TTAB Posts June 2019 Hearing Schedule

The Trademark Trial and Appeal Board (TTAB) has scheduled nine (9) oral hearings for the month of June 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.


June 4, 2019 - 1 PM: In re Christine Schiefer, Serial No. 87737157 [Refusal to register the mark shown immediately below, for "On-line retail store featuring apparel, glassware, stoneware and accessory items for the consumption of alcoholic beverages," on the ground that applicant's specimens of use fail to show the applied-for mark used as a service mark for the recited services].

June 4, 2019 - 2 PM: In re The Artsmiths, LLC, Serial No. 87151770 [Refusal to register the mark shown immediately below on the ground that it fails to function as a service mark for "Retail store services featuring handmade artisan products in the nature of original artwork in a wide variety of mediums; online retail store services featuring handmade artisan products in the nature of artwork in a wide variety of mediums"].

June 5, 2019 - 11 AM: Abercrombie & Fitch Trading Co. v. Isabella Elisabeth Shnittger, Opposition No. 91218738 [Opposition to registration of the mark shown below left, for "Caps; Hats; Hooded sweatshirts; Jackets; Long-sleeved shirts; Socks; Sweatshirts; T-shirts; Underwear," on the grounds of likely confusion with and likely dilution of the two registered marks shown below right, for various clothing items].

June 5, 2019 - 1 PM: In re Telecom (China) Ltd., Serial No. 87440925 [Section 2(d) refusal of the mark DIRTY LAUNDRY for "Hooded sweatshirts; Jackets; Jeans; Pants; Shirts; Shorts; T-shirts," in view of the identical mark registered for "footwear" and for "luggage" by two different owners].

June 12, 2019 - 1 PM: In re Lisa Brewer Buffaloe, Serial No. 87880862 [Refusal to register the mark JOHN 15:11 PUBLICATIONS on the grounds that the mark fails to function as a trademark for, and is deceptively misdescriptive of, "Downloadable e-books, audio books, multimedia files, and electronic publications in the field of literary works featuring inspirational and religious fiction and non-fiction, all of the foregoing not featuring the bible verse John 15:11" and "Printed books in the field of literary works featuring inspirational and religious fiction and non-fiction, all of the foregoing not featuring the bible verse John 15:11"].

June 13, 2019 - 11 AM: In re Recreational Equipment, Inc., Serial No. 87186780 [Section 2(e)(1) mere descriptiveness refusal of CO-OP for "Bicycles, bicycle seats, bicycle wheels, bicycle tires, bicycle handlebars, bicycle forks, bicycle handle bar stems"].

June 13, 2019 - 2 PM: Samsung Electronics Co., Ltd. v. P.C. Richard & Son Long Island Corp., Opposition No. 91222405 [Section 2(d) opposition to registration of SAMSUNG WIZ for "Smartphones; Tablet computer" in view of the registered marks THE WIZ and NOBODY BEATS THE WIZ for retail services for, inter alia, computers and electronics and electronic accessories and appliances, computer hardware and audio and visual equipment].

June 25, 2019 - 1 PM: Canal Holdings LLC v. Canal Capital Inc., Cancellation No. 92062198 [Petition for cancellation of a registration for the mark CANAL CAPITAL for financial and business advisory services, on the ground of likelihood of confusion with the registered mark CANAL HOLDINGS for investment services].

June 27, 2019 - 1 PM: International Dairy Foods Association v. Interprofession du Gruyère, and Syndicat Interprofessionnel du Gruyère, Opposition No. 91232427 [Opposition to registration of the certification mark GRUYERE for "cheese" that originates in the Gruyère region of Switzerland and France, on the grounds that applicant has not controlled the use of the term "gruyere" and further that the term is generic for a style of cheese].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2019.

TTABlog Test: Is EL PATRÓN Confusable with BOSS for Perfume?

The USPTO refused to register the mark EL PATRÓN for "perfumes and colognes," finding a likelihood of confusion with the registered mark BOSS for "perfumery for personal use, namely, perfumes, eau de parfum." Applicant Talyoni argued that it is unlikely that consumers would "stop and translate" its mark because the mark does not convey "anything informational associated with fragrances." How do you think this came out? In re Talyoni, LLC, Serial No. 87695323 (May 28, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).

Translation Requirement: Examining Attorney Jennifer D. Richardson issued a refusal based on Talyoni's failure to provide an acceptable translation of the mark. See Rule. 2.32(a)(9). Only a translation that is the "clear and exact equivalent" will be accepted for printing on a certificate of registration. See TMEP Section 809.03.

Talyoni provided the following language: "The English translation of EL PATRÓN in the mark depends upon the context in which it is used: 'THE OWNER' when referring to a business; 'LANDLORD' when referring to a farming estate; 'PATTERN' when used as a measurement unit; and 'MASTER, CAPTAIN, GOVERNOR, EMPLOYER, MODEL, BOSS' in certain contexts."

The Board agreed with the Examining Attorney: "The above translation submitted by Applicant ... seeks to impose contextual limitations and conditions upon the various definitions suggested, and thus is unnecessarily verbose and vague." Moreover, the proposed wording is inconsistent with most dictionary definitions, Talyoni's own prior registration (in which it translated EL PATRÓN as "THE BOSS") and website advertisements, and third-party registrations, which suggest that the mark means "the boss," "the owner," "the employer" and "the landlord."

The Board therefore affirmed this refusal.

Likelihood of Confusion:  Since the involved goods are in part identical, the Board must presume that these goods travel in the same channels of trade to the same classes of consumers. Of course, when marks appear on identical goods, a lesser degree of similarity is necessary to support a finding of likely confusion.


The Examining Attorney contended that EL PATRÓN in Spanish means "the boss," as well as "the owner" and "the landlord." Applicant Talyoni argued that the doctrine equivalents should not be applied because "it is unlikely, given the nature of the products and mark, that the ordinary American purchaser would 'stop and translate [the word] into its English equivalent." Talyoni asserted that neither "el patron" nor "the boss" conveys any information about fragrances, and so a person fluent in Spanish "would recognize EL PATRÓN, without translation, as an arbitrary identification on a product."

