TTAB Posts November 2020 (Video) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled six (VI) oral hearings for the month of November 2020. The hearings will be held via video. Briefs and other papers for each case may be found at TTABVUE via the links provided.

November 5, 2020 - 11 AM: In re Apple Inc., Serial No. 86857587 [Refusal to register SMART KEYBOARD on the Supplemental Register for "Accessory for a handheld mobile digital device, namely, a protective and decorative cover for a tablet computer that functions as a computer stand and incorporates a keyboard" [KEYBOARD disclaimed], on the ground of genericness].

November 5, 2020 - 2 PM: Charles Bertini v. Apple Inc., Opposition No. 91229891 [Section 2(d)  opposition to registration of APPLE MUSIC for live musical performances and other entertainment services, on the ground of priority and likelihood of confusion with the common law mark APPLE JAZZ for entertainment services].

November 10, 2020 - 11 AM: In re Institute of Industrial and Systems Engineers, Inc., Serial Nos. 86573076 and 87119574 [Refusal to register INSTITUTE OF INDUSTRIAL AND SYSTEMS ENGINEERS, in standard character form, for publications, webinars, associations services, educational services, and consulting services in the field of ergonomics and human factor design, on the ground of mere descriptiveness and lack of acquired distinctiveness; and refusal to register the mark shown below absent a disclaimer of the wording and further on the ground that applicant's "brochures" are not goods in trade].

November 12, 2020 - 11 AM: In re Treadwell Original Drifters, LLC., Serial No. 77119123 [Section 2(d) refusal of THE DRIFTERS for musical recordings, live musical entertainment, and music production services, in view of the registered mark BILL PINKNEY’S ORIGINAL DRIFTERS for "Entertainment Services in the nature of live performances by a musical group"].

November 12, 2020 - 1 PM: In re Melissa & Doug, LLC, Serial No. 87915069 [Refusal to register the mark shown below, consisting of a  red oval outlined in white (acting as a carrier for the words “MELISSA & DOUG") for various toys, arts and crafts, and hobby kits in International Classes 16 and 28, and for online retail store services regarding same in International Class 35, on the ground that the mark comprises a background design that fails to function as a mark].

November 19, 2020 - 11 AM: In re Bunkhouse Management, LLC, Serial No. 87539883 [Refusal to register I LOVE YOU SO MUCH in the stylized form shown below, for "Charitable fundraising services by means of organizing and conducting special events," on the grounds of genericness and, alternatively, mere descriptiveness and lack of acquired distinctiveness].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2020.

CAFC Upholds TTAB's Corcamore Sanction and "Standing" Decision, Rules that Lexmark Applies to Cancellation Proceedings

The CAFC affirmed the TTAB's decision in SFM, LLC v. Corcamore, LLC, 129 USPQ2d 1072 (TTAB 2018) [TTABlogged here], upholding the Board's entry of judgment as a sanction against Corcamore, LLC due to its misconduct. Corcamore contended that because SFM lacked standing to petition for cancellation, the Board erred in entering judgment. The appellate court, however, concluded that "SFM was entitled to bring and maintain a petition under 15 U.S.C. § 1064, the statutory cause of action for cancellation of trademark registrations, and ... the Board did not otherwise abuse its discretion in imposing default judgment as a sanction." Corcamore, LLC, v. SFM, LLC, 2020 USPQ2d 11277 (Fed. Cir. 2020) [precedential].

Sanction: SFM, LLC petitioned for cancellation of Corcamore's registration for the mark SPROUT for "vending machine services," alleging priority and likelihood of confusion with its marks SPROUTS and SPROUTS FARMERS MARKET for "retail grocery store services." After setting out Corcamore's egregious antics, the Board entered judgment against Corcamore as a sanction for its litigation misconduct.

Respondent has refused to cooperate in the discovery process for over sixteen months. Respondent’s discovery violations are repeated, egregious and demonstrate Respondent’s intent to thwart Petitioner’s discovery of information and documents the Board has already determined are discoverable. There is no reason to assume that, given additional opportunities, Respondent will fulfill its obligations under the Federal and Trademark Rules and the Board’s orders. Accordingly, Petitioner’s motion for discovery sanctions in the form of judgment is granted under Trademark Rule 2.120(h).

The CAFC recited Corcamore's laundry list of improper behavior and ruled that the Board did not abuse its discretion in entering judgment as a sanction.

Entitlement to Bring Petition: Corcamore relied on Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), in contending that SFM lacked standing to bring the petition for cancellation. The Board, however, concluded that Lexmark applied only to civil actions under Section 43(a) of the Lanham Act and did not apply to a petition for cancellation. Instead, the Board relied on Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270 (Fed. Cir. 2014), and ruled that SFM had standing because it sufficiently alleged a real interest in the cancellation proceeding and a reasonable belief of damage, as required under 15 U.S.C. § 1064. Corcamore contended that this was error.

The CAFC first pointed out that "this appeal does not involve the traditional legal notions of Article III standing. This appeal focuses instead on the requirements that a party must satisfy to bring or maintain a statutory cause of action, such as a petition to cancel a registered trademark under 15 U.S.C. § 1064." The court then agreed with Corcamore that Lexmark provides the applicable standard, but it found no substantive difference between the Lexmark standard and that of Empresa Cubana:

We hold that the Lexmark analytical framework is the applicable standard for determining whether a person is eligible under § 1064 to bring a petition for the cancellation of a trademark registration. However, because we discern no meaningful, substantive difference between the analytical frameworks expressed in Lexmark and Empresa Cubana, we do not agree that the Board reached the wrong result in this case.

The CAFC pointed out that, in Empresa Cubana, involving a petition for cancellation, it had addressed Lexmark "only in passing and, in particular, did not address whether the Lexmark framework applies to § 1064." Instead it relied on Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999) and Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1029 (CCPA 1982), and concluded that SFM had a cause of action under § 1064 because it demonstrated "a real interest in cancelling the [registered trademarks at issue] and a reasonable belief that the [registered trademarks] are causing it damage." Id. at 1274. 

The CAFC found the Board's interpretation of Lexmark to be "unduly narrow."

The Lexmark analytical framework applies to § 1064 and § 1125(a) because both are statutory causes of action. As Justice Scalia exhorted, the zone-of-interests requirement "applies to all statutorily created causes of action" and it "applies unless it is expressly negated." Lexmark, 572 U.S. at 129. The proximate-causation requirement generally applies to all statutory causes of action, even where a statute does not expressly recite a proximate-causation requirement. *** In view of the Supreme Court’s instructions, we see no principled reason why the analytical framework articulated by the Court in Lexmark should not apply to § 1064.

