Precedential No. 32: TTAB Strikes Untimely Supplemental Expert Report

In this 23-year old proceeding involving the mark COHIBA for cigars, the Board rejected a supplemental expert report submitted by respondent on the same day as its pretrial disclosures. The Board first found that the Supplemental Report did not make the original expert report complete or accurate, but instead was an improper attempt to bolster the expert's original opinions with new examples and illustrations. Then, applying the Great Seats factors, the Board found that the untimely disclosure of the Supplemental Report was not substantially justified or harmless. Empresa Cubana Del Tabaco d.b.a Cubatabaco v. General Cigar Co., Inc., 2020 USPQ2d 10988 (TTAB 2020) [precedential] (Order by Rebecca Stempien Coyle, Interlocutory Attorney).

FRCP 26(c) permits supplementation of an expert report "if the party learns that in some material respect the disclosure ... is incomplete or incorrect." Any such supplementation must be disclosed "in a timely manner." As to supplementation of an expert report, the additions or changes "must be disclosed by the time the party's pretrial disclosures are due." FRCP 26(e)(1()A) and (e)(2).

“A supplemental report which seeks to clarify an expert’s earlier opinions or provides new examples and illustrations to bolster them is not proper supplementation.” Gemological Inst. of Am., 111 USPQ2d at 1562 (citing Akeva, 212 F.R.D. at 310).

Permissible Supplementation?: Respondent argued that the Supplemental Report was permitted because a determination of likelihood of confusion is based on facts at the time of trial, and the original report was submitted 32 months previously and was now incomplete. The Board disagreed. The 32-month gap does not by itself "permit a deviation from the narrow scope of permissible supplementation under FRCP 26(e)."

While the Board may allow, in appropriate situations, parties to supplement the factual record during trial, Respondent does not demonstrate that the Supplemental Report corrects, clarifies, or fills in a gap in the Original Report that rendered the original disclosure inaccurate or misleading. Respondent’s contention that the new information is necessary for the Board to evaluate Mr. Hacker’s opinion, and to "to show that [his] expert opinion … remains valid in light of current facts" is not a basis for supplementation under the Rule.

Exclusion? An untimely supplementation may still be accepted if the untimely disclosure was substantially justified or harmless. The Board applies the following five factor test:

"1) the surprise to the party against whom the evidence would be offered; 2) the ability of that party to cure the surprise; 3) the extent to which allowing the testimony would disrupt the trial; 4) importance of the evidence; and 5) the nondisclosing party’s [or the late disclosing party’s] explanation for its failure to disclose the evidence.: Gemological Inst. of Am., 111 USPQ2d at 1562 (quoting Great Seats, 100 USPQ2d 1323, 1327 (TTAB 2011) (internal citation omitted)); see also ProMark, 114 USPQ2d at 1240.

The first factor favored petitioner, since it had already presented its case-in-chief based on prior discovery, with no indication that respondent intended to supplement its expert report. The second and third factors also favored petitioner. The discovery period ended two years ago and so the ability to cure the surprise was significantly diminished. "Reopening discovery at this late stage in this twenty-three year old proceeding would cause further disruption and delay."

The Board found that the fourth factor, weighed in favor of General Cigar because, according to General Cigar, it supported the Original Report and its conclusions, and so the Board deemed the Supplemental Report “cumulative” and of “marginal importance.” Finally, as to the fifth factor, the Board noted that this case was suspended or dates extended numerous times after service of respondent's Original Report (on May 31, 2017) , and yet respondent waited until December 2019, just prior to its own pre-trial disclosures, to ask the expert witness if there were any factual developments of relevance to his Original Report.

Respondent should have inquired into the need to “supplement” the Original Report earlier in this proceeding or informed Petitioner that Respondent was going to update the Original Report to reflect new information that arose after May 2017.

The Board concluded that respondent's failure to timely disclose the Supplemental Report was not substantially justified or harmless, and so it granted petitioner's motion to strike the report.

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TTABlogger comment: At page 7 of the opinion, the Board said "the Supplemental Report was timely under Fed. R. Civ. P 26(e)(2)," but in its conclusion the Board called the submission "untimely" Are you confused?

Text Copyright John L. Welch 2020.

