TTAB Sustains Two-Pronged Section 2(e)(1) Opposition to ANDRÉ-CHARLES BOULLE for Furniture

The Board sustained this two-pronged Section 2(e)((1) opposition to registration of the proposed mark ANDRÉ-CHARLES BOULLE for "Furniture, mirrors." Boulle was a celebrated 17th-Century French furniture maker whose works remain on the market today. The Board found the mark to be either merely descriptive, or deceptively misdescriptive, of the goods. De Boulle Diamond & Jewelry, Inc. v. Boulle Ltd., Opposition No. 91219499 (June 23, 2020) [not precedential] (Opinion by Judge Frances Wolfson).

A mark is “merely descriptive” if it immediately conveys information about an ingredient, quality, characteristic, feature, function, purpose or use of the goods. A mark is “deceptively misdescriptive if it: (1) misrepresents any fact concerning the goods or services; and (2) consumers are likely to believe the misdescription.

Opposer introduced the testimony of design historian Judith Gura to establish that André-Charles Boulle is a celebrated French cabinetmaker associated with the Baroque period, and known for an elaborate and intricate technique of marquetry that has become known as "Boulle work." His name is known to any person with an awareness of French traditional design. Boulle did not sign his work, and so it must be authenticated in other ways. “Virtually all fully-documented examples are in museums, and any pieces that come to market bring exceptional prices.”

Opposer argued that if Applicant sells genuine articles of furniture created by André-Charles Boulle or his studio (unlikely since Boulle's genuine works are exceedingly rare and virtually all examples are in museums), then the mark ANDRÉ-CHARLES BOULLE is merely descriptive of the goods. On the other hand, if Applicant sells furniture that is not genuine, the mark will be deceptively misdescriptive. Applicant stated that it "has not decided whether or not it will sell goods created by André-Charles Boulle."

In light of the fame and reputation of André-Charles Boulle the Board found that use of the proposed mark for furniture would likely "create the impression among potential buyers that the piece was created by Boulle's original workshop." If used in connection with furniture not made by André-Charles Boulle, it would be deceptively misdescriptive.

Applicant maintained that its mark is only “suggestive of the quality of craftsmanship and detail associated with André-Charles Boulle work and legacy,” but that assertion was belied by the use of the proposed mark at the website of applicant's affiliate (see depiction above) and its own Pinterest board.

Prospective consumers, viewing the board labeled “André-Charles Boulle/Jean Boulle Luxury Group,” will believe that Applicant sells genuine André-Charles Boulle goods. If true, the proposed mark is merely descriptive. If false, the designation is deceptively misdescriptive.

And so the Board affirmed the refusal(s) under Section 2(e)(1)

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TTABlogger comment: There's a lot of history in the background to this case.

Text Copyright John L. Welch 2020.

TTABlog Test: Is STAGER Merely Descriptive of Theatrical Production Software?

The USPTO refused to register the proposed mark STAGER for, inter alia, downloadable theatrical management application software," finding the term to be merely descriptive under Section 2(e)(1). Applicant argued that "stager" is not a term of art in the theatrical production field, is not used by its competitors, and is primarily used in the real estate field for a person who prepares houses for sale. How do you think this came out? In re Stager Intellectual Properties, LLC, Serial No. 87756847 (June 26, 2020) [not precedential] (Opinion by Judge Angela Lykos).

Examining Attorney Julie Watson relied on online dictionary definitions of "stager" as "someone who supervises the physical aspects in the production of a show and who is in charge of the stage when the show is being performed." Moreover, applicant stated in its responses to a Rule 2.61 request for information that its software will be used by and marketed to stage managers, but it denied that "stager" is a term of art in the field.

The Board observed that "[a] term that identifies a group to whom the applicant directs its goods or services is merely descriptive. See In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004)." The Board agreed with the Examining Attorney that prospective customers will immediately perceive Applicant's mark STAGER as merely describing the intended users of the software.

Applicant pointed to a Wikipedia entry for "stager" as "someone who uses style to improve the appeal of real estate for sale," and on online advertisements for real estate stagers. The Board pointed out, however, that the term must be considered in the context of the identified goods, and meanings in other contexts are not relevant.

Likewise the lack of entries for "stager" in specialized dictionaries in the theater field is not probative. "The fact that a term is not found in a dictionary, much less that it is found only in some dictionaries, is not controlling on the question of registrability if the Examining Attorney can show that the term has a well-understood and recognized meaning." The Board found the dictionary definitions of "stager" as "someone who assists in stage management or more generally as one who stages" to be sufficient to support the refusal.

As to lack of use of the term by competitors, the Board pointed out once again that "even if Applicant were the first and only entity in this industry to use 'stager' as a potential source indicator this would not obviate the descriptive nature of the proposed mark."

The logic of Applicant’s argument fails because the record shows that "stager" has a specific meaning when considered in relation to the goods by identifying the intended users. Competitors in this field should be able to use this descriptive term when advertising to the public their own similar goods.

And so the Board affirmed the refusal to register.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2020.

TTABlog Test: Are These Two "IMMORTAL" Marks for Wine Confusable?

The USPTO refused to register the mark IMMORTAL & Design, shown below, finding a likelihood of confusion with the registered mark THE IMMORTAL ZIN [ZIN disclaimed], both for wine. Applicant argued that the examining attorney “erred by finding that the allegedly dominant portion of Applicant’s Mark is the word ‘IMMORTAL,’ not the jellyfish.” How do you think this came out? Hidden Ridge Vineyard, LLC, Serial No. 87868652 (June 24, 2020)[not precedential] (Opinion by Judge Christopher Larkin).

In its 45-page opinion, the Board informatively marched through the DuPont factors. Since the involved goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. Moreover, the Board must presume that the goods travel through the same, normal channels of trade to same classes of consumers. With no limitations in the application or cited registration, the Board must consider the perception of the least sophisticated consumer of wine.

The Marks: Applicant Hidden Ridge strenuously argued that the jellyfish design in its mark suffices to distinguish the mark. The Board acknowledged that there are decisions finding the design to be dominant in a word-plus-design mark, but distinguished those cases and chose to follow In re Viterra: "the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.”

The Board found this case most similar to the recent Information Builders decision [TTABlogged here], where the design element was considered to be dominant in the applicant's mark (on the left) because "information" and "builders" were merely descriptive. Here, in contrast, the word IMMORTAL in applicant's mark is not descriptive.

Moreover, the evidence submitted by Examining Attorneys Laura Golden and Raymond Harmon, including applicant's own use of “Immortal” by itself, and references in the media, convinced the Board that consumers will use “Immortal,” not “Immortal Jellyfish” or “Jellyfish,” to refer to Applicant or its wines.

The nature of the applied-for mark and the involved goods, and the uses of “Immortal” by Applicant and others to refer to Applicant’s wines, including Applicant’s use of the word “IMMORTAL” on the same bottle of wine on which the applied-for mark appears, provide rational reasons to find that the word IMMORTAL formed by the letters and design in Applicant’s mark, and not the jellyfish design itself, is the dominant portion of the mark.

The Board did agree with applicant that, when comparing a standard character mark to a word + design mark for Section 2(d) purposes, it will consider variations of the depictions of the standard character mark only with regard to ‘font style, size, or color’ of the ‘words, letters, numbers, or any combination thereof,” Aquitaine Wine, 126 USPQ2d at 1187, but that was a hollow victory for applicant.

Strength of the cited mark: Applicant failed in its attempt to show that IMMORTAL is a weak formative.

We agree with the Examining Attorney that the handful of registrations, augmented by specimens of use of the registered marks and one additional third party use, are insufficient to show that the cited mark is weak Moreover, none of the third-party “marks is as close to the cited mark as . . . Applicant’s mark." Information Builders, 2020 USPQ2d 10444 at *8.

