Precedential No. 40: TTAB Denies Summary Judgment Motion on "Standing" Issues in PURISIMA Cancellation Proceeding

In this proceeding seeking cancellation of a registration for the mark PURISIMA & Design for wine, Respondent Transcend moved for summary judgment on two grounds: that Petitioner Spanishtown (1) is prohibited from seeking cancellation because it is suspended from doing business in its state of incorporation, and (2) lacks "standing" to assert the alleged date of first use underlying its Section 2(d) claim because the mark was used by two individuals who are not parties to this proceeding. The Board denied the motion. Spanishtown Enterprises, Inc. v. Transcend Resources, Inc., 2020 USPQ2d 11388 (TTAB 2020) [precedential] (Order by the Board).

"Standing": The Board first observed that the CAFC, in Australian Therapeutics, recently pointed out that the inquiry regarding "standing" "is more accurately referred to as an entitlement to a statutory cause of action." Even more recently, the CAFC, in Corcamore, ruled that the proper analytical framework to be applied in determining entitlement to a cause of action under Section 13 and 14 of the Lanham Act is that of Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 129-134 (2014). Under Lexmark, the Board must assess "whether the party demonstrated (i) an interest falling within the zone of interests protected by the statute and (ii) proximate causation." 

The CAFC in Corcamore noted that there is “no meaningful, substantive difference in the analysis” between the requirements of Lexmark compared to the CAFC’s and the Board's prior decisions that analyzed the issue in terms of whether a party demonstrated a "real interest” in the proceeding and a "reasonable belief in damage" by the registration of the mark. 

As the [CAFC] explained, demonstrating a real interest in opposing or cancelling a registration of a mark satisfies the zone-of-interests requirement, and demonstrating a reasonable belief in damage by the registration of a mark demonstrates damage proximately caused by registration of the mark. Corcamore at 7-8. Thus, our prior decisions and those of the Federal Circuit assessing a party’s “standing” under Sections 13 and 14 remain applicable despite the change in nomenclature of the inquiry to entitlement to a statutory cause of action. Id.

Petitioner's Capacity to Sue: Respondent Transcend maintained that because Spanishtown stands suspended by the State of California for failure to pay certain corporate taxes and penalties, Spanishtown is precluded by FRCP 17(b) from pursuing its petition for cancellation because it lacks the capacity to sue or be sued. The Board agreed with Spanishtown that this is an issue of capacity and is different from the question of entitlement to bring a statutory cause of action. 

Under FRCP 17(b) a party that intends to raise the issue of capacity to sue "must do so by specific denial, which must state any supporting facts that are peculiarly within the party's knowledge." The specific denial should be made in the party's responsive pleading or via motion prior to the answer.

Here Transcend failed to raise the issue of capacity in a timely manner. The general denial in its answer that it lacked knowledge or information regarding Spanishtown's corporate status was not sufficient. Therefore, the Board concluded that Transcend failed to give fair notice of this defense and so the Board denied its summary judgment motion as to this ground. However, the Board allowed Transcend twenty days to amend its answer to include this defense, while noting that a suspended corporation, upon revival after payment of taxes, may proceed before the Board.

Use of Mark by Individual Owners: Transcend contended that Spanishtown is not entitled to bring a petition for cancellation based on priority and likelihood of confusion because it cannot rely on the dates of first use of the mark PURISSIMA for vodka by the corporation's individual owners before the corporation was legally created. Wrong again, said the Board.

Transcend couched this argument in terms of "prudential standing" but the Board again pointed out that the Lexmark framework applies and the issue "is not properly described as a question of  'prudential standing.'" See Lexmark, 109 USPQ2d at 2067.

Furthermore, it is well established that a party may prove priority on the basis of prior use by a predecessor in interest. See, for example, Metro Traffic Control, Inc. v. Shadow Network Inc., 104 F.3d 336, 41 USPQ2d 1369, 1372 (Fed. Cir. 1997) (Board correctly found that petitioner’s predecessor-in-interest used the mark before respondent’s predecessor-in-interest). Spanishtown alleged that “[i]t is owned by Cesar and Ulrike Bisono,” and that the corporation and the Bisonos have been using a “virtually identical” mark since October 2014. In a prior order, the Board had found these allegations, if proven, sufficient to establish entitlement to a statutory cause of action under Section 14. 

And so the Board denied Transcend's motion for summary judgment as to the second ground.

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TTABlogger comment: A tip of the TTABlog tophat to Spanishtown's counsel and FOB Paul Reidl.

Text Copyright John L. Welch 2020.

TTABlog Test: Four Recent Section 2(d) Appeals - How Did They Come Out?

About a dozen years ago, a TTAB judge 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 four recent decisions in appeals from Section 2(d) refusals.  How do you think these came out? [Answers in first comment].

In re Michel Mercier, Serial No. 79246019 (November 24, 2020) [not precedential] (Opinion by Judge David Mermelstein). [Section 2(d) refusal of Romy (standard characters) for "Hair brushes, hair combs, hair styling comb and brushes, rotary hair brushes, electrically heated hair brushes" in view of the registered mark ROMY for soaps, perfumery, cosmetics, hair lotions, hair dyes, shampoos, hair conditioners, and hair sprays. Applicant argued that "Registrant’s products are only available from their foreign website and are made to be home mixed by the purchaser with a special device."]

