Wednesday, September 30, 2020

TTABlog Quarterly Index: July - September 2020

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Section 2(a) - Deceptiveness:
Section 2(a) - False Connection:
Section 2(c) Consent to Register:


Section 2(d) - Likelihood of Confusion:
Section 2(e)(1) - Mere Descriptiveness:
Section 2(e)(4) - Primarily Merely a Surname: Section 2(e)(5) - Functionality:


Section 2(f) - Acquired Distinctiveness:
  • Reversing Section 2(e)(1) Refusal, TTAB Finds "MINKY COUTURE" Has Acquired Distinctiveness for Blankets
    • Genericness:
    Lack of Bona Fide Intent:
    Unacceptable Specimen/Failure-to-Function/Illegal Use:
    Discovery/Evidence/Procedure:
    Laches/Acquiescence/Estoppel:


    Concurrent Use:
    CAFC Decisions:
    Supreme Court Decisions:
    Recommended Reading:
    Other:
    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/30/2020   0 comments

    Tuesday, September 29, 2020

    TTAB Finds "TRIPLE CLEANED CORN" Generic for . . . . Guess What?

    The Board affirmed a refusal to register the proposed mark TRIPLE CLEANED CORN, finding it to be generic for "animal feed of corn." For the sake of completeness, the Board also considered and upheld a refusal to register on the ground of mere descriptiveness and lack of acquired distinctiveness. In re Southern Seed & Feed, LLC, Serial No. 87424601 (September 24, 2020) [not precedential] (Opinion by Judge Albert Zervas).

    Genericness: The Board first observed that "“[A] term [may be] generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a w hole.” In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1638 (Fed. Cir. 2016).

    The Board agreed with Examining Attorney Daniel F. Capshaw that the genus of goods is "animal feed of corn" The relevant public comprises individuals who hunt deer and possess livestock.

    The Examining Attorney relied on numerous websites offering "triple cleaned corn." Applicant relied on eight customer declarations stating that TRIPLE CLEANED CORN is not a generic name for animal feed, and that it identifies Southern Seed & Feed, LLC as the source of the goods. In addition, its sales manager averred that this product has sold more than 19 million units since 2002, resulting in revenues of more than $61 million, which, he claimed, proves that the phrase has acquired distinctiveness.

    Applicant contended that "triple cleaned" describes the cleaning process for its product, and if the phrase were generic, at least one other application or registration would include that term. 

    The record showed that there are sellers of “animal feed of corn” who offer a product identified as “triple cleaned corn” under their own trademarks. Applicant's evidence and arguments did not persuade the Board that TRIPLE CLEANED CORN is not generic. The customer declarations had little value because "there is no indication in the record as to what portion of the purchasing public these individuals comprise." There were no statements form ultimate purchasers (like ranchers) of the product. And the absence of the term on the Trademark Register was meaningless.

    After carefully considering all of the arguments and evidence of record, we find that the proposed mark TRIPLE CLEANED CORN is understood by the relevant public primarily as the “common descriptive name” for a category of “animal feed of corn.” Princeton Vanguard, 114 USPQ2d at 1830. We find that purchasers of “animal feed of corn” understand the term “triple cleaned corn” as a designation that primar-ily refers to a category within the genus of “animal feed of corn,” Marvin Ginn, 228 USPQ at 530, and that the proposed mark is generic.

    Acquired Distinctiveness: By claiming acquired distinctiveness under Section 2(f), applicant conceded that the phrase is not inherently distinctive. Applicant bore the burden of proof on this issue.

    The Board first assessed the degree of descriptiveness of the proposed mark and found it to be highly descriptive. "Clearly, no thought or imagination is required to immediately understand that animal feed of corn sold under the proposed mark TRIPLE CLEANED CORN is 'a clean, high quality grain product for your livestock mixing or feeding purposes.'" Therefore, the burden of proving acquired distinctiveness is commensurately high.

    The Board gave applicant's statement of five-years-of-use little weight given the highly descriptive nature of the proposed mark. As to applicant's evidence, the Board, as indicated, gave little probative value to the eight consumer declarations. Applicant's sales figures lacked "any context about the industry, an explanation of what a “unit” consists of, or even the number of Applicant’s customers." Even though applicant's sales manager attested to 18 years of substantially exclusive use, the Board concluded that the evidence was insufficient to satisfy Section 2(f).

    Conclusion: The Board affirmed both refusals.


    Read comments and post your comment here.

    TTABlogger comment: Once you are hit with the "highly descriptive" tag, the 2(f) game is over.

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/29/2020   1 comments

    Monday, September 28, 2020

    Rejecting Attack on USPTO's "Legal Use" Requirement, TTAB Upholds Refusal to Register NATURAL LEAF CBD for Supplements

    In this appeal, Applicant NL LLC conceded that the sale of its CBD-infused supplements (under the mark shown below) would be per se unlawful under federal law. However, it argued that the Lanham Act does not specify that the required "use in commerce" must be lawful, and further that use of its mark is legal under Colorado law and therefore comports with all requirements for federal registration. The Board handily rejected NL's arguments and affirmed the refusal to register under Sections 1 and 45 of the Lanham Act. In re NL LLC, Serial No. 87864999 (September 25, 2020) [not precedential] (Opinion by Cindy B. Greenbaum).


    The Board found NL's goods to be per se unlawful under Sections 321(ff) and 331(ll) of the Food, Drug, and Cosmetics Act (FDCA) because they comprise food to which a drug (CBD) has been added; substantial clinical investigations of CBD have been instituted, and the existence of these investigations has been made public; and there is no evidence that CBD was marketed in food before the substantial clinical investigations of CBD were instituted. See In re Stanley Bros. Soc. Enters., LLC, 2020 USPQ2d 10658, *11-16 (TTAB 2020).

    NL cited no authority for its arguments, and federal courts have expressly disagreed with NL's position and have cited with approval the TTAB's rulings that, although Section 1 of the Lanham Act does not refer to "lawful commerce," the term "commerce" must necessarily refer to "lawful commerce" and that the Lanham Act "was not intended to recognize under its provision shipments in commerce in contravention of other regulatory acts promulgated under the 'commerce clause' of the Constitution." In re Stellar Int'l, Inc., 159 USPQ 48, 51 (TTAB 1968).

    The Board also swiftly rejected NL's argument that the USPTO cannot require lawful use in commerce because it conflicts with state law. 


