TTAB Affirms Section 2(e)(2) Geographical Descriptiveness Refusal of "SE VENDE FOR SALE AMERICA" for Marketing Consulting

The Board affirmed a refusal to register the mark SE VENDE FOR SALE AMERICA for "marketing consulting" [AMERICA disclaimed], finding the mark to be primarily geographically descriptive of the goods under Section 2(e)(2). Applicant Camarena-Vazquez argued that the mark is not geographically descriptive because SE VENDE and FOR SALE are suggestive, not descriptive, of his services. Applicant himself does not sell goods or services. These terms "suggest an end-result (i.e., consulting for others so that they may sell their goods and services)." The Board didn't buy it. In re Guillermo Camarena-Vazquez, Serial No. 87734668 (October 21, 2019) [not precedential] (Opinion by Judge Cheryl S. Goodman).

A term is primarily geographically descriptive under Section 2(e)(2) when (1) the primary significance of the term is a place generally known to the public, (2) the public would make an association between the identified goods or services and the place named in the mark, that is, believe that the goods of services for which the mark is sought to be registered originate in that place, and (3) the source of the goods or services is the geographic region named in the mark.

If there is no question that the geographic significance of the term is its primary significance and the place is neither obscure nor remote, a public association of the goods or services with the place may be presumed if, in fact, the goods or services originate from the geographic place named in the mark.

The Board found the terms SE VENDE and FOR SALE to be highly descriptive of applicant's services" “Marketing encompasses business activity that involves the selling of products and services." The addition of highly descriptive matter to a geographically descriptive term does not detract from  the primarily geographically descriptive significance of the mark as a whole.

The Board first found that AMERICA is the name of a place known generally to the American public that is neither obscure nor remote. The primary significance of "America" is a geographic location. Applicant conceded the descriptiveness of "America" by disclaiming the word.

The combination of the highly descriptive term SE VENDE FOR SALE with the geographic term AMERICA does not detract from the primary geographic significance of the composite mark.

Applicant's address is in Las Vegas, Nevada. Therefore the Board presumes that the public would make an associate between applicant's services and the place named in the mark: that is, they would believe that the services originate in America.

And so the Board affirmed the refusal to register.

In his brief, applicant requested that he be allowed to amend his application to seek registration on the Supplemental Register if the Board upheld the Section 2(e)(2) refusal. Too late, said the Board. The Board has no power to re-open an application to propose such an amendment. See Rule 2.142(b) (An application which has been considered and decided on appeal will not be reopened except for the entry of a disclaimer ... or upon order of the Director").

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TTABlog comment:  Is this a WYHA?

Text Copyright John L. Welch 2019.

District Court Dismisses Section 18 Counterclaim for "Cancellation by Restriction"

In a trademark infringement action, the U.S. District Court for the Western District of Virginia dismissed a counterclaim under Section 18 of the Lanham Act for "Cancellation by Restriction" of a registration for the mark CFA for financial advisor certification services. Defendant claimed that restricting the registration to fields other than "retirement financial planning at the employer level" would avoid confusion with its mark CPFA. The court, however, found no legal support for the proposition that Section 18 applies to civil actions, and in any case it ruled that defendant failed to allege facts that would make its claim plausible. CFA Institute v. American Society of Pension Professionals and Actuaries, Case No. 3:19-cv-00012 (W.D. Va. October 24, 2019).

Section 18 provides that in inter partes proceedings the TTAB "may modify the application or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a registered mark." The Board held in Eurostar that in order to seek restriction of the goods or services in a registration, the plaintiff must allege two elements: "(1) the entry of a proposed restriction to the goods or services in its opponent’s application or registration will avoid a finding of likelihood of confusion, and (2) the opponent is not using its mark on those goods and services that will be effectively excluded from the application or registration if the proposed restriction is entered."

The court first observed that "it is not clear that Section 18 even applies in federal court." Defendant cited no case in which a court had entertained a claim under Section 18. On the other hand, no court has held that Section 18 is inapplicable in courts.

Defendant pointed to Section 37 of the Lanham Act, which states that "In any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action." However, defendant provided no case law to support defendant's theory that Section 18 applies "by virtue of Section 37." [Then what the heck is Section 37 for? ed.].

Moving right along, the court found that even if it did accept that Section 18 and Eurostar apply in federal court, defendant's counterclaim was legally insufficient. Defendant failed to allege any facts that, if proven, how the proposed restriction would affect any likelihood of confusion in the marketplace. Moreover, defendant did not allege facts to show that plaintiff is not using its mark on the services to be excluded.

Finally, the court pointed out that plaintiff will be required to prove that defendant's use in commerce will be likely to cause confusion. "Regardless of whether Defendant's counterclaim is maintained, likelihood of confusion based on actual use will remain the central inquiry in at least resolving Plaintiff's Section 1114 claim [for infringement of a registered mark]."


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TTABlog comment: Seems to me that Section 37 by itself gives the court the power to restrict a registration. But what differencce would it make in this case?

Text Copyright John L. Welch 2019.

TTAB Posts November 2019 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled seven (7) oral hearings for the month of November 2019. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia.  Briefs and other papers for each case may be found at TTABVUE via the links provided.


November 7, 2019 - 1 PM: In re Gigit, Inc., Serial No. 87069673 [Refusal to register GIGIT for "staff augmentation services, namely, providing information technology (IT) support staff; updating and maintenance of data in computer databases" and for "computer and information technology security services, namely, providing social engineering assessments and assessing and testing the security posture and vulnerability of computer networks and the software applications that run on the networks; computer and information technology security consultation services; Information technology consultation services; information technology and computer network engineering services, namely, designing, configuring, optimizing, and implementing computer networks; computer and information technology support services, namely, help desk services and monitoring the technological functions of computer network systems; data warehousing; installation, repair, updating, and maintenance of computer software; software design and development; Information technology project management services; consulting in the field of information technology project management; IT integration services; computer systems integration services" on the ground of mere descriptiveness under Section 2(e)(1), and also on the ground that the mark shown in the drawing is not a substantially exact representation of the mark on the specimen of use].