In re Hong Kong NETEASE Interactive Entertainment Limited, Serial No. 88256950 (November 24, 2020) [not precedential] (Opinion by Judge Jonathan Hudis). [Section 2(d) refusal of RANGERS OF OBLIVION for downloadable computer game software and for providing online computer games, in view of the registered mark OBLIVION for "computer game programs; providing downloadable computer game programs." Applicant argued that "RANGERS" is the dominant portion of its mark, since it is the first word in the mark.]

In re Win Win Asian Restaurant, LLC, Serial No. 88412518 (November 24, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo). [Section 2(d) refusal of WIN WIN ASIAN KITCHEN (ASIAN KITCHEN disclaimed) for "restaurant services" in view of the registered mark WIN WIN for "take out restaurant services; restaurant services." Applicant contended that the owner of the cited registration "provides as a core business a gas station and convenience store whose 'primary business model is to attract customers who primarily want gasoline,' whereas Applicant’s services 'are only restaurant services.'"]

In re Sergey Iotko, Serial No. 87498790 (November 25, 2020) [not precedential] (Opinion by Judge George C. Pologeorgis). [Section 2(d) refusal of the mark HOMY & Design for, inter alia, power cables and mobile telephone accessories, namely, belt clips, in view of the registered mark HOMYA for, inter alia, electric cables and cell phone cases. Applicant argued that the stylization of his mark is sufficient to distinguish the marks because his mark "creates a distinct phonetic and connotative impression 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.

TTABlog Test: How Did These Three Failure-to-Function Appeals Turn Out?

It seems that failure-to-function refusals are increasing in frequency. Just in the last few days,the Board issued decisions in three such cases. Are trademark applicant's overreaching? Have people come to think that if they are first to file they will "own" the phrase or term? Anyway, let's see how you function as a TTAB judge. [Answers in first comment].

In re Nancy D. Greene, Serial No. 87830154 (November 18, 2020) [not precedential] (Opinion by Judge Thomas Shaw, dissent by Judge Cindy B. Greenbaum). [Refusal to register the term LEGAL LANDMINES on the Supplemental Register, on the ground of failure to function as a service mark for business coaching and educational services. The Examining Attorney argued that the phrase is "“a commonplace term, message, or expression widely used by a variety of sources in the applicant’s field that merely conveys an ordinary, familiar, well-recognized concept or sentiment, namely, that the provided coaching and educational services are for assisting businesses in avoiding concealed yet incipient crises relating to the law.”]

In re Donald E. Moriarty, Serial No. 86367823 (November 23, 2020) [not precedential] (Opinion by Judge Thomas Shaw). [Failure-to-function refusal of WORST MOVIE EVER! for "parody of motion picture films and films for television comprising comedies and dramas featuring a mashup of different motion picture films." The Examining Attorney maintained that the term "is merely a commonplace slogan used by a variety of sources and merely conveys an ordinary, familiar or well recognized concept or sentiment, that is, '[t]he applied-for mark conveys the ordinary and well recognized concept that the movie in question is the most wanting in quality, value or condition of all time.'"]

In re PIF Group LLC, Serial No. 88084519 (November 23, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Refusal to register the proposed mark SHE KNEW SHE COULD on the ground that the phrase fails to function as a trademark for a various goods in classes 14, 16, 18, 21, 25, and 28, including jewelry, blank journals, beach bags, drinking glasses, clothing, and playing cards. The Examining Attorney asserted that use of SHE KNEW SHE COULD "convey[s] the ordinary, familiar, well-recognized sentiment of female empowerment or affirmation [and] is consistent with the plain meaning of the wording that comprises the expression. … [A] female is aware that she is able."].

 
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TTABlogger comment: See any WYHA?s here?

Text Copyright John L. Welch 2020.

TTABlog Test: Is DRIVEN GOLF for Golf Training Aids and Apparel Confusable with DRIVEN BY PING for Golf Clubs?

[This guest post was written by Kira-Khanh McCarthy, a law clerk in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. Applicant Driven Golf, Inc. made a bogey on its appeal from the USPTO’s final refusal to register its mark, DRIVEN GOLF [GOLF disclaimed] for golf training aids and apparel. The Examining Attorney refused registration based on: (1) a failure to submit an acceptable identification of goods and (2) a likelihood of confusion with the registered mark DRIVEN BY PING for golf clubs. As to the first refusal, Driven Golf argued that “it is not necessary that the Applicant define each and every good under the identification of goods.” As to the second refusal, Applicant asserted a dissimilarity in the nature of the goods; dissimilarity of the established, likely-to-continue trade channels; and dissimilarity of the marks. Which argument do you think won? In re Driven Golf, Inc., Serial No. 88215365 (November 19, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo).

