TTAB Posts August 2019 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled seven (7) oral hearings for the month of August 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.



August 6, 2019 - 11 AM: In re PCS Petroleum LLC, Serial No. 87728983 [Section 2(d) refusal to register the mark KP QUIK STOP & Deign for retail convenience stores, in view of the registered mark KWIK STOP for "Retail convenience store services featuring gasoline, other petroleum products and alcoholic beverages"].

August 7, 2019 - 10 AM: Park Hotel Management Pte Ltd. v. Park Hotels & Resorts, Inc., Opposition No. 91233165 [Section 2(d) opposition to PARK HOTELS & RESORTS for "Investment services, namely, asset acquisition, consultation, development and management services; Real estate investment trust services" in view of alleged prior use of the mark PARK HOTEL for hotel reservation and booking services, and travel services].

August 14, 2019 - 9 AM: In re My Reelex Packaging Solutions, Inc., Serial Nos. 87285383 and 87285412 [Refusals to register the two packaging configurations shown below as trademarks for "electrical cables and wires" on the grounds of functionality under Section 2(e)(5), non-distinctiveness, and failure to function as a source indicator].

August 15, 2019 - 1 PM: In re Capital Automotive LLC, Serial No. 87573194 [Section 2(d) refusal of the mark shown below for "Financial services provided to the aviation industry, namely, providing the aviation industry with real estate investment trust services, real estate investment services and financial services in the nature of money lending" in view of the registered marks (same owner) TAILWIND and TAILWIND CAPITAL for "financial services, namely, equity capital investment and financial consultation services"].

August 20, 2019 - 2 PM: In re Inventive, LLC, Serial No. 86796893 [Section 2(d) refusal of FISH FIGHTER & Design for fishing tackle hand tools, fishing measuring tapes, apparel, and fishing tackle, in view of the registered mark FISHING FIGHTERS & Design for apparel, fishing tackle, and fishing gloves].

August 22, 2019 - 1 PM: In re Capital Automotive LLC, Serial No. 87573198 [Section 2(d) refusal of the mark shown below, for "Financial services provided to the automotive retail industry, namely, providing automotive dealers with real estate investment trust services, real estate investment services and financial services in the nature of equity investing and money lending for real estate development" in view of four registered marks owned by the same entity for the marks CAF, CAF AMERICA and CAFAMERICA for charitable fundraising and related financial services].

August 28, 2019 - 10 AM: In re Kitz Corporation, Serial No. 79221711 [Section 2(d) refusal of TOYO & Design for "iron and steel" in view of the registered mark TOYO KAHAN for, inter alia, iron and steel].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2019.

TTAB Finds SKEETER BAND Merely Descriptive of . . . Guess What?

In a mere six-page opinion, the Board swatted away this appeal from a refusal to register the mark SKEETER BAND for "mosquito repellent bracelets," finding the mark merely descriptive of the goods under Section 2(e)(1). In re AP&G Co., Inc., Serial No. 87584274 (July 25, 2019) [not precedential] (Opinion by Judge Thomas Shaw).

Examining Attorney Sally Shih submitted dictionary definitions of "skeeter" (a mosquito) and "band" (a flat, narrow band of material that you put around something), and several third-party registrations in which "skeeter" or "band" was disclaimed. The Board found that this evidence established that the terms SKEETER and BAND are merely descriptive when used in connection with insect repellents and bracelets, respectively. The combination of the two terms adds no new meaning:

Taken together, the terms SKEETER BAND retain their descriptive meaning and merely convey knowledge of a quality, feature, function, or characteristic of the goods, "Mosquito Repellent Bracelets." That is, the goods are wearable bands that will repel mosquitoes.

Applicant argued that SKEETER conveys multiple meanings other than referring to mosquitos: "the cited dictionary alternatively defines the term SKEETER as: i) ‘an iceboat 16 feet (5 meters) or more in length having a single sail' and ii) 'a skeet shooter.'" The Board did not bite. It pointed out that the meaning of the term must be determined in the context of the goods, not in the abstract.

Applicant also argued that SKEETER is an informal term for mosquitos and does not literally describe them. The Board, however, found that "[t]he dictionary entries in the record for SKEETER suggest that the term is a common synonym for 'mosquito,' and is not so informal or obscure as to defy consumer understanding."

Finally, applicant maintained that "even if the term SKEETER BAND directly translated to 'mosquito bracelet,' it still would not describe a 'mosquito repellent bracelet.'" Buzz off, said the Board: "It is well settled that consumers have a habit of shortening names."

Therefore the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: SKEETER is much too cute a name for the little bastards.

Text Copyright John L. Welch 2019.

TTAB Finds WIZGEAR Confusable with THE WIZ and NOBODY BEATS THE WIZ, Denies Abandonment and Fraud Counterclaims

In a 43-page opinion, the Board sustained a Section 2(d) opposition to registration of WIZGEAR for "Electronic accessories, namely, cell phone cases, computer tablet cases, protective cases for smartphones and computer tablets, smartphone mounts, computer tablet mounts; Small electronics, namely, headphones and earphone" 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. Because opposer has not operated a brick-and-mortar store since 2003, applicant claimed abandonment, and threw in a fraud claim for good measure. But nobody beats the Wiz. P.C. Richard & Son Long Island Corporation v. Jon Bargains Inc., Opposition No. 91223383 (July 25, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman). [Affirmed under FRAP 36 by the CAFC, October 7, 2020]

Abandonment: The Board first determined the meaning of "retail store services," concluding that the term is not limited to "brick-and-mortar" stores but includes online sales (i.e., an online retail store). This was crucial to the abandonment issue because Opposer acquired the pleaded marks in September 2003 through a bankruptcy sale. At that time, there were no THE WIZ or NOBODY BEATS THE WIZ retail stores in operation and opposer never opened or operated a brick and mortar retail store under the marks.

From November 2004, Opposer was operated websites at www.thewiz.com and www.nobodybeatsthewiz.com where consumers could purchase a wide array of consumer electronics and related services. However, from July 2013 through November 2015, consumers could only place telephone orders. “[T]he cart button forwarded the user to a customer services telephone number in order to place their order.” From October/November 2015 through February 2017, access to the websites was suspended and a user would reach an “under construction” notice at those websites

Prior to February 2017, Opposer decided to integrate the THE WIZ and NOBODY BEATS THE WIZ URLs its overall marketing plan by having those URLs direct consumers to Opposer’s PCRICHARD.com website. Google searches using the WIZ marks would direct consumers to that website.

Reviewing in detail the record evidence, the Board concluded that applicant had "failed to show that Opposer stopped using the marks THE WIZ or NOBODY BEATS THE WIZ for three consecutive years or that Opposer stopped using those marks with no intent to resume use." And so it denied the abandonment counterclaim.

Fraud: As usual, the counterclaim for fraud went nowhere. Applicant contended that when Opposer renewed its NOBODY BEATS THE WIZ registration, it was not using the mark for any retail store service since its websites were under construction and not accessible to customers. However, applicant failed to introduce any evidence regarding Opposer’s intent to deceive the USPTO, and so the Board went no further.

Likelihood of Confusion: The Board wasted little time in finding applicant's goods related to opposer's services. It also found the channels of trade and classes of customers to be the same.

