trial brief that "[o]nly after Robinson, have second comers and junior users adopted the GRABBA term as part of a trademark, or worse, to describe a tobacco cigar wrap product." (emphasis supplied by the Board). The Board considered these statements to be admissions that "grabba" is "currently viewed by the relevant public as, at a minimum, immediately conveying information about an ingredient or characteristic of tobacco, or tobacco products, including cigar wraps."

Considering all the evidence, we find that "the term “GRABBA LEAF,” when viewed in relation to Petitioner’s “cigar wraps,” immediately conveys information about them, namely that they may be used as a leaf to wrap grabba tobacco, or that grabba leaf tobacco is an ingredient in the cigar wraps.

The Board found that Robinson's word-plus-design, which includes a drawing of a tobacco leaf, engenders the same commercial impression as the word mark GRABBA LEAF and is likewise merely descriptive of cigar wraps.

The Board therefore granted the counterclaim for cancellation of Robinson's pleaded registrations. Moreover since Robinson has no rights in the mark GRABBA LEAF, his claim under Section 2(d) must fail, and so the Board denied his petition for cancellation.

Read comments and post your comment here.

TTABlog comment: If the "File Declaration" was considered as evidence of the meaning of GRABBA LEAF, shouldn't that declaration be admissible for all purposes?

Text Copyright John L. Welch 2019.

Meet The Bloggers XV: Kings Bowl, Monday, May 20, 8-10 PM

MEET THE BLOGGERS, widely recognized as the best non-INTA event ever devised, will be convened for the fifteenth time (thus "MTB XV") on Monday, May 20th, 8:00 - 10:00 PM, at Kings Dining and Entertainment (a/k/a KINGS BOWL), 60 Seaport Boulevard (a few blocks from the Convention Center). Come and meet some of the best trademark attorneys in the world, and while you're at it say hello to the eight bloggers hosting this year's event. For details, directions, and the RSVP link, go HERE.

A special thanks to our premier sponsor, Wolf Greenfield, for supporting this event.

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POWER TECHON Confusable with POWER TECH for Extension Cords, Says TTAB in ACR Proceeding

In what may be the first opinion written by recently appointed Judge Jonathan Hudis, the Board sustained an opposition to registration of the mark POWER TECHON for, inter alia, electrical power extension cords, finding a likelihood of confusion with the registered mark POWER TECH for "Electric extension cords for use with portable electric hand tools, and sold through retail outlets including hardware, plumbing, electrical, and farm supply stores." Applicant argued, without success, that the mark POWER TECH is so inherently weak that it should not preclude registration of the applied-for mark. Gehr Industries, Inc. v. Ming’s Mark Inc., Opposition No. 91238658 (April 25, 2019) [not precedential] (Opinion by Judge Jonathan Hudis).

Of course, since the goods are identical (in part), a lesser degree of similarity between the marks is needed to support a finding of likely confusion. Also, these identical goods are presumed to travel i the same channels of trade. Applicant had filed a motion to amend its identification of goods to "power inverters," but the Board found that even if it granted the motion, confusion would still be likely, since the evidence showed that extension cords and power inverters may be used together, and thus are complementary and related goods.

Opposer's POWER TECH mark is presumed to be valid and distinctive, under Section 7(b) of the Lanham Act. Moreover, opposer submitted evidence of marketplace strength, while applicant's list of registered marks containing the words POWER or TECH in class 9 was of no probative value. Nonetheless,  the Board recognized that the POWER TECH mark "is on the weaker end of the spectrum conceptually, " but even weak are "still entitled to protection under Section 2(d) of the Trademark Act against the registration by a subsequent user of a similar mark for goods that are legally identical in-part and otherwise related, as is the case here."

Comparing the marks, the Board found that the similarities strongly weighed in opposer's favor.

Because the parties’ marks differ only in their last two letters, they would likely be pronounced similarly. Even with the addition of the letters “… ON” at the end of the word “TECH …” the commercial impression of “TECH” still comes through. Overall, the marks still look and sound similar and suggest that the goods have “TECH” features. 

Finally, applicant pointed to a consent agreement entered into by Opposer Gehr in 2007, involving the identical marks POWER TECH. But the Board found that agreement irrelevant, noting that applicant had reached no such agreement. "Thus, no presumption can be made that Gehr would consent to the use or registration of marks similar to POWER TECH in connection with goods identical or complimentary to the goods recited in Ming’s ‘824 Application. Obviously, by virtue of this proceeding, any such presumption would be incorrect."

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: This cases was submitted via ACR on February 21, 2019.

Text Copyright John L. Welch 2019.

TTABlog Test: Is ACTTRA Confusable with ACTARA for Agricultural Insecticides?

The USPTO refused registration of the mark ACTTRA, finding it likely to cause confusion with the registered mark ACTARA, both for agricultural insecticides. Applicant argues that its mark "is a two syllable word pronounced as 'ACK-tra'"whereas the cited mark "is a three syllable word
pronounced as 'ac-TAR-a.'" How do you think this appeal came out? In re ISCA Technologies, Inc., Serial No. 87321402 (April 24, 2019) [not precedential] (Opinion by Judge Thomas Shaw).

The Board took only six pages to affirm the refusal. Since the goods are identical, a lesser degree of similarity between the marks is needed to support a Section 2(d) refusal. The Board was not persuaded by applicant's argument.

It is well settled that there is no correct pronunciation of a mark. Viterra, 101 USPQ2d at 1912. For example, Registrant’s mark also could be pronounced “ACT-a-ra” which sounds very similar to the purported pronunciation of Applicant’s mark, “ACK-tra.” Given the slight differences in the possible pronunciation of the last syllable or syllables of the marks, consumers who hear the marks spoken by others might not notice, or could easily forget, the difference. See Viterra, 101 USPQ2d at 1912; In re Energy Telecomms. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983) (“Slight differences in the sound of similar marks do not avoid a likelihood of confusion.”).

The Board found the marks similar in appearance (both begin with ACT), sound, connotation (neither mark had any), and overall commercial impression.

And so the Board affirmed the refusal.


Read comments and post your comment here.

TTABlog comment: I would put this in the WYHA category, wouldn't you?

Text Copyright John L. Welch 2019.