Conclusion: The Board found the that the first, second, and third DuPont factors support a finding of a likelihood of confusion. The goods, channels of trade, and classes of consumers are identical, while the fourth, fifth, sixth, eighth, tenth, and twelfth factors are neutral. And so it affirmed the refusal to register.

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TTABlogger comment: A good discussion of the DuPont factors here. Is this a WYHA?

Text Copyright John L. Welch 2020.

TTABlog Test: Is HONEYCOMB WAXING STUDIO Confusable With HONEYCOMB SALON?

The USPTO refused registration of the mark HONEYCOMB WAXING STUDIO for body waxing services [WAXING STUDIO disclaimed], finding a likelihood of confusion with the mark HONEYCOMB SALON & Design for hair salon services [SALON disclaimed]. The Board found the services to be related, but what about the marks? How do you think this came out? In re Averi Skye Enterprise, LLC, Serial No. 87830306 (June 22, 2020) [not precedential] (Opinion by Judge Thomas W. Wellington).

The Marks: The word HONEYCOMB dominates both marks, but "honeycomb" may have a different connotation in each. "[I]n the context of body waxing services,the term 'honeycomb' will be understood as a play on the beeswax in actual honeycombs," whereas for hair salon services, "consumers will likely perceive a double entendre involving the composite words “honey” and “comb” and their individual meanings in the context of hair styling. The Board concluded that the marks are "are overall slightly more similar than not."

Strength of the Cited Mark: Applicant submitted printouts from more than 35 different third-party websites showing the term HONEYCOMB used in connection with hair salons across the country. There was no evidence that these businesses are related. In fact, the printouts came from different website addresses and the word HONEYCOMB appears in different stylizations and often alongside various logos.

[T]he number of third-party uses in this case is in line with what has been relied upon by our primary reviewing court in previously finding weakness based on extensive third party use of the same or similar term. Indeed, the Federal Circuit has twice characterized evidence of third-party use as “powerful on its face,” for purposes of demonstrating weakness, based on fewer third-party uses than what we have before us in this case. See Jack Wolfskin, 116 USPQ2d at 1136 (paw print found weak in connection with clothing based on a record comprising 14 third-party registrations and uses of paw print marks); and Juice Generation, 115 USPQ2d at 1674 (26 third party registrations and uses of marks containing the words “Peace” and “Love”).

The Board therefore found that the term HONEYCOMB is a weak formative for salon services, including hair salons.

[P]ut into context here, consumers viewing the two marks can rely upon subtle differences between the marks, such as Registrant’s scissors design element that separates the words HONEY and COMB, as well as the term SALON, and Applicant’s addition of the wording WAXING STUDIO for purposes of distinguishing the marks and perceiving that the two marks are identifying two unrelated businesses.

The Board also noted that several of the third-party business also offer waxing services, indicating the weakness of HONEYCOMB for waxing services.

In view of the commercial weakness of the term HONEYCOMB in connection with salon services, including hair styling, and the overall slightly different suggestive meanings of this term in one mark versus the other, we find that the sixth DuPont factor weighs in favor of not finding confusion likely.

The Services: The evidence showed a close relationship between body waxing and hair salon services, including seven different third parties advertising hair styling and waxing services from the same locations. The evidence also indicated that these services can be advertised in the same trade channels, directed to the same class of consumers.

Conclusion: The Board concluded the consumers will distinguish the marks based on their differences, and so confusion is not likely. It therefore reversed the refusal to register

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TTABlogger comment: Now that's the way to use Jack Wolfskin and Juice Generation.

Text Copyright John L. Welch 2020.

TTAB Affirms Rejection of Specimen That Fails to Associate the Mark with the Identified Services

The Board affirmed a refusal to register the design mark shown here,

for "advertising, marketing and promotional services," agreeing with Examining Attorney Martha L. Fromm that "the specimens do not demonstrate use of the applied-for mark for the identified services." In re On the way LLC, Serial No. 87037256 (June 10, 2020) [not precedential] (Opinion by Judge Albert Zervas].

Click on picture for larger image
An acceptable specimen must show “some direct association between the offer of services and the mark sought to be registered therefor.” A specimen is not acceptable "if it fails to convey a proper nexus between the mark and the services, or if the services are too attenuated from the proposed mark, either in terms of proximity or logical connection."

The proposed mark appears in the specimen on the left, but not on the right. The services are not mentioned or referred to in either of the screenshots. Applicant explained that it provides a navigational app by which others may advertise:

Specifically, when users view Applicant’s app and enter a destination address, Applicant’s app has the ability to display the locations of the goods and services of others along the way, thereby promoting the goods and services of other companies to the users. For example, once a destination address is entered into the app, the user can request the app show the locations of grocery stores on the way to their destination, thereby actually promoting and advertising the grocery store.

Once an address is entered, the user can find, say, a florist, grocery store, etc., along the route. The app will show appropriate goods or services, "thereby actually promoting and advertising the goods and services of other companies." The Board noted, however, that "there is no indication from the first screen whether coffee shops, gas stations, grocery stores, restaurants and banks located by the app are actually advertised on the app or whether they appear simply as informational as determined by Applicant’s algorithms as part of its navigational service."

The Board found that the first screen "does not create a direct association of Applicant's mark with Applicant's identified services." As to the second screen, "[i]t is not clear whether the red dots represent customers of Applicant who have chosen to take advantage of Applicant’s alleged advertising and promotional services, or appear there informationally for the user."

Moreover, Applicant has not indicated when the Albertsons bubble appears on the screen, e.g., directly after the user has indicated that he or she would like to see grocery stores along the route, or as a pop-up when the user drives near Albertsons.

Applicant did explain how businesses, as potential consumers of Applicant’s services, would view the mark, as shown in the first screen, and associate this mark with the identified services. Applicant focused on the perceptions of users of the app rather than the perception of potential consumers of Applicant’s services. Moreover, the Board agreed with the Examining Attorney that the reference in the second specimen to Albertons appears to be informational, rather than an advertisement.

In sum, nothing in the specimens demonstrates use of the mark for the identified services. And so the Board affirmed the refusal to register.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2020.

TTABlog Test: Is HIGH SPEED STEPPING Merely Descriptive of Laboratory Analyzers?

In December 2019, the Board affirmed a mere descriptiveness refusal of Omniome, Inc.'s proposed mark SEQUENCING BY BINDING for goods and services directed to the analysis of biological analytes. [TTABlogged here]. Omniome was back before the Board in this case, seeking to register HIGH SPEED STEPPING, again for  goods and services directed to the analysis of biological analytes. Examining Attorney Caroline E. Wood maintained that the proposed mark is merely descriptive because "Applicant’s goods and services feature stepping motors that operate at high speed[.]" How do you think this came out? In re Omniome, Inc., Serial No. 87960945 (June 18, 2020) [not precedential] (Opinion by Judge Christen M. English).

stepper motor
Ominome acknowledged that hits technology incorporates a "stepper motor" and did not dispute that "high speed stepping" is descriptive of, or generic for, stepper motors or "perhaps goods and services for which stepper motors serve as a significant or touted feature thereof." It argued, however, that the proposed mark does not describe a "significant function or feature" of its technology "with any degree of "particularity" because a stepper motor is a small component in its technology that is also "commonly used by competitors," and in a myriad of other devices across countless industries." [An odd interpretation of "particularity" - ed.].

Of course, Omniome argued that HIGH SPEED STEPPING is merely suggestive of its technology. Its Head of Intellectual Property averred that that the phrase was "coined ... to be suggestive of newly developed scanning technology intended to be employed by Omniome's goods and services which relates to a methodology of taking sequential images of DNA colonies (or other biological analytes) on a surface in a flow cell, which flow cell is moved in a precise manner in a translational direction ...."