With regard to actual confusion, the Board found that "both parties are heavily invested in online selling and using keywords including the term "Wiz,'" and therefore there has been an opportunity for confusion to have occurred (approximately four years). Under the circumstances, it found that this du Pont factor favored applicant.

Since neither the challenged application nor the cited registrations contain any restrictions on channels of trade, classes of consumers, price points or quality, the Board presumed, as it must, that purchasers include ordinary consumers who might not exercise a high degree of purchasing care. Therefore, this factor favored opposer.

As to the strength of the cited marks, the Board found THE WIZ and NOBODY BEATS THE WIZ to be inherently strong: "they do not describe, nor suggest, any quality, characteristic or function of the services." However, third-party registrations and uses of and a dictionary definition of "wizard" (a person of amazing skill or accomplishment) led the Board to find that "while the term 'Wiz' is inherently distinctive, it is a suggestive term connoting good quality or skill."

As to commercial strength, opposer claimed that its marks are famous but its proofs fell short. First, the length of time of use of the marks is not itself sufficient to prove fame. Furthermore, the Board noted that opposer acquired the marks at a bankruptcy sale, "where it paid a minimal amount for the goodwill associated with the marks and its predecessor’s customer list indicating that the marks had little residual value." Opposer’s subsequent sales generated through THEWIZ.com and
NOBODYBEATSTHEWIZ.com websites from 2003 through 2013 were minimal, and after 2013 it did not even keep track of sales generated through those websites. And there was no evidence of third party recognition of the marks.

The Board concluded that the marks are entitled to a "restricted scope of protection:"

In other words, Opposer’s marks THE WIZ and NOBODY BEATS THE WIZ are not entitled to such a broad scope of protection that they will bar the registration of every mark comprising, in whole or in part, the term “Wiz”; they are, nevertheless, sufficient to bar the registration of marks "as to which the resemblance to [Opposer’s marks] is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two."

Finally, turning to a comparison of the marks, the Board observed that when the goods and services involved, a lesser degree of similarity between the marks is needed to support a finding of likely confusion.

The Board found the term "Wiz" to be the dominant portion of applicant’s mark because the term "Gear" is descriptive of applicant’s goods. Likewise, the same term dominates opposer's marks.

As to commercial impression, the Board found some "peripheral differences," but not serious enough to avoid the overall similarity of the marks.

While some consumers may perceive Applicant’s mark WIZGEAR to mean and engender the commercial impression of high quality consumer electronics and accessories, others are likely to perceive WIZGEAR as referring to products related [to] Opposer’s THE WIZ and NOBODY BEATS THE WIZ retail stores in the field of consumer electronics and accessories. The peripheral differences in this case fail to distinguish the marks.

In view of the dominance of the term "Wiz" in the involved marks, the Board found them to be similar in sound, appearance, connotation, and commercial impression.

Conclusion: Acknowledging that the term "the Wiz" is entitled to a "somewhat narrow scope of protection," the Board nonetheless found confusion likely and it therefore sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Here's a suggestion: if you are writing a brief on the issue of likelihood of confusion, find a recent opinion by Judge Bergsman and you will find many helpful citations and explanations. Also on evidentiary issues.

Text Copyright John L. Welch 2019.

Precedential No. 20: TTAB Declines to Strike Summary Judgment Motion as Untimely After Respondent Consented to Extension

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] In this cancellation proceeding involving a registration for the mark SOFT COAG for medical instruments, Petitioner Covidien dodged a motion to strike its summary judgment motion as untimely, but tripped over another procedural hurdle, resulting in the Board declining to consider its motion. Covidien LP v. ERBE Elektromedizin GmbH, 2019 USPQ2d 265006 (TTAB 2019) [precedential] (Order by Interlocutory Attorney Mary Beth Myles).

The Board faced the question of whether the granting of a consent motion for extension of all dates, filed just before the pretrial disclosure deadline, also extended the date for filing a summary judgment motion. Yes indeed, said the Board.

The relevant dates in this case are as follows: On December 21, 2018, the Board reset the trial dates, extending the deadline for Covidien’s pretrial disclosures to January 18, 2019. On January 16, 2019, Covidien filed a motion to extend all dates, with Respondent ERBE’s consent, by one week. In this recent Order, the motion was granted, and Covidien’s pretrial disclosures became retroactively due by January 25, 2019.

Anticipating the Board’s approval of its extension request, Covidien filed a motion for summary judgment on January 22, 2019. ERBE then promptly filed a motion to strike the summary judgment motion.

ERBE argued two points: (1) That it did not consent to an extension of time to file a summary judgment motion, but only to an extension of time for Covidien to serve its pretrial disclosures, and (2) that the summary judgment motion was untimely because the Board did not grant the extension prior to January 18, 2019 (the original deadline for Covidien’s pretrial disclosures). The Board addressed each issue in turn.

As to the issue of consent, the Board noted that ERBE consented to the extension with no conditions or restrictions:

At the time the consented motion to extend was filed (January 16), that deadline was due to expire on January 18, and Petitioner’s deadline to file a summary judgment motion would have been January 17 absent any extension. Thus, Respondent must have known that a summary judgment motion not only was still possible at the time it consented to the extension, but also that, by agreeing to extend all deadlines, it was consenting as well to extend the time for filing a summary judgment motion. If Respondent’s consent to an extension was conditioned upon a limitation, it was incumbent upon Respondent to identify that limitation and ensure that the limitation was conveyed in the motion when filed.

Because there was no condition or limitation in ERBE’s consent, the Board found that ERBE had agreed to an extension of time for all dates, including the deadline for filing a summary judgment motion.

Moving to the issue of whether Covidien’s summary judgment motion was timely, the Board stated that “[i]nasmuch as the unrestricted consented motion was filed prior to the deadline, once granted, the extension is effective before the deadline.” Again, the Board reiterated that “[t]he extension of the pretrial disclosure deadline . . . generally resets the deadline for filing a motion for summary judgment, unless the parties agree to the contrary.” [Emphasis added]. Because the Board found that a grant of an extension is retroactively effective, ERBE’s motion to strike was rejected.

In a curious twist, however, the Board declined to consider Covidien’s motion for summary judgment since it exceeded the allotted page limit. Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a), provides that no motion “shall exceed twenty-five pages in length in its entirety . . . .” Covidien’s motion for summary judgment was twenty-eight pages long. Since “[t]he Board generally does not consider briefs that exceed the page limit” (see Saint-Gobain Corp. v. Minn. Mining and Mfg. Co., 66 USPQ2d 1220, 1221-22 (TTAB 2003)), Covidien’s motion for summary judgment was given no consideration.

Accordingly, proceedings in the case resumed and the remaining dates were reset as needed. The new deadline for pre-trial disclosure was set as July 14, 2019. Covidien re-filed its summary judgment motion (in shortened form) on July 13th.

Read comments and post your comment here.

KKM Comment: A really good case for practitioners on what consenting to an extension of time implicates and the importance of adhering to procedural rules!