November 12, 2019 - 2 PM: In re Toyota Jidosha Kabushiki Kaisha , Serial No. 87734664 [Section 2(d) refusal of SKYDRIVE for "aircraft; structural parts for aircraft; airplanes; structural parts for airplanes; autogyros; gliders and structural parts therefor; turbo-jet airplanes; turbo-prop airplanes; tilt rotor aircraft; propeller airplanes; helicopters; structural parts for helicopters; empennages; propellers for aircraft; propeller blade protectors for aircraft; landing gear for aircraft; landing gear wheels for aircraft; fuselages for aircraft; hot air balloons; seaplanes; airships; rotor blades for helicopters; aircraft wings; fuel tanks for aircraft; tires for aircraft; civilian drones; airplane seats; amphibious airplanes; flying cars and structural parts therefor; fitted covers for flying cars; air vehicles, namely, ultralight aircraft; structural parts for air vehicles; fitted covers for air vehicles; electrically powered motor vehicles for use in the air; structural parts for electrically-powered motor vehicles for use in the air; fitted covers for electrically powered motor vehicles for use in the air; roadable aircrafts; structural parts for roadable aircrafts; fitted covers for roadable aircrafts; rotorcraft; vertical take-off and landing propeller airplanes; vertical take-off and landing aircraft capable of road travel; vertical take-off and landing aircraft; short take - off and landing aircraft; structural parts for vertical take-off and landing aircraft capable of road travel; fitted covers for vertical take-off and landing aircraft capable of road travel; parachutes," in view of the registered mark SKY DRIVE for "speedometer speed sensors"].

November 13, 2019 - 1 PM: In re Nunn Milling Company, Inc., Serial No. 87622839 [Section 2(d) refusal of MERIDIAN for pet food in view of the registered mark MERIDIAN ANIMAL HEALTH & Design for, inter alia, "nutritional and dietary supplements for animals, namely, nutritional supplements for pets to prevent or treat dry skin, hot spots, sores, rashes, worms and other parasites, joint pain, and arthritis”].

November 19, 2019 - 11 AM: The Travelers Indemnity Company v. Trov, Inc., Cancellation No. 92067396 [Petition to cancel a registration for the mark TROV for "Computer application software for mobile devices, namely, software for collecting, indexing, storing and managing personal financial information and information relating to the user's personal and real property, sharing, bookmarking, indexing, storing, collecting and showcasing content, articles, images, and products relating to the user's personal and real property and financial assets, obtaining insurance quotes, purchasing insurance policies, purchasing and selling goods, and managing personal property for the purpose of lending, borrowing, and donating such property, and for managing information regarding personal property for use in curating on-line offers and advertising such property in connection with offers for the private sale of such property" on the ground of likelihood of confusion with the registered mark TRAVELERS and TRAV-formative marks, and the common law mark TRV, for various insurance-related services, and on the ground that registrant's mark was not in use as of the filing date of its underlying application].

November 19, 2019 - 1 PM: In re Bayco Products, Inc., Serial No. 87708217 [Section 2(d) refusal of INTEGRITAS for "Flashlights, namely, portable, rechargeable lanterns," in view of the registered mark ENTEGRITY, in stylized form, for “Light bulbs; Light bulbs, electric; Lighting fixtures; Lighting installations; Lighting tubes; Electric light bulbs; Fixtures for incandescent light bulbs; Fluorescent electric light bulbs; Halogen light bulbs; Incandescent light bulbs; LED light bulbs"].

November 20, 2019 - 11 AM: In re Southcorp Brands Pty Limited, Serial No. 88310184 [Section 2(e)(1) mere descriptiveness refusal of 19 CRIMES for “motion picture films featuring comedy, drama, action, adventure and animation; prerecorded audio tapes, audio video cassettes, audio video discs, and digital versatile discs featuring music, and motion picture films featuring comedy, drama, action, adventure and animation,” and “production, distribution and rental of motion pictures films; production, distribution, and rental of television and radio programs; production, distribution, and rental of sound and visual recordings in the nature of videos in the field of comedy, drama, action, adventure and animation; production of live-action and animated entertainment television shows; production of entertainment television and radio news programs; provision of entertainment information via communication and computer networks; providing entertainment information services via a global communications network in the nature of websites featuring a wide variety of general interest entertainment information relating to motion picture films, television show programs, musical videos, related film clips, photographs, and multimedia entertainment content; presentation of live stage shows; presentation of live show performances; theater productions; entertainer services, namely, live appearances by a professional entertainer; entertainment services, namely, displaying a series of motion picture films featuring comedy, drama, action, adventure and animation via television broadcast”].

November 21, 2019 - 1 PM: In re Medline Industries, Inc., Serial No. 87680078 [Section 2(d) refusal to register the color green (below left) as applied to gloves for  “Medical examination gloves” in view of the registered mark shown below right, for the color green as applied to the exterior of gloves for use with “Gloves for medical use; Protective gloves for medical use"].

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

Text Copyright John L. Welch 2019.

TTABlog Test: Are These Two Word+Design Marks Confusable for Food Items and Restaurant Services?

Weigel Stores applied to register the mark shown first below, for "Processed, ready to eat foods, namely, sandwiches, wrap sandwiches, pizza and pastries" and for "restaurant services," but QuikTrip West opposed, claiming a likelihood of confusion with its registered mark shown next below, for "Garden, vegetable, meat, cheese and fruit salads" and "Processed, ready to eat foods, namely, sandwiches, wraps, pastries and pasta salads." Well, they both do use the color red! How do you think this came out?  QuikTrip West, Inc. v. Weigel Stores, Inc., Opposition No. 91235273 (October 24, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The Goods and Services: The Board found that the goods overlap in part. Moreover, Applicant Weigel's restaurant services are related to QuikTrip West's food items. The "something more" required to show the relatedness of restaurant services and food items was found in evidence suggesting that "in contexts such as convenience stores and quick-serve restaurants, the same marks are used in connection with the restaurant services as are also used for food items such as sandwiches, wraps, and pastries." [Doesn't that finding blow a large hole in the "something more" requirement, since the same can virtually always be said of "restaurant services" (which encompasses an in-store restaurant at a convenience stores) and most food items? - ed.].

Strength of the term KITCHEN(S): Not surprisingly, based on dictionary definitions and third-party usage, the Board found KITCHEN(S) to be a "rather weak" formative for the involved goods and services.

The Marks: The Board deemed the "W" and the word WEIGEL'S to be the dominant elements in applicant's mark, the former reinforcing the latter. The size, color, and location of the "W" contribute to its dominance. Both KITCHEN and NOW OPEN were disclaimed by Weigel. The possessive surname form of WEIGEL'S also contributes to its dominance as the focus of the marks source-indicating capacity. In QuikTrip West's mark, the letters QT and the chef's hat design stand out as dominant.

