Tuesday, December 31, 2019

TTABlog Quarterly Index: October - December 2019

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Section 2(d) - Likelihood of Confusion:


Section 2(e)(1) - Mere Descriptiveness:
Section 2(e)(2) - Primarily Geographically Descriptive:
Section 2(e)(5) - Functionality:
Abandonment:
Genericness:
Nonuse/Specimen of Use/Failure to Function:
Ownership:
Discovery/Evidence/Procedure:
Recommended Reading:
Schwimmer (left), Welch (right)
CAFC Opinions:
Other:
Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/31/2019   0 comments

Monday, December 30, 2019

Ninth Circuit Reverses District Court: No Claim Preclusion from TTAB Dismissal of Cancellation Petition

The U.S. Court of Appeals for the Ninth Circuit reversed (in part) a district court's dismissal of a civil action for unfair competition, trademark dilution, and trademark infringement involving Defendant Meenakshi's three marks registered for sesame seed oil. The district court had dismissed the claims as to one of the marks (the "'654 mark") on the ground of claim preclusion, based upon the TTAB's dismissal of Plaintiff VVV's petition for cancellation of the registration for that one mark. The court of appeals ruled that claim preclusion did not apply because VVV was entitled to seek remedies unavailable at the TTAB. V.V.V. & Sons Edible Oils Limited v. Meenakshi Overseas, LLC, 2019 USPQ2d 494448 (9th Cir. 2019).


VVV sought to cancel Meenakshi's registrations of the mark IDHAYAM for sesame oil. VVV had previously opposed the underlying application for the '654 mark, but had defaulted, resulting in the TTAB's dismissal of that opposition claim. When VVV later petitioned to cancel the registration for the '654 mark (and two other registrations), the TTAB dismissed as to the '654 mark on the ground of claim preclusion. VVV then appealed to the CAFC, but that appeal was dismissed.

The instant lawsuit seeks damages and injunctive relief for unfair competition, trademark dilution, and trademark infringement as to Meenakshi's three registered marks, The factual allegations supporting VVV's claims "are nearly identical to the allegations in the 2009 Opposition."

The district court dismissed the claims only as to the '654 mark, solely based on claim preclusion, finding that the claims at the TTAB and in the lawsuit were largely identical, since VVV "relied on facts and theories in its Complaint that were in its Opposition or were otherwise available at the time of the TTAB proceedings."

The 9th Circuit ruled that an exception to claim preclusion applied here:

Under the Restatement (Second) of Judgments, an exception to claim preclusion applies if "[t]he plaintiff was unable to rely on a certain theory of the case or to seek a certain remedy or form of relief in the first action because of the limitations on the subject matter jurisdiction of the courts" and "the plaintiff desires in the second action to rely on that theory or to seek that remedy or form of relief." Restatement (Second) of Judgments § 26(1)(c).
***
If "formal barriers in fact existed and were operative against [the] plaintiff in the first action," however, “it is unfair to preclude” a litigant from bringing a second action relying on new theories or seeking new relief and the general rule does not apply. Id.; see also Restatement (Second) of Judgments § 25, cmt. e.

The court of appeals observed that the TTAB is empowered only to determine the right to registration. "The Board is not authorized to determine the right to use, nor may it decide broader questions of infringement or unfair competition."

This means the TTAB had no power to decide VVV’s claims of infringement, dilution, and unfair competition or to "grant . . . either injunctive [relief] or damages." Rhoades v. Avon Prods., Inc., 504 F.3d 1151, 1158 (9th Cir. 2007). As a result, it would be unfair to preclude VVV from litigating these claims and seeking relief when barriers existed that prevented it from doing so in the first action.

The Board therefore reversed the dismissal of the VVV's claims concerning the '654 mark. The appellate court noted, however, that issue preclusion may apply to a TTAB ruling:

This does not mean, however, that parties who litigate trademark registration before the TTAB will always get the proverbial second bite at the apple if they subsequently file their claims in federal court. Any such concern is resolved by issue preclusion, which the Supreme Court recently recognized as applicable to TTAB proceedings. B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 158–60 (2015).

Read comments and post your comment here.

TTABlog comment: Seems unlikely that issue preclusion would apply here, since the TTAB did not decide any factual issues but instead dismissed VVV's claim due to its failure to respond to an order to show cause.

PS: I think you could say that the claim before the district court was "not the same claim" as that before the TTAB: one was for infringement, the other for opposition or cancellation.

Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/30/2019   1 comments

Friday, December 27, 2019

TTAB Orders Cancellation of Part of POLO GIRLS Registration Due to Nonuse

The Board granted in part this petition for cancellation of a registration for the mark POLO GIRLS for "Organizing and conducting polo sporting events for the purpose of fundraising; Entertainment in the nature of ongoing television programs in the field of polo sports events, and polo lifestyle," finding that Respondent Elizabeth Scripps did not use the mark for television entertainment on or before her date of filing the underlying application. However, as to the services of organizing and conducting polo events for fund raising, the Board ruled that Scripps had not abandoned the mark despite two years of nonuse because she did not have an intent not to resume use. American Polo Association, LLC v. Elizabeth Scripps, Cancellation No. 92066032 (December 19, 2019) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon). [Correction to final decision here].


Nonuse: The evidence showed that Scripps "hoped to produce an ongoing television program, but had not done so on or before the application filing date." She produced three short, unconnected videos that did not constitute the "ongoing television programs" that she claimed. And so the Board granted the petition for cancellation as to these services.