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

SMART WIFI Confusable With WI-FI Certification Mark, Says TTAB

The Board affirmed a Section 2(d) refusal of the mark SMART WIFI for "computer application software for mobile phones, computers, laptops, tablets, namely, software for storing and processing information," finding the mark likely to cause confusion with the registered certification mark WI-FI (in standard character form) for "computer hardware and peripherals, namely, wireless local area networking products," owned by WI-FI Alliance of Austin, Texas. The certification statement in the registration reads: "[t]he certification mark, as intended to be used, will certify that goods manufactured by authorized persons comply with interoperability standards." In re GoZone WiFi LLC, Serial No. 86624361 (July 23, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).

Section 4 of the Lanham Act states that certification marks "shall be registrable . . . in the same manner and with the same effect as are trademarks." Case law establishes that classification as a certification mark "has very little effect on our determination as to whether or not there is a likelihood of confusion." The Section 2(d) test is the same: the du Pont analysis.

Applicant GoZone maintained that the term WI-FI is weak because there are "dozens of existing registrations and applications that utilize the term WIFI." The Board took judicial notice of dictionary definitions that referred to Wi-Fi or WiFi as a "trademarked term." [What? trademark is not a verb! - ed.].

GoZone submitted various webpages showing third-party use of the term WiFi or Wi-Fi in connection with computer-related services, but there was no indication whether registrant certified those uses of its certification mark. GoZone also submitted nine third-party registrations for marks that include the term and that either disclaim the term or are registered on the Supplemental Register.

To the extent that GoZone argued that WIFI is merely descriptive and unprotectable, that claim is inapposite since the mark is registered on the Principal Register without a claim of acquired distinctiveness. The WI-FI mark is entitled to a presumption of validity which cannot be challenged in an ex parte context.

The Board found that there is some degree of conceptual weakness in the certification mark, but even weak marks are entitled to protection against a substantially similar mark for similar goods, as here.

As to the marks, the Board found them similar in sight and sound. The hyphen in the cited mark has no significance in this context. The term SMART is merely suggestive or laudatory, as applicant admitted in its brief. SMART WIFI for computer related goods is likely to be perceived as a variant of registrant's mark and used with registrant's certification and permission.

As to the goods, GoZone argued that they are not related because it provides software, where registrant's certified goods are computer hardware. Nonetheless, the Board observed, GoZone's broadly identified software for "storing data and processing information" is likely to be used with the "wireless local area networking products" of registrant's certified users. In fact, GoZone's specimens refer to use of its products with "WiFi." Moreover, Examining Attorney Dezmona J. Mizelle-Howard submitted third-party registrations that include software for storing or processing information and computer hardware and peripherals. Thus these goods are of a type that may emanate from a single source. The Board concluded that the involved goods "are similar and are likely to be complementary."

There are no limitations as to trade channels of classes of customers in either the application or cited registration, and it must be assumed that GoZone's products and the goods of registrant's certified users travel through all normal channels of trade and are marketed to typical consumers, including "overlapping members of the general public that seek various types of computer-related products."

Conclusion: The Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Two certification mark cases in one week. Unbelievable!
BTW: here is a 2008 article on certification marks by Michelle B. Smit, entitled "(Un)Common Law Protection of Certification Marks," 93 Notre Dame L. Rev. 419 (2017).

Text Copyright John L. Welch 2019.

TTABlog Test: Is VITAL FLORA for Pet Supplements Confusable With FLORAVITAL for Supplements?

The USPTO refused registration of the mark VITAL FLORA for "dietary supplements for pets for supporting intestinal flora for digestive health," finding the mark likely to cause confusion with the registered mark FLORAVITAL for "dietetic food supplements." Applicant argued that its goods are for humans, not pets, and furthermore, "flora" and "vital" are weak formatives that combine into a weak mark. How do you think this came out? In re Vital Planet, LLC, Serial No. 87455242 (July 22, 2019) [not precedential] (Opinion by Judge Robert H. Coggins).

The Goods: The Board found that the registrant's broadly worded "dietetic food supplements" encompassed applicant's supplements for pets. The examining attorney had presumed that registrant's goods were for human use, but there is no such limitation in the registration and the Board is not required to limit its registrability determination to the reasons set forth by the examining attorney during prosecution. The fact that registrant's specimens of use showed that its goods were for human use was irrelevant. The Board may not read into the registration limitations based on actual use.

Since the goods overlap, the Board must presume that the overlapping goods travel in the same trade channels to the same classes of consumers. These factors weigh heavily in favor of affirmance.

Strength of the Cited Mark: Based on dictionary definitions, the Board found the words "flora" and "vital" to suggestive of dietetic food supplements. However, there was no evidence to show that the combination is weak. Applicant submitted evidence of use and registration of various marks that include the words VITAL or FLORA for supplements, but no such evidence regarding the combined term VITALFLORA. In sum, applicant failed to show that VITALFLORA is a weak mark that is not entitled to a normal scope of protection.

Even assuming VITALFLORA is weak, the Board observed, "likelihood of confusion is to be avoided, as much between 'weak' marks as between 'strong' marks."

The Marks: The Board found that the marks sound and look similar to the extent that they contain the identical words. Applicant asserted that FLORA in its mark connotes bacteria or intestinal flora, whereas in the cited mark FLORA connotes a plant or a flower. The Board, however, rejected "the implication that the commercial impression conveyed by Registrant's mark differs, or is limited, due to Registrant's specimen of record." (see illustration below). The Board must consider the registered mark as registered, not as used.

Examining Attorney Collier L. Johnson II maintained that the transposition of the two constituent words does not change their commercial impression. The Board agreed.

We find the marks FLORAVITAL and VITAL FLORA to have a similar commercial impression, especially when used on in-part legally identical goods. As discussed above, FLORA means “the bacteria and other microorganisms that normally inhabit a bodily organ or part: intestinal flora,” while VITAL means “necessary to the continuation of life; life-sustaining: a vital organ; vital nutrients.”7 Although Applicant’s mark places the adjective VITAL before the noun FLORA, but Registrant’s mark places the noun before the adjective, there is nothing to suggest that the transposition of the terms gives a new or different meaning to either of the constituent terms or to the marks as a whole.

Finding that the marks convey the same or similar commercial impression, and coupling that with the similarity in appearance and sound, the Board concluded the the first du Pont factor weighs in favor of a finding of likely confusion.

Conditions of Purchase: Applicant maintained that pet owners exercise a high degree of care in making decisions regarding their pets' health. The Board pointed out, however, that even careful purchasers who are knowledgeable as to the goods are not necessarily knowledgeable in the field of trademarks, and they are not immune to source confusion when confusingly similar marks are used on the goods. The Board found that this factor weighed only slightly in applicant's favor.

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

Read comments and post your comment here.

TTABlog comment: I think there should be a presumption that "supplements" means supplements for humans, unless otherwise stated.

Text Copyright John L. Welch 2019.

"100% REAL CALLINECTES CRAB FROM NORTH AMERICA" Fails to Function as a Trademark for Crabmeat, Says TTAB

The Board affirmed a bifusal (TM) of the proposed mark 100% REAL CALLINECTES CRAB FROM NORTH AMERICA & Design (shown below) for crabmeat, on the grounds that (1) Applicant Ocean Technology failed to comply with the examining attorney's Rule 2.61 demand for information, and (2) the phrase fails to function as a trademark for applicant's goods. In re Ocean Technology, Inc., Serial No. 87405151 (July 18, 2019) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

Rule 2.61 Request for Information: Under Rule 2.61(b), an examining attorney "may require the applicant to furnish such information, exhibits, affidavits or declarations . . . as may be reasonably necessary to the proper examination of the application." Examining Attorney Cameron McBride required that Ocean Technology explain whether its goods "do or will consist of 100% real Callinectes crab from North America," pointing out that registration may be refused as deceptive or deceptively misdescriptive if the answer were no.