BORN IN THE USA Fails to Function as a Trademark for Clothing, Says TTAB

The Board affirmed a refusal to register BORN IN THE USA for "bottoms as clothing; footwear; headwear; tops as clothing," finding that the phrase fails to function as a trademark. The evidence of record showed that "BORN IN THE USA is a widely used informational message that goods originate from the United States." In re Born in the USA LLC, Serial No. 87867549 (August 26, 2020) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The question for the Board was whether the proposed mark functions as a mark, based on whether the relevant public perceives the phrase as a source indicator. Matter that is merely informational is not source-indicative.

Examining Attorney Robert Guliano maintained that the phrase is a commonplace message or expression used widely, including in the clothing field, "to convey an informational patriotic sentiment of origin in the United States." He submitted numerous examples of such usage, including "Perry Ellis Denim: Born in the USA" and "Born in the USA: An Inside Look at Klein Plastics."

The Board noted that other, similar message have been deemed informational and thus unregistrable: e.g., INVESTING IN AMERICAN JOBS for retail store services and PROUDLY MADE IN THE USA for electric shavers.

Applicant argued that its specimens of use (see picture above) "unequivocally demonstrate trademark use of the mark in on [sic] the inside collar of Applicant's goods and upon the product packaging." The Board was unmoved: "Given the nature of the wording and its widespread use in many contexts including in connection with clothing, Applicant's manner of use of the proposed mark on the specimen does not negate its informational nature."

The Board pointed out that, on the shirt, the proposed mark appears next to the phrase "Made IN USA," in close proximity to other informational matter, reinforcing its informational significance.

Applicant pointed to seven third-party registrations for marks consisting of or containing the phrase BORN IN THE USA, but not for clothing. [But a number of the uses cited by the Examining Attorney were not for clothing either - ed.]. The Board was unimpressed, observing that each application must be considered on its own record, and further that the record here did not include examples of use of these third-party marks, whereas applicant's specimens of use show the proposed mark in close proximity to other matter that reinforced its informational nature.

And so the Board affirmed the refusal.

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TTABlogger comment: Didn't Bruce Springsteen have a song, Born to Run in the USA?

Text Copyright John L. Welch 2020.

TTABlog Test: Is SALTY BULL BREWING Confusable With TORO SALAO for Restaurant Services?

The USPTO refused to register the mark SALTY BULL BREWING & Design (shown below) for "Restaurant and bar services; Taproom services; Taproom services featuring beer brewed on premises" [BREWING disclaimed], finding a likelihood of confusion with the registered mark TORO SALAO for "Restaurant services, including sit-down service of food and take-out restaurant services." The services overlap, and, according to the examining attorney, TORO SALAO is Spanish for "salty bull." How do you think this came out? In re Hop Daddy LLC, Serial No. 88175921 (August 24,2020) [not precedential] (Opinion by Judge Mark Lebow).

The Board keenly observed that marks are different in appearance and sound, "but equivalency in meaning or connotation can outweigh the differences in marks." The examining attorney relied on the doctrine of foreign equivalents, but that doctrine "is not absolute but should be viewed merely as a guideline," applied "only when: (1) the relevant English translation is direct and literal and there is no contradictory evidence establishing another relevant meaning", and (2) "it is likely that the ordinary American purchaser would 'stop and translate [the word] into its English equivalent.'" The "ordinary American purchaser" includes "all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English."

Applicant conceded that "toro" translates into English as "bull," but disputed the evidence that "salao" means "salty," which evidence consisted of two anonymous blog posts that provided differing opinions on the possible meaning of "salao" depending on context. There Board found "no clear translation and connotation" for the word "salao."

Although “we have routinely applied the doctrine of foreign equivalents to Spanish language marks,” see, e.g., In re Aquamar, 115 USPQ2d at 1127, the absence of any actual dictionary translation from a recognized source for this common language raises some doubt as to whether “salty” is a direct and literal translation of SALAO. Moreover, according to the Cambridge and Collins dictionaries, the direct translation of “salty” from English to Spanish and vice-versa is “salado.”

The Board therefore found insufficient evidence to show that "salao" is a direct and literal translation of "salty," and therefore the doctrine of equivalents does not apply.

Concluding that the marks differ in in overall appearance, sound, connotation, and commercial impression, the Board reversed the refusal to register.


