TTAB Denies Section 18 Petition to Restrict "CodeRED" Registration

In a rare Section 18 proceeding, the Board denied a petition to restrict and rectify Respondent GastonCo's registration for the mark codeRED & Design for "Batteries and battery chargers; Communications headsets for use with communication radios, intercom systems, or other communications network transceivers; Ear buds; Ear phones; Megaphones; Microphones for communication devices; Speaker microphones." Petitioner Premier contended that GastonCo uses its mark on goods for use with two-way radio communication devices, for use by those in the public safety, tactical, security and hospital industries, and by airsoft and paintball hobbyists. According to petitioner adding those restrictions to the identification of goods would avoid confusion with petitioner's mark CODE RED for flashlights and other lighting products. The Board disagreed. Premier Accessory Group, LLC v. GastonCo, LLC, Cancellation No. 92066817 (April 28, 2020) [not precedential] (Opinion by Judge David K. Heasley).

Section 18 of the Lanham Act provides that "the Director may ... restrict or rectify with respect to the register the registration of a registered mark…." 15 U.S.C. § 1068. This Section "gives the Board the equitable power to, inter alia, restrict the goods or services identified in an application or registration." Embarcadero Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1828 (TTAB 2013) (internal punctuation omitted).

A party seeking to restrict a registrant’s broadly worded identification of goods under Section 18 must plead and prove "(1) that the registrant is not using its mark on goods or services that would be excluded by the limitation, and (2) that the limitation would result in the avoidance of a finding of a likelihood of confusion." Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 (TTAB 1998) (citing Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co., 34 USPQ2d 1266, 1271 (TTAB 1994)); TBMP § 309.03(d).

Respondent's Use: The Board found, based on respondent's discovery responses and statements in its brief, that respondent uses its mark only for two-way radio communication devices. As to the proposed restriction of the classes of customers to the public safety, tactical, security and hospital industries, as well as airsoft and paintball hobbyists, the Board declined to decide whether respondent's use was so limited because, in any case, those restrictions would not avoid a likelihood of confusion.

Likelihood of Confusion?: Turning to the second prong of the Section 18 determination, the Board (not surprisingly) found that the wording “CODE RED” is the dominant element of Respondent’s mark and the design element in Respondent’s mark is not sufficient to distinguish the two marks. "If anything, Respondent’s logo reinforces the literal part of the mark, suggesting that the helmeted man in silhouette is prepared for a 'code red' situation." In short, the Board found the marks to be "extremely similar."

As to the respective goods, the Board agreed with petitioner that "[t]he Class number 'is wholly irrelevant to the issue of registrability under section 1052(d), which makes no reference to classification.'" In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018).  The Board also agreed that "Respondent’s actual goods are two-way radio communication devices. Petitioner’s goods consist, essentially, of flashlights and other portable lighting products such as headlamps and tactical flashlights, as well as parts and accessories therefor."

The Board, however, found that even with the restrictions proposed by petitioner, the parties’ goods are sufficiently related (complementary) that a likelihood of confusion exists: "the purchasing public could easily perceive goods bearing the parties’ marks as related product lines from the same source." The Board pointed out once again that "[t]he issue is not whether the goods will be confused with each other, but rather whether the public will be confused as to their source."

The proposed restriction of Respondent’s batteries and communications devices for use in industries that include public safety, tactical, and security make apparent that the settings for use of Respondent’s goods often also would necessitate the use of flashlights, headlamps, or lanterns. Petitioner’s “headlamps” could complement Respondent’s “headsets”. Petitioner’s “tactical flashlights” could provide illumination for persons wearing Respondent’s headsets.

As to the restriction regarding classes of consumers, petitioner's evidence suggested where respondent focused its advertising, "but does not prove that Petitioner’s proposed restriction reflects the full extent of Respondent’s actual client base." The Board instead found that respondent’s customers include any businesses, governmental entities, associations, groups or individuals who may wish to purchase goods for two-way radio communication devices. Moreover, even if the classes were restricted as petitioner proposed, that would still not avoid confusion. For example, "[a] property manager seeking to equip his night watchmen or security guards with two-way radio communications headsets and other devices could also equip them with Petitioner’s headlamps, tactical flashlights, or other portable lighting products."

Assuming arguendo that respondent's customers are sophisticated, they could still believe that the involved goods came from the same source. "[E]ven careful purchasers who do notice the difference in the marks will not ascribe it to differences in the source of the goods, but will see the marks as variations of each other, pointing to a single source.” In re ICoat Co., LLC, 126 USPQ2d 1730, 1739 (TTAB 2018).

Conclusion: Petitioner failed to carry its burden of proof to show that the proposed restriction would negate a likelihood of confusion, and so the Board denied the Section petition.

Read comments and post your comment here.

TTABlogger comment: Red card shown to petitioner. It's not easy to justify a Section 18 restriction.

Text Copyright John L. Welch 2020.

TTABlog Test: Is BLOCKCHAIN DRILLING Merely Descriptive of Offshore Drilling Services?

The USPTO issued a Section 2(e)(1) refusal to register the mark BLOCKCHAIN DRILLING, finding it to be merely descriptive of "Drilling of offshore oil or gas wells utilizing blockchain technology and solutions to enhance efficiencies and reduce costs" and "Implementation of blockchain technology and solutions, namely, providing a nondownloadable cloud-based computer software platform to enhance efficiencies and reduce costs in drilling offshore oil and gas wells" [DRILLING disclaimed]. Applicant argued that the mark is incongruous and therefore "at worst suggestive" of the services, since the "blockchain is traditionally used in ledgers, accountant's records, and in other data storage systems," not in the rough-and-tumble field of oil and gas well drilling. How do you think this came out? In re Diamond Offshore Drilling, Inc., Serial No. 87766205 (April 27, 2020) [not precedential] (Opinion by Judge Lorelei Ritchie).

Applicant submitted several dictionary definitions of "blockchain," all of which referred to the term in the context of "bitcoin" or "cryptocurrency" The Board, however, took judicial notice of other definitions of the term that are not so limited: e.g., "a digital database containing information (such as
records of financial transactions) that can be simultaneously used and shared within a large, decentralized, publicly accessible network; also: the technology used to create such a database."

Examining Attorney David A. Hoffman submitted a Wikipedia entry for “blockchain” that "reiterates that blockchain technology, while often used in reference to cryptocurrency exchanges, may be implemented in other systems, including supply chain monitoring."

