TTAB Posts August 2020 (Video?) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled eight (8) oral hearings for the month of August 2020. Many, if not all, of the hearings will be held via video. Briefs and other papers for each case may be found at TTABVUE via the links provided.

August 6, 2020 - 2 PM: In re Redleg Rum Company Limited, Serial No. 87187265 [Section 2(d) refusal of RED LEG & Design for "spirits, rum," in view of the registered mark RED LEG BREWING COMPANY for "beer, ale, lager, stout and porter; beers" [BREWING COMPANY disclaimed].

August 11, 2020 - 11 AM: In re Charlie's Enterprises, Serial No. 88200043 [Refusal to register the mark below for "Peas, fresh; Vegetables, fresh" on the ground that applicant's specimen of use (a trailer wrap on a truck) is unacceptable].

August 11, 2020 - 11:30 AM: In re Charlie's Enterprises, Serial No. 88199740 [Section 2(d) refusal of the mark shown below for "vegetables, fresh; Fresh kale," on the ground of likelihood of confusion with the registered mark KALE YEAH! for "Salads, namely, vegetable salads containing kale," and a second refusal on the ground that applicant's specimen of use (a trailer wrap on a truck) is not acceptable].

August 12, 2020 - 10 AM: In re Friendship Retirement Corp., Serial No. 87942568 [Section 2(e)(1) mere descriptiveness refusal of CENTER FOR MODERN AGING for "providing assisted living facilities" and "continuing care retirement communities (CCRCs) in the nature of nursing home services," despite applicant's claim of acquired distinctiveness under Section 2(f)].

August 12, 2020 - 2 PM: In re Michel Mercier, Serial No. 79246019 [Section 2(d) refusal of Romy (standard characters) for "Hair brushes, hair combs, hair styling comb and brushes, rotary hair brushes, electrically heated hair brushes" in view of the registered mark ROMY for "Non-medicated soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; make-up preparations; make-up removing preparations; cosmetic preparations for baths; cleansing milk for toilets purposes; cosmetic skin-tanning preparations; cosmetic skin care preparations; depilatory preparations; nail care preparations; antiperspirants; hair dyes; shampoos; hair conditioners; hair sprays; oils for toiletry purposes; lotions for cosmetic use"].

August 13, 2020 - 1 PM: In re Creativity IP PLLC, Serial No. 88120181 [Section 2(d) refusal of CREATIVITY IP for legal services [IP disclaimed] in view of the registered mark CREATIVITY LAW for "legal services for the enforcement, licensing, use, establishment and maintenance of intellectual property rights" [LAW disclaimed]].

August 18, 2020 - 10 AM: In re Iguana Yachts, Serial No. 87868306 [Refusal to register PRO IGUANA & Design for "Boats; amphibious vehicles; professional boats and professional amphibious vehicles in the fields of security, military, rescue and transport of goods and people" on the ground that the specimens of record (office sign, business card, and press release) fail to show the mark in use in commerce].

August 25, 2020 - 2 PM: Campari Mexico S.A. v Grant Toland, Alexander Prenta and Russ Bennetde C.V., Opposition No. 91250805 [Section 2(d) opposition to registration of EIDOLON for beer and for "Spirits, excluding distilled blue agave liquor and mezcal; Wine," in view of the registered mark ESPOLON for "Alcoholic beverages except beers" including tequila].

Read comments and post your comment here.

TTABlog comment: Any predictions? See any WYHA?s ? By the way, why aren't these video hearings publicly accessible?

Text Copyright John L. Welch 2020.

TTABLOG TEST: Is D'AVOCADO Generic for Avocado-Based Chocolate Products?

The USPTO refused to register, on the Supplemental Register, the term D'AVOCADO for "high pressure pasteurized avocado based chocolate confections, mousses, spreads, puddings and frozen desserts," on the ground of genericness. Keeping in mind that the Board, in the past year or so, has found MALAI generic for ice cream products and BLUEBERRY MUFFIN generic for beer, how to you think this appeal came out? In re D’Avocado, LLC, Serial No. 87704536 (July 28, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo).

The examining attorney required a translation of D'AVOCADO, contending that many French speakers use the term as a generic identifier for avocado and products made of avocado. Applicant maintained D’AVOCADO is "a compound mark comprising of [sic] the English terms ‘D’ and ‘AVOCADO’ joined by an apostrophe," so that no translation is required. The Board found the USPTO's evidence to be ambiguous: "it is not clear ... whether the term 'd’avocado' translates to 'avocado' or whether the French language webpages simply adopt the English word 'avocado.'" Therefore, the Board found the translation requirement inappropriate. [Seems pretty clear to me that the term means AVOCADO, with the "d" being just a fancy, meaningless add-on - ed.].

Turning to the genericness issue, the Board as usual found the genus to be appropriately described by the identification of goods in the application, rejecting applicant's proposed "plant-based chocolate." Applicant feebly argued that the relevant consumers are English speakers in Midwest supermarkets ("from Pittsburgh to Fargo), but these restrictions did not appear in the application at issue.

As to consumer perception, the Board noted that in applicant's specimen of use and other materials, there was no use of D’AVOCADO "or other indicia to suggest the purchasing public would perceive it as a common name for the goods rather than a mark." Nothing in the USPTO's evidence showed use of the term in connection with the identified goods.

The Board found the facts of this case to be "reminiscent" of several prior decisions in which a mark combining a generic term with a foreign article or other word changed the commercial impression of the phrase: LA YOGURT for yogurt, GLACÈ LITE for ice cream and frozen desserts, LE CASE for jewelry and gift boxes (CASE disclaimed).

The Board concluded that "the sparse and inconsistent record of any meaning of 'd’avocado' in a foreign language or English, as well as the very limited evidence of consumer perception of the term, does not point to the mark as a generic name of the class of goods." The Board therefore reversed both the genericness refusal and the translation requirement.

Read comments and post your comment here.

TTABlogger comment: I find this case reminiscent of the generic ingredient/flavor cases.

Text Copyright John L. Welch 2020.