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TTABlogger comment: ¿Cómo lo hiciste?

Text Copyright John L. Welch 2020.

TTABlog Test: How Did these Three Section 2(d) Appeals Come Out?

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. No hints this time. How do you think these came out? [Answers in first comment].

In re Creativity IP PLLC, Serial No. 88120181 (August 20, 2020) [not precedential] (Opinion by Judge George C. Pologeorgis). [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]. Applicant pointed to 15 third-party registrations for marks containing the word "creativity" or "creative," in attempting to show the weakness of the cited mark.].

In re Justice Without Borders, Serial No. 87870907 (August 20, 2020) [non precedential] (Opinion by Judge Albert Zervas) [Section 2(d) refusal of the mark JWB JUSTICE WITHOUT BORDERS & Design, shown below, for "providing legal advice, legal support services, and litigation services in support of migrant workers in the fields of labor exploitation and human trafficking, not including services associated with international humanitarian relief projects or providing medical or health care assistance to victims of disasters and/or conflicts in underdeveloped countries," in view of the registered mark JWB in typed form for "legal services for on-line global computer network." Applicant argued that the globe design and the phrase "Justice Without Borders" are more likely to create an impression on consumers than the letters "JWB."].

In reFGX International, Inc., Serial No. 88033162 (August 24, 2020) [not precedential] (Opinion by Judge Linda A. Kuczma). [Section 2(d) refusal of SUNSENTIALS in view of the registered mark FUN SUN ESSENTIALS, both for sunglasses. Applicant maintained that SUN and ESSENTIALS are weak formatives, and so no one party is entitled to their exclusive use.].

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

Text Copyright John L. Welch 2020.

California Lawyers Assn Webinar Sept. 1st: Davis and Welch Review The Past Year in Trademarks

On September 1st from 12 to 1 PM Pacific Coast Time, 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 California Lawyers Association. Registration fee of $55.00. CLE credit is available. 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.
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TTAB Denies Motion to Re-open Concurrent Use Proceeding to Remove Geographical Restriction

The Board denied TMC's motion to re-open this 1997 concurrent use proceeding involving the mark ON THE RUN for retail convenience store services. TMC obtained a concurrent use registration for the entire United States except for the state of Oklahoma. It sought to remove that geographical restriction from its registration on the ground that, according to its evidence, Ronald D. Donohue, the excepted concurrent user, is no longer using his common law mark. TMC Franchise Corp. v. Ronald D. Donohue, Concurrent Use No. 94001076 (August 20, 2020) [not precedential].

The Board observed that a party may seek an amendment to the concurrent use restriction in its registration only through a new concurrent use proceeding, or by court order. However, removal may be permitted if the excepted user has assigned its rights to registrant. See In re Alfred Dunhill, 4 USPQ2d 1383,1384 (Comm'r 1987).

Here, Donahue did not assign his rights, and so the Board denied the motion to re-open. However, it stated that TMC may file a new application for an unrestricted registration of the mark. See TBMP Section 1114.

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TTABlogger comment: In Boston, convenience stores are called "spas."

Text Copyright John L. Welch 2020.

TTABlog Test: How Did these Three Section 2(d) Appeals Come Out?

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. No hints this time. How do you think these came out? [Answers in first comment].

In re 412 Public House, LLC, Serial No. 88205268 (August 19, 2020) [not precedential] (Opinion by Judge Jonathan Hudis). [Section 2(d) refusal of 412 PUBLIC HOUSE for "Bar services; Restaurant services" [PUBLIC HOUSE disclaimed], in view the registered mark 412 BBQ for, inter alia, restaurant and bar services [BBQ disclaimed].

In re Minted, LLC, Serial No. 88031150 (August 19, 2020) [not precedential] (Opinion by Judge Cindy B. Greenbaum) [Section 2(d) refusal of PIPPA for "Paper products, namely, stationery, envelopes, printed invitations, announcement cards, note cards, and greeting cards," in view of the registered mark PIPPA & CO. for "Retail store services in the field of party supplies" [& CO. disclaimed].

In re Queendom Aesthetics, LLC, Serial No. 88085646 (August 19, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of QUEENDOM AESTHETICS & Design in view of the registered mark QUEENDOM, both for beauty creams, beauty lotions, beauty milks, and make-up.