  Identification of Goods: Applicant’s identification reads as follows:

Golf training aids, namely tangible articles designed to attach to a golfer and/or golf club and improve a golfer’s swing in Class 9; and Apparel, namely T-shirts, shirts, hats, caps, sweatshirts, pants, sweat suits, hoodies and socks in International Class 25.

The Examining Attorney maintained that the identification of goods in Class 9 is indefinite because it “does not specify whether [the training aids are] electronic in nature or not” and thus the goods may be classified in either Class 9 or Class 28. Applicant contended that “the identification of goods is specific, definite, clear, accurate, and concise. Applicant promotes a series of different training aids that meet the offered description. It is not necessary that the Applicant define each and every good under the identification of goods.”

The Board recognized that the “USPTO has discretion to require the degree of particularity deemed necessary to identify with specificity the goods or services covered by the mark.” See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007); In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A., 109 USPQ2d 1593, 1597 (TTAB 2014). It then found that Applicant’s use of the words “aid” and “tangible articles” in its Class 9 identification is “impermissibly vague because it is impossible to determine the exact nature and classification of the goods.” For those reasons, the Examining Attorney’s refusal based on a requirement for a more definite identification of Applicant’s Class 9 goods was affirmed.

Likelihood of Confusion: Next, the Board reviewed the Section 2(d) refusal. It first considered the similarity or dissimilarity and the nature of the goods. The Examining Attorney submitted two used-based registrations “identifying, inter alia, golf clubs and various golf training aids under the same mark,” and evidence that a third party, unrelated to Applicant, provides golf instruction, golf fitness and golf videos under the name Driven Golf, Inc. Nevertheless, the Board concluded that “this very sparse record is insufficient to establish that consumers are likely to believe Applicant’s goods emanate from the same sources as those identified in the cited registration.”

Second, the Board looked at the similarity or dissimilarity of established, likely-to-continue trade channels. Pulling from its analysis on the nature of the goods, the Board found “very little evidence that the[] goods are available in the same channels of trade to the same consumers.”

While we recognize that golf clubs, golf training aids and clothing that is broadly identified to include clothing worn while golfing may be available in common trade channels, there is insufficient evidence in the record that these goods travel in the same channels of trade or may be purchased by the same classes of purchasers.

Finally, the Board considered the similarity or dissimilarity of the marks. It found that “the only similarity between the two marks is the common word DRIVEN, which appears as the first word in both marks.” Further, it agreed with the Examining Attorney (and Applicant) that the registered mark, DRIVEN BY PING, connotes PING-branded golf clubs (i.e., golf clubs made “by PING”). Meanwhile, Applicant’s mark suggests that its golf aids and clothing will be used by consumers who are “driven” to improve their golf game.

Although Applicant’s mark and that in the cited registration share a common first word, we conclude that when considered in their entireties, the marks are more dissimilar than similar in appearance, sound and particularly connotation and that, when viewed as a whole, the marks engender dissimilar commercial impressions.

And so, the Board reversed the likelihood of confusion refusal as to both classes of goods. However, the refusal based on the requirement for a more definite identification of Applicant’s goods listed in Class 9 was affirmed.

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TTABlogger comment: How did you do?

Text Copyright Kira-Khanh McCarthy 2020.

Precedential No. 39: TTABlog Test: Is "CO-OP" Merely Descriptive of Bicycles Sold by a Co-op?

The USPTO refused to register the term CO-OP for "Bicycles, bicycle seats, bicycle wheels, bicycle tires, bicycle handlebars, bicycle forks, bicycle handle bar stems," finding it to be merely descriptive of the goods under Section 2(e)(1). The Examining Attorney maintained that the term "co-op" merely describes something about Applicant REI, namely, that Applicant is a cooperative business. How do you think this came out? In re Recreational Equipment, Inc., 2020 USPQ2d 11386 (TTAB 2020) [precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon].

Applicant REI conceded that it is indeed a co-op. The Examining Attorney relied on In re Major League Umpires, 60 USPQ2d 1059 (TTAB 2001), and, according to the Board, effectively applied a per se rule: "she found the mark merely descriptive of the source and then refused registration on the basis that the mark merely describes the goods." 

In Major League Umpires the Board broadly stated that, "[i]t is well-established that a term which describes the provider of goods or services is also merely descriptive of those goods and services." Id. at 1060 (citing In re E. I. Kane Inc., 221 USPQ 1203 (TTAB 1984) and cases cited therein). However, when that statement is read in context, "it becomes clear that Major League Umpires does not require or support the use of a per se rule."

The mark at issue there was MAJOR LEAGUE UMPIRE. The evidence established that the applicant was owned and operated by three National League umpires. In addition, these three umpires "actually designed some of the goods, a fact touted in the applicant’s advertising." The Board also found that major league umpires are among the class of purchasers of the goods, and the mark described the goods as being of a type used by major league umpires.

A careful reading of the Major League Umpires decision suggests the Board was not making a broad holding that all terms that describe something about the source of goods are per se unregistrable as merely descriptive of the goods, but rather the Board was stating that this result followed given the facts of the Major League Umpires case. The mark went well beyond simply describing something about the source of the goods. It also described characteristics of the goods.