Blockchain: A blockchain, originally block chain, is a growing list of records, called blocks, which are linked using cryptography. Each block contains a cryptographic hash of the previous block, a timestamp, and transaction data (generally representing a merkle tree root hash). By design, a blockchain is resistant to modification of the data. It is “an open, distributed ledger that can record transactions between two parties efficiently and in a verifiable and permanent way.”

The Examining Attorney also submitted an excerpt evidence from applicant’s website, touting its “Blockchain Drilling platform” as providing “transparency, provenance and immutability across the entire supply chain.”

Based on this evidence, the Board failed to see the incongruity that applicant claimed. Instead it found that the mark "when viewed in relation to Applicant’s identified services, immediately conveys that Applicant contemplates implementing 'blockchain' technology as a feature of its 'drilling' activities." Of course, the fact that applicant may be the first and only user does not immunize the mark from being merely descriptive of the services.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: So on its face the mark may seem incongruous, but when you drill down to the actual services, maybe not.

Text Copyright John L. Welch 2020.

Precedential No. 15: TTAB Dismisses MOKE Opposition Due to Failure to Prove Priority

The Board dismissed the Section 2(d) claim in this opposition to registration of the mark MOKE & Design for "motor vehicles, namely, four wheel low speed land vehicles and automobiles," because Opposer Moke America LLC's testimony and evidence failed to establish prior rights in the mark MOKE. The Board also jettisoned opposer's claim that applicant was not the owner of the challenged mark, because opposer had not raised that claim in its pleading and the issue was not tried by implied consent. Moke America LLC v. Moke USA, LLC, 2020 USPQ2d 10400 (TTAB 2020) [precedential] (Opinion by Judge Marc A. Bergsman).

Priority: A party that bases its Section 2(d) claim on common law rights in a mark must prove that it has priority of use. See, e.g., Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720, 1721 (Fed. Cir. 2001). The evidence showed that applicant made its first sale of a MOKE brand vehicle on August 10, 2015.Therefore, opposer had to demonstrate ownership and use of its pleaded common law mark prior to that date. See Giersch v. Scripps, 90 USPQ2d 1020, 1023 (TTAB 2009). See also Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981).

Opposer acquired the MOKE trademark from Mini Mania, Inc. on November 14, 2016, through an assignment and license back, but contended that it was entitled to rely on Mini Mania’s prior use of the mark. Opposer's CEO provided copies of certain sales records obtained from Mini Mania covering the period 1993-2016, and he testified that he understood that, based on information performed by his lawyer, Mini Mania had used the mark since 1971.

Moke USA objected to the admission of the Mini Mania sales documents on the ground of hearsay, arguing that the business records exception did not apply because Moke America’s CEO was not the custodian of the documents and could not authenticate them. The Board first considered whether the objection was untimely, since it was not raised until Moke USA’s brief. Moke USA claimed that the objection was substantive, not procedural, and therefore need not be previously raised, but the Board found it to be procedural. As to timeliness, the Board observed that “an objection to foundation raised for the first time in a trial brief is untimely because the party offering the testimony (whether by deposition, affidavit or declaration) does not have the opportunity to cure the alleged defect.” 

The Board then addressed the question of the timeliness of an objection when the testimony is submitted via declaration rather than orally.
 

When a party takes testimony by deposition, it is clear that an objection to foundation raised during the deposition, and maintained in that party's trial brief, is timely. When a party offers testimony by declaration or affidavit, the defending party cannot seasonably raise an objection to foundation, and any other curable defect, until after receipt and review of the declaration or affidavit, which may be after the close of the relevant testimony period. 

The Board explained that the timing of the objection may vary from case to case. For example, the defending party may seek oral cross-examination, inquire regarding the foundation for the other party’s testimony, and then object on the deposition record. Or it may serve an objection on the other party, file a copy with the Board, and assert the objection in its brief. The offering party may seek an extension or re-opening of its testimony period in order to cure the defect. Finally, the defending party may file a motion to strike no later than the 20 days permitted for an election of cross-examination.
 

The key aspect is that a timely objection is lodged. The manner in which it is raised may vary depending on the circumstances. The above-noted process for raising procedural objections regarding testimony by affidavit or declaration is applicable to all pending and future inter partes cases before the Board. 

Although Moke USA elected to cross-examine Moke America’s CEO, it did not raise its objection as to foundation during the deposition, but rather first objected to the sales documents in its brief. The Board overruled Moke USA’s objection as untimely and it considered the sales documents as falling within the business records exception to the hearsay rule. 

Turning to the CEO's testimony regarding prior use of the mark, his testimony that he was aware of Mini Mania's MOKE-branded products for years was not hearsay because he was testifying as to his personal knowledge. See F.R.E. 602. However his testimony regarding use since 1974, based on what his attorneys told him, was inadmissible hearsay.

The Board then considered the evidence as a whole, "as if each piece of evidence were part of a puzzle which, when fitted together, establishes prior use,” W. Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994). It found that opposer's evidence fell short. The November 14, 2016 assignment without any evidence of use did not prove priority.

The Board found the CEO's testimony "simply too vague with respect to when and how Mini Mania used the MOKE trademark. It is also inconsistent and contradictory. Consequently, it fails to move us." The Mini Mania sales records merely listed a product description (e.g., speedo cable) next to the word MOKE, and thus did not prove use of the mark on any goods sold in commerce. Moreover, opposer's CEO lacked personal knowledge as to whether Mini Mania ever labeled its products with the mark.

If there is no proof that Mini Mania used the trademark in commerce prior to the assignment to Opposer, then there is no proof that Opposer obtained any trademark rights through the assignment. See, e.g., Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783, 1790 n.9 (TTAB 2006) (“the law is well established that an assignee stands in the shoes of its assignor”). See also A & L Labs., Inc. v. Bou-Matic LLC, 429 F.3d 775, 77 USPQ2d 1248, 1252 (8th Cir. 2005) (“Trademark ownership may be assigned, but the assignor may transfer only what it owns. Before Bou-Matic may be declared owner of all sixty-seven marks, it must show DEC owned or used all sixty-seven.”) (citation omitted).

The Board therefore did not reach the merits of the likelihood of conclusion claim.

Implied Consent: The Board then turned to opposer's other claim, asserted in opposer's brief, that the opposed application was void ab initio because applicant was not the owner of the mark. Applicant objected to consideration of this claim since it was not raised in the pleadings.

Opposer pointed to its failed summary judgment motion, where it had raised this issue, arguing that applicant had thus been put on adequate notice of this claim. The Board, however, had denied that motion as untimely (after the deadline for pretrial disclosures had passed), even before applicant had filed its opposition to the motion.