HERE FOR THE GIRLS Confusable with FOR THE GIRLS for Cancer-related Services, Says TTAB

The Board affirmed a refusal to register HERE FOR THE GIRLS for "Charitable services, namely, providing emotional support services for improvement of young womens [sic] lives affected by Breast Cancer by means of in-person and online support," finding a likelihood of confusion with the registered mark FOR THE GIRLS for "Promoting public awareness of breast cancer over the Internet." There was no doubt about the similarity of the marks, and third-party confirmed the relatedness of the services. In addition, applicant's specimen of use failed to associate the mark with the services. In re Here for the Girls, Inc. dba Beyond Boobs!, Pink-Link and Pink Lin, Serial No. 87345046 (April 23, 2019) [not precedential] (Opinion by Judge Thomas Shaw).

The Board observed that both applicant and registrant are providing services related to combating breast cancer. Examining Attorney Sandra Snabb submitted seven (7) third-party registrations establishing that cancer-survivor support services and cancer-awareness promotion services are commonly provided by the same entity under the same mark. The Board therefore found that "[t]he respective services are commonly offered under the same mark by the same entity to the same consumers, namely, patients, family members, and caregivers." And so it affirmed the Section 2(d) refusal.

Applicant described its specimen of use [here] as "the support webpage showing a white box in the center of the page displaying the words ‘Here for the Girls.'"

The mark HERE FOR THE GIRLS appears in the URL of the web page and in a white box in the middle of the page. The page includes a tab at the top of the page with the word “DONATE” in a pink box. However, there is no mention of any services Applicant is providing. That is, prospective consumers may donate, but they will have no idea to whom they are donating or why. Absent any references to Applicant’s charitable services, the mark HERE FOR THE GIRLS is not associated with the services. See, e.g., In re Keep A Breast Found., 123 USPQ2d 1869, 1876-1879 (TTAB 2017). As such, applicant’s specimen fails to show use of Applicant’s mark in commerce in connection with the identified services.

And so the Board also affirmed the refusal based on applicant's inadequate specimen of use.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2019.

TTAB Dismisses DENTISTRY DONE DIFFERENTLY Opposition: Failure to Prove Priority

The Board dismissed this opposition to registration of DENTISTRY DONE DIFFERENTLY for "dentist services" because Opposer Timber Dental failed to prove priority. Opposer claimed common law rights in the same phrase, but its proofs showed prior use of a different mark. Timber Dental LLC v. Tooth, LLC, Opposition No. 91234587 (April 12, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).

In order to establish prior trademark rights, an opposer must show that its alleged mark is distinctive, inherently or otherwise. There was no allegation or evidence that DENTISTRY DONE DIFFERENTLY is not distinctive of  “dental services,” and so the Board found that "that while the mark is suggestive, on this record it appears to be inherently distinctive."

Applicant Tooth provided no evidence of use of the applied-for mark prior to its filing date of November 28, 2016, and so that was the earliest date on which it could rely. Opposer Timber's owner testified that opposer has used its alleged mark since 2014. However, the exhibits to his testimony showed use of the word-plus-design mark shown above, as well as the phrase FAMILY DENTISTRY DONE DIFFERENTLY, and not the phrase DENTISTRY DONE DIFFERENTLY alone.

This evidence does not establish use of the mark that Opposer pleads in its notice and argues on brief, DENTISTRY DONE DIFFERENTLY. Rather, . . . Opposer's mark includes at least the word "FAMILY" in the literal element of its mark, and most uses include TIMBER DENTAL FAMILY DENTISTRY DONE DIFFERENTLY (and design).
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As noted, the entire literal element contained in Opposer’s mark is TIMBER DENTAL FAMILY DENTISTRY DONE DIFFERENTLY or FAMILY DENTISTRY DONE DIFFERENTLY. This is not the same as the mark pleaded, and sought to be proven on  brief, by Opposer. The mark pleaded by Opposer is simply DENTISTRY DONE DIFFERENTLY, which is a different mark.

The CAFC addressed the issue of what constitutes the "same mark" in In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001):

A proposed mark is the "same mark" as previously-registered marks for the purpose of Trademark Rule 2.41(b) if it is the "legal equivalent" of such marks. A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark. Whether marks are legal equivalents is a question of law subject to our de novo review. No evidence need be entertained other than the visual or aural appearance of the marks themselves. Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991). (emphasis added)

The Board found that the phrases actually used by Opposer Timber - which refer more specifically to "family dentistry" - do not engender the same commercial impression as the phrase DENTISTRY DONE DIFFERENTLY.

Opposer did not plead or otherwise assert prior rights to any mark other than DENTISTRY DONE DIFFERENTLY. "Given that this is not the mark for which Opposer has established use, Opposer has failed to prove its priority."

And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: Gee whiz! Why didn't opposer just rely on FAMILY DENTISTRY DONE DIFFERENTLY?

Text Copyright John L. Welch 2019.

Latest Roster of TTAB Interlocutory Attorneys

With the recent ascendance of Elizabeth A. Dunn and Christen M. English to TTAB judgeships, the departure of Benjamin U. Okeke, and the appointment of five new attorneys last fall, the roster of TTAB interlocutory attorneys now stands at sixteen (16). The new appointees are attorneys Stempien Coyle, Folmar, McCormack, Sanders, and Stanley.

• Andrew P. Baxley
• Wendy Cohen
• Rebecca J. Stempien Coyle
• Mary Catherine Faint
• Winston T. Folmar
• Yong Oh (Richard) Kim
• Jennifer Krisp
• Jill M. McCormack
• Katie W. McKnight
• Geoffrey McNutt
• Mary B. Myles
• Shanna K. Sanders
• Lawrence (Larry) T. Stanley
• Ann Linnehan Vogler
• Michael Webster
• Elizabeth Winter

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As an attorney for a particular case or legal issue, the interlocutory attorney is responsible for promoting the efficient disposition of litigation before the TTAB. Specifically, she or he:

• Analyzes the legal issue in question, develops the strategy to deal with the legal issue, and determines the content and means of delivery of the completed analysis of the legal issue.
• Handles interlocutory matters in oppositions, cancellations and concurrent use cases at the TTAB, including mentoring and coaching others, and is recognized as an expert in the procedural and substantive aspects of the law.
• Independently decides and issues orders on all procedural and substantive motions that are not potentially dispositive of the proceeding, such as motions to amend pleadings, motions to compel and motions to strike evidence.
• Consults with and drafts decisions for Administrative Trademark Judges on all procedural and substantive motions that are potentially dispositive of the proceeding, such as motions to dismiss, motions for judgment on the pleadings, and motions for summary judgment.
• Deals with Administrative Trademark Judges and the top management of the TTAB, as well as the top management and/or attorneys of other private and public organizations.