    As explained in Brown, 119 USPQ2d at 1351, 1352, and in JJ206, 120 USPQ2d at 1571, “the fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law.” In other words, although a state may de-criminalize the sale of a product containing CBD, the applicant cannot use its mark in lawful commerce where, as here, the identified goods are per se illegal under the FDCA.

    The Board observed the Supremacy Clause of the U.S. Constitution provides that if there is a conflict between federal and state law, federal law prevails.

    And so the Board affirmed the refusal to register.


    Read comments and post your comment here.

    TTABlogger comment: Is this a WYHA?

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/28/2020   0 comments

    Friday, September 25, 2020

    Three Recent Affirmances in Unacceptable Specimens of Use Cases

    Okay, I admit it's an awkward title, but it's an awkward time. I always wonder, in applications where specimens of use are rejected by the Examining Attorney, whether it would be better to amend to an intent-to-use basis (in order to buy some time to get a proper specimen into use) than to appeal and lose. Anyway, here are three recent specimens of failed specimens of use.
    In re Iguana Yachts, Serial No. 87868306 (September 17, 2020) [not precedential] (Opinion by Judge Cindy B. Greenbaum). [Affirming rejection of specimens of use for the mark 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." The specimens comprised: (1) a large sign or banner propped up on the floor, supported on the left and right lower front corners by the side arms of two red couches or chairs (see below); (2) a business card or "distributor hand-out from trade show"; and (3) a website extract with a "custom build quote form." There was no evidence that the banner or the business card were displayed or distributed at a trade show. Likewise there was no evidence as to how the quote form was used to place orders. In short, there was no evidence, only attorney argument, that would qualify these items as point of sale displays rather than mere advertisements.]



    In re Charlie's Enterprises LLC, Serial No. 88200043 (September 21, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Affirming rejection of specimen of use for the mark JUST SAY PEAS OK PRODUCE & Design, for Peas, fresh; Vegetables, fresh." The specimen consisted of “[a] picture of the trademark phrase in use as a trailer wrap.”  The Board observed that in some cases like distribution of bulk goods, a trailer wrap my be a common method of displaying the mark and thus an acceptable specimen, but a trailer wrap is not common packaging for vegetables. In addition, the mark in the application drawing did not match the display on the truck.]

    In re Systemax Inc., Serial Nos. 88150991 and 88151072 (September 23, 2020) [not precedential] (Opinion by Christen M. English) [not precedential]. [Affirming rejection of specimens of use for the mark SYSTEMAX & Design for "holding company services, namely, providing business management, business administration, and human resource management services to subsidiaries and affiliates.”  The specimens comprised website screenshots and copies of annual reports, none of which showed an association between the mark and the recited holding company services. Applicant's request to amend the filing basis of the application to Section 1(b) intent-to-use was denied as untimely.] 

     



    Read comments and post your comment here.

    TTABlog comment: Maybe someone should offer a webinar on specimens of use.

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/25/2020   3 comments

    Thursday, September 24, 2020

    TTABlog Test: Is NUB GLOVE Merely Descriptive of Bowling Gloves, Balls, and Hole-Drilling Services?

    The USPTO refused to register the mark NUB GLOVE for "Bowling gloves and bowling balls" and for "Installation of custom bore inserts in bowling balls," on the ground of mere descriptiveness under Section 2(e)(1). Applicant argued that the mark is incongruous, since gloves are designed to cover one’s hands, but “the protruding nubs on Applicant’s bowling gloves will not be covered by the bowling gloves as a hand would be.” Did Kwiatkowski throw a strike or a gutterball? In re Robert Kwiatkowski, Serial No. 88367537 (September 17, 2020) [not precedential] (Opinion by Judge Frances S. Wolfson). 

    Kwiatkowski got off on the wrong foot when he provided an evasive answer to Examining Attorney Wendell S. Phillips III's request for information under Rule 2.61: "Do (or will) any of applicant’s goods feature “nubs” as that term is defined in the attached evidence, or any other similar bumps or textured surface? If so, please indicate which goods have this feature and explain the nature and purpose of these nubs." Kwiatkowski answered "no," but that answer was contradicted by the evidence and by his own admission that his gloves "will include a protruding nub that can be received by a bore of a bowling ball." That evasive answer allowed the Board to draw an adverse evidentiary inference against Kwiatkowski, and further served as a basis in and of itself to affirm the refusal to register.

    As to mere descriptiveness, Kwiatkowski asserted that, at the bowling alley, "nubs" refer to inward projections on an insert in a bowling ball hole that grasp the finger (see picture below), not to nubs extending outwardly from a sleeve put on a finger. But that statement was belied by his own admission, and ran counter to the Board's inference.

    As to Kwiatkowski's hole-boring services, the word “NUB” describes "a function or purpose of the services, namely that Applicant installs custom bore inserts and drills holes in bowling balls to make them compatible with gloves that feature nubs." The word “GLOVE” is "generic for bowling gloves, and merely descriptive for bowling balls adapted for use with bowling gloves and the related services of making or adapting bowling balls to accommodate Applicant’s gloves." The Board brushed off Kwiatkowski's incongruity argument, observing that consumers are not likely to consider that NUB GLOVE refers to nubs on the inside of a bowling glove. Nor is any multi-step reasoning process required to discern the meaning of "nubs" in relation to the involved goods and services.

    The Board concluded that NUB GLOVE is merely descriptive of Kwiatkowski's goods and services, and it therefore affirmed the Section 2(e)(1) refusal.


    Read comments and post your comment here.

    TTABlogger comment: The dude did not abide. WYHA? Maybe on the services portion of the refusal, but then the Rule 2.61 issue was fatal anyway.

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/24/2020   0 comments

    Wednesday, September 23, 2020

    "DOOR-IN-DOOR" Lacks Acquired Distinctiveness for Electric Refrigerators, Says TTAB

    The Board affirmed a refusal to register the proposed mark DOOR-IN-DOOR for electric refrigerators, on the ground of mere descriptiveness (and lack of acquired distinctiveness). Applicant LG conceded that the term is merely descriptive but pointed to its more than five years of use of the term and to its now-cancelled Registration for DID DOOR-IN-DOOR. In re LG Electronics Inc., Serial No. 88055289 (August 26, 2020) [not precedential] (Opinion by Judge Christopher Larkin).