Comparing the two marks, the Board found them "quite different." Other than the word KITCHEN(S), the literal elements have no similarities, and even the word KITCHEN(S) appears in very different fonts. The background for the W and the QT portions are both red, but of different shapes, and the chef's hat design further distinguishes the marks. The marks are phonetically different, not "similar, and nearly identical" as QuikTrip West conveniently asserted.

As to connotation, applicant's mark would perceived as referring to a kitchen operated by someone named WEIGEL, a perception reinforced by the prominent initial W. Opposer's mark centers on QT, which may be perceived as the initials of someone named QT, perhaps a chef who runs multiple kitchens. [Does QT also suggest quick time? ed.]. In sum, the connotations and commercial impressions are quite different.

The Board therefore found that the first du Pont factor weigeled weighed heavily in applicant's favor.

13th du Pont Factor: QuikTrip West claimed that Weigel was aware of its mark and exhibited a pattern of bad behavior vis-a-vis its intellectual property. Weigel argued that it repeatedly changed its mark when QuikTrip West objected, and its actions showed good faith, particularly in light of the obvious dissimilarities in the marks."

The Board found no evidence of an intent to confuse consumers. Instead the record reflected "Applicant's willingness to take some steps - albeit not all the steps Opposer wanted - to avoid confusion." The Board therefore found no bad faith in Weigel's adoption of its mark.

Conclusion: "Applicant's mark is so dissimilar to Opposer's pleaded mark, and the common element between them so weak that no likelihood of confusion exists."

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TTABlog comment:  WYHO?

Text Copyright John L. Welch 2019.

"The Original Sin of Trademark Law: Failure to Function" - Northeastern Law School, Nov. 5th

Northeastern Law School and the Boston Intellectual Property Patent Law Society (BPLA) will host a panel/roundtable discussion entitled "The Original Sin of Trademark Law: Failure to Function" on November 5th from 5:00 to 6:30 PM in Dockser Hall at the Law School. Registration (here) is free.

What can we learn from the recent increase in failure-to-function (FTF) refusals at the USPTO? For example, in recent months the TTAB has affirmed refusals to register words (e.g., SCOOP for ice cream), phrases (e.g., QUESTION OF THE DAY for a trivia website) and even a design (graphic tool for use with disk jockey software.) Is the USPTO falling back on a core principle to encompass a variety of vulnerabilities (such as mere descriptiveness, non-use as a mark, unacceptable specimens)? Is there a goal simply to make it more difficult to register dubious marks?  What are the strategic implications for applicants and challengers? This panel will cover a range of views and insights from trademark lawyers, brand owners and academia.

Panelists:

• John L. Welch, Author, TTABlog and Counsel, Wolf Greenfield & Sacks PC
• Josh Jarvis, Partner and Co-Chair, Trademark, Copyright & Unfair Competition Practice, Foley Hoag LLP
• Alexandra Roberts, Associate Professor, University of New Hampshire School of Law
• Daniel McKinnon, Head of Global Brand Protection and Senior Counsel, New Balance

Moderator:

• Susan Barbieri Montgomery, Executive Professor of Law and Business, Northeastern University

Read comments and post your comment here.

Text Copyright John L. Welch 2019.

WYHA? TTAB Affirms Section 2(e)(5) Functionality Refusal of Packaging for Cables and Wire.

In a thorough, 39-page opinion, the Board affirmed a Section 2(e)(5) functionality refusal of the packaging designs shown below for "electric cables and wire." The Board found that numerous features of the designs were "dictated by the utilitarian purpose they serve." Moreover, applicant's own patents revealed "the functionality of significant aspects of the designs," and its advertising touted some of the features. Alternatively, the Board concluded that the packaging designs are not inherently distinctive and lack acquired distinctiveness. Would you have appealed? In re My Reelex Packaging Solutions, Inc., Serial Nos. 87285383 and 87285412 (October 23, 2019) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).

Functionality: Applicant Reelex described the designs as a box with square sides and rectangular front, back, top, and bottom, and a small circular hole in the center of the front of the box with a payout tube and collar positioned with the hole. Reelex touted itself a leader in the figure-8 winding business and bragged that its box designs have been the “standard” for many years.

These claims suggest that competitors need to use boxes of the same general size and shape in order to meet stacking needs and shelf spacing at warehouses, distribution centers, and retail outlets. Using nonstandard packaging would place Applicant’s competitors (or competitors of Applicant’s licensees) at a substantial disadvantage,  which suggests the standard box designs at issue here are functional.

Reelex’s winding “technology dates back to World War II when the REELEX figure-eight coil was first proposed to the military as a way to lay down field wire while still allowing an infantryman free use of both hands.” Reelex obtained patents for this technology. "The technology proved particularly useful for small gauge wire and cable and eventually led to what Applicant calls its REELEX system." "Applicant’s competitors have a right to use box designs that will work well with figure 8 wound coils no longer covered by patents."

The Board described seven useful features of Reelex's boxes designed for the figure-8 winding system.

The seven useful features . . .  combine to define a box with at least the following characteristics:

• square side panels and rectangular front, back, top and bottom panels, where the rectangular panels are narrower than long;
• a payout hole positioned near the center of the front panel;
• a payout tube extending from the payout hole to the center of the coil; and
• sizing that fits the coil snugly and a hole sizing that accommodates different sized cable and wire.

These features are all present in the ’383 and ’412 boxes and show that the designs were dictated by the utilitarian purpose they serve.

The Board found that these combined features are “essential to the use or purpose of the article or affect[] the cost or quality of the article," Inwood Labs., Inc. v. Ives Labs., Inc., 456 US 844, 214 USPQ 1, 4 n.10 (1982), and therefore the designs are de jure functional.

Although this analysis sufficed to establish Section 2(e)(5) functionality, the Board went on to discuss the Morton-Norwich factors. As to Reelex's expired patents: "Overall, the disclosures and preferred embodiments in the patents reveal the functionality of significant aspects of the designs." Reelex's advertising touted a number of useful benefits of the designs. The Board saw no evidence of alternative designs, noting that when a design is de jure functional under Inwood, alternative designs are irrelevant anyway.

Acquired Distinctiveness: Assuming arguendo that Reelex's designs are not functional, the Board considered its claim of acquired distinctiveness under Section 2(f). [Reelex did not argue that the designs are inherently distinctive]. "Given the common nature of the trade dress before us, we find that only a strong showing of acquired distinctiveness will suffice. Applicant’s evidence falls far short of satisfying this standard."

Reelex's advertising and packaging always displayed the REELEX mark, and the Board noted that "[c]onsumers are not likely to rely on the design of the box as a source identifier when Applicant’s licensees prominently feature these two trademarks on the boxes." There was no evidence of media recognition and no survey evidence. Third-parties who use similar trade dress also display their own trademarks, and so this was not evidence of copying Reelex's trade dress.

