TTABlog Test: Are Phonograph Records and Audio Equipment Related Under Section 2(d)?

Swan Song, Inc. opposed an application to register the mark SWAN SONG AUDIO for "“Consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverter" [AUDIO disclaimed], on the ground of likelihood of confusion with the registered mark shown below, for "phonograph records." Opposer asserted that the goods are related because "[p]honograph records, to be played and heard, must be played on a device (turntable) which requires a receiver, speakers and/or an amplifier." How do you think this came out? Swan Song, Inc. v. Swan Song Audio LLC, Opposition No. 91240005 (February 26, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The marks: Although opposer's mark may, to some, appear to be WAN ONG and Design, the Board saw it as SWAN SONG with each "S" being a stylized version of a swan. It found the dominant term in applicant's mark to be, not surprisingly, SWAN SONG. As to Opposer's mark, the Board observed once again that for a word-plus-design mark, the word portion is the part most likely to be impressed upon the minds of consumers. Moreover, each design portion "appears to suggest a swan" and the Board had "no doubt that consumers would recognize each design as a highly-stylized letter 'S.'" The Board concluded that the marks are similar in sound and appearance and convey similar meanings (i.e., the final performance or act) and similar commercial impressions.

The Goods: Opposer submitted Internet evidence showing that some on-line retail outlets offer phonograph records and audio equipment, but the evidence did not show that the goods were sold under the same mark. Opposer also submitted more than 60 third-party registrations that purportedly covered phonograph records and audio equipment. The Board found that only 14 of them had probative value, since the rest covered a wide variety of diverse and unrelated goods.

The Board concluded that the goods are related. "It is common knowledge that phonograph records are used with audio equipment." The registrations also show that the goods are "complementary and thus related as they are offered under the same mark."

The Internet evidence shows on its face that consumers may have been exposed to the goods being sold in the same retail location. Additionally, consumers familiar with Opposer’s mark for phonograph records could well believe that Applicant’s mark reflects a brand extension into audio equipment. [I think a survey could have shown otherwise - ed.].

Channels of Trade: Opposer's flimsy Internet evidence regarding retail sales was enough to convince the Board that the trade channels overlap.

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

Read comments and post your comment here.

TTABlog comment: How did you do? Do you think, in the real world, confusion is likely?

Text Copyright John L. Welch 2020.

Precedential No. 8: TTAB Dissolves Concurrent Use Proceeding Because Plaintiff's Proposed Territory Overlapped With Defendant's Use

Hanscomb Consulting, Inc. (“HCI”) sought a concurrent use registration for the mark HANSCOMB CONSULTING & Design (shown below) for various business consultation and project management services, covering the entire United States except for two geographical areas (Hinsdale, Illinois, and Los Angeles, California). HCI conceded that its use of the mark was not exclusive, that Defendant Hanscomb Limited (“HL”) owns an application to register HANSCOMB for identical services and that HL may have established common law rights in those two locations. The Board, however, found that HL has prior rights in “many more locales throughout the country” and therefore that Plaintiff HCI was not entitled to the concurrent use registration it sought. Hanscomb Consulting, Inc. v. Hanscomb Limited, 2020 USPQ2d 10085 (TTAB 2020) [precedential] (Opinion by Judge Thomas W. Wellington).

Although Defendant HL filed its application prior to HCI’s filing date and although it claimed dates earlier than those claimed by HCI, HCI’s acknowledgment in its concurrent use application that HL was an exception to HCI’s rights and the allegation by HCI of first use before HL’s filing date allowed the USPTO to approve HCI’s application for publication. HL filed an opposition to that application and the Board then instituted this concurrent use proceeding and dismissed the opposition.

In an earlier proceeding HL had opposed HCI’s application for a nationwide registration for HANSCOMB CONSULTING & Design, on the ground of priority and likelihood of confusion. HCI moved to amend that application to one seeking a concurrent use registration, but the Board denied the motion because HCI’s application was based on intent-to-use, not actual use, and therefore could not be so amended. [See TTABlog post here]. HCI then withdrew its application and the opposition was sustained.

The entry of judgment against HCI in that opposition "prevents consideration of any assertion by either party that no likelihood of confusion exists based on the parties' use of their marks in overlapping geographic areas." See Over the Rainbow, Ltd. v. Over the Rainbow, Inc., 227 USPQ 879, 882-83 (TTAB 1985).

Turning back to the concurrent use proceeding, Defendant HL claimed that it used its HANSCOMB mark throughout the United States for many years and that it was entitled to a geographically unrestricted registration for its mark. HCI had the burden of proving, by a preponderance of that evidence, its entitlement to registration for its proposed geographic territory, that HL’s territory should be correspondingly restricted, and that such restrictions would avoid a likelihood of confusion arising from the parties’ concurrent use of their marks.

Because Defendant HL filed an unrestricted application and was listed as an excepted user in HCI’s concurrent use application, HL enjoyed a presumption of entitlement to a nationwide registration. It was therefore the Board’s role to "determine the extent of HL’s use of its mark prior to HCI’s established use dates and whether HCI has carried its burden of proving that it is entitled to geographically restrict HL’s use of its mark." Based on HL’s declaration and deposition testimony, the Board ruled against HCI.

We find, based on the record before us, that HL’s use of its HANSCOMB mark in connection with its services has not, as contended by HCI, been confined to the two postal area zip codes identified in HCI’s application. To the contrary, we find that HL has demonstrated prior and continuous use of its HANSCOMB mark in many locations throughout the U.S.

This finding of fact by the Board "invalidates HCI's proposed geographic restriction on the use of HL's mark in connection with the services." And so the Board dissolved the concurrent use proceeding. HCI's application was deemed abandoned.

Read comments and post your comment here.

TTABlog comment: Why is this precedential?

Text Copyright John L. Welch 2020.

TTAB Orders Cancellation of Both Registrations in Trash Bag Trade Dress Clash

[This guest post was authored by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield]. Poly-America and API own competing Supplemental Registrations for trade dress consisting of different color drawstrings on plastic garbage bags. API claims the color gray (Supp. Reg. No. 4,824,072); Poly-America claims the color orange (Supp. Reg. No. 4,027,254). Each side petitioned to cancel the other’s registration. The decision involves three issues somewhat infrequently seen in Board decisions: (1) the cancellation of registrations on the Supplemental Register, (2) competing claims of genericness, and (3) the functionality of a color. Ultimately, the Board cinched the case by granting both cancellation petitions, finding both "marks" to be generic marks, and also finding the color orange to be functional for trash bag drawstrings. Poly-America, L.P. v. API Industries, Inc. and API Industries, Inc. v. Poly-America, L.P., Cancellations Nos. 92062517 and 92062601 (Feb. 19, 2020) (not precedential) (Opinion by Judge Karen Kuhlke).

Genericness: Even though the registrations are on the Supplemental Register, the same general law of genericness applies because, even if registered on the Supplemental Register, a mark “must be capable of distinguishing goods or services,” Trademark Act § 23, 15 U.S.C. § 1091, and “[g]eneric matter is incapable of identifying and distinguishing goods and services.”

The Board applied the accepted test for genericness to both registrations: "We first consider the genus of goods at issue, and second consider whether the color sought to be registered or retained on the register is understood by the relevant public primarily as a category or type of trade dress for that genus of goods."

As usual, the Board turned to the identification of goods in the registrations to determine the genus of goods for each, i.e., plastic garbage bags. From there, since there were no restrictions in the registrations, the Board concluded that the “relevant public” comprised “consumers seeking plastic trash bags,” including not only at the retail level but also at the wholesale level.