Read comments and post your comment here.

TTABlog comment: Thoughts?

Text Copyright John L. Welch 2019.

SDNY Dismisses DJ Action: No Case or Controversy from Notice of Opposition

The U.S. District Court for the Southern District of New York dismissed this declaratory judgment action because the court lacked subject matter jurisdiction to hear the lawsuit. Plaintiff Halo Lifestyle sought a ruling that its HALO SPORT mark did not infringe on defendant's HALO FARMS marks, claiming that defendant's actions, including the filing of notices of opposition, suggested that defendant will bring a legal action for trademark infringement, and therefore that a case or controversy existed as to the issue of infringement. Not so, said the court. Halo Lifestyle LLC v. Halo Farm, Inc., 18 Civ. 9459 (S.D.N.Y. April 16, 2019).

Defendant Halo Farms asserted that it has not "sought or threatened to sue Lifestyle for use of the HALO SPORTS mark or any other Lifestyle Marks." Plaintiff Lifestyle pointed to the allegations in the notices of opposition claiming that registration and use of plaintiff's marks could cause consumer confusion. Lifestyle also claimed that Halo Farms had made oral threats and that it has sued other companies.

The court, however, found no actual case or controversy under the Declaratory Judgment Act. Second Circuit law is well settled that the filing of an opposition "is not by itself a charge or warning of a future charge of infringement."

Accordingly, absent any allegation that Halo Farm has done more - to wit, that it has threatened Halo Lifestyle with litigation, sent a cease-and-desist letter to Halo Lifestyle, or taken or made statements of a similar character - Halo Lifestyle's claim of a justiciable controversy would fall short.

Plaintiff Lifestyle did not make any such allegations. There was no explicit oral threat of an infringement action, nor any such written communications.

Defendant Halo Farm's allegations in the notices of opposition were not tantamount to a threat of litigation. As indicated, the case law is clear that a notice of opposition alone is not a basis for declaratory judgment jurisdiction.

Concluding that it lacked subject matter jurisdiction to adjudicate the matter, the Board granted Halo Farm's motion to dismiss.

Read comments and post your comment here.

TTABlog comment: I count at least ten oppositions.

Text Copyright John L. Welch 2019.

Right of Publicity: Columbia Journal of Law & the Arts

In the current issue (here) of the Columbia Journal of Law & the Arts (Volume 42, No. 3 (2019)), a cavalcade of professors and attorneys discuss the right of publicity from most every angle one can imagine. Enjoy!

• Jennifer E. Rothman, The Right of Publicity’s Intellectual Property Turn 
• Stacey Dogan, Stirring the Pot: A Response to Rothman’s Right of Publicity
• Mark Roesler, Term, Breadth, and Waivability
• Jeremy Sheff, Scope and Justification of the Right of Publicity
• Mark P. McKenna, Remarks on the Right of Publicity: Theory and Scope
• Ben Sheffner, Why Movie Studios Care About Right of Publicity
• Sarah “Alex” Howes, Digital Replicas, Performers’ Livelihoods, and Sex Scenes: Likeness Rights for the 21st Century
• Jessica Silbey, Control over Contemporary Photography: A Tangle of Copyright, Right of Publicity, and the First Amendment
• David G. Post, Territoriality, Jurisdiction, and the Right(s) of Publicity
• Frederick J. Sperling, Protecting the Rights of Publicity of Michael Jordan, Pele, and Muhammad Ali
• Danielle Keats Citron, The Roots of Sexual Privacy: Warren and Brandeis & the Privacy of Intimate Life
• Barton Beebe, What Trademark Law Is Learning from the Right of Publicity
• Mitchell M. Gans, Publicity Rights and the Estate Tax

Read comments and post your comment here.

Text Copyright John L. Welch 2019.

TTAB Dismisses Opposition: Opposer Failed to Respond to 12(b)(6) Motion to Dismiss

The CAFC issued a per curiam affirmance under Fed. Cir. R. 36, upholding the TTAB's ruling dismissing an opposition because the opposer failed to respond to a Fed. R. Civ. P. 12(b)(6) motion to dismiss. Opposer NetxGen mistakenly believed that the Board would determine the motion on the merits even without a response, rather than consider the motion conceded. NextGen Biologics, Inc. v. Axolotl Biologix, Opposition No. 91236432 (March 28, 2019), affirmed per curiam, Appeal No. 2018-2016 (Fed. Cir. April 15, 2019).

Trademark Rule 2.127(a) states: "When a party fails to file a brief in response to a motion, the Board may treat the motion as conceded." After the Board dismissed the opposition with prejudice, opposer requested reconsideration.

Opposer essentially argued that it believed the Board would decide the motion to dismiss on the merits, whether or not a response was filed, and further that the Board was obligated to invite opposer to submit an amended notice of opposition. Opposer cited no authority in support of that proposition. The Board was unmoved:

More pointedly addressing Opposer’s mistaken belief, the Board expects attorneys to be cognizant of their duties as officers of the court and to file proper and timely responses to motions; attorneys may not rely upon the Board to act as a surrogate advocate. See The General Tire & Rubber Co. v. The Gendelman Rigging & Trucking Inc., 189 USPQ 425, 427 (TTAB 1976).

The Board pointed out that opposer could have filed an opposition to the motion, or an amended notice of opposition within 21 days after service of the motion to dismiss (FRCP 15(a)(1)(B), or both. When opposer did neither, the Board followed its ordinary practice and stated authorities in granting applicant's motion as conceded.

Since opposer did not point to any error by the Board, the request for reconsideration was denied.

Read comments and post your comment here.

TTABlog comment: Lesson: read the Rules.

Text Copyright John L. Welch 2019.