The Board was not impressed" "We need not resolve whether a “stepping motor” is a significant feature of the applied-for goods and services." See In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (“[T]he Board need not find that the examining attorney’s rationale was correct in order to affirm the refusal to register, but rather may rely on a different rationale.”)

Based on Mr. Murphy’s explanation, “high speed stepping” immediately and with particularity describes a characteristic and feature of Applicant’s intended goods and services, namely, that the goods and services involve imaging the surface of a flow cell by repeatedly moving through a three-step process at high speed (e.g. by “high speed stepping”).

Even if Omniome coined the phrase HIGH SPEED STEPPING for its technology "does not imbue the phrase with source identifying significance."  In re Nat’l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983) (the fact that the applicant may be the first to use a merely descriptive designation does not “justify registration if the term projects only merely descriptive significance.”).

And so the Board affirmed the refusal to register.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2020.

Precedential No.24: Finding a Per Se Violation of the FDCA, TTAB Affirms Unlawful Use Refusal of "CW" for Hemp Oil Extracts

Finding that use of the mark CW for "Hemp oil extracts sold as an integral component of dietary and nutritional supplements" constitutes a per se violation of the Food, Drug & Cosmetics Act ("FDCA"), the Board affirmed the USPTO's refusal to register the mark under Sections 1, 2, and 45 of the Trademark Act. The Board declined to review a second refusal based on an alleged per se violation of the federal Controlled Substances Act (“CSA”). In re Stanley Brothers Social Enterprises, LLC, 2020 U.S.P.Q.2d 10658 (T.T.A.B.2020) [precedential] (Opinion by Judge Frances Wolfson).

The Board has consistently held that "to qualify for a federal … registration, the use of a mark in commerce must be ‘lawful.’” PharmaCann, 123 USPQ2d at 1123 (quoting In re JJ206, LLC, 120 USPQ 1568, 1569 (TTAB 2016) and In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016)). The USPTO presumes that the use of a mark in commerce is lawful unless the application record indicates a violation of federal law. In Brown, 119 USPQ2d at 1351, the Board summarized the applicable test:

[R]egistration generally will not be refused based on unlawful use in commerce unless either (1) a violation of federal law is indicated by the application record or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation, or (2) when the applicant's application-relevant activities involve a per se violation of a federal law.  

The record evidence showed that Applicant Stanley Brothers' goods contain cannabidiol (CBD), an extract of the cannabis plant that is regulated under the FDCA as a drug. The FDCA prohibits “[t]he introduction or delivery for introduction into interstate commerce of any food to which has been added … a drug or biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public ….” 21 U.S.C. § 331(ll). Examining Attorney Jeffrey J. Look maintained that Applicant’s "hemp oil extracts" are food to which CBD has been added, and that CBD was the subject of clinical investigations during prosecution of the involved application. The Board noted that under 21 U.S.C. § 321(ff) “a dietary supplement shall be deemed to be a food within the meaning of this chapter.”

Stanley Brothers contended that (1) the 2014 Farm Bill's Industrial Hemp Provision exempts it from this portion of the FDCA; (2) dietary supplements are not "food," and (3) CBD falls within an exception to the FDCA for drugs or biological products "marketed in food ... before any substantial clinical investigations involving the drug or the biological product have been instituted." 21 U.S.C. Section 331(ll)(1). The Board disagreed, as follows.

As to point (1), the Industrial Hemp Provision is a limitation on the Controlled Substances Act in some circumstances, but it does not override the FDCA's prohibition of offering “food to which has been added … a drug or biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public.”

The Industrial Hemp Provision permits authorized entities to “grow or cultivate industrial hemp” under certain circumstances, but it does not permit the distribution or sale of CBD in food when CBD is the subject of clinical investigation, even if the CBD is derived from industrial hemp which falls outside the CSA.

Or as the examining attorney stated: "In other words, it is not the industrial hemp to which the FDCA applies, but the CBD cannabinoid oil extracted from the hemp."

As to point (2), applicant's hemp oil extracts fall within the FDCA's definition of food, since they are recommended for use in beverages, are offered in "multiple flavors," and are promoted as "dietary supplements."

As to point (3), the CBD in applicant's products qualify as a “drug or biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public” under 21 U.S.C. § 331(ll). The Food and Drug Administration has stated that CBD is under "substantial clinical investigations." Applicant's assertion that its goods were marketed before such investigations were instituted was unsupported by any probative evidence.

Concluding that the USPTO established a per se violation of the FDCA, the Board affirmed the refusal to register. Despite a lengthy discussion of the CSA and the Farm Bills, the Board declined to reach the unlawful use refusal based on violation of the CSA.

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TTABlogger comment: More bad trademark news for the cannabis industry.

Text Copyright John L. Welch 2020.

TTAB Finds KOTA JAPAN Primarily Geographically Deceptively Misdescriptive for Knife Sharpening Tools

The Board affirmed a Section 2(e)(3) refusal of the mark KOTA JAPAN for "hand-operated sharpening tools and instruments; whetstones," finding the mark to be primarily geographically deceptively misdescriptive of the goods. Applicant contended that the distinctive term KOTA (having no known meaning on the record) is the dominant element of the mark and therefore the mark as a whole does not violate Section 2(e)(3). The Board disagreed. In re Grade-A-Global LLC, Serial No. 88003141 (June 16, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo).

In determining whether a mark runs afoul of Section 2(e)(3), the Board asks three questions. If the answer is yes to all three, then the mark is primarily geographically deceptively misdescriptive and registration is barred.

1. Is “the primary significance of the mark … a generally known geographic location?”
2. Is “the consuming public … likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place?” and
3. Would “the misrepresentation [be] a material factor in the consumer's decision” to purchase the goods? [quoting In re Cal. Innovations, Inc., 66 USPQ2d at 1856].

As to the first question, there was no evidence of record that KOTA has any meaning. However, JAPAN "is hardly an obscure place to reasonably informed consumers in the United States, but rather denotes a well-known geographic location." The Board observed that "it is not necessary for every component of a mark to be geographically deceptive in order to satisfy the first part of the test under Section 2(e)(3) articulated in Cal. Innovations." (E.g., THE VENICE COLLECTION, NEW YORK WAYS GALLERY, HAVANA CLIPPER (rum)).

Applicant relied on; In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738 (TTAB 2016) in arguing that "[t]he inclusion of a distinctive term in combination with a geographic term will operate to prevent the mark from having a primary significance that is geographic," but the Board found that case to be distinguishable. In Morinaga, the Board reversed a Section 2(e)(3) refusal to register the mark shown below, for milk products, finding the mark not primarily geographically deceptively misdescriptive of the goods. The USPTO focused on the word SEATTLE in the mark, but the Board concluded that SEATTLE "plays a relatively minor role visually, but more importantly, it is part of the phrase THE MOUNTAIN OF SEATTLE, which appears at the base of a mountain, all of which is underneath the large and dominant wording MT. RANIER."

Although Seattle is a recognized place, the Board found that consumers would not likely consider it to indicate the origin of the goods. Here, however, the mark at issue consists of two terms in standard characters that may be displayed in the same size. There was nothing in the record suggesting that KOTA detracts from the geographical significance of Japan, nor does KOTA modify JAPAN is a way that would cause consumers to fail to recognize that significance. The Board therefore found that "KOTA JAPAN is a generally known geographic place."

As to the second question, the USPTO may establish a goods-place association with "little more than a showing that the consumer identifies the place as a known source of the product." In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003). Applicant acknowledged that the goods do not originate in Japan.Examining Attorney Daniel F. Capshaw submitted excerpts from a number of websites establishing that Japan is "famous for centuries in producing, inter alia, high-quality, sought-after knives, knife sharpeners and whetstones, particularly water stones."