The Board found it clear that from applicant's objection in its brief that applicant did not expressly consent to trial of this issue. "The Board may find implied consent of an unpleaded issue where the nonmoving 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 § 507.03(b); see also Morgan Creek Prods. Inc. v. Foria Int’l Inc., 91 USPQ2d 1134, 1138 (TTAB 2009)."

The Board relied on "the dictates of fairness to determine whether the following facts establish whether there was an absence of doubt that Applicant was aware that Opposer was trying the
ownership issue."

Opposer asserted that if first learned of the claim during from applicant's testimony that the MOKE & Design logo was created by an independent agency and therefore applicant was not the owner of the copyright in the logo, and thus not the owner of the mark.

The Board found that neither this testimony nor opposer's untimely summary judgment motion apprised applicant that opposer was asserting this new claim. The claim was not mentioned by the Board in its denial of the motion. Applicant did not introduce any testimony or evidence on the issue. And opposer did nothing to put applicant on notice that it would re-raise this claim after the motion was denied. When the Board then re-opened opposer's testimony period (after the failed motion), opposer did not submit any testimony or evidence on this issue. Nothing in the trial record put applicant properly on notice of this claim.

“The non-moving party must be aware that the issue is being tried, and therefore there should be no doubt on this matter.” Morgan Creek Prods. Inc., 91 USPQ2d at 1139. * * * [W]e find that the parties did not try by implied consent the claim that Applicant’s application was void ab initio and, therefore, we will not amend the pleadings to include that claim.

Conclusion: And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: Why didn't Mini Mania, who has a license back, testify regarding its prior use of the mark?

Text Copyright John L. Welch 2020.

Supreme Court Lowers the Bar for Obtaining a Trademark Infringer’s Profits

Wolf Greenfield IP Alert: by John L. Strand and John L. Welch.

INTRODUCTION

On April 23, 2020, the Supreme Court held that the federal Trademark Act (the Lanham Act) does not require that a plaintiff show that an accused infringer “willfully” infringed in order for a court to make an award of defendant’s profits .

BACKGROUND

Section 32 of the Lanham Act (15 U.S.C. § 1114) provides that once a defendant is found to infringe a trademark, the plaintiff may recover, among other damages, “defendant’s profits” derived from the infringement. The statute further provides, however, that this award must be made “subject to the principles of equity.” The Second Circuit and other circuit courts have held this limitation to mean that awards of profits can be made only after a finding that defendant willfully infringed the trademark. Other circuit courts have held that although a defendant’s willfulness is a factor to consider in whether an award of profits should be made, a finding of willfulness is not a strict prerequisite to such an award.

This case arose out of a lawsuit brought by Romag Fasteners against Fossil for trademark infringement. As one might conclude from its name, Romag Fasteners sells magnetic snap fasteners. Fossil used those fasteners on its handbags and other products, but eventually started accepting and selling products manufactured in China that had counterfeit Romag fasteners. A jury found in favor of Romag on the question of infringement, but also concluded that Fossil had not acted “willfully” when it sold its products incorporating counterfeit fasteners. Because of that finding, and in view of Second Circuit precedent requiring a finding of willfulness for an award defendant’s profits, the district court refused to award to Fossil’s profits, and the court of appeals affirmed.

SUPREME COURT DECISION

In an opinion by Justice Gorsuch, the Supreme Court vacated the court of appeals’ decision. The Court ruled that, while “a trademark defendant’s mental state is a highly important consideration in determining whether an award of profits is appropriate,” a finding of willfulness is not an “inflexible precondition” to such an award. In reaching that conclusion, the Court analyzed other portions of the Lanham Act that used the term “willfulness” and related terms, and went through the historic case law surrounding profit awards in trademark cases. The majority (Chief Justice Roberts and Justices Gorsuch, Thomas, Ginsburg, Breyer, Alito, Kagan, and Kavanaugh) observed that because the Lanham Act “exhibits considerable care” with different mental states including willfulness, the “absence of any such standard in the provision before [the Court],” is telling that willfulness should not be a strict prerequisite to profits award. As for its examination of historic case law, the Court found “it’s far from clear whether trademark law historically required a showing of willfulness before allowing a profits remedy,” so there was no need to read such a requirement into the meaning of the “principles of equity” in Section 32 of the Lanham Act.

TAKEAWAY

In many people’s minds, the question the Supreme Court answered here was one of the most impactful, divided and unresolved issues in the interpretation of the Lanham Act. With its resolution, generally trademark infringement plaintiffs will have more leeway to claim an award of defendant’s profits, raising the stakes for all parties involved. A significant caveat, however, is that the Court also maintained that a defendant’s mental state—i.e., was the infringement willful, innocent or something in between—is still “highly important.” Even with this lowered barrier, obtaining an award of defendant’s profits will likely still prove, at best, to be a difficult hurdle for most plaintiffs.

You can download the full Supreme Court decision here.

Read comments and post your comment here.

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

Two Recent Concurrent Use Rulings From The TTAB

Future Wolf Greenfield associate and soon-to-be Notre Dame Law School graduate Kira-Khan McCarthy is enjoying an externship this semester at the Trademark Trial and Appeal Board. Here are two concurrent use decisions/orders for which Kira provided her assistance to the TTAB's Cheryl Butler.

Birth to Three & Beyond Pediatric Therapies, LLC, dba The Therapy Tree, LLC v. Therapy Tree PLLC, Concurrent Use No. Concurrent Use No. 94002929 (April 21, 2020) (Order by McCarthy/Butler). The Board granted a petition to convert a cancellation proceeding brought by Birth to Three into a concurrent use proceeding. Birth to Three seeks registration of the marks shown above for various therapy services in the geographic area comprising the states of Illinois, Wisconsin, Iowa, Michigan, Minnesota, Indiana, and Ohio. Its adversary owns a registration for the mark THERAPY TREE for "Speech, occupational and physical therapy." The Board then reviewed and accepted a concurrent use agreement submitted by the parties.

Substantively, the Agreement provides that the parties are unaware of any instance of actual confusion even though they have coexisted for approximately six years; that, because the nature of the services attract localized clientele, concurrent use of the parties’ respective marks is unlikely to create consumer confusion as to the source of the parties’ respective services; that the parties will use their respective marks to avoid confusion and that should one party become aware of an actual instance of consumer confusion, it will promptly notify the other so that both shall discuss and cooperate to eliminate the confusion; that the parties agree not to use or directly advertise their services under their respective marks in the other’s geographic region, but acknowledges that the parties have limited rights regarding promotions at conferences and publications; and that future applications by each party to register the THERAPY TREE mark will contain the same geographic restrictions. Id. at 6-8. The parties also acknowledge that each may maintain online and social media use. Id.