Precedential No. 25: TTAB Affirms Section 2(e)(5) Functionality Refusal of Saw Blade Configuration

In a 62-page opinion, the Board affirmed a Section 2(e)(5) refusal to register the product configuration mark shown below, for "circular saw blades for power operated saws," finding the proposed mark to be de jure functional. Alternatively, the Board also agreed with the USPTO that Applicant MK Diamond failed to carry its “unusually high burden” of proving that the configuration has acquired distinctiveness. In re MK Diamond Products, Inc., 2020 USPQ2d 10882 (TTAB 2020) [precedential] (Opinion by Judge Mark Lebow).

The proposed mark comprises the curved portions of the slots or cut-outs around the circumference of the blade, which are shown in solid lines. Applicant MK claimed that the precise shape of the cut-outs  was chosen arbitrarily in order to differentiate its "Tiger Tooth" diamond saw blades from those of competitors.

Functionality: The Board applied the ever-popular Morton-Norwich factors in considering the Section 2(e)(5) issue. First, it reviewed four third-party utility patents and two pending applications submitted by Examining Attorney Andrea R. Hack. Applicant MK argued that these patent documents were not probative because they did did not disclose or claim the exact same configuration as the proposed mark, but the Board rejected that notion.

The disclosures in such a patent may demonstrate that utilitarian benefits are provided by a basic design feature irrespective of the specific shape. Thus patents (and applications) for analogous designs can provide competent evidence of functionality.

The Board concluded that the patent evidence supported a finding that cut-outs interspaced along the outer edge of a circular saw blade, regardless of shape, are de jure functional because they provide one or more utilitarian benefits: they dissipate blade stress, prevent blade warpage, clean out kerf, attain straighter cutting action, etc. Evidence of third-party use of similar features on saw blades also tended to show that the features at issue are functional.

The weight of the evidence, including applicant MK's own statements, suggested that its saw blades are cooled more, and are provided with more stress relief, by using these cut-outs. Based on the totality of the evidence the Board found that the proposed configuration mark "as a whole is primarily functional."

The overall appearance of the applied-for mark affects the quality of the blades under the Inwood test and, as a whole, “is in its particular shape because it works better in that shape,” Becton, Dickinson, 102 USPQ2d at 1376 - 39, because it provides cooling, stress relief, and other benefits such as the removal of swarf, particularly with respect to blades manufactured without vacuum brazed technology or other means that do not eliminate added benefits provided by cut-outs in the blade’s design.

***
Applicant’s slightly curved cut-out design is not manifestly different from other blade designs in a manner suggesting the cut-outs do not provide the same benefits that similar third-party blade cut-outs provide. Applicant understands that consumers expect cut-outs on diamond blade saws. If consumers expect them to be there, it is either because they are used decoratively, which the evidence here does not suggest, or it is because they make the products work better.

Having found the proposed mark to be functional under Inwood, TrafFix, and their progeny, the Board need not review the other Morton-Norwich factors. Nonetheless, the Board reviewed applicant's advertising and found that it did not tout the design in question. Applicant MK did not provide evidence of alternative designs "that offer the same performance benefits as Applicant's cut-outs." And there was no evidence that applicant's design results from a simple or inexpensive method of manufacture.

The Board concluded that applicant's configuration 'is dictated by the function it performs, and is therefore essential to the use or purpose of the goods and as a whole is functional." TrafFix, 58 USPQ2d at 1006.

To give Applicant the trademark registration it seeks here would give it a potential perpetual monopoly on a slightly curved basic design of cut-outs along the outer edges of a circular saw blade. One can envision only several different alternative configurations for the shape of cut-outs emanating from the perimeter of a circular saw blade – straight, angled, curved, or some combination thereof. We believe that a registration covering one of the few basic shapes available would interfere with the fundamental right to compete.

Acquired Distinctiveness: For the sake of completeness, and assuming arguendo that the proposed design is not de jure functional, the Board considered applicant's claim of acquired distinctiveness. The burden of proving same is heavier for a product configuration, and because cut-outs in circular saw blades are common, MK had to make a "particularly strong showing."

Applying the CAFC's Converse factors, the Board found that the widespread use of substantially similar cut-outs undercut MK's claim of  ''substantially exclusive"use  as required under Section 2(f). MK's advertising did not emphasize or call out the design through "look-for" advertising. Its sales figures lacked industry context, and may have merely reflected the popularity of the product and not recognition of the proposed configuration mark.

MK submitted the declarations of twelve distributors who attested to recognizing the design as MK's mark, but the Board was unimpressed. There was no evidence to suggest that this selection of declarants was representative of applicant's customers. Moreover, the probative value of the declarations was diminished because they were identical in form. The variations in the declarations as to what features are recognized as a source indicator was also of concern to the Board. And twelve declarations is simply an inadequate number in this case.

The Board therefore found that MK's evidence failed to meet its high burden of proof to demonstrate that the primary significance of the proposed configuration mark is to identify the source of MK's circular saw blades rather than being a mere feature of the blades.

Conclusion: And so the Board affirmed the refusal to register on both grounds.

Read comments and post your comment here.

TTABlogger comment: Another proposed product configuration mark bites the (saw)dust.

Text Copyright John L. Welch 2020.

Divided CAFC Panel Reverses TTAB: NAKED Condom Petitioner Has Standing Despite Contractual Estoppel

The U.S. Court of Appeals for the Federal Circuit has reversed (and remanded) the TTAB's decision dismissing a petition for cancellation of a registration for the mark NAKED for condoms. The Board ruled that Petitioner Australian Therapeutic lacked standing because it had agreed not to use or register the mark NAKED for condoms in the United States, and further had agreed that Respondent could use and register the mark, and so Australian did not have a real interest in this proceeding or a reasonable basis for its belief of damage. [TTABlogged here]. The CAFC, however, ruled that "the absence of proprietary rights does not in itself negate an interest in the cancellation proceeding or a reasonable belief of damage." Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 2020 USPQ2d 10837 (Fed. Cir. 2020) [precedential].