    Trademark Rule 2.41(a) provides that an applicant’s “ownership of one or more active prior registrations on the Principal Register . . . of the same mark may be accepted as prima facie evidence of distinctiveness if the goods or services are sufficiently similar to the goods and services in the application.” LG's registration of DID DOOR-IN-DOOR, on the Principal Register, was in existence at the time the subject application was filed, but it included a disclaimer of DOOR-In-DOOR. The Board agreed with Examining Attorney Anthony Rinker that LG cannot rely on this cancelled registration since the disclaimer was an admission of mere descriptiveness at the time it was entered.

    LG next contended that its Supplemental Registration for DOOR-IN-DOOR “confirms Applicant’s use of the mark at least as early as June 2012.” It further contended that the CAFC in Converse ruled that “‘five years’ substantially exclusive and continuous use [of a mark weighs] strongly in favor of a finding of secondary meaning,” The Board disagreed with LG's reading of Converse, observing that the Board still follows the CAFC's Louisiana Fish Fry decision:

    Although Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f), provides that the PTO may accept five years of “substantially exclusive and continuous” use as prima facie evidence of acquired distinctiveness, the statute does not require the PTO to do so. Particularly for a mark that is as highly descriptive like FISH FRY PRODUCTS, the Board was within its discretion not to accept Louisiana Fish Fry’s alleged five years of substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness.

    Furthermore, LG's Supplemental Registration cannot be relied on to show the length of use of the term because Supplemental Registrations do not receive the advantages and presumptions of Section 7(b) of the Trademark Act.

    The Board agreed with the examining attorney that "given the highly descriptive nature of the proposed DOOR-IN-DOOR mark, Applicant’s unsubstantiated and unspecific claim of 'extensive use of the mark . . . since at least as early as 2012,' has little probative value" on the Section 2(f) issue.

    LG did not offer declaration or affidavit evidence regarding its use of the term DOOR-IN-DOOR, but instead relied on assertions of its counsel. It did offer a two-page excerpt from a marketing study purporting to show consumer recognition of the term and association with LG, but it provided no explanation of the origin, purpose, nature, or methodology of the study, and therefore the Board had no way to assess its probative value. In any event, the study was conducted in 2012, and would have little value regarding LG's current claim.

    LG's advertising figures did not support its "grandiose claim of 'persistent and continuous use of a mark in various media for nearly a decade.'" There was not information that would put the advertising figures in context for the industry. Moreover, its advertising makes frequent use of the "LG" mark adjacent the phrase DOOR-IN-DOOR, and so those expenditures prove little.

    The Board concluded that LG "did not carry its heavy burden of showing that its highly-descriptive proposed mark DOOR-IN-DOOR for electric refrigerators has acquired distinctiveness."

    Read comments and post your comment here.

    TTABlogger comment: I guess life's not so good for LG at the TTAB.

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/23/2020   0 comments

    Tuesday, September 22, 2020

    TTABlog Test: Is "KEZAR" for Pharmaceutical Products Primarily Merely a Surname?

    The USPTO refused to register the proposed mark KEZAR for pharmaceuticals and chemicals for use in the manufacture of pharmaceuticals, finding the term to be primarily merely a surname under Section 2(e)(4). The examining attorney argued that KEZAR has no recognized meaning other than as a surname, while applicant contended that KEZAR has “geographic significance” because it is the name of a stadium in San Francisco. The examining attorney conceded that KEZAR is an uncommon surname, but pointed out that the San Francisco stadium was named after a prominent citizen named Mary Kezar. How do you think this appeal came out? In re Kezar Life Sciences Australia Pty Ltd, Serial No. 79256294 (August 27, 2020) [not precedential] (Opinion by Judge Thomas W. Wellington).


    The examining attorney did not contest applicant's assertion that no one with the surname KEZAR is connected with applicant. The Board noted, however, that this does not establish one way or the other whether KEZAR is primarily merely a surname.

    Negative dictionary evidence was submitted by the examining attorney to show that KEZAR has no meaning other than as a surname. Applicant claimed that KEZAR has geographic significance, and that it chose the  mark because it is “headquartered in an area of San Francisco near Kezar Stadium, which served as the home of the San Francisco 49ers from 1946 until 1970.” However, applicant provided no evidence showing Kezar used in reference to a geographic area. A single article dated 1989 referred to "Kezar Corner" but this was insufficient for purposes of proving the geographical significance of KEZAR. The Board therefore found that KEZAR has no non-surname meaning.



    The examining attorney asserted that KEZAR has the structure and pronunciation of a surname, like Kazar, Kozar and Kyzar. The evidence, however, indicated that these surnames are not common, Lexis/Nexis showing 373 hits for Kazar, 1586 for Kozar, and 673 for Kyzar. These numbers "are not impressive and do very little, if anything," to show that KEZAR has the structure and pronunciation of what the public will perceive as a surname. The Board therefore found that KEZAR does not have the structure and pronunciation of a surname.

    Turning to the extent of exposure of KEZAR as a surname, the Office's evidence uncovered 404 persons with the surname Kezar in the Lexis/Nexis database. "The number of persons with the surname indicates it is not a common surname; however, we point out that even rare surnames may be held primarily merely surnames if the primary significance conveyed to purchasers is that of surname." See, e.g., Beds & Bars, 122 USPQ2d at 1551 (finding BELUSHI’S to be primarily merely a surname despite only five persons with that surname).

    The examining attorney claimed that "Kezar is routinely presented to the general public as a surname, and regularly referenced as a surname," but the evidence thereof fell short. It showed that that the stadium received its name from “prominent San Franciscan Mary Kezar,” who in 1922 left $100,000 to the city to build a memorial in honor of her mother and uncles. A dozen or so Lexis/Nexis excerpts referred to individuals named "Kezar," but all of the excerpts were dated in the 1979-1991 time period.

    Taking all of the evidence as a whole, we cannot conclude that there has been or currently is an appreciable amount of public exposure to KEZAR being used as a surname. The demonstrated number of individuals having this surname in the U.S., 404 persons, is extremely low. * * * Because KEZAR has no other recognized meaning and the record does not show sufficient exposure to KEZAR as a surname, we consider the possibility that consumers will view Applicant’s use of KEZAR as an arbitrary term in the context of the applied-for goods and services, pharmaceuticals and medical research.

    Applicant submitted the results of a 48-respondent survey conducted during a lunch hour at Sears Tower in Chicago, but the Board agreed with the examining attorney that the survey methodology was flawed and the results were not sufficiently reliable to be probative.