Starting with API’s registration for the color gray on drawstring trash bags, the Board aimed to determine the “relevant public’s perception” of the color mark, because that is the “primary consideration in determining whether a term is generic.” Here, although there was some trash talking about who may have been first in the marketplace to use gray drawstring bags, which the Board found “not relevant,” the Board focused on how widely used were gray drawstring bags in the industry. Relying primarily on testimony and evidence from Poly-America, the Board found that at least six companies––Reynolds (see below), Iron Hold, Ruffies, Fair Square, Glad (see below), and Poly-America––had sold trash bags with gray drawstrings.

Interestingly, there was no evidence of when these sales took place, or how widespread these sales were. But the Board found the evidence “sufficient to establish that consumers are exposed to use of the color gray in trash bag drawstrings in the same general time period such that they would not perceive it as indicating source but rather, to the extent it is perceived at all, as a category or type of trade dress for the genus plastic trash bags.” And so the Board granted Poly-America's petition for cancellation.

API’s petition for cancellation of Poly-America’s registration for orange drawstrings followed the same basic story. The biggest difference was Poly-America’s admission that it sold its bags on a wholesale level to several entities, and then those entities re-sold the orange drawstring bags under a wide variety of different brand names. Again, since the registration was not limited to any particular trade channel, the Board held that,

when a company sells to third parties for re-sale under the third parties’ marks rather than under the manufacturer's mark, that circumstance cripples any attempt to show that consumers uniquely associate the mark with one source, i.e., the manufacturer. Poly-America, L.P. v. Illinois Tool Works Inc., 124 USPQ2d 1508, 1520 n. 48 (TTAB 2017).” (Ed. Note – Seems Poly-America should have been well versed in this holding.) 

Accordingly, the Board found the orange color drawstring to be generic for trash bags.

Functionality: – To “double-bag” its decision against Poly-America, the Board also went further to find the color orange to be functional for trash bag drawstrings.

Again because the trade dress was registered on the Supplemental Register, the Board first needed to determine what law to apply. It concluded that even though the statutory basis for cancelling a mark on the Supplemental Register differs from the statutory basis for cancelling a registration on the Principal Register, the “same case law” applies, namely Inwood and Morton-Norwich.

Under Inwood, a “product design or product feature is considered to be functional in a utilitarian sense if it is (1) ‘essential to the use or purpose of the article,’ or if it (2) ‘affects the cost or quality of the article.’” The Board will then often analyze the evidence identified in Morton-Norwich, namely:

(1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

However, the “Supreme Court has made it clear that if functionality is properly established under Inwood, further inquiry into other categories of evidence listed in Morton-Norwich such as the availability of alternatives and cost information--is not necessary.” As the Board noted in this decision, the ultimate crux of the doctrine is the “preservation of competition,” i.e., not allowing one company to usurp for itself a product design or feature when those items are required in order to compete.

Before beginning its analysis, the Board first addressed what constituted the Poly-America mark, which Poly described as “the color orange,” and as API argued, was unlimited as to “any particular shade, tone, or pantone of orange.” (Ed. Note – are the parties and the Board trying to genericide Pantone®?) But the Board held that “the drawing page controls and the only shade of the color covered by the registration is that shown in the color drawing.”

With that, the Board reviewed at some length the substantial evidence API put forth that the color orange “serves a utilitarian purpose” for trash bag drawstrings. Notably, the Board did not feel compelled to expressly go through the factors or types of evidence in Morton-Norwich. Most significantly, API offered the opinion of Steven Bleicher, who, among other things, is the author of the book Contemporary Color Theory and Use. He described in several ways what seems to be a logical conclusion: the color orange is easier to see, therefore it “would make it easier to use, to grab the bag, grab the handles of the bag, so that they would be – they would stand out against the color of the trash bag” and therefore be “functional.”

The Board agreed:

The purpose of a trash bag is to hold trash. The purpose of the drawstring on a trash bag is to close the trash bag. One purpose of a vibrant contrasting color for the drawstring is to see it more easily to grab it and close the trash bag. Orange is at least one of a few superior colors for that purpose. We find that the color orange is functional for trash bag drawstrings.

And with that, the Board granted both petitions to cancel.

Read comments and post your comment here.

TTABlog comment: The Board's recent decision in Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 USPQ2d 460354 (TTAB 2019) (finding the color red to be generic for saw blades) played an important role in this decision. Should this opinion have been deemed precedential?

Text Copyright John L. Strand and John L. Welch 2020.

Precedential No. 7: TTAB Grants Cancellation Petition, Respondent Did Not Individually Have Bona Fide Intent to Use the Mark

In what boiled down to a dispute over ownership of the mark, the Board granted a petition for cancellation of Respondent Michael Lajtay's registration for the mark HOLE IN ONE for sports drinks, ruling that the registration was void ab initio because, at the time of filing the underlying application, Lajtay did not intend to use the mark by himself, but rather intended to use it jointly with Darryl Cazares to form a company and market beverages. Hole In 1 Drinks, Inc. v. Michael Lajtay, 2020 USPQ2d 10020 (TTAB 2020) [precedential] (Opinion by Judge Marc A. Bergsman).

Lajtay represented himself from the early stages of the proceeding, and the Board pointed out that "strict compliance" with the applicable rules "is required of all parties, whether or not they are represented by counsel."  McDermott v. S.F. Women’s Motorcycle Contingent, 81 USPQ2d 1212, n.2 (TTAB 2006), aff’d unpub’d, 240 Fed. Appx. 865 (Fed. Cir. 2007). Lajtay's brief failed to comply with the Board's formatting requirements, but since it was only seven pages long, the Board chose to consider it. However, it refused to consider the evidence attached to the brief, as untimely.

Lajtay filed his application to register the HOLE IN ONE mark on January 24, 2015, based on an alleged bona fide intent to use the mark in commerce. A business plan and various correspondence indicated that he and Darryl Cazares were business partners who were seeking funding to develop and market the HOLE IN ONE beverages. Cazares filed "articles of organization" for a California company called "Hole-In-One Drinks, LLC," naming Lajtay and himself as co-managers. Lajtay conceded that Cazares was a "co-founder, a business partner, in the Hole-In-One endeavor." In April 2015, Lajtay began selling the beverages, naming named Hole-in-One Drinks, LC as the vendor and producer.

In sum, Respondent filed the intent-to-use application in his own name, even though Respondent and Darryl Cazares were negotiating or had already agreed to form Hole-In-One Drinks, LLC, the entity through which they intended to sell HOLE IN ONE branded beverages.

Non-ownership: Petitioner asserted that the subject registration was void because Respondent Lajtay did not "own" the mark at the time of filing. However, because the application was filed under Section 1(b), Lajtay did not have to be the "owner" of the mark sought to be registered.

Section 1(b) concerns intent-to-use applications. Because in such an application the mark has not yet been used [or the applicant is not claiming use of the mark], and because ownership of a mark arises through use of the mark, Section 1(b) does not refer to “the owner of a trademark,” as does Section 1(a) of the Trademark Act which deals with use based applications.

As the Board recently held in Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880 *4 (TTAB 2019), a claim that an applicant was not the rightful "owner" of the mark at the time of filing "is not available when the application, as originally filed, is not based on use of the mark in commerce."

The Board observed, however, that "Petitioner could have asserted that Respondent did not have a right to file his intent-to-use application based on a lack of a bona fide intent to use the mark in commerce as of the filing date of the intent-to-use application."