Ocean Technology maintained that when it amended its identification of goods to "crabmeat," the examining attorney's demand for further information was moot. Not so, said the Board. It found the requirement for information to be reasonably necessary to proper examination of the application since it directly related to the possibility of additional grounds for refusal. The Board therefore affirmed this refusal.

callinectes sapidus
Failure-to-Function: The Board nevertheless went on to consider the failure-to-function refusal under 1, 2, and 45 of the Lanham Act. The question, of course, was how the proposed mark would be perceived by the relevant public. To make that determination, the Board looks at the specimens of use and evidence showing how the terms are actually used in the marketplace. Terms and expressions that merely convey information are not registrable.

The examining attorney submitted printouts from numerous third-party websites that he characterized as "showing use of the same or effectively synonymous terms to inform purchasers of the quality, ingredients and geographic origin of the products." Moreover, the Board observed, the proposed mark as displayed on Ocean Technology's specimen of use (below) "simply informs purchasers that the package contains 100% pure Callinectes crabmeat from North America." The Board found this evidence sufficient to support a failure-to-function finding.

Ocean Technology argued that the phrase is suggestive and capable or identifying source, but the Board found that argument "inapposite."

The standard for a failure-to-function refusal is not whether the proposed mark is suggestive rather than descriptive, but whether the relevant public will recognize it as a trademark identifying only one source.

Ocean Technology had attempted to overcome this refusal by amending to the Supplemental Register, by claiming acquired distinctiveness, and by asserting inherent distinctiveness. However, the Board pointed out, matter that does not indicate source cannot be registered because it does not meet the statutory definition of a mark. See Sections 1, 2, and 45 of the Lanham Act.

In sum, the Board found that the proposed mark would not be perceived as identifying a particular source. The stylization and minimal background design does not alter the perception of the mark as a whole. "Applicant's evidence is insufficient to demonstrate that consumers recognize the applied-for mark as indicating the source of the identified goods rather than as merely informational."

And so the Board affirmed this second refusal.

Read comments and post your comment here.

TTABlog comment: Shouldn't the Board consider applicant's evidence of acquired distinctiveness in deciding whether the mark fails-to-function as a mark in the first place? Wouldn't that evidence be relevant as to how the consumers perceive the term?

Text Copyright John L. Welch 2019.

Precedential No.19: TTAB Finds Certification Mark Merely Descriptive, Lacking Acquired Distinctiveness

TTAB decisions concerning certification marks are as rare as a traffic cop in Boston.. Here, the Board affirmed a refusal to register the proposed certification mark VETERINARY TECHNICIAN SPECIALIST for “veterinary medicine services” in Class B, finding the term merely descriptive of the services and lacking acquired distinctiveness. In re National Association of Veterinary Technicians in America, Inc., 2019 USPQ2d 269108 (TTAB 2019) [precedential] (Opinion by Judge Cynthia C. Lynch).

Certification marks are subject to the same statutory bars to registration as other marks, including mere descriptiveness under Section 2(e)(1) of the Trademark Act. See, e.g., In re Council on Certification of Nurse Anesthetists, 85 U.S.P.Q.2d 1403 (T.T.A.B. 2007) (affirming refusal to register merely descriptive certification mark on the ground that it had not acquired distinctiveness); In re Nat’l Ass’n of Legal Secretaries (Int’l), 221 U.S.P.Q. 50, 52 (T.T.A.B. 1983) (certification marks subject to “the Section 2 qualifications and bans, including those of Section 2(e)”).

The evidence established that VETERINARY TECHNICIAN is the recognized name for an individual who provides veterinary medicine services. Applicant's promotional material repeatedly refers to “veterinary technicians” in a descriptive or generic manner, as do third parties in the same field.

The term "specialist" is defined as "“one who specializes in a particular occupation, practice, or branch of learning.” The evidence submitted by Examining Attorney Michael L. Engel included applicant’s own certification statement and its promotional materials, which use the terms “specialty” and “specialization” in a descriptive or generic manner in connection with its services. Third-party registrations include disclaimers of SPECIALIST in the context of medical services, including several certification mark registrations. Most of these registrations are found on the Supplemental Register, and so the disclaimers reflect the treatment of SPECIALIST as a generic term. See TMEP § 1213.03(a) (“If a mark is comprised in part of matter that, as applied to the goods or services, is generic or does not function as a mark, the matter must be disclaimed to permit registration on the Principal Register (including registration under §2(f) of the Act) or on the Supplemental Register.”).

Applicant pointed to 25 registrations that do not include disclaimers of SPECIALIST, some for medical services, but the Board noted that 21 of them were issued based upon acquired distinctiveness under Section 2(f).

Thus, the record shows that in this context, the term SPECIALIST describes or refers to a person who specializes in a particular type of veterinary medicine. Like the component VERTERINARY [sic] TECHNICIAN, the component SPECIALIST on its own is not inherently distinctive for veterinary medicine services.

The question, then, was whether the combination of these two descriptive terms engenders a "new and different commercial impression."

If the components VETERINARY TECHNICIAN and SPECIALIST are each individually merely descriptive of the services, we assess whether their combination in “Applicant’s mark ‘conveys any distinctive source-identifying impression contrary to the descriptiveness of the individual parts.’” In re Fat Boys Water Sports LLC, 118 U.S.P.Q.2d 1511, 1515-16 (T.T.A.B. 2016) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 U.S.P.Q.2d 1370, 1372 (Fed. Cir. 2003)). If each component “retains its merely descriptive significance in relation to the [services], the combination results in a composite that is itself merely descriptive.” Fat Boys, 118 U.S.P..Q.2d at 1516 (citing In re Tower Tech., Inc., 64 U.S.P.Q.2d 1314, 1317-18 (T.T.A.B. 2002))

The evidence established that the combination of terms produces no new meaning. "The terms retain their ordinary meanings, and when combined, the entire proposed mark VETERINARY TECHNICIAN SPECIALIST refers to a veterinary technician who has become a specialist in a particular field of veterinary medicine." Therefore, the proposed mark is merely descriptive of the services under Section 2(e)(1). In re Petroglyph Games Inc., 91 U.S.P.Q.2d 1332, 1337 (T.T.A.B. 2009) (BATTLECAM merely descriptive for computer game software); see also In re Phoseon Tech., Inc., 103 U.S.P.Q.2d 1822, 1823 (T.T.A.B. 2012) (holding SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and UV curing systems composed primarily of light-emitting diodes for industrial and commercial applications).

The Board further found, based on the "nature and volume of evidence," that the proposed mark is "not only merely descriptive of the identified services but highly descriptive as well." See Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 U.S.P.Q.2d 1041, 1045 (Fed. Cir. 2018) (instructing Board to first determine whether a proposed mark is highly descriptive rather than merely descriptive before assessing acquired distinctiveness).