Abandonment: As the services of organizing and conduction polo events, Scripps did use the mark before her filing date. Petitioner failed to prove a three-year period of nonuse, and so the statutory presumption of abandonment was not applicable. Instead, petitioner had to establish that Scripps stopped using the mark with an intent not to resume use.

The evidence did establish that Scripps stopped using the mark for two years. However, Respondent Scripps presented unrebutted testimony that she “experienced severe, life threatening medical issues" during that period. [The Board stated in a footnote that this testimony explained and excused the period of nonuse.]  Other evidence, including emails and Facebook posts, showed that she did not intent not to resume use. There was no evidence that she did.

And so the Board denied the petition for cancellation as to Scripps' services of organizing and conduction polo events.

Read comments and post your comment here.

TTABlog comment: One can get tied up in "nots" when it comes to discussing abandonment.

Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/27/2019   0 comments

Thursday, December 26, 2019

WYHA? ECHO 911 Confusable with ECHO112 for Emergency Location Software, Says TTAB

The Board affirmed a Section 2(d) refusal to register ECHO 911 for “Computer software used to manage, store, and deliver enhanced emergency telecommunications information in the nature of E911 and 911 infrastructure and emergency location information for individuals in the event of an emergency,” finding a likelihood of confusion with the registered mark ECHO112 for "Computer software, namely, smartphone application that is a lifesaving application that sends the user’s location to local emergency services, worldwide." The "overly aggressive" approach of applicant's counsel, his "personal" attacks on the examining attorney, and his" numerous misguided or misleading arguments" surely did not help applicant's cause. In re RedSky Technologies, Inc., Serial No. 87411583 (December 19, 2019) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).


The marks: The Board found the term ECHO to be the distinctive portion of each mark. The "911" element of applicant's mark is not distinctive, as shown by applicant's own evidence. Examining Attorney Gidette Cuello submitted evidence showing that the "112" sequence "is used in many parts of the world to reach emergency services, and that dialing 112 in the United States usually results in the call going to a 911 call center." Applicant's own evidence demonstrated that "112" is known as an emergency services phone number to a substantial number of consumers in the United States.

Considering the marks in their entireties, the Board found them to be similar in sound and appearance. The marks are also similar in meaning, since the sequences 911 and 112 have similar meanings. "The commercial impressions made by the marks within the relevant market are also similar, and perhaps somewhat more so due to the similar role played by the 911 and 112 number sequences, when used as phone numbers."

In sum, the Board found the marks to be "substantially similar," and thus the first du Pont factor weighed in favor of affirmance of the refusal.

The goods: The Board observed that the involved software products concern communication in emergencies, and both products provide location information for an individual. Applicant’s broad description of goods "necessarily encompasses deployment through a smartphone application." Applicant attempted to read limitations into its identification of goods by referring to extrinsic evidence, but the Board pointed out that it must consider the goods as identified in the application and registration at issue.

Similarly, applicant attempted to narrow the scope of its channels of trade, but the Board noted that there are no such limitations in the involved application. Both applicant and registrant offer their software through smartphone apps; the evidence showed that hundreds of apps relating to emergency services are offered through the Apple app store and the Google Play store. Thus the channels of trade overlap.

Applicant argued that its software is expensive and is purchased by sophisticated custom like universities. Again, however, applicant's identification of goods contained no such limitations, and so the applicable standard of care is that of the least sophisticated consumer. In any event, the Board gave this factor little weight.

Strength of the cited mark: There was no evidence as to the market strength of the registered mark ECHO112. However, because the mark is distinctive, it does have some inherent strength. "This fact tends to increase the likelihood of confusion, but because the evidence on this issue is thin, we place little weight on this factor in our analysis."

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

Read comments and post your comment here.

TTABlog comment: Why would one think that a personal attack on the examining attorney would impress the Board? Moreover, the Board had this to say:

We note, in particular, that Applicant’s counsel asserted in the Request for Reconsideration: “If a death or injury occurs if a person dial 112 [sic] in an emergency situation and no emergency help arrives, the Examining Attorney, her management and the U.S. Trademark Office could potentially be liable for a claim under the Federal Tort Claims Act for negligence or other wrongful or ‘tortious’ conduct.” Request for Reconsideration at 77-78 (internal citation omitted). This statement is inflammatory, irrelevant, and entirely inappropriate. The issue before the Office is whether Applicant’s mark is registrable, not whether consumers should use the 112 numbers to reach emergency services. Such over-the-top arguments do not help Applicant’s case. Counsel is reminded that proceedings before the Office are to be conducted with decorum and courtesy. Trademark Rule 2.192

Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/26/2019   3 comments

Tuesday, December 24, 2019

TTABlog Test: Are AGUAMALA and ELECTRIC JELLYFISH Confusable for Beer?

Is there a Doctor of Equivalents in the house? The USPTO refused registration of the mark ELECTRIC JELLYFISH, finding a likelihood of confusion with the registered mark AGUAMALA, both marks in standard character form and both for beer. The cited registration includes a statement that the English translation of the word AGUAMALA is "jellyfish." How do you think this came out? In re Pinthouse Pizza Holdings, LLC, Serial No. 87603131 (December 19, 2019) [not precedential] (Opinion by Judge Christen M. English).


Applicant Pinthouse Pizza argued that the doctrine of foreign equivalents should not be applied because “jellyfish” is not the literal or direct translation of the Spanish word AGUAMALA. It maintained that in Spanish "agua" means "water" and "mala" means "bad," so the term AGUAMALA directly translates to "bad water." Furthermore, "medusa" is the Spanish word for jellyfish, and "aquamala" is merely a regionalism; "the overwhelming majority of English speakers who know a smattering of Spanish would see the term 'aguamala' as 'bad water.'"