Trial by Implied Consent: Rule 15(b) of the Federal Rules of Civil Procedure provides that when an issue not pleaded is tried by consent of the parties, express or implied, the issue will be treated as if it had been raised in the pleadings. Here, Lajtay did not expressly consent to trial of the issue of bona fide intent. Implied consent may be found only when the non-offering party "(1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was being offered in support of the issue." TBMP Section 507.03(b).

As noted, petitioner alleged that Lajtay was not the rightful owner of the HOLE IN ONE mark when he filed the application to register. To the Board "[i]t appears that Petitioner intended to allege that Respondent did not have a right to file the application due to lack of a bona fide intent to use the HOLE IN ONE mark by himself and that Respondent and Darryl Cazares had a bona fide intent to use the HOLE IN ONE mark as joint applicants until they formed Hole-In-One Drinks, LLC."

Petitioner, according to the Board, failed to appreciate the distinction between a use-based application and an intent-to-use application, and thus petitioner mistakenly referred to Lajtay's lack of "ownership" of the mark.

This mistake is somewhat understandable, however, because, as noted above, it was not until 2019―i.e., about two years after the petition in this proceeding was filed―that the Board held for the first time that a claim that an applicant is not the rightful “owner” of the applied-for mark is not available when the application is not based on use of the mark in commerce. Norris v. PAVE, 2019 USPQ2d at *4.

The Board observed that "had Petitioner properly pleaded its claim, the litigation would have proceeded unchanged."

Instead of having to prove whether the owner of the mark was Respondent or Respondent and Darryl Cazares, Petitioner had to prove whether Respondent or Respondent and Darryl Cazares collectively had the bona fide intent to use the HOLE IN ONE mark. Thus, Respondent was fairly apprised that the evidence submitted in this case supported the issue of whether Respondent had the right to file the application based on his sole bona fide intent to use the mark as of the filing date of the underlying intent-to-use application, and there was no reason for Respondent to object to any testimony or evidence because it was the same testimony and evidence for either the nonownership claim or a lack of a bona fide intent-to-use claim.

Lajtay introduced testimony regarding whether Darryl Cazares had an interest or a bona fide intent to use the mark as of the filing date. Thus, Lajtay "was aware that the current dispute centers on which person(s) or entity could properly be said to have had a bona fide intent to use the mark at the time of filing." (emphasis by the Board). And so the Board concluded that the lack-of-bona-fide-intent claim was tried by implied consent because Lajtay had fair notice of the issue and actively defended against it. And so the Board deemed that pleadings to be amended under FRCP 15(b).

Lack of Bona Fide Intent: The Board found that Lajtay and Darry Cazares jointly had a bona fide intention to use the mark HOLE IN ONE at the time of Respondent's filing. And so the application should have been filed in both names as joint applicants. See Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1309 (TTAB 2014). In fact, the Board noted, Hole-In-One Drinks, LLC was the first and only user of the mark, and thus is the owner of the mark.

Petitioner has established by a preponderance of the evidence that Respondent alone did not have a right to file the underlying intent-to-use application due to lack of a bona fide intent to use the HOLE IN ONE mark as of the filing date of the application that Respondent intended to use the HOLE IN ONE MARK with Darryl Cazares, as joint owners, and that, therefore, the underlying application for the mark was void ab initio. In other words, under these “shared circumstances,” Petitioner and Respondent jointly had the bona fide intent to use the mark in commerce that formed the basis of the application. See Am. Forests v. Sanders, 54 USPQ2d at 1864.

And so the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: Note that when one is filling out a TEAS application, the first box to be filled out is "Owner of Mark." Perhaps that should say "Applicant"?

Text Copyright John L. Welch 2020.

TTABlog Test: Which One of These Three Section 2(d) Refusals Was Reversed?

It has been said that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the involved goods or services! Here are three recent decisions in appeals from Section 2(d) refusals. One refusal was reversed. How do you think these came out? [Answers in first comment].

In Sensi Vigne & Vini SRL , Serial No. 79201501 (February 21, 2020) [not precedential] (Opinion by Judge Christen M. English). [Section 2(d) refusal of the mark shown immediately below, for "wines; sparkling wines" in light of the registered mark DULCE VIDA for "distilled spirits"].

In re Cracker Box Fireworks, LLC, Serial No. 88276676 (February 19, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of THE CRACKER BOX CARAMEL POP for "popcorn; caramel popcorn" [CARAMEL disclaimed], in view of the registered mark KARAMEL POP for "popcorn" [The English translation of "KARAMEL" is "CARAMEL"].

In re Max Mara Fashion Group S.r.l, Serial No. 87786944 (February 12, 2020) (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of of MAXMARA THE CUBE & Design for various clothing items "related to a customizable coat concept featuring coats and coat components that can be primarily transported within a portable cube carrier," in view of the registered mark THE CUBE for retail store services featuring clothing].

Read comments and post your comment here.

TTABlog comment: How did you do? Any WYHAs here? BTW, I'm from Chicago. I say "carmel," as in the high school, Mt. Carmel.

Text Copyright John L. Welch 2020.

Precedential No. 6: Canadian Party Must Have a U.S. Attorney Despite Reciprocity, Says TTAB

In a three-page Order, the Board ruled that a party domiciled in Canada, despite the appearance of an authorized Canadian trademark attorney/agent on its behalf, must appoint a qualified attorney licensed to practice law in the United States, or in a commonwealth or territory of the United States. The Canadian attorney/agent may represent the petitioner before the Board, but a qualified U.S. attorney must also represent it and must file all documents in the proceeding. Cloudworks Consulting Services Inc. v. Ongoing Operations, LLC, 2020 USPQ2d 10019 (TTAB 2020) [precedential] (Yong Oh (Richard) Kim, Interlocutory Attorney).

On December 31, 2019, Petitioner Cloudworks, a Canadian corporation domiciled in Toronto, filed a petition for cancellation of a registration for the mark CLOUDWORKS & Design for various computer services, on the grounds of abandonment and fraud. The petition was signed by a Canadian attorney/agent "listed on the Office of Enrollment and Discipline’s roll of recognized Canadian Trademark Agents." [Currently, only Canadian attorneys and agents are reciprocally recognized under Rule 11.14(c)(1). Any representation must be limited to parties located in Canada.]

The USPTO amended its rules, effective August 3, 2019, to require that all applicants, registrants, or parties to a proceeding before the TTAB whose domicile is not within the United States or its territories, be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the United States, or the District of Columbia, or any commonwealth or territory of the United States. See Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants, 84 Fed. Reg. 31498 (July 2, 2019), and Trademark Rule 2.11, 37 C.F.R. § 2.11; see also Patent and Trademark Rules 11.1 and 11.14, 37 C.F.R. §§ 11.1 and 11.14.

This requirement is not satisfied if a party, like Petitioner, is represented by a foreign attorney or agent, even if that attorney or agent has been granted reciprocal recognition by the USPTO pursuant to Patent and Trademark Rules 11.14(c) and (f), 37 C.F.R. §§ 11.14(c) and (f). A reciprocally recognized attorney or agent may only appear as an additionally appointed practitioner. A qualified attorney licensed to practice law in the United States, or in any Commonwealth or territory of the United States, must still be appointed as the party’s representative who will file documents with the Board and with whom the Board will correspond. See Patent and Trademark Rule 11.14(c)(2), 37 C.F.R. § 11.14(c)(2). [Emphasis in original]

Read comments and post your comment here.