Turning to the issue of acquired distinctiveness under Section 2(f), the Board pointed out that, for certification marks, "the focus of the evidentiary showing differs from that for trademarks because certification marks indicate that goods or services provided by persons other than the  mark owner adhere to specified standards set by the mark owner, whereas trademarks indicate the source of the goods or services." See Section 45 of the Trademark Act, 15 U.S.C. 1127 (defining “trademark” and “certification mark”); see also TMEP §1306.01(b) (“[T]he purpose of a certification mark is to inform purchasers that the goods or services of a person possess certain characteristics or meet certain qualifications or standards established by another person. A certification mark does not indicate origin in a single commercial or proprietary source the way a trademark or service mark does”). “[W]hen an applicant seeks registration of a certification mark, it is the use by persons other than the owner of the mark, subject to the owner’s control, which is the primary consideration in determining how members of the relevant public will perceive the mark.” Council on Certification of Nurse Anesthetists, 85 U.S.P.Q.2d at 1406.

Because the proposed mark is highly descriptive, applicant bears a high evidentiary burden to establish acquired distinctiveness. See, e.g., Royal Crown, 127 U.S.P.Q.2d at 1045 (citing In re Steelbuilding.com, 415 F.3d 1293, 75 U.S.P.Q. 1420, 1424 (Fed. Cir. 2005) (“[T]he applicant’s burden of showing acquired distinctiveness increases with the level of descriptiveness; a more descriptive term requires more evidence of secondary meaning.”)); Council on Certification of Nurse Anesthetists, 85 U.S.P.Q.2d at 1415 (initialism CNRA for “Certified Registered Nurse Anesthetist” found to be highly descriptive, increasing “the evidentiary burden on the user to establish acquired distinctiveness”).

The types of evidence to be assessed and weighed in determining acquired distinctiveness of a certification mark are for the most part the same as those for trademarks and include: (1) actual purchasers’ association of the mark with indicating certification; (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage. See Converse, Inc. v. Int’l Trade Comm’n, 907 F.3d 1361, 128 U.S.P.Q.2d 1538, 1546 (Fed. Cir. 2018).

The Board found that applicant's evidence "does not show that users of veterinary medicine services have come to recognize the applied-for mark as indicating that the person performing the services has met certain standards set by Applicant (i.e., that the person “has completed the required curriculum of a defined body of veterinary technology knowledge pertinent to that particular specialty”) in connection with the services." Applicant's use of the term since 1995, the existence of 16 certified users, and webpages and promotional materials that refer to the proposed mark did not suffice. See, e.g., Council on Certification of Nurse Anesthetists, 85 U.S.P.Q.2d at 1414-15 (although there was no evidence of third-party use of the same or similar highly descriptive designation, nearly 50 years of use deemed insufficient to establish acquired distinctiveness where the applicant failed to establish its recognition by consumers as a certification mark).

The Board therefore affirmed the refusal to register under Section 2(e)(1).

Read comments and post your comment here.

TTABlog comment: I included a photo of a cat (from Applicant's specimen of use) not because I like cats, but because I thought it might boost my readership.

Text Copyright John L. Welch 2019.

Marijuana Vaporizers Are (Still) Illegal Under CSA: TTAB Affirms Two “JUJU” Refusals

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] The Board affirmed refusals to register JUJU RX and JUJU HYBRID for smokeless marijuana vaporizers, under Sections 1 and 45 of the Trademark Act. Applicant, Canopy Growth Corporation, received an assignment of the entire interest and goodwill in the applications from JJ206 LLC, and this opinion closely resembles that of a prior precedential decision for similar marks on identical goods. In re JJ206, LLC, 120 USPQ2d 1568 (TTAB 2016) [TTABlogged here]. “Applicant’s arguments in these cases mirror the unsuccessful arguments its predecessor made in the appeals of other applications identifying essentially the same goods, for which [the Board] affirmed unlawfulness refusals.” Here, the Board held that the identified goods are illegal under the federal Controlled Substances Act (CSA) and therefore any use of the marks in commerce would be unlawful. In re Canopy Growth Corporation by assignment from JJ206, LLC, Serial Nos. 86475885 & 86475899 (July 16, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch).

As in JJ206, in an intent-to-use application, “where the identified goods are illegal under the [CSA], the applicant cannot use its mark in lawful commerce, and ‘it is a legal impossibility’ for the applicant to have the requisite bona fide intent to use the mark.” 120 USPQ2d at 1569 (quoting John W. Carson Found. V. Toilets.com, Inc., 94 USPQ2d 1942 (TTAB 2010)). Under the CSA, it is unlawful to sell, offer for sale, or transport in interstate commerce drug paraphernalia, defined as “any equipment . . . primarily intended or designed for use in . . . ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].” 21 U.S.C. § 863.

According to the CSA, marijuana is defined as “all parts of the plant Cannabis sativa L. . . .” and it is a “controlled substance that is unlawful to possess.” Examining Attorney Robert J. Struck and the Board agreed that Applicant’s mention of “cannabis” in the identification of its goods refers to marijuana. Consequently, the identified goods fall within the definition of illegal drug paraphernalia under the CSA.

Applicant made four assertions. First, similar to JJ206, Applicant “relie[d] on state marijuana laws to claim that its intended use is lawful.” The Board again rejected this argument: “[T]he federal CSA is conclusive on the lawfulness issue for purposes of obtaining a federal trademark registration.” JJ206, 120 USPQ2d at 1571; In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016). Second, Canopy Growth also tried to draw parallels between its product and “other oral vaporizing apparatuses, like e-cigarettes,” but the Board found the comparison unsound because the identified goods are in violation of the CSA while devices such as e-cigarettes are not. Third, Applicant contended “that because the jurisdictions where it does business ‘comply with federal directives such as the Cole Memo,’ its goods should be considered lawful.” But, similar to JJ206, the Board found that the Cole Memo “does not and cannot override the CSA.,” The Board further took judicial notice that the Cole Memo was rescinded on January 4, 2018, “mooting any of Applicant’s arguments based on [its] enforcement prioritization.” Lastly, Canopy Growth restated policy arguments from JJ206, which the Board again rejected because they “fail[ed] to recognize that lawful use of a mark in commerce is a prerequisite to federal registration.”

And so, dismissing all of Applicant’s arguments, the Board found that, because the identified goods constitute illegal drug paraphernalia under the CSA, intended use of the applied-for marks is unlawful and cannot provide a basis for federal registration. The refusals to register were therefore affirmed.

Read comments and post your comment here.

TTABlog comment: Any doubt that this is a WYHA?

Text Copyright Kira-Khanh McCarthy 2019.

TTAB Reverses Section 2(d) Refusal: Goods Unrelated and Consumers Sophisticated

On the average of twice per month, the Board reverses a Section 2(d) refusal. Here, the Board found the mark CMC for "Non-metallic underground columns for land stabilization and reinforcement that are fabricated and installed on site" not likely to cause confusion with the identical mark CMC for a "full line of metals in sheet, rod, bar, angle, round, beam, castellated beam, cellular beam, flat beam, joist, strip, tube, plate, billet, square, and wire form” and “retail store services and distributorships featuring … construction products, and accessories." For once, a "sophisticated purchaser" argument carried some weight in the Board's du Pont analysis. In re Soletanche Freyssinet, Serial No. 79194724 (July 16, 2019) [not precedential] (Opinion by Judge Albert Zervas).