The CAFC then concluded that, although the Board failed to apply the Lexmark framework, it reached the correct result. The appellate court saw "no meaningful, substantive difference in the analysis used in Lexmark and Empresa Cubana."

The zone-of-interests requirement and the real-interest requirement share a similar purpose and application. The purpose of the zone-of-interests test is to “foreclose[] suit only when a plaintiff’s interests are so marginally related to or inconsistent with the purposes implicit in the statute that it cannot reasonably be assumed that Congress authorized that plaintiff to sue.” Lexmark, 572 U.S. at 130 (citation and quotation marks omitted). Likewise, a purpose of the real-interest test is to “distinguish [parties demonstrating a real interest] from mere intermeddlers or . . . meddlesome parties acting as self-appointed guardians of the purity of the Register.” Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 1325–26 (Fed. Cir. 1983) (citation and internal quotation marks omitted). Also like the zone-of-interests test, a petitioner can satisfy the real-interest test by demonstrating a commercial interest. *** Similarly, a party that demonstrates a reasonable belief of damage by the registration of a trademark demonstrates proximate causation within the context of § 1064.

Applying the Lexmark framework to SFM's petition for cancellation, the CAFC came to the same conclusion as the Board: "that SFM pleaded allegations sufficient to demonstrate a right to challenge Corcamore’s registered mark under § 1064." SFM's allegations of likely confusion identified an interest falling within the zone of interests protected by § 1064. Likewise these allegations were sufficient to establish proximate cause because they demonstrate "SFM’s reasonable belief of damage resulting from a likelihood of confusion between SFM’s SPROUTS mark and Corcamore’s SPROUT mark."

We therefore hold that the Board correctly determined that SFM falls within the class of parties whom Congress has authorized to sue under the statutory cause of action of § 1064. Cf. Lexmark, 572 U.S. at 137–40. We are not persuaded that we should disturb the result reached by the Board. In other words, SFM is entitled under § 1064 to petition for cancellation of the trademark registration to SPROUT.

Read comments and post your comment here.

TTABlogger comment: In Empresa Cubana, the CAFC did more than mention Lexmark "in passing." It seems to me that the Empresa Cabana ruling is solidly, albeit not expressly, based on Lexmark.

Under Lexmark,the plaintiff must be one whose interests fall within the zone of interests protected by the statute, and whose injuries to those interests are proximately caused by violation of the statute. Under Empresa Cubana, a plaintiff must demonstrate “a real interest in the proceeding and a reasonable belief of damage.”  

Text Copyright John L. Welch 2020.

Ted Davis: 2020 Annual Review of U.S. Federal Case Law and TTAB Developments

Here is a link to Ted Davis's 2020 "Annual Review of U.S. Federal Case Law and TTAB Developments." Thank you, Ted, for permitting me to post this link.

Ted Davis

As a companion piece of sorts, here is a link to my outline of CAFC and TTAB decisions for the past 14 months.

Finding BOTOX Famous, TTAB Sustains Section 2(d) Opposition to GS GEMS STYLE HAIR BOTOX for Hair Care Products

The Board sustained this opposition to registration of GS GEMS STYLE HAIR BOTOX for various non-medicated hair care products [STYLE HAIR BOTOX disclaimed], finding confusion likely with the famous mark BOTOX for pharmaceutical preparations, including preparations for the treatment of wrinkles. Applicant Gems Style, appearing pro se, contended that "Hair Botox" "is a term widely recognized by the general consumer public in the United States and by the social media" that has a distinct meaning from BOTOX alone. The Board was unimpressed. Allergan, Inc. v. Gems Style Inc., Opposition No. 91241842 (October 23, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman).

Fame: The Board found BOTOX to be a coined term with no recognized meaning other than as a trademark. Therefore, it is an inherently or conceptually strong mark. As to commercial strength, Allergan has used the mark since 1990, has spent half a billion dollars in advertising and promotion in that past two decades, has earned about $20 billion in the past 20 years, and enjoys 69% unaided brand awareness and 95% aided brand awareness. The Board deemed BOTOX to be a famous mark for purposes of Section 2(d), and therefore entitled to a broad scope of protection or exclusivity of use. 

The Marks: The Board noted that Applicant Gems Style "uses the BOTOX as part of the unitary term HAIR-BOTOX on its label" (shown above), making it appear that its product "is a BOTOX product specifically for hair (i.e., a hair Botox)."

Gems Style maintained that "Hair Botox" is a "unique and inseparable concept, widely recognized by relevant consumers. It pointed to third-party websites using the term "Hair Botox" for hair care treatments. The Board agreed that some consumers perceive "Hair Botox" as a hair care treatment, and it noted Gems Style's disclaimer. In essence, Gems Style asserted that GS GEM STYLE is the dominant portion of its proposed mark. The Board disagreed.

Even assuming a segment of the consuming public and hair care industry perceives “Hair Botox” to be a type of hair care treatment, because Opposer’s registered mark is both conceptually and commercially strong, consumers and potential consumers mistakenly may believe that “Hair Botox” treatments are related to, sponsored by, or somehow associated with the famous BOTOX pharmaceutical with which they are familiar.

Because BOTOX is a famous mark, Gems Style was obligated to avoid using it. "The Trademark Act’s tolerance for similarity between competing marks varies inversely with the commercial strength of Opposer’s mark."

While the marks are not identical, because Opposer’s BOTOX mark is famous, Applicant’s mark GS GEM STYLE HAIR BOTOX, in its entirety, is more similar to Opposer’s BOTOX mark than it is dissimilar in appearance, sound, connotation, and commercial impression.

The Goods: Allergan submitted copies of 60 use-based, third-party registrations covering hair care preparations and pharmaceutical preparations. Gems Style argued that the pharmaceutical preparations in those registration have nothing to do with hair, contending that "consumers and people in the hair care industry recognize that 'Hair Botox' is a product that is separate and distinct from a pharmaceutical preparation." The Board pointed out, however, that confusion of products is not the issue; it is confusion as to source.

Despite the obvious differences between the descriptions of goods, because BOTOX is a famous mark entitled to a broad scope of protection, some entities render both hair care services and medical cosmetic treatment services under the same mark so consumers may encounter both sets of products in the same marketing milieu, and the third-party registrations show that hair care products and pharmaceutical preparations may emanate from the same source, we find that the Applicant’s hair care products are related to Opposer’s pharmaceutical preparations.