New Deputy Chief Judge Joins TTAB

Chief Judge Rogers has announced the appointment of Mark A. Thurmon as the new Deputy Chief Administrative Trademark Judge for the TTAB. The new Deputy will join the Board on May 28, 2019.

Mark A. Thurmon has more than 25 years of experience as an attorney in private practice, as in-house counsel, and as a professor of law. Mr. Thurmon’s primary focus in his ten years of private practice and his sixteen years as a law professor has been the field of trademarks and trademark litigation.

The private practice positions held by Mr. Thurmon include Associate in the Intellectual Property section of Arnold, White and Durkee, an Of Counsel position with the firm of Fulbright and Jaworski, and an Of Counsel position with Roy, Kiesel, Ford, Doody & Thurmon, APLC. Mr. Thurmon’s in-house position as IP counsel was with W-H Energy Services, Inc. He has also provided pro bono legal services to the Baton Rouge North Economic Development District. In addition to his work experience involving intellectual property matters, Mr. Thurmon gained valuable experience as a manager during his five years of service as a Naval Officer. For his service, the Navy awarded Mr. Thurmon the Navy Achievement Medal and the Humanitarian Service Medal.

Teaching experience includes work as an Adjunct Professor of Law for the University of Texas School of Law; as an Assistant Professor of Law for the Levin College of Law at the University of Florida; and his current position as Professor of Law at the Southern University Law Center. At Southern University, he also serves as Director of the Technology & Entrepreneurship Clinic, and previously chaired the Curriculum Committee.

Mr. Thurmon has served on various committees of the American Intellectual Property Law Association (AIPLA), including the Amicus Committee and the AIPLA Quarterly Journal Editorial Board, both of which attest to his skill as a writer and editor. Mr. Thurmon is an accomplished public speaker and will be able to handle many outreach activities for the TTAB involving USPTO Regional Offices and IP stakeholders. Topics of his written work include federal trademark remedies, IP issues for Small Businesses, IP issues for Food Entrepreneurs, Practical Solutions to Internet Trademark Problems, and substantive topics such as Functionality. Mr. Thurmon has also presented Congressional testimony on procedural issues raised by international Internet trademark disputes.

Mr. Thurmon is a graduate of Louisiana State University, with a bachelor’s degree in electrical engineering, and earned his law degree from the Duke University School of Law, with high honors.

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Precedential No. 8: TTAB Rejects Designation of Documents and Responses as "Attorneys' Eyes Only"

In a precedential ruling, the Board considered Petitioner USPA's motion challenging Respondent McLane's confidentiality designations applied to certain documents and interrogatory responses pursuant to the Board's Standard Protective Order. The Board granted petitioner's motion in large part, requiring re-designation of the responses and some of the documents. United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442 (TTAB 2019) [precedential] (Opinion by M. Catherine Faint, Interlocutory Attorney).

David McLane and Leroy Neiman with his Triple Crown of Polo mural
The Board’s Standard Protective Order ("SPO") provides for two tiers of protected information: (1) Confidential and (2) Confidential – For Attorneys’ Eyes Only (trade secret/commercially sensitive) (hereafter “AEO”). The Board cited TBMP Section 412.01 [although the TBMP is not the law - ed.] for an explanation of the applicability of those two terms. The SPO (at paragraph 1) itself describes generally the types of information that may qualify as AEO. Of course, the designations dictate the level of protection accorded: i.e., who may have access to the information and materials. Essentially, parties, including inside counsel, have access to "Confidential" information but not AEO information. In either case, the information is shielded from public view by the Board.

Respondent bore the burden of demonstrating the appropriateness of its confidentiality designations. See SPO para. 14. Because the parties were unable to agree on a modification of the SPO (respondent wanted to restrict access to "Confidential" information to a single in-house attorney), the Board was required to decide which of the two "default designations" applied to the documents and information in dispute.

Interrogatory responses: The Board reviewed three of Respondent McLane's interrogatory responses, which concerned the identification of agreements, gross sales figures under the mark at issue, and the identity of persons who communicated with McLane regarding use of the mark. McLane had designated its responses AEO, asserting that Petitioner USPA, a direct competitor, would gain an advantage in future business deals if armed with this information.

The Board, however, observed that the SPO states that information protected under the order may be used only in connection with the Board proceeding, and each party is obligated to maintain the confidentiality of the information and must exercise reasonable care in that regard. McLane failed to show that disclosure of the information to Petitioner USPA would cause any injury, "let alone a clearly defined, serious injury," to McLane's business. Nor did McLane produce "any evidence" supporting its fear that USPA would violate the protective order by misusing the information provided.

The Board did allow the "Confidential" designation for these responses, since gross sales figures are "routinely" treated as confidential in Board proceedings and since individual third parties named in the responses presumably expected their identities to remain private.

Documents: The documents at issue, designated AEO by Respondent McLane, fell into the following six categories:

(1) agreements with ESPN. These documents were more than 10 years old, and therefore "stale." The Board allowed them to be labeled "Confidential." Documents reflecting negotiations qualified as AEO.

(2) financing and operating agreements. Although more than ten years old, these documents disclosed the shares of each of respondent's members, and therefore are appropriately designated AEO.

 (3) sponsorship opportunities. All except one of these documents were appropriately designated AEO, since they disclose respondent's marketing strategies. A single document, indicating what respondent would charge sponsors in 2008, must be re-designated as "Confidential." 

(4) daily planner entries and notes. Respondent failed to address these documents, but the Board allowed them to be designated as "Confidential," since they include third-party personal information.

(5) respondent's plans in 2017. Again, respondent failed to address these documents. Two appeared to be publicly available announcements meriting no protection under the SPO. The remaining document included email correspondence and proposed business terms and merited the "Confidential" designation.

(6) invoices. Respondent again failed to address these documents. The invoices related to charges for hosting and domain registration services and, because they contain information regarding the cost of maintaining respondent's website, they may be designated "Confidential."

The Board ordered proceedings to resume in accordance with a new scheduling order.

Read comments and post your comment here.

TTABlog comment: Why does the Board suspend proceedings except for the deadline for serving expert disclosures?

Text Copyright John L. Welch 2019.