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

Text Copyright John L. Welch 2020.

TTAB Affirms Two Refusals of BOCCA DOLCE for Chocolate Confections: Disclaimer Requirement and Likelihood of Confusion

The Board affirmed a bifusal of the mark BOCCA DOLCE for "chocolate confections," upholding the USPTO's requirement of a disclaimer of DOLCE and finding a likelihood of confusion with the registered mark BOCCA for "caramels in the nature of candy, chocolates." Applicant argued that the mark is unitary and therefore a disclaimer is not required, and that BOCCA is a weak formative in light of third -party uses and registrations. The Board was unmoved.  In re Nino Salvaggio Fruit & Vegetable Market, Inc., Serial No. 88138756 (August 18, 2020) [not precedential] (Opinion by Judge Jonathan Hudis).

Disclaimer Requirement: Examining Attorney J. Ian Dible, relying on dictionary translations and third-party disclaimers, maintained that the word DOLCE must be disclaimed because it means "sweet" in English and thus is merely descriptive of a characteristic or feature of applicant's goods. The Board agreed.

Applicant contended that BOCCA DOLCE means "sweet mouth" and in that phrase the word "sweet" does not describe its products. It also pointed to several registrations in which DOLCE was not disclaimed.

The Board observed that the words BOCCA and DOLCE are not physically connected by a design feature. There was no evidence or persuasive argument that the term BOCCA DOLCE has a distinct meaning of its own independent of the meaning of its constituent parts. Nor was the Board persuaded by the fact that applicant owned a now-expired registration for the same mark for the same goods, the Board noting once again that each case must be decided on its own merits.

Likelihood of confusion: Because the goods in the cited registration encompass those of the application the Board found them to be legally identical, and it therefore presumed that they travel in the same channels of trade to the same classes of consumers.

In an effort to show the weakness of the word BOCCA, Applicant pointed to 13 third-party uses of marks containing the words "bocca," "boca," or "mouth," but six of them involved unrelated goods. The remaining seven was not a sufficient number to require the Board to accord these uses probative weight under Jack Wolfskin and Juice Generation, and there was no evidence of the impact of these marks in the marketplace.

Likewise, as to the 25 third-party registrations containing the terms bocca, boca, or mouth, only eight involved goods similar to those of the cited registration, and those were for marks that contain additional textual matter distinguishing them from the BOCCA mark. Again, this evidence fell well short of the volume of evidence found convincing on its face in Jack Wolfskin and Juice Generation.

The Board fond BOCCA to be the dominant element in applicant's mark, both because it is the first term in the mark and because of the descriptiveness of DOLCE. Applicant argued that, because Italian is a dying language in the United States, the vast majority of Americans will not even recognize "dolce" as meaning "sweet," and therefore DOLCE is a much stronger differentiator that "sweet." The Board pointed out, however, that Italian is the eighth most spoken language in the United States, spoken by more than 708,000 people, and it is a common, major language. [The Board also noted the incongruity of applicant's reliance on the English translation of BOCCA as "mouth."]. 

Comparing the marks in their entireties, the Board found them to be similar in sound, appearance, connotation, and commercial impression. It therefore concluded that confusion is likely, and it affirmed the Section 2(d) refusal.

The Board allowed applicant thirty-days within which to file a disclaimer, if it intends to appeal the affirmance of the Section 2(d) refusal.

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TTABlogger comment: How sweet it isn't.

Text Copyright John L. Welch 2020.

TTAB Affirms 2(a) Deceptiveness Refusal of SIKSILK for Clothing

The Board affirmed a Section 2(a) refusal of the purported mark SIKSILK for a laundry list of clothing items -- including T-shirts, track suits, and top hats -- finding the mark to be deceptive for the goods. Applicant submitted slang dictionary definitions of "silk," claimed that the mark is a double entrendre, and pointed to third-party registrations for marks containing the word SILK. The Board was unmoved. In re Monkey IP Limited, Serial No. 88265123 (August 14, 2020) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

Under Section 2(a), registration is unavailable for a mark that “[c]onsists of or comprises… deceptive … matter.” The test for determining deceptiveness sets forth three requirements: (1) Is the term misdescriptive of the character, quality, function, composition or use of the goods? (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods? (3) If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers? Importantly, a mark may be deemed deceptive "on the basis of a single deceptive term that is embedded in a larger mark…."