Channels of Trade: Website evidence showed that third parties market both medical cosmetic treatment services, including pharmaceutical preparations such as Botox, and hair care services, including the sale of non-medicated hair care preparation, under the same mark. The Board found that Allergan "offers its pharmaceutical preparations for treating wrinkles in some of the same channels of trade to some of the same classes of consumers as non-medicated hair care preparations."

Gem Style argued that the channels of trade do not overlap because BOTOX is sold only by prescription and is administered by professionals.  The Board pointed out, however, that the evidence showed that aesthetic medical centers and “med spas” offer both hair care products, including hair care preparations, and cosmetic medical treatment services, including BOTOX injections, to the same consumers.

The Board rejected Gems Style's argument that its hair care products are sold only to licensed salons and are purchased with care, because there are no such limitations in the opposed application. The Board "cannot resort to extrinsic evidence to restrict the parties’ goods." Moreover, it noted that "the ordinary consumer may purchase Applicant’s hair care products and request a BOTOX injection at a cosmetic medical treatment facility or spa."

Conclusion: Observing once again that fame plays a "dominant role" in the likelihood of confusion analysis, the Board sustained the opposition. It declined to consider Allergan's dilution claim

Read comments and post your comment here.

TTABlogger comment:  I think the Board should have decided the dilution claim as well. 

Text Copyright John L. Welch 2020.

TTABlog Test: How Did These Three Section 2(d) Appeals Turn 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 Carolyn Anderson Beautiful, LLC., Serial No. 87851445 (October 21, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal to register BEAUTIFUL (Stylized) for "Hair care products, namely, shampoos; hair conditioners; hair sprays; styling gels; hair fiber protectants in the form of lotions and creams; styling foams for hair; root lifters in the nature of hair creams, foams, gels, and spray liquids; volumizers in the nature of hair creams, foams, gels, and sprays; hair lotions, gels, pomades, and waxes in the nature of hair taffies; and hair waxes," in view of the registered mark BEAUTIFUL for "perfume, cologne, body creme, body lotion, body powder, perfumed soap." Applicant contended, inter alia, that the meaning and commercial impression engendered by its use of the stylized BEAUTIFUL mark and Registrant’s use of BEAUTIFUL are different because Registrant’s use of BEAUTIFUL captures the sense of smell and its use of BEAUTIFUL refers to vision.]

In re Yafa Hummus Inc., Serial Nos. 88157691 and 88157695 (October 21, 2020) [non precedential] (Opinion by Judge Karen S. Kuhlke) [Section 2(d) refusal of YAFA HUMMUS SIMPLY MEDITERRANEAN, in standard character and design form (below) for "Restaurant services; Restaurant services featuring Mediterranean cuisine, Greek cuisine, and a fusion of Mediterranean and Greek cuisine; Restaurant and café services; Restaurant and catering services" [HUMMUS, MEDITERRANEAN and SINCE 1951 disclaimed], in view of the registered mark YAFA GRILL & Design for "Restaurant and catering services" [YAFA GRILLE SHAWARMA, FALAFEL, and PITA disclaimed]. Applicant argued that the disclaimed terms are of less significance and the design elements in the marks are sufficient to distinguish them.]

In re Beavertail Products, LLC, Serial No. 88197106 (October 23, 2020) [not precedential] (Opinion by Judge Linda A. Kuczma). [Section 2(d) refusal of the mark DOA DECOYS & Design for "wild game hunting decoys" [DECOYS disclaimed] in view of the registered mark D.O.A. for "fishing lures." Applicant asserted that fishing lures are sold in different departments than are waterfowl decoys, and that the most prominent portions of its mark ,” according to Applicant, “focus on the waterfowl, the two heads and the rather large wings extending from the center shield,” which is “also is a very prominent portion of the mark.” Applicant maintained that the stylistic images of its mark are the most eye-catching aspects of the mark and distinguish it from the cited mark.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2020.

Precedential No. 35: Bad Specimen of Use and Mere Descriptiveness Sink THERMAL MATRIX for Dental Appliance Liner

In a soporific but precedential decision, the Board affirmed two of three refusals of the proposed mark THERMAL MATRIX for a "Heat responsive and malleable liner that is an integral component of an oral dental appliance used in the mouth and worn over the teeth of an individual while sleeping to reduce the effects of snoring and sleep apnea" [THERMAL disclaimed]. The Board found the mark to be merely descriptive of the goods, and further found that the specimen of use (immediately below) does not show the mark in use in connection with applicant's liners. However, the Board overturned the third refusal, concluding that the mark as depicted in the application drawing (i.e., THERMAL MATRIX) is a substantially exact representation of the mark as actually used. In re James S. Fallon, 2020 USPQ2d 11249 (TTAB 2020) [precedential] (Opinion by Judge Christopher Larkin).

Faulty Specimen: Examining Attorney Christopher Buongiorno asserted that "[t]he picture of the dental appliance on the package does not show or highlight the lining of the dental appliance in a way where consumers are likely to associate the wording in the mark as the source indicator for a liner." The Board agreed.

Where, as here, an applicant seeks registration for a component of a product rather than for the product itself, it is particularly important that the specimen contain some visual or verbal identification of the component to create the required direct association between the mark and the identified goods. See Minerva Assocs., 125 USPQ2d at 1638-39. * * * The specimen that Applicant submitted does not sufficiently identify any specific component, much less the component for which registration is sought, visually or verbally, to create the required direct association between the proposed mark and that component.

And so the Board affirmed this refusal. 

Mere Descriptiveness: Applicant Fallon argued that the Examining attorney "focused entirely on the meanings of the individual words ‘thermal’ and ‘matrix’ while overlooking the significance of the mark THERMAL MATRIX taken as a whole."

The Board found that each word in the mark is "highly descriptive" of the goods. "As shown in the webpages above, Applicant’s 'heat responsive and malleable liner' embodies 'a pattern of lines and spaces' through which the user can personalize the fit of the oral appliance through the application of heat."

The Board then considered whether the combination of the two words yields "something more than merely the sum of its descriptive parts." It pointed out that Fallon website "touts the product's 'Thermal Matrix Design,' which 'features a thermal matrix material that enables each user to personalize their device with a custom impression' through 'a simple step by step process that can be done in the comfort of your home.'"

Third-party webpages confirmed that "when Applicant’s goods are advertised and promoted by others, the same descriptive message of the proposed mark would be understood by consumers." Finally, Fallon argued (as usual) that some imagination, thought, or perception would be required before a consumer would glean any information about the product from the mark, and therefore the mark is merely suggestive. Although Fallon correctly stated the law, the facts did not cooperate.