The Board, however, found no authority for the proposition that application of the doctrine of equivalents is limited to foreign words that are descriptive or suggestive of the goods. Nor did the Board find legal support for Talyoni's assertion that, because EL PATRÓN has several possible meanings, the term will not be translated by persons fluent in Spanish.

In this case, the evidence clearly establishes that EL PATRÓN is a Spanish term that translates to “the boss,” “the owner” or “the landlord.” Applicant has translated EL PATRÓN as “the boss” in at least one prior registration and emphasizes that meaning in website advertisements. Applicant’s own actions thus appear to associate its EL PATRÓN mark with “the boss” as opposed to other potential definitions of the term. *** We find as a result that Spanish-speaking consumers will translate EL PATRÓN in accordance with the definitions of record and are particularly likely to translate the mark to “the boss.”

As to appearance and sound, the Board found the marks dissimilar. Talyoni asserted that the cited mark BOSS connotes Hugo Ferdinand Boss, registrant's founder, but of course the Board pointed out that it must make its determination based upon the mark as it appears in the cited registration, and there was insufficient evidence to allow a conclusion that consumers would associate the mark BOSS with Herr Boss.

The Board therefore found that the first du Pont "somewhat favors a finding of likelihood of confusion."

There were no limitations in the application or cited registration as to the price of the goods, and so the Board must assume that the applicable standard of care is that of the least sophisticated purchaser. Therefore, the Board found this factor to be neutral or slightly favoring affirmance of the refusal. 

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: I suspect the translation in applicant's prior registration was a killer in the Board's consideration.

Text Copyright John L. Welch 2019.

TTABlog Collection of Section 2(b) "Flag or Other Insignia" Cases

Here is a short but sweet collection of Section 2(b) cases from the TTABlog. Section 2(b) prohibits an "applicant" from registering a mark that "consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof." A mark barred under Section 2(b) is ineligible for registration via Section 2(f).


The "Prince of Wales decision" was vacated by the Board after the CAFC had remanded the case to the Board for consideration of new evidence. The Examining Attorney subsequently withdrew the Section 2(b) refusal. In the District of Columbia and City of Houston cases, the two entities were denied registration of their own official seals.


Section 2(b) Refusal Affirmed:

TTAB Vacates Prince of Wales Section 2(b) Decision and Remands Application to the Examining Attorney

Precedential No. 7: TTAB Affirms Section 2(b) Refusal of Mark Simulating the Prince of Wales Emblem

Precedential No. 3 = TTAB Test: Does this Mark Include a Simulation of the Swiss Flag? [Yes]

CAFC Affirms TTAB: DC and Houston Seals Properly Refused Registration Under Section 2(b)

Precedential Nos. 1 and 2: TTAB Rules that Section 2(b) Bars Registration of a Government Entity's Own Official Insignia

 


Section 2(b) Refusal Reversed:

Precedential No. 27: U.S. CUSTOMS Logo Barred by Sections 2(a) and 2(b)

.
TTAB Reverses 2(b) Refusal of Mark Containing Portion of Canadian Flag



Read comments and post your comment here.

Text Copyright John L. Welch 2019.

On Reconsideration, TTAB Says Settlement Agreement Calling for Abandonment of Opposed Application Is not Consent to Dismissal Without Prejudice

In a rare granting of a motion for reconsideration, the Board vacated its order of December 28, 2018, that had dismissed this opposition without prejudice, and instead entered judgment against Applicant Debbie Macomber, Inc. Applicant had successfully moved to dismiss the proceeding without prejudice based on opposer's purported consent, but the Board found that opposer's signing a settlement agreement with a provision for abandonment of the application was not equivalent to written consent to abandonment for the purpose of avoiding entry of judgment. Kathy Michael d/b/a Cedar Cove Inn v. Debbie Macomber, Inc., Opposition No. 91239859 (May 24, 2019) [not precedential].

[click on photo for larger picture]
Trademark Rule 2.135 provides that "[a]fter the commencement of an opposition, concurrent use, or interference proceeding, if the applicant files a written abandonment of the application or of the mark without the written consent of every adverse party to the proceeding, judgment shall be entered against the applicant."

The settlement agreement provided for continued use by each party with no opposition or challenge to each other's trademark rights. Applicant agreed to expressly withdraw its pending application and to not oppose or challenge Opposer’s application or registration for the mark CEDAR COVE for use with bed and breakfast inn services. With regard to withdrawal of the opposed application, the agreement specifies: "Express Withdrawal of Application. [Applicant] shall, by December 14, 2018, expressly withdraw pending U.S. Trademark Application No. 87586893."

The Board had accepted applicant's assertion that the settlement agreement must be construed as written consent to the withdrawal of the application. Opposer, however, argued that its "negotiated expectation" of the parties’ settlement was that "Applicant’s withdrawal of its application would result in a judgment against Applicant, acting as res judicata against any future effort by Applicant or its successor to pursue registration of the mark."
 
On reconsideration, the Board sided with opposer. It saw no consent to dismissal of the opposition rather than entry of judgment.

Applicant is unpersuasive in its argument that signing the settlement agreement with a provision for abandonment of the application is equivalent to written consent to abandonment of the application for the purpose of avoiding entry of judgment. If this was the case, a settlement agreement could never provide for entry of judgment based on abandonment of the application, because execution of the agreement would operate to require dismissal in every instance.

Because the agreement stated only that Applicant would expressly abandon its application, and because Opposer’s written consent was not of record for that abandonment, the Board found that Trademark Rule 2.135 required entry of judgment against Applicant.

Read comments and post your comment here.

TTABlog comment: So get it in writing, right? If you can.

Text Copyright John L. Welch 2019.

Updated TTABlog Collection of Section 2(a) Deceptiveness Cases

Here is an updated collection of Section 2(a) deceptiveness cases from the TTABlog. Of course, most of these decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.


The Board applies a three-part test for determining whether a mark is deceptive under Section 2(a): (1) is the term misdescriptive of the character, quality, function, composition or use of the goods? (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods? (3) If so, is the misdescription likely to affect a significant portion of the relevant consumers' decision to purchase? In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) [precedential], citing In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988).

Deceptive trademarks (unlike deceptively misdescriptive marks under Section 2(e)(1)) are not eligible for registration via Section 2(f) acquired distinctiveness.