CareFreeEnzymes Inc. v. Michael Meyhoefer and Naproco, LLC by change of name fromGarden Girls Repellants and Mosquito Free LLC, Concurrent Use Proceeding No. 94002836 (April 21, 2020). CareFreeEnzymes Inc. sought a concurrent use registration for the mark MOSQUITO FREE WATER for, inter alia, water treatment products and “insecticides and pesticides for home and garden use and professional use,” naming three other users as exceptions to its exclusive rights. CareFreeEnzymes moved to remove the geographical restrictions in its application because,  Mosquito failed to appear or respond to the motion, and because the other two parties agreed with CareFreeEnzymes that there is no likelihood of confusion. CareFreeEnzymes was then forwarded to the Publication Division of this Office for republication as an unpublished application

Read comments and post your comment here.

TTABlogger comment: Kira now knows more than I do about concurrent use.

Text Copyright John L. Welch 2020.

Brief Report on the Trademark Public Advisory Committee (TPAC) Presentation: April 17, 2020

A public meeting of the Trademark Public Advisory Committee (TPAC) was held online on April 17, 2020. The agenda and list of speakers may be found here. Here are the presentation slides. A video of the meeting is available here (click on "TPAC public meeting video" in the left-hand column).

The presentation provides the usual data regarding filings, pendency dates, pending legislative initiatives, the USPTO budget, etc. Note that the August 2019 requirement that every foreign applicant be represented by a US attorney seems to have brought back to earth the number of filings emanating from China. [BTW, a foreign party to an inter partes proceeding must also have US counsel]. There is also a discussion of the USPTO's campaign against phony specimens of use.

The estimable Carl Oppedahl, at his Ant-like Persistence blog, discusses [here] an issue that has caused concern for many trademark practitioners: the current requirement that trademark applicants provide their email addresses, which are publicly viewable. In February, in response to a protest led by Carl, the USPTO proceeded to mask the email address in the "status" tab of TSDR. But the email address continued to be open for data mining in the "documents" tab of TSDR. The applicant's email address also remained available for data mining in other public-facing databases and public APIs (application programming interfaces).

Slide number 15 of the TPAC states that the USPTO "plan[s] to mask the owner email address field in TEAS and TEASi documents viewable in TSDR. This includes submissions viewable in the documents tab, all application programming interfaces (APIs), and PDF downloads."

Carl comments: "[I]f the USPTO does actually fulfill this commitment about thoroughly masking the email address, it will reduce the harm caused by this collection of applicant email addresses."

Read comments and post your comment here.

Text Copyright John L. Welch 2020.

Rejecting Applicant's Stylization Argument, TTAB Affirms UNO Section 2(d) Refusal

The Board affirmed a Section 2(d) refusal to register the mark shown below for various types of pillows, finding a likelihood of confusion with the mark UNO in standard character form, for "office furniture, namely, seating." Applicant contended that is mark "is so stylized that the respective marks have a different appearance and commercial impression," but the Board was not impressed. In re Unclesign Co., Ltd., Serial No. 88123168 (April 20, 2020) [not precedential] (Opinion by Judge David K. Heasley).

The Marks: Applicant argued that its mark "goes far beyond mere variation of 'font style, size, or color' to also include a complex and abstracted interconnectedness that forms a unique design of its own." The Board, however, pointed to several prior decisions finding "highly stylized marks with interconnected letters similar to standard character marks for the same words:" e.g., the "Lite" and "Essentials" cases.

Moreover, Applicant stated in its application that its mark "consists of the word 'UNO' in stylized font." The mark is presented with a mark drawing code of "5," indicating that it is stylized, with no
design feature. See TMEP § 807.18 (“marks comprising stylized letters and/or numerals with no design feature are coded as mark drawing code 5”).

In short, prior decisions "reflect the fundamental principle that identical words typically dominate differences in style and design between marks." And so the Board found the marks to be "at least virtually identical in appearance, sound, connotation, and commercial impression."

The Goods: Examining Attorney Joshua M. Galante relied on third-party Internet evidence showing that chairs and pillows are offered at the same retail websites and in the same channels of trade. The Board noted that when the marks at issue are "virtually identical," a lesser degree of similarity between the goods is necessary to support a finding of likely confusion.

It is true, as Applicant notes, that the Examining Attorney’s channels-of-trade evidence encompasses both office and household goods, but as the website evidence indicates, office chairs are appropriate for both home and business offices. And we would be blind indeed if we did not note the inexorable movement of late, born of necessity, toward home offices.

Conditions of Purchase: Applicant argued that office furniture buyers are "sophisticated" and will exercise care in their purchases and would be readily able to distinguish between "an office chair and a travel pillow."

However, the issue is not whether purchasers would confuse the goods, but whether there is a likelihood of confusion as to the source of the goods." In re Aquitaine Wine, 126 USPQ2d at 1188. "[W]ith identical or similar marks used on such goods, even a careful, sophisticated consumer of these goods is likely to believe that the goods emanate from a common source. *** In other words, even careful purchasers who do notice the difference in the marks will not ascribe it to differences in the source of the goods, but will see the marks as variations of each other, pointing to a single source."

Moreover, the standard of care that the Board must apply is "that of the least sophisticated purchaser." Stone Lion Capital Partners v. Lion Capital, 110 USPQ2d at 1163. There is no limitation in the subject application as to price or quality, and so "there is no reason to infer that their purchasers will be particularly discriminating or careful."

Third-party Marks: Applicant claimed that the mark UNO weak and diluted, pointing to five registered marks containing the word "UNO" in the furniture field, but the Board found that "these registrations do not dilute the strength of Registrant’s mark or narrow its scope of protection so much as to permit registration of Applicant’s mark." Mere registrations without marketplace evidence of use are entitled to little weight. Applicant's other third-party evidence was "a far cry from the large quantum of evidence in Juice Generation.

Actual Confusion: Applicant asserted that there has been no actual confusion, but the Board noted that:

Generally, in an ex parte proceeding a lack of evidence of actual confusion carries little weight, because the cited registrant is not a party to the proceeding and the typical contentions of the applicant’s witnesses, to the effect that they are not aware of any instances of actual confusion, tell only one side of the story and are often uncorroborated. See In re Majestic Distilling Co., 315 F.3d. 1311, 65 USPQ2d 1201, 1205 (“we agree with the Board that Majestic’s uncorroborated statements of no known instances of actual confusion are of little evidentiary value.”)