TTABlog Test: Is THE BEAUTIFUL THINGS Confusable with COSABELLA and BELLA COSA for Retail Store Services?

The USPTO refused to register the mark THE BEAUTIFUL THINGS, in standard character form, for "operating on-line marketplaces featuring clothing and jewelry," finding a likelihood of confusion with the registered marks COSABELLA for retail apparel stores, and BELLA COSA for retail jewelry store services, both of which marks translate to "BEAUTIFUL THING." Applicant contended that the differences in appearance and sound of the marks outweigh the similarity in meaning. How do you think this came out? In re Beautiful Dreamer LLC, Serial No. 87161372 (April 8, 2019) [not precedential] (Opinion by Judge Karen Kuhlke).

The Board found the services recited in the application and cited registration to be legally identical, and it therefore presumed that they are offered through the same trade channels to the same classes of consumers.

In light of the differences in appearance and sound between applicant's mark and the cited marks, the examining attorney relied on the doctrine of foreign equivalents in maintaining that the marks are similar in connotation and that this similarity suffices to support a finding of likelihood of confusion.

Applicant did not dispute the conclusion that COSABELLA and BELLA COSA translate to BEAUTIFUL THING, and it acknowledged that its mark THE BEAUTIFUL THINGS, "may be the foreign equivalent of the registered marks.” However, Applicant contended that the differences in appearance and sound outweigh the similarity in meaning

The Board observed, however, that "such similarity as there is in connotation [between the foreign word mark and the English word mark] must be weighed against the dissimilarity in appearance, sound, and all other factors, before reaching a conclusion on likelihood of confusion as to source.” (quoting In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113 (Fed. Cir. 1983).

The Board found that "the connotation or meaning of the marks is the same, other than the fact that the marks in the registrations are in singular form and the applied-for mark is in plural form." It also found that the wording “beautiful things” is somewhat laudatory and to thus "falls more on the suggestive end of the spectrum." Thus, regardless of whether a consumer may stop and translate COSABELLA or BELLA COSA, the suggestiveness of these marks lessens the possibility that confusion is likely. [Why is that? They all suggest the same thing, and even weak marks are entitled to protection. - ed.].

The Board sided with applicant:

Overall, we find that the dissimilarities in appearance, sound, and commercial impression outweigh the similarity in connotation applying the doctrine of foreign equivalents in view of the inherent weakness of the phrase “beautiful thing[s]” in connection with retail sales of jewelry and clothing, which are things that may be beautiful, and this du Pont factor weighs against finding a likelihood of confusion. Moreover, we find this factor to be pivotal in that this factor of the dissimilarities of the marks outweighs the other factors such that confusion is not likely

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Some practitioners think it's a "beautiful thing" any time a USPTO refusal is reversed. But these doctrine of equivalent cases are troublingly inconsistent, aren't they?

Text Copyright John L. Welch 2019.

CAFC Affirms TTAB'S Rejection of Website Fabric Specimen, Not a Display Associated with the Goods

At the request of the USPTO [letter here], the CAFC has re-designated as precedential its January 14th opinion in In re Siny Corp., upholding the decision of a divided TTAB panel. The Board had affirmed a refusal to register the mark CASALANA for "knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories," on the ground that Applicant Siny Corp. failed to submit an acceptable specimen of use. Siny contended that the information provided at its website qualified as a display associated with the goods, but the panel majority disagreed. [TTABlogged here]. In re Siny Corp., 2019 BL 127099 (Fed. Cir. 2019) (Opinion by Chief Judge Prost) [precedential].

The Lanham Act provides for registration of a mark based on use of the mark in commerce. 15 U.S.C. § 1051(a). A mark is deemed in use in commerce on goods when, inter alia, “it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” Id. § 1127 (emphasis added).

Siny submitted a specimen of use consisting of a webpage printout, arguing that the specimen included a means to purchase the goods: namely, the phrase "For sales information:" followed by a phone number and email address. The examining attorney rejected that argument, maintaining that the phrase was by itself insufficient to allow consumers to make a purchase; rather, the phrase indicated only how consumers could obtain more information necessary to make a purchase. He noted the absence of necessary ordering information, such as minimum quantities, cost, payment options, and shipping information.

On appeal to the Board, Siny contended that its webpage specimen constituted a "display associated with the goods." The Board "appreciated Siny’s contention that because the goods were industrial materials for use by customers in manufacture, the ultimate sales transaction may have to involve some assistance from Siny’s sales personnel." Nonetheless it found that although some details are left to be worked out by telephone, virtually all important aspects of the transaction must be derived from information not available on the web page. Therefore, the Board found that the tweb page is not a point of sale display.

The CAFC observed that whether a specimen qualifies as a display associated with the goods is a factual question, subject to review under the "substantial evidence" standard.

The Board noted the absence of information it considered to be essential to a purchasing decision, such as a price or range of prices for the goods, the minimum quantities one may order, accepted methods of payment, or how the goods would be shipped. The Board also considered the “For sales information:” text and phone number contact. It assumed that the phone number would connect a prospective customer to sales personnel, but it found that “if virtually all important aspects of the transaction must be determined from information extraneous to the web page, then the web page is not a point of sale.” 

Siny’s main argument on this appeal was that the Board applied “overly rigid requirements” in determining that Siny's website specimen did not qualify as a display associated with the goods. Siny correctly observed that the CAFC has cautioned against bright-line rules in this context. See In re Sones, 590 F.3d at 1288–89 (holding that “a picture is not a mandatory requirement for a website-based specimen of use” and disapproving of the “rigid, bright-line rule” the PTO applied).

However, the CAFC disagreed with Siny's contention that the Board applied improperly rigid requirements. "Rather, the Board carefully considered the Webpage Specimen’s contents and determined, on the record before it, that the specimen did not cross the line from mere advertising to an acceptable display associated with the goods."

Unable to find that the Board’s decision lacked substantial evidence, the court affirmed the decision.

Read comments and post your comment here.

TTABlog comment: Although the Board's split decision may not have been improperly rigid, there are those who think more flexibility should be allowed in this Internet Age. See the dissent of Judge Angela Lykos in the Board's opinion. It seems to me that purchasers of the goods involved here are relatively sophisticated buyers who do not expect to make a purchase based merely on some information on a webpage.