Finally, as to the third element, the evidence showed that consumers are interested in purchasing sharpening stones from JAPAN due to the quality of those products, and thus the geographic origin of the goods plays a role in the purchasing decision. "Indeed, from the record on appeal we draw an inference that the geographic misrepresentation is a material factor in the purchasing decision, based upon a “heightened” association between the goods and the location. In re Les Halles De Paris J.V., 67 USPQ2d at 1542 (the Patent and Trademark Office may raise an inference of materiality with evidence that the place is famous as a source of the goods at issue)." Applicant did not contest the issue of materiality.

All three prongs of the Section 2(e)(3) test having been met, the Board affirmed the refusal to register.

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TTABlogger comment: Have you ever met a prong? Is this a WYHA?

Text Copyright John L. Welch 2020.

Precedential No. 23: TTAB Says Rule 30(b)(6) Corporate Deponent Must Travel to Corporation's Principal Place of Business

In this proceeding for cancellation of a registration for a product design mark for guitar pickups, the Board denied Respondent DiMarzio Inc.'s motion for a protective order requiring Petitioner Andrew R. Flanders to take his Rule 30(b)(6) deposition of respondent in Bozeman, Montana, where respondent's designated witness resides. The Board declined to depart from the customary practice in federal court that the deposition of a corporation is ordinarily taken at its principal place of business. Andrew R. Flanders v. DiMarzio, Inc., 2020 U.S.P.Q.2d 10671 (T.T.A.B. 2020) [precedential] (Jill M. McCormack, Interlocutory Attorney).

Petitioner Flanders noticed the deposition of the respondent corporation for the offices of his counsel in New York City. Respondent argued that because its designated Rule 30(b)(6) witness - founder and owner, Larry DeMarzio - lives and works in Bozeman, Montana, the deposition must take place there.

Flanders contended that he was not seeking the deposition of an individual but of a corporate designee under Rule 30(b)(6), and therefore the deposition should take place in New York City, where respondent is registered and has its principal place of business. In fact, in November 2018, Mr. DiMarzio had insisted that the deposition take place there.

Trademark Rule 2.120(g) empowers the Board to issue an order, for good cause, to protect a party from, inter alia, annoyance and undue burden or expense, including the types of orders listed in FRCP 26(c)(1)(A)-(H). The Board may specify the terms for discovery, including time and place. FRCP 26(c)(1)(B).

Trademark Rule 2.120(b) provides that “the deposition of a natural person shall be taken in the Federal judicial district where the person resides or is regularly employed or at any place on which the parties agree in writing.” Section 45 of the Trademark Act distinguished between a "natural person" and a "juristic person." The latter includes a corporation. The Trademark Rules do not state the location in which a juristic person must be deposed under FRCP 30(b)(6). Since both the Trademark Rules and the Federal Rules of Civil Procedure are silent on this issue, the Board looks to the decisions of the CAFC, its own precedential decisions, and decisions from courts interpreting the Federal Rules.

The location of a Rule 30(b)(6) deposition where the corporate designee resides in a state different from that in which the corporation has a principal place of business appears to be an issue of first impression for the Board.

The customary federal treatment is that the deposition of a corporation by its agents and officers should ordinarily be taken at its principal place of business. 8A C. Wright & A. Miller, FED. PRAC. & PROC. CIV. § 2112 (3d ed. 2020). However, courts have broad discretion to determine the appropriate place for a Rule 30(b)(6) deposition, for the convenience of the parties and in the interests of judicial economy.

To determine whether good cause justifies a departure from the general rule, courts will typically look to a nonexhaustive list of factors, including the location of counsel, the burden of travel (including expense), the size of the party to be deposed and regularity of executive travel, the number of corporate representatives designated to testify, and the equities with regard to the nature of the claim and the relationship of the parties.

The Board found these factors appropriate for determining whether to issue a protective order with regard to the discovery deposition of a corporate designee.

There was no dispute that New York City is a convenient location for counsel. Respondent did not identify any undue burden it would face in proceeding in New York City. There was no assertion that Mr. DiMarzio cannot travel to the Big Apple, nor did respondent contend that Mr. DiMarzio is the only witness who can testify under the Rule 30(b)(6) deposition notice. The Board noted that Rule 30(b)(6) allows a corporation wide latitude in choosing a person to testify on its behalf.

Respondent did not dispute that in November 2018, Mr. DiMarzio demanded that the deposition take place in New York City. In 2019, respondent suggested that the deposition proceed in California. Thus, respondent is apparently not unduly burdened by executive travel.

The Board concluded that "[a]ll the equities favor holding Respondent's deposition in New York City." Since respondent did not show good cause to justify a protective order, the Board declined to depart from the general practice that Respondent should be deposed in the location of its principal place of business. Therefore, the Board denied respondent's motion.

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TTABlogger comment: Too bad the TTAB can't award attorney's fees on a feeble motion like this one. Could it at least order the petitioner to write 100 times in longhand, "I will not waste the Board's time with frivolous motions"? [Leo Stoller was once hit with just such a sanction].

Text Copyright John L. Welch 2020.

TTABlog Test: Is SPACE PACK Confusable with SPACE BAG for Storage Bags?

The USPTO refused to register the mark SPACE PACK for "Plastic bags with one-way valves, in which air is evacuated for storing household items, namely, clothing, pillows and bedding" [PACK disclaimed], finding a likelihood of confusion with the registered mark SPACE BAG for "evacuatable resealable storage bag made of nylon and polyethylene with a valve made of polyethylene and a closure system made of ABS plastic." Applicant argued that , because the word SPACE is widely used in the "space saving bag market" and thus is a relatively weak formative, the marks are distinguishable. How do you think this came out? In re South Coast Industries LLC, Serial No. 87848470 (June 11, 2020) [not precedential] (Opinion by Judge Christopher Larkin).

The Goods: The Board found that the bags identified in the registration have the same functionality as the "plastic bags with one-way valves, in which air is evacuated" of the application. Both of the identifications also state that the bags include a valve. The "evacuatable resealable storage bag" of the registration is not restricted to any particular field of use, and thus could be used for "storing household items, namely, clothing, pillows and bedding." The Board therefore agreed with Examining Attorney Christina Calloway that the involved goods are legally identical.

Since there are no restrictions in the application or cited registration as to channels of trade and classes of consumers, the goods are presumed to travel in the same channels to the same classes of consumers.

The Marks: In support of its argument that the cited mark is weak, applicant made of record two third-party registrations (one on the Supplemental Register) for the marks SPACE MAX and SPACESAVER for the involved goods, both of which marks are owned by the same registrant.
Applicant also asserted that  "it is so obvious that ‘SPACE’ is necessary to describe space saver bags, no trademark protection can flow from the term." The Board found that argument to be over-inflated:

Two third-party registrations and a handful of third-party uses, several of which involve descriptive, non-trademark use of the word “space,” are “a far cry from the large quantum of evidence of third party use and third-party registrations that was held to be significant in both [Jack Wolfskin] and [Juice Generation].”

The Board concluded that [a]lthough the term SPACE may be somewhat suggestive with respect to the identified goods, ... the sixth DuPont factor is neutral in our analysis of the likelihood of confusion."

Since the involved goods are legally identical, a lesser degree of similarity between the mark is needed to support a finding of likely confusion. Applicant maintained that the marks differ in appearance, sound, and meaning. It urged that "bag" is generic for a space saving bag, whereas "pack" means "to make into a compact bundle." One is a noun, the other a verb, and consumers will be able to distinguish the marks.

The Examining Attorney asserted that "pack" and "bag" are synonymous, and that applicant's argument that PACK refers to the verb form of the word is contradictory to its disclaimer of the word PACK.