Moreover the evidence did not establish the extent to which the involved goods overlap in the marketplace, and so the Board could not gauge the opportunity for confusion to have occurred.

Conclusion: Finding confusion likely, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Maybe application should have limited its goods to travel pillows?

Text Copyright John L. Welch 2020.

TTAB Finds AMERICAN OUTDOOR BRANDS CORPORATION Geographically Descriptive, Affirms Refusals in 30 Applications

In two decisions issued on the same day, the Board found the proposed mark AMERICAN OUTDOOR BRANDS CORPORATION to be primarily geographically descriptive of various goods and services mostly related to firearms [BRANDS CORPORATION disclaimed]. It therefore affirmed Section 2(e)(2) refusals of the standard character form of the mark in one application and likewise affirmed refusals of the word-plus-design mark shown below in 29 applications absent a disclaimer of the entire phrase. The Board also affirmed the rejection of Applicant's claim of acquired distinctiveness under Section 2(f). In re American Outdoor Brands Corporation, Serial Nos. 87228558 et al. and Serial Nos. 87305138 et al. (April 14, 2020) [not precedential] (Opinion by Judge Michael B. Adlin).

Geographical Descriptiveness: Examining Attorney Bianca Allen maintained that AMERICAN OUTDOOR BRANDS CORPORATION is a combination of a geographically descriptive word (AMERICAN) and a term that merely describes the provider of the involved goods and services, or those goods and services themselves (OUTDOOR BRANDS CORPORATION). Applicant argued that the phrase is "amorphous, conveying nothing specific, but conjuring up a sense of freedom – a calling to unexplored places." According to applicant, its meaning differs for every consumer: "It could be the Colorado Rockies, the California Redwoods, the Shenandoah Valley, or Central Park in New York City. It means nowhere in particular."

The Board, however, found that AMERICAN OUTDOOR BRANDS CORPORATION is geographically descriptive because AMERICAN is a geographically descriptive term combined with terms that are "at best" merely descriptive of Applicant’s goods and services. "[N]ot only has Applicant failed to introduce any evidence that AMERICAN has a non-geographic meaning in the context of its goods or services, but Applicant’s own use of the term reveals that AMERICAN is used in its geographic sense."

The involved applications and the USPTO's evidence of record showed that applicant is based in the United States (Springfield, Massachusetts) and manufactures goods and provides services there. Consumers would believe that Applicant’s goods and services originate in America. Thus the three elements of the Section 2(e)(2) test were satisfied.

In short, because Applicant is an outdoor brands company from the United States offering outdoor products and services through and under its various outdoor brands, AMERICAN OUTDOOR BRANDS CORPORATION is primarily geographically descriptive and must be disclaimed.

Acquired Distinctiveness: The Board first determined that AMERICAN OUTDOOR BRANDS CORPORATION is "highly geographically descriptive, as it identifies the geographic origin of the goods and services offered by Applicant’s outdoor brands." Accordingly, applicant's burden of proof to show acquired distinctiveness is "concomitantly high." In re Steelbuilding, 75 USPQ2d at 1424.

Applicant's evidence on this issue was "substantively sparse." It included a declaration from an officer of the company stating that the proposed mark "has acquired distinctiveness for financial information services and for shareholder and investor relations services." However, the evidence regarding same failed to establish public recognition of the mark as a source indicator for those services. Applicant's remaining applications, which concerned its "outdoor-focused products and services," were based on intent-to-use. Applicant argued that the supposed acquired distinctiveness for its financial services transferred to its outdoor goods and services, but the Board shot that down.

[Even] assuming arguendo that Applicant had established acquired distinctiveness for its financial information and shareholder and investor relations services, which it did not, it would also have to make a "rigorous" showing that the financial information and shareholder and investor relations services are “sufficiently similar or related” to the goods and services in the remaining intent to use applications. In re Olin, 124 USPQ2d at 1334

There was no evidence that applicant's financial services were related "in any way" to its outdoor-focused products and services, and so this argument also misfired.

Conclusion: The Board affirmed all of the refusals to register, but allowed applicant thirty days to submit the appropriate disclaimer of AMERICAN OUTDOOR BRANDS CORPORATION in the word-plus-design applications.

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TTABlog comment: "Applicant, known until November 2016 as Smith & Wesson Holding Corporation, is the parent of Smith & Wesson Corp."

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. Which one? [Answers in first comment].

In re Rod’s Western Palace, Inc., Serial No. 87914427 (April 17, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of ROD’S, in standard character form, for retail store services featuring a wide variety of consumer goods, including apparel, leather goods, jewelry, home furnishings, furniture, and garden supplies, in view of the registered mark ROD’S AMERICAN MARKET PUTTING AMERICA BACK TO WORK and design, shown below, for “Retail apparel stores; Retail furniture stores; Retail gift shops; Retail variety stores; Referrals in the field of hunting and outdoor gear; Retail gift shops [sic]"].

In re Aiko Beauty, Inc., Serial No. 88109580 (April 17, 2020) [not precedential] (Opinion by George C. Pologeorgis). [Section 2(d) refusal of GIVON for "Cosmetics; Cosmetics and cosmetic preparations; Cosmetic creams; Cosmetic creams for skin care; Cosmetic preparations for skin care; Facial cleansers; Skin cleansers; Skin lotions; Skin toners" in view of the registered mark GG GIVONI (Stylized as below) for "Make-up"].

In re Coats & Clark Inc., Serial No. 79236578 (April 17, 2020) (Opinion by Judge Elizabeth A. Dunn). [Section 2(d) refusal of SUPER SAVER FAIR ISLE for "Yarns and threads, for textile use" [FAIR ISLE disclaimed] in view of the mark FAIR ISLE registered on the Supplemental Register for "knitting yarn; yarn; hand knitting yarns" and for "crochet hooks; crochet needles; knitting counters; knitting implements, namely, stitch holders; knitting implements, namely, stitch markers; knitting needles; hand-knitting needles.]"

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

Text Copyright John L. Welch 2020.

TTAB Denies Cancellation of ORGANIC ZONE: Petitioner Fails to Make Prima Facie Case of Abandonment

[This guest post was written by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield]. My Organic Zone petitioned for cancellation of Registration No. 3,335,800 for the mark ORGANIC ZONE for various “on-line retail store services” due to alleged abandonment. Unlike in the recent Ross Bicycles case [TTABlogged here], My Organic Zone could not prove a prima facie case of abandonment, so the Board denied the cancellation petition. Thus, the Board answered my previous question: “how does one produce evidence that a mark was not used for at least three consecutive years?” Answer: not easily. My Organic Zone v. Eric Shawgo and Michael Bast, Cancellation No. 92068377 (April 10, 2020) (not precedential) (Opinion by Judge Thomas W. Wellington).