A mark is deceptively misdescriptive if it satisfies the first two prongs of the test set forth above. Deceptively misdescriptive marks may be registered on the Principal Register via Section 2(f), or on the Supplemental Register.

Marks that are primarily geographically deceptively misdescriptive are treated under Section 2(e)(3) and are not eligible for registration via Section 2(f), unless the mark acquired distinctiveness before December 8, 1993, the effective date of the North American Free Trade Agreement Act (NAFTA). The TTABlog collection of 2(e)(3) cases may be found here.

These distinctions are explained and explored in Anne Gilson LaLonde's article, "You Are Not Going to Believe This! Deception, Misdescription and Materiality in Trademark Law," 102 Trademark Reporter 883 (May-June 2012) [TTABlogged here].


Marks found deceptive:

• TTAB Finds "NU DOWN" Deceptive for Pillows and Bedding Not Containing Natural Down
• TTAB Affirms Section 2(a) Deceptiveness Refusal of P6 CHROME for Nutritional Supplements
• TTAB Finds PLAZMA and PLAZMA REACTIVE PUMP Deceptive and Deceptively Misdescriptive for Supplements
• Precedential No. 8: TTAB Finds KLEER ADHESIVES Deceptive, But Not KLEER MOULDINGS and KLEER TRIMBOARD
• TTAB Finds Stylized "É" Deceptive or Deceptively Misdescriptive for Supplements
• TTAB Affirms 2(a) Deceptiveness Refusal of WONDER DOWN for Down Alternative Bedding
• TTAB Deems COPPER-TEN Deceptive for Steel Painted to Simulate Copper
• EMDROPS for Liquid Supplements
• ZAFRAN Deceptive and Deceptively Misdescriptive for Sauces and Salsas, Says TTAB
• Test Your TTAB Judge-Ability: Is BLAZING SILKS Deceptive for Non-Silk Clothing?
• Precedential No. 29: TTAB Affirms Five (5) Refusals of "AOP" for Wine
• TTAB Affirms 2(a) Deceptiveness Refusal of IRON-TEK CLEAN PERFORMANCE for Nutritional Supplements
• TTAB Affirms 2(a) and 2(e)(1) Refusals of GREEN SEAL for Non-Environmentally-Friendly Adhesive Tape
• Precedential No. 9: TTAB Affirms 2(a) Deceptiveness Refusal of WHITE JASMINE for Tea
• TTAB Affirms Deceptiveness Refusal of "VALENCIA" for Rice
• Precedential No. 25: TTAB Finds "α CU" (Alpha CU) Deceptive for Copper-less Dietary Supplements 
• Finding "ORGANIC ASPIRIN" Deceptively Misdescriptive of and Deceptive for Dietary Supplements, TTAB Sustains Bayer Opposition 
• TTAB Chops Down Evasive "SILVER BIRCH" Applicant with Three Well-Aimed Strokes
• TTAB Affirms Section 2(e)(1) and 2(a) Refusals of "NEUROBOTICS" for Augmented Surgical Goods and Services
• TTAB Agrees that "BIOSILK" is Deceptive for Clothing
• TTAB Affirms 2(a) Deceptiveness Refusal of "MINK BIKINI" for Minkless Clothing
• Finding "MINK" Deceptive and Deceptively Misdescriptive for Clothing, TTAB Affirms 2(a) and 2(e)(1) Refusals
• TTAB Affirms Refusal of "ECODOWN" for Pillows Under 2(a), 2(d), and 2(e)(1) 
• TTAB Affirms Three Deceptiveness Refusals of "SWISSGOLD" for Watches and Parts
• TTAB Citable No. 20: Divided Panel Affirms 2(a) Deceptiveness Refusal of "CAFETERIA" for Non-Cafeterias

Marks found not deceptive:

• TTABlog Test: Is "NEW SILK ROAD" Deceptive for Clothing Not Made of Silk?
• Precedential No. 8: TTAB Finds KLEER ADHESIVES Deceptive, But Not KLEER MOULDINGS and KLEER TRIMBOARD
• TTAB Test: Is "DIAMONDESS" Deceptive for Simulated Diamonds? [No]
• Test Your TTAB Judge-Ability: Is “L.A.M.B.” Deceptive for Clothing? [No]
• TTAB Reverses 2(a) Deceptiveness Refusal of "BODY MINT & Design" for Dietary Supplements
• "ILEX" Not Deceptive or Deceptively Misdescriptive for Medicated Skin Paste, Says TTAB 
• TTAB Finds AMERICAN HERITAGE Neither Merely Descriptive of, Nor Deceptive for, Wines

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Updated TTABlog Collection of Section 2(e)(2) "Primarily Geographically Descriptive" Cases

Here's an updated, lengthy list of Section 2(e)(2) geographical descriptiveness cases. These are much more common than Section 2(e)(3) refusals, perhaps because the former is more easily established since it is not necessary to prove the materiality of the misrepresentation. The great majority of the decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.


For a mark to be deemed primarily geographically descriptive under Section 2(e)(2), it must be shown that (1) the mark's primary significance is a generally known geographic location; (2) the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark; and (3) the goods do originate in that place. When the goods do come from the location named, then a goods/place association may be presumed.

Marks found to be primarily geographically descriptive under Section 2(e)(2):