Misdescriptive?: Applicant Monkey IP admitted during prosecution that the "majority of goods" listed in its application do not contain silk. Therefore, the Board concluded, the mark is misdescriptive of the goods. Monkey relied on several slang dictionary definitions of "silk" identifying "fine clothing" and describing "silk" as something that is "very good." The Board noted that the slang dictionaries gave different definitions for "silk," and there was no evidence of widespread acceptance of the slang versions of the word. Moreover, there was no limitation in Monkey's identification of goods to any particular demographic that would be aware of the slang definitions.

We find the dictionary definitions and website evidence available to the general public to be a more accurate gauge for determining the public perception of SIKSILK goods to be purchased by the general public. Accordingly, we find the record evidence showing that SILK is perceived as a fabric and component of clothing is entitled to more probative weight than the slang definitions of SILK.

Monkey also argued that SIKSILK is a double entendre because SIK, "or its homonym SICK," is "a slang term typically defined as 'good.'" The Board agreed, finding that, as applied to clothing, "the term SIKSILK will be perceived as impressive silk clothing." However, the Board did not find a double entendre:

The term SIKSILK does not denote “readily apparent” second expression [sic] which may serve as a double entendre, and Applicant has supplied no evidence except the slang definitions indicating that prospective purchasers would regard SIKSILK as conveying a double meaning. This is insufficient to support finding a double entendre.

Monkey pointed to eight third-party registrations for marks including the word SILK, but five of the registrations do not involve general apparel items. In any case, "the mere existence of these third-party registrations does not warrant a finding that the mark SIKSILK is a unitary term with a connotation that outweighs its misdescriptiveness." There was no evidence regarding the extent of use of those marks, or the public's awareness of them.

Believable?: The Board observed that "[w}here the record demonstrates that goods are commonly made from a certain material, purchasers are likely to believe goods identified by the term for the material are actually made from that material." Understandably, Applicant Monkey did not dispute that clothing may be made of silk, and the Board rejected the argument that consumers would not expect the goods to contain silk because SIKSILK is a double entendre.

Materiality?: The evidence showed that advertisers of clothing extol the benefits of silk. Monkey asserted that it did not promote the misdescription, but the Board observed that it is not necessary that an applicant do so in order for a mark to be deemed deceptive. "[W]e find that the misdescription in the applied-for mark SIKSILK is likely to affect the purchasing decision of a significant or substantial portion of relevant consumers."

Conclusion: The Board affirmed the refusal.

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TTABlogger comment: If I were buying a SIKSILK top hat, I would think it contained silk, wouldn't you?

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 Kid Brooklyn, Inc., Serial Nos. 87654825, 87654829, and 87664076 (August 13, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusals of KID BROOKLYN, (in standard characters and design form) and KID BROOKLYN NYC, in view of the registered mark KID BREUKELEN & Design, all for t-shirts].

In re Marta Antonia Rivera Diaz, Serial Nos. 88195159 and 88195194 (August 14, 2020) [not precedential] (Opinion by Judge Angela Lykos) [Section 2(d) refusals of SENSE & EDIBILITY, in standard character and design form, for "providing a website in the field of cooking," in view of the registered mark EDIBILITY for "catering services, food preparation services"].

In re Superdraft, Inc., Serial No. 88255895 (August 14, 2020) [not precedential] (Opinion by Judge Christopher Larkin). [Section 2(d) refusal of SD SUPERDRAFT & Design (below left) for "Apparel, namely, shirts, hats, sweatshirts, and jerseys," in view of the registered mark THE POST SUPERDRAFT & Design, shown below right, for "clothing, namely t-shirts"].

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

Text Copyright John L. Welch 2020.

USPTO Seeks Candidates for Administrative Trademark Judge at the TTAB

The USPTO is seeking applications for the position of Administrative Trademark Judge at the Trademark Trial and Appeal Board. The application period is open until September 8, 2020. Further details may be found at the USA Jobs website, here.