TTABlog comment: This rule applies to all TTAB proceedings, even those commenced prior to August 3, 2019, and it applies to pending applications and issued registrations.

Apparently a reciprocally recognized Canadian agent or attorney may take or defend depositions, present oral argument, and negotiate on behalf of a Canadian party. What else is left of reciprocity?

Text Copyright John L. Welch 2020.

MANIMAL Not Confusable With GARANIMAL for Children's Clothing, Says TTAB

[This guest post was authored by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield]. Applicant Manimal, LLC sought to register the mark MANIMAL for a wide variety of clothing, including “children’s clothing.” Opposers Garan Incorporated and Garan Services Corp. are the makers of children’s clothing and the owners of several registrations containing the mark GARANIMAL, but the Board focused its Section 2(d) analysis only on Registration No. 0954125 for the block mark GARANIMAL for “children’s shirts and pants.” After going through the DuPont factors, the Board ultimately found that the MANIMAL mark was not likely to cause confusion with GARANIMAL. In an interesting discussion, the Board also found that applicant did not abandon the mark MANIMAL when it entered into a consent agreement allowing another company to use the mark MANIMALS for a variety of clothing items, including children’s clothing. Garan Incorporated v. Manimal, LLC, Opposition No. 91232774 (Feb. 13, 2020) (not precedential) (Opinion by Judge Marc A. Bergsman).

Section 2(d) Likelihood of Confusion Analysis: The Board dutifully analyzed each of the DuPont factors in concluding there was not likely to be confusion, but the discussions of the similarity of the goods, the strength of Opposers’ mark, and the similarity of the marks stood out.

Regarding the similarity of the goods, the applicant sells mostly athletic gear for adults, particularly wrist-wraps such as that shown above from applicant’s website. As Opposers sell children’s clothing, applicant tried to argue that the goods are “not related.” But as the Board has repeatedly stated, it “must consider the goods as the parties describe them in the application and registrations at issue.” Here, even though applicant may focus on adult clothing, it is seeking a registration including “children’s clothing,” including pants and shirts, which directly overlaps with Opposers’ listed goods.

As to the strength of the GARANIMAL mark, ultimately the Board found the marks to be “commercially strong, but not famous.” (This finding also ended Opposers’ Section 45(c) dilution claim.) The Board started its analysis with the inherent strength of the GRANIMAL mark, finding it to be “inherently strong” as a coined, fanciful term. The Board then dismissed the eight clothing registrations applicant identified with either “animals” or “-imals” as suffixes, finding, as the Board often will do, that eight registrations were a “far cry” from the “quantum of evidence of third-party use and third-party registrations that was held to be significant in both Jack Wolfskin … and Juice Generation … .”

Opposers presented several seemingly strong pieces of evidence concerning the commercial strength of its marks, including use of the mark since 1972, “substantial” sales and advertising expenditures, and a reference to the GARANIMAL clothing in a third-party book. Despite this evidence, the Board found the Opposers did not “clearly” establish fame given, in part, that it provided no market share information or distribution information about the third-party book.

Finally, although the Board did not rely on the eight other “-imals” registrations when analyzing the strength of the GARANIMAL mark, it did rely on these other marks to conclude, “Opposers must believe that various ‘animal’ or ‘imals’ suffix marks can be used and registered side by side without causing confusion provided there are minimal differences between the marks.” This admission, along with other evidence not discussed here, led the Board to conclude “that the marks are not similar in appearance, sound, connotation or commercial impression.”

Balancing the DuPont factors, the Board ultimately found “the dissimilarity of the parties’ marks outweighs the other applicable DuPont factors,” and concluded “Applicant’s mark MANIMAL for men’s, women’s and children’s clothing listed in the description of goods is not likely to cause confusion with Opposers’ GARANIMAL marks for clothing.”

Abandonment: During prosecution of the application at issue, the Examining Attorney cited another application for the mark MANIMALS that covered a wide variety of clothing, including infant and toddler clothing, as a potential Section 2(d) bar. Applicant traversed this potential bar by submitting a consent agreement with other application’s owner (the other application eventually did issue as a registration). In that agreement, the other applicant agreed to amend it description of goods to read “shirts featuring animals with humanoid characteristics,” and gave consent for this applicant to use and register MANIMAL.

Opposers argued that the consent agreement was merely a “naked consent” as this applicant had no right or ability to control the nature of the other party’s goods. Analyzing the portion of Section 45 that deals with abandonment, the Board observed that even if there was a “naked consent,” the Opposers still had to show that the agreement “caused Applicant’s mark to lose its significance as a trademark.” As Opposers put forth no such evidence––there was not even any evidence the third-party was still using MANIMALS––and applicant introduced evidence showing continuous use of its MANIMAL mark, the Board dismissed Opposers’ abandonment claim.

With that, the Board dismissed the opposition in its entirety.

Read comments and post your comment here.

TTABlog comment: Seems like the Board ran an end-run around Jack Wolfskin and Juice Generation .

Text Copyright John L. Strand and John L. Welch 2020.

TTAB Affirms 2(e)(3) Geographical Deceptiveness Refusal of EMPORIO ITALIA for Bedding

In a rare Section 2(e)(3) decision, the Board affirmed a refusal to register the proposed mark EMPORIO ITALIA for "bed sheets; pillow cases; comforters; bedspreads," finding the mark to be primarily geographically deceptively misdescriptive. Applicant argued that the mark merely suggests goods of high quality or style, and that, because of the high price of Italian bedding, only a few consumers make a connection between Italy and bedding. The Board disagreed on both counts. In re Branded LLC, Serial No. 87749455 (February 14, 2020) [not precedential] (Opinion by Judge Christen M. English).

Section 2(e)(3) bars the registration of a mark that is primarily geographically deceptively misdescriptive of the identified goods or services. A mark qualifies as primarily geographically deceptively misdescriptive if:

1. the primary significance of the mark is a generally known geographic location;
2. the goods do not come from the place named in the mark, but the relevant public would be likely to believe that the goods originate there; and
3. the misrepresentation is a material factor in the purchaser’s decision to buy the goods in question.

The involved application stated that "The English translation of 'EMPORIO ITALIA' in the mark is 'EMPORIUM ITALY.'" There was no dispute that the doctrine of equivalents applied here. The Board found not only that those proficient in Italian would stop and translate the mark, but also that "non-Italian speaking American consumers would readily perceive the mark as 'Emporium Italy' because the English translation is substantially similar in appearance and sound to Applicant’s mark EMPORIO ITALY."

As to the first prong of the test, the Board found that, considering the mark in its entirety, the primary significance of EMPORIO ITALIA is a generally known geographic location (Italy).

The evidence shows that Italy is not an obscure, remote or minor geographic location, but rather a European country with a population of more than 58 million and exports of more than $506 billion. Moreover, . . . the evidence establishes a connection between Italy and the goods covered by Applicant’s application – “bed sheets; pillow cases; comforters; bedspreads.” The word “emporia” meaning “emporium” in English is defined as “a place of commerce; trading center; marketplace” and “a large store with a wide variety of things for sale,” and merely reinforces the geographic significance of the term “Italia.”

Examining Attorney Jonathan Ryan O’Rourke submitted Internet and gazetteer evidence showing that bedding and textiles are among Italy’s main exports. The examining attorney thus met the initial burden of establishing a goods-place association between Applicant’s goods and Italy.