Abandonment: Under Section 45 of the Lanham Act, a mark is considered “abandoned” when:

[I]ts use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from the circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

So a party wishing to prove abandonment must start by producing evidence of three consecutive years of nonuse of the mark, creating a prima facie case of abandonment. That’s where this case ended, as the Board found the “record falls far short of establishing any period of nonuse.”

The lead piece of “evidence” the Board discussed was Registrants' interrogatory responses, which Petitioner argued “establish Respondent (sic) has not used its mark in commerce for many years, and still is not using its mark in commerce for the identified services.” The Board, however, reviewed the responses and instead found that they “actually support Respondents’ contention that the registered mark has not been abandoned and remains in use in commerce.” Presenting some relatively extensive excerpts of the responses, the Board found that the Registrants provided details “regarding their own, and their predecessor-in-interest’s, prior and current use of the involved mark.” The Board also noted that if Petitioner believed these answers were insufficient or inaccurate, "it had the option of serving additional discovery to flesh out such issues or taking the testimony of Respondents themselves," but Petitioner apparently never did so.

The Board also quickly discounted the other evidence Petitioner submitted via its notice of reliance, including some website print-outs from Facebook and ICANN WHOIS. Those documents “are only probative for what they show on their face and [the Board] cannot rely on any statements contained within these documents for their truth.” Notably, unlike the petitioner in Ross Bicycles, the Petitioner here did not submit any testimonial declaration to support its case or explain the website evidence.

Given the lack of evidence supporting any prima facie case of abandonment, the Board denied the petition to cancel.


Read comments and post your comment here.

TTABlogger comment: That little venture into the Organic Zone didn't turn out well, did it?

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

TTABlog Test: Is SPIKE Merely Descriptive of Clothing and Leather Goods?

The USPTO refused to register the mark ROCKSTUD SPIKE for various clothing items and leather goods, absent a disclaimer of the word SPIKE. Applicant Valentino contended that the ornamentation on its products did not meet the definition of "spike," it pointed to 19 issued registrations for marks containing the word SPIKE without disclaimer, and it also argued that its mark is unitary and therefore no disclaimer is required. How do you think this appeal came out? In re Valentino S.P.A., Serial No. 79228160 (April 15, 2020) [not precedential] (Opinion by Judge Jyll Taylor).

Examining Attorney Karen S. Derby maintained that "spike" merely describes a feature of applicant's goods, relying on a dictionary definition ("Any long pointed object can be referred to as a spike"), third-party websites that use the word to describe embellishments or ornamentation of some of the identified goods, and articles describing applicant's goods as featuring spikes.

Applicant Valentino argued, of course, that "spike" is merely suggestive of the goods, that the USPTO did not meet its burden of proof, and that doubts as to descriptiveness must be resolved in its favor.

Valentino asserted that its goods do not include "long" pieces of metal that are sharply pointed, but that argument fell flat. The Board noted that the ornamentation on applicant's goods have metal pieces that "taper to a point or edge and have an elongated shape in relation to the flat surface on which they are attached," which satisfies the definition of long ("having a greater length than breadth: ELONGATED") and sharp ("[t]apering to a point or edge").

As to the third-party registrations, the Board found that, with one exception, those marks have unique meanings (SPIKE ISLAND) or are unitary (e.g., SPIKESMIND, JUSTSPIKES). The registration for the single word SPIKE did not convince the Board "that the USPTO has found the word “spike” to be distinctive when used in connection with any of the clothing items identified in Applicant’s application."

Furthermore, the Board rejected Valentino's "unitary mark" argument, finding no evidence that "the combination of the terms ROCKSTUD (a compound term made up the words “rock” and “stud”) and SPIKE creates a phrase with a singular impression in the minds of purchasers." It noted that the term SPIKE is used descriptively in the cited articles discussing applicant's goods, without accompaniment by the term ROCKSTUD.

Finally, Valentino's ownership of a registration for the mark # I ♥ SPIKE for virtually identical goods was not relevant because that prior mark is a unitary phrase or slogan.

The Board had no doubt that the word SPIKE in the proposed mark ROCKSTUD SPIKE is merely descriptive of the goods and must be disclaimed. Therefore it affirmed the refusal to register, but it allowed the applicant thirty days to submit a disclaimer of SPIKE.

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TTABlog comment: How did you do? Is this a WYHA?

Text Copyright John L. Welch 2020.

CAFC Affirms TTAB: STRATUS NETWORKS Confusable With STRATA NETWORKS for Telecommunications Services

In an enervating, yet precedential ruling, the CAFC affirmed the Board's decision sustaining an opposition to the mark STRATUS NETWORKS & Design for various telecommunications services, in view of the registered mark STRATA NETWORKS & Design for overlapping services. [TTAB opinion by Judge Peter W. Cataldo here]. The appellate court concluded that substantial evidence supported the Board's findings under du Pont, and further that the Board did not err in its legal analysis. Stratus Networks, Inc. v. UBTA-UBET Communications, Inc., 2020 USP2d 10341 (Fed. Cir. 2020) [precedential].

The Board found that six of the du Pont factors were relevant to its decision, but not the other seven ("five (fame), seven (nature of actual confusion), nine (variety of goods), ten (market interface), eleven (applicant’s right to exclude), twelve (potential confusion), or thirteen (effect of use)").

As to the first factor, the Board acknowledged the slight difference in meaning between STRATUS and STRATA, but there was little evidence that consumers would "significantly recognize" that different. It concluded that the “marks convey over-all commercial impressions that are more similar than dissimilar.”

The second du Pont factor "weighed heavily" in Opposer UBTA's favor, according to the Board, because its “telephone services encompass certain of [Stratus's] more specifically identified voice communication services and are legally equivalent thereto.” This legal equivalence of the services led to a presumption that they are offered in the same channels of trade to the same classes of consumers, under the third du Pont factor.

The fourth factor, the sophistication of consumers, was found by the Board to be neutral or weighing "slightly" in Stratus's favor, given the high cost of Stratus's services. However, the Board concluded that “the legal identity in part of the services and similarity of the marks outweigh any sophisticated purchasing decision.”

The sixth factor, the strength of UBTA's mark, was neutral. The Board found that the term "strata" is “arbitrary or, at most, slightly suggestive of [UBTA’s] services in that it connotes levels or divisions in an organized telecommunications system.” Dictionary and third-party use evidence failed to diminish the scope of protection merited by the mark STRATA.