The Board observed that [t]he word SPACE is the first part of both marks, which "''is particularly significant because consumers typically notice those words first.'" Although SPACE may be somewhat suggestive of the goods, the Board found the word to be the dominant element of each mark.

Considering the marks in their entireties, the Board noted that "[d]ifferences in appearance and sound between SPACE BAG and SPACE PACK resulting from the different second words are discernable when the marks are seen or heard together, but the marks 'must be considered . . . in light of the fallibility of human memory’ and ‘not on the basis of side-by-side comparison,'"

For a consumer with a “general rather than specific impression” or a “dim recollection” of the cited mark SPACE BAG, Applicant’s mark SPACE PACK is more similar than dissimilar to SPACE BAG in appearance and sound because the similarities resulting from the presence in both marks of the dominant lead word SPACE outweigh the differences resulting from the presence of the subordinate words BAG and PACK.

Furthermore, the Board found that PACK is more likely to be viewed as a noun modified by SPACE than as a verb, when used in connection with the identified goods. "The nouns 'bag' and 'pack' are not perfect equivalents, but there is sufficient evidence in the record to show that they are similar in meaning when they are used in connection with the involved goods."

We find that in the context of the involved goods, the disclaimed terms BAG in the cited mark and PACK in Applicant’s mark both refer generally to a container, and that when BAG and PACK are combined with and modified by the marks’ common dominant term SPACE, the marks as a whole have a similar connotation and commercial impression of a container that is used to save space when storing items.

Conclusion:: Concluding that the marks are more similar than dissimilar in appearance and sound, and sufficiently similar in commercial impression to lead consumers "to assume a connection between the parties," the Board affirmed the refusal to register.

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TTABlogger comment: Perhaps this pro se applicant did not do a very good job of marshaling evidence of third-party use of "space" in the storage bag  field.

Text Copyright John L. Welch 2020.

IBKÜL Confusable with KÜHL for Clothing, Says TTAB

[This guest post was authored by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield]. IBKUL UBHOT Ltd. sought to register the mark IBKÜL, in the stylized format shown below, for clothing and activewear, “namely, vests, jackets, shirts, tops, bottoms, hats, headbands.”

Opposer Alfwear, Inc. owns registrations for the marks KÜHL, KUHL, and KUUL for clothing and other items, but the parties and the Board focused on the KÜHL mark and registrations in the Section 2(d) analysis. After coolly marching through the DuPont factors, the Board found the opposed mark likely to cause confusion with the KÜHL mark, and it sustained the opposition. Alfwear, Inc. v. IBKUL UBHOT Ltd., Opposition No. 91233985 (June 2, 2020) (not precedential) (Opinion by Judge Cindy B. Greenbaum).

Section 2(d) Likelihood of Confusion: Somewhat interestingly, the Board started its likelihood of confusion analysis with the goods identified in the registration and application, instead of an analysis of the marks themselves. Here, both the application and registration included bottoms, hats, jackets, shirts, and tops, so it did not take much for the Board to find the goods to be legally identical. From this, the Board also “presume[d] that the channels of trade and classes of purchasers for these goods are the same.”

Applicant also put forth an alternative Section 18 amendment, attempting to limit its recited goods to “specialty activewear for golf, tennis and English riding equestrian sports, namely shirts, tops, bottoms and headbands.” But the Board iced that argument, finding that “the resulting narrower identification of goods would still be subsumed by, and thus legally identical to, the broadly worded identification of goods in the registration.” In short, applicant’s attempt to narrow its own identification of goods would not accomplish anything if opposer did not also restrict its broad listing of goods.

One of the more intriguing DuPont factors the Board considered was the strength of the KÜHL mark. Opposer claimed its mark was “famous” for purposes of likelihood of confusion and dilution, so the Board waded through all of the Opposer’s evidence on this point. First, however, the Board had to determine the inherent strength of the KÜHL mark (as a mark registered without a showing of acquired distinctiveness, it is entitled to a presumption of inherent distinctiveness).

Although the Board reiterated the canon that there “is no correct pronunciation of a mark that is not a recognized word,” it accepted the “uncontradicted” testimony that the mark KÜHL is pronounced as “cool.” [Author’s note: Given John Welch’s pronunciation of mark FUCT, I would love to hear his different pronunciation of KÜHL.] After determining that “cool” can have several meanings, including “used to express approval, admiration, etc.,” the Board found opposer's mark to be suggestive. So the KÜHL mark is inherently distinctive, but “not a conceptually strong mark.”

The Board then went through pages and pages of evidence allegedly showing that the KÜHL mark is “famous.” The Board, however, for one reason or another, discounted most of this evidence: among other things, the sales figures were not presented year by year, broken out by product type, or provided with any market context; the website visit figures did “not indicate whether the number of user visits were from different individuals or multiple visits from the same individuals, or from individuals residing in countries other than the U.S.”; and, the articles opposer produced all came from “Utah-based publications as opposed to national publications.” The Board finally determined:
"[C]onsidered as a whole, Opposer’s evidence establishes that the KÜHL trademark for clothing has achieved moderate commercial strength, but the evidence falls short of clearly establishing that the mark is famous."

The last factor the Board analyzed was the similarity of the marks. The Board found aural similarities because the opposed mark would likely be pronounced “I” “be” “cool,” with Opposer’s mark pronounced “cool.” Visually, the Board also found similarities:

The marks are similar in appearance because they share the letters “K,” “Ü” (with an umlaut) and “L,” in the same order. While Applicant’s mark begins with the letters “IB,” the term “KÜL” stands out as the most prominent portion of the mark because it appears in the color blue, and because it includes an umlaut over the letter “u,”which is not used in the ordinary English language.

Conclusion:In the end, given its finding that the KÜHL mark is not famous, the Board did not address opposer’s dilution claim, but the Board sustained the opposition under Section 2(d).

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TTABlogger comment: I pronounce KÜHL as "key-yule." JLW

Text Copyright John L. Welch 2020.

TTABlog Test: Is "BARE" for Sausage Confusable with "JUST BARE" for Poultry?

The USPTO refused to register the mark BARE for "skinless beef sausage, skinless pork sausage; beef; pork; hamburger; beef snack sticks; processed pork, veal and beef," finding a likelihood of confusion with the registered mark JUST BARE, in standard character and design form (below), for poultry and processed chicken. Applicant Mello Meats argued that the word JUST distinguishes the two marks, and as to the goods, there are many entities that register and use their marks for only one type of meat product. How do you think this came out? In re Mello Meats Inc., Serial No. 87624232 (June 8, 2020) [not precedential] (Opinion by Judge Jonathan Hudis).

The Marks: Examining Attorney Christine Martin maintained that the marks BARE and JUST BARE are similar in sound, appearance, and commercial impression. Consumers are likely to view applicant's mark, with the elimination of the word "JUST," as a variation of the cited mark. As to the cited word-plus-design mark, the words JUST BARE are the dominant portion.

Mello Meats argued that the words "bare" and "just" each have a number of different meanings, "so there is absolutely no way that the Examining Attorney can know which connotation is implied to each of the cited registrations and then the applied-for registration to say that they have similar connotations." Furthermore, the inclusion of the word "JUST" in the cited marks suffices to distinguish them from applicant's mark. The Board disagreed.

We thus find that the marks BARE and JUST BARE appear and sound similar in that they share the dominant term “BARE,” notwithstanding the addition of the term “JUST” in Registrant’s standard character mark as well as the additional design features in Registrant’s JUST BARE and Design mark.

The meanings of connotations of the marks must be considered in the context of the goods. “BARE” suggests the goods have nothing added (such as filler or meat byproducts). “JUST” could mean “only” or “simply. – "[T]ogether, JUST BARE could suggest simply (or only) chicken or poultry,
nothing else. These are the only definitions of 'BARE' and 'JUST' that make sense in context." And so the Board concluded that the marks have similar meanings. The design element in the cited mark does not outweigh the similarities in the literal portion of the mark with applicant's mark.