Text Copyright John L. Welch 2019.

Precedential No. 7: Finding Lack of Bona Fide Intent, TTAB Sustains Opposition to MIRACLE ON 35th STREET

I am delighted to see that the TTAB has given equal time to the White Sox, after making us read through that drivel about the Cubs finally winning the World Series after a 108-year drought. The Board granted a motion for summary judgment in this opposition to registration of the mark MIRACLE ON 35th STREET for printed materials and various clothing items, ruling that Applicant William W. Yedor lacked a bona fide intent to use the mark on the identified goods at the time of filing his Section 1(b) application. A&H Sportswear Co., Inc. v. William W. Yedor, 2019 USPQ2d 111513 (TTAB 2019) [precedential].

Applicant's later filed this specimen of use
[The White Sox have for more than a century played at 35th and Shields on Chicago's South Side. Hence, the adaptation of the Christmas movie title, "Miracle on 34th Street" to refer to any rare success of the franchise.]

The evidentiary burden to establish a bona fide intent to use is not high, but more is required than “a mere subjective belief.” The objective evidence must indicate an intention that is “firm” and “demonstrable.” The absence of documentary evidence supporting an applicant’s bona fide intention to use the mark in commerce establishes a prima facie case that the applicant lacks such intention. The applicant may overcome that presumption by presenting facts that adequately explain or outweigh its failure to provide documentary evidence. See Spirits Int’l., B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1549 (TTAB 2011); Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660, 1662-64 (TTAB 2009); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1891 (TTAB 2008); Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993).

Applicant Yedor, appearing pro se,  never got to first base. He claimed that he "intends to sell T-shirts, owns the domain name whitesoxshirts.com, has one shirt design, gave friends and family a “prototype T-shirt” in 2005 [eleven years before his filing date], and plans to build a website in the event the Chicago White Sox win the World Series." [The White Sox did win the World Series in 2005 - ed.].

Yedor produced only one document during discovery, an image of the 2005 t-shirt. He identified no other products that he planned to sell and no classes of purchasers for his goods. Yedor identified no documents showing use of, or steps toward using, his mark on any products, or showing advertising, promotions, media, marketing plans, business plans or packaging materials or expenditures. He did not produce documents identifying any outlets, distributors or resellers through which he intended to offer or offers his goods. Furthermore, Yedor responded that he has no documentation of any business or marketing plan; any prospective purchasers, or any websites to display his products.

The Board observed that the lack of documentation from the time of filing is "highly probative" of Yedor's lack of a bona fide intent to use the applied-for mark at that time.

Although evidence that post-dates the filing date may be probative of an applicant's intent at the time of filing, here the only document that Yedor produced was dated eleven years before the filing date of his application. Neither the filing of the application nor Yedor's ownership of the domain name whitesoxshirts.com constitute evidence that he had a bona fide intent to use the mark as of the filing date. Yedor did not provide any evidence demonstrating that he engaged in any activities "even somewhat contemporaneous with the February 26, 2016 filing date."

Yedor asserted that he planned to launch his business once the legal issue is resolved and "once the White Sox fan base has something to cheer about – making marketing efforts worthwhile and successful.” The Board, however, observed that Yedor’s hopes are insufficient to show bona fide intent. See Lincoln Nat’l. Corp. v. Anderson, 110 USPQ2d 1271, 1277 (TTAB 2014).

The Board concluded that opposer established the absence of a genuine dispute of material fact regarding Yedor's lack of the requisite bona fide intent to use his mark at the time of filing his application; that Yedor failed to rebut this prima facie case with any evidence that bears upon his intent to use; and that opposer is entitled to judgment as a matter of law.

Read comments and post your comment here.

TTABlog comment: Oh well. At least, as a White Sox fan, Mr. Yedor is used to losing.

Text Copyright John L. Welch 2019.

TTABlog Test: Is “BLUEBERRY MUFFIN” Generic for Beer?

[This guest post was written by Kira-Khanh McCarthy, a 2L at University of Notre Dame Law School.] The USPTO refused to register BLUEBERRY MUFFIN, in standard characters, finding the term generic for “beer.” Applicant Humboldt Street Collective had conceded that the term is merely descriptive by amending its initial application to seek registration on the Supplemental Register, but Examining Attorney Natalie Kenealy nonetheless refused registration under Section 23(c). How do you think this came out? In re Humboldt Street Collective LLC, Serial No. 87152277 (March 29, 2019) [not precedential] (Opinion by Judge Peter Cataldo).

The TTAB applied its standard two-part test to determine whether BLUEBERRY MUFFIN is generic: (1) what is the genus of the goods at issue and (2) whether relevant purchasers understand that designation primarily to refer to that genus of goods.

Genus of the Goods at Issue: Both the Examining Attorney and Applicant agreed that the proper genus of the goods identified in the application is “beer.” Furthermore, Applicant’s own specimen of use (see above) indicated that BLUEBERRY MUFFIN is used as a designation of one of Applicant’s house beers.

The Relevant Purchasers: The Examining Attorney and Applicant disagreed on who are the relevant purchasers of Applicant’s goods. The Examining Attorney asserted that “the relevant public comprises ordinary consumers who purchase applicant’s goods.” Conversely, Applicant maintained that the relevant public is “craft beer drinkers.” The Board found that because the genus of Applicant’s goods is “beer,” without limitation as to type (i.e., craft brews, etc.), the relevant consumers are ordinary members of the public who are beer drinkers.

The Meaning of BLUEBERRY MUFFIN to the Relevant Purchasers: Next, the Board sought to determine how the relevant purchasers would understand the meaning of the term “blueberry muffin.” To aid in its decision, the Board considered website evidence submitted by the Examining Attorney and third-party registrations submitted by Applicant. Based on the evidence, the Board made these findings of fact:

• [B]eers are often flavored, and flavored beers are growing in popularity;
• [C]onsumers refer to Applicant’s blueberry muffin-flavored beer as “blueberry muffin;”
• [C]onsumers also refer to blueberry muffin-flavored beer produced by third parties, inter alia, as “blueberry muffin;”
• [T]hird parties create and market blueberry muffin-flavored beverages other than beer, including smoothies, coffee, wine, liquor and mixed drinks, and refer to them as “blueberry muffin.”