Applicant maintained that its mark is “suggestive, arbitrary, or fanciful, such as when a geographic mark may indicate that a product is stylish or of a high quality, i.e. HYDE PARK or NANTUCKET for clothing, and FIFTH AVENUE for a car.” The Board was unimpressed: “Because there is an association between the geographic location in Applicant’s mark and Applicant’s goods, Applicant’s mark is not suggestive, arbitrary or fanciful for Applicant’s goods.”

Applicant argued that there can be no goods-place association because Italian bedding is expensive, and “only … a very small group of people are aware of Italy producing very exclusive and expensive bedding.” However, applicant offered no evidence “that the price point of Italian bedding would affect whether consumers perceive an association between Applicant’s goods and Italy.” Moreover, the articles from national and regional newspapers in general circulation demonstrated the general public’s “exposure to an association between Italy and Applicant’s goods.”

The Board concluded that there is a goods-place association between Applicant’s goods and Italy.

The second prong of the test was met because applicant stated that “[t]he goods will come from or will originate from India. The goods are not and will not be manufactured, packaged, shipped from, sold in or have any other connection with the geographic location named in the mark.”

Finally, as to third factor, the Board concluded that applicant’s misrepresentation would be a material factor in the purchaser’s decision to buy applicant’s goods.

The dictionary definitions, gazetteer entry, third-party websites and articles summarized above establish that “Emporio Italia” means “Emporium Italy”; that Italy is a well populated European country with a large economy; that bedding and textiles used in bedding, as identified by Applicant, are principal and traditional products of Italy; and that Italy is well-known for producing high-quality bedding and textiles used in bedding. We infer from this evidence that a substantial portion of customers in the market for “bed sheets; pillow cases; comforters; bedspreads” will be motivated to purchase Applicant’s goods because of the mistaken belief that the goods originate in Italy.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2020.

MR1109, MR1108, and MR1107 Fail to Function As Trademarks for Electric Motors, Says TTAB

[This guest post was authored by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield.] The Board continues its roll with failure-to-function, this time affirming a refusal to register the proposed character marks MR1109, MR1108, and MR1107 for “permanent magnetic motors,” one shown below. The Board found the proposed marks were merely model designations and, therefore, the terms would not be seen source identifying marks. In re HD Medical Electronic Products Inc., Serial Nos. 87207915, 87207919, and 87207921 (Feb. 7, 2020) [not precedential] (Opinion by Judge Christopher Larkin).

As the Board explained, the key issue in failure-to-function cases is whether the proposed marks would be perceived as source indicators for the applied for goods. Here, the evidence the Examining Attorney Christina Calloway put forth that the proposed marks were merely model designations was seemingly overwhelming, including several screen shots from the Applicant’s website that specifically called out the proposed character marks as “item model number[s]” and “manufacturer part number[s].” One example is below:

(click on image for larger picture)
Applicant attempted to overcome the rejections by producing images of the motors at tradeshows, and of the product packaging in which the numbers were called out, but even some of those photographs identified the marks as a “part number”; the Applicant helpfully provided the red circle annotations:

The Board made quick work of the Applicant’s arguments that consumers viewed the character marks as something beyond model numbers, finding the “record is simply devoid of any evidence that anyone other than Applicant considers the proposed marks to be source-identifiers rather than indicators of product compatibility in automotive production and repair.” (Ed. note – The Applicant sometimes used the TM symbol after the model numbers, but that usage is just further evidence of the Applicant’s belief, not how consumers view the character marks.)

On appeal, the Applicant attempted to argue that because it had used the model numbers continuously since 2008, the marks had acquired distinctiveness pursuant to Section 2(f). But the Board made quick work of this argument on appeal because, even after the Examining Attorney twice suggested to the Applicant that it submit evidence to support a Section 2(f) claim during prosecution, the Applicant neither amended its applications nor sought to submit supporting evidence. Accordingly, as the Applicant first raised the argument on appeal, the Board found it untimely and gave it “no consideration.”

With that, the Board affirmed the three refusals to register.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Strand and John L. Welch 2020.

Precedential No. 5: Opposer Proves Standing Through Trade Name Use by Its Wholly Owned Subsidiary

In this long-running battle over the mark CINGULAR for cell phones and related products, the Board bifurcated the issues so that it could first rule on whether opposer has standing to bring the proceeding. Applicants claimed that opposer had stopped using the mark CINGULAR when it became AT&T, but the Board found that "[o]pposer is the owner of a majority share in a company named AT&T Mobility II LLC, which in turn holds a 100% interest in New Cingular, which uses the term CINGULAR in its trade name." AT&T Mobility LLC v. Mark Thomann and Dormitus Brands LLC, 2020 USPQ2d 43785 (TTAB 2020) (February 10, 2020) [precedential] (Opinion by Judge Frances Wolfson).

To establish standing, an opposer must prove that it has a “real interest” in the proceeding beyond that of a mere intermeddler, and a “reasonable basis” for its belief of damage. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). Opposer's four claims included a claim of false suggestion of a connection under Section 2(a). The Board noted that if opposer established its standing under Section 2(a), it was entitled to "rely on any available statutory grounds for opposition set forth in the Trademark Act." See A&H Sportswear Co. v. Yedor, 2019 USPQ2d 111513, *3 (TTAB 2019).

For a Section 2(a) claim, standing “does not rise or fall on the basis of a plaintiff’s proprietary rights in a term; rather, a Section 2(a) plaintiff has standing by virtue of who the plaintiff is, that is, the plaintiff’s personality or ‘persona.’” Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1385 (TTAB 1991).

We see no categorical legal bar precluding a corporate or institutional plaintiff from claiming, in a Board proceeding, a false suggestion of a connection with its trade name, where, as here, its allegations of standing are based on alleged injury from an unauthorized use of a mark that falsely suggests a connection with its persona.

in 2007, opposer legally changed its name from Cingular Wireless LLC to its current name of AT&T Mobility LLC. Opposer claimed that it may rely on use of the name CINGULAR by its controlled subsidiary, New Cingular Wireless PCS, LLC ("New Cingular"). Opposer had the burden "to show that New Cingular uses the term and that its corporate relationship with Opposer qualifies Opposer to claim the benefit of New Cingular’s use."

The Board first considered whether New Cingular uses the term CINGULAR. Applicant contended that Opposer abandoned the CINGULAR marks when it stopped using them after “making the switch” to AT&T; that Opposer’s CINGULAR registrations have expired; that New Cingular does business as AT&T Mobility and does not use its legal name (New Cingular Wireless PCS, LLC) except on formal legal documents; and that “[c]ustomer-facing interactions are under the name AT&T Mobility.”

The Board, however found that the evidence supported opposer’s contention that New Cingular uses the term “Cingular” in its trade name.

The name appears, in some cases prominently, on contracts or licenses. It would be viewed by those with whom New Cingular has entered into these agreements, such as professionals interested in the construction of cell towers as well as retail consumers purchasing cell phone wireless services under the AT&T Next program.

The evidence demonstrated that New Cingular conducts significant business in wireless communications using the trade name “New Cingular Wireless PCS, LLC.” The Board therefore concluded that "New Cingular uses CINGULAR as part of its trade name, and that the trade name is known to the relevant public."

The next question was whether use of CINGULAR by new Cingular established opposer’s standing? The Board observed that the parent corporation of a wholly owned subsidiary “can reasonably believe that damage to the subsidiary will naturally lead to financial injury to itself.” Univ. Oil Prods. Co. v. Rexall Drug & Chem. Co., 463 F.2d 1122, 174 USPQ 458, 459 (CCPA 1972). Opposer established that it owns a majority interest in AT&T Mobility II LLC, which owns a 100% interest in New Cingular. "Accordingly, Opposer has established the necessary relationship to New Cingular such that it 'can reasonably believe that damage to the subsidiary will naturally lead to financial injury to itself,'" and opposer thus proven that it has standing to pursue its false connection claim under Section 2(a).