The Board concluded “the mark MAJOR LEAGUE UMPIRE would immediately convey to such purchasers a characteristic of the gear/clothing, i.e., that it is designed by a major league umpire." Thus Major League Umpires did not apply a per se rule, but rather found the mark to be merely descriptive of the goods in at least three different ways: as to the source, the nature of the designer, and a portion of the classes of consumers.

The Board acknowledged that in some cases a proposed mark that provides specific information about the source of the goods or services will be merely descriptive.

When the mark describes a characteristic of the source, and that characteristic is used to actively promote the goods, the mark probably also describes a feature of the goods for purposes of Section 2(e)(1). See In re MBNA Am. Bank, N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir. 2003) (emphasis on the MONTANA SERIES and PHILADELPHIA CARD marks in promotional materials signifies that they are “a significant feature of MBNA’s method of promoting and marketing these affinity credit cards as well as of the services themselves.”).

When a mark describes something about the source of the goods or services, the evidence should be carefully evaluated to determine whether the mark also describes something about the goods or services.

This principle was particularly applicable in Major League Umpires because of the nature of the goods. If the goods at issue in Major League Umpires had been luxury automobiles or fly fishing gear or sewing machines, a different result may have been reached. It is the connection between the mark and the nature of the goods that supported the Section 2(e)(1) refusal in Major League Umpires. Thus, the Major League Umpires decision should not be read as supporting a per se rule of law.

In this case, there was no evidence "showing what consumers are likely to think when they see the CO-OP mark on bicycles or bicycle components." There was no evidence of third-party use of "co-op" in connection with bicycles or parts, no descriptive use in advertising, or of such usage by consumers or the trade. Although some consumers may be aware that Applicant REI is a co-op (the largest consumer cooperative in the country), "the record does not support a finding that the mark CO-OP immediately conveys to average consumers information about a quality, feature, or characteristic of bicycles and the other goods identified in the application."

Finding the USPTO's proofs to be inadequate, the Board reversed the refusal.

Read comments and post your comment here.

TTABlog note: WYHRR? Would you have refused registration?

Text Copyright John L. Welch 2020.

WYHA? TTAB Affirms 2(e)(1) Refusal of ORIGINAL FOLDED PIZZA as Merely Descriptive of Pizzas

[This guest post was written by Kira-Khanh McCarthy, a law clerk in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. No matter how you slice it (or fold it in this case), Applicant A Pizza LLC was unable to overcome the PTO’s Section 2(e)(1) refusal to register ORIGINAL FOLDED PIZZA [PIZZA disclaimed] for pizzas. The Board considered the individual elements of Applicant’s proposed mark and found that, as a whole, ORIGINAL FOLDED PIZZA is “no more than the sum of its descriptive parts.” Would you have appealed? In re A Pizza LLC, Serial No. 88283932 (November 17, 2020) [not precedential] (Opinion by Judge Christopher Larkin).

The Board acknowledged that its analysis must be two-fold: “Indeed, we are ‘required to examine the meaning of each component individually, and then determine whether the mark as a whole is merely descriptive.’” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1758 (Fed. Cir. 2012). It then considered the parties’ arguments and evidence.

Examining Attorney Udeme U. Attang maintained that the proposed mark “is highly descriptive because it identifies a feature and characteristic of applicant’s pizza goods” and that “both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.” As evidence, she submitted dictionary definitions of “folded” and “pizza” and argued that “when ORIGINAL is combined with those words . . . the combination ‘directly conveys information about a feature and characteristic of the goods, namely, that applicant’s pizza goods are the first of its kind and that the pizza has one part laid over another part.’” In addition, to show that pizza consumers would acquaint “folded pizza” with pizza in which one part is laid over another, she submitted evidence of third-party webpages referencing “folded pizza” in connection with calzones. 

Applicant made one sole argument: “[T]he word ‘folded’ means ‘drunk’ which adds an alternative congruous [sic] meaning to the mark – that of a drunk slice of pizza.”

When analyzing the individual components of Applicant’s proposed mark, the Board agreed with the Examining Attorney that the word ORIGINAL is merely descriptive of Applicant’s goods because it touts the “first-of-its-kind” nature of Applicant’s “original folded pizza.” Next, the Board found nothing in the record nor Applicant’s own website to support Applicant’s argument that FOLDED provided ORIGINAL FOLDED PIZZA with an alternative incongruous meaning as “a drunk slice of pizza.” (Snip from Applicant’s website immediately below.) “There is no doubt that the word FOLDED in Applicant’s proposed mark is merely descriptive of the goods because it describes the fact that certain of Applicant’s pizzas are ‘folded in half.’” [See excerpts from Applicant's website, below]. Lastly, especially given the disclaimer, PIZZA was undeniably held to be a generic for the applied-for goods.

Turning to the combination of the terms, the Board promptly concluded that ORIGINAL FOLDED PIZZA, as a whole, is merely descriptive. This was made especially clear considering that Applicant’s use of the mark on its website gave “no indication that Applicant claims ‘original folded pizza’ as its trademark.”  “Because each word in the proposed mark ‘retains its merely descriptive significance in relation to the goods, the combination results in a composite that is itself merely descriptive.’” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016).