• AMERICAN VETERINARY NURSES ASSOCIATION Geographically Descriptive of Veterinary Services, Says TTAB
• TTAB Sustains Opposition to SCOTTSDALE TAXI: Geographically Descriptive and Lacks Acquired Distinctiveness
• TTAB Affirms Geographical Descriptiveness Refusal of LEIPER'S FORK DISTILLERY for Clothing
• TTAB Affirms Section 2(e)(2) Refusal of LAUGHLIN RANCH: Geographically Descriptive of Golf Courses and Spas
• TTAB Test: Is DEEP SOUTH Geographically Descriptive of Movie Studio Services? [Yes]
• TTAB Test: Is MERSIN (Turkey) Primarily Merely Geographically Descriptive of Cheese? [Yes]
• WYHA?: "STRETCH LA" Geographically Descriptive of Therapeutic Stretching Services, Says TTAB
• TTAB Finds CAROLINA'S SUMMER HUMMER Geographically Descriptive of Alcoholic Beverages
• TTAB Denies Request for Reconsideration of REDNECK RIVIERA Decision
• TTAB Test: Is REDNECK RIVIERA Geographically Descriptive of Entertainment Services? [Yes]
• Precedential No. 22: TTAB Affirms Geographical Descriptiveness Refusal of HOLLYWOOD LAWYERS ONLINE for Online Referral Services
• TTAB Sustains Opposition to LAGUNA CANDLES: Geographically Descriptive of Candles
• Test Your TTAB Judge-Ability: Is ACHOUFFE Primarily Geographically Descriptive of Beer? [Yes]
• TTAB Affirms Geographical Descriptiveness Refusal of NEWBRIDGE HOME for Household Goods
• TTAB Affirms Section 2(e)(2) Geographical Descriptiveness Refusal of PITTSBURGH GLASS WORKS for Glass
• TTAB Affirms 2(e)(2) Refusal of "THE MUNICH & Design" for Business Services Without a Disclaimer of MUNICH
• TTAB Finds FIRE ISLAND Primarily Geographically Descriptive of Beer
• NORTH AMERICAN RANGE Primarily Geographically Descriptive of Beef, Says TTAB
• TTAB Affirms 2(e)(2) Refusal of EAST COAST for Vehicle Towing Services
• WYHA? TTAB Finds CALIFORNIA GREEN CLEAN Primarily Geographically Descriptive of Janitorial Services
• TTAB Finds "ROC USA" to be Primarily Geographically Descriptive but Registrable Under Section 2(f)
• TTAB Affirms 2(e)(2) Geographical Descriptiveness Refusal of "US PATIENT REGISTRY" for Medical Information Database
• TTAB Sustains Nike's Section 2(e)(2) Opposition to "B-MORE" for Clothing
• "CHÊNE DES DOMAINES DE FRANCE" Geographically Descriptive of Wood from France, Knot Registrable, Says TTAB 
• Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese
• "AMERICAN MASALA" Geographically Descriptive of Food Products, Says TTAB
•  Precedential No. 66: TTAB Finds "YOSEMITE BEER" Geographically Descriptive, Affirms 2(e)(2) Refusal
• TTAB Affirms 2(e)(2) Refusal of "CONFERENCE AMERICA" as Geographically Descriptive
• TTAB Squashes "NEW YORK CURRANTS," Finding It Primarily Geographically Descriptive
• Citable No. 33: TTAB Affirms 2(e)(2) Refusal of "BAIKALSKAYA" as Geographically Descriptive of Vodka
• TTAB Okays "SWISSAIRE" Drawing But Affirms 2(e)(2) Refusal

Marks found not to be primarily geographically descriptive under Section 2(e)(2):

• Precedential No. 3: TTAB Reverses Section 2(e)(2) Geographical Descriptiveness Refusal of BA BEEF for Beef
• TTAB Reverses Disclaimer Requirement: ANAHEIM Not Geographically Descriptive of Clothing
• Twin TTAB Test: Is ALLEN HOTEL Confusable With ETHAN ALLEN for Lodging Services? Is it Geographically Descriptive? [Yes]
• TTAB Test: Is EAST END Geographically Descriptive of a Houston Applicant's Alcoholic Beverages? [No]
• TTAB Affirms Rejection of New Drawing, Reverses Geographical Refusal of OAK PARK Design Mark for Beer
• "BJNI" Not Geographically Descriptive of Mineral Waters, Says TTAB
• TTAB Reverses Geographical Descriptiveness Refusal of "CASS PARK VILLAGE"
• SUGARLANDS DISTILLING COMPANY Not Geographically Descriptive of Moonshine, But Confusable with SUGARLAND CELLARS for Wine
• CAFC Reverses TTAB: NEWBRIDGE HOME Not Geographically Descriptive of Cutlery
• Test Your TTAB Judge-Ability: Is BOATS DIRECT USA Geographically Descriptive of Boat Dealerships? [No]
• Test Your TTAB Judge-Ability: Is ASHBURN Geographically Descriptive of Blankets?
• TTAB Reverses 2(e)(2) Refusal: KAPALUA Not Geographically Descriptive of Retail Store Services
• Test Your TTAB Judge-Ability: Is TINSELTOWN Geographically Descriptive of Clothing from Hollywood? [No]
• Test Your TTAB Judge-Ability: Is "MDF IT & Design" Primarily Geographically Descriptive of Furniture? [No]
• "METRO LIVING & Design" Not Descriptive of Real Estate Brokerage Services, Says TTAB
• Reversing a 2(e)(2) Geographical Descriptiveness Refusal, TTAB Asks, Where The Heck Is WINDHOEK?
• Test Your TTAB Judge-Ability: Is This "HOT SPRINGS NATIONAL PARK ARKANSAS" Logo Primarily Geographically Descriptive? [No]
• TTAB Reverses Section 2(e)(2) Refusal of "CATALINA ISLAND GRANOLA": Goods/Place Association Lacking
• Finding "BELL HILL" for Wine and "BELL'S" for Beer Too Dissimilar, TTAB Dismisses 2(d) Opposition 
• Finding Double Entendre, TTAB Reverses 2(e)(2) Refusal of "PROFUMO DE FIRENZE" for Perfume
• Precedential No. 14: TTAB Finds "THE MONTECITO DIET" Not Primarily Geographically Descriptive of Diet Publications
• "ROMANTIC ROAD" 2(e)(2) Cancellation Proceeding Hits Dead End: Summary Judgment to Registrant
• Citable No. 40: TTAB Finds "BALASHI" Not Primarily Geographically Descriptive of Beer

Read comments and post your comment here.

Text Copyright John L. Welch 2019.

Updated TTABlog Collection of Section 2(e)(3) "Primarily Geographically Deceptively Misdescriptive" Cases

Here is an updated collection of Section 2(e)(3) cases. Of course, most of the decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.



There are four elements that must be met to invoke the bar of Section 2(e)(3): (1) The primary significance of the mark is a generally known geographic place; (2) The goods or services do not originate in the place identified in the mark; (3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and (4) The misrepresentation would be a material factor in a substantial portion of the relevant consumer's decision to buy the goods or use the services. In re Spirits Int’l N.V., 563 F.3d 1347, 90 U.S.P.Q.2d 1489, 1490-95 (Fed. Cir. 2009); In re California Innovations, 329 F.3d 1334, 66 U.S.P.Q.2d 1853, 1858 (Fed. Cir. 2003).