The CAFC began by observing that, although the Board discussed the issue in terms of "standing," the proper question is whether Australian "has established entitlement to a statutory cause of action under Section 1064," which provides that a petitioner may seek cancellation if he "believes that he is or will be damaged" by the registered mark.

The Board erred in requiring Australian to establish proprietary rights in its unregistered mark in order to state a cause of action under Section 1064. See, for example, Jewelers Vigilance, 823 F.2d 490 (Fed. Cir. 1987) (trade association may have standing to oppose a mark's registration without having proprietary rights).

The Board found that Australian had contracted away its right to use and register its unregistered mark, [Australian had also agreed that Respondent could register and use the mark]. However, according to the CAFC, "[c]ontracting away one's rights to use a trademark does not preclude a petitioner from challenging a mark before the Board." Although an agreement "could ultimately bar Australian from proving actual damages, Section 1064 requires only a belief of damage. [Emphasis by the court].

The court then turned to the issue of whether Australian has a real interest and reasonable belief of damage such that it has a cause of action under Section 1064. The court concluded that Australian satisfied those requirements because it twice filed trademark applications that were refused registration based on likelihood of confusion with respondent's mark, and because it was producing and selling merchandise bearing the mark since 2003. The second application (filed after the cancellation proceeding was commenced in 2006) remains suspended pending the outcome of the cancellation proceeding.

The CAFC therefore reversed and remanded the case to the TTAB for further proceedings.

Judge Wallach's dissent, which matched the majority opinion in length, agreed that a party need not prove a proprietary interest, but he disagreed that the Board required such proof and disagreed that Australian has met its burden of proving a real interest and reasonable belief in damages.

Judge Wallach opined that Australian did not have a legitimate commercial interest in the proceeding because it contracted away any such interest. Moreover, the Board merely required Australian to prove its allegations, not to prove that Australian has proprietary rights in the mark.

Finally, Judge Wallach pointed out that standing must exist at the commencement of the proceeding, and Australian did not file its second application until after the proceeding commenced.

Therefore he agreed with the Board that Australian had failed to prove a legitimate commercial interest on which to base its petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: The Board found that Australian had agreed that respondent could use and register the mark NAKED in the United States. Nonetheless, the CAFC stated "the Board made no finding on whether Australian agreed not to challenge Naked’s use and registration of the NAKED mark." Isn't an agreement that respondent could register the mark the same thing as agreeing not to challenge regsitration? What happens if and when the case returns to the Board and the Board applies contractual estoppel? Does this decision mean that Australian has standing to lose the case on the merits?

Text Copyright John L. Welch 2020.

July 29 Webinar - The McCarthy Series: What the BOOKING.COM Ruling Means for Trademark Law

On Wednesday, July 29th, at 12 noon Eastern Standard Time (9 AM PST), the McCarthy Institute will host a webinar to discuss the ramifications of the Supreme Court's decision in USPTO. v. Booking.com B.V. Entitled "The McCarthy Series: U.S.P.T.O. v. Booking.com: What the Recent SCOTUS Ruling Means for Trademark Law," the webinar will present "the survey expert whose survey played a prominent role in the briefing, the oral argument, the Court’s decision, and Justice Breyer’s dissent, amici who submitted briefs on both sides of the case, and co-counsel for Booking.com." Registration (here) is free.

The panelists (listed below) will explore what the BOOKING.COM ruling means "for survey and other consumer perception evidence in the future, what is the applicability of the case beyond domain names (and is there anything left to the Supreme Court’s 1888 case finding that a generic term combined with the generic corporate descriptor Company cannot serve as a trademark), and how can brand owners, competitors and consumers navigate the anti-competitive concerns raised by the USPTO and Justice Breyer in the post-Booking.com world."

Prof. David Franklyn, Director of the McCarthy Institute, will serve as moderator. The four panelists are:

• David Bernstein, Partner, Devevoise & Plimpton, LLP.
• Prof. Rebecca Tushnet, Professor of First Amendment Law, Harvard Law School
• Peter Golder, Marketing Professor, Tuck Dartmouth.
• Hal Poret, Hal Poret LLC, survey expert.

Read comments and post your comment here.

TTABlogger comment: I'll be booking this one, com hell or high water (I am on Cape Cod).

Text Copyright John L. Welch 2020.

TTAB FInds "THE TOKING DEAD" Confusable with "THE WALKING DEAD" For Clothing and Ancillary Goods

The Board sustained an opposition to register the mark THE TOKING DEAD for "retail store services featuring clothing, mugs, and other consumer goods," finding a likelihood of confusion with the mark THE WALKING DEAD registered for comic books, video recordings, and entertainment services, and used for a variety of associated goods and services, including clothing and mugs. The Board found opposer's mark to be famous for comic books and television programming, and therefore entitled to a broad scope of protection. Survey results showing a 16.4% likelihood of confusion put the final nail in applicant's coffin. Robert Kirkman, LLC v. The Toking Dead, Opposition No. 91242007 (July 22, 2020 ) [not precedential] (Opinion by Judge Marc A. Bergsman).

Fame: Robert Kirkman wrote the first THE WALKING DEAD comic book in 2003. More than 190 issues have been published since then. A television series debuted in 2010, and 131 one-hour episodes have aired since then. The series has the highest total viewership in cable television history. The series has garnered awards and has enjoyed unsolicited media publicity.

The Board found that, for likelihood of confusion purposes, THE WALKING DEAD is a famous mark, entitled to a broad scope of protection. Moreover, "[i]t is common knowledge that famous marks are frequently used on collateral or merchandising products such as clothing, mugs and other consumer goods."

Survey Evidence: Survey expert Robert Klein of Applied Marketing Science, Inc., conducted an Eveready [sic] survey to assess the likelihood of confusion between the two marks at issue. "An Eveready style survey is a reliable format that the Board accepts."

The Board observed that "a properly conducted survey is circumstantial evidence from which we may infer a likelihood of confusion." Moreover, the Board may consider the results of a properly conducted survey as "evidence akin to actual confusion."