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Well, would you have?

Text Copyright Kira-Khanh McCarthy 2020.

TTABlog Test: Is DIMOND for Bicycle Frames Confusable with DIAMOND for Bicycle Chains?

The USPTO refused registration of the mark DIMOND for "bicycle frames, not including bicycle parts," finding a likelihood of confusion with the registered mark DIAMOND (in standard character and stylized form), owned by the same entity, for “bicycle chains." Applicant Ruster Sports contended that the fact that the goods are sold in the same industry is an insufficient relationship for likelihood of confusion. How do you think this came out? In re Ruster Sports, LLC, Serial No. 88011946 (November 16, 2020) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

The Board found that the term DIMOND is likely to be perceived as a misspelling of DIAMOND. As to the goods, the evidence showed that "bicycle chains and bicycle frames both are necessary parts of any bicycle, and available to the same end consumers, cyclists/bicycle owners, through some of the same channels of commerce, namely stores that specialize in bicycles and parts therefor." And so the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2020.

Recommended Reading: Profs. Beebe and Fromer, "Fake Trademark Specimens: An Empirical Analysis"

Professors Barton Beebe and Jeanne C. Fromer of NYU School of Law present the results of their empirical study regarding fraudulent specimens of use in applications originating in China. [pdf available here].

This Article reports the results of new empirical work showing that an appreciable number of U.S. trademark applications originating in China include fraudulent specimens of use, despite the law's requirement that these marks be used in U.S. commerce to proceed to registration. In particular, with respect to use-based applications originating in China that were filed at the U.S. Patent and Trademark Office (PTO) in 2017 solely for apparel goods, we estimate that 66.9% of such applications included fraudulent specimens. Yet 59.8% of these fraudulent applications proceeded to publication and then 38.9% proceeded to registration. If these applications are representative of the overall population of Chinese-origin applications in that year, then approximately 14.0% of the total use-based applications filed in 2017 were fraudulent. Fraudulent registrations worsen the problems of trademark depletion and clutter, undermine the integrity of the trademark register, and hurt legitimate businesses that would like to use these marks. We therefore recommend legislative action to make it easier for third parties and the PTO to cull these marks from the register and systematic improvement by the PTO to ensure that applications with fraudulent specimens are not registered in the first instance.

Three earlier articles by these co-authors have made an appearance at the TTABlog: "The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than The Weak?," 92 N.Y.U. Law. Rev. 1390 (November 2017). [pdf here]; "Are We Running Out Of Trademarks: An Empirical Study of Trademark Depletion and Congestion", 131 Harv. Law Rev. 948 (February 2018) [pdf here]; and ""Immoral or Scandalous Marks: An Empirical Analysis," N.Y.U. Journal of Intell. Prop. & Ent. Law, Vol. 8, No. 2 (Spring 2019). (link here).

Read comments and post your comment here.

TTABlogger comment: In mid-2019, the USPTO began to require that foreign applicants be represented by United States counsel. Has that reduced the size of the problem? BTW: I have suggested that the TTAB adopt a streamlined procedure to allow a challenge to a dubious specimen of use, rather than require a challenger to institute an opposition or cancellation proceeding.

Text Copyright John L. Welch 2020.

Wolf Greenfield Seeks Trademark Associate for Boston or New York Office

Wolf, Greenfield & Sacks, P.C., is accepting applications for the position of trademark and copyright associate, New York or Boston based. To apply, go here.

"We are seeking an attorney to join our Trademark and Copyright group. Qualified applicants will have 3-5 years of experience in trademark matters, including domestic and international clearance, prosecution, and enforcement, as well as experience in managing a global trademark portfolio. The position will also involve drafting pleadings for the TTAB and Federal Court. Previous experience preparing and responding to cease and desist letters and handling other enforcement matters is preferred. Excellent writing skills, strong academic credentials, business acumen, and strong interpersonal and communication skills are required. An interest in public presentations, writing articles, and active marketing and business development are also required."

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New Trademark and TTAB Fees Effective January 2, 2021

The United States Patent and Trademark Office (USPTO) is setting and adjusting Trademark and Trademark Trial and Appeal Board (TTAB) fees for the first time in nearly three years through its Final Rule, effective January 2, 2021 (here). A summary of the FY2021 Final Trademark Fee Rule may be found here. The changes include increases in trademark application filing fees, post-registration fees, petition fees, and TTAB fees, and a new fee for a letter of protest. 