Examining Attorney Janice L. McMorrow submitted dictionary definitions of "aquamala" (Spanish for "jellyfish") and a statement prepared by the Translations Branch of the U.S. Patent and Trademark Office, as follows: "The original language of the non-English wording "AGUAMALA" is 'Spanish.' The English translation of the non-English wording in the mark is 'jellyfish.'"

The Office’s translator, who is proficient in Spanish, acknowledges that “[a]s two words, AGUA MALA means ‘bad water,’” but explains that “[a]s one word, [AGUAMALA] would *only* be interpreted as meaning ‘jellyfish.’”

Both the examining attorney and applicant submitted Google translations supporting or partially supporting their respective positions. The Board found the USPTO's translation statement and the corroborating dictionary definitions to be "more reliable than the Google translations because the record does not include the sources of the Google translations and the translations are not otherwise corroborated."

[T]his evidence indicates that AGUAMALA is a term for “jellyfish” in a number of Spanish-speaking countries. A significant portion the U.S. Hispanic and Latino population comes from these countries. We take judicial notice of U.S. Census data from 2017 showing that nearly two-thirds of the Hispanic and Latino population in the United States (37 of 58 million) is composed of Mexicans and Colombians.

The Board therefore found that "the direct and literal translation of AGUAMALA, one word, is 'jellyfish,' and that a substantial portion of Spanish-speaking American purchasers would stop and translate AQUAMALA into its English equivalent 'jellyfish.'" Accordingly, the Board applied the doctrine of foreign equivalents.

cauliflour jellyfish

Turning to a comparison of the marks, the Board found them to be substantially similar in meaning and commercial impression. "The term ELECTRIC in Applicant’s mark merely modifies the term JELLYFISH and does not change the general commercial impression of the mark, which remains that of a jellyfish—the same as the cited AGUAMALA mark." The "substantial similarity" in commercial impression outweighs the differences in appearance and sound. Furthermore, AGUAMALA is a conceptually strong trademark for beer.

The Board concluded that confusion is likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Feliz Navidad!

Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/24/2019   2 comments

Monday, December 23, 2019

WYHA? Precedential No. 38: TTAB Rules that Patent Filings Are Probative Evidence of Descriptiveness

Ruling that statements made in patent filings by a trademark applicant (and by third parties) are probative evidence as to the descriptiveness of a term, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of SEQUENCING BY BINDING for "reagents for analysis of biological analytes; research laboratory analyzers for analysis of biological analytes for non-medical purposes devices for analysis of biological analytes for medical purposes; analysis of biological analytes; development of new technology for others for analysis of biological analyte." Dictionary definitions, industry articles, applicant's patents and patent applications, and statements in its appeal briefs left the Board with no doubt that the proposed mark "immediately conveys information to the relevant target audience, microbiologists, concerning features and characteristics of Applicant’s reagents, analyzers, biological analysis devices and biological analysis services, i.e., a DNA sequencing process that relies on identifying binding sites to determine the sequence of DNA molecular structure." In re Omniome, Inc., 2020 U.S.P.Q.2d 3222 (TTAB 2019) [precedential] (Opinion by Judge Jonathan Hudis).


A mark is “merely descriptive” under Section 2(e)(1) "if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought." In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer A.G., 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). Any doubt as to the mere descriptiveness of a proposed mark is resolved in favor of the applicant. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1512 (TTAB 2016).

Applicant's own usage of the proposed mark is evidence of its descriptiveness. "[W]hile it may be a truism of patent law that 'a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning,' Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 59 USPQ2d 1865, 1870 (Fed. Cir. 2001), descriptive usage of such terms by the trademark applicant in its patent filings can be, and in this case is, probative."

While the Board, in Empire Tech., Tekdyne, and Int’l Game Tech., considered the patent filings of the trademark applicant and third parties as proof of mere descriptiveness, we pause here to specifically add such evidence to the list (that is, dictionaries, newspapers, surveys, websites, publications, advertising material directed to the goods or services, and the textual matter contained in an applicant’s own specimen of use) of the types of evidence from which mere descriptiveness may be obtained.

The Board first found, based on industry articles made of record and on the identification of goods and services in the subject application, that microbiologists are the relevant consumers for purposes of determining the descriptiveness of the proposed mark.

Examining Attorney John M. Wilke maintained that "the proposed mark is used by applicant to describe the process of gene sequencing by binding used in connection with applicant’s reagents and analyzers and also in applicant’s biological analysis services and product development services, i.e. that they feature the use of DNA sequencing based on binding sites.

Applicant argued that SEQUENCING BY BINDING is a coined term that has no recognized meaning other than as Applicant's mark; that it does not describe the goods and services with "any degree of particularity; that there is no evidence of third-party descriptive use, and no evidence of the need of competitors to use SEQUENCING BY BINDING descriptively

The Board, however, did not agree that the proposed mark is suggestive, and instead found that it "immediately describes the function and purpose of Applicant’s goods and services:"

That is, the identified goods and services are used to sequence DNA by the process of binding. Applicant’s goods and services are identified broadly and are presumed to encompass goods and services of all types, including those for use in DNA sequencing by binding or conducting of analysis of biological analytes via DNA sequencing by binding.

Even if an applicant is the first user of a term, that does not render that term distinctive. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 72 USPQ2d 1833, 1838 (2004) (trademark law does not countenance someone obtaining “a complete monopoly on use of a descriptive term simply by grabbing it first”) (citation omitted); see also Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960) (even novel ways of referring to a product may nonetheless be merely descriptive).