Applicant’s own promotional materials and the third-party webpages shown and discussed above make it clear that “a consumer would immediately understand the intended meaning of” the proposed THERMAL MATRIX mark as a descriptor of a key product feature, N.C. Lottery, 123 USPQ2d at 1710, and eliminate the need for any “imagination, thought or perception” to determine the term’s significance.

Concluding that Fallon failed to rebut the USPTO's prima facie showing, the Board affirmed the Section 2(e)(1) refusal.  

Mutilation? The Examining Attorney contended that the specimen of use displays the mark as NEW THERMAL MATRIX, whereas the application drawing displays the mark as THERMAL MATRIX, since "NEW" is not a generic word but merely descriptive. Applicant Fallon asserted that consumers would not see "NEW" as part of the mark because "the letter size and style of the word 'NEW' are visually distinguishable from those of the words 'Thermal Matrix' which are located separately on the package."

The Board agreed with Fallon on this one. It found that THERMAL MATRIX, as it appears on the specimen, "comprises a separate and distinct 'trademark' in and of itself." (quoting Institut Nat’l Des Appellations d’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. 1992)).

The word NEW appears in all capital letters on the specimen above the words “Thermal Matrix,” which are depicted in initial capital letters and are followed by the ™ symbol. Given the descriptive, non-source identifying nature of the word NEW acknowledged by the Examining Attorney and Applicant, and the fact that the words "Thermal Matrix" are set apart visually from the word NEW, we find that the drawing of the mark as THERMAL MATRIX is 'a substantially exact representation of the mark as used with the goods"” Trademark Rule 2.51(b), and we reverse the refusal to register based on that rule.

Read comments and post your comment here.

TTABlogger comment: WYHA? Why is this precedential? I don't see any particularly noteworthy ruling(s) here. What would you cite this case for? Something about proper specimens when the identified good is a component of another product? Seems rather obvious that the mark has to be connected to the component.

Text Copyright John L. Welch 2020.

TTAB Finds "WA529" Primarily Geographically Descriptive of Pre-Paid Educational Financial Services

The Board affirmed a Section 2(e)(2) refusal to register the marks WA529, in standard character and design form (below), for "Pre-paid educational financial services, namely, allowing purchasers to make advance payments towards future continuing education, and providing information relating to education financing," finding the marks to be primarily geographically descriptive of the services. Applicant maintained that WA529 is a "whimsical or fanciful mark or, alternatively, at least only suggestive of" its services. The Board disagreed. In re Committee on Advanced Tuition Payment, Serial Nos. 88079982 and 88079989 (September 30, 2020) [not precedential] (Opinion by Judge George C. Pologeorgis). 

The Board first observed that "the geographical significance of the mark is to be assessed as it is used on or in connection with the goods [or services]." Newbridge Cutlery, 113 USPQ2d at 1448. "[T]he addition of highly descriptive matter to a geographic term does not detract from the mark's primary significance as being geographically descriptive." See In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998). 

Examining Attorney Obieze Mmeje submitted dictionary definitions of the abbreviation/acronym "WA", defined as the State of Washington, a Columbia Gazetteer entry for the state, website excerpts defining a "529 plan" as a "tax-advantaged savings plan designed to encourage saving for future education costs," third-party registrations that include disclaimers of "529", and excerpts from the websites www.nc529.org, www.az529.gov, www.pa529.com, www.hi529.com; and www.virginia529.com, discussing the available 529 plans in the states of North Carolina, Arizona, Pennsylvania, Hawaii, and Virginia, respectively. Applicant's own website demonstrated that it is a state agency domiciled in the state of Washington.

The Examining Attorney therefore contended that applicant's marks "immediately and directly convey to consumers that Applicant provides 529 prepaid tuition plans in the state of Washington for residents of Washington and, thus, the marks, in their entireties, are primarily geographically descriptive of Applicant’s identified services."

Applicant argued that “WA529” is a whimsical or fanciful mark, that the mark as a whole does not suggest a geographical location, and that the Examining Attorney's dissection of the mark "“disrupts the singular, unnatural and whimsical commercial impression of the subject term." The Board found those assertions to be "inconsistent with the record."

The evidence of record leaves no doubt that the term “WA 529” (two-word term) is, at the very least, primarily geographically descriptive of Applicant’s services. The mere alteration of “WA 529” to form the designation “WA529” does not result in an inherently distinctive or fanciful mark. In considering the evidence of record we recognize that there is no use of “WA529” as one term. Nonetheless, the clear and, in fact, only connotation of the applied-for designation is as an equivalent to “WA 529” when viewed in the context of the identified services.

Applicant pointed to several registered marks containing the term 529 or WA, but each mark also included other wording that produced a distinctive commercial impression (e.g., SMART529 and WALRAA). In any event, "the bare fact that the USPTO allowed six marks to register is of little persuasive value and does not dictate the result in this case." Each application must be considered in view of the record evidence. The Board is not "estopped or precluded from applying the statute because in a prior application an examining attorney (or attorneys) may have overlooked a relevant statutory provision and, perhaps erroneously, allowed an application to register."

The Board concluded that the proposed marks "identify a well-known geographic location from where Applicant’s services originate" and that "purchasers would make a services/place association between Applicant’s services and the place named in the mark." "The addition of the descriptive, if not generic, terms '529,' and 'Washington College Savings Plans' in the composite mark, does not detract from the marks’ primary significance as being geographically descriptive."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2020.

TTABlog Test: Is CITRUS CLUB for Cocktail Lounge Services Confusable With CITRUS KITCHEN for Restaurant Services?

The USPTO refused to register the mark CITRUS CLUB for "cocktail lounge services" [CLUB disclaimed], finding confusion likely with the registered mark CITRUS KITCHEN, in standard character and design form, for "restaurant services" [KITCHEN disclaimed]. Applicant argued that it uses its mark at "a reservation-only rooftop cocktail lounge atop a five-star hotel in Charleston, South Carolina," that "operates exclusively in the evenings, employs a dress code, and prohibits children under the age of 21 from entering," whereas the registered mark is used at a "sole store-front physical location in Rancho Cucamonga, California . . . focused on hand-crafted, healthy meal options . . . [and] is also open during the day, closes at 8:00 pm on Monday through Saturday, does not feature a dress code, and allows children." How do you think this came out? In re Citrus Club by Dewberry 334 Meeting Street, LLC. Serial No. 87860519 (October 14, 2020) [ not precedential] (Opinion by Judge Thomas W. Wellington).