Responsibilities:

The judges of the Trademark Trial and Appeal Board (TTAB) are responsible for hearing and deciding adversary proceedings involving oppositions to applications, petitions to cancel registrations, and concurrent use proceedings; and for hearing and deciding appeals from final refusals by trademark examiners to allow the registration of trademarks. Each appeal and adversary proceeding shall be heard and decided by at least three judges of the TTAB.

Judges of the TTAB:

- Exercise original jurisdiction in inter partes proceedings in the Patent and Trademark Office arising under the Federal trademark registration statutes; for example, opposition to an application for registration, consideration of applications to register as lawful concurrent users, and petitions to cancel registrations. In these inter partes proceedings, judges serve in a capacity similar to that of a trial judge and work in conjunction with TTAB attorneys conducting interlocutory proceedings, for determining interlocutory motions, and with other Judges for issuing final decisions on the merits of cases, after briefing and, in some instances, oral arguments of adverse parties

- Exercise appellate jurisdiction in adjudicating ex parte appeals from refusal of the examiner of trademarks to register a trademark. Such appeals are decided on records created during examination and on the briefs and, if requested by the applicant, oral arguments.

- Evaluate the evidence, arguments, and citations to authority, presented in the foregoing contested trademark cases and appeals, and render written decisions which explain the reasoning and conclusion of the Patent and Trademark Office. These decisions are rendered in accordance with the conclusions reached in conference by a majority of the judges sitting for each case, as a panel of the Board. A judge may decide to author a dissenting opinion when the judge is not in agreement with the majority opinion.

The proceedings must be conducted with imagination, discernment, and ingenuity for the purpose of detecting any improper practices or attempts to secure unjustified advantages and to preserve the legal, equitable, and procedural rights of the parties and ensure fair and expeditious conduct of the proceedings and final determination on the merits. The proofs presented by the parties, as well as their briefs and oral arguments, may involve voluminous testimony, documentary and physical exhibits, and other evidentiary material which must be analyzed and appraised in accordance with the established rules of evidence, to ascertain admissibility, weight, sufficiency, and pertinence to the issues. The judges’ findings in these particulars are incorporated into final decisions in accordance with sound legal principles and precepts. The preparation of such decisions requires outstanding skill in analytical techniques and in clear, comprehensive, and effective applications of legal logic; and a thorough knowledge of, and application of, the common law and statutory trademark laws, the rules of evidence, and general principles of related and ancillary legal subjects.

While serving in the capacity of judge, the incumbent must conduct herself/himself with deportment of the highest order to ensure and maintain the dignity of the TTAB. Board judges must command the respect of the practicing attorneys and others with whom they come in contact because of their positions on the TTAB. The decisions of the TTAB are final in the Executive Branch and are subject to review, through appeal, only by the U.S. Court of Appeals for the Federal Circuit or by civil action in a U.S. District Court.

Supervision and Guidance Received:

The TTAB judges serve under the general administrative direction of the Chief and Deputy Chief Administrative Trademark Judges, TTAB. All adjudicatory functions are performed without supervisory review, although performed in concert with other assigned judges on each panel

Travel Required:

Not required.

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Precedential No. 31: Laches, Acquiescence, and No Inevitable Confusion Doom Attack on BROOKLYN BREW SHOP for Beer Making Kits

In an exhaustive 70-page opinion, the Board denied a petition for cancellation of a registration for the mark BROOKLYN BREW SHOP and dismissed an opposition to that mark in stylized form, for "beer making kits," ruling that laches and acquiescence barred the plaintiff's Section 2(d) claims. In reaching that conclusion, the Board found that confusion between defendant's marks and plaintiff's marks BROOKLYN and BROOKLYN BREWERY for beer was not inevitable. The Brooklyn Brewery Corporation v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914 (TTAB 2020) [precedential] (Opinion by Judge Thomas Shaw).

Defendant's registration for BROOKLYN BREW SHOP issued on October 4, 2011 on an application that was published on July 19, 2011. Plaintiff filed its petition for cancellation on December 10, 2015. However, plaintiff admitted that it first became aware of defendant's use of BROOKLYN BREW SHOP in 2010. Between 2011 and 2016 the parties collaborated on projects related to beer making, including co-branding beer making kits (see picture below).