“In the typical Eveready survey, respondents are shown the junior user’s mark in connection with the junior user’s applied for services and are asked open-ended questions about the source of the junior user’s services.” In Union Carbide Corp. v. Ever-Ready. Inc., the survey asked: “Who do you think puts out the lamp shown here? [showing a picture of defendant's EVER-READY lamp and mark], and “What makes you think so?” 188 USPQ at 640.

The Board provided the details of the Klein survey questions and methodology and found the survey to be "reliable and therefore of probative value on the issue of likelihood of confusion herein." The survey responses showed a net confusion rate of 16.4%.

We find that the 16.4 percent level of confusion shown in the results of the Klein survey is not de minimis, it is representative of the potential rate of confusion among the universe of prospective purchasers, and it supports Opposer’s likelihood of confusion claim.

Applicant provided the results of its own survey, but the Board found it flawed in a number of respects: for example, it did not follow accepted methodology, it did not include a proper universe of respondents, and it prejudiced its potential "survey" respondents by the wording of the survey.

The Marks: The Board found that the marks have similar structures, the same lilt and cadence, and the convey the same "general idea or stimulate the same mental reactions of active zombies either walking or smoking." Therefore the marks are similar.

Goods and Services: There are no limitations in the types of goods sold in applicant's retail stores and so the Board must presume that they encompass the same type of goods as those of opposer (despite applicant's claim that its goods are related only to "cannabis education through the use of zombies"). "[S]tore services and the goods that may be sold in that store are related goods and services for the purpose of determining likelihood of confusion." Applicant, according to its discovery responses, intends to offer its services in channels that overlap with those of opposer, to the same classes of consumers.

Conclusion: Finding that the Klein survey "corroborates our findings of fact and conclusions of law, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: Nice example of an Eveready survey.

Text Copyright John L. Welch 2020.

JEAN LEON'S LA SCALA for Restaurant Services Confusable With JEAN LEON for Wine, Says TTAB

The Board sustained an opposition to registration of JEAN LEON'S LA SCALA for restaurant services, finding a likelihood of confusion with the registered mark JEAN LEON for wines. Although applicant was the senior user, opposer's registration was more than 5 years old and could not be challenged under Section 2(d). Jean Leon, S.L. v. La Scala Restaurants, Corp., Opposition No. 91241804 (July 22, 2020) [not precedential] {Opinion by Judge George C. Pologeorgis).

Jean Leon opened the La Scala restaurant in Beverly Hills in 1956. He founded a winery in Spain in 1962, and in 1994 sold the winery to one Torres, who operates opposer. Jean Leon provided his written consent to registration of the JEAN LEON mark for wines.

Priority: Although applicant used its mark prior to any date established by opposer for its wines, this fact did not aid applicant, since Section 2(d) precludes registration of "a mark which so resembles a mark registered in the Patent and Trademark Office ... as to be likely ... to cause confusion." [Emphasis by the Board]. "Thus, although Applicant is actually the prior user at common law, such fact is irrelevant to the question of the registrability of Applicant’s mark." See King Candy Co., v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110-11 (CCPA 1974):

[R]registration is not compulsory. We recognize that an applicant-prior user may by delay lose the opportunity to effect cancellation. The answer to that concern resides in the statute. The effect of the entire statute in such instances is to upgrade the register and, so far as registration is concerned, to balance the equities, favoring the long-standing, non-fraudulent registration against the prior user who delays too long in electing to seek registration. The right to exclusive use, in such cases, may be determined in an appropriate action in a district court. We do not regard that result as undesirable. If it were, its correction would be grist for the Congressional mill, not for ours or the board’s.

Goods and Services: The Board pointed out once again that there is no per se rule that restaurant services are related to food or beverages for purposes of Section 2(d). "Something more" is required than the mere showing these goods and services may be offered together. Opposer submitted 37 third-party registrations for marks covering both restaurant services and wine, as well as six registrations showing that well-known individuals have registered their names for alcoholic beverages and restaurant services. Opposer also provided evidence that it is not uncommon for restaurants to offer private label wines.

Relying on In re Opus One, Inc., 60 USPQ2d 1812, 1813 (TTAB 2001), the Board found that opposer satisfied the "something more" requirement, and so the second DuPont factor favored opposer.

Channels of Trade: The evidence showed that the ordinary distributions channels for wine include restaurants, that applicant sells wine at its restaurant, and that opposer's wines were historically sold at applicant's restaurant.

Strength of Opposer's Mark: The evidence indicated that opposer's wine has achieved limited commercial success for wine, and its mark would not fall on the strong end of the fame spectrum. The Board deemed this factor neutral. However, there were no third-party uses of similar marks that would weaken the JEAN LEON mark.

Similarity of the Marks: Noting that applicant's mark encompasses opposer's mark in its entirety, the Board found the involved marks to be more similar than dissimilar in sound, appearance, connotation and commercial impression.

Bad Faith: The Board rejected opposer's assertion that applicant had proceeded in bad faith in filing its application to register. "[M]ere knowledge of the existence of Opposer's registration does not, in and of itself, constitute bad faith."

Lack of Actual Confusion: There was a lack of evidence regarding the length of time in which opposer sold its wines to applicant, and as to the extent of these sales. The lack of reported incidents of confusion may have resulted from patrons assuming that there was a relationship between the wines and the restaurant. The Board deemed this factor neutral.

Conclusion: Balancing the relevant DuPont factors, the Board found confusion likely and sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: As the senior common law user, can the restaurant stop opposer from selling its wines in applicant's trading area?

Text Copyright John L. Welch 2020.

CAFC Remands COOKINPELLETS.COM Case to TTAB in Light of BOOKING. COM decision

On July 21st, the U.S. Court of Appeals for the Federal Circuit remanded to the TTAB the Board's decision in In re GJ & AM, LLC dba Cookinpellets.com "for further consideration in light of the Supreme Court’s decision" in USPTO v. Booking.com B.V. The Board had found COOKINPELLETS.COM to be generic for "Processed wood fuel in the nature of pellets for use in barbecue grills"(class 4), merely descriptive and lacking in acquired distinctiveness for those same goods, and merely descriptive of "Downloadable mobile applications for advertising barbecue grill fuels" (class 9). [TTAB decision here].