The Board therefore affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Judge Hudis's opinion is a mini-treatise on the law of mere descriptiveness. Seems to me that the only thing making this opinion precedential is the holding regarding patent documents. BTW: Would You Have Appealed?

Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/23/2019   1 comments

Friday, December 20, 2019

TTABlog Test: Three More Appeals from Section 2(d) Refusals

A (current) TTAB Administrative Trademark Judge once said to me that one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods or services. Here are three recent decisions in appeals from Section 2(d) refusals. How do you think these came out? [Answers in first comment].


In re E8 Storage Systems Ltd., Serial No. 87597189 (December 11, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of E8 STORAGE for computer software and hardware for the storage of data, excluding anti-virus software [STORAGE DISCLAIMED], in view of the registered mark E8 SECURITY for computer anti-virus software  [SECURITY disclaimed]. Applicant contended that the differences in the goods and the sophistication of the relevant purchasers make confusion unlikely].


In re Game On International, LLC, Serial No. 87606762 (December 12, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman) [Section 2(d) refusal of the word+design mark shown below [INTERNATIONAL disclaimed] for advertising, promotion, and marketing services, in view of the registered marks GAME ON for “advertising and marketing services, namely, promoting the goods, services and interests of others in the field of billiards via print and electronic media," and GAME ON! LEARNING for “business training; interactive on-line training services in the field of business and sales skills; teaching and training in business, industry and information technology." Applicant argued that the first cited mark is used for a billiard blog rather than for the services identified in the registration, and as to the second mark there was no evidence that the mark is being used at all.]


In re Bayco Products, Inc., Serial No. 87708217 (December 17, 2019) [not precedential] (Opinion by Judge Karen Kuhlke). [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."Applicant maintained that registrant’s goods are “specialized light bulb products” for “high end energy efficient lighting projects” for “stationary installation in commercial buildings” while applicant’s goods are rechargeable, hand-held, portable flashlights “sold to a very specialized market, such as one that services firemen, police, and other first responders.”]


Read comments and post your comment here.

TTABlog comment: How did you do? Any WYHAs here?

Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/20/2019   1 comments

Thursday, December 19, 2019

Divided TTAB Panel Finds "19 CRIMES" Merely Descriptive of Videos and Entertainment Services

A divided TTAB panel affirmed a Section 2(e)(1) refusal of the mark 19 CRIMES, finding it merely descriptive of video and audio works and production, distribution, and rental of recorded entertainment. The panel majority agreed with Examining Attorney Tracy Fletcher that the mark "immediately tells consumers about a feature of [the] goods and services, namely, that the information and entertainment provided relates to the 19 crimes of 18th and 19th Century Britain that led to involuntary colonization in Australia." In re Southcorp Brands Pty Limited, Serial No. 88310184 (December 17, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo; dissenting opinion by Judge Jonathan Hudis).


Applicant argued that the term 19 CRIMES falls on the suggestive side of the descriptiveness/suggestiveness divide because it does not immediately convey any information about applicant's goods and services. The term 19 CRIMES refers to the crimes that resulted in exile to Australia. Although the subject matter of one or more of applicant's films may be related to this time in history, the subject matter of applicant's intended products and services is the unique stories of several "incorrigible rogues" who were exiled or transported upon being convicted of one of those crimes.


The Board pointed out that the mark at issue must be considered not in a vacuum, but in the context of the identified goods and services. Applicant's identification of goods and services is broadly worded, and encompasses works on the subject of the nineteen crimes that resulted in a sentence of transportation to Australia. Therefore the mark 19 CRIMES is merely descriptive of the goods and services.

Applicant argued that, since its goods and services will relate to the individuals transported to Australia, the mark is suggestive because it does not immediately or directly describe any feature, characteristic, or quality of those goods and services. Imagination, thought, or perception is required to make any connection. The Board disagreed, but in any case observed that applicant's mark "merely describe[s] the nineteen crimes themselves under the broadly stated subject matter of Applicant's goods and services."

Therefore the panel affirmed the refusal.

Judge Hudis, in dissent, opined that the majority misapplied the law, considered inadmissible evidence, and relied on a theory not advanced by the examining attorney during briefing.

In his view, the majority's opinion was "grounded upon subjective abstractions and guesswork (that is, what applicant's goods and services could 'encompass'"). Moreover "only a small sliver of the relevant purchasing public 'might' have some idea (if any) of the content of Applicant's Class 9 and 41 Goods and Services based on the 19 CRIMES mark - university educated individuals with a major or concentration in 19th Century British history." In short, the mark does not immediately inform the consumer about the content of applicant's goods and services.

Finally, Judge Hudis found it unfair that the majority relied, in his view, on a theory (namely, that the mark is merely descriptive, generally, as to the recited goods and services) to which applicant did not have an opportunity to respond.

Judge Hudis found this to be, at best, a close case, and therefore the mark should have been found to be suggestive and should have been published for potential opposition, since any doubt as to registrability as to descriptiveness should be resolved in favor of the applicant.

Read comments and post your comment here.

TTABlog comment: Which side are you on? Do you expect an appeal of this one?

Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/19/2019   3 comments

Wednesday, December 18, 2019

TTAB Affirms Refusal of USER FIRST for Software Tools: Specimen Doesn't Show Use of Mark

The Board affirmed a refusal to register the mark USER FIRST for "Computer software, namely, software development tools for the creation of mobile internet applications and client interfaces," agreeing with Examining Attorney Jacob Vigil that applicant's specimen of use failed to show the mark in use with the identified goods. In re User First, Serial No. 87231226 (December 9, 2019) [not precedential] (Opinion by Judge Jyll Taylor).