    In conclusion, "[b]ecause the term KEZAR is so rarely used as a surname and there is very limited use of it in other contexts with surname significance," the Board ruled that KEZAR will be not perceived by consumers of applicant's products as being primarily a surname. And so the Board reversed the refusal to register.


    Read comments and post your comment here.

    TTABlogger comment: How did you do? Harder to guess than in a Section 2(d) case, without knowing the evidence.

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/22/2020   3 comments

    Monday, September 21, 2020

    Webcast - Sept 22, 7PM EST: Ken Germaine: Does the Constitution Allow Dual Protection Under Design Patent and Trade Dress Regimes for the Same Subject Matter?

    Ken Germain, Of Counsel, Wood Herron & Evans LLP., will provide a webinar entitled "Does the Constitution Allow Dual Protection Under Design Patent and Trade Dress Regimes for the Same Subject Matter?" on Tuesday, September 22nd at & 7:00 PM (Eastern Standard Time). Register here. 


    Traditionally, product designs have been protected both as design patents and trade dress. But should different intellectual property law regimes protect the same features of a product consecutively or even concurrently? The Constitution's Patent/Copyright Clause (Art. I//8/8) certainly can and the Commerce Clause (Art. 1/8/3) probably can provide such protection. But is it allowable and appropriate for both of them to apply to the very same design? Join the Patent Law Committee as it hosts a conversation with Ken Germain as he discuss the PC Cl. and Commerce Cl., and what type of IP protection is available.
    .

    posted by John L. Welch @ 9/21/2020   1 comments

    FOUNDATIONAL MEDICINE REVIEW Confusable With FOUNDATION MEDICINE for Medical Publications, Says TTAB

    The Board sustained this opposition to registration of FOUNDATIONAL MEDICINE REVIEW for "journals in the field of medicine" and "providing on-line non-downloadable articles in the field of medicine and health care" [MEDICINE REVIEW disclaimed], finding confusion likely with Opposer's registered mark FOUNDATION MEDICINE for the provision of medical data and information to healthcare professionals [MEDICINE disclaimed]. The Board found the involved goods and services to be legally identical and the marks to be highly similar - a solid foundation for its ruling. Foundation Medicine, Inc.v.Albert F. Czap, Opposition No. 91243763  (September 18, 2020) [not precedential] (Opinion by Judge Michael B. Adlin).

     

    Opposer Foundation Medicine provides information under its marks not only to researchers, healthcare providers and biopharmaceutical companies, but also to “patients and families of patients who may have been diagnosed with cancer .” Applicant Czap, claimed that his goods and services “are offered to the public for no cost to consumers” via his website and via social media. 

    Czap argued that Foundation's informational services are narrowly targeted to genomic testing and diagnostic services, but there was no such limitation in Foundation's registrations. His argument regarding sophistication of consumers was shot down for a similar reason, the Board noting that it must consider the least sophisticated consumer in its Section 2(d) analysis.
     
    As to the marks, the Board found little to distinguish the word FOUNDATIONAL from the word FOUNDATION in appearance, sound or meaning. Moreover, even in Foundation's word-plus-design mark, shown above, the word FOUNDATION is dominant.  
     
    In short, FOUNDATION MEDICINE (in both its standard character and design forms) and FOUNDATIONAL MEDICINE REVIEW are highly similar in appearance, sound, meaning and commercial impression, so much so that some consumers familiar with Opposer’s marks could even perceive Applicant’s as identifying one of Opposer’s publications.
     
    Czap pointed to seven third-party registrations in an attempt to show that FOUNDATION is a weak formative, but the Board found them to be "qualitatively and quantitatively insufficient: "either the marks, or the goods or services, or both, are too different from Opposer’s mark and services for the third party registrations to be probative."
     
    The Board concluded that confusion is likely, and so it sustained the opposition.

    Read comments and post your comment here.

    TTABlogger comment: Opposer Foundation Medicine is represented in this proceeding by Douglas Wolf, John L. Strand, and Ryan van Olst of Wolf Greenfield.

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/21/2020   0 comments

    Friday, September 18, 2020

    TTABlog Test: Is GNARLED ORCHARD for Hard Cider Confusable With GNARLY HEAD for Wine?

    Delicato Vineyards opposed this application to register the mark GNARLED ORCHARD for hard cider, claiming a likelihood of confusion with its registered mark GNARLY HEAD for wines. Applicant Strother maintained that the goods are fundamentally different, that wine drinkers are increasingly sophisticated, and the the marks differ in connotation and commercial impression. How do you think this came out? Delicato Vineyards v. Philip Carter Strother, Opposition No. 91244351 (September 16, 2020) [not precedential] (Opinion by Judge David K. Heasley).



    Channels of Trade: Although wine and cider are different goods, the question is whether consumers would mistakenly believe that the involved goods many emanate from the same source. The evidence showed that Applicant Strother sells both wine and hard cider. Neither the application nor opposer's registration contained any limitations as to channels of trade. The Board concluded that "the DuPont factors concerning the similarity or relatedness of Applicant’s and Opposer’s goods, classes of consumers, and channels of trade weigh in favor of finding a likelihood of confusion."

    Consumer Care: Strother claimed that due to the enormous growth in sophistication of wine buyers, confusion is not likely between an apple cider and a grape wine. However, as the Board previously pointed out, the question is source confusion, not product confusion. The consuming public consists of  purchasers of alcoholic beverages, and "there is no reason to believe that these customers will be particularly sophisticated." Moreover, the Board must consider the least sophisticated purchaser. [What it the purchaser is so unsophisticated that he or she can't tell wine from hard cider? - ed.]. There are no limitations in the application or registration regarding price or quality. And consumers often order these beverages by the glass with little opportunity to carefully inspect the brand names.

    Strength of Opposer's Mark: Delicato's sales and advertising figures were substantial, and it has successfully expanded its brand in fifteen years across the entire country, from its original zinfandel to a variety of varietals. The Board found that Delicato had achieved a "high degree of commercial strength" under the GNARLY HEAD brand name, and therefore is entitled to "'stronger' protection—protection over a wider range of related products and services and variations on visual and aural format."