The CAFC's order (pdf here) states, rather cryptically:

The case is remanded for further consideration in light of the Supreme Court’s decision. Although the government contends in its supplemental brief that the Trademark Trial and Appeal Board’s (“Board”) holding on acquired distinctiveness is undisturbed by Booking.com, the Board’s acquired distinctiveness holding was “[b]ased on the evidence . . . in connection with the genericness refusal.” The impact of the Supreme Court’s decision in Booking.com is best determined by the Board in the first instance.

Read comments and post your comment here.

TTABlogger comment: So is COOKINGPELLETS.COM generic? I suspect the Board will find the term to be merely descriptive and lacking in secondary meaning, even if it sets aside its genericness ruling.

Text Copyright John L. Welch 2020.

TTAB Dismisses Opposition to SKY CINEMAS: Not Confusable with SKY NEWS for News Reporting Services

In a wide-ranging opinion covering various evidentiary objections, a family-of-marks claim, and trial of that issue by implied consent, the Board dismissed this opposition to registration of SKY CINEMAS for "movie theaters" [CINEMAS disclaimed], finding the mark not likely to cause confusion with SKY NEWS for radio and television news services. The Board concluded that the involved services are not related nor offered through the same trade channels, and it found that opposer failed to show that movie theaters are within opposer’s natural area of expansion. This blog post will hit some of the high points. Sky International AG v. Sky Cinemas LLC, Opposition No. 91223952 (July 21, 2020) [not precedential] (Opinion by Judge Frances Wolfson).

The Board found the mark SKY NEWS as a whole to be "no more than suggestive for Opposer's news steaming services." As to commercial strength, opposer's proofs lacked the market context necessary for the Board to assess the commercial impact of the mark in this country. The Board concluded that the SKY NEWS mark is "entitled to an ordinary scope of protection."

The Board that the marks look and sound alike, are somewhat similar in meaning, and in their entireties create similar commercial impressions.

As to the involved services, the Board, in a lengthy discussion, rejected opposer's "natural area of expansion" argument because the evidence "does not establish that any such 'natural expansion' would have been expected or assumed by the purchasers of Opposer’s services when Applicant entered the field."

Opposer has expanded its offering of streaming services to include a variety of platforms, including mobile devices, laptops, and desktop computers. Opposer has expanded its business into production of films that have been shown in movie theaters. Nonetheless, Opposer has not shown that when Applicant commenced use of its mark or filed its application for “movie theaters,” purchasers of Opposer’s services would have expected or assumed that “movie theaters” were within Opposer’s “natural zone of expansion.”

The Board concluded that the involved services are not related. Moreoever, "although consumers of both parties’ services are movie enthusiasts, the substantial differences in channels of trade weigh against a finding of likelihood of confusion."

The Board dismissed opposer's claim that applicant chose its mark with an intent to trade off opposer's mark It found the lack of actual confusion to be a neutral factor.

Balancing the relevant DuPont factors, the Board found confusion unlikely, and so it dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: Worth reading in detail.

Text Copyright John L. Welch 2020.

RIBBONS OF HOPE Fails to Function as a Trademark for Pasta, Says TTAB

The Board affirmed a refusal to register the phrase RIBBONS OF HOPE as a trademark for pasta, finding that the phrase fails to function as a mark. Examining Attorney Anthony Rinker maintained that RIBBONS OF HOPE mark is "an informational social, political, religious, or similar kind of message that merely conveys support of, admiration for, or affiliation with the ideals conveyed by the message." The Board agreed. In re Riviana Foods Inc., Serial No. 87414879 (July 20, 2020) [not precedential] (Opinion by Judge Jonathan Hudis).

The Board observed once again that "[i]n determining whether a designation functions as a mark, the critical inquiry is how the relevant public would perceive the designation." In order to make that determination, the Board looks to the applicant's specimen(s) of use and other evidence showing how the proposed mark is actually used.

Applicant's product displays state "for every sale of San Giorgio Ribbons for Hope pasta during September 2017, 50¢ will be donated to the Children’s Cancer Foundation to support pediatric cancer research" and "September is Cancer Awareness Month." The Examining Attorney submitted a number of examples of third-party use of the phrase RIBBON(S) OF HOPE in their names, as part of cancer awareness, women’s awareness, or fund raising campaigns: for example, DANCE FOR THE CURE - RIBBONS OF HOPE, CARBON COUNTY RIBBONS OF HOPE, and RIBBONS OF HOPE - INVEST IN WOMEN, INC.

The Board concluded that RIBBONS OF HOPE, as used by applicant, fails to function as a trademark:

Rather, consumers would perceive Applicant’s SAN GIORGIO & Design mark as the designation of source shown in Applicant’s specimens. Applicant’s proposed mark, as shown in the specimens, informs consumers of Applicant’s pasta that their product purchase supports cancer awareness and research efforts. Moreover, Applicant’s use of RIBBONS OF HOPE is very much like the third party uses of RIBBON(S) OF HOPE in non-profit organization names, as part of cancer awareness or women’s awareness, or as part of fund raising campaigns. The uses demonstrate that consumers are familiar with the phrase to signify support of these causes, and would not recognize RIBBONS OF HOPE as a source-indicator.

And so the Board affirmed the refusal to register

Read comments and post your comment here.

TTABlogger comment: Is there a double entendre argument: i.e, ribbons = pasta?

Text Copyright John L. Welch 2020.

NYIPLA Webinar July 23rd: Davis and Welch Review The Past Year in Trademarks

On July 23rd at 12 noon, Ted Davis and Yours Truly will provide a review of recent trademark cases in a webinar aptly titled "Trademark Case Decisions: The Past Year in the Courts and at the TTAB," sponsored by the New York Intellectual Property Law Association. Registration is free to NYIPLA members, but a fee of $30.00 is required of non-members. Register here.