Applicant claimed that its specimen of use (shown above) was "the first page of a 103 page pdf instruction manual for the User First platform." The Board acknowledged that an instruction manual may be an appropriate specimen of use under Rule 2.56(b)(1).

The examining attorney, however, refused to accept the specimen because "the cover page is not clearly an instruction manual for downloadable software." He contended that the text on the page creates ambiguity as to the nature of the specimen. "[T]he specimen appears to be training materials for a class or training program and not an instruction manual provided with the goods such that it functions as a part of the goods." The Board agreed with the examining attorney.

We are not persuaded by Applicant’s contention that use of the wording “Certification Training Lab,” as opposed to “instruction manual” or “user manual,” does not substantially change the specimen’s purpose as a manual for the goods. While we accept that an instruction manual may be called different things, it is doubtful that materials associated with the terminology “Certification Training Lab” would be recognized by consumers as manuals containing instructions on how to create mobile internet applications or client interfaces using software development tools such as provided by Applicant. Moreover, the record is devoid of evidence showing that Applicant’s cover page specimen is from a manual provided contemporaneously with, and that functions as part of, the identified software goods.

Concluding that the specimen of use is "unlikely to be recognized as a cover to an instruction manual" for the identified goods, the Board deemed the specimen inadequate and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: During prosecution, applicant submitted two other specimens, but both were rejected. What can you say?

Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/18/2019   2 comments

Tuesday, December 17, 2019

TTAB Sustains Section 2(d) Opposition to CRAFT BEARINGS Based on Opposer's Common Law Use of CRAFT BEARING COMPANY

In a 53-page opinion that deserves a close reading, the Board sustained an opposition to the word + design mark shown below, for bearings and structural parts for vehicles, finding a likelihood of confusion with opposer's common law mark CRAFT BEARING COMPANY for bearings and related components for machinery. The Board deemed opposer's mark neither generic nor merely descriptive of its goods, rejected applicant's claim of priority based on use analogous to trademark use, and found that even if opposer's mark were not inherently distinctive, opposer had established acquired distinctiveness. Set out below is a summary of the high points of the decision. Craft Bearing Company, Inc. v. UAB “Craft Bearings”, Opposition No. 91225061 (December 16, 2019) [not precedential] (Opinion by Judge David K. Heasley).


Priority: Applicant was entitled to rely on its filing date (a Section 66(a) extension request) for purposes of priority, but it also claimed use analogous to trademark use for an earlier period of time. It made no sales in US commerce but it contended that it "promoted its products via its website, catalogs, participation in trade shows, and social media accessible to potential purchasers in the U.S., beginning in December 2004." However it had no immediate plans to sell products in this country and its marketing efforts "did not inform prospective purchasers in the U.S. of the present or future availability of its goods." Therefore the Board rejected its claim.

Opposer relied on its use of its mark CRAFT BEARING COMPANY since 1994, but applicant maintained that the mark is generic or merely descriptive. The Board rejected both contentions. The Board agreed with opposer that applicant's argument was "inconsistent," since applicant did not disclaim the word CRAFT in its mark or seek registration under Section 2(f).

Moreover, as to genericness, there was no evidence that the relevant public would perceive the entire term CRAFT BEARING COMPANY as referring to the genus of bearings. As to mere descriptiveness, the Board acknowledged that there is a "fine line" between descriptiveness and suggestiveness, and found that opposer's mark fell on the suggestive side of the line.

The Board next found that, assuming arguendo that's opposer's mark is descriptive, opposer had established acquired distinctiveness based on its use of the mark since 1994, its (rather modest) sales and advertising figures, and the declarations of three third-parties.

[T]he evidence indicates that Opposer has marketed and sold its goods under the CRAFT BEARING COMPANY mark over the course of two decades since 1994, and over that time has succeeded in educating relevant industrial users that it is the source of bearing and related components bearing that mark.

Likelihood of Confusion: The Board marched through the du Pont factors and found the marks more similar than dissimilar, the goods identical or closely related, and the channels of trade and classes of consumers identical in part and overlapping in part.

Although purchaser of the involved goods may require some care, even sophisticated purchasers "could still infer from the parties' highly similar CRAFT BEARING-formative marks that their legally identical or related goods emanate from the same source, of from affiliated sources, such as licensor and licensee."

Applicant's evidence of some 40 third-party registrations failed to show that opposer's mark "is so weak, as used on bearings, that Applicant may register a CRAFT BEARING-formative mark for use on bearing and related goods without engendering source confusion."

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

Read comments and post your comment here.

TTABlog comment: Hat tip to FOB Matthew Hintz.

Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/17/2019   0 comments

Monday, December 16, 2019

Recommended Reading: The Trademark Reporter, Nov.-Dec. 2019 Issue

Here's a holiday present for all of us: the November–December, 2019 (Vol. 109 No. 6) issue of The Trademark Reporter (TMR). Kudos to Editor-in-Chief Willard Knox for assembling this impressive collection of articles: two empirical and one imperial. [Just kidding, Commish. - ed.]. Willard provided the summary of each article that is presented below.


An Empirical Assessment of the Eveready Survey’s Ability to Detect Confusion in Cases of Senior Marks That Are Not Top-of-Mind, by Hal Poret

Well-known survey expert Hal Poret rebuts the oft-cited view that Eveready surveys are appropriate only to test for likelihood of confusion where the senior mark is "top-of-mind," and supports his argument with original survey research he designed and conducted in conjunction with this article.