    The Marks: The Board found that "GNARLY overlaps GNARLED in sight, sound, connotation, and commercial impression." Moreover, "Opposer’s GNARLY encompasses both meanings: dangerous and twisted with age. *** Thus, the words GNARLED and GNARLY overlap in connotation and commercial impression. They appear prominently as the first word in each mark."

    Given this marked similarity in the marks’ dominant lead components, the differences in their suffixes, HEAD and ORCHARD, do not suffice to distinguish them. According to Opposer, GNARLY HEAD refers to the twisted heads of aged vines, such as those depicted in its advertisement .... According to Applicant, GNARLED ORCHARD refers to an orchard that is weathered and bent. Both parties seek to evoke a similar impression: twisted, fruit-bearing plants from which their fermented alcoholic beverages are made.

    In view of the noisy and sometimes chaotic conditions in bars and restaurants, where beverages are often order by the glass without an opportunity to see the label, minor differences in sound may go undetected. Consumers who do discern the differences in the marks may believe that one mark is a slight variation of the other.

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

    Read comments and post your comment here.

    TTABlogger comment: Did you guess correctly? Do you think, in the real world, there is any likelihood of confusion here? 

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/18/2020   2 comments

    Thursday, September 17, 2020

    Precedential No. 34: TTAB Rules That gTLD ".CAM" is Incapable of Functioning as a Source Indicator

    The Board affirmed refusals to register the term ".CAM" in standard character and stylized form (shown below) on the Supplemental Register for an extensive list of services in International Classes 35, 38, 42 and 45, finding that ".CAM", in either form, is incapable of functioning as a source indicator under Section 23 of the Lanham Act. Applicant AC Webconnecting did not provide any evidence that .CAM is perceived as a service mark rather than a gTLD (generic top level domain name). In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048 (TTAB 2020) [precedential] (Opinion by Judge Peter W. Cataldo).

    After the applications at issue were filed, AC Webconnecting entered into a registry agreement with ICANN, whereby AC Webconnecting was designated as the Registry Operator for the .CAM gTLD. The applications at issue do not explicitly and directly recite registry operator or registrar services, but AC Webconnecting acknowledged that its Class 45 services includes domain name registration, conducting domain name searches, legal services and consulting, all related to the .CAM gTLD.

    In order to qualify for registration on the Supplemental Register under Section 23, a service mark must be "capable of distinguishing" the applicant's services, a determination that hinges on consumer perception. The TTAB has previously found that a proposed mark consisting solely of a gTLD "engender(s) the commercial impression merely of a top-level domain associated with the term comprising the proposed mark." AC Webconnecting argued it does not use its mark solely as a gTLD as it "is always used and will always be used by Applicant to identify Applicant as the source of its numerous, high-quality services.” However, its website consistently refers to .CAM as a gTLD and not as a mark. Moreover, excerpts from third-party websites demonstrated that .CAM is perceived only as a gTLD "intended to be used by multiple parties as part of their domain names to identify multiple websites offering a variety of goods and services."

    Turning to the specific services recited in the subject application, the Board found that for at least one service in each class, the term .CAM is incapable of serving as a source indicator: domain name registration and related services in Class 45; database management services in class 35; providing access to databases, the Internet and transmission of multimedia communications via the Internet in class 38;  and web site hosting services and search engine optimization in class 42. Because the proposed marks are incapable of distinguishing source with regard to at least one service in each of the four classes, they are unregistrable as to all refused services recited in those classes.

    With regard to the stylized version of .CAM, the Board observed that "for a term otherwise unregistrable to be capable of distinguishing an applicant’s goods, the presentation of the term must be sufficiently striking, unique or distinctive so as to overcome its inherent incapacity and render the mark capable of serving as a source indicator." The mark at issue here failed to meet that standard. 

    "The term '.CAM' is displayed in a very slightly stylized script that is not unique or unusual and the “dot” is displayed in the color green with no additional stylization or design." The green color of dot emphasizes the nature of the designation as a gTLD and will not be perceived as creating a separate commercial impression.

    In sum, the proposed stylized mark "conveys the commercial impression of a gTLD." The stylization  does not present any unique characteristics. "It does not create a commercial impression separate from the unregistrable."

    The Board therefore affirmed both refusals to register.


    Read comments and post your comment here.

    TTABlogger comment: I think the proposed mark .CAM is capable of serving as a mark, but AC Webconnect hasn't done enough to make it one. In my view, the Board applied the wrong test. Unless no gTLD can ever be a trademark, why isn't .CAM capable of becoming one? It may "fail to function" as a trademark but is it incapable of ever doing so?

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/17/2020   1 comments

    Wednesday, September 16, 2020

    TTABlog Test: Is "MF MIRANDA FRYE & Design" Confusable with "FRYE" for Jewelry?

    The USPTO refused to register the word-plus-design mark shown below, for jewelry, on the ground of likelihood of confusion with the registered mark FRYE, also for jewelry. Since the goods overlap, the Board must presume that the channels of trade and classes of consumers for those goods are the same. But what about the marks? How do you think this came out? In re Miranda Frye Inc., Serial No. 88347449 (September 10, 2020) [not precedential] (Opinion by Judge Thomas W. Shaw).

    The Board noted that the cited mark is in standard characters and could be displayed in a style similar to that of applicant. Nothing in the record suggested that FRYE has any significance other than as a surname.

    [A] surname preceded by a given name or initials is a common, highly conventional combination of word elements, and the name MIRANDA FRYE could well be interpreted as a more specific reference to a person or company that is otherwise identified by the surname FRYE.

     
    The Board has held that the addition of a given name to a surname is insufficient to distinguish the combination from the surname alone, for Section 2(d) purposes. For example BRUCE WINSTON similar to WINSTON for jewelry; JOSE GASPAR; SAM EDELMAN.
     
    The Board acknowledged that the initials MF and the surname MIRANDA appear prominently in applicant's mark, and it is often the first part of a mark that is more likely to be remembered and used to call for the goods. "Taken as a whole, MF MIRANDA FRYE could be perceived as the full name and initials of the person or company identified by the surname FRYE alone."
     
    The Board found the word FRYE to be the dominant portion of the marks, and that they are "far more similar than they are different and, overall, convey similar commercial impressions. That is to say, the marks appear to be variations of each other that nonetheless point to a common source."   

    And so the Board affirmed the Section 2(d) refusal.


    Read comments and post your comment here.

    TTABlogger comment: How did you do? If FRYE is a surname, would consumer expect there to be different, unrelated people with that same surname?