The Services: Of course, in considering the second du Pont factor, the Board looks to the services recited in the the application and cited registration, not at the real marketplace conditions. See Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The evidence showed "a close and intrinsic relationship between cocktail lounges and restaurants." Examining Attorney Taylor Duenas submitted Internet evidence showing 6 different entities advertising bar or cocktail lounge services, as well as restaurant services, and he provided more than 20 use-based, third-party registrations, each registration covering cocktail lounge and restaurant services. That sufficed to show the relatedness of the involved services.

The evidence also showed that the involved services may be offered in the same location, e.g., a cocktail lounge may be either within a restaurant or within the same hotel as a restaurant. In the latter case, the hotel may advertise both be advertised on the hotel website. [Would they likely have the same name in the same hotel? - ed.] Again, the Board brushed aside the applicant's irrelevant argument that the actual facilities of the parties are a continent apart, since applicant is seeking a nationwide registration and registrant's rights are likewise nationwide.

The Marks:  The word CITRUS is the more distinctive term in each of the marks and, as the initial element, is more likely to be noticed or remembered by consumers. The primary connotation of each mark is dictated by the term CITRUS, rather than by the disclaimed terms, CLUB and KITCHEN. As to connotation, "[t]o the extent that the term CITRUS may be suggestive in the context of cocktail lounge and restaurant services, i.e., suggesting a citrus fruit ingredient in food or drinks being served, this same meaning would be conveyed by the two marks."

In light of the the strong resemblance in sound and appearance due to the shared term CITRUS, and the overall similar connotations and commercial impressions, the Board found the marks to be similar, ans so the first du Pont factor weighed in favor of likely confusion.

Strength of the Cited Mark: Applicant argued that CITRUS and KITCHEN are weak formatives, and therefore that the cited marks are entitled to a limited scope of protection. The Board, however, found applicant's third-party registration evidence to be "wholly inadequate" to show any weakness of CITRUS for restaurant services. Most of the registered marks were for unrelated goods and services, and none was for restaurant services. In some of the registered marks, the word CITRUS is used descriptively. Applicant did not submit any evidence of third-party marks containing the word CITRUS.

In sum, although there may be a suggestive meaning to the term CITRUS in connection with cocktail lounge and restaurant services, as discussed supra, we do not find this term to be commercially weak or so inherently weak as to allow the registration of Applicant’s mark. Accordingly, the DuPont factor regarding weakness is neutral in our likelihood of confusion analysis.

Conclusion: The Board found confusion likely, and so it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2020.

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

The TTAB recently ruled on 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 the Board affirms, by my calculation, some 90% of these refusals. Answer(s) will be found in the first comment.


In re Healthy Brands LLC, Serial No. 88101117 (October 6, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman). [Mere descriptiveness refusal of HEALTHY BRANDS for "cosmetics." Applicant maintained that the proposed mark "does not convey any particular function, characteristic, attribute, or use of the associated products because there is no general agreement as to what constitutes a 'healthy' cosmetic."]

In re Appian Corporation, Serial No. 87890076 (October 14, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Mere descriptiveness refusal of INTELLIGENT CONTACT CENTER for "Computer software development tools; Computer software for application and database integration; Computer software for use in customer relationship management (CRM); Computer telephony software; Digital telephone platforms and software in International Class 9" and for "Software design and development; Business technology software consultation services; Computer software consultancy; Computer software development; Customizing computer software; Design, development and implementation of software; Maintenance of computer software in International Class 42." Applicant argued that a "'contact center’ is 'a physical location out of which customer service operations are handled or an organizational business unit that is responsible for handling customer service operations,''' whereas applicant "sells a software platform, not a physical location or a customer service department."]In re Shimano North America Holding, Inc., Serial No. 88185346 (October 16, 2020) [not precedential] (Opinion by Judge Cindy B. Greenbaum). [Mere descriptiveness refusal of FLAT-SIDE for fishing lures. Applicant maintained that the proposed mark is suggestive of the identified fishing lures because the goods feature two sides that are curved, and neither side is flat.]

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

Text Copyright John L. Welch 2020.

MILLENNIAL FALCON for Live Entertainment Services Confusable with Star Wars' MILLENNIUM FALCON, Says TTAB

In a case decided under the ACR regime, the Board sustained Lucasfilm's opposition to registration of MILLENNIAL FALCON for live entertainment and production services, finding confusion likely with the mark MILLENNIUM FALCON, registered for toy vehicles and used for entertainment services, sound recordings, live musical concerts, films, television programs, computer and video games, comic books, amusement parks, games, and clothing. Pro se Applicant Ilan Moskowitz, a/k/a Captain Contingency, argued that his mark is used as "a parody of, and satirical comment on, corporate culture, and in particular the culture of the entertainment behemoth, Disney," which he claimed "swallowed the entire Star Wars franchise in the preceding years." As usual, the Board rejected the parody argument, but the claim of parody allowed the Captain to avoid a finding of bad faith adoption under the 13th du Pont factor. Lucasfilm Entertainment Company Ltd. LLC v. Ilan Moskowitz aka Captain Contingency, Opposition No. 91244449 (October 17, 2020) [not precedential] (Opinion by Judge Mark Lebow).

The Captain objected to certain documents submitted by Lucasfilm because they were not provided to him during discovery. However, the documents were dubbed "attorney's eyes only" by Lucasfilm and therefore, under the terms of the Standard Protective Order,  the Captain (as a party and individual appearing pro se) was not entitled to access to the AEO materials. 

The Board spent little time in shooting down the Captain's parody defense. "[W]e have long held that parody is a viable defense in a likelihood of confusion analysis only if the involved marks are otherwise not found confusingly similar. Here, the marks are virtually identical." [That seems to beg the question. How can you have a parody unless the marks are similar? And doesn't a parody make them dissimilar for purposes of Section 2(d)? - ed.]. The Board found that the first du Pont factor "weighs heavily in favor of finding a likelihood of confusion."

The Board noted that Lucasfilm uses the MILLENNIUM FALCON mark "as a merchandising mark, part and parcel of the STAR WARS mythos in promoting Opposer's films and music." The mark has been the subject of licenses for numerous collateral products. The Board took judicial notice that "the licensing of commercial trademarks on 'collateral' products [and services] has become a part of everyday life."

The record shows that Opposer has since 1977, and more aggressively since Disney took over its producing, marketing, distribution, and sales in 2012, used its STAR WARS trademarks, characters, elements, and brands, including the fictional MILLENNIUM FALCON spaceship, with a wide variety of products and services including entertainment services, theater productions, television programs, motion picture films, comic books, books, toys, dolls, sporting goods, bags, personal-care products, linens, towels, apparel, food, online games, computer games, video games, music, and mobile applications.