The Goods/Services: The examining attorney maintained that applicant's and registrant's goods are "pieces of construction equipment for building and/or support and thus, likely to be encountered by the same purchasers and found in the same channels of trade." The Board observed, however, that there may be hundreds of "pieces of construction equipment" used for construction projects and this alone is not a basis to find the goods related.

Next, the examining attorney argued that registrant's goods could be metal rods or beams for land stabilization and reinforcement, but the Board found no evidence in support of this "theoretical representation." 

The examining attorney also argued that the the goods have complementary uses and are purchased by the same purchasers. However, the examining attorney ignored the specific limitation that applicant's goods are fabricated and installed onsite, and thus they are not used for general construction of structures. Conversely, there was no evidence that registrant's goods are used in connection with land stabilization and reinforcement. Moreover, just because goods are within or support the same structure does not mean they are related.

As to registrant's retail store services, applicant's goods are not the type of goods that are sold in retail stores, and there was no evidence that they are so sold.

Purchasing Conditions: The Board found that applicant's goods, by their very nature, are necessarily selected with care by purchasers familiar with the source of the products. Buyers either know their specific products needs or obtain them through consultation with applicant; in either case, they would exercise significant care. And so this du Pont factor favored applicant.

Conclusion: The marks are identical, but the purchasers are sophisticated and the examining attorney has not established that the goods are related. Therefore the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: By my calculation, the Board reverses one out of 10 Section 2(d) refusals that are appealed.

Text Copyright John L. Welch 2019.

TTABlog Test: Are Packaged Sprits and Rum Related to Restaurant Services Under Section 2(d)?

The USPTO refused registration of the mark MAUNA KEA RUM COMPANY for "packaged spirits; packaged rum" [RUM COMPANY disclaimed], finding a likelihood of confusion with the registered word+design mark shown immediately below for restaurant services. Applicant contended on appeal that, as to the marks, the common term "Mauna Kea" has geographical significance and therefore is weak, and as to the goods/services, that restaurants do not serve bottled spirits to patrons. How do you think this came out? In re Mauna Kea Rum Company, LLC, Serial No. 87475384 (June 27, 2019) [not precedential] (Opinion by Judge Jonathan Hudis).

The Marks: The Board found the term MAUNA KEA to be the dominant element of the applied-for mark and the cited mark. It is the first term in applicant's mark and therefore the most prominent, particularly in light of the disclaimer of RUM COMPANY, and it is the term used in calling for registrant's services. The flower design in the cited mark is of little relevance since applicant is seeking a standard character registration

The Board recognized that MAUNA KEA has geographical significance, referring to a mountain in Hawaii, but even weak marks are entitled to protection against registration of a similar mark for related goods or services.

The first du Pont factor weighed in favor a finding of likely confusion.

The Goods and Services: Applicant contended that, because the relatedness of the involved goods and services is not evident, the examining attorney must show "something more" than the mere fact that the goods and services may be used together. The Board observed that the CAFC has held that "something more" must be shown to prove the relatedness of alcoholic beverages and restaurant services, In re Coors Brewing Co., 68 USPQ2d 1059, 1063 (Fed. Cir. 2003), and it "stands to reason" that the "something more" standard should also apply to packaged rum and spirits vis-a-vis restaurants services.

Examining Attorney Jacquelyn A. Jones submitted four articles noting the growing trend of restaurant-distilleries selling packaged spirits under the same name or brand as the restaurant portion of the business. She also provided website excerpts from 12 restaurant-distilleries that sell packaged spirits. The Board found this evidence sufficient to satisfy the "something more" requirement.

Thus the record evidence belied applicant's assertion that "even distillery restaurants do not serve bottled spirits to patrons." The evidence showed that at least one trade channel for applicant's products is through restaurants. And so the Board concluded that the second and third du Pont factors weighed against applicant.

Third-Party Marks: Applicant argued that MAUNA KEA is registered for bakery goods, which are items sold in restaurants, and so there is no reason to give the cited mark a broad scope of protection beyond restaurant services. The Board, however, noted the lack of evidence that the bakery goods mark is actually in use, and further that a single registration for goods unrelated to those at issue does not weaken the cited mark. Moreover, prior decisions by examining attorneys in other cases do not bind the Board. The Board concluded that this sixth du Pont factor was neutral.

Customer Sophistication: Applicant contended that customers for the involved goods and services are "sophisticated and discriminating" and make careful purchasing decisions. No evidence supported that argument, however, and in any event the Board must consider both the discriminating and the ordinary customers for the involved goods and services.

Conclusion: 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: So if you are trying to clear a mark for packaged liquor, be sure to check restaurant names.

Text Copyright John L. Welch 2019.

TTABlog Test: Is This Electronic Brochure an Acceptable Specimen for Billboard Monitoring Services?

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] The USPTO refused registration of the marks SMARTLINK (in standard characters) and SMARTLINK SYSTEMS (in the design form shown immediately below), for billboard monitoring services, deeming Applicant Outdoorlink’s specimens of use unacceptable. Outdoorlink provides consumers with scheduled photo capturing of roadside billboard advertisements. As specimens, it submitted a webpage printout and subsequently an electronic brochure as a substitute specimen. The Examining Attorney rejected both. She argued that “the [substitute] specimen shows use in connection with a system and software that allows customers themselves to monitor billboards, but it does not show that applicant actually provides monitoring services.” Applicant asserted that “its software captures and sends images of billboards, which ‘is part of a “monitoring” service that is provided to the user.’” How do you think this came out? In re Outdoorlink, Inc., Serial Nos. 85935503 and 85935508 (July 8, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Under Section 45 of the Trademark Act, a service mark is used in commerce “when it is used or displayed in the sale or advertising of services . . . .” “Relevant to Applicant’s specimens in this case, the webpage [or e-brochure] must show the mark used or displayed as a service mark in advertising services. Showing only the mark with no reference to, or association with, the services does not show service mark usage.” The service mark must therefore “sufficiently create[] in the minds of purchasers an association between the mark[s]” and the applied-for services.

In this case, the Examining Attorney maintained that Applicant’s specimens show use in relation to a camera system and software, but not monitoring services. Specifically, she referenced language in the e-brochure specimen (shown immediately below) that implies that Applicant provides “cameras, hardware products, and software applications and not an actual service.” Outdoorlink, contrarily, pointed to references in the e-brochure that emphasized that it, not its customers, provides images of billboards in accordance with the definition of monitoring (defined as “to watch, keep track of, or check usu. [sic] for a special purpose”). Furthermore, Applicant claimed that its customers pay a monthly subscription, making it clear that it is indeed providing a service, not merely a product.

(click on picture for larger view)
The Board compared the current issue to In re JobDiva, Inc. [TTABlogged here]. In that case, the CAFC vacated the Board’s decision which held that JobDiva’s mark was not in use for personnel placement and recruitment services. JobDiva supplied software that performed these services. Although the Board found that the website screenshots provided by JobDiva contained no reference to the services “other than supplying [Applicant’s] software,” the Federal Circuit disagreed, finding that “[t]he proper question is whether [Applicant] . . . performed personnel placement and recruitment services and whether consumers would associate [Applicant’s] registered marks with personnel placement and recruitment services . . . .”