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/16/2020   5 comments

    Tuesday, September 15, 2020

    Recommended Reading: Prof. Christine Farley, "The Lost Unfair Competition Law"

    Professor Christine Farley of American University Washington College of Law, in her article, "The Lost Unfair Competition Law," notes the oft-repeated assertion that trademark law “is but a part of the broader law of unfair competition.” But what is the broader protection that unfair competition provides? Her article "explains why we have lost sight of this answer and become confused about the scope of unfair competition law today by providing a historical examination of the drafting and enactment of the act and mysterious treaty [The Inter-American Convention], and their forgotten connection."


    Professor Farley observes that unfair competition law reached its high point in 1918 in International News Service v. Associated Press. Edward S. Rogers, a major architect of the Lanham Act, was one of the few who drafted the Inter-American Convention, which contains substantial unfair competition protection. However, the legislative history of the Lanham Act "reveals a disinclination to create a federal unfair competition cause of action." Section 43(a) is often enlisted to fill the gap (although it has led to erratic results like Belmora v. Bayer, in which Section 43(a) was read to provide a cause of action to a plaintiff whose pleaded trademark had never been used in the United States). Professor Farley has some suggestions as to how reclaim the lost law of unfair competition can be reclaimed.

    Part I identifies the confusion about the scope of unfair competition law that exists today. Part II traces unfair competition law from the beginnings of U.S. trademark law in the late 1800s to the 1946 Lanham Act. *** Part III tracks Edward Rogers’s contributions to the international and domestic development of unfair competition law. Part IV describes the pioneering protection of unfair competition provided by the Inter-American Convention. Part V discusses how the emergence of the Erie Doctrine in the late 1930s threatened to create a void because state laws on trademark and unfair competition were underdeveloped compared with federal law. Part VI interrogates the history of Section 44 of the Lanham Act, demonstrating that it was meant to incorporate by reference the unfair competition provisions from Inter-American Convention. This section describes how the robust unfair competition protection enabled through Section 44 continues to lie dormant, and Part VII recounts how Section 43(a) instead emerged as the vehicle for unfair competition. *** Finally, Part VIII will offer some suggestion about how, in light of this history, the unfair competition law that was lost might be reclaimed.

    Read comments and post your comment here.

    TTABlogger comment: 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. 4 (July-August2020).

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/15/2020   1 comments

    Friday, September 11, 2020

    TTABlog Test: Is HERITAGE SOUTHEAST BANK Confusable With SOUTHEAST BANK (Stylized), for Banking Services?

    The USPTO refused to register the mark HERITAGE SOUTHEAST BANK [BANK disclaimed], on the ground of likelihood of confusion with the mark SOUTHEAST BANK in the stylized form shown immediately below, both for banking services. As we know, when the services are identical, less similarity between the marks is required to support a Section 2(d) refusal. But how strong is "SOUTHEAST" as a formative? How do you think this came out? In re Heritage Bank, Serial No. 88540253 (September 9, 2020) [not precedential] (Opinion by Judge Frances S. Wolfson).


    In an effort to show the weakness of "SOUTHEAST," Applicant submitted search results from the Federal Deposit Insurance Corporation (FDIC), for "institutions as of January 22, 2020," listing six banks: SouthEast Bank (Registrant); Heritage Southeast Bank (Applicant); Southeastern Bank (of Georgia); FIRST STATE BANK OF THE SOUTHEAST, INC. (of Kentucky); First Southeast Bank (of Minnesota); Southeast First National Bank (of Georgia). The Board was unimpressed. Even assuming that these banks are owned by different owners, there are only four (other than applicant and registrant), an insufficient number to show that the cited mark is weak.

    Applicant also submitted 15 third-party registrations for marks containing the term SOUTHEAST, SOUTHWEST, or NORTHWEST. The Board found the evidence unconvincing: only six of the mark were for banking services, and only one of those included the word SOUTHEAST.

    Turning to a comparison of the marks, the Board observed that likelihood of confusion is often found when one mark incorporates the entirety of another mark. "Here, Applicant’s mark incorporates the entire literal portion of Registrant’s mark, and the remainder of Registrant’s mark is simply a common lettering style in a particular color scheme." Since applicant seeks registration of a standard character mark, its mark might be displayed in a script similar to registrant’s, and in a green, blue and black color scheme.

    Applicant contended that HERITAGE is the dominant word in its mark. The Board agreed that the word is prominent, but noted that it must evaluate the marks in their entireties, and it found them to be more similar than dissimilar in appearance, pronunciation, connotation and commercial impression.

    In sum, we find that the non-literal components (the lettering style and color scheme) of Registrant’s mark visually distinguishes it only slightly from Applicant’s mark. Moreover, and more importantly, we find the sight, sound, connotation, and overall commercial impression of the two marks considered as a whole to be more similar than dissimilar.

    And so the Board affirmed the refusal to register.

    Read comments and post your comment here.

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

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/11/2020   1 comments

    Thursday, September 10, 2020

    TTAB Finds BROTHERS CRAFT BREWING for Beer Confusable with BROTHERS for Bar and Restaurant Services

    The Board sustained this Section 2(d) opposition to registration of BROTHERS CRAFT BREWING for "Beer, ale, lager, stout, porter, shandy" [CRAFT BREWING disclaimed] in view of the registered marks BROTHERS and BROTHERS BAR & GRILL for bar and restaurant services [BAR & GRILL disclaimed]. Applicant argued that, under Coors Brewing and Jacobs v. International Multifoods, “[t]he question of whether restaurant services and beer are sufficiently related as to cause the likelihood of confusion is subject to a well-established requirement that the Opposer show ‘something more.'" The Board agreed, but then found the "something more" in Opposer's evidence. Brothers Franchise & Development, LLC v. Three Brothers Brewing LLC., Opposition No. 91232361 (September 8, 2020) [not precedential] (Opinion by Judge Jyll Taylor).


    Standing: In view of the Supreme Court's ruling in Lexmark, the Board no longer uses the rubric "standing" when analyzing the requirements of Section 13 and 14 of the Trademark Act, but whether  a party has established entitlement to a statutory cause of action by demonstrating a real interest in the proceeding and a reasonable belief of damage. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020). Here, Opposer satisfied that requirement by pleading ownership of six pertinent registrations.