Acquired distinctiveness may overcome a Section 2(e)(3) refusal, provided that the mark became distinctive prior to enactment of the NAFTA Implementation Act on December 8, 1993. See In re Boyd Gaming Corp., 57 U.S.P.Q.2d 1944, 1947 (T.T.A.B. 2000).

Marks found to be primarily geographically deceptively misdescriptive under Section 2(e)(3):

• TTAB Affirms Section 2(e)(3) Refusal of KUBA KUBA BY DREW ESTATE for Cigars
• EURO for Paint Spray Guns Made in Taiwan is Deceptive, Says TTAB
• TTAB Affirms 2(e)(3) Refusal of GRAN HABANO for Cigars
• Test Your TTAB Judge-Ability: Is VENEZIA-MILANO Geographically Deceptively Misdescriptive of Clothing? [Yes]
• TTAB Affirms Section 2(e)(3) Refusal of KUBA KUBA BY DREW ESTATE for Cigars
• Test Your TTAB Judge Ability: Is "NY" Primarily Geographically Deceptively Misdescriptive for Cosmetics Made Elsewhere?
• TTAB Sustains Section 2(e)(3) Opposition to HAVANA COLLECTION for Cigar Accessories
• CAFC Affirms TTAB: JPK PARIS 75 Geographically Deceptively Misdescriptive of Fashion Accessories
• Precedential No. 24: TTAB Affirms Refusal of REAL RUSSIAN as Primarily Geographically Deceptively Misdescriptive of Vodka
• Precedential No. 15: TTAB Affirms Section 2(e)(3) Refusal of OLD HAVANA as Primarily Geographically Deceptively Misdescriptive of Rum
• Precedential No. 7: On Remand from District Court, TTAB Sustains Section 2(e)(3) Opposition to GUANTANAMERA for Cigars
• WYHA? TTAB finds NAPA FOODS Primarily Geographically Deceptively Misdescriptive for Food
• Test Your TTAB Judge-Ability: Two 2(e)(3) Refusals for Your Perusal
• Precedential No. 3: Finding KUBA KUBA Primarily Geographically Deceptively Misdescriptive for Cigars, TTAB Affirms 2(e)(3) Refusal
• Ruling that TTAB Misapplied Section 2(e)(3) Test, District Court Reverses TTAB's "GUANTANAMERA" Decision 
• CAFC Vacates TTAB's "MOSKOVSKAYA" Vodka Ruling, Clarifies 2(e)(3) Materiality Test 
• Precedential No. 44: TTAB Sustains 2(e)(3) Opposition to "HAVANA CLUB" for Cigars Made From Cuban Seed Tobacco
• Precedential No. 12: TTAB Sustains 2(e)(3) Opposition to "GUANTANAMERA" for Non-Cuban Cigars, Folk Song Notwithstanding
• Precedential No. 6: TTAB Clarifies Doctrine of Equivalents, Affirms 2(e)(3) Refusal of "MOSKOVSKAYA" for Vodka
• Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese
• TTAB Affirms 2(e)(3) Refusal of "FRENCH & FLIRTY" as Primarily Geographically Deceptively Misdescriptive of Lingerie 
• TTAB Finds "PARIS BAGUETTE" Geographically Deceptively Misdescriptive of Bread
• Precedential No. 50: Section 2(f) Grandfather Clause Does Not Shield Geographically Deceptive Mark from Section 2(a) Refusal
• Precedential No. 8: TTAB Finds "YBOR GOLD" Primarily Geographically Deceptively Misdescriptive of Cigars
• TTAB Affirms Three Deceptiveness Refusals of "SWISSGOLD" for Watches and Parts 
• TTAB Cancels Registration of Deceptively Misdescriptive "ZHIGULY" for Beer 
• Fashion-Savvy TTAB Says "No" To "NO-L-ITA"

Marks found not to be primarily geographically deceptively misdescriptive under Section 2(e)(2):

• TTAB Reverses Section 2(e)(3) Geographical Deceptiveness Refusal of LAROMANA for Brown Sugar
• Precedential No. 24: TTAB Affirms 2(d) Refusal of MT RAINIER Logo, But Reverses on 2(e)(3)
• TTAB Reverses 2(e)(3) Geographical Deceptiveness Refusal of "AUX ETAT UNIS" for Luggage
• TTAB Finds ARCATA Not Primarily Geographically Deceptively Misdescriptive of Wine
• Test Your TTAB Judge Ability: Is "NY" Primarily Geographically Deceptively Misdescriptive for Cosmetics Made Elsewhere? [No]
• Test Your TTAB Judge-Ability: Is "SW3 UK" Geographically Deceptively Misdescriptive of Clothing? [No]
• TTAB Dismisses Section 2(e)(3) Petition for Cancellation of SWEDISH FIRESTEEL for Fire Igniters
• Test Your TTAB Judge-Ability: Two 2(e)(3) Refusals for Your Perusal
• TTAB Sustains 2(d) Opposition, finding "SWEDISH LUXURY" and "SWEDISH SLEEP SYSTEM" Confusingly Similar for Mattresses 
• "CHINATOWN BRASSERIE" Not Primarily Geographically Deceptively Misdescriptive for Restaurant Not in NYC's Chinatown, Says TTAB 
•  Citable No. 53: TTAB Deals "VEGAS" Playing Card Applicant Winning Hand in 2(a), 2(e)(2), and 2(e)(3) Opposition
• TTAB Rules On Admissibility Of Electronic Evidence In Dismissal Of "SEA ISLAND" Oppositions 
• TTAB Reverses 2(e)(3) Refusal Of "SWISSCELL" For Batteries 

Read comments and post your comment here.

Text Copyright John L. Welch 2019.

TTABlog Test: Are Clothing and Jewelry Related Under Section 2(d)?