The Goods: The Examining Attorney submitted copies of 20 third-party use-based registrations, each covering both Applicant’s goods and the goods listed in the cited registrations. She also submitted excerpts from 16 websites, each showing the promotion and sale of both types of goods under the same mark. The Board found that this evidence amply establishes the relatedness of the involved goods.

Mello Meats feebly attempted to distinguish its goods by arguing that: (1) there are just as many trademark registrations for only one type of meat product as there are trademark registrations for multiple types of meat products, including poultry and chicken, and (2) there are multiple online locations that only sell one type of meat product in addition to those (made of record by the Examining Attorney) that sell multiple types of meat products, including poultry and chicken. The Board was unmoved:

Merely because some companies register or promote their marks in connection with one type of meat product does not mean we can simply ignore the plethora of evidence made of record by the Examining Attorney showing the registration and promotion of many companies’ marks in connection with multiple types of meat products including beef, pork, poultry and chicken (including processed chicken).

Trade Channels and Consumers: Since there are no restrictions in the application or cited registrations, the goods must be presumed to travel in their normal channels of trade. The third-party website evidence  shows that the involved goods may be found in the same virtual marketplace, available to all relevant classes of purchasers. Mello Meats conceded that these goods may be found in the same store.

Purchaser Sophistication: The Board's decision on likelihood of confusion must be based upon the least sophisticated potential purchasers. Purchasers of poultry and meat products are ordinary consumers who are not likely to exercise a higher degree of care. In any event, when the goods are related and the marks similar, even discerning consumers are not “immune from trademark confusion.” The Board considered this DuPont factor to be neutral.

Conclusion: Finding that the first, second, and third DuPont factors favor a finding of likelihood of confusion, the Board affirmed the refusal.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2020.

TTAB Tosses Out CHICLETS (Chewing Gum) Abandonment Claim

[This guest post was authored by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield]. Retrobrands USA LLC petitioned for cancellation of various CHICLETS-based registrations, including Registrations Nos. 48,005 (registered 1905); 1,440,100; 1,821,567; 1,824,532; and 2,862,796, all directed to chewing gum, due to alleged abandonment. Showing once again how hard it is to prove abandonment (see my previous posts on Ross Bicycle [TTABlogged here] and My Organic Zone [TTABlogged here]), the Board denied the cancellation petition. Retrobrands USA LLC v. Intercontinental Great Brands LLC, Cancellation No. 92066647 (May 29, 2020) [not precedential] (Opinion by Judge Karen Kuhlke).

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, ordinarily, a party wishing to prove abandonment starts by producing evidence of three consecutive years of nonuse of the mark, creating a prima facie case of abandonment. If the petitioner cannot prove three consecutive years of nonuse, the “Petitioner does not have the benefit of the presumption of abandonment, [and] Petitioner retains the burden to prove both that Respondent discontinued use and that Respondent intended not to resume use.” Citing Toufigh v. Persona Parfum, Inc., 95 USPQ2d 1872 (TTAB 2010) (emphasis original) [TTABlogged here]. And if “Petitioner does not establish both nonuse and intent not to resume use, it is not necessary for Respondent to submit rebuttal testimony or other evidence.”

Petitioner Retrobrands, as its name implies, is in the business of re-launching abandoned brands. Here, after some initial diligence that it thought showed that the CHICLETS brand had lost its flavor and was abandoned, it filed an intent-to-use application in 2017 for the mark CHICLETS for chewing gum. This cancellation arose out of Retrobrands’ efforts to clear the path for its use of the mark and issuance of its own application.

Respondent, along with Mondelēz North America, Mondelēz Exports, Mondelēz International, Inc., is part of the family of companies under Mondelēz International, Inc., a multinational confectionery, food and beverage company. They are generally the successors to Kraft’s global snack and food brands, including CHICLETS. Mondelēz International, Inc. manufactures and distributes those products by its various family members.

Ominously for Retrobrands’ petition, the Board started its discussion by stating that, “CHICLETS branded gum has been sold in the United States continuously by various predecessors-in-interest since around 1900.” (Emphasis added.) The decision did not improve for Retrobrands as the Board chewed through the facts.

A large complicating factor was the interoperation between the various “Mondelēz” entities. No one contested that Mondelēz North America sold CHICLETS brand chewing gum in the U.S. until 2016 and stopped at some point during that year. But also in 2016, another Mondelēz entity, Mondelēz Exports, assessed whether to sell CHICLETS in the U.S. Ultimately, it began sales of CHICLETS in the U.S. through a third-party distributor in April 2018. With this timeline, the Board did the math and determined that, even if one accepted Retrobrands’ arguments as to nonuse, Respondent’s period of nonuse was less than three years. But the Board did accept there was some period of nonuse. The question was then whether Retrobrands could prove Respondent had an intent not to resume use of the CHICLETS mark during that period.

Retrobrands tried to make its case by focusing on Mondelēz North America’s decision to discontinue use of the mark in the U.S. in 2016 as a “dying brand,” on various other statements Mondelēz North America had made about the mark (including emails that Retrobrands allegedly received from a Mondelēz customer service representative), and on an attempt to discredit Mondelēz’s re-launch of the brand in 2018. These efforts failed.

The Board first pointed out, on the “dying brand” issue, that “evidence showing a slowing and eventual discontinuation of CHICLETS branded gum by Mondelēz North America, even for economic reasons, does not by itself show abandonment,” citing Star-Kist Foods, Inc. v. P.J. Rhodes & Co., 769 F.2d 1393, 227 USPQ 44, 46 (9th Cir. 1985). And here, the fact that “Mondelēz” is made up of different companies helped respondent because the Board found that even if Mondelēz North America intended to not resume use, that fact doesn’t go to whether other Mondelēz entities intended to not resume use—and one Mondelēz entity did re-start use in 2018.

The Board also largely discredited the statements Mondelēz made about its continued use—or, actually, discontinued use—of the CHICLETS mark. It found that none of the cited statements “unequivocally state that the mark will no longer be used,” especially by other Mondelēz entities.
With that, the Board found that “Petitioner ha[d] not met its burden to establish that Respondent had no intent to resume use, and therefore Petitioner ha[d] not established abandonment.”

The Board observed that because Retrobrands never made a prima facie case for Respondent to rebut, it could have ended the inquiry there. But the Board chose to also examine Respondent’s evidence that it intended to resume use.

The Board first had to gnaw through some thick-shelled evidentiary objections, including whether Respondent’s witness had sufficient personal knowledge to testify on some of the issues on which she testified. But the Board eventually accepted all of Respondent’s evidence and determined from a select few Mondelēz emails from 2016 and 2017, and Mondelēz Exports’ eventual re-launch of the CHICLETS mark in 2018, that there was enough evidence to show at least that Mondelēz Exports had an intent to resume use of the mark.

Finding that Petitioner had not made a prima facie case of abandonment, and then alternatively holding that Respondent had an intent to resume use of the CHICLETS mark, the Board denied the petition to cancel each of the CHICLETS registrations.

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TTABlogger comment: Chicle is a natural gum traditionally used in making chewing gum and other products. It is collected from several species of Mesoamerican trees in the genus Manilkara, including M. zapota, M. chicle, M. staminodella, and M. bidentata. By the 1960s, most chewing gum companies had switched from using chicle to butadiene-based synthetic rubber, which was cheaper to manufacture.

Text Copyright John L. Welch 2020.