The Board then set a schedule for discovery and trial of the substantive issues in the case.

Read comments and post your comment here.

TTABlog comment: Now AT&T has to prove its claims: (1) false suggestion of a connection under Section 2(a), (2) misrepresentation of source under Section 14(3), (3) lack of a bona fide intention to use the marks as of the filing dates of the underlying applications; and (4) that the applications are void ab initio due to an invalid assignment under Section 10(a)(1).

Text Copyright John L. Welch 2020.

TTAB Affirms Ornamentality Refusal of Green Y-Shaped Design on Harvester Machines

Applicant CLAAS KGaA failed to harvest any registrations from its applications to register the marks shown below, for forage harvesters and combine harvesters, respectively. The proposed marks each comprise "a stylized letter ‘Y’ positioned on both lateral outer contours of the harvester cladding downstream from the vehicle cab in the longitudinal direction of the harvester." The color green is claimed as a feature of the marks. The Board agreed with Examining Attorney April L. Rademacher that the marks are merely ornamental and fail to function as trademarks for the goods. In re CLAAS KGaA mbH, Serial No. 87112755 Serial No. 87112787 (February 20, 2020) [not precedential] (Opinion by Judge Christopher Larkin).

The Board observed that "[t] he critical inquiry in determining whether a designation functions as a mark is how the designation would be perceived by the relevant public.” Relevant considerations include the commercial impression made by the design, the practices of the trade, and any evidence of distinctiveness. Since applicant did not claim that either mark has acquired distinctiveness, only the first two considerations came into play, and the issue at hand was whether the proposed marks are inherently distinctive.

Applicant argued that harvesters and other large farm equipment are not typically ornamented (unlike shirts, hats, bags, jewelry, or other fashion items). Visual presentation is not crucial to the decisions of purchasers. Therefore, the markings on these products are more recognizable as trademarks than other types of goods.

Applicant maintained that "most manufacturers brand their equipment with names, logos, color and other schemes that are large, often covering major portions of the side of the harvester, tractor or other product." Thus applicant is following the customary practice in the industry.

The Examining Attorney contended that consumers typically do not perceive larger designs as trademarks. She noted applicant's admission that harvesters are often ornamented by different colors or designs, and she asserted that "consumers are use [sic] to seeing trademarks for these types of goods, including applicant’s own goods, is of lettering, which maybe [sic] large, but is small when compared to the size of applicant’s goods.”

The Board observed there was no evidence of the commercial impression actually made by the proposed marks. The evidence did show, however, that applicant has branded machines with the combination of the unusual shade of green (claimed in this mark) with the word CLAAS in large, thick, red letters.

The record shows that Applicant’s equipment consistently displays the shade of green that is claimed as part of the proposed marks, but the Federal Circuit has observed that “color is usually perceived as ornamentation. While ornamentation is not incompatible with trademark function, unless the design is of such nature that its distinctiveness is obvious, convincing evidence must be forthcoming to prove that in fact the purchasing public does recognize the design as a trademark which identifies the source of the goods." In re Gen. Mills IP Holdings, LLC, 124 USPQ2d 1016, 1018 (TTAB 2017) (quoting In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 422 (Fed. Cir. 1985) (internal quotation omitted)).

The Board found that applicant's "Y" designs "are simple and nondescript, especially when compared to the design marks in the third-party registrations that Applicant made of record to show that 'marks similar to that of Applicant have been registered often at the PTO.'" (see the four marks shown below)

The Board concluded that the juxtaposition of the green design on the CLAAS product shown above, with the color white bearing the CLAAS mark, "appears to be purely aesthetic, and there is nothing in the record to suggest that the placement of the green “Y” designs on the goods will serve any purpose other than ornamentation."

As to applicant's arguments regarding the conventions in the trade, the Board found no evidence to support those arguments. The record "shows that farm equipment commonly bears colors and designs, but does not show that those combinations of colors and designs . . . would automatically be recognized as source-identifiers, not ornamentation."

Finally, the third-party registrations made of record by the Examining Attorney "indicate that colors and designs appearing in various manners on farm equipment may be capable of functioning as marks, and may thus be registrable on the Supplemental Register, or may actually function as marks through the acquisition of distinctiveness, and may thus be registrable on the Principal Register.  Applicant seeks Principal Register registrations based on the inherent distinctiveness of its proposed marks, however, and we find, on the basis of the record as a whole, that consumers are not likely to view Applicant’s green 'Y designs' as marks rather than as ornamentation."

And so the Board affirmed the refusals.

Read comments and post your comment here.

TTABlog comment: Since the marks at issue were not color marks per se, but color in a particular shape, they cleared the Qualitex hurdle and were capable of being inherently distinctive.

Text Copyright John L. Welch 2020.

Precedential No. 4: TTAB Affirms 2(a) False Association and 2(c) Consent Refusals of TRUMP-IT Logo for Utility Knives

The Board affirmed two refusals to register each of the word+design marks shown below, for "utility knives," finding that the marks create a false association with President Trump under Section 2(a), and further finding that because President Trump did not consent to use of his name, the marks also violated Section 2(c). The Board pointed out that it has no authority to rule on the constitutionality of the Trademark Act, but it considered and rejected applicant's claim that Sections 2(a) and 2(c) are unconstitutional. In re ADCO Industries – Technologies, L.P., 2020 USPQ2d 53786 (TTAB 2020) [precedential] (Opinion by Judge Marc A. Bergsman).

Rule 2.61(b) Requirement: The Board reversed a refusal based on applicant's non-responsive response to a Rule 2.61(b) request for information regarding the relationship, if any, between Applicant and President Trump. Instead, the Board chose to presume from the evasive response that there was no such relationship.

Section 2(a) False Association: In addition to protection of consumers, Section 2(a) is intended to protect a person from losing the right to control his or her identity. The evidence submitted by Examining Attorney Amy L. Kertgate established that "Donald Trump, the President of the United States, is a well-known figure," and therefore his identity "is an interest that Section 2(a) of the Trademark Act is design to protect."

The fact that Donald Trump has never used the term “Trump-It” as his name or identity does not obviate the false suggestion of a connection refusal. A term may be considered the identity of a person even if the person has not used the term. All that is required is that the mark sought to be registered clearly identifies a person (in this case, Donald Trump).

The marks at issue here include design elements that call to mind Donald Trump: both marks display his renowned hair wave and one mark includes a play on Trump’s campaign slogan “Make America Great Again.” Moreover, Trump's companies use the name “Trump” as a trademark for a wide variety of goods and services. He licenses rights to the name and the Trump name appears on buildings that he and his companies own.

The Board found that applicant's marks are a close approximation of Donald Trump's name or identity "because the marks’ design elements and wording evoke Donald Trump." As further, albeit unnecessary, support for this conclusion was the fact Donald Trump is associated with numerous goods and services.

In light of the variety of goods that are sold under the Trump name, the Board concluded that "consumers encountering utility knives bearing Applicant’s mark, shown below, will perceive Applicant’s utility knives to be just one more product for which Donald Trump has licensed the use of his name."