Reelex also submitted five declarations that were "nearly identical and formulaic (although the use of reordered sentences may make the declarations appear different)." The Board found that the declarations actually tended to show that the designs are not distinctive. There were no declarations from retailers or end users of electrical wire and cable.

Four of the five declarants are licensees of Applicant and, therefore, stand to benefit if Applicant is successful here. These are presented as sophisticated, knowledgeable declarants from different companies. Yet each declarant made exactly the same statements about the trade dress. Clearly someone other than the declarants prepared these documents. All of these considerations undermine the reliability of the declarations. The fifth declarant represents a large trade group. We would be inclined to place more weight on this declaration if it had addressed industry-wide understanding, but it is essentially identical to all the others. We find this declaration also has little probative value.

The Board found that the evidence of record, including direct and circumstantial evidence, "does not prove the two box designs have acquired distinctiveness. And the Applicant has effectively conceded that its packaging trade dress is not inherently distinctive."

Conclusion: "The refusals to register Applicant’s ’383 and ’412 box designs are affirmed both because the designs are functional, and because they are not distinctive."

Read comments and post your comment here.

TTABlog comment: Well, would you have? Note that one of the panelists was Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office.

Text Copyright John L. Welch 2019.

District Court Dismisses PRETZEL CRISPS Section 1071(b) Appeal for Lack of Subject Matter Jurisdiction

The U.S. District Court for the Western District of North Carolina dismissed Princeton Vanguard's civil action seeking review of the TTAB's September 6, 2017 decision finding PRETZEL CRISPS to be generic for pretzel crackers. [TTABlogged here]. That 2017 Board decision was issued after the CAFC in May 2015 reversed Board's original 2014 decision and remanded the case with instructions to apply the correct genericness standard. [TTABlogged here]. Judge Kenneth D. Bell, considering the issue of subject matter sua sponte, ruled that because Princeton Vanguard had appealed the first Board decision to the CAFC under Section 1071(a) of the Lanham Act, it had waived its right to proceed in the district court (rather than the CAFC) as to the second Board decision. Therefore, the district court lacked subject matter jurisdiction over the action. Princeton Vanguard, LLC and Snyder's Lance, Inc. v. Frito-Lay North America, Inc., 2019 USPQ2d 401574 (W.D.N.C. 2019).

The court observed that it must dismiss an action under FRCP 12(b)(3) if it determines at any time that it lacks subject matter jurisdiction. Plaintiffs filed this action on November 6, 2017. When Judge Bell, newly assigned to the case, reviewed the parties' summary judgment motions he concluded that the issue of subject matter jurisdiction needed to be addressed. The parties filed memoranda regarding the issue on October 10, 2019. The court dismissed the case, without prejudice, on October 21, 2019.

The court saw the issue as one of first impression. It began its analysis with the wording of Section 1071 of the Lanham Act, observing that Section 1071 provides two avenues for appeal: to the CAFC under Section 1071(a) or by way of civil action in a district court under 1071(b).

However, the statute makes clear–twice–that a dissatisfied party may not do both. In §1071(a), the statute says that a party who files an appeal with the Federal Circuit waives his right to seek District Court review under §1071(b),and then in §1071(b) the statute again specifically prohibits parties who have taken an appeal to the Federal Circuit from filing a civil action. Therefore, the plain language of the statute does not allow a dissatisfied party who has taken an appeal to the Federal Circuit under §1071(a) to later exercise the option to file a civil action under §1071(b).

Furthermore, Section 1071(a)(4) provides that the CAFC's determination of an appeal "shall govern the further proceedings in the case." If plaintiffs were allowed to bring this civil action, the de novo review by the court would be "constrained by the Federal Court's ruling."

The only interpretation of the statute that gives full effect to the mandated primacy of a Federal Circuit opinion under §1071(a)(4), and avoids the conflict of one Court of Appeals being “bound” by the decision of another Court of Appeals in an appeal from one of its District Courts, is to not allow parties to file an appeal in District Court after a Federal Circuit appeal has been filed. Appeals from TTAB opinions will thus be heard either by the Federal Circuit, who can best interpret and apply its own prior ruling in the event there was an earlier appeal, or in the first instance by a District Court and later the Court of Appeals for the circuit in which the District Court sits if there is no appeal to the Federal Circuit. This procedure, which gives full meaning to all of the provisions of §1071, is plainly a better and more efficient process for fairly resolving trademark disputes.

And so the court found that plaintiffs waived their right to appeal to the district court by taking their first appeal to the Federal Circuit. Consequently, this court lacked subject matter jurisdiction to hear this action.

Read comments and post your comment here.

TTABlog comment: The dismissal of the civil action was "without prejudice." Can the plaintiffs now appeal to the CAFC from the Board's second decision? Would the appeal be timely?

Text Copyright John L. Welch 2019.

Schwimmer and Welch: "U.S. Law Inches Towards Protecting Trademark Reputation Without Use"

Marty Schwimmer and Yours Truly co-authored an article in the Autumn 2019 issue of World Trademark Review, entitled "U.S. Law Inches Towards Protecting Trademark Reputation Without Use." [pdf here].

Trademark reputation without use is a jurisprudential paradox. Because of the international flow of information, use of a trademark in one country may give rise to a commercially valuable reputation in another where that trademark has not yet been used (at least not by the first owner). The goodwill arising from that reputation could be exploited by another party and consumers could be confused or deceived. This suggests that the reputation should be protected. However, such a proposition is antithetical to the conventional view (under US practice, at least), which defines ‘trademark reputation’ as the propensity of consumers to continue doing business with a merchant based on favourable prior experiences. In short: no trade, no trademark.

Two US Court of Appeals opinions have created the possibility that a plaintiff could bring a passing-off action based on use of its trademark outside of the United States only – a powerful new tool for challenging infringers that are first to use the trademark in the United States

Following the Supreme Court’s 2014 decision in Lexmark International, Inc v Static Control Components, Inc (572 US ___, 134 S Ct 1377 (2014)), interpreting the Lanham Act in a false advertising case, two recent US Court of Appeals opinions – both involving the alleged misappropriation of well-known Mexican trademarks by US companies – have interpreted the unfair competition provision of the Lanham Act in a new way, opening up the possibility that a plaintiff may be able to bring a passing-off action, alleging use of its trademark only outside the United States coupled with a reputation within the United States. Although the discussion of potential damages in the two cases is problematic (as we explain here), it may mean that non-US trademark owners have a powerful new tool with which to challenge infringers that are first to use the foreign owner’s mark in the United States.