Laches, estoppel, and acquiescence are defenses available in trademark proceedings. See Section 1069 of the Trademark Act. Even if proven, however, these equitable defenses cannot bar a Section 2(d) claim if confusion is inevitable, because any injury to defendant is outweighed by the public interest in preventing confusion. See, e.g., Ultra-White Co. v. Johnson Chem. Indus., Inc., 465 F.2d 891, 175 USPQ 166, 167 (CCPA 1972).

Laches: Although the defense of laches is generally not available in an opposition (since laches doesn't begin to run until the application is published for opposition), the defense may be available if the applicant owns a prior registration for substantially the same mark and goods. See Aquion Partners Ltd. P’ship v. Envirogard Prods. Ltd., 43 USPQ2d 1371, 1373 (TTAB 1997). Here, defendant's prior registration of the standard character mark BROOKLYN BREW SHOP "entitles it to use the wording in any font style, including that of the opposed application." [Is "entitles it to use" the correct phrase, or would it be better to say that the registration covers all variations of the mark? - ed.]. And so the Board concluded that the laches defense is available in this opposition as well as in the cancellation proceeding.

To establish the laches defense, a party must prove (1) an unreasonable delay in the assertion of rights, and (2) material prejudice attributable to the delay. See Bridgestone/Firestone Research Inc. v. Auto. Club de l’Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1463 (Fed. Cir. 2001). Because the plaintiff was aware of defendant's use of the mark, laches began to run on the date of publication of the underlying application (July 19, 2011). See Ava Ruha v. Mother's Nutritional Center, Inc., 113 USPQ2d 1575 (TTAB 2015). Defendant may also rely on that date for its laches defense in the opposition. Plaintiff filed its notice of opposition about four years and two months later, and its cancellation petition about four years and five months later. The Board found this delay unreasonable because plaintiff undoubtedly had full knowledge of defendant's activities during that time period.

Moreover, plaintiff's claim that its delay was justified by defendant's progressive encroachment was rejected by the Board, since the beer making kits sold by defendant did not change over that period of time. Moreover, plaintiff was aware of defendant's nationwide sales, and so those sales could not be considered a "low level"of encroachment.

The Board found that defendant suffered material prejudice because of the delay: it continued to grow its business, increased its advertising expenditure, published two books of recipes, and tripled its sales. Loss of trademark rights would result in "severe economic prejudice" resulting from defendant's delay.

And so the Board concluded that defendant "has proven laches as to the beer-making kits."

Acquiescence: Unlike laches, the defense of acquiescence requires some affirmative act by the trademark owner. To establish this defense a defendant must prove that the plaintiff's conduct amounted to "an assurance by the plaintiff to the defendant, either express or implied, that plaintiff will not assert its trademark rights against the defendant." CBS, Inc. v. Man’s Day Publ’g Co., 205 USPQ 470, 473-74 (TTAB 1980).

Acquiescence requires proof of three elements, namely that: (1) plaintiff actively represented that it would not assert a right or a claim; (2) the delay between the active representation and assertion of the right or claim was not excusable; and (3) the delay caused defendant undue prejudice. See Coach House Rest. Inc. v. Coach and Six Rests., Inc.,934 F.2d 1551, 19 USPQ2d 1401, 1409 (11thCir. 19 USPQ2d 1401 (11th Cir. 1991).

In view of defendant's public collaboration with plaintiff, the Board found that plaintiff actively represented that it would not assert its rights against defendant's use of BROOKLYN BREW SHOP for beer making kits. Moreover, the Board found that the delay was inexcusable and that defendant was unduly prejudiced by the delay. In sum, plaintiff's actions constituted a "classic example of acquiescence."

Inevitable Confusion: In determining this issue, the Board applied the relevant DuPont factors. The Board focused on plaintiff's BROOKLYN BREWERY and BROOKLYN marks, in standard characters. It found, not surprisingly, that beer making kits are related to beer and are sold in the same channels of trade to overlapping classes of consumers.

Turning to the marks, the Board found plaintiff's marks to be inherently weak, noting that they were registered with a claim of acquired distinctiveness under Section 2(f). Plaintiff is located in Brooklyn and the addition of the generic term BREWERY "does little to bolster the inherent strength of Plaintiff's primarily geographically descriptive BROOKLYN BREWERY mark." However, the marks have achieved a degree of commercial recognition. Concluding that these findings offset one another, the Board ruled that the marks are "entitled neither to an enhanced nor a diminished scope of protection." Comparing the marks at issue, the Board found them to be more similar than dissimilar.