Commentary: The Science of Proving Trademark Dilution, by Barton Beebe, Roy Germano, Christopher Jon Sprigman, and Joel H. Steckel

In this thought-provoking commentary, noted scholars Barton Beebe, Roy Germano, Christopher Jon Sprigman, and Joel H. Steckel challenge the “mere association” test for establishing trademark dilution and propose a new “association strength test” supported by the authors’ own empirical research.

Joel H. Steckel

Reflection: Trademark Office: Year-End Wrap-Up, by Mary Boney Denison

Mary Boney Denison, United States Patent and Trademark Office (USPTO) Commissioner for Trademarks, looks back on her tenure—which ends in 2019—and provides readers with valuable insights from inside the USPTO.


Read comments and post your comment here.

TTABlog comment: Once again, I thank The Trademark Reporter for allowing me to make this issue available to my dear (and not-so-dear) readers. This issue of the TMR is Copyright © 2019, the International Trademark Association and is made available with the permission of The Trademark Reporter®.

Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/16/2019   0 comments

Friday, December 13, 2019

Supreme Court Rejects USPTO Claim for Attorney's Fees in Patent Appeal via Civil Action

On Tuesday, the Supreme Court unanimously upheld an en banc decision of the CAFC, ruling that the USPTO is not entitled to recover its attorney's fees in an appeal from an adverse USPTO decision via a civil action under Section 145 of the Patent Statute. That statutory provision says that the applicant must pay "[a]ll the expenses of the proceedings." The Court found no reason to depart from the "American Rule" that requires each party to pay its own attorney's fees. Peter v. Nantkwest, Inc., No. 18-801 (S. Ct. December 11, 2019).


Of course,, what makes this decision interesting for trademark attorneys is that, for civil actions for review of a final refusal of a trademark application, under Section 1071(b)(1) of the Lanham Act, the Fourth Circuit ruled in Shammas v. Focarino, 114 USPQ2d 1489 (4th Cir. 2015) [TTABlogged here], that - despite statutory language virtually identical to that of Section 145 of the Patent Statute - the USPTO was entitled to recover its attorney's fees. The Supreme Court denied Shammas's petition for certiorari in 2016. [TTABlogged here].

In the BOOKING.COM case now before the Supreme Court (on the issue of genericness). the Fourth Circuit followed (seemingly with reluctance) the Shammas decision in affirming the district court's award of attorney's fees to the USPTO. [TTABlogged here].

It is probably safe to say that the next time a court gets its hands on the issue of USPTO attorney's fees under Section 1071 (b) - at least a court outside the Fourth Circuit - the result may be different.

Read comments and post your comment here.

TTABlog comment: It seems that most people expected the Supreme Court to rule this way.

Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/13/2019   1 comments

Thursday, December 12, 2019

TTABlog Test: Three Recent Section 2(d) Appeals

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods or services. Here are three recent decisions in appeals from Section 2(d) refusals. How do you think these came out? [Answers in first comment].


In re Antonio F. Domingues and Kathy J. Bruzesse, Serial Nos. 87553246 and 87553279 (November 27, 2019) [not precedential] (Opinion by Judge Frances Wolfson). [Section 2(d) refusal of FORTTUNA FOODS, in standard character and design form, for "Cakes; Candy; Candy bars; Chocolate; Chocolate bars; Chocolate confection" [FOODS disclaimed], in view of the registered mark FORTUNA (Stylized) for, inter alia, "Candied fruit snacks, nut-based snack foods, sesame oil, quail eggs, powdered milk for food purposes, dairy-based food beverages, fruit-based food beverages." Applicants argued that the unconventional spelling of FORTTUNA distinguished the marks and that registrant sells its goods only in niche Asian markets.]


In re Killeen Mayo Car Wash, LLC, Serial No. 87597456 (December 3, 2019) [not precedential] (Opinion by Judge Angela Lykos).). [Section 2(d) refusal of the word+design mark shown below, for "automobile cleaning and car washing" in view of the registered mark GALAXY for "car wash services." Applicant contended that the additional wording and the design element in its mark sufficed to distinguish it from the cited mark.]


In re Immobiliare M.V. S.R.L., Serial No. 87791970 (March 20, 2020) [not precedential] (Opinion by Judge Jyll Taylor) [Section 2(d) refusal of PARC & LEX (and design) for "Clothing, namely, t-shirts, sweatshirts, skirts, pants, jeans, coats, dresses, underwear, tops and bottoms; headwear; footwear," in light of the registered mark PARK & LEX, in standard characters, for "Jewelry, namely,necklaces, bracelets and earrings." Applicant asserted that consumers will pronounce PARC and Park differently, and that registrant's fine jewelry, inspired by New York, is sold in a different trade channel than its own mass clothing apparel made in Los Angeles.]


Read comments and post your comment here.

TTABlog comment: How did you do? Any WYHAs here?

Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/12/2019   7 comments

Wednesday, December 11, 2019

TTAB Affirms Failure-to-Function Refusal of INTELLIGENCE OF THINGS for Supply Chain and Engineering Services

In yet another failure-to-function case, the Board affirmed a refusal to register INTELLIGENCE OF THINGS as a service mark for supply chain management services, custom manufacture of electronics, and engineering services. Third-party uses of, and media references to, the phrase convinced the Board that INTELLIGENCE OF THINGS does not "perform the desired service mark function and does not fall within the Act's definition of a service mark." In re Flex Ltd., Serial Nos. 86453853 and 86493735 (December 9, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).


The evidence revealed that third parties use INTELLIGENCE OF THINGS to refer to "the ongoing development and next phase of the Internet of Things ("IoT") [i.e., the interconnectivity of digital devices via the Internet and to each other], and specifically its increasing use of artificial intelligence ("AI")." The Board found that INTELLIGENCE OF THINGS "would be perceived not as a mark but as a merely informational and widely used phrase." Competitors should be free to use this "widespread and increasingly important" terminology.