    The Marks: As to the commercial strength of opposer's marks, the Board rejected the claim that its marks are famous, but found them to be "in the mid-range of the commercial strength spectrum." As to inherent strength, applicant relied on a number of registrations for marks containing the word BROTHERS for beer, arguing that “the term ‘Brothers’ is simply suggestive of businesses founded and/or operated by brothers or people who consider themselves brothers.” The Board found, nonetheless, that these registrations "do not support the conclusion that the term BROTHERS, alone or combined with nondistinctive matter, is inherently weak." It found opposer’s marks BROTHERS and BROTHERS BAR & GRILL to be "entitled to the ordinary scope of protection given inherently distinctive marks."

    The Board deemed the word BROTHERS to be the dominant portion of the involved marks, and concluded that they are similar in appearance, sound, connotation and commercial impression due to the shared term BROTHERS.

    Goods and Services: As applicant pointed out, the Board previously has required a showing of “something more” for restaurant and bar services, not just restaurant services. In previous cases, the Board has found the “something more” requirement to be met where an applicant’s mark "made clear that its restaurant specialized in registrant’s type of goods."

    The record showed that opposer’s bar and restaurant services feature an extensive beer menu, and further that applicant’s beer, while currently only distributed in Virginia, is sold to distributors for further sale and distribution in trade channels that include restaurants. Thus beer is complementary to bar and restaurants services since it could be sold in opposer's bar and restaurant.

    [T]he record shows the requisite “something more” to establish that beer and bar and restaurant services are related in this case. More particularly, the record confirms that Opposer’s bar services comprise the most significant portion of Opposer’s bar and restaurant services, both in the ratio of bar to restaurant services and in that the bar is a focal point in Applicant’s establishments.

    The Board concluded that the involved goods and services are related.

    Channels of Trade: The ordinary trade channels for beer include restaurants and bars, and consumers include bar and restaurant patrons.

    Conclusion: Confusion is likely, and so the Board sustained the opposition.

    Read comments and post your comment here.

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/10/2020   0 comments

    Wednesday, September 09, 2020

    "THE NEXT MOVE IS YOURS" Fails to Function as a Service Mark for Real Estate Services, Says TTAB

    The Board affirmed a refusal to register the proposed mark THE NEXT MOVE IS YOURS for "real estate agency services, real estate brokerage, real estate management, leasing of real estate," on the ground that the phrase fails to function as a mark under Section 1, 2, 3, and 45 of the Trademark Act. Applicant contended that THE NEXT MOVE IS YOURS is similar to registered slogan marks (such as EAT FRESH) in that it conveys information, suggests an action, and functions as a trademark. The Board was not moved. In re Douglas Elliman Realty, LLC, Serial No. 88640177 (September 4, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman).

    Third-party use

    The question for the Board was "whether the relevant public, i.e. purchasers or potential purchasers of Applicant’s services, would perceive THE NEXT MOVE IS YOURS as identifying Applicant’s services and their source or origin." The relevant consuming public consists of all potential purchasers of real estate agency, brokerage, management and leasing services.

    Although the subject application was based on intent-to-use, a failure-to-function refusal may be issued without considering specimens of use. The Board may consider  the evidence as to third-party use of the designation in the marketplace.

    Examining Attorney Kevin G. Crennan provided evidence of third party use of the phrase not only in the real estate field but in related fields. Applicant submitted third-party registrations for other slogans and taglines (e.g., WHERE’S THE BEEF, JUST DO IT, FINGER LICKIN’ GOOD, EAT FRESH), as examples of the registrability of slogans and taglines, That evidence was, of course, irrelevant to the proposed mark at issue.

    Applicant argued that THE NEXT MOVE IS YOURS requires several mental steps to discern the meaning of the phrase and does not immediately and merely provide an informational message or idea, but the numerous third-party uses gave strong support to the examining attorney's position that the phrase is a commonplace message or widely used expression in many different industries that “conveys an ordinary, familiar, well-recognized concept or sentiment.”

    Here, the third-party Internet evidence in the record demonstrates general use of THE NEXT MOVE IS YOURS in advertising to consumers and to businesses in a variety of industries. This evidence shows that THE NEXT MOVE IS YOURS would be perceived not as a source identifier, but instead as a widely-used phrase, specifically, a call to action or directive that the consumer or business contact the entity that is advertising the particular service.

    The Board noted that the NEXT MOVE IS YOURS has a double meaning in the context of real estate services, but it is not a "significant" double entendre since both meanings are informational. "[T]he primary significance of THE NEXT MOVE IS YOURS remains a commonly used call to action by advertisers to consumers and businesses as well as an informational slogan used by realtors and moving companies."

    The Board concluded that consumers will not perceive the proposed mark as a source indicator pointing uniquely to Applicant. Instead, consumers services will perceive THE NEXT MOVE IS YOURS as a commonly used informational slogan by multiple entities.

    And so the Board affirmed the refusal to register.

    Read comments and post your comment here.

    TTABlogger comment: Move along. Not much to see here.

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/09/2020   1 comments

    Tuesday, September 08, 2020

    TTABlog Test: Is CLINCH PICK for Knives Confusable with CLINCH DRIVE for Wrenches?

    The USPTO refused to register the mark CLINCH PICK for "Military and tactical knives; fixed bladed knives" [PICK disclaimed] on the ground of likelihood of confusion with the registered mark CLINCH DRIVE for "Hand tools, namely, wrenches" [DRIVE disclaimed]. Given the disclaimers, the marks seem pretty close. What about the goods? How do you think this came out? In re Shivworks Products Group, LLC, Serial No. 88330418 (September 4, 2020) [not precedential] (Opinion by Judge George C. Pologeorgis).


    Sure enough, the Board found that, although the meanings or connotations of the words PICK and DRIVE may differ, consumers are likely to place more significance on the initial and distinctive word CLINCH. Viewing the marks in their entireties, the Board found them to be more similar than dissimilar.

    As to the goods, the examining attorney maintained that both applicant’s and registrant’s goods are a type of hand tool often found in the same shopping category called "KNIVES and TOOLS," as illustrated by screenshots from several online retailers. In addition, some manufacturers offer a product called a multi-tool which commonly includes knives and wrenches as components. Furthermore, he asserted, knives and wrenches are provided "as both survival and utility goods meant to be used together for a variety of projects and situations." Thus, the involved goods are similar or complementary in terms of function and therefore are related for likelihood of confusion purposes.