Schwimmer (left), Welch (right)
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TTABlog comment: Marty and I represented Belmora at the district court and through the first Fourth Circuit appeal, and we represented Paleteria La Michoacana, Inc. at the D.C. Circuit.

Text Copyright John L. Welch 2019.

TTABlog Test: Are SIELLA’S and CIELA Confusable for Skin Care Products?

[This guest post was written by Stephanie Stella, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. The USPTO refused to register the mark SIELLA’S (standard characters) for “skin care products, namely, face moisturizer, face cream, anti-aging cream, acne cream in the nature of organic herbal cream cleanser not for medical purposes, night cream, face oil, eye cream, hand cream,” deeming the mark likely to cause confusion with the registered mark CIELA (standard characters) for, inter alia, “non-medicated skin care creams and lotions; non-medicated skin care preparations.” The goods are legally identical and the Board must presume that the overlapping goods travel in the same trade channels to the same classes of consumers. What about the marks? Too close? How do you think this came out? In re S.I. Consulting Ltd., Serial No. 87821370 (October 16, 2019) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Similarity of the goods and trade channels/consumers: Examining Attorney Mark S. Tratos concluded that Applicant’s goods “are encompassed by and legally identical to Registrant’s ‘non-medicated skin care creams and lotions,’ and ‘non-medicated skin care preparations.’” Applicant did not dispute the relatedness of the goods. Because the goods are in part legally identical, the Board presumed they travel in the same trade channels to the same classes of consumers. The Board thus found that the DuPont factors of the similarity of the goods, the channels of trade, and classes of purchasers strongly favor a finding of likelihood of confusion.

Similarity of the marks/commercial impression: Citing the Federal Circuit’s decision in Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992), the Board noted, “When trademarks would appear on virtually identical goods, as is the case here, ‘the degree of similarity necessary to support a conclusion of likely confusion declines.’” Applicant acknowledged that “the parties’ marks are visually similar because they both contain the vowels and letters IELA/IELLA in the same order and combination.” However, it insisted that that marks are “different in appearance” because (1) its mark begins and ends with the letter “S,” while Registrant’s mark begins with the letter “C” and ends with the letter “A,” (2) its mark includes an apostrophe, and (3) the overlap of the letters “IEL” does not render the marks sufficiently visually similar. The Board rejected Applicant’s arguments, finding that these differences “do[] little to distinguish the marks’ appearance,” and concluding that marks are visually similar.

As to sound, the Examining Attorney submitted evidence that “Ciela” and “Siella” are both pronounced “see ella.” Applicant countered that its mark is pronounced “si – elle – las” while Registrant’s mark is pronounced in a manner similar to the Spanish word “cielo.” The Board sided with the Examining Attorney and, citing In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227, 227 (CCPA 1969), found that “[a]lthough there is no correct pronunciation of a trademark,” the marks would likely be pronounced similarly.

As to connotation and resulting commercial impression, Applicant argued that its mark SIELLA’S refers to “the daughter of Applicant’s owner whose name is Siella,” while Registrant’s mark CIELA is similar to the Spanish word “cielo” and thus refers to “sky.” It contended that CIELA thus “provoke[s] consumers to associate the registered mark with ‘cielo’ and the beauty and purety [sic] of [Montana] the Big Sky State,” where Registrant is located. The Board pointed to evidence in the record that “Siella” is an alternate spelling for the given name “Ciela,” and that the name means “heavenly.” The Board also noted that the English translation of “cielo” is “sky” or “heaven.” The Board thus concluded that the marks have similar connotations that create similar commercial impressions.

Conclusion: Weighing the Du Pont factors, the Board concluded that confusion between the parties’ marks is likely.

And so the Board affirmed the refusal to register.

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TTABlog comment: Is this a WYHA?

Text Copyright Stephanie Stella 2019.

TTABlog Test: How Did These Three Recent TTAB Appeals Come Out?

Here are three decisions issued by the TTAB last Friday, the first a Section 2(e)(1) mere descriptiveness refusal, the second a Section 2(e)(4) surname refusal, and the third a Section 2(d) likelihood of confusion refusal. How do you think they came out? Answers in first comment.

In re John Brent Moetteli , Serial No. 86491129 (October 18, 2019) [not precedential] (Opinion by Judge Frances Wolfson). [Section 2(e)(1) refusal of CASTLELOVERS for "Matchmaking services; services, namely, providing an on-line computer database featuring single people interested in meeting other single people" [Note example of use below]].

In re Kirsh Helmets, Inc. , Serial No. 87390575 (October 18, 2019) [not precedential] (Opinion by Judge Christen M. English). [Section 2(e)(4) refusal to register KIRSH for "crash helmets, motorcycle helmets; protective helmets; safety helmets; safety goggles; motorcycle goggles" on the ground that the mark is primarily merely a surname. [The Board found that KIRSH is a "somewhat rare" surname, and applicant argued, inter alia, that the mark stands for "Kinetic Impact Reactive Safety Helmet"]].

In re Sergei Orel, Serial No. 87546394 October 18, 2019) [not precedential] (Opinion by Judge Linda A. Kuczma). [Section 2(d) refusal of the mark TABOO for "Alcoholic beverages, except beer; Sparkling wines; Vodka; Wine" in view of the registered marks TABU for "Spirituous beverages" and HANDSOME DEVIL TABOO for "Alcoholic beverages, except beer" [Applicant asserted that the cited mark TABU is used only for absinthe and that sophisticated purchasers would be able to distinguish the marks]].

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHAs?

Text Copyright John L. Welch 2019.

TTABlog Quarterly Index: July - September 2019

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the TTABlog on Twitter: @TTABlog.


Section 2(a) - Deceptiveness:

• TTABlog Test: Is “Pili” Deceptive for Cosmetics Not Containing Pili Oil?