In light of that decision, the Board considered whether Outdoorlink’s e-brochure specimen “sufficiently refers to the recited services of monitoring roadside billboards for business purposes and associates the mark with such services.” The Board found that consumers would associate Outdoorlink’s marks with the respective services: (1) The e-brochure features the marks with wording that specifies how Applicant’s services work; (2) Consumers have the ability to customize when pictures of their advertisements will be taken and sent; (3) The specimen references that the images will be delivered through “Smartlink Servers” “further amplify[ing] the consumer perception of the marks associated with monitoring services;” and (4) Customers frequently interact with Applicant and would be aware that the images are stored on Applicant’s server and made available through its app or website. Finally, the Board noted that the Examining Attorney did not demonstrate that Outdoorlink’s services merely accompanied the camera system and software. “While Applicant’s specimen shows the involvement of some equipment such as cameras, and refers at one point to a ‘proven product,’ the specimen does not give the impression that the marks only – or even primarily – apply to cameras, hardware, software or other goods.” And so, the refusal to register was reversed.


Read comments and post your comment here.

TTABlog comment: Is this a WYHRR? (Would You Have Refused Registration?).

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

Precedential No. 18: TTAB Affirms Trifusal of SCOOP for Ice Cream: Mere Descriptiveness, Failure-to-Function, and Unacceptable Specimen

Here's the scoop: In a 49-page opinion, the Board affirmed a trifusal (TM) of the mark SCOOP for “frozen confections and ice cream promoted and distributed by a mascot named SCOOP at product promotions and distributions of the frozen confections and ice cream,” finding that the term is merely descriptive of ice cream and lacks acquired distinctiveness, that it fails to function as a source indicator, and that Applicant Yarnell's specimens of use were unacceptable. In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039 (TTAB 2019) [precedential] (Opinion by Judge Christopher Larkin).

The Identification of Goods: Applicant Yarnell claimed that Examining Attorney Melissa Sturman had engaged in "goods mutilation" because she considered the involved goods to be "ice cream," ignoring the addition language, "as promoted or distributed by a mascot named SCOOP, at product promotions and distribution of Applicant's ice cream and frozen confection." The Board therefore first determined the import of that additional language, finding guidance in the CAFC's decision in In re i.am.symbolic, 123 U.S.P.Q.2d 1744 (Fed. Cir. 2017). There, the applicant included in its identification of various goods the phrase "associated with William Adams, professionally known as 'will.i.am.'" The CAFC agreed with the Board that:

the will.i.am restriction does not: (1) limit the goods “with respect to either trade channels or class of purchasers”; (2) “alter the nature of the goods identified”; or (3) “represent that the goods will be marketed in any particular, limited way, through any particular, limited trade channels, or to any particular class of customers.”

Similarly, Yarnell's additional language "at most" specifies that the goods will be marketed in a particular way, but it does not alter the nature of the goods in any meaningful way, or restrict the nature or type of the goods, or limited the classes of consumers. The Board acknowledged that the identification of goods specifies that SCOOP is the name of applicant's mascot, but Yarnell sought to register the mark for "frozen confections and ice cream," not live performances by a mascot. Accordingly, the Board "must assess the registrability of Applicant's proposed mark for 'frozen confections and ice cream' consumed by members of the general public."

Mere Descriptiveness: In light of a dictionary definition of "scoop," third-party usage, media references, and webpages discussing how to scoop ice cream, the Board concluded that the word means "a serving portion of ice cream and frozen confections." The word "scoop" has been disclaimed in a number of third-party registrations for marks for ice cream or frozen confections. Applicant Yarnell itself uses the word "scoop," or its pictorial equivalent, to identify the serving portion of its goods.

On the basis of the record as a whole, including Applicant’s and third parties’ uses of “scoop,” we find that the applied-for mark describes “a feature, quality, or characteristic of the goods . . . for which registration is sought,” N.C. Lottery, 123 USPQ2d at 1709, namely, that they are traditionally provided in a “scoop”-sized serving portion.

The Board rejected Yarnell's contention that SCOOP is a double entendre that also refers to "information of [sic] Yarnell products" or a "news scoop," and therefore does not merely describe the goods. The Board pointed out, however, that the second meaning of a double entendre must be "apparent upon seeing the mark in connection with the goods." In re Ethnic Home Lifestyles Corp., 708 U.S.P.Q.2d 1156, 1159 (T.T.A.B. 2003). Yarnell provided no evidence that the interpretation of the mark as a "new scoop" is one "that the public would make fairly readily" because it is "readily apparent from the mark itself." In re Calphalon Corp., 122 U.S.P.Q.2d 1153, 1163 (T.T.A.B. 2017). Here, in the context of Yarnell's goods as identified in the application, "the applied-for mark describes a serving size, not hot news."

The Board therefore found that SCOOP is merely descriptive of the goods under Section 2(e)(1).

Lack of Acquired Distinctiveness: The CAFC has long held that the more descriptive a term, the more evidence of acquired distinctiveness is required under Section 2(f). The Board found that the applied-for mark has "little or no source-identifying capacity" for the identified goods. Yarnell itself advertises that its mascot will be "giving away free scoops of ice cream." Accordingly, the Board agreed with the examining attorney that SCOOP is "highly descriptive of ice cream and frozen confections."

Yarnell argued that its five years of use of the mark entitles it to a presumption of acquired distinctiveness under Section 2(f), but the Board pointed out that Section 2(f) provides no such presumption, but rather that the USPTO may accept five years of substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness. It is not required to do so. See In re La. Fish Fry Prods., Ltd., 116 U.S.P.Q.2d 1262, 1265 (Fed. Cir. 2015). "The USPTO and the Board have discretion to find such a use claim insufficient, especially where, as here, the mark at issue is highly descriptive. Id."

Moreover, there was little evidence of Yarnell's use of SCOOP to identify the source of its ice cream at the public appearances of the mascot, and its mascot wore the SCOOP name tag only "at some events." There were no details as to the number of people viewing the events, and no evidence that the mascot or the mark has been featured in advertising. The Board concluded that Yarnell had failed to provide sufficient evidence to prove acquired distinctiveness, and so the Board rejected its Section 2(f) claim.

Inadequate Specimens: In Yarnell's specimens of use, the applied-for mark appeared only on the shirt worn by its human or cartoon mascot. Yarnell argued that this usage constituted a display associated with the goods. See Section 45.

As to the human mascot, Yarnell cited no case in which a live person was found to be a display associated with goods, and the Board found none. Yarnell acknowledged that typical displays are point-of-sale materials like shelf-talkers or banners. See TMEP Section 904.03(g). The Board did not "foreclose the possibility that a live personal appearance at an event or in a venue can qualify as a 'display associated' with the goods within the meaning of Section 45," but it found that neither the live mascot or the cartoon version so qualified.

An important factor in determining whether a specimen is an acceptable display is whether the mark "is displayed in such a way that the customer can easily associated the mark with the goods." In re Kohr Bros., Inc., 121 U.S.P.Q.2d 1793, 1795 (T.T.A.B. 2017) (quoting In re Osterberg, 83 U.S.P.Q.2d 1220, 1223 (T.T.A.B. 2007). The Board found Yarnell's use of the proposed mark to be "not particularly noticeable, much less eye-catching" when it appears on its trucks, and when used on the mascot's uniform it is likely to be perceived as the name of the mascot rather than as a source-identified for the goods." Moreover, several of the specimens do not appear to be "calculated to consummate a sale," as required for an acceptable point-of-sale display. (quoting In re U.S. Tsubaki, Inc., 109 U.S.P.Q.2d 2002, 2003 (T.T.A.B. 2014)).