As usual, Ted will cover the courts. We look forward to his comments on the Supreme Court's several recent rulings in the trademark realm. Your truly will follow up with a review of decisions and developments at the TTAB.

Text Copyright John L. Welch 2020.

Recommended Reading: Prof. Lisa Ramsey, "Using Failure to Function Doctrine to Protect Free Speech and Competition in Trademark Law"

In her article, "Using Failure to Function Doctrine to Protect Free Speech and Competition in Trademark Law," Professor Lisa P. Ramsey of the University of San Diego School of Law responds to Professor Alexandra Roberts’ paper "Trademark Failure-to-Function" by following her advice "to focus more attention on whether matter claimed as a mark is actually used and perceived as a trademark that identifies and distinguishes products and indicates their source."

I agree with her that failure to function doctrine should be used more frequently to protect free speech and competition in trademark law. Below I explain in detail how the USPTO and courts can use this trademark doctrine to safeguard the public domain—the words and symbols companies can use in connection with the advertising and sale of their products—against efforts to claim trademark rights in memes, offensive terms and symbols, words and designs commonly used in an industry, and other widely used messages and product features that were inherently valuable in the marketplace before people tried to register and protect them as trademarks.

Read comments and post your comment here.

TTABlogger comment: In the past year the TTAB has issued a half-dozen precedential failure-to-function decisions.

Text Copyright John L. Welch 2020.

Mark Your Calendar: Three Trademark Events This Week

Well, I'll be holed-up in Eastham, Massachusetts again this week. It's not easy to stay inside on Cape Cod during the summer, but I'm going to make time for these three upcoming on-line Trademark events (especially the second one). You may find them of interest as well. [all Eastern Standard Time].

Wednesday, July 22, 1-2 PM: "Surveys in Trademark Litigation." Applied Marketing Science (AMS) will host a free webinar discussing the use of survey evidence in intellectual property litigation. This webinar will focus on how survey research can be an effective tool for attorneys when advising clients on how to navigate through complex Lanham Act cases. Register here.

Thursday, July 23, 12 noon: Ted Davis and Yours Truly will provide a review of recent trademark cases in a webinar aptly titled "Trademark Case Decisions: The Past Year in the Courts and at the TTAB," sponsored by the New York Intellectual Property Law Association. Registration is free to NYIPLA members, but a fee of $30.00 is required of non-members. Register here.

Friday, July 24, 1 PM: Trademark Public Advisory Committee (#TPAC) quarterly meeting. "Watch USPTO executives and TPAC chair give remarks and share updates with TPAC members." (here). You may submit questions in advance to tpac@uspto.gov,

Read comments and post your comment here.

TTABlogger comment: Enjoy!

Text Copyright John L. Welch 2020.

TTABlog Test: Which of These Section 2(d) Refusals Was/Were Reversed?

Here we go again! The Board recently decided the appeals from the three Section 2(d) refusals summarized below. At least one of the refusals was reversed. How do you think these came out? [Answers in first comment].

In re NexBank Capital, Inc., Serial No. 86394529 (July 14, 2020) [not precedential] (Opinion by Judge Robert H. Coggins). [Section 2(d) refusal of NEXBANK for various financial and banking services, in view of the registered marks next MyNextBank.com and design for "banking services for young adults" (shown below), and NXT BANK (in standard characters) for "banking services; and personal and commercial insurance brokerage" [BANK disclaimed], owned by different owners].

In re Triunfo Foods Import & Export Corp., Serial No. 87684166 (July 15, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman) [Section 2(d) refusal of LA PETITE BAKERY, in standard form, for "bakery goods; breads," in view of the registered mark LA PETITE FOODS, in standard form, for "ice cream, ice cream truffles, frozen confections" [FOODS disclaimed].

In re Nachman, Serial No. 88123747 (July 15, 2020) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal of NĀO AYURVEDA and design, shown below, for cosmetics, shampoo, creams, lotions, and the like [AYURVEDA disclaimed], in view of the registered mark NAOS, in standard characters, for "Skin soaps, Cosmetics, Hair Lotions"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2020.

TTAB Reverses Section 2(a) False Connection Refusal of GIPA for Intellectual Property Services

The Board reversed a Section 2(a) refusal to register the mark GIPA for various intellectual property related services, finding that the USPTO failed to establish a false suggestion of a connection between the mark and the USPTO's own Global Intellectual Property Academy. In re Georgia Intellectual Property Alliance, Inc., Serial No. 88013883 (July 14, 2020) [not precedential] (opinion by Judge Jonathan Hudis).

Section 2(a), in pertinent part, provides that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it — (a) … falsely suggest a connection with persons … [or] institutions …." To establish this Section 2(a) bar, the USPTO must show:

(1) the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;
(2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
(3) the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and
(4) the fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.

As to the first element, prior decisions have broadly construed the terms "person" and "institution" to include governmental and quasi-governmental entities [E.g., U.S. Customs Service, NAFTA, and West Point], and the legislative history indicates that "institution" should be given a broad scope.

The evidence showed that the Academy (GIPA) "was established in 2006 to offer training programs on enforcement of intellectual property rights, patents, trademarks, and copyrights. The training programs offered by GIPA are designed to meet the specific needs of foreign government officials … concerning various intellectual property topics, such as global intellectual property rights protection and enforcement and strategies to handle the protection and enforcement issues in their respective countries."

The Board, noting that it was a "close call," concluded that the Academy qualified as an institution under the first element of Section 2(a). The evidence confirmed that GIPA is a name that has been used in referring to the USPTO's Academy.

As to the second element of the test, applicant submitted numerous examples demonstrating use of the term "GIPA" to refer to many entities other than the Academy. [E.g., Green Island Power Authority and Georgia Indoor Percussion Association]. The Examining Attorney pooh-poohed this evidence because these entities were not in the field of intellectual property, but the Board sided with applicant:

The Examining Attorney’s argument misses the point of these examples. Applicant made the third-party “GIPA” illustrations not to weaken the scope of protection of the Academy’s acronym as a mark. That would be a consideration for a likelihood of confusion refusal to register under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), which is not applicable here.