Plaintiff asserted that the evidence of actual confusion was overwhelming, but the Board disagreed. Although there were many instances of confusion, they were not entitled to the weight that plaintiff ascribed to the evidence. Much of the alleged confusion occurred during the period when the parties were actively promoting the co-branded beer making kits. "Given the parties' co-branding of beer-making kits and joint participation in numerous marketing events, it is hardly surprising that consumers could have been confused as to whether the parties were affiliated in some way."

Simply put, although some customers may have been confused as to whether the companies were affiliated, they cannot have been confused as to the source of the goods because both parties were in fact the source of the goods. Accordingly, Plaintiff’s evidence from 2012 and later does not establish actual confusion among consumers.

The remaining examples of actual confusion were "too infirm" to constitute evidence of sufficient probative value to support a finding of actual confusion.

The standard of confusion for a finding of inevitability of confusion is "an increment higher that that required for a finding of a likelihood of confusion." Coach House, 19 USPQ2d at 1409;Generally, inevitable confusion has been found when the marks and the goods/services are identical, or nearly so. See, e.g., Metro Traffic Control, Inc. v. Shadow Network Inc., 104 F.3d 336, 41 USPQ2d 1369, 1373 (Fed. Cir. 1997). Here, the evidence failed to establish that confusion is inevitable as to defendant's beer making kits. Neither the marks nor the goods are identical. Plaintiff's CEO said he had "no problem" with defendant's use of BROOKLYN BREW SHOP for the kits. "If Plaintiff's CEO has 'no problem' ... confusion is not inevitable as to the kits."

And so the Board dismissed the opposition and denied the cancellation petition as to plaintiff's Section 2(d) claims regarding beer making kits.

Mere Descriptiveness: Plaintiff also sought cancellation on the ground that BROOKLYN BREW SHOP is merely descriptive of defendant's kits. The Board noted that the defense of laches and acquiescence are not available against claims of mere descriptiveness. See Saint-Gobain Abrasives Inc. v. Unova Indus. Automation Sys. Inc., 66 USPQ2d 1355, 1359 (TTAB 2003). The Board agreed with plaintiff that the mark is geographically descriptive of the goods, since defendant is located in Brooklyn, but plaintiff did not plead Section 2(e)(2). The mark does not describe a "quality, feature, function, or characteristic" of the goods, and therefore it is not merely descriptive under Section 2(e)(1).

Other Goods: The opposed application also included beverage glassware and sanitizing preparations. The equitable defenses did not apply to those goods, and so the Board went through an ordinary DuPont analysis. As to the glassware, the Board found confusion likely, since plaintiff also sold glassware, but as to the sanitizing preparations, the difference in the goods was dispositive.

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TTABlogger comment: After reading this exhausting decision, I could use a few beers.

Text Copyright John L. Welch 2020.

TTABlog Test: How Did These Three Appeals from 2(e)(1) Mere Descriptiveness Refusals Turn 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% of these refusals. Answer(s) will be found in the first comment.



In re Sporting Soles, Inc., Application Serial No. 87892535 (August 7, 2020) [not precedential] (Opinion by Judge Christen M. English). [Mere descriptiveness refusal of SPORTING SOLES for retail stores featuring sporting goods. Applicant contended that its mark is a double entendre.].

In re Robert Castro, Application Serial No. 87435626 (August 7, 2020) [not precedential] (Opinion by Judge Angela Lykos). [Mere descriptiveness refusal of POSITIVE MENTAL ATTITUDE for educational materials and consulting services in the field of sales. Applicant argued that the mark is incongruous.]

In re Port Authority of New York and New Jersey., Serial No. 88005756 (August 10, 2020) [not precedential] (Opinion by Judge Karen Kuhlke). [Requirement of disclaimer of COMMONS in the mark ONE WORLD COMMONS for providing facilities for business meetings and business events and for food and meal delivery services.  Applicant maintained that the word "commons" is tied to a piece of land, whereas its services are provided "high above the streets of Manhattan."]

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHAs here?

Text Copyright John L. Welch 2020.