Section 2(a) - False Association:

• TTAB Affirms Section 2(a) False Connection Refusal of CALIFORNIA BEEMERS for Auto Dealership
• Precedential No. 25: TTAB Grants Section 2(a) Cancellation Petition: SCHIEDMAYER for Pianos Falsely Suggests a Connection with Petitioner

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Is This Fish Hook Design Mark for Clothing Confusable with "VF" for Retail Clothing Services? [Yes]
• TTABlog Test: Is This Word+Design Mark for Whiskey Confusable with "OUTLAW" for Alcoholic Beverages? [Yes]
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Come Out?
• TTABlog Test: Is "ISABEL MORANT" Confusable with "MORANT" for Perfumes and Cosmetics? [Yes]
• TTAB Finds "LINGO BUS" for Language Education Communication Services Confusable with "LINGO" for Telecommunication Services
• "UHJ" Confusable with "UNIVERSAL HOUSE OF JUSTICE" for Religious Services, Says TTAB
• TTABlog Test: Is "HYDRAPORE" for Breathable Waterproof Fabric Confusable with "HYDRO PORE" for Clothing? [Yes]
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• Precedential No. 24: RICHARD MAGAZINE Not Confusable With RICARDO for Related Services, Says TTAB
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• Precedential No. 22: PIERCE-ARROW for Autos Confusable With PIERCE ARROW SOCIETY, Says TTAB
• TTABlog Test: Are These Two Four-Legged Animal Design Marks Confusable for Clothing?
• TTABlog Test: Are These Two "CANNONBALL" Marks Confusable for Beer? [no]
• TTABlog Test: Is "KP QUIK STOP & Design" Confusable With KWIK STOP for Convenience Stores? [No]
• Fame of VOLVO Mark Brings Section 2(d) Victory over WOLVOL for Computers
• TTABlog Test: Is "LIQUOR SLINGER DISTILLING" for Liquor Confusable with "SLINGER" for Shot Glasses? [Yes]
• TTAB Finds WIZGEAR Confusable with THE WIZ and NOBODY BEATS THE WIZ, Denies Abandonment and Fraud Counterclaims
• SMART WIFI Confusable With WI-FI Certification Mark, Says TTAB
• TTABlog Test: Is VITAL FLORA for Pet Supplements Confusable With FLORAVITAL for Supplements? [Yes]
• TTAB Reverses Section 2(d) Refusal: Goods Unrelated and Consumers Sophisticated
• TTABlog Test: Are Packaged Sprits and Rum Related to Restaurant Services Under Section 2(d)? [Yes]
• TTABlog Test: Is MAIN LINE REFRESH Confusable With MAIN LINE HEALTH or MAIN LINE PLASTIC SURGERY? [No]

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

• TTAB Sustains Section 2(e)(1) Opposition, Finding "IR DEFENSE" Merely Descriptive of Protective Beauty Serums
• TTAB Finds SKEETER BAND Merely Descriptive of . . . Guess What?
• Precedential No. 19: TTAB Finds Certification Mark Merely Descriptive, Lacking Acquired Distinctiveness
• Precedential No. 18: TTAB Affirms Trifusal of SCOOP for Ice Cream: Mere Descriptiveness, Failure-to-Function, and Unacceptable Specimen
• TTABlog Test: How Did These Three Mere Descriptiveness Appeals Come Out?

Section 2(e)(4) - Primarily Merely a Surname

• TTABlog Test: Is "KERRIDGE COMMERCIAL SYSTEMS" Primarily Merely a Surname? [Yes]

Section 2(e)(5) - Functionality:

• Some Thoughts on Why Product Configuration Marks Seldom Survive TTAB Scrutiny
• Precedential No. 23: TTAB Affirms Section 2(e)(5) Functionality Refusal of Umbrella Configuration
• TTAB Finds Wedge Shape for Yoga Blocks Functional Under Section 2(e)(5)
• Package Configuration Mark for Canned Fish Deemed Non-Functional but Lacks Acquired Distinctiveness, Says TTAB

Genericness:

• On Remand, TTAB Finds CORN THINS and RICE THINS Generic for a Sub-Category of Crackers
• TTAB Finds "BIG SIX" Generic for . . . . Guess What?
• Precedential No. 21: TTAB Finds MALAI Generic for Ice Cream

Nonuse/Specimen of Use/Failure to Function:

• TTAB Says Series of PREDICTIVE ENTREPRENEUR Educational Lectures Is Not a Single Work
• TTAB Affirms Two More Failure-to-Function Refusals
• TTAB Affirms Refusal of THERAFIT Because it Identifies a Component, Not Applicant's Bed Sheets
• Single Book Title Fails to Function as a Trademark, Says TTAB
• TTAB Affirms Rejection of Specimens That Do Not Associate the Mark with the Goods
• Precedential No. 17: Specimens Fail to Show Use of Mark for Retail Store Services, Says TTAB
• TTAB Affirms Failure-to-Function Refusal of Graphic Tool Used By DJ's For Harmonic Compatability
• WORLD'S BEST DOWN Incapable of Functioning as a Trademark for Bedding Containing Down, Says TTAB
• Ubiquitous "Uncle Sam" Image Fails to Function as a Trademark , Says TTAB
• "100% REAL CALLINECTES CRAB FROM NORTH AMERICA" Fails to Function as a Trademark for Crabmeat, Says TTAB
• TTABlog Test: Is This Electronic Brochure an Acceptable Specimen for Billboard Monitoring Services?
• Precedential No. 18: TTAB Affirms Trifusal of SCOOP for Ice Cream: Mere Descriptiveness, Failure-to-Function, and Unacceptable Specimen
• “QUESTION OF THE DAY” Fails to Function as a Mark for a Trivia Website, Says TTAB

Ownership:

• TTAB Sustains Opposition to HOLLYWOOD HOTEL on Non-Ownership Ground

Unlawful Use:

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

Discovery/Evidence/Procedure:

• TTAB Affirms Two More Failure-to-Function Refusals
• Precedential No. 27: TTAB Excludes Evidence Due to Spoliation, But Declines to Enter Judgment as a Sanction
• Precedential No. 26: TTAB Dismisses Cancellation Proceeding Due to Petitioner's Fabrication of Evidence
• TTAB Dismisses YOGOLÉ Opposition: Opposer Failed to Prove Standing
• Precedential No. 20: TTAB Declines to Strike Summary Judgment Motion as Untimely After Respondent Consented to Extension
• Precedential No. 16: Options for Cross-Exam of Foreign Trial Witness Are Limited, Says TTAB

CAFC Opinions:

• CAFC Affirms TTAB: Appellant Waived Arguments by not Raising Them at the Board
• CAFC Affirms TTAB: "ARTISAN NY & Design" Confusable With "ARTESANO NEW YORK CITY" for Clothing
• CAFC Affirms TTAB: Louis Vuitton's APOGÉE for Perfume Confusable with APHOGEE for Hair Products

Other:

• TTAB Posts October 2019 Hearing Schedule
• Griff Thomas Reports On "DENIM & CO." Oral Hearing
• TTAB Posts September 2019 Hearing Schedule
• USPTO Examination Guide: Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants
• Current Roster of TTAB Judges (August 2019)
• TTAB Posts August 2019 Hearing Schedule

Text Copyright John L. Welch 2019.