When an applied-for term “directly names the most important or central aspect or purpose of [an] applicant’s goods” and would be understood by the relevant consumers as referring to a category of those goods, the term is generic. See In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (finding ATTIC generic for automatic sprinklers for fire protection). Here, the record shows that flavor, including flavors resulting in beer tasting like another food or beverage, is an important and central aspect for beer, and blueberry muffin refers to a specific flavor of beer for Applicant and several third parties. See A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3rd Cir. 1986) (CHOLCOATE FUDGE [sic] generic for diet sodas with chocolate fudge flavor).

As a result, the Board found that consumers would understand Applicant’s proposed mark to refer to a subset of blueberry muffin flavored beers. BLUEBERRY MUFFIN was therefore found to be generic and incapable of distinguishing Applicant’s goods. And so, the Board affirmed the refusal to register Applicant’s mark on the Supplemental Register, allowing competitors to freely use the term to refer to their own goods and services.

Read comments and post your comment here.

TTABlog comment: Would Chocolate Chip Blueberry Muffin be a sub-sub-genus?

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

TTABlog Test: Is FUR FREE FUR Merely Descriptive of Bags and Clothing?

[This guest post was written by Amanda B. Slade, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. The USPTO issued a Section 2(e)(1) mere descriptiveness refusal of FUR FREE FUR, in standard character form, for goods including handbags, tote bags, suitcases, and pet accessories in Class 18 and clothing items such as suits, jackets, parkas, dresses, ear muffs, shawls, scarves, mittens, and gloves in Class 25. The Applicant is the world-famous fashion designer and animal rights activist, Stella McCartney, daughter of the Beatles member Paul McCartney. On this appeal, a divided panel of the Board rendered a 2-1 decision. How do you think it came out? In re Stella McCartney Ltd., Serial No. 87410072 (Mar. 29, 2019) [not precedential] (Opinion by Judge Thomas Shaw; dissenting opinion by Judge Linda A. Kuczma).

Applicant contended that “its mark is more than the sum of its parts because it ‘is comprised of terms that, when taken together, present an incongruous and circular meaning that is nearly self-negating.’” Conversely, Examining Attorney Douglas M. Lee argued that because “the sum of the parts of Applicant’s mark are merely descriptive,” the mark as a whole was merely descriptive as applied to Applicant’s primarily handbag and clothing line. He stated:

Here, both the individual components and the composite result are descriptive of Applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. . . . Applicant has taken the established term of art “fur free” and merely added the highly descriptive if not generic term “fur” which is defined as both animal fur and material made in imitation of animal fur.

The Board majority rejected this rationale, writing that the Examining Attorney incorrectly analyzed the mark as though the Applicant had sought registration for ANIMAL FUR FREE FAUX FUR. Judge Shaw continued, “The problem with the Examining Attorney’s argument is that it ignores the fact that, in Applicant’s mark, the two instances of the term FUR have different meanings, which is likely to give consumers pause.” He concluded that the first use of FUR is in conjunction with FREE, creating a combined phrase which implies that the designer’s products are “animal fur free.” “In the second instance, FUR alone, the term ‘fur’ refers to imitation fur . . . . The two different meanings of the term ‘fur’ within Applicant’s single mark creates a logical paradox. By way of analogy, Applicant’s mark is the ‘Schrödinger’s cat’ of trademarks: it suggests that the goods are both fur-free and made of fur at the same time.”

[Judge Shaw explained that “Schrödinger’s cat is a well-known quantum mechanics thought experiment devised by Austrian physicist Erwin Schrödinger in 1935 in which a hypothetical cat in a box may be simultaneously both alive and dead. Inasmuch as it was only a thought experiment, no actual cats were harmed.” See https://www.encyclopedia.com/science-and-technology/physics/science-general/schrodingers-cat.]

Accordingly, the Board majority found that the mark was suggestive, for when a consumer encounters the mark, the incongruous phrase “requires some imagination, thought, or perception to reach a conclusion as to the nature of the goods.” StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014). The Board agreed with the Applicant that FUR FREE FUR’s “internal inconsistency forces consumers to exercise a higher level of thinking to perceive its meaning, which is not immediately clear or obvious, let alone merely descriptive.” As a result, the majority sided with McCartney, finding that the mark was suggestive rather than descriptive and reversing the refusal to register.

Judge Linda A. Kuczma wrote a convincing dissent. Because the mark uses "fur free" in place of "faux" to let consumers know that the Applicant’s goods do not contain animal fur, she found that “[b]oth the individual components of Applicant’s mark, as well as the composite mark, describe Applicant’s goods.” Therefore, she concluded that the mark was merely descriptive, for "no imagination, thought or perception is needed to arrive at the characteristics of Applicant’s goods."

Read comments and post your comment here.

TTABlog comment: Well, which side are you on? Affirm or reverse?

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

"Advanced Practice Tips from the TTAB" by Judges Susan Hightower and Christen English

At Tuesday's "Trademark Office Comes to California" session, Judge Susan Hightower provided the attendees with the latest edition of "Advanced Practice Tips from the TTAB," authored by Judge Hightower and newly-appointed Judge and former Interlocutory Attorney, Christen English. I thank Judge Hightower and Chief Judge Rogers for permission to provide my dear readers with a downloadable copy (here).

Read comments and post your comment here.

Text Copyright John L. Welch 2019.

Precedential No. 6: TTAB Finds ALGAE WAFERS Generic for .... Guess What?

Adding to a growing list of genericness rulings, the Board affirmed a refusal to register ALGAE WAFERS for "fish food," finding it to be generic for the goods. The Board also affirmed an alternative refusal under Section 2(e)(1), deeming Applicant Hikari's proof of acquired distinctiveness under Section 2(f) to be inadequate in view of the highly descriptive nature of the term. In re Hikari Sales USA, Inc., 2019 USPQ2d 111514 (TTAB 2019) [precedential] (Opinion by Judge Cheryl S. Goodman).

Genericness: The test for determining whether a proposed mark is generic is its primary significance to the relevant public. Magic Wand Inc. v. RDB Inc., 19 USPQ2d 1551, 1553-54 (Fed. Cir. 1991); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 228 USPQ 528, 530 (Fed. Cir. 1986)).