The Board concluded that Yarnell's specimens of use were inadequate and it affirmed the refusal to register under Sections 1 and 45.

Failure-to-Function: The examining attorney maintained that because consumers are accustomed to seeing the term SCOOP as indicating the size of an ice cream serving, it fails to function as a source indicator because it would be perceived as merely conveying an informational message.The Board, relying on its findings as to the highly descriptive nature of SCOOPS and the nature of Yarnell's specimens of use, agreed with the examining attorney: "SCOOP also fails to function as a mark for the identified goods because, at most, it merely informs purchasers of the serving size of the goods."

Read comments and post your comment here.

TTABlog comment: Yet another decision in the steady flow of failure-to-function and inadequate specimen cases. Is this a WYHA?

BTW: The TTABlogger claims trademark rights in the term "trifusal" for blogging services in the field of trademarks.

Text Copyright John L. Welch 2019.

CAFC Affirms TTAB: "ARTISAN NY & Design" Confusable With "ARTESANO NEW YORK CITY" for Clothing

In an eight-page opinion, the CAFC upheld the Board's decision (here) affirming a Section 2(d) refusal to register the word+design mark shown below for various clothing items, finding it likely to cause confusion with the registered mark ARTESANO NEW YORK CITY for overlapping clothing items. On appeal, Applicant JS ADL argued that the cited mark is weak and not entitled to a normal scope of protection, and that in assessing the similarity of the marks the Board put too much weight on the similarity between the words ARTISAN and ARTESANO. The appellate court, however, ruled that substantial evidenced supported the Board's factual findings and it saw no error in the Board's conclusion that confusion is likely. In re JS ADL, LLC, 2019 U.S.P.Q.2d 249385 (Fed. Cir. 2019) [not precedential].

Likelihood of confusion is a question of law, which the CAFC reviews de novo, whereas the Board's factual findings underlying that conclusion are reviewed for substantial evidence. Applicant JS ADL challenged the Board's findings as to the strength of the cited mark and the similarity of the marks, as well as the Board's ultimate holding of likelihood of confusion.

The court agreed with the Board that JS ADL failed to prove that the cited mark is weak. JS ADL presented evidence only that variants of ARTISAN and NY are suggestive or descriptive, but the weakness of individual components does not prove that the combination is weak. Moreover, JS ADL's evidence of third-party registrations that included variants of ARTISAN or NEW YORK was appropriately given little weight, especially in view of the lack of evidence that these marks were in actual use.

As to the marks, the Board did not place undue weight on the words ARTISAN and ARTESANO. Although marks must be considered in their entireties, there is nothing improper in give the more dominant features greater weight. The Board made express findings regarding other features of the marks, noting that NY and NEW YORK CITY are routinely disclaimed as geographically descriptive terms and finding that the marks both suggest clothing created by tradespersons in the City or State of New York. The Board was also entitled to find that the stitch design in JS ADL's mark is suggestive of clothing and contributes little to the commercial impression created by the mark.

Nor did the Board err when it analyzed the dominant portion of JS ADL's mark, the word ARTISAN. The Board reasonably found that the terms ARTISAN and ARTESANO are highly similar in appearance and sound. The minor distinctions in spelling and pronunciation urged by JS ADL do not show that the Board wrongly analyzed the overall commercial impression of the marks.

The CAFC therefore affirmed the Board's decision.

Read comments and post your comment here.

TTABlog comment: Is this a double WYHA?

Text Copyright John L. Welch 2019.

CAFC Affirms TTAB: Louis Vuitton's APOGÉE for Perfume Confusable with APHOGEE for Hair Products

In a nonprecedential ruling, the CAFC has affirmed the Board's decision [TTABlogged here] finding Louis Vuitton Malletier's mark APOGÉE for perfume confusable with the registered mark APHOGEE for hair care preparations. During prosecution of its application, Louis Vuitton, in an attempt to sidestep the refusal, narrowed its identified channels of trade to "perfumery products for non-professional use and sold only within Louis Vuitton Malletier stores, on Louis Vuitton Malletier's website and within Louis Vuitton Malletier's store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier's exclusive distributor network." The CAFC concluded that substantial evidence supported the Board's finding that the channels of trade overlap. In re Louis Vuitton Malletier, 2019 U.S.P.Q.2d 249385 (Fed. Cir. 2019) (Fed. Cir. 2019) [nonprecedential].

Only the first four du Pont factors were at issue. As to the first factor, the similarity of dissimilarity of the marks, the court found that substantial evidence supported the Board's findings that the two marks are similar in appearance, sound, and commercial impression. Louis Vuitton argued that consumers will translate the French word APOGÉE into "height," but the court observed that "nothing suggest that a consumer would not similarly translate APHOGEE into 'height' as a variant of APOGÉE."

As to the second factor, the relatedness of the goods, again substantial evidence supported the Board's finding that the goods are related. The evidence showed that perfume and hair products are complementary goods that may emanate from the same source. [E.g., Calvin Klein sells "Aqua Essenziale" in perfume and shampoo form.]

Turning to the third factor, the channels of trade, substantial evidence supported the Board's finding that the channels of trade are related. The APHOGEE registration includes no restrictions on trade channels, and thus it is presumed that its goods travel in all normal channels of trade, including traditional brick-and-mortar stores, online department stores, and high-end retail stores. Although Louis Vuitton's application is restricted as to trade channels, it does include sales in high-end stores. Moreover, extensive evidence showed that high-end stores sell a mix of perfumery and hair care products like those at issue here.

Louis Vuitton argued that its goods would not "generally" be sold within a high-end store, and its application provides for sales only through store-within-store partnerships with high-end stores. The court observed, however, that the term "store-within-store partnership" is not defined, and Louis Vuitton conceded at oral argument that "the only record evidence describing such partnerships is a picture of a display wall and an article on a pop-up store in the common space of a mall in California." Moreover, Louis Vuitton admitted at oral argument that it has a partnership with Henri Bendel in New York that "precludes interpreting a store-within-store partnership as an independent pop-up store within the general space of a mall."

Without any evidence suggesting that a “store-within-store partnership[] with high-end retail stores” differs in any significant respect from a high-end retail store, we reject the contention that a “high-end retail store” is not a channel of trade appropriate for goods covered by the applied-for mark as well as the registered mark.

As to the fourth du Pont factor, the conditions of sale, substantial evidence supported the Board's finding that this factor was neutral. The court noted that Luis Vuitton's perfume sells for $350 per 200ml bottle, while the registrants hair products retail for about $11 per 16 ounce bottle. However, neither the application at issue nor the cited registration restrict purchasers or pricing, and “nothing prevents Louis Vuitton from developing a low-cost version of its product, or registrant from developing a high-end version of its products."

Because substantial evidence supported the Board’s findings for each factor, the court affirmed the Board’s conclusion that confusion is likely.

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TTABlog comment: The court's discussion of channels of trade is not the clearest.

Text Copyright John L. Welch 2019.