The Changes in TTAB fees are as follows:

• Petition to cancel filed through ESTTA: $600 per class (Up from $400 per class). 
• Notice of opposition filed through ESTTA: $600 per class (Up from $400 per class). 
• Initial 90-day extension requests for filing a notice of opposition, or second 60-day extension requests for filing a notice of opposition, filed through ESTTA: $200 per application (Up from $100 per application). (There is still no fee for a first 30-day extension request for filing a notice of opposition, filed through ESTTA). 
• Final 60-day extension request for filing a notice of opposition, filed through ESTTA: $400 per application (Up from $200 per application). 
• Ex parte appeal filed through ESTTA: $225 per class (Up from $200 per class). 
• New fee for second, and subsequent, requests for an extension of time to file an appeal brief in an ex parte appeal filed through ESTTA: $100 per application (There is still no fee for a first request). 
• New fee for appeal briefs in an ex parte appeal filed through ESTTA: $200 per class. 
• New fee for requests for oral hearings: $500 per proceeding.

In addition, the USPTO is implementing partial refunds for petitions to cancel in default judgments if the cancellation involves only a nonuse or abandonment claim, the defendant did not appear, and there were no filings other than the petition to cancel.

Read comments and post your comment here.

TTABlogger comment: That should put a damper on oral hearings.

Text Copyright John L. Welch 2020.

Hell Freezes Over! TTAB Reverses Failure-to-Function Refusal of JUST ANOTHER DAY IN PARADISE

The Board reversed a failure-to-function refusal of JUST ANOTHER DAY IN PARADISE for a variety of items in nine classes, such as candles, flatware, lamps, and Christmas ornaments. The Board concluded that the record evidence failed to show that the proposed mark "is a common or familiar expression in such widespread use that it is inherently incapable of functioning as a mark." In re Rodeowave Entertainment, LLC, Serial No. 87801076 (November 13, 2020) [not precedential] (Opinion by Judge Christen M. English).

The Board observed that slogans that are merely informational in nature, or common laudatory phrases or statements that would ordinarily be used particular business or industry, are not registrable. "The more commonly a phrase is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark.”

The question of whether JUST ANOTHER DAY IN PARADISE "is inherently capable of functioning as a mark for the identified goods depends on whether the relevant public, i.e. purchasers and potential purchasers of Applicant’s goods, would perceive the phrase as identifying Applicant’s goods and their source or origin." The subject application was filed on an intent-to-use basis, and there was no evidence of applicant’s use of the phrase. However, there was evidence of third-party use in media and on a range of home décor, household goods, and clothing items. (examples depicted above and below). "Prominent ornamental use of an applied-for-mark ... 'is probative in determining whether a term or phrase would be perceived in the marketplace as a trademark or as a widely used message.'"

The nature of the message conveyed by the proposed mark is also pertinent. Familiar, commonplace expressions and slogans "used to convey social, political, patriotic, religious, and laudatory concepts are more likely to be perceived as imparting information than signifying source." (E.g., ONCE A MARINE, ALWAYS A MARINE; THINK GREEN; DRIVE SAFELY; PROUDLY MADE IN USA; WATCH THAT CHILD).

The evidence here does not demonstrate that the applied-for-mark is used in everyday parlance or that it conveys a common social, political, patriotic, religious or other informational message. In most of the media examples of record, the applied-for-mark is primarily used as the title of creative works rather than for any apparent common informational message.

The examining attorney maintained that the mark does not convey any clear or specific message, but rather is subject to a number of different interpretations; for example, "taking pleasure in small things" or "getting away from one’s troubles." [I think it conveys a sarcastic message - ed.]. The Board concluded that this potential ambiguity "makes it less likely that consumers would perceive it as conveying a particular informational message and distinguishes it from the types of well-recognized and unequivocal expressions found to be incapable of serving as source identifiers."

Although widespread use may be enough to render a term or phrase incapable of functioning as a trademark, regardless of the type of message - for example, I ♥ DC, ONCE A MARINE, ALWAYS A MARINE, DRIVE SAFELY - the use of the proposed mark "is not sufficiently widespread such that we can find it inherently incapable of serving as a source identifier even though the record does not demonstrate that the applied-for-mark is a familiar expression with a generally understood meaning." [Does that last quotation make sense? - ed.].

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment:What do you think? Seems like a commonplace, unregistrable slogan to me.

Text Copyright John L. Welch 2020.

Recommended Reading: Lisa Pearson, "The Real Life of Fictional Trademarks"

The September-October issue of The Trademark Reporter [pdf of full issue here] includes Daniel R. Bereskin's article on Trademark Rights and Freedom of Competition in Canada, a commentary by Dr. Martin Viefhues on the Court of Justice of the European Union's SkyKick decision, and Yashvardhan Rana's review of the book, Internet Intermediaries and Trade Mark Rights, by Althaf Marsoof. This blog post focuses on Lisa Pearson's entertaining commentary, "The Real Life of Fictional Trademarks."

I confess that I have never seen The Dukes of Hazzard, Sponge Bob Squarepants, or Empire. Be that as it may, I am sure you will enjoy Lisa Pearson's commentary as much as I did.

Entertainment and media providers have progressed well beyond the simplistic animated worlds of Saturday morning cartoons. They have created ever more complex, immersive, and interactive universes to engage audiences. The brands appearing in those universes may be real, imaginary, or a mix. In the United States, it is not uncommon for someone to launch a real product or service under a formerly fictional trademark or service mark to capitalize on the popularity of the property in which it originally appeared. Conversely, a fictional brand name in an entertainment property may bear more than a passing resemblance to an actual brand in the material world.