Disney's TINKERBELL Bests TEEN TINK In TTAB 2(d) Fairy Fracas

The Board sustained this Section 2(d) opposition to registration of TEEN TINKER BELL and TEEN TINK & Design for dolls, finding a likelihood of confusion with Disney's registered mark TINKER BELL for a variety of goods, including dolls, doll accessories, doll clothes, and doll playsets. Applicant argued that TINKERBELL is not inherently distinctive since it is based on the public domain character in J. M. Barrie's play and novel, Peter Pan. The Board noted, however, Disney's registration for dolls issued on the Principal Register without a Section 2(f) claim. Disney Enterprises, Inc. v. United Trademark Holdings, Inc., Opposition Nos. 91221648 and 91224985 (June 8, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo).

In 1939, Disney’s predecessors in interest acquired exclusive rights to “make, reproduce, and exhibit animated cartoon motion pictures and engage in merchandising activities related thereto,” based upon the play Peter Pan and related “Peter Pan” works originally created by J.M. Barrie. In 1953, the animated motion picture "Peter Pan" as released.

Applicant launched its Fairy Tale High collection of dolls in 2013, depicting “public domain characters from well-known fairy tales, including Snow White, Rapunzel, Belle, Sleeping Beauty, Little Mermaid, Alice in Wonderland, Tinker Bell and Cinderella."

The Board, not surprisingly, found the involved goods to be identical, and therefore presumed that they travel in the same trade channels to the same classes of consumers.Two strikes against applicant.

Disney relied on some thirty registrations for TINKER BELL marks, and the Board focused on one particular registration for dolls. As stated, that registration issued on the Principal Register without a claim of acquired distinctiveness under Section 2(f) of the Trademark Act, and so the mark must be considered inherently distinctive.

As to the inherent strength of the Disney mark, applicant submitted a number of third-party registrations for marks that include the term TINK or TINKERBELL, but only five identified goods or services related to toys, and none identified dolls. And so that evidence had limited probative value.

There was no question, however, that TINKER BELL refers to a fairy originally created by J.M. Barrie in approximately 1904, reimagined by Disney’s predecessors in interest in 1953, and again by Disney in 2013. And there was no question that the dolls identified by Disney's mark TINKER BELL depict that character. The Board therefore found that Disney's TINKER BELL mark, although inherently distinctive, is "highly suggestive of the dolls identified thereby, primarily inasmuch as the dolls depict the character TINKER BELL."

As to commercial strength, applicant submitted what it claimed to be evidence of 20 thirty-party uses of TINKER BELL for dolls and toy products, but the evidence was not probative because some of the evidence referred to licensed Disney products and the rest was of dubious provenance or irrelevant. Disney's submissions regarding revenues, marketing, and media exposure failed to segregate which pertained to dolls. Although Disney claimed that its re-imagined Tinker Bell character has achieved notoriety, the record was unclear as to whether that notoriety extends to its dolls. Furthermore, its evidence failed to provide the context that would allow an assessment of the commercial impact of the mark vis-a-vis other character dolls.

Opposer’s testimony and evidence related to the notoriety and even iconic status of the character TINKER BELL does not, on this record, demonstrate that the mark TINKER BELL is iconic or “famous” as applied to dolls. Considering both inherent and commercial strength, we find Opposer’s mark TINKER BELL, as applied to dolls, is entitled to an ordinary scope of protection on the spectrum of “very strong to very weak.”

Turning to the marks, as to TEEN TINKER BELL, applicant acknowledged that its dolls depict Tinker Bell as a teenager or adolescent. Thus the term “TEEN” in TEEN TINKER BELL"is at best suggestive of a feature or characteristic of Applicant’s goods, "and reinforces that the wording TINKER BELL identifies a female character." [How does teen = female? - ed.].

As to the TEEN TINK design mark, the Board noted that "TINK” is shorthand for TINKER BELL. Applicant concede that “J.M. Barrie also interchangeably uses the names Tinker Bell and Tink throughout the novel to refer to Tinker Bell.” The presence of the tiara design reinforces the reference to the Tinker Bell character.

The Board pooh-poohed applicant's argument that consumers will interpret Opposer’s TINKER BELL mark to “directly refer to the well-known fairy tale character Tinker Bell and evoke classic
images of a small pixie fairy, covered in a green skeleton leaf and sprinkling fairy dust” and “will immediately be reminded of the public domain character who represents children’s imaginations and hope."

Opposer’s TINKER BELL dolls do not depict the fairy as imagined by J.M. Barrie, but rather Opposer’s reimagining of TINKER BELL as an attractive, feminine creature, a diminutive pin-up. We find that connotation to be closely related to the connotation created by Applicant’s TEEN TINKER BELL mark, evoking the same beautiful character in her adolescent, teen years.

Noting that when the involved goods overlap, a lesser degree of similarity between the marks is need to support a finding of likelihood of confusion, the Board concluded that the mark TEEN TINKER BELL is "more similar than dissimilar" to the Disney mark, and conveys "similar commercial impressions overall." Likewise, the TEEN TINK & Design mark is "more similar to than dissimilar from Opposer’s TINKER BELL mark in appearance, sound and connotation and, overall creates a similar commercial impression."

Invoking the ninth du Pont factor, which considers the variety of goods on which a mark is used, the Board found that consumers are accustomed to see the Disney TINKER BELL mark on a wide variety of goods and services, and are therefore likely to perceive applicant’s teen-themed dolls as additional products from the Disney line. Thus, this factor favored a finding of likelihood of confusion.

Finally, turning to the catch-all 13th du Pont factor, The Board rejected Disney's claim that applicant adopted its marks in bad faith, noting applicant's assertion that it was “merely attempting to make use of a public domain character in a different light, not trade off any alleged fame” of the Disney marks. The Board found that explanation plausible.

Conclusion: the Board sustained the opposition

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TTABlogger comment: Maybe applicant should, in honor of this case, market a Don Quixote doll depicted as tilting at a windmill.

Text Copyright John L. Welch 2020.

TTABlog Test: Are SWEET VIBRATIONS and GOOD VIBRATIONS Confusable for Adult Sexual Products?

Barnaby Ltd. petitioned to cancel a registration for the mark SWEET VIBRATIONS for "adult sexual stimulation aids, namely, vibrators,” and opposed an application to register the same mark for "adult marital and sexual aids, namely, massagers, vibrators and stimulators," claiming a likelihood of confusion with its registered mark GOOD VIBRATIONS for "adult sexual aids, namely, artificial phalli,” and “retail and mail order services, featuring, sexually oriented products such as marital aids, electronic devices media and books." The goods overlap, but what about the marks? How do you think this case came out? Barnaby Ltd. v. Be Goods LLC, Opposition No. 91241053 and Cancellation No. 92068505 (Consolidated) (June 3, 2020) [not precedential] (Opinion by Judge Christopher Larkin).

Opposer/Petitioner Barnaby alleged that the mark GOOD VIBRATIONS is famous for adult sexual products. The Board discussed at length Barnaby's evidence of fame, but concluded that its proof fell short of the clear evidence standard. However, the Board did find that the mark " has some renown and is entitled to more than 'the normal scope of protection to which inherently distinctive marks are entitled.'"

Not surprisingly, the Board found the involved goods and services to be overlapping or related, and presumed that the overlapping goods travel in the same channels of trade to the same classes of consumers. As to the overlapping goods, a lesser degree of similarity between the marks is needed to support a finding of likelihood of confusion.

Turning to the marks, Barnaby argued that they share the same meaning, the same basic format and structure, and the same word VIBRATIONS. Applicant/Respondent Be Goods maintained that Barnaby's mark brings immediately to mind The Beach Boys' classic hit [Help Me Rhonda? ed.], whereas SWEET VIBRATIONS has no such association.

The Board agreed with Be Goods that if SWEET VIBRATIONS has a dominant portion, it is SWEET, noting that VIBRATIONS is disclaimed. GOOD VIBRATIONS, however, is a unitary mark since the phrase is recognized in the American vernacular.