Finally, the Board found the eighth factor to be neutral. There was no evidence of actual confusion, but the respective marks were not used in the same geographic areas during the relevant times: UBTA offered its services in Utah, Wyoming, Colorado, and Texas, while Stratus offered its services in Illinois and Missouri.

In sum, the Board concluded that Stratus’s “modest evidence of the sophistication of consumers and weakness of [the STRATA mark] is insufficient to overcome our findings with regard to the first, second, and third [DuPont] factors.” Accordingly, the Board held that UBTA had shown by a preponderance of the evidence that Stratus’s mark is “likely to cause consumer confusion when used in association with its services.”

Appellant Stratus challenged the Board’s factual findings on some of the du Pont factors, but the court observed that Stratus was "effectively ask[ing] us to reweigh the evidence considered by the Board. That is not the role of this court. Instead, we evaluate whether the Board’s factual findings for each considered DuPont factor are supported by substantial evidence." The court concluded that substantial evidence supported the Board's findings.

Stratus contended that the record evidence supported a different conclusion as to likelihood of confusion, but the CAFC pointed out that "[e]ven if Stratus were correct that different conclusions may reasonably be drawn from the evidence in record, we must sustain the Board’s decision as supported by the substantial evidence outlined above. See Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 971 (Fed. Cir. 2018) ('The TTAB’s findings may be supported by substantial evidence even if two inconsistent conclusions can be drawn from the evidence.')."

Stratus also argued that the Board had committed legal error regarding consumer sophistication and actual confusion, but the court rejected those claims. According to Stratus, the Board “made no express finding as to [the consumer sophistication] factor and instead simply quoted case law that even sophisticated customers are not immune from confusion.” The CAFC was unimpressed: "While it is preferable for the Board to make explicit findings about each relevant DuPont factor, the absence of explicit findings on a given factor does not give rise to reversible error where the record demonstrates that the Board considered that factor and the corresponding arguments and evidence." The CAFC observed that the parties' extensive arguments regarding the sophistication issue, coupled with the Board’s written decision, demonstrated that the Board sufficiently considered the consumer sophistication factor.

Nor was there legal error as to the actual confusion factor. Although there was no evidence of actual confusion, the Board considered “the length of time during and conditions under which there has been concurrent use.” The evidence showed that the services of parties did not geographically overlap. Therefore no consumers were exposed to both trademarks during the relevant time periods, "further reducing the significance of the absence of actual confusion." See In re Majestic Distilling Co., 315 F.3d 1311, 1317 (Fed. Cir. 2003). The CAFC found no legal error in the Board’s finding as to the actual confusion factor.

The CAFC therefore affirmed the Board’s determination that UBTA proved a likelihood of confusion by a preponderance of the evidence.

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TTABlog comment: Why was this CAFC opinion deemed precedential?

Text Copyright John L. Welch 2020.

TTAB Affirms Section 2(a) False Association Refusal of REAGAN WORLD for Information Services

Pro se applicant Robert David Moose was stopped in his tracks when attempting to register the mark REAGAN WORLD & Design, shown below, for the service of providing information regarding political figures and current events. The Board affirmed two refusals: False association under Section 2(a) and likelihood of confusion under Section 2(d). Now who could the mark be referring to? Why, the late President Ronald Reagan, of course. In re Robert David Moose, Serial No. 86930700 (April 10, 2020) [not precedential] (Opinion by Judge Frances Wolfson).

Section 2(a) False Association: Section 2(a), in pertinent part, bars registration of a mark that "Consists of or comprises …matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols …." The Board shot down Applicant Moose's novel, if goofy, argument that Section 2(a) cannot apply to Internet-based services since the Internet did not exist when the Lanham Act was written: "The critical inquiry is whether an applicant’s mark creates a false suggestion of a connection with a person, living or dead, howsoever the false suggestion is conveyed."

Moose also argued that no one would believe that Ronald Reagan had "sanctioned, approved, or was endorsing or influencing" the information provided. The Board pointed out that even if consumers were not confused by Moose's use of the surname Reagan, a mark that falsely suggests a connection with Ronald Reagan violates his (Reagan's) right of privacy and publicity. "Because there is a successor to President Reagan’s legacy [The Ronald Reagan Presidential Foundation and Institute], the rights to exploit his 'persona' are protected under Section 2(a)."

To establish its claim of false suggestion of a connection under Section 2(a), the USPTO must prove:

(1) that Applicant’s mark is, or is a close approximation of, Ronald Reagan’s name or identity, as previously used by him or identified with him;
(2) that Applicant’s mark would be recognized as such by consumers of Applicant’s services, in that it points uniquely and unmistakably to Ronald Reagan;
(3) that Ronald Reagan is not connected with the services that are sold or will be sold by Applicant under its mark;and
(4) that Ronald Reagan’s name or identity is of sufficient fame or reputation that when used by Applicant as a mark for its services, a connection with Ronald Reagan would be presumed.

As to the first prong, it was clear from Moose's own website that his mark is intended to identify former President Reagan. (see below)

As to the second prong, the Board had no doubt that the "Reagan" that Moose's mark refers to is the former President, and Moose did not contest that conclusion. As to the third prong, Examining Jay K. Flowers proved that the “name REAGAN is currently protected and all rights of publicity ‘in the name, image, likeness, voice and signature of the late Ronald Wilson Reagan’ are owned by The Ronald Reagan Presidential Foundation and Institute.”

As to the fourth prong, Applicant Moose did not disagree that former president Reagan has so famous a reputation that consumers would presume that Moose's services had a connection with Reagan. In any case, a Google search of the word "Reagan" yielded information about Ronald Reagan as "the number one hit of over 93,000,000 results."

The term REAGAN in Applicant’s mark points uniquely and unmistakably to Ronald Reagan. Consumers of Applicant’s services would presume, due to Reagan’s continuing fame even 14 years after his death, that Applicant was connected to the entity that inherited Reagan’s rights. Because there is no such connection, the mark falsely suggests a connection where none exists. The mark is thus unregistrable under Section 2(a).

Section 2(d):: The examining attorney also refused registration of Moose's mark on the ground of likelihood of confusion with the registered mark RONALD REAGAN for "Educational services, namely, arranging and conducting seminars and educational programs and providing webcasts in the fields of history, civics, education, and government,” owned by The Ronald Reagan Presidential Foundation and Institute.

The Board found that, because both marks refer to the same person, they are similar in sight, sound, connotation, and overall commercial impression. The word WORLD in Moose's mark merely reinforces the impression that his services concern "Reagan's life and times and world in which he lived." As to the involved services, the Board found them to be in-part legally identical. They are presumed to travel in the same trade channels to the same classes of consumers.