Furthermore, Lucasfilm has used MILLENNIUM FALCON as the name of its spaceship in conjunction with STAR WARS films, television series, musical recordings, and live concerts. "The 'element' to which Opposer gave the name MILLENNIUM FALCON has been used in the various STAR WARS stories for so many decades, and is an integral part of the stories, to the point that it is akin to a character in the stories."

We find, similarly, that because Opposer has used MILLENNIUM FALCON as a merchandising mark with respect to a variety of goods; because consumers recognize that, in the general marketing environment, merchandising marks are used to identify a variety of goods and services; and because Opposer has used the term MILLENNIUM FALCON in connection with the promotion of its STAR WARS films, television series, musical recordings, and live concerts, we find that, in the sense discussed in the Recot and Hewlett Packard cases, Applicant’s services and Opposer’s goods and services are related.

The Captain’s musical performances necessarily include the same venues in which Lucasfilm provides its STAR WARS concerts. However, there was insufficient evidence that his other services are provided in the same channels and so the third du Pont factor slightly favored Lucasfilm.

As to the strength of the MILLENNIUM FALCON mark, the Board found it to be a fanciful, coined term and, therefore, an inherently strong mark. As to commercial strength, the Board was not persuaded that the MILLENNIUM FALCON mark enjoys the highest level of renown. However, it is "commercially very strong," and so the du Pont fame factor weighed in favor of a finding of likelihood of confusion.

The Captain pointed to a lack of evidence of actual confusion, but the Board fended off that argument, pointing out that the opposed application is based on intent-to-use, and noting that the Captain offered evidence of only a handful of performances under the MILLENNIAL FALCON Mark since 2016, mostly in one city, and he provided no attendance figures, box office receipts, or other sales information".

Turning to the catch-all 13th du Pont factor, the Bord found that the Captain adopted the mark MILLENNIAL FALCON with the intention of trading off of the MILLENNIUM FALCON mark. "Such intent is strong evidence that confusion is likely as such an inference is drawn from the imitator’s own expectation that consumers will associate his mark with Opposer’s."

May the Fourth (be with you)

However, because the evidence also showed that Applicant intended to parody the Lucasfilm mark, the Board considered the thirteenth factor to be neutral.

The Board concluded that confusion is likely, and so it sustained the opposition, declining to reach Lucasfilm's dilution claim.

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TTABlogger comment: Should an applicant's intent be a factor in determining likelihood of confusion? What if an applicant persuaded the Board that he didn't intent to cause confusion? Would that be a factor in his favor? Or is the question whether consumers would be confused regardless of the applicant's intent? 

On that point, see Thomas L. Casagrande's article, "A Verdict For Your Thoughts? Why an Accused Trademark Infringer's Intent Has No Place in Likelihood of Confusion Analysis," 101 Trademark Reporter 1447 (September-October 2011). [TTABlogged here].

Text Copyright John L. Welch 2020.

Decisions of the Supreme Court, the CAFC, and the TTAB on Registrability Issues: July 2019 – September 2020

I have been writing the monthly "Inside this Issue" section of Allen's Trademark Digest for about twenty years, and occasionally contribute an article under another section called "Keeping Tabs on the TTAB®." The upcoming November 2020 issue includes my article entitled, "Decisions of the Supreme Court, the Federal Circuit, and the Trademark Trial and Appeal Board on Registrability Issues: July 2019 – September 2020. [pdf here]. 

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Text Copyright John L. Welch 2020.

TTABlog Test: Is Beer Related to "Alcoholic Beverages Except Beer" for Section 2(d) Purposes?

We often scoff at the TTAB's pronouncements that there is no per se rule that all alcoholic beverages are related, but put your cynicism aside while you read this case. The Board sustained in part an opposition to registration of the mark EIDOLON for "spirits, excluding distilled blue agave liquor and mezcal; wine," finding confusion likely with Campari's registered mark ESPOLON for "alcoholic beverages except beers." However, the Board dismissed Campari's Section 2(d) claim against EIDOLON for "beer." Campari Mexico, S.A. de C.V. v. Grant Toland, Alexander Prenta and Russ Bennett, Opposition No. 91250805 (August 31, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Marks: The parties and the Board all agreed that "both marks are not English word[s] and are therefore not immediately likely to be translated in the minds of English speakers.” To the extent the meaning of the marks are known to consumers, they are dissimilar. [ESPOLON is a Spanish word meaning "spur." EIDOLON is an obscure term derived from Greek literature]. The Board concluded that the marks are "more similar than dissimilar in appearance and sound, somewhat different in connotation and, overall, convey commercial impressions that are more similar than dissimilar." The first du Pont factor favored Campari.

Strength of the ESPOLON Mark: The Board found the mark ESPOLON to be arbitrary and inherently distinctive, and as to commercial strength, Campari had enjoyed "some commercial success and media recognition for its goods under the ESPOLON mark." Applicants stipulated that “Opposer’s ESPOLON brand is commercially strong and entitled to a broad scope of protection.”  The Board concluded that ESPOLON is a strong mark for alcoholic beverages and is entitled to a "broad scope of protection on the spectrum of 'very strong to very weak.'"

The Goods: As to Applicants' "spirits, excluding distilled blue agave liquor and mezcal; wine," the Board found these goods to be legally identical to Campari's "alcoholic beverages except beer." Applicants admitted same in their Answer to the Notice of Opposition.

As to Applicant's "beer," however, the Board was "not concerned that Opposer's goods specifically exclude beer."

To support a finding of likelihood of confusion, it is not necessary that the goods be identical or even competitive. The goods need only be “related in some manner or … the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.” *** The “question is whether, under all the circumstances, consumers encountering the goods sold under these marks would mistakenly believe that they share or are affiliated with or sponsored by a common source.”

Campari submitted evidence that two beverage retailers offer distribution and delivery of various beers, wines and spirits, including tequila and mescal. Applicants, on their Facebook page, discuss the production of various alcoholic beverages and explain how the same ingredients can be used to create wine, spirits and beer. On social media, Applicants publish educational posts on various distilled spirits and reviews of beers. Various articles suggest and review drinking establishments offering beer and wine as well as distilled spirits.

The Board, however, found that "the record evidence is tenuous with regard to establishing the relatedness of Opposer’s alcoholic beverages and Applicant’s beer." Campari relied heavily on decisions of the Board and its reviewing courts that found beer related to other alcoholic beverages.

Those decisions clearly were grounded in the evidentiary records presented therein, which appear to be more extensive than the record in the case presently before us. Certainly there is no per se rule that different types of alcoholic beverages are related, and reliance upon prior decisional law is not a substitute for presenting an evidentiary record to support the relatedness of beer and alcoholic beverages.