Consumers, intellectual property lawyers, and even judges take delight in the mind-bending implications of brands that traverse parallel universes, real and imaginary.

Welcome to the real life of fictional trademarks.

Read comments and post your comment here.

TTABlogger comment: Again, I thank The Trademark Reporter for allowing me to make this issue available to my dear readers. This issue of the TMR is Copyright © 2020, the International Trademark Association and is made available with the permission of The Trademark Reporter®.

Text Copyright John L. Welch 2020.

TTAB Upholds Refusal to Register Pre-Mixed Cocktail Bottle: Not Inherently Distinctive and Lacks Acquired Distinctiveness

The Board affirmed a refusal to register the three-dimensional product packaging shown below, for “pre-mixed alcoholic beverages, other than beer-based," finding that the design is not inherently distinctive and rejecting applicant's claim of acquired distinctiveness. The Board concluded that, compared to bottled designs on which Examining Attorney Andrew Crowder-Schaefer relied, the differences "are mere refinements of common features for alcoholic beverage bottles." As to its Section 2(f) claim, applicant relied only on its use of the proposed mark for seven years, which the Board found insufficient to meet the applicable heavy burden of proof. In re Watermark Properties Inc., Serial No. 88578623 (November 10, 2020) [not precedential] (Opinion by Judge Michael B. Adlin).

The proposed mark comprises "a stylized cylinder bottle with a bottle cap which is three dimensional and symmetric. The sides of the bottle cap and bottle are concave, with a curve beginning at the bottle cap and ending at the bottom of the bottle." 

Inherent Distinctiveness: The Examining Attorney relied on bottles used as packaging for beverages sold in commerce, both alcoholic and non alcoholic, and primarily cylindrical and concave in shape. However, few of the caps for these bottles were concave like the body of the bottle.

Applicant maintained that the third-party bottles are different in shape from its bottle, and that third-party bottles for non alcoholic beverages are irrelevant because the goods are different. It pointed out that it has won awards for its bottle design. The Board, however, found no evidence that the awards related to any of the bottle features that Applicant sought to register.

The Board pointed out that "the Examining Attorney does not bear a heavy burden in establishing a prima facie case that a mark is not inherently distinctive. The Examining Attorney need only establish a 'reasonable predicate' to make the necessary prima facie showing.” In re Chippendales USA, Inc., 90 USPQ2d 1535, 1539-40 (TTAB 2009), aff’d, 96 USPQ2d 1681

The Board applied the ever-popular test of Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977)), to determine inherent distinctiveness of the subject trade dress. Here, the evidence of record established a "reasonable predicate" for rejecting applicant’s claim of inherent distinctiveness, and thus the Examining Attorney made a prima facie case.

In fact, Applicant’ s design is fairly commonplace, and not unique in the alcoholic beverage field, as the record reveals almost 20 cylindrical alcoholic beverage bottles with concave sides that curve inward starting at the top and ending at the bottom. Rather, to the extent Applicant’s bottle design differs from the bottles upon which the Examining Attorney relies, these differences are m ere refinements of common features for alcoholic beverage bottles. Applicant’s bottle design is therefore not inherently distinctive.

The Board rejected applicant's contention that the soft drink bottles are irrelevant. "In fact, because alcoholic beverage drinkers also must, or at least would be expected to, drink non alcoholic beverages, bottles for non alcoholic beverages are relevant , and would be expected to impact the relevant alcoholic beverage consumers’ perceptions of alcoholic beverage bottles." The Board acknowledged that many of the third-party bottles have small caps or thin necks, but those were not enough to undermine or rebut the Examining Attorney's prima facie case.

The point is that neither symmetric bottle caps, nor concave bottles curve from the bottle cap or elsewhere on the top of the bottle to the bottom are “unusual” in the field of bottles for alcoholic beverages (or soft drinks). * * *  In fact, even if Applicant is correct that its bottle is unique in the field, in the sense that there are n o other bottles exactly like it, that is not enough to establish inherent distinctiveness given the evidence of widespread third party use of highly similar bottles. In short, the Examining Attorney has established a prima facie case, which Applicant has not rebutted, that Applicant’ s bottle design is not inherently distinctive.

Acquired Distinctiveness: Because applicant's bottle design is a mere refinement of a bottle design commonly used in the alcoholic beverage industry, applicant "has a relatively heavy burden for establishing acquired distinctiveness."

Applicant has used its proposed mark for the last seven years but that "is not a significant amount of time given the nature of the proposed mark and how similar it is to third-party bottle designs." It did not provide a survey or other evidence showing that consumers associate the proposed mark with applicant.Applicant. It did not provide any evidence as to its sales, customers, or advertising, nor any evidence of intentional copying or unsolicited media coverage of the bottle design. And there was no evidence that Applicant has promoted the claimed features of its bottle design as a source identifier.