The evidence reveals INTELLIGENCE OF THINGS does not fall within the definition of a service mark. In fact, many third parties and media sources have a common and consistent understanding of the phrase INTELLIGENCE OF THINGS, which refers not to Applicant or its services, but instead to the merging of the Internet of Things and artificial intelligence.

The Board found it clear from the way the phrase is used that it conveys information rather than identifies source. The phrase merely identifies the technology (IoT with artificial intelligence) that applicant uses to provide its services.

INTELLIGENCE OF THINGS is "too commonly used by too many third parties for it to identify any particular goods or services or the sources thereof." Granting registration to applicant "would achieve the absurd result of hampering others in their use of the common phrase INTELLIGENCE OF THINGS for goods or services which features or are rendered through 'intelligent' IoT devices."

Applicant Flex urged the Board to adopt a new test for the failure-to-function analysis, arguing that the new test synthesizes the case law and, "not surprisingly," would result in a reversal of the subject refusal.

Applicant specifically contends that a phrase fails to function as a mark only when it "(i) has a single, well understood meaning or message, (ii) is widely used by the general public to convey the well understood meaning or message, and (iii) relates to a topic of nationwide awareness or is the type of phrase that is "uttered on a daily basis, almost automatically without thought."

The Board was unimpressed. First, the meaning of the proposed mark must be considered in relation to the services at issue, and here the evidence shows that INTELLIGENCE OF THINGS has a "consistent and well-understood meaning" in connection with applicant's services. Second, the Board is not concerned with the perception of the "general public" but with that of the purchasers of applicant's services. And third, for the same reason, the phrase need not be a "topic of nationwide awareness."

The Board concluded that because the proposed mark is merely informational and is widely used by the relevant consumers, it would not be perceived as a source indicator , and so it fails to function as a service mark under Sections 1, 2, 3, and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? Is there such a concept as THE STUPIDITY OF THINGS?

PS: note that the use of the "TM" symbol by Applicant Flex did not help, since the issue is public perception of the phrase, not whether Applicant intends or wants the phrase to function as a mark.

Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/11/2019   0 comments

Tuesday, December 10, 2019

CAFC Upholds TTAB Dismissal of "Goats on a Roof" Cancellation Petition Due to Lack of Standing

The CAFC pulled the plug on an appeal from a Board decision (here) that had dismissed a petition for cancellation of a registration for the mark shown below (comprising goats on a grass roof) for restaurant services. The Board ruled that Petitioner Todd C. Bank failed to allege sufficient facts that would establish his standing. The appellate court agreed and it dismissed this appeal and granted Respondent's motion for an award of costs and attorney fees, finding the appeal to be frivolous. Todd C. Bank v. Al Johnson's Swedish Restaurant & Butik, Inc., Appeal No. 2019-1880 (Fed. Cir. December 9, 2019) [not precedential].


In order to establish standing, a plaintiff in a TTAB proceeding must plead and prove facts showing that he or she has "a real interest in the proceedings and a reasonable basis for his [or her] belief of damage. "Typically, standing is not a demanding requirement." Here, Petitioner Bank failed to plead a real interest and a reasonable basis for his belief of damage.

Bank sought to cancel the registration, alleging that the mark is "demeaning to" goats, and that in turn is offensive to Bank and "denigrates the value he [and others] place[] on the respect, dignity, and worth of animals." The Board observed that, to the extent Bank relies on disparagement of himself, that argument must fail in light of the Supreme Court's ruling that the disparagement clause of the Lanham Act is unconstitutional.

In any case, Bank failed to plead a real interest in the proceeding. He provided no basis, other than the precluded disparagement claim, to suggest that he had a direct and personal stake in the outcome of the proceeding.

Bank also failed to please "a reasonable basis for his belief of damage." Although he asserted that the trade dress is "offensive to numerous persons," including himself, because it was demeaning to goats, he failed to explain how that reason survives the ruling in Tam.


Respondent moved for its costs and attorney fees, and the Board granted the motion. The court noted that Bank had filed multiple petitions with the Board regarding the subject registration, all of which had been dismissed for, inter alia, standing. Bank also filed a groundless motion for sanctions. And despite being told by the TTAB that his disparagement claim was based on an unconstitutional and stricken section of the Lanham Act, he raised the issue again on appeal. The Board therefore concluded that this appeal was frivolous.

Because Bank lacked standing to bring the original cancellation petition, the CAFC lacked jurisdiction to review the appeal, and therefore it dismissed the case.

Read comments and post your comment here.

TTABlog comment: In 2012, the "Goats on a Roof" registrations survived a similar attack brought by a photographer who claimed that the registrations would prevent him from placing goats on a grass roof and photographing them. TTABlogged here.

PS: I am informed that the prior proceedings referred to by the CAFC were cases in which Bank was the attorney, not the party, including the 2012 case just mentioned.

Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/10/2019   1 comments

Monday, December 09, 2019

Precedential No. 37: TTAB Rules that the Color Red is Generic for Saw Blades

In what appears to be the first TTAB decision finding a color to be generic, the Board granted a petition for partial cancellation of a registration for the mark shown first below (lined for the color red) for, inter alia, saw blades, and it also granted a petition for cancellation of a registration for the mark shown second below ("the color red as applied to substantially the entire surface of the goods"), for "blades for reciprocating power saws." Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 USPQ2d 460354 (TTAB 2019) [precedential] (Opinion by Judge Thomas Shaw).