Divided TTAB Panel Reverses Section 2(d) Refusal of MINIBAR SMARTSNAX for Minibar Snack Food

A divided Board panel reversed a Section 2(d) refusal of MINIBAR SMARTSNAX for packaged snack food "for distribution through refrigerators and food storage cabinets having sensors to detect presence and removal of packages." The panel majority found no likelihood of confusion with the marks SMART SNACKS for candy and THE SMART SNACK for processed nuts. The judges disagreed as to whether the involved goods travel in different channels of trade and whether purchasers of applicant's good will exercise more than ordinary care. In re Minibar North America, Inc., Serial No. 87130884 (October 15, 2019) [not precedential] (Opinion by Judge Jyll Taylor).

The Board found the marks to be more similar than dissimilar. Applicant's third-party website and registration evidence was inadequate to show that the cited marks are weak. However, THE SMART SNACK for processed nuts has some inherent weakness in that "it connotes a beneficial snack." As for the goods, the Board found them to legally identical insofar as candy and nuts are concerned.

Turning to the channels of trade, because there are no restrictions in the cited registrations, the panel majority recognized that the Board must presume that they travel "through all usual channels of trade to all normal potential purchasers." (emphasis in original). However, the panel majority found that the "established, likely-to-continue channels of trade are distinct." Applicant's goods are limited to sale to hotels, motels, and temporary stay facilities through sensor-enabled units. These channels are "outside of the usual ones" for registrant's goods, and the examining attorney did not provide any evidence to establish the relatedness of the trade channels.

Moreover, the panel majority agreed with applicant that "professional temporary lodging purchasers" of applicant's goods will exercise more than ordinary care in their purchasing decisions. Applicant's goods will likely be purchased in larger quantities and must be appropriately packaged.

The panel majority concluded that the similarity between the marks and the identity of the goods were outweighed by the distinct trade channels and the purchaser care vis-a-vis applicant's goods, and so it reversed the refusal.

Judge Christopher Larkin, in dissent, contended that the panel majority had misapplied the third du Pont factor (trade channels), leading to an incorrect finding under the fourth factor (sophistication of purchasers).

Judge Larkin maintained that the unrestricted identifications of goods in the cited registrations, when properly construed, encompass the specific trade channels set forth in the subject application. It was improper for the majority to read into the registrations any limitations on channels of trade. The Board "may not assume, as the majority does, that only Applicant, and never Registrants, would sell candy and nuts to "hotels, motels, and temporary stay facilities" for  distribution through minibars. Thus the channels of trade for the involved goods overlap, and presumably so do the classes of consumers.

As to purchaser sophistication, Judge Larkin opined, because the channels of trade and classes of customers overlap, the Board must assume that these overlapping purchasers exercise the same degree of care. He would deem this fourth factor to be neutral.

Read comments and post your comment here.

TTABlog comment:  What do you think?

Text Copyright John L. Welch 2019.

WYHA? TTAB Affirms Mere Descriptiveness Refusal of CONSERVATIVE INSTITUTE for On-Line Information Services

In an opinion of just over seven pages, the Board affirmed a Section 2(e)(1) refusal to register CONSERVATIVE INSTITUTE for providing on-line information if the fields of politics class 35), entertainment (class 41), and religion (class 45). Applicant feebly pointed to two existing registrations for marks containing the word CONSERVATIVE, but the word was disclaimed in one registration and the other was a Supplemental Registration. Would you have appealed? In re Conservative Institute, LLC, Serial No. 87658084 (October 8, 2019) [not precedential] (Opinion by Judge Thomas W. Wellington).

Examining Attorney Steven W. Jackson submitted dictionary definitions of CONSERVATIVE and INSTITUTE, as well as printouts from applicant's website that demonstrated "the plain meaning of each term in the proposed mark and the manner in which they combine to convey important information about applicant's services." The Board found that the alleged mark "describes both the source (an 'institute' or organization) and the content ('conservative' or traditional values) of the information being provided."

As Applicant itself states, it is an “organization” that prides itself on providing “principled defenses of conservatism with daily content” on its website. In the context of the services recited in the application, consumers will immediately understand the proposed mark to convey information about the content of the services, namely, that the on-line information provided via a global communications network in the fields of politics, entertainment and religion will reflect conservative beliefs or a conservative perspective as part of Applicant’s effort to “help people understand the conservative narrative.” As Applicant puts it, it provides “news and analysis from a conservative worldview.”

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2019.

TTAB Affirms Failure-to-Function Refusal of Informational Phrase for Bumper Stickers

Finding that the purported word+design mark shown below is "merely an ornamental or informational feature" of Applicant Steven Schalk's "bumper stickers," the Board affirmed a failure-to-function refusal under Sections 1, 2, and 45 of the Trademark Act. In re Schalk, Serial No. 86183499 (October 10, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).

Once again, the question for the Board was whether the public would perceive the purported mark as a source indicator for the identified goods. In making that determination, the Board may consider the “size, location, dominance, and significance of the alleged mark." The claimed mark comprises the entirety of the identified goods: bumper stickers.

Citing prior decisions involving the slogans "No More RINOs! for bumper stickers, "THINK GREEN" for weather stripping and paper products, and "WATCH THAT CHILD" used on bumper stickers in connection with construction materials, the Board found that the alleged mark "essentially conveys a message or opinion that consumers are likely to perceive as informational rather than source identifying."

The Board recognized that an ornamental design" may, in some cases, inform the purchasing public of 'the source of the [goods], not the source of the manufacture, but the secondary source.'"

In the context of an ornamentation refusal, "'secondary source' simply means that the use of the design or words would be perceived by the consumer as an indicator of source due to the applicant's prior use or registration of the mark for other goods or services (not the applied-for goods)." In re Lululemon Athletica Canada, 105 USPQ2d at 1690 n. 4.

However, Applicant Schalk offered no evidence of prior use or registration of his purported mark that could indicate a secondary source.

And so the Board concluded:

Applicant’s applied-for mark is informational rather than source-identifying, and since Applicant has not submitted any evidence of acquired distinctiveness or secondary source, we affirm the refusal to register under Sections 1, 2, and 45 on the ground that the applied-for mark as used on the specimen of record is merely an ornamental or informational feature of the goods and does not function as a trademark to indicate the source of Applicant’s goods and to identify and distinguish them from others.