As usual, there was no dispute here as to the genus of goods, which the Board found to be congruent with applicant’s identification, i.e., “fish food.” See Magic Wand, 19 USPQ2d at 1552 (“[A] proper genericness inquiry focuses on the description of [goods or] services set forth in the [application or] certificate of registration.”). The relevant public comprises consumers who use or purchase fish food, i.e., plant or animal material for consumption by fish kept in aquariums or ponds.

The record evidence bearing on the public’s understanding of “Algae Wafers” included dictionary definitions of the constituent terms; Applicant Hikari's specimen of use (shown above) depicting the goods in wafer or disk form (see lower left corner), stating "“Ideal for Algae Eaters,” and indicating that the goods include spirulina (a microalgae) as an ingredient; applicant's brochure referring to the goods as a "sinking wafer;" examples of use of the term by competitors; third-party Internet evidence referring to fish food for algae-eating fish; use of the term in books and news stories; Google search results; applicant's policing efforts; applicant's survey results; and testimony from Hikari's linguistic expert.

Hikari pointed to its filing of four infringement suits against competitors, two of whom no longer use "algae disks" with their products. The Board gave this evidence no weight, since the competitors may have agreed to discontinue use of the term in order to avoid litigation rather than because they considered the term distinctive.

Turning to Hikari's survey evidence, the Board pointed out that, like various circuit courts of appeals, it has found that as to genericness, consumer surveys "are only appropriate to consider in a case where the question is whether a coined or arbitrary mark has become generic, and is not appropriate to prove recognition of an otherwise not inherently distinctive mark.” Frito-Lay, 124 USPQ2d at 1196 (citing Hunt Masters, Inc. v. Landry’s Seafood Restaurant, Inc., 240 F.3d 251, 57 USPQ2d 1884, 1886 (4th Cir. 2001)

The Board observed, however, that even if it considered the survey evidence, it was entitled to little weight due to numerous flaws in the survey and Hikari's interpretation thereof. Hikari claimed a recognition rate of more than 50% in arguing that ALGAE WAFERS is not generic and has secondary meaning. The Board noted, on the other hand, that more than 47% of the 1001 respondents that identified “Algae Wafers” with multiple sources, named someone other than Hikari.

Moreover, the survey was flawed because it did not utilize a control group and no pre-testing was performed, and therefore the Board could not be sure that survey participants actually understood what they were being asked.

The survey asked consumers whether they “associated” the term “Algae Wafers” with one or more companies. But the survey does not adequately reveal the nature of the association a consumer perceives between “Algae Wafers” and Applicant Hikari and the other companies identified, as there were no follow-up questions inquiring as to the  reason for identifying Hikari, or another company that would establish what the respondent understood.

Moreover, the survey did not explore the proper universe. Although the goods were broadly identified as “fish food,” the survey respondents were limited to purchasers of fish food for tropical fish in households where tropical fish are owned and did not include those who purchase fish food for fish other than tropical fish. See Omaha Steaks Int’l, Inc. v. Greater Omaha, 128 USPQ2d 1686, 1692 (Fed. Cir. 2018) (where identification of goods broadly identified goods as meat and beef, survey universe too narrow because it eliminated from survey meat eaters who buy their meat from sources other than plaintiff). Also, the survey may have been skewed towards Hikari by excluding respondents who had not seen the term “Algae Wafers” on any food products for tropical fish but owned or cared for tropical fish and purchased food.

Turning to the analysis of the term ALGAE WAFERS by Hikari's linguistic expert, the Board found that evidence to be useless:

We do not know the sources he used to support his conclusions regarding the meaning of “wafer.” But in his analysis of the term “algae,” Dr. Habick focuses on the ingredient in a wafer that is for human consumption, rather than considering algae as an ingredient in connection with fish food, the relevant goods. Dr. Habick did not explain why he did not consider in his analysis other definitions or meanings for “wafer,” including those referencing a disc shape. Dr. Habick also did not consider Applicant’s own advertising and promotional materials which describe the goods as having a disc shape, containing algae, and for algae eaters; nor did Dr. Habick consider any third party use. Moreover, there is no evidence suggesting that Dr. Habick is a trademark expert, and his opinion as to whether “Algae Wafers” is suggestive, descriptive or generic is not entitled to any weight.

Finding that ALGAE WAFERS "has a plain and readily understood meaning as a type of fish food in wafer form containing algae," the Board deemed the term generic and ineligible for trademark registration.

Acquired Distinctiveness: For completeness, the Board considered Hikari's claim of acquired distinctiveness. Not surprisingly in light of the record evidence and its finding of genericness, the Board found ALGAE WAFERS to be highly descriptive of fish food, and thus that Hikari had a correspondingly higher burden of proof under Section 2(f).

Applying the CAFC's Converse factors, the Board observed again that Hikari's survey carried little probative weight due to its several deficiencies, and that the conclusion of its linguistics expert that “Algae Wafers” has acquired distinctiveness was likewise of little probative value.

Hikari has used the term ALGAE WAFERS since 1991, and spent about $95,000 per year on print and Internet advertising, but the record lacked "sufficient information as to whether the amounts stated are significant in the industry." Moreover, its advertisements also featured other Hikari products sold under other brand names, "thus diluting how much of the advertising spending should be counted toward building consumer awareness of 'Algae Wafers.'" Hikari's trade show expenditures averaged about $80,000 per year, but it was unclear  how much of the advertising and trade show expenses were related to products sold under the “Algae Wafers” designation. There was no information of record as to the circulation of the magazines in which Hikari advertised, and no information as to the number of visitors at its trade show booths. Consequently, there was nothing to indicate "the extent of consumer exposure and any resulting impact on consumer perception."

The Board concluded that, "[g]iven that the designation is highly descriptive, much more persuasive evidence than Applicant has submitted would be necessary to show that “Algae Wafers” has become distinctive as a source indicator for Applicant’s fish food."

And so the Board affirmed the alternative refusal to register on the ground of mere descriptiveness and lack of acquired distinctiveness.

Read comments and post your comment here.

TTABlog comment: A tour-de-force of an opinion.

Text Copyright John L. Welch 2019.