The Board concluded that "[t]he evidentiary showing in this case falls somewhat short of establishing that consumers are likely to believe that beer and other alcoholic beverages emanate from a common source." Therefore, it found that Campari had failed to establish that Applicants’ "beer" is related to Campari's "alcoholic beverages except beers."

Conclusion: Alas, Campari's glass was half full.

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TTABlogger comment: Do you think Campari will seek review by way of civil action, where it could submit additional evidence?

Text Copyright John L. Welch 2020.

TTABlog Test: How Did These Three Section 2(d) Appeals Turn 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 Fast Casual Concepts Inc., Serial No. 88403075 (October 2, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of the mark shown immediately below, for "restaurant services" in view of the registered mark HOLY COW! for "bar and restaurant services." Applicant pointed to seven third-party uses of "HOLY COW" in connection with restaurants services in an effort to show the weakness of the cited mark, and it argued that the marks have different connotations and commercial impressions because the exclamation HOLY COW! in Registrant’s marks is a reference to a phrase used by a famous baseball announcer Harry Caray.].

In re Kendall S. Oliver, Serial No. 88453982 (September 30, 2020) [non precedential] (Opinion by Judge Cindy B. Greenbaum) [Section 2(d) refusal of the mark CAMBRIDGE FITNESS for "Health club services, namely, providing instruction and equipment in the field of physical exercise" [FITNESS disclaimed] in view of the registered mark CAMBRIDGE for "“counseling services, namely, counseling others in the field of weight reduction and control and nutrition” and the identical mark for “Sporting and cultural activities, namely, organizing competitive sporting events and community cultural events; providing sports coaching; sports instruction services." [owned by two different registrants]. Applicant submitted evidence of 15 websites involving health-related businesses with CAMBRIDGE-formative names, in arguing that CAMBRIDGE is a weak formative.].

 

In re Champlain Cable Corporation, Serial No. 87625822 (October 1, 2020) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal of EXRAD ERGOFLEX for "battery cable, insulated copper door wires covered in flexible jacket material," in view of the registered mark ERGOFLEX & Design, for "cables, electric; electric wires; electric wires and cables; electrical terminal boxes; electrical terminal blocks; connections for electric lines; couplings, electric; wire connectors; electric junction boxes; electrical plugs and sockets; plug connectors; electrical connectors; electric connectors." Applicant maintained that its goods are not encompassed by the goods in the registration, that "ergoflex" is highly suggestive of the flexibility of the goods, and that its ownership of a registration for EXRAD shows that that term is a strong umbrella brand that distinguishes the marks at issue.].

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

Text Copyright John L. Welch 2020.

TTABlog Test: Is MASTER RANCHER Confusable With RANCHMASTER for Footwear?

The USPTO refused to register MASTER RANCHER, finding a likelihood of confusion with the registered mark RANCHMASTER, both for footwear. Applicant True Value argued that the meaning and commercial impressions of RANCHMASTER and MASTER RANCHER are distinct, making confusion therefore unlikely, that "MASTER" is a house mark, has a family of MASTER marks, and that its prior registration of MASTER RANCHER for gloves should pave the way to registration. How do you think this came out? In re True Value Company, L.L.C., Serial No. 88335947 (October 2, 2020) [not precedential] (Opinion by Judge Melanye K. Johnson).The Board found the marks to be "highly similar." The transposition of the words does not create and new meaning. 

Applicant uses one of the alternate definitions of “master”—“a man in charge of [a particular ranch]”—to argue that the meaning and commercial impressions of RANCHMASTER and MASTER RANCHER are distinct. *** The word “master,” as it is used in the Registered Mark, RANCHMASTER, could also evoke images of a greatly skilled or proficient rancher; we have no evidence to the contrary.

True Value claimed that MASTER is a house mark, pointing to its marks MASTER MECHANIC, MASTER ELECTRICIAN, MASTER PLUMBER, MASTER PAINTER, and MASTER TRADESMAN. However, True Value failed to make those registrations of record, and so the Board dismissed that argument.

As to the "family of marks" argument, that argument is not available to an applicant in an ex parte Section 2(d) appeal.

True Value pointed to sixteen sets of registrations, in a variety of fields, for marks in which the component words were transposed, contending that the USPTO has a policy of allowing such marks to register. The Board was unimpressed, observing once again that each case must be decided on its own record.

Finally, True Value argued that its ownership of a prior registration for the mark MASTER RANCHER for gloves should provide a basis for registration. The Board noted that "[w[here an applicant owns a prior registration that is over five years old and the mark is substantially the same as in the applied-for application, this can weigh against finding that there is a likelihood of confusion." Inn at St. John’s, 126 USPQ2d at 1746 (citing In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399 (TTAB 2012)).

The Board pointed out, however, that Strategic Partners "addressed the 'unique situation” of coexistence of an applicant’s existing registration with a cited registration for over five years." The goods in the prior registration were identical with those of the new application. Here, the prior registration was only two years old, and the subject application covers "footwear," thus moving closer to the cited registration.

Accordingly, and in contrast to our finding in Strategic Partners, we find that Applicant’s prior registration does not “tip the scale” and obviate a likelihood of confusion between Applicant’s Mark and Registrant’s Mark.

And so the Board affirmed the refusal to register.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2020.

Differences between MONSTER and CLEVELAND MONSTERS and Lack of Actual Confusion Lead Board to Dismiss Section 2(d) Opposition

In an exhaustive 77-page decision, the Board dismissed Monster Energy's opposition to registration of the mark CLEVELAND MONSTERS & Design for a variety of goods and services in eight classes, finding that opposer had failed to prove a likelihood of confusion with its mark MONSTER used and/or licensed for beverages and various other products and services. The differences in the marks and the lack of proof of any actual confusion outweighed the other pertinent DuPont factors. The Board also found that Monster Energy acquiesced to applicant's use and registration of the CLEVELAND MONSTERS mark by its silence regarding applicant's use for many years of the LAKE ERIE MONSTERS mark. This blog post will touch on the highlights of the decision, but the reader is urged to read the entire opinion. Typical of many of Judge Bergsman's opinions, it is a primer on basic trademark principles applied by the TTAB. Monster Energy Company v. Cavaliers Hockey Holdings, LLC, Opposition No. 91240680 (October 6, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman).

In 2016 applicant changed the name (and logo) of its American Hockey League (AHL) team from LAKE ERIE MONSTERS, which it had used since 2006, to CLEVELAND MONSTERS. The Board found that Opposer has priority as to the goods and services in its pleaded registrations, and as to the common law stand-alone mark MONSTER for beverages since 2002.