Read comments and post your comment here.

TTABlog comment: In addition, Examining Attorney Alison F. Pollack had issued final refusals under Section 2(b), which refusal was withdrawn on appeal, and under the disparagement provision of Section 2(a). The appeal was suspended pending the Supreme Court's decision in Matal v. Tam, which then rendered the Section 2(a) disparagement refusal moot.

Text Copyright John L. Welch 2019.

TTABlog Test: How Did These Three Recent Section 2(d) Appeals Come Out?

A TTAB judge once told me that in 95% of Section 2(d) cases, one can predict the outcome just from looking at the marks and the involved goods/services. Here are three recent decision in Section 2(d) appeals. How do you think these came out? [Answer in first comment].

In re Brite and Clean, Inc., Serial No. 87384194 (October 7, 2019) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of BRITE & CLEAN & Design for "Cleaning preparation; water stain removal cleaning preparations; shower cleaning preparation; window cleaning preparation; bathroom cleaning preparation; glass cleaning preparation; cleaning preparation in powder form; cleaning wipes impregnated with a cleaning preparation; none of the foregoing for use with eyeglasses" in view of the registered mark CLEAN AND BRIGHT for "all-purpose cleaners"].

In re Sergei Orel, Serial No. 87545405 (October 4 2019) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of ARATTA for "Alcoholic beverages, except beer; Sparkling wines; Vodka; Wine" in view of the registered mark AURATA for "grape wine; still wine; table wines; white wine; wine; wines"].

In re Ballast Capital Advisors LLC, Serial No. 87509097 (October 2, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of the mark BALLAST CAPITAL ADVISORS & Design for "financial planning and investment advisory services" [CAPITAL ADVISORS disclaimed] in view of the registered marks BALLAST POINT VENTURES, in standard character and design form, for "financial services, namely, venture capital, financial and investments consulting, financial and investments advice and financial and investments banking" [VENTURES disclaimed] and the mark BALLAST for "real estate investment services"].

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHAs? BTW, why would one include both "wine" and "wines" in the identification of goods?

Text Copyright John L. Welch 2019.

TTAB Finds THE VITAMIN SHOPPE Generic for . . . . Guess What?

Despite applicant's 40 years of use of the phrase "THE VITAMIN SHOPPE," the Board affirmed four refusals to register the mark THE VITAMIN SHOPPE & V Design (in four variations) for vitamins and related retail store services, due to applicant's failure to comply with a requirement for disclaimer of that phrase. In re Vitamin Shoppe Procurement Services, Inc., Serial Nos. 86905555, 86905614, 86905620, 86905628 (October 4, 2019) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).

Determining genericness requires a two-step inquiry: what is the genus of the goods or services at issue, and does the relevant public understand the term at issue to refer to that genus? The Board found the genus of services to be a "health and wellness store that primarily sells dietary and nutritional supplements." The genus for the goods "includes the types of products Applicant sells in its health and wellness stores." The marks, when used on goods, are house marks that identify the store in which the goods are sold. "[I]t follows that if the phrase THE VITAMIN SHOPPE is generic for the type of store operated by Applicant, the phrase is also generic when used on the goods at issue here."

Examining Attorney Mark S. Tratos submitted nearly 100 examples of generic use of "vitamin shop" from news reports, business reports, and books. "This evidence clearly and convincingly shows that a vitamin shop is a type of store."

Applicant argued that the word "shoppe" is different enough from "shop" to cause different understandings of the two phrases. But dictionary evidence equated the two words and there was no evidence that consumers understand the word 'shoppe' as used by Applicant to mean anything other than a shop or store." Two examples showed use of "The Vitamin Shoppe" to refer specifically to Applicant, but two is "not enough to indicate that the primary meaning of 'The Vitamin Shoppe' is as a trademark."

Applicant pointed to its ownership of six registrations for marks that include the phrase "The Vitamin Shoppe," including two registrations for the phrase by itself. Irrelevant, said the Board. Each application must be examined on its own record. See, e.g., In re Cordua Restaurants [CHURRASCOS in stylized form found to be generic for restaurant services despite registration of the word in standard character form].

Applicant contended that its Thermos-style survey evidence proved that "The Vitamin Shoppe" is a trademark, but the Board pointed out that this is not a situation where a coined term or phrase is alleged to be generic. Instead the question here is the opposite: whether a generic phrase has become a distinctive mark. The Board has held that consumer surveys are irrelevant in this context. See, e.g., In re Hitari. Consequently, the Board was "inclined to give little, if any, weight to the survey offered by Applicant."

The evidence of consumer use in the record shows that the phrase “the vitamin shop” is generic. Applicant points out that none of this evidence shows use of the phrase “The Vitamin Shoppe” in a generic fashion. Dictionary evidence covers that gap by showing that “shoppe” is a different spelling of “shop” and that any different meaning of the “shoppe” variant is not relevant here. In short, the other evidence of record shows clearly and convincingly that “The Vitamin Shoppe” is generic for the goods and services identified in the applications at issue here.

For the sake of completeness, the Board evaluated the survey evidence, despite the precedent that a survey is not relevant here.

In a Thermos-type survey, participants are asked what they would call a particular type of product or service. The Thermos survey may provide inconclusive results if a product or service has more than one generic name. "A Thermos-type survey can be useful in identifying potentially generic terms, and it may even show what generic terms are more frequently used by consumers. Beyond that, a Thermos survey may prove nothing."

Applicant's survey deviated from the Thermos model, and the Board found the methodology flawed and the results inconsistent and "perplexing." Data concerning the actual responses was not provided. The Board therefore found that the survey evidence "falls far short of raising doubts as to the genericness of the phrase 'The Vitamin Shoppe.'"

Finally, as to applicant's use of "The Vitamin Shoppe" for more than 40 years, the Board pointed out that "even long and successful use of a term does not automatically convert a generic term into a non-generic term." It concluded that the disclaimer requirements were appropriate because "Applicant does not have exclusive rights to the phrase 'The Vitamin Shoppe.'"

To allow registration without a disclaimer would place Applicant’s competitors at risk if they identify their stores a “vitamin shop,” or “the vitamin shop.” That result is unacceptable given the evidence of record.

The Board observed that this is "the risk one takes when it uses a generic term to identify its goods or services."

The Board therefore affirmed the disclaimer requirement.

Read comments and post your comment here.

TTABlog comment: Do you see an appeal in your crystal ball? Would you consider a civil action for review of the Board's decision, bolstered by a better survey?

Text Copyright John L. Welch 2019.