The third-party examples of use of “GIPA” showed that the Academy "clearly is not the only organization that uses this acronym." And so GIPA does not point uniquely and unmistakably to the Academy. This alone was enough to require reversal of the refusal to register.

As to the third element, applicant conceded that it is not connected with the USPTO's Academy.

And finally, as to the fourth element the USPTO failed to show, particularly in light of the number of other organizations also using the designation GIPA, that this term, "as associated with the Academy, has a sufficient reputation such that when this designation is used with the Applicant’s services, a connection with the Academy would be presumed."

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: FWIW: I've been a registered patent attorney since 1975. I never heard of GIPA.

Text Copyright John L. Welch 2020.

Beyoncé's BLUE IVY CARTER Trademark Application Survives TTAB Opposition

The Board dismissed this opposition to registration of the mark BLUE IVY CARTER for a variety of goods and services in 14 classes (including musical performers (sic!), golf balls, plastic flags, postcards, and fan clubs), rejecting Opposer Veronica Morales's claims of likelihood of confusion, lack of bona fide intent, and fraud. Applicant BGK Trademark Holdings, LLC is owned by singer, songwriter, and actress Beyoncé Giselle Knowles-Carter, and "Blue Ivy Carter" is the name of her daughter, who provided consent to registration. Opposer Morales is the owner and founder of a lifestyle event planning company doing business under the name “Blue Ivy,” and has a registration for the mark BLUE IVY for event planning services. Veronica Morales d/b/a Blue Ivy v. BGK Trademark Holdings, LLC, Opposition No. 91234467 (June 30, 2020)[not precedential] (Opinion by Judge Mark Lebow).

Likelihood of Confusion: Applicant BGK argued that the marks at issue create different commercial impressions, since BLUE IVY CARTER refers to a famous child. The Board pointed out, however, that "people, including celebrities, are often known by their first name," Beyoncé being one example. The Board found the marks BLUE IVY and BLUE IVY CARTER to be "more similar than dissimilar as to appearance, sound, connotation and commercial impression."

As to the involved goods and services, there was no evidence suggesting that they are related in such a way as to give rise to source confusion. "Opposer has, figuratively, thrown the identification of goods and services against a wall, hoping something will stick."

The only goods or services that appear even marginally related are Opposer’s services of “event planning and management for marketing, branding, promoting or advertising the goods and services of others” (Class 35) on the one hand, and Applicant’s services of “product merchandising for others” and “entertainment marketing services, namely, marketing, promotion and advertising for recording and performing artists” (Class 35) on the other. But there is no evidence suggesting that those services are actually related in a manner that would be likely to cause confusion.

Nor was there any evidence that the good and services travel in the same channels of trade. "Advertising on the Internet is ubiquitous and ‘proves little, if anything, about the likelihood that consumers will confuse similar marks used on such goods or services."

Since the second and third DuPont factors weighed heavily against a finding of likely confusion, the Board denied opposer's Section 2(d) claim.

Lack of Bona Fide Intent: Opposer's claim of lack of bona fide intent was primarily based on BGK's failure to produce any documentation supporting same. BGK provided no information or documents in response to discovery requests directed to its intent. However, BGK did object to those requests and opposer did not pursue a motion to compel. Therefore the Board refused to draw an adverse inference against BGK.

Opposer Morales also pointed to a statement reportedly made by Shawn Corey Carter (Jay-Z), the husband of Beyoncé and father of Blue Ivy Carter, in a Vanity Fair magazine article:

I asked about allegations in the media that he and Beyoncé trademarked their daughter’s name to do a line of baby clothes. Jay said they did it merely so no one else could. “People wanted to make products based on our child’s name, and you don’t want anybody trying to benefit off your baby’s name. It wasn’t for us to do anything; as you see, we haven’t done anything. First of all, it’s a child, and it bothers me when there’s no [boundaries]. I come from the streets, and even in the most atrocious sh*it we were doing, we had lines: no kids, no mothers— there was respect there. But [now] there’s no boundaries. For somebody to say, This person had a kid—I’m gonna make a f*ckin’ stroller with that kid’s name. It’s, like, where’s the humanity?”

The Board, however, noted that Jay-Z is not a party and is not legally connected to the company. His statement cannot be attributed to the company just because he is the husband of the owner. Moreover, the statement is double hearsay, since neither Jay-Z not the reporter made that statement in "court," under oath, with the opportunity for cross-examination. And so the Board dismissed this claim of lack of bona fide intent due to failure of proof.

Fraud: Opposer's fraud claim was founded solely on the assertion that BGK submitted a false statement of bona fide intent. Since Opposer failed to prove a lack of bona fide intent, this claim failed as well.


Read comments and post your comment here.

TTABlogger comment:  In footnote 43, the Board discusses the testimonial declaration of BGK's expert witness, noting that "he is not an expert in trademark matters much less on the registrability of trademarks under the Lanham Act and the problems and considerations related thereto. This is apparent from his reference to 'trademarked' brand names, willingness to offer opinions based on facts not in evidence and, in some cases, based on no evidence at all, such as his opinion that Applicant’s mark is already famous (without evidence of use). [Empahsis added by the TTABlogger. Repeat after me: "trademark" is not a verb"].

Text Copyright John L. Welch 2020.

TTABlog Test: Is TEQUILUSA for Alcoholic Beverages Confusable with the TEQUILA Certification Mark?

The Board made quick work (an opinion of a mere 11 pages) of this opposition to registration of the mark TEQUILUSA for “alcoholic beverages, except beer," finding a likelihood of confusion with the registered certification mark TEQUILA for “distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant. The Board declined to reach opposer's claims of deceptiveness under Section 2(a) and deceptive misdescriptiveness under Section 2(e)(1). Consejo Regulador del Tequila, A.C. v. George Michalopoulos and Tasos Georgas, Opposition No. 91244395 (July 6, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo).