I know. The cynics out there are saying that, in TTAB land, everything is related to clothing. Well what about this one? The USPTO refused registration of the mark OUT OF ORDER for various clothing items, finding the mark likely to cause confusion with the registered mark shown below, for various goods in class 14, including bracelets, necklaces, earrings, and watches. Applicant Manja Studio argued that the cited mark is distinguishable because it is dominated by the letters "OOO" and that the goods "are not subject to complementary use." How do you think this came out? In re Manja Studio SDN BHD, Serial No. 87647277 (May 17, 2019) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

The Marks: The Board found the marks to be "very similar in appearance, sound, connotation and commercial impression, due to the shared phrase OUT OF ORDER." To the extent the consumers see the element "OOO" as a mere design, the literal element OUT OF ORDER would dominate the mark. If the "OOO" is viewed as three letters, they will be seen "as an abbreviation, initialism or acronym for the wording OUT OF ORDER, which only reinforces the dominant nature of the phrase OUT OF ORDER in Registrant’s mark." Therefore, the Board found the term OUT OF ORDER to be the dominant portion of the cited mark.

Manja pointed to a statement made by registrant's attorney during prosecution of its underlying application, asserting that "OOO" is the dominant part of registrant's mark. The Board refused to consider this an "admission" by registrant, and in any case the statement "simply expresses a legal argument and purported intention of that applicant (now Registrant) and does not reflect how the purchasing public views the cited mark." Moreover, each application is considered by the Board on its own record.

Manja argued that, in registrant’s actual use of the cited mark, the term "out of order" ironically suggests that its goods are distressed and would not be working properly, whereas in applicant’s mark the term suggests unruliness, rebelliousness and edginess. The Board was not impressed. It disagreed that the marks would have different meanings, and "even if consumers were to discern an ironic connotation when viewing Registrant’s mark on its identified goods, we see no reason why they would not perceive Applicant’s mark on its identified clothing in the same manner, especially when fashions trend towards torn or 'distressed' clothing."

The Goods: Examining Attorney Khanh M. Le submitted a number of Internet web pages from third-party websites "demonstrating that a single entity is likely to offer for sale many of the clothing articles identified in the application, and watches, necklaces and earrings, such as those identified in the registration, under the same mark." E.g., KATE SPADE, J. CREW, LOFT, BOSS, and DIESEL. Furthermore, the Board found that the involved goods are indeed complementary: "watches, earrings and necklaces are a type of goods that consumers could purchase at the same time as the sort of clothing identified in the application, or with an earlier purchase of such goods in mind, so as to coordinate a fashionable ensemble." The Board therefore concluded that the goods are "closely related."

This same evidence confirmed that the involved goods travel in the same channels of trade and are offered to the same classes of consumers.

Manja maintained that registrant's goods are "luxury designer watches" that “are sold at prices that reflect the high quality of these goods (i.e., on average 400 USD),” and therefore consumers would exercise considerably more care when purchasing registrant's watches as compared to Manja's T-shirts, outerwear, and hats. The Board pointed out, however, that there are no limitations as to price in either the subject application or the cited registration, and so this argument was, so to speak, out of order.

Prior Registration: Finally, Manja pointed to a now-cancelled third-party registration for OUT OF ORDER for clothing, which registration co-existed for a time with the cited registration. This, according to Manja, supports its position here. The Board considered this argument under the catch-all 13th du Pont factor but found it unavailing. Again it pointed out that each case must be decided on its own record. Moreover, a cancelled registration is not entitled to any of the presumptions of Section 7(c) of the Lanham Act.

Conclusion: The Board found confusion likely and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: So what else is new?

Text Copyright John L. Welch 2019.

TTABlog Collection of Section 2(c) "Consent to Register" Cases

The recent MANIKCHAND decision is one of only seven Sections 2(c) decision discussed at the TTABlog in the last 14 and one-half years. Set out below is a complete list. Note that five of the seven are precedential.



Section 2(c), in pertinent part, bars registration of a mark that "[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his [sic] written consent ...." This provision applies not only to full names but also to shortened names and nicknames, as long as the name identifies a particular living individual.

A consent is required only if the individual bearing the name in the mark will be associated with the mark as used on the goods or services, either because: (1) the person is so well known that the public would reasonably assume a connection between the person and the goods or services; or (2) the individual is publicly connected with the business in which the mark is used.

* * * * * * * * * * * *
Precedential No. 10: TTAB Dismisses Rare Section 2(c) Opposition Due to Death of Named Individual


Precedential No. 36: TTAB Gives the Boot to Nike's Inadequate Section 2(a) and 2(c) Claims

Precedential No. 4: TTAB Affirms 2(a) and 2(c) Refusals of "PRINCESS KATE" and "ROYAL KATE" for Clothing

Precedential No. 12: TTAB Reverses Section 2(c) Refusal of FRANKNDODD for Legislative Information Services

TTAB Affirms Section 2(c) Refusal of MARTIN & WEYRICH ROSSO ALLEGRO for Wine

Presidential No. 44: In Rare Section 2(c) Ruling, TTAB Affirms Refusal of "OBAMA BAHAMA PAJAMAS"



In a Citable Section 2(c) Decision, TTAB Partially Cancels "KRAUSE PUBLICATIONS" Registration



Read comments and post your comment here.

TTABlog comment: If someone tried to register the mark TTABlog PAJAMAS, I would certainly oppose under Section 2(c).

Text Copyright John L. Welch 2019.

District Court Rules on Motion to Dismiss Counterclaim in Appeal from TTAB's "Bullet-Shaped-Antenna" Decision

ESR Performance Corp. has commenced a civil action in the U.S. District Court for the Middle District of Florida, seeking review of the Board's decision granting a petition for cancellation of ESR's registration for the product configuration mark shown below (shaped like "a bullet cartridge") for "automobile antennas." [TTABlogged here]. The Board rejected petitioner JVMAX's claim that the design is aesthetically functional because JVMAX failed to prove a competitive need for use of that shape. The Board, however, found that the applied-for mark lacked acquired distinctiveness. The district court recently ruled on Plaintiff ESR's motion to dismiss parts of defendant's counterclaim, which included a count based on aesthetic functionality and a count requesting cancellation of several pending ESR trademark applications. ESR Performance Corp. v. JVMAX, Inc., Civil Action No. 6:18-cv-1601-Orl-37GJK (M.D. Fla. May 7, 2019).