Considering all of the evidence of record before us, we find that (i) Applicant’s marks are a close approximation of Donald Trump’s name and identity; (ii) Applicant’s marks point uniquely and unmistakably to Donald Trump; (iii) Donald Trump has no connection with Applicant; and (iv) Donald Trump’s name and identity is of sufficient fame and reputation that when Applicant’s marks are used on utility knives, a connection with Donald Trump would be presumed. Therefore, we find that the Examining Attorney established that Applicant’s marks for utility knives falsely suggest a connection with Donald Trump.

Section 2(c): In pertinent part, Section 2(c) bars registration of a mark that "[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent." Whether consent  is required depends on "whether the public would recognize and understand the mark as identifying a particular living individual." A "name" does not have to be a full name, but can be a first name, surname, shortened name, pseudonym, stage name, title, or nickname.

While with lesser-known figures there may have to be evidence showing that the consuming public connects them with the manufacturing or marketing of the goods at issue, well-known individuals such as celebrities and world-famous political figures are entitled to the protection of Section 2(c) without having to evidence a connection with the involved goods or services.

As applicant admits, Donald Trump is a well-known political figure and a celebrity. Therefore the Board found that because Applicant’s marks include Donald Trump’s name and likeness, his consent to register was required. And so the Board affirmed the Section 2(c) refusal.

Constitutional Issues: Although The Board has no power to strike down a statutory provision as unconstitutional, recent case law suggests that it may address constitutional issues. In fact, parties are required to raise constitutional issue if the issues are to be preserved for appeal. See In re DBC, 545 F.3d 1373, 89 USPQ2d 1123, 1127-28 (Fed. Cir. 2008) (requiring a party to raise a constitutional challenge to the agency “gives [the] agency an opportunity to correct its own mistakes … before it is haled into federal court,” and “it promotes judicial efficiency, as ‘[c]laims generally can be resolved much more quickly and economically in proceedings before [the] agency than in litigation in federal court’”)

Here, applicant claimed that refusal of a registration based on Section 2(a) false association and on Section 2(c) constitutes an impermissible restriction of the right to freedom of speech protected under the First Amendment. The Board disagreed.

Section 2 does not prevent an applicant from using any slogan it chooses on its merchandise or in its advertising. It provides only that the mark itself must meet certain criteria in order to be registrable. Moreover,,even if considered a restriction on speech, the "false association" provision withstands constitutional review because (unlike the restrictions in Tam and Brunetti) it furthers the goal of prevention of consumer deception in source-identifiers and is well within Congressional authority.

Likewise, Section 2(c) protects consumers against source deception. "Such a prohibition, not on use, but only on registration, is comfortably within Congress’s authority to protect the public against misleading or deceptive source-identifiers, and thus stands outside the speech rights protected by the First Amendment."

And so the Board upheld the Section 2(a) and Section 2(c) refusals to register.

Read comments and post your comment here.

TTABlog comment: WYHA? I want to see a case involving a 2(a) or 2(c) refusal where the mark incorporates a political message that uses the President's name. Then what happens under the First Amendment?

Text Copyright John L. Welch 2020.

TTABlog Test: Which One of These Three Section 2(d) Refusals Was Reversed?

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

In re Thomas Barnette, Serial No. 87425197 (January 29, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of YOUR EDUCATIONAL TOUR, YOUR WAY for "Organization of travel for educational purposes; Travel agency services, namely, making reservations and bookings for transportation for students and teachers participating in educational travel tours; Travel guide and travel information services relating to travel for educational purposes," in view of the registered mark TOUR YOUR WAY & Design for "chauffeur and transportation services for tours"].

In re Frantoio Ulivi Di Liguria S.r.l., Serial No. 79250730 (February 5, 2020) [not precedential] (Opinion by Judge Lorelei Ritchie). [Section 2(d) refusal of the mark DUA &  Design, shown below left, for, inter alia, "pesto sauce; condiments, namely, vinegar and sauces; flavored vinegar" in light of the registered mark DUA BELIBIS & Design, shown below right, for “savory sauces used as condiments” as well as “vinegar"].

In re Toyota Jidosha Kabushiki Kaisha , Serial No. 87734664 (February 6, 2020) (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of SKYDRIVE for, inter alia, aircraft; structural parts for aircraft; flying cars and structural parts therefor; roadable aircrafts; structural parts for roadable aircrafts; and structural parts for vertical take-off and landing aircraft capable of road travel, in view of the registered mark SKY DRIVE for "speedometer speed sensors"].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2020.

Precedential No. 3: TTABlog Test: Is "J HUTTON" Primarily Merely a Surname for Eyewear?

The USPTO refused registration of the proposed mark J HUTTON for “Eyewear, eyewear frames and sunglasses," finding the mark to be primarily merely a surname under Section 2(e)(4). Applicant Colors in Optics argued that the mark is not a surname but rather a reference to a specific individual due to the inclusion of the initial “J” in the mark. How do you think this appeal came out? In re Colors in Optics, Ltd., 2020 U.S.P.Q.2d 48321 (T.T.A.B. 2020). [precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).

Applicant did not challenge the evidence submitted by Examining Attorney Susan Stiglitz that HUTTON is used as a surname in the United States, and it admitted that Hutton is the surname of a person associated with Applicant, Jade Hutton. In fact, Applicant submitted a consent to the use of her name in the mark. However, applicant pointed to third-party registrations for various registered marks consisting of surnames preceded by one or more initials, which registrations issued without a Section 2(f) claim of acquired distinctiveness.

Applicant did not dispute that HUTTON is primarily merely a surname. It contended that the mark as a whole refers to and identifies Jade Hutton, an individual. The Board, however, observed that "[p]erhaps that was Applicant’s intention, but the question is not what J HUTTON means to Applicant. The question is what it means to relevant consumers."

The Board distinguished the J.J. YELEY case [TTABlogged here], in which a well-known NASCAR driver sought to register his name as a trademark for a host of goods. Mr. Yeley submitted a declaration explaining how the mark J. J. YELEY was used, noting that many other NASCAR drivers used their names as trademarks. The evidence established that J. J. YELEY had a recognized meaning as a mark due to his popularity as a race car driver. The Board reversed the surname refusal, concluding that “the primary significance of J. J. YELEY is a personal name and the identity of the race car driver.” The Board also noted it decision in In re P.J. Fitzpatrick, Inc., 95 USPQ2d 1412, 1413 (TTAB 2010) [TTABlogged here], where it found that the mark P.J. FITZPATRICK, INC. was “an entire personal name, not ‘merely’ a surname”).


J.J. Yeley
Here, the evidence showed that Jade Hutton is the name of a person associated with Applicant, but there was no evidence that consumers identify Ms. Hutton as "J Hutton." The Board found this case to be indistinguishable from In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265, 267 (CCPA 1953), in which S. SEIDENBERG & CO'S was found to be primarily merely a surname, the court stating: "It seems to us that 'Seidenberg' is clearly a surname which can have no other meaning or significance than that of a surname. Nor do we believe that the addition of the single initial is sufficient to remove it from that category."

As the Board noted in Fitzpatrick, “if a mark consists of two initials (or more) coupled with a surname, it typically will convey a commercial impression of a personal name, and thus generally will not be primarily merely a surname.” 95 USPQ2d at 1413. As the Board further explained however, “there is no per se rule” regarding the addition of initials to surnames. Yeley, 85 USPQ2d at 1154; see also Fitzpatrick, 95 USPQ2d at 1413 (noting I. Lewis did not set out a per se rule).

In some cases, adding one initial to a surname may lead consumers to perceive the mark as a personal name, while in others even adding two initials may not create such an impression. "In all cases involving a surname preceded by one or more initials, it is the factual record that matters most, because only from such a record can we make reliable findings about consumer perception."