Relying on the catch-all thirteenth du Pont factor, Moose called out that he owns registrations for KENNEDY WORLD, NIXON WORLD, and JOHNSON WORLD, noting that "these registrations also combine a former president’s name with the term “WORLD”; are for the same recitation of services as the subject application; and depict the marks in the same color and font scheme as the subject mark." Therefore, Moose called for the same treatment of the REAGAN WORLD mark.

The Board, however, shot down Moose, agreeing with the examining attorney that the determination of registrability must be made on the basis of the particular facts and evidence in each case, "even if the PTO earlier mistakenly registered a similar or identical mark suffering from the same defect.

While we recognize that consistency is highly desirable, “consistency in examination is not itself a substantive rule of trademark law, and a desire for consistency with the decisions of prior examining attorneys must yield to proper determinations under the Trademark Act and rules.” In re Am. Furniture Warehouse CO, 126 USPQ2d 1400, 1407 (TTAB 2018); see also In re Cordua Rests., 118 USPQ2d at 1635. The USPTO must assess each mark on its own facts and record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).

And so the Board found confusion likely.

Conclusion: The Board affirmed both refusals.

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TTABlog comment: Presidential cases are usually precedential.

Text Copyright John L. Welch 2020.

TTAB Grants Petition for Cancellation of ROSS Registration for Bicycles on Abandonment Ground

[This guest post was authored by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield]. Ross Bicycles LLC petitioned for the cancellation of Registration No. 980,887 for the mark ROSS for “bicycles and structural parts thereof” due to alleged abandonment. Registrant Century Sports, Inc. owns the registration as the result of a bankruptcy of the previous owner in 2013. Petitioner stuck some hefty evidentiary objections into the spokes of the registrant's evidentiary wheel, and so the Board, considering what little evidence registrant had left, ultimately ordered cancellation of the registration. Ross Bicycles LLC v. Century Sports, Inc., Cancellation No. 92067406 (Mar. 27, 2020) (not precedential) (Opinion by Judge Christen M. English).

Evidentiary Issues – In an attempt to demonstrate use of the mark, Registrant Century Sports submitted various specification sheets, marketing presentations, and other documents to the Board as attachments to its notice of reliance. However, the Board excluded all of this material because those types of documents do not “fall into any other category of documents that may be introduced by notice of reliance.” In other words, they were not self-authenticating.

Century Sports also attached certain documents to its brief, but here again the Board rejected the documents, applying Trademark Rule 2.122(c) which states that “an exhibit attached to a pleading is not evidence on behalf of the party to whose pleading the exhibit is attached, and must be identified and introduced in evidence as an exhibit during the period for the taking of testimony.” (The Board also took this opportunity to reinforce the point, to all those practicing before the Board, that “[a]attaching evidence to a brief is neither a convenience, nor a courtesy.”)

Of the materials registrant submitted, the Board considered only one undated screenshot (below) showing a bike with the ROSS mark being sold on Letgo.com, as to which petitioner waived its objection:

Abandonment – Under Section 45 of the Lanham Act, a mark is considered “abandoned” when:

[I]ts use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from the circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

So a party wishing to prove abandonment must produce evidence of three consecutive years of nonuse of the mark in order to create a prima facie case of abandonment. Then, although the ultimate burden of persuasion stays with the petitioner, the “burden of production . . . shifts to the registrant to produce evidence sufficient to show use of the mark during the relevant period, or an intent to resume use.”

This shifting of burdens creates an interesting question for a petitioner: how does one produce evidence that a mark was not used for at least three consecutive years, i.e., how does one prove a negative? Here, the Petitioner Ross Bicycles relied on two key declarations from its own executives who had been in the bicycle business for many years. They testified, in effect, that no one had seen any use of the ROSS mark since at least 2007. That was enough for the Board to find that petitioner had made its prima facie case, especially “because [the testimony was] corroborated by Respondent’s failure to introduce any competent evidence establishing that Respondent used the mark ROSS for bicycles or bicycle parts during the Nonuse Period.” (Ed. – This point may be more directed to the ultimate conclusion of abandonment; it seems somewhat circular to suggest that the petitioner’s testimony was “reliable” and it had made its prima facie case because respondent did not have competent evidence of use.)

Given the Board’s exclusion of so many of its documents, Registrant Century Sports was left with a bit of a flat tire with which to rebut petitioner’s case. The Board largely discounted registrant’s interrogatory answers (which petitioner had submitted into evidence) as being “vague” and uncorroborated, discounted the Letgo screenshot as undated and hearsay, and gave “no merit” to the Section 8 & 9 declaration registrant had filed because “[s]pecimens in … the file of a registration, are not evidence on behalf of the applicant or registrant unless identified and introduced in evidence as exhibits during the period for the taking of testimony,” which registrant did not do. In other words, just because the prosecution file of the challenged registration is automatically of record does not mean that the statements in a declaration contained in the file are not hearsay.

The Board also considered whether Century Sports had any intent to resume use of the ROSS mark, but concluded that registrant did not “act[] in a way reasonable for a business with a bona fide intent to use the mark,” in large part because Century Sports could not show any steps it took concerning the mark after 2014.

In the end, the Board granted the petition to cancel based on abandonment.

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TTABlog comment: I guess one takeaway is this: if you find an abandoned trademark, you can ride off with it.

Text Copyright John L. Strand and 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 Lahana Pty Ltd., Serial No. 79237803 (April 8, 2020) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Section 2(d) refusal of LAHANASWIM for "Clothing namely, bikinis and swimwear" and for "Wholesale and retail store services featuring swimwear," in view of the registered mark LAHANA for jewelry].

In re Joe A. Machiz, Serial No. 88238871 (April 8, 2020) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Section 2(d) refusal of MONSIEUR & Design for "accent furniture; buffets being furniture; custom furniture; patio furniture; tables," in view of the registered mark MONSIEUR MARBLE for “coasters, not of paper or textile; drinking glasses; flasks; mugs; plates; serving trays; soapstone cubes for chilling whiskey"].

In re Republic Tobacco, L.P., Serial No. 88039351 (April 8, 2020) (Opinion by Judge George C. Pologeorgis). [Section 2(d) refusal of KRYSTAL KLEAR for, inter alia, Cigarette rolling papers, in view of the mark KLEAR registered on the Supplemental Register for "cigarette papers; cigarette rolling papers" and the mark KLEAR & Design registered on the Principal Register for "cigarette papers"].

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

Text Copyright John L. Welch 2020.