    The Board threw a monkey wrench into the examining attorney's argument. "While the evidence submitted by the Examining Attorney  . . .  demonstrates that Applicant’s and Registrant’s goods travel in similar trade channels and are offered to overlapping classes of consumers, the evidence of record nonetheless is insufficient to show that a single entity provides both Applicant’s and Registrant’s goods under a single mark."

    The fact that the involved goods are found under the same shopping category, “KNIVES and TOOLS,” does not necessarily show that the goods are related for likelihood of confusion purposes. "Indeed, the shopping category itself delineates the goods by identifying them separately." Moreover, neither applicant or registrant offers a multi-tool with a wrench and a knife, and in any case the multi-tool examples of the examining attorney include folding knives, not fixed blade knives.

    In sum, the USPTO's evidence failed to show that the involved goods are related.

    And so the Board reversed the refusal to register.

    Read comments and post your comment here.

    TTABlogger comment: How did you do? Do you have a fixed blade knife in your home tool box?

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/08/2020   5 comments

    Friday, September 04, 2020

    Lego's BRICKHEADZ Applications Run Into TTABrick Wall

    Nothing clicked for Lego in its attempt to register the mark BRICKHEADZ, in standard character and logo form, for “computer game software” and “construction toys; toy construction blocks and connecting links therefor; toy figures." The Board blocked registration, finding the marks likely to cause confusion with the registered mark BRICKHEADZ (in standard characters), for “education services, namely, providing classes and educational children’s parties in the field of construction toys to promote, [sic] creativity, critical thinking, and social development as wells [sic] as lessons from science, technology, engineering, math, language arts and social studies.” The Board also upheld a requirement that Lego disclaim BRICK in the logo mark application. In re LEGO Juris A/S, Serial Nos. 87886005 and 87886027 (September 2, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo)


    Likelihood of Confusion: Lego argued that the marks have different connotations in context: for its toys, BRICKHEADS refers to the shape of the toys; for the cited services, however, BRICKHEADZ "gives the impression of referring to the tutors, teachers and mentors offering and administrating the services, i.e., they are aficionados, like "gearheads' are enthusiasts for new technology, or for motoring, 'wireheads' are hardware hackers/experts, 'deadheads' are fans of the Grateful Dead."

    Lego's argument, lacked a solid base. Lego failed to provide any supporting evidence other than dictionary definitions. "Simply put, there is no evidence that the providers of Registrant’s services refer to themselves as 'brick heads,' or, more importantly, that consumers of Registrant’s services so perceive or identify them." Moreover, even if their connotations differed, the other similarities between the marks sufficed to prove their similarity. Likewise, the Lego logo mark and the cited mark "are much more similar than dissimilar in appearance, sound and connotation and, overall, convey highly similar commercial impressions."

    As to the goods and services, Examining Attorney Alison Keeley built a tower of evidence, including website excerpts showing that Lego itself offers educational services to early learning, primary and secondary students in the fields of social and emotional development, science, technology, language, engineering and math. Moreover, third-party website evidence revealed the offering, under the same mark, of both computer game software and building toys as well as educational services related to the toys and software. And some 14 third-party registrations covering goods and services similar to those involved here, were made of record.

    Lego claimed that, in order to prove relatedness, "something more" is required than the mere fact that the goods and services are used together. That argument collapsed because, unlike in St. Helena Hospital (involving hospital-based weight and lifestyle services and printed materials on the subject of physical activity and fitness), "the relatedness of construction toys, educational services in the field of construction toys, and broadly identified computer game software, which may include games featuring construction games and toys, is much more apparent." Here the relatedness of the goods and services "is far from obscure or generally unrecognized."


    Disclaimer: Lego's specimen of use stated "The Flash LEGO BrickHeadz construction character is fun to build using colorful LEGO bricks." Third-party websites describe Lego's services and related goods as consisting in part of “bricks." Lego, of course, argued that its logo mark is unitary, but the Board took the Lego logo apart, finding that that "consumers would not view the term 'BRICK' as inseparable from the remainder of the mark."

    The Board concluded that the term “BRICK” is descriptive and Lego’s mark is not unitary. Therefore, the term “BRICK” was subject to the disclaimer requirement.

    Read comments and post your comment here.

    TTABlogger comment: Is there an after market for used Lego blocks?

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/04/2020   1 comments

    Thursday, September 03, 2020

    TTABlog Test: Try Your Luck on these Three Recent Section 2(d) Appeals

    According to one TTAB judge, you 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. How do you think these came out? [Answers in first comment].


    In re Horizon Group USA, Inc., Serial No. 87901706 (September 1, 2020) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of SUGAR BOMBS for "bath bombs" in view of the registered mark SUGARBOMB for "cosmetics." Applicant, citing In re St. Helena Hosp., 113 USPQ2d 1082 (Fed. Cir. 2014), contended that the USPTO is required to show “something more” than the mere fact that the goods are used together.].


    In re Luxe Energy, LLC, Serial No. 88064929 (September 1, 2020) [not precedential] (Opinion by Judge Albert Zervas). [Section 2(d) refusal of PECAN BAYOU ENERGY & Design, for "Drilling of deep oil or gas wells; Drilling of wells; Extraction of oil and gas; Extraction of natural gas; Oil and gas drilling; Well improvement services, namely, hydraulic fracturing of subsurface geologic formations to enhance well production; Laying and construction of pipelines; Oil and gas pipeline construction; Oil and gas pipeline maintenance; Pipeline construction and maintenance" [PECAN BAYOU ENERGY disclaimed] in view of the registered mark PECAN PIPELINE & Design for "natural gas transmission” and "compression and conditioning of natural gas" [PIPELINE disclaimed]. Applicant argued that the marks have different connotations, since PECAN BAYOU refers to a specific geographical location.].



    In re Globus Medical, Inc., Serial No. 88465873 (September 1, 2020) [not precedential] (Opinion by Judge Jyll Taylor). [Section 2(d) refusal of REFLECT for a "surgical system in the nature of a surgical implant for use with the spine composed of artificial materials" in view of the identical mark registered for "dental implants." Applicant contended that "'Reflect' is a commonly used term for all types of goods and services, and therefore consumers are not likely to be confused as to the source of products identified under Applicant’s mark and the Registrant’s mark, because they share this term."].


    Read comments and post your comment here.

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

    Text Copyright John L. Welch 2020.

    posted by John L. Welch @ 9/03/2020   2 comments