Although the average consumers typically retains only a general impression of a mark, here the general impression of GOOD VIBRATIONS "is likely to be quite specific because the record shows that 'good vibrations' is a familiar phrase in colloquial American English."

The Board noted that “the members of this panel independently and spontaneously viewed the [mark] as reminiscent" of The Beach Boys' song, Good Vibrations. The Board had no doubt that "many American consumers, particularly the large cohort of Baby Boomers in the U.S. population, would also immediately view Opposer’s GOOD VIBRATIONS mark as reminiscent of the title of The Beach Boys’ song, and that for such consumers the mark would evoke the song’s music and lyrics."

The song’s lyrics, which include the refrains “I’m pickin’ up good vibrations, she’s giving me excitations,” “Good good good good vibrations,” and “Gotta keep those lovin’ good vibrations a happenin’ with her,” use the phrase “good vibrations” in its colloquial sense to describe a positive “general emotional feeling one has from another person or a place, situation, etc.’.” The Good Vibrations title and lyrics thus corroborate what Opposer acknowledges, that the phrase “good vibrations” has “long been in usage,” and accordingly is familiar to most Americans. [citations to record omitted]

Be Good's mark SWEET VIBRATIONS "is not a familiar phrase with a familiar meaning." The Board found the most applicable of the many definitions of "sweet" to be "pleasing to the senses," connoting "the tactile pleasure that Applicant’s website calls the “big ‘O” and that is the desired end result produced by the vibrations of Applicant’s “gspot rockin’ vibrators,” and other goods when they are applied to the erogenous areas of the body." [citation to record omitted].

That is a different and much earthier connotation than the connotation of GOOD VIBRATIONS as “a positive, pleasing, agreeable or ‘very good’ emotional feeling or atmosphere that is intuitively sensed or experienced by someone.” The connotation of SWEET VIBRATIONS is tangible and palpable; the connotation of the familiar expression GOOD VIBRATIONS is abstract and atmospheric. Simply put, when the two marks are considered in their entireties, they give off different “vibes.” We find that the marks are different in connotation and commercial impression. [citation to record omitted].

The Board concluded that the marks differ in appearance, sound, and connotation, and commercial impression, and that the first du Pont factor "weighs strongly against a finding of a likelihood of confusion."

Conclusion: Balancing the relevant du Pont factors, the Board found the first du Pont factor to be decisive, and it dismissed the opposition and denied the petition for cancellation.

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TTABlogger comment: The temptation to pun was great but I resisted, since this is a family blog.

Text Copyright John L. Welch 2020.

Precedential No. 22: TTAB Denies Motion for Leave to Take More Than Ten Discovery Depositions

The Board denied opposer's motion for leave to take additional discovery depositions beyond the ten-deposition limit of Fed. R. Civ. P. 30(a)(2), ruling that opposer had failed to make the required "particularized showing" as to the need for additional depositions. "That Opposer chose to take unnecessary depositions while foregoing important ones was an unfortunate strategic decision, but not a basis for granting the relief sought." The Board did, however, allow opposer to take the deposition of applicant's expert. Spliethoff’s Bevrachtingskantoor B.V. v. United Yacht Transport LLC dba United Yacht Transport, 2020 USPQ2d 10605 (TTAB 2020) [precedential] (Larry T. Stanley, Jr., Interlocutory Attorney).

Trademark Rule 2.116(a) states that “[e]xcept as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure.” The Trademark Rules do not specify a limit on the number of discovery depositions, and so the Board applied the deposition limit of the Federal Rules of Civil Procedure. The Federal Rules impose a limit of ten oral depositions, but a party may seek leave to take additional depositions.

The Board follows settled federal practice when applying the Federal Rules, which dictates that a party seeking such leave must make a “particularized showing” of why the additional discovery is necessary. Archer Daniels Midland Co. v. Aon Risk Servs., Inc. of Minn., 187 F.R.D. 578, 586 (D. Minn. 1999). The Board must limit the extent or frequency of discovery if it finds that:

(i) the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive;
(ii) the party seeking discovery has had ample opportunity to obtain the information by discovery in the action; or
(iii) the proposed discovery is outside the scope permitted by Rule 26(b)(1).

The Board may also consider whether the depositions already taken were necessary, to make sure that the party is not attempting to "circumvent the cap." by taking unjustifiable depositions first and then seeking leave for the more justifiable depositions. The Board looks to "whether additional depositions are proportional to the needs of the case, the importance of the issues, the parties’ relative access to relevant information, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit."

Applicant UYT sought to register UNITED YACHT TRANSPORT, in standard character form, for “transport of yachts by boat." Spliethoff's opposed on grounds of fraud, likelihood of confusion, and nonuse. Five of the ten witnesses that opposer deposed were its own witnesses Apparently it did not recognize that a discovery depositions of one's own witnesses are not admissible as trial testimony, except in certain circumstances. As Professor McCarthy observes, "one rarely takes the discovery deposition of one’s own client or favorable witnesses." The Board noted that here there was no indication that these five witnesses were unavailable for trial; in fact, they were represented at the depositions by opposer's counsel. Thus the Board found that these depositions were unjustified.

Similarly as to two third-party witnesses who were custodians of certain records, opposer should have planned to take their testimony at trial or by obtaining authenticating testimony by declaration or affidavit. Opposer also took testimony of two attorneys who provided relevant information, but there was no showing that these attorneys were subpoenaed and there was nothing indicating that they would not be willing to provide affidavit or declaration testimony.

Only as to one witness did opposer make a sufficient showing of justification for the discovery deposition.

The Board then considered whether opposer made a “particularized showing” that the additional discovery is necessary.

Opposer Spliethoff's sought to depose applicant's president, Mr. Haber, and its Rule 30(b)(6) witness. The Board acknowledged that these witness would have relevant information, However, the Board denied the request "in view of Opposer’s having wasted so many previously-taken discovery depositions, and Opposer’s having had ample opportunity to take these depositions but instead electing to pursue other depositions first."

Opposer also sought to depose applicant's former trademark attorney, Mr. Zimmer, claiming that because he submitted declarations in support of the application filing, his investigation and search results would be relevant to the fraud claim. The Board, however, pointed out that "[t]he mere signing of the declaration and Response to Office Action, however, does not create a circumstance where Mr. Zimmer alone would need to testify to the contents of those documents." The Board denied the request.

Opposer named a Mr. Uhr as a desired witness, but failed to show whether Mr. Uhr has discoverable information, and if so, how that information would be noncumulative of other witnesses." The Board also rejected opposer's request to take the deposition of an unnamed witness who may have relevant information.

Opposer has not demonstrated that it used its allotted ten depositions in a judicious manner. Opposer should have used one or more of its allotted ten depositions for a Rule 30(b)(6) deposition of Applicant or depositions of its officers. In view of Opposer wasting several of its ten discovery depositions, Opposer’s motion to take the deposition of Mr. Haber and a Rule 30(b)(6) deposition of Applicant is denied. As discussed above, Opposer’s motion to take the depositions of Mr. Uhr, Mr. Zimmer, and an unnamed witness is denied for failure to make a particularized showing.

Finally, Spliethoff's requested leave to depose applicant's expert witness, who produced a report on whether UYT was operating in violation of the Shipping Act of 1984 when it filed the opposed application. The Board granted that request, since "parties typically do not learn of the need to depose an expert until late in the discovery period." It noted that the expert's testimony "would be neither duplicative nor cumulative of testimony already obtained."


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TTABlogger comment: TTABlog tip: read the rules and plan ahead! BTW, I note that opposer refers to a "claim" of "void ab initio."  There is no such claim. "Void ab initio" is a result not a claim: e.g., an application may be void ab initio on the ground of lack of bona fide intent or nonuse.

Text Copyright John L. Welch 2020.