Issue Preclusion re Aesthetic Functionality? One count of JVMAX's counterclaim sought cancellation of ESR's registration based on aesthetic functionality. ESR moved to dismiss, contending that issue preclusion barred this attack because the TTAB had already found against JVMAX on aesthetic functionality. The court pointed out, however, that ESR is appealing the Board's decision and therefore the decision is under de novo review. "Only if a party fails to seek review is the TTAB decision entitled to a preclusive effect." The court therefore declined to dismiss this count.

Cancellation of Pending Trademark Applications?: The court granted the motion to dismiss with respect to JVMAX's claim for cancellation of several pending trademark applications of ESR. Section 37 of the Lanham Act gives the court power to cancel a registration, or otherwise rectify the register as to a registration. However, Section 37 does not apply to a pending application, and therefore the court concluded that it lacked subject matter jurisdiction over this count.

The court noted that some courts have exercised jurisdiction over a pending trademark application when one of the parties has a registered mark with "sufficient nexus" to the pending trademark applications. But even if the court did consider the nexus, "the relationship is insufficient here." The pending applications are for word marks, whereas the mark involved in this appeal is a product configuration mark.

Read comments and post your comment here.

TTABlog comment: Plaintiff ESR included infringement and unfair competition claims. JVMAX's counterclaim included a count for unfair competition.

Text Copyright John L. Welch 2019.

TTAB Found "FOUNDRY" Deceptively Misdescriptive of Non-Foundry Faucets

The Board affirmed a Section 2(e)(1) refusal to register the mark FOUNDRY, finding it deceptively misdescriptive of "plumbing products, namely, faucets." Applicant Delta stated that the goods are not manufactured in a foundry, nor are they cast metal, but it argued that the mark may be perceived as "fanciful" and merely a reference to the "industrial style" of applicant's faucet collection. In re Delta Faucet Co., Serial No. 87001991 (May 10, 2019) [not precedential] (Opinion by Judge Angela Lykos).

A mark is deceptively misdescriptive if (1) it misdescribes a quality, feature, function, or characteristic of the goods or services with which it is used; and (2) consumers would be likely to believe the misrepresentation. For a term to misdescribe the goods it must be "merely descriptive of a significant aspect of the goods which the identified goods could plausibly possess."

Examining Attorney Nelson B. Snyder III submitted dictionary definitions of foundry as "(1) the act, process, or work of melting and molding metals; (2) metal castings; and (3) a place where metal is cast." He also submitted a registration for faucets in which the term FOUNDRY was disclaimed, and numerous other registrations showing FOUNDRY disclaimed for other metal goods such as pipes and manhole covers. Based on this evidence, the Board concluded that "foundry" describes a significant feature of the identified goods: i.e., that they are made from metal castings and/or are produced in this type of facility.

To determine whether FOUNDRY misdescribes the goods, the Examining Attorney issued a Rule 2.61 request for information, asking whether any of the identified goods, or parts thereof, are or will be produced in a foundry. Applicant Delta said no, the goods are made with stamped components.

The Board therefore found that the first prong of the test was met. As to the second prong, whether consumers would believe the misrepresentation, the Examining Attorney pointed to evidence that competitors promote the fact that they manufacture their plumbing products, such as faucets, from metal castings and in foundries. Thus consumers are accustomed to seeing such plumbing products made from metal products and produced in a foundry. Therefore it is likely that consumers will be deceived by the misrepresentation.

As to Delta's argument that consumer will see the mark as "fanciful," the Board was skeptical, in light of the evidence, that consumers would ascribe any fanciful meanings to the applied-for mark.

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

Read comments and post your comment here.

TTABlog comment: Is the mark deceptive under Section 2(a)? That would require proof that the misdescription is material to the purchasing decision. Of course, if deceptive, the applied-for mark would be unregistrable. On the other hand, a mark that is deceptively misdescriptive is still eligible for registration via a showing of acquired distinctiveness.

Text Copyright John L. Welch 2019.

Precedential No. 11: TTAB Hammers Cancellation Respondent Over Inadequate Discovery Responses

In olden days, one could think of a TTAB inter partes proceeding as a lower cost, less complicated alternative to filing a trademark infringement action, but not any more. In this precedential order, the Board raked Respondent Arroware over the coals for failing to properly and fully respond to Petitioner HP's discovery demands. In line with the Board's open door policy on discovery, the Board tossed out many of respondent's objections to HP's interrogatories and document requests and required respondent to provide a (typically useless) attorney-client privilege log. Hewlett Packard Enterprise Development LP v. Arroware Industries, Inc., 2019 USPQ2d 158663 (TTAB 2019) [precedential].

HP sought cancellation of a registration for the mark MY APOLLO for peer-to-peer software for sharing data and files, claiming abandonment. Dissatisfied with Arroware's discovery responses, HP moved to compel.

Respondent Arroware objected to the number of interrogatories and document requests as excessive (i.e., more than 75, including subparts). However, rather than serving a general objection under Rule 2.120(d), Arroware made the mistake of serving objections and responses; it then asserted that it should not be required to supplement its responses because it "responded to a proper number." The Board, however, ruled that Arroware had waived its right to object on this numerical ground.

HP also argued that Arroware's objections were mere "boilerplate" and did not explain how HP's discovery requests were defective. The Board pointed out that an objecting party "may not rely on conclusory statements such as "overly broad, unduly burdensome, vague or ambiguous, or not proportional to the need of the case." The party must "detail with specificity the reasons for its objections." [Aren't the reasons often self-evident? - ed.]. Also, a responding party must state "clearly and affirmatively whether it has searched for and identified, but withheld, any documents responsive to any document request based on the objections it lodged in response to any of [the other party's] document requests." The Board therefore overruled Arroware's "boilerplate objections."

Arroware managed to win one battle: observing that neither FRCP 36 nor the Board's rules require a party to explain the basis for an admission or denial, the Board deemed "impermissible" HP's use of a "blanket interrogatory or document request" that seeks documents or information forming the basis of Arroware's responses to requests for admission.  However, somewhat paradoxically, the Board okayed without explanation a blanket document request calling for all documents pertaining to Arroware's interrogatory responses. [Although it is not crystal clear, it appears that an interrogatory or document request seeking the basis for a single admission or denial is allowed; i.e., only the "blanket" version is disallowed. - ed.].