The Examining Attorney made a prima facie showing that J HUTTON is primarily merely a surname, and applicant provided no evidence of consumer perception of the proposed mark. The third-party registration evidence submitted by applicant showed that "the combination of one or more initials with a surname may be found, depending on the evidence in the case, to indicate that the public would not perceive such a designation as primarily merely a surname, but those registrations are not evidence of how consumers will perceive the mark at issue in this appeal."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How about "JAY HUTTON?"

I think "J WELCH" would not be perceived as primarily merely a surname. "L WELCH," maybe, but not "J WELCH."

Text Copyright John L. Welch 2020.

Precedential No. 2: TTAB Finds CHARLESTON HARBOR TOURS Geographically Descriptive of . . . Guess What?

The Board sustained an opposition to registration of CHARLESTON HARBOR TOURS for "Arranging of travel tours and cruises; Boat transport; Conducting boat charters; Conducting power boat charters; Conducting sightseeing travel tours by boat; Conducting sightseeing travel tours for others; Travel tour conducting; Travel tour guide services; Yacht and boat charter services" on the ground that the proposed mark is primarily geographically descriptive under Section 2(e)(2). Wayback Machine evidence, authenticated by testimony from an official of the Internet Archive, was admitted to prove the dates of publication of various website pages. Spiritline Cruises LLC v. Tour Management Services, Inc., 2020 U.S.P.Q.2d 48324 (TTAB 2020) [precedential] (Opinion by Judge Cynthia C. Lynch).

Hearsay objection: Opposer Spiritline offered "screenshots from particular websites on certain dates from the past that are indicated as archive dates on the printouts." Applicant objected to the Wayback Machine printouts "as lacking foundation, lacking proper authentication, hearsay, and double-hearsay." The Board adopted the approach of a number of courts and overruled the objections because a witness from the Internet Archive testified about how the Wayback Machine website works and how reliable its contents are.

Like other Internet evidence that displays a URL and a date, Wayback Machine printouts "generally can be admissible under notice of reliance as self-authenticating Internet evidence, but such Internet evidence is admissible only for what it shows on its face."

Opposer seeks to rely on the Wayback Machine evidence in this case not only for what these pages show on their face, but also to establish that third-party websites displayed “Charleston Harbor Tours” on various dates in the past. Accordingly, Opposer needed to, and properly did, use appropriate witness testimony to authenticate the printouts and lay the foundation to support that intended evidentiary use.

Here, the Wayback Machine evidence was authenticated by Christopher Butler, Office Manager of the Internet Archive, who described the documents as "True and accurate copies of printouts of the Internet Archive’s records of the HTML files or PDF files for the URLs and the dates specified in the footer of the printout (HTML) or attached coversheet (PDF)."

As to applicant's hearsay objection, "to the extent the Wayback Machine printouts are offered to show how the webpages appeared on particular dates – the 'truth' of the capture as of the archive date – Mr. Butler’s testimony establishes that the printouts qualify under the business records exception. See Fed. R. Evid. 801(c), 802."

He established that the printouts attached to his affidavit come from the Internet Archive’s regularly conducted activity. Mr. Butler explained that the Internet Archive’s automated web crawlers surf the Internet and automatically store copies of webpages by creating unaltered copies of webpages as they appear on a given day (reflected on the face of the archived webpage record). When a screenshot is captured using the Wayback Machine, the screenshots will display the URL of the web page archived by the Wayback Machine along with the date the screenshot was captured by the crawler and archived. And the webpages are not offered to prove the truth of any matter asserted in the underlying webpage contents, so there is no hearsay problem in that regard.

Other witnesses provided corroborating testimony to support the authenticity of certain of the Wayback Machine evidence and the accuracy of the captures as of the dates in question.

Section 2(e)(2): A mark is primarily geographically descriptive if: (1) the primary significance of the mark is the name of a place that is generally known; (2) the goods or services originate in the place identified in the mark; and (3) the relevant purchasers would associate the identified services with the place named, i.e., the public would believe that the services come from the place named. See In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889, 891 (CCPA 1982);

Applicant sought registration under Section 2(f), and therefore it was established that the proposed mark lacks inherent distinctiveness because it is primarily geographically descriptive. However, the question was how descriptive, since the answer to that question "is helpful in laying a foundation for our discussion of acquired distinctiveness." The Federal Circuit has held that "'the applicant’s burden of showing acquired distinctiveness increases with the level of descriptiveness; a more descriptive term requires more evidence of secondary meaning.'" Royal Crown, 127 USPQ2d at 1047 (quoting In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)). The Board saw no reason why that same principle should not apply to Section 2(e)(2).

The evidence established that Charleston, South Carolina is a well-known tourist destination and thus CHARLESTON "is the name of a place known generally to the public.” See Newbridge Cutlery, 113 USPQ2d at 1448-49. Likewise, the evidence established that CHARLESTON HARBOR is well-known. And it was undisputed that applicant's service emanate from Charleston and include tours of Charleston Harbor.

In assessing the degree of descriptiveness, especially because Charleston Harbor is a widely recognized place associated with the particular services at issue, and because numerous third parties in the tour and charter industry refer to Charleston Harbor, we find CHARLESTON HARBOR highly geographically descriptive in this context.

The word TOURS is, of course, generic for applicant's services and "because 'tours' are associated with places, it contributes to the primarily geographic significance of the mark as a whole." The Board has repeatedly held that Section 2(e)(2) is still applicable when "generic matter is included if the mark as a whole retains its primarily geographic significance."

The Board concluded that, considering the proposed mark in its entirety, "CHARLESTON HARBOR TOURS is primarily geographically descriptive under Trademark Act Section 2(e)(2), and highly so."

Acquired Distinctiveness: Because CHARLESTON HARBOR TOURS is highly descriptive, "the standard for establishing acquired distinctiveness becomes commensurately high." Royal Crown Cola, 127 USPQ2d at 1047; In re Bongrain Int’l Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990) (“[T]he greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.”)

The ultimate burden of proving acquired distinctiveness rested with Applicant Tour Management. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988). Considering the entire record, the Board concluded that "consumers do not recognize 'Charleston Harbor tours' as indicating a single source for the recited services."

The Board found the Opposer Spritline's Wayback Machine evidence and testimony and the third-party corroborative testimony "show fairly pervasive use of the same wording in the proposed mark by others in the industry during the relevant timeframe." This evidence undermined applicant's claim of substantial exclusivity and created "a serious problem for Applicant, because it interferes with the relevant public’s perception of the designation as an indicator of a single source." See, e.g., Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940-41 (Fed. Cir. 1984) (“When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances.”)

Even without that evidence, the Board would have "discretion to find Applicant’s use since 2003 insufficient where, as here, the proposed mark is highly primarily geographically descriptive." Applicant provided evidence of its advertising efforts, promotional expenditures, and sales under the mark for 2003 to 2015, noting that it served some 9,000 consumers per month during peak tourist season. However it offered no survey or other direct evidence of consumer perception of CHARLESTON HARBOR TOURS as a source indicator. The Board was not impressed.

Ultimately, we find that the evidence demonstrates that consumers would perceive CHARLESTON HARBOR TOURS not primarily as a source-indicator for Applicant, but rather as a common geographic place name accompanied by a generic term, used by different entities in the industry to refer to the origin and location of services such as those recited by Applicant.

And so the Board sustained the opposition.

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TTABlog comment: Hat Tip to FOB Phil Summa for "bringing home the bacon."

Text Copyright John L. Welch 2020.