Case law establishes that classification as a certification mark "has very little effect on our determination as to whether or not there is a likelihood of confusion." The Section 2(d) test is the same: the du Pont analysis, applied from the standpoint of the users of the certification mark. In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012). 

The Goods: The Board found that applicant's broadly identified "alcoholic beverages except beers," encompass the more narrowly identified "distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant" provided by users of the certification mark. Since the goods are legally identical, the Board must presume that they travel in the same trade channels to the same classes of purchasers.

The Marks Because the goods overlap, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. The Board found the marks to be "highly similar" in appearance. The pronunciation of the marks will be similar due to the construction of the two marks. In short, the marks give "the impression of being minor variations of one another." As to meaning, applicant's mark "suggests a subset of Opposer's TEQUILA emanating from or associated with the United States of America." The Board found the marks to be "more similar than dissimilar."

Balancing the relevant DuPont factors, the Board found confusion likely and so it sustained the opposition.


Read comments and post your comment here.

TTABlogger comment: You may recall that in 2017, the Board dismissed an opposition to registration of TEQUILA as a certification mark, finding that Opposer Luxco failed to prove its claims of its claims of genericness, lack of legitimate control, and fraud. [TTABlogged here].

Text Copyright John L. Welch 2020.

TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Come Out?

The TTAB recently decided the appeals from three Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them, keeping in mind that last year the Board  affirmed, by my calculation, about 93% these refusals. Answer(s) will be found in the first comment.


In re World Economic Forum, Application Serial No. 79249902 (July 6, 2020) [not precedential] (Opinion by Judge Christopher Larkin). [Mere descriptiveness refusal of 4IR for publications, consulting services, social networking services, and educational services. The Examining Attorney maintained that 4IR is a recognized abbreviation for "Fourth Industrial Revolution"].

In re Lifestyle Enterprises, Inc., Application Serial No. 87952218 (July 8, 2020) [not precedential] (Opinion by Judge Michael B. Adlin). [Mere descriptiveness refusal of DIVANY for "furniture," Applicant argued, and the Board agreed, that the doctrine of foreign equivalents did not apply.]

In re Synergy One Lending, Inc., Serial No. 88063190 (July 10, 2020) [not precedential] (Opinion by Judge Thomas W. Wellington). [Mere descriptiveness refusal of RETIREMENT FUNDING SOLUTIONS (in standard characters) for "Financial services, namely, mortgage lending services" [RETIREMENT FUNDING disclaimed]]. Applicant argued that taking out a mortgage is not "funding."]

Read comments and post your comment here.

TTABlog comment: See any WYHAs here?

Text Copyright John L. Welch 2020.

TTABlog Test: Which of these Section 2(d) Refusals Was/Were Reversed?

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

In re Backbone Payments, Inc., Serial No. 88279535 (July 6, 2020) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of BACKBONE PAYMENTS for "“Merchant services provider, namely, application service provider featuring application programming interface (API) software for enabling a mobile app to accept payments directly; Merchant services provider, namely, application service provider featuring application programming interface (API) software for integrating ecommerce, payments, and functionality into software platforms” [PAYMENTS disclaimed], in view of the registered mark RETAIL BACKBONE for  “Application service provider (ASP) featuring software used to manage and facilitate the online, electronic commerce and store operations and businesses of retailers” [RETAIL disclaimed]].

In re The Half Baked Bus, LLC, Serial No. 88099422 (July 6, 2020) [not precedential] (Opinion by Judge Mark Lebow) [Section 2(d) refusal of HALF BAKED BUS, in the word-plus-design form shown below, for "Cosmetic preparations for skin care other than tanning accelerators; Cosmetics and cosmetic preparations other than tanning accelerators; Skin cream other than tanning accelerators; Skin moisturizer other than tanning accelerators," in view of the registered mark HALF BAKED, in standard character form, for "cosmetics, namely, sun tan accelerator lotion"].

In re Jevona Battle, Serial No. 88029949 (June 30, 2020) [not precedential] (Opinion by Judge David K.Heasley). [Section 2(d) refusal of BATTLE FITNESS for “Personal fitness training, physical fitness and physical exercise instruction, fitness and exercise classes” and for “Nutritional counseling” [FITNESS disclaimed] in view of the registered marks BATTLE FIT & Design for physical fitness training services [FIT disclaimed] and BODY BATTLE FITNESS & Design for personal fitness training services [FITNESS disclaimed].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2020.

Recommended Reading: "A Tale of Two Cups: Acquired Distinctiveness and Survey Evidence Before the TTAB"

The latest issue of The Trademark Reporter (pdf here) includes a Commentary by Sarah Butler and Healey Whitsett entitled, "A Tale of Two Cups: Acquired Distinctiveness and Survey Evidence Before the TTAB." The authors, both directors at NERA Economic Consulting, review the TTAB's findings in the recent Starbucks cup case (TTABlogged here) involving the trade dress of two Starbucks cups.

In this proceeding, the TTAB carefully evaluated a secondary meaning survey on these criteria and concluded that while the survey had “some probative value,” its reliability was suspect as a result of several issues it addressed. This commentary will focus primarily on the TTAB’s evaluation of the control stimulus used in the secondary meaning survey in this particular case and will also offer some perspective on helpful lessons regarding the foundations of control design. Such lessons include the necessity of the control stimulus sharing as many characteristics with the experimental stimulus as possible, and the selection of changes made to the experimental stimulus.

The authors also  comment on other "methodological learnings" gleaned from the Starbucks decision, including guidance regarding the consideration of open-ended responses provided in the survey and the identification of the correct population of survey respondents.

Read comments and post your comment here.

TTABlogger comment: On a personal note, I recently had the pleasure of working with Sarah Butler on a likelihood-of-confusion survey.

TTABlog Thank You: to The Trademark Reporter for granting permission to the TTABlog to provide a link to this issue. Copyright © 2020 the International Trademark Association. Reprinted with the permission of The Trademark Reporter®, 110 TMR No. 3 (May-June 2020).

Text Copyright John L. Welch 2020.