Opposer claimed that its MONSTER and MONSTER-formative marks are famous. Applicant introduced copies of its own 15 existing registrations for CLEVELAND MONSTERS of LAKE ERIE MONSTERS and dozens of third-party registrations for marks containing the word MONSTER. From these registrations, the Board concluded that "the word 'Monster' is highly suggestive for all identified goods and services other than beverages and, therefore, it falls on the inherently or conceptually weaker side of the spectrum for those goods and services." However, there were no third-party MONSTER marks for beverages, and so the Board found that Opposer’s MONSTER mark is arbitrary and, therefore, an inherently or conceptually strong mark for beverages. As to commercial strength, the Board found MONSTER to be "commercially strong, if not famous" for beverages.

We find that Opposer’s MONSTER marks are inherently or conceptually strong, as well as commercially very strong, if not famous, in connection with beverages, and, therefore, entitled to a broad scope of protection in connection with these goods. However, because Opposer’s MONSTER marks are highly suggestive, they are entitled to a more narrow scope of protection with respect to other goods and services.

The Board found the lack of actual confusion to be a significant factor. Opposer had participated in a co-promotion for the LAKE ERIE MONSTERS in 2008 and both parties agree that they offer their goods and services in the same channels of trade to the same classes of consumers. Therefore there was "reasonable opportunity for actual confusion." This lack of any evidence of actual confusion weighed against finding that there is a likelihood of confusion.

As to the marks, the elements other than MONSTER in applicant’s mark, "particularly the inclusion of the geographic location Cleveland, distinguish the marks by engendering different commercial impressions."

[B]ecause Applicant’s mark identifies a sports team, consumers encountering both marks will distinguish Applicant’s mark from Opposer’s marks despite some fans referring to the CLEVELAND MONSTERS as “The Monsters.” This situation is analogous to sports fans distinguishing teams with the same name (e.g., Auburn Tigers, Missouri Tigers, Princeton Tigers, Clemson Tigers, Detroit Tigers, etc.).

The Board concluded that the marks are more dissimilar than similar.

Applicant's goods and services in class 9, 28, and 35 are not related to those of opposer. Those in classes 14, 16, 25, and 35 are identical or partly identical to those of opposer. The services in class 41 are related in part. The Board found that the goods and services travel in the same or overlapping channels of trade.

Finding that "t]he lack of any reported instances of confusion and the dissimilarity of the marks carry greater weight in our analysis," the Board concluded that "the mark CLEVELAND MONSTERS and design for the applied for goods and services is not likely to cause confusion with Opposer’s MONSTER, MONSTER ENERGY, and M MONSTER ENERGY and design marks for the goods and services in connection which Opposer has registered and uses those marks."

The Board (as usual) rejected applicant's prior registration (Morehouse) defense because the goods and services in applicant's prior registrations are not essentially the same as those in the applications here opposed.

Finally, the Board found that opposer had full knowledge of applicant's use of the word MONSTERS for a decade, and its silence regarding that usage constituted acquiescence. The lack of any incidents of actual confusion showed that confusion is not inevitable.

And so the Board dismissed the opposition.

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TTABlogger comment: Bully for the Cleveland Monsters!

Text Copyright John L. Welch 2020.

FEYONCE Confusable with BEYONCE' and YONCÉ for Clothing, Says TTAB

The Board affirmed a refusal to register the mark FEYONCE for various clothing items, finding a likelihood of confusion with the registered marks BEYONCE' and YONCÉ for overlapping clothing items. Both cited registrations include a consent statement indicating that the mark identifies a living individual (Beyonce' Knowles ) whose consent is of record. Applicant Andre Maurice asserted that the likelihood of confusion issue was "settled" by the withdrawal with prejudice of a trademark infringement action brought by Beyonce' against him in the Southern District of New York, after the court denied Beyonce's summary judgment motion. In re Andre Maurice, Serial No. 86834686 (October 6, 2020) [not precedential] (Opinion by Judge Frances S. Wolfson).

District Court Judgment: The Board ruled that the district court case has no bearing on this appeal. There is no issue preclusion for three reasons: (1) the USPTO was not a party to the civil action; (2) the issues raised in the district court and those raised here are different, at least in part, and different analyses apply: and (3) the court did not render a final judgment on the issue of likelihood of confusion but only denied Beyonces' summary judgment motion.

As to the second point, the Board noted that the district court, in its decision on summary judgment, relied on "extrinsic evidence" showing that applicant sells clothes directed to "fiancé purchasers." In this appeal, the Board must consider the goods as recited in the application, and may not consider extrinsic evidence as to the manner of use in the marketplace. 

The Board also found that there was no claim preclusion because the claims in the lawsuit were different from those in this case. "The former claim is, in essence, a claim of injury resulting from applicant’s use of its mark in commerce; the latter claim, in essence, is a claim that opposer believes it would be damaged by registration of applicant’s mark."

Likelihood of Confusion: As to the overlapping goods, the Board must presume that they travel in the same normal channels of trade to the same classes of consumers. This overlap also reduces the degree of similarity required between the mark to support a likelihood of confusion finding.

As to the marks, registrant's mark YONCÉ might be perceived as a shortened version of FEYONCE. The mark BEYONCE' differs from FEYONCE by a single letter and by the ending apostrophe, which is "hardly noticeable and does not change the commercial impression of the mark." The Board found that BEYONCE' and FEYONCE look and sound alike (Although applicant's mark "could be pronounced as 'fiancé,' the mark could just as plausibly be pronounced as 'fey-on-cé' and be perceived as a direct play on the name of the popular singer Beyoncé.").

As to meaning, FEYONCE is a fanciful term without specific meaning. "Applicant may not always use his mark on goods that are "marriage-themed" and thus consumers may not always be inclined, as Applicant contends, to view the term as the equivalent of "fiancé."

The mark also alludes to the popular singer Beyoncé, and the registrations for the marks BEYONCE’ and YONCE state that they identify “a living individual.” Consumers who recognize the allusion to Beyoncé are likely to believe that her company (the owner of the registered marks BEYONCE’ and YONCE) has sponsored, or is affiliated with, Applicant. “Section 2(d) of the Trademark Act protects not only against confusion as to source, but also as to affiliation, connection or sponsorship.”

The Board found that the marks are similar in meaning and connotation, and concluded that the first DuPont factor supported the Section 2(d) refusal.

Conclusion: Balancing the relevant DuPont factors, the Board found confusion likely and it therefore affirmed the refusal.

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TTABlogger comment: What about that accent mark on applicant's specimen of use?

Text Copyright John L. Welch 2020.