Next, the Board considered Arroware's invocation of FRCP 33(d) in relying on its business records in response to some of HP's interrogatories, rather than providing narrative responses. The Board concluded that Arroware had failed to meet the applicable requirements for invoking this rule: it (1) failed to specify why providing written responses would impose a significant burden; (2) it failed to specify in sufficient detail where the answers to the interrogatories can be ascertained. The fact that HP's document requests called for the same documents was deemed irrelevant. And so the Board ordered Arroware to provide "sworn, complete, and narrative responses" to these interrogatories.

Finally, HP demanded that Arroware provide supplemental responses to its document requests that meet the "full scope of the requests." Arroware's responses stated that it would produce documents located after a reasonable search. Not good enough, said the Board. "[A] party must state whether or not it has responsive documents in its possession, custody or control and, if it does, state that the documents will be produced by a specified date or they are being withheld, based on a claim of privilege or a specified objection." If privilege is claimed, a privilege log must be provided.

The Board ordered Arroware to "fully complete its search and production" and to fully meet the scope of the document requests. Arroware is not required, however, to identify all U.S. customers for the preceding three years, as HP demanded. The Board ordered Arroware to identify two newly-registered U.S. users per year. [How is the identification of customers a proper response to a request for documents? - ed.].

The Board then set various deadlines for compliance with its order, and reset the remaining dates for discovery, briefing, and trial.

Read comments and post your comment here.

TTABlog comment: Nothing generates more expense and wastes more time than disputes over discovery. Nor is there a more effective weapon to beat the other side into submission than aggressive discovery that requires the responding party to turn itself inside out. The easy position for the Board to take is to require a party to "produce everything." As long as that's the case, TTAB practice will continue to be discovery-centric, and there is little that is more uninteresting than dealing with and arguing about discovery issues.

Text Copyright John L. Welch 2019.

TTAB Affirms Section 2(e)(5) Functionality Refusal of Milk Container Configuration

The Board affirmed a Section 2(e)(5) refusal of the container configuration shown below, for "milk," finding the design to be de jure functional. Applicant's utility patent was sufficient to establish a prima facie case of functionality that applicant failed to overcome. In re Creative Edge Design Group, Ltd., Serial No. 87287662 (May 9, 2019) (corrected on May 13, 2019 to not precedential] (Opinion by Judge Karen Kuhlke).

The CAFC's Morton-Norwich opinion sets forth the following factors to be considered in determining whether a design is de jure functional: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

Utility Patent: The existence of a utility patent "is strong evidence that the features claimed therein are functional" and “[w]here the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.” TrafFix, 58 USPQ2d 1005. Moreover, "statements in a patent's specification illuminating the purpose served by a design may constitute equally strong evidence of functionality." Becton, Dickinson & Co., 102 USPQ2d at 1377.

Applicant is the owner of expired U.S. Patent No. 6068161, for "Stackable, Thin-walled Containers Having a Structural Load Distributing Feature Permitting Caseless Shipping." It contended that this patent does not "discuss the utililitarian advantages of the cuboidal shape, size, and appearance" of the design, arguing that the "central advance" of the patent is the structural load-distributing feature that transfers load from the top to the base of the container, allowing for efficient stacking of the containers. The abstract of the patent describes the "substantially planar" and parallel surfaces of the top and base of the container and side walls that include a "structural load distributing feature."

The Board found that many of the patent claims "bear directly on the applied-for trade dress, including the cuboidal shape." The patent specification references the cost effectiveness of stackability and caseless shipping. Two of the patent figures depict embodiments "very similar to the applied-for design."

The Board concluded that the specification and claims of the patent "reveal the functionality of the design."

The applied-for aspects in the application, “generally cuboidal in shape,” “substantially flat and square shaped top surface,” “generally flat sides” and “handle form[ing] the upper part of the corner defined by two of the side walls and extend[ing] to the flat top surface of the bottle,” are all referenced in the utility patent and are not “merely an ornamental, incidental, or arbitrary aspect of the packaging.”

The Board therefore found that the patent "is sufficient to establish a prima facie case that the design is functional."

Advertising: Examining Attorney Jonathan R. Falk submitted excerpts from news articles that "contain photographs of the applied-for mark" and include claims of the benefits of the design - namely, self-stacking and resulting lower transportation costs. Although this evidence was not applicant's advertising, it still tends to show consumer exposure to the "touting" of these functional aspects.

Applicant argued that it is seeking a registration for "milk," not for containers, and the advantages discussed do not make the jug's shape functional for milk. The Board was not impressed: "The stackability feature is a utilitarian advantage whether the applied-for goods are containers for milk or milk. This advantage begins when the containers are filled with milk, and continues as the milk is distributed to and then sold at the store."

Alternative Designs: Applicant asserted that there are a multiplicity of alternative designs, but the Board noted that the examples submitted did not clearly show the same stackability feature, and "may have aspects that would not be amenable to caseless stacking." In any case, once functionality is found based on other considerations, there is no need to consider alternative designs." Becton, Dickinson & Co., 102 USPQ2d at 1377. [Doesn't this make the prima facie patent evidence conclusive, if the Board will not consider applicant's evidence? - ed.].

Cost of Manufacturing: Applicant argued, without evidence, that it had to incur significant expense in changing its manufacturing process, but the Board pointed out that the cost advantage comes from reduced transportation costs, nor from the manufacturing process. Moreover, even if the container is not "comparatively simple or cheap to manufacture, this does not mean that the design is not functional."

Conclusion: The Board affirmed the refusal.

Based on the evidence, competitors would need this cuboidal shape to achieve the same advantages for distributing and selling milk. To afford registration to Applicant’s design would inhibit legitimate competition by in effect extending the lifespan of its monopoly previously afforded by its now expired utility patent. Mars Inc., 105 USPQ2d at 1866.

Read comments and post your comment here.

TTABlog comment: I fail to understand why this decision was deemed precedential, when last October's Lakeside v. Evoqua summary judgement finding of de jure functionality (here) was not deemed precedential. That case involved more interesting issues, including an expired patent not owned by the registrant and registrant's own advertising brochure.

Text Copyright John L. Welch 2019.