Genericness: The question faced by the Board was "whether the color red is generic for the identified goods and thus unregistrable under Trademark Act Sections 1, 2 and 45 because it cannot function as a mark."

Section 14 of the Trademark Act states that “[t]he primary significance of the registered mark to the relevant public . . . shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.” 15 U.S.C. § 1064(3). The Court of Appeals for the Federal Circuit has held that “generic name” encompasses anything that "potentially can but fails to serve to indicate source, including trade dress." Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322, 50 USPQ2d 1532, 1535 (Fed. Cir. 1999).

Thus, as a form of trade dress, a single color applied to goods may be generic for those goods if it “fails to serve as an indicator of source.” See Sunrise Jewelry Mfg. Corp. v. Fred S.A.

In a cancellation proceeding, the Board looks at  "both the time when the registrant registered its marks as well as at the present day to determine whether the mark (sic) must be cancelled." [Actually, registrations are cancelled, not marks - ed.]

The Board recently held that product packaging trade dress, like product design trade dress, may be deemed generic where it is “at a minimum, so common in the industry that it cannot be said to identify a particular source.” In re Odd Sox LLC, 2019 USPQ2d 370879 (TTAB 2019) (packaging for socks), quoting Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1555 (TTAB 2009) (generic guitar shape unregistrable).

The Board deemed it appropriate to apply a two-step inquiry (as with word marks and other kinds of trade dress), in which it first considers the genus of goods or services at issue, and second considers whether the color is understood by the relevant public primarily as a category or type of trade dress for that genus of goods or services.

As usual, the Board found the genus of goods to be adequately defined by the identifications of goods in the challenged registrations. For convenience it referred to the genus generally as “saw blades” or “reciprocating saw blades,” and it interpreted the term "saw blades" to include any type of saw blade used with any power woodworking machines.

Petitioner Milwaukee established that it used the color red on saw blades for decades before Respondent Freud first used the color.  Moreover, Milwaukee submitted evidence of more than four dozen third-party uses of the color red for saw blades. "This extensive evidence of use of the color red on saw blades by a direct competitor of Freud is evidence that purchasers of saw blades would be unlikely to differentiate between competing sources simply by viewing the color red on the saw blades. See BellSouth, 35 USPQ2d at 1558."


The Board found that the presence in the market of red saw blades from numerous sources "is incompatible with a finding that the 'primary significance of the registered mark to the relevant public' of the color red is as a source-indicator pointing solely to Freud. See 15 U.S.C. § 1064(3)."

This evidence overwhelmingly demonstrates that the color red on saw blades is so common in the industry that it cannot identify a single source for saw blades for power woodworking machines or saw blades for reciprocating power saws. What is more, because the evidence establishes that the color red was widely used by others at the time Freud filed the underlying applications for each of its subject registrations and third-party use continues to the present day, the color red was generic for power saw blades when Freud applied for both of its marks and remains so now. Neapco, 12 USPQ2d at 1747; Kasco, 27 USPQ2d at 1506 n.7.

And so the Board granted Milwaukee's petitions.

Acquired Distinctiveness: Although its finding of genericness was dispositive, the Board went on to consider, for the sake of completeness, Freud's claim of acquired distinctiveness of the color red for the "blades for reciprocating power saws" of the second registration. The Board found that Freud's proofs feel short.

The use of red by other saw blade sellers is longstanding and widespread. In light of this use by Milwaukee and third parties, Freud’s sales figures and marketing efforts, though extensive, cannot demonstrate consumer recognition of the color red as a mark for saw blades designating Freud exclusively as their source.

Fraud: Milwaukee alleged that Freud committed fraud in connection with its first registration by claiming that it was the exclusive user of the color red for saw blades, that its response to a request for information was deficient, that it failed to state the first use date for each item in the identification of goods, and that its Section 2(f) claim of acquired distinctiveness did not apply to all of the goods.

As to the exclusivity claim, the Board found that Freud "may have had a reasonable basis for believing that no one else had the right to use the mark in commerce, and its averment of that reasonable belief in its application declaration or oath was not fraudulent. Intellimedia Sports Inc. v. Intellimedia Corp., 43 USPQ2d 1203, 1207 (TTAB 1997)."

Although Freud's response to the information request was "woefully lacking," the Board found that Freud's failure to explain the uses of the color red by other entities "is not fraudulent "unless Freud knew the other entities using substantially the same mark for substantially identical goods had superior rights (assuming red could serve as a source identifier for saw blades) to Freud. See Intellimedia Sports, 43 USPQ2d at 1206." Milwaukee failed to prove by clear and convincing evidence that Freud possessed that knowledge.

As to Freud’s failure to indicate the dates of use for each item, the Board found this to be "at worst, akin to stating an erroneous date of first use, and does not constitute fraud."

Finally, as to Freud's failure to break out the individual goods in its Section 2(f) statement, Milwaukee failed to prove that Freud had an intent to deceive the USPTO, as required to establish a claim of fraud.

And so the Board rejected Milwaukee's fraud claims

Read comments and post your comment here.

TTABlog comment: Would you call this a cutting edge decision? Genericness seems to me to be the wrong pigeonhole for a proposed color mark. I think it would be better to rely on lack of exclusivity and failure to meet the high burden of showing acquired distinctiveness. But the Board has been on a genericness rampage lately.

See Professor Tushnet's point regarding the Board's resort to genericness. She notes that the first registration was more than 5 years old and therefore could not be challenged on the ground of lack of distinctiveness.

Text Copyright John L. Welch 2019.

posted by John L. Welch @ 12/09/2019   8 comments