In short, because Applicant’s proposed mark is so similar to a number of third party alcoholic beverage bottles, we would require significantly more and higher quality evidence than we have here to find that the proposed mark has acquired distinctiveness. In the absence of such evidence, we find that Applicant has not established its alternative claim that the proposed mark has acquired distinctiveness.

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TTABlogger comment:It seems that the Board almost never accepts mere length of time as sufficient evidence of acquired distinctiveness.

Text Copyright John L. Welch 2020.

TTABlog Test: Do You Know Trademark Mutilation When You See It?

Faced with a Section 2(b) refusal because their proposed mark included simulations of the flags of the United States and of Bermuda, these two yacht clubs tried to amend their application drawing from the one on the left below, to the one on the right (flags removed). The Examining Attorney deemed the change to be a material alteration of the mark and refused to enter the amendment. Did the applicants have smooth sailing at the Board, or did they founder on the TTAB shoals? In re The Cruising Club of America, Inc. and Royal Bermuda Yacht Club, Serial No. 88159868 (November 6, 2020) [not precedential] (Opinion by Judge Thomas Shaw).

Trademark Rule 2.72(a)(2) provides that, in a Section 1(a) application, an applicant may amend the drawing of the mark if "[t]he proposed amendment does not materially alter the mark" as depicted in the application drawing. "The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark." In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218 (TTAB 2000)

TMEP § 1204.04(b), entitled "Deletion of § 2(b) Matter," states that a flag design may be deleted "if the flag design is spatially separated from other matter in the mark or is used as a background for other words or designs." The Board recognized that the TMEP "does not have the force of law," but it held that "the guidelines regarding deletion of Section 2(b) matter, as set forth in the TMEP, are appropriate under the rules to consider ...." "We will apply those guidelines in our analysis of the acceptability of Applicants' proposed amended drawing."

In order to determine the mark's commercial impression, the Board looked to applicant's specimens of use (see above and below). The Board noted that some of the specimens of use showed the lighthouse without the flags. According to the Board, "[t]hese examples suggest that the lighthouse and crossed flagpole design has a commercial impression independent of the particular flags displayed. Indeed, the representation of the lighthouse without any flags suggests that the St. David’s Lighthouse is the heart of the mark’s commercial impression."

 

The Board reviewed the examples of flags designs provided in the TMEP, including the example below of a design as to which the removal of the flags would be an impermissible mutilation, but the Board noted that "we are not bound by the TMEP’s examples":

The Board concluded that removal of applicants' flags would not be a material alteration of the mark. Therefore, it reversed the Examining Attorney's refusal to permit amendment of the drawing, and it deemed the Section 2(b) refusal moot. 

Read comments and post your comment here.

TTABlogger comment: Instead of applying the TMEP "guidelines," I suggest applying common sense. Would any consumer think that the lighthouse creates a separate commercial impression when the flags are waving right in his or her face? Does "the new form . . .  create the impression of being essentially the same mark"? What do you think?

Text Copyright John L. Welch 2020.

CAFC Affirms TTAB: Reelex Tangle-Free Cable Box is Functional Under Section 2(e)(5)

In a non-precedential opinion, the CAFC upheld the Board's decision affirming a Section 2(e)(5) functionality refusal of the packaging designs shown below for "electric cables and wire." [TTABlogged here]. The appellate court found no legal error in the Board’s functionality analysis, and further that substantial evidence supported the Board's findings that numerous features of the designs were "dictated by the utilitarian purpose they serve." Moreover, the Board found that applicant's own patents revealed "the functionality of significant aspects of the designs," and its advertising touted some of the features. In re My Reelex Packaging Solutions, Inc., Appeal No. 2020-1282 (November 5, 2020) [not precedential].

On appeal, Reelex argued that the Board erred "because the totality of record evidence shows that the trade dresses at issue provide no real utilitarian advantage to the user." It also argued that the Board erred in failing to consider evidence of alternative designs.

The appellate court, however, pointed out that the Board identified multiple useful features present in the boxes that combine to define box designs "dictated by the utilitarian purpose they serve." Although Reelex argued that the Board improperly dissected the designs into discrete design features, the court's review of the Board’s decision showed that the Board analyzed the features as a whole and in combination. The Board then applied the four Morton-Norwich factors, and found that they, too, weighed in favor of a functionality finding.

 

 

Reelex primarily argued that the Board’s Morton-Norwich analysis was flawed because it ignored "competent evidence of alternative designs." As the Board correctly noted, however, if functionality is found based on other considerations, "there is 'no need to consider the availability of alternative de-signs, because the feature cannot be given trade dress protection merely because there are alternative designs available.'" In any case, the Board did expressly consider Reelex’s evidence of alternative de-signs.

The Board is entitled to assess credibility and has broad discretion to weigh the evidence presented. Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 979–80 (Fed. Cir. 2018) (“The TTAB is entitled to weigh the evidence.”); see also Inwood Labs., 456 U.S. at 856 (“Determining the weight and credibility of the evidence is the special province of the trier of fact.”). We find no error in the Board’s consideration of alternative designs, and we decline Reelex’s request to reweigh the evidence on appeal. Nor do we find any error in the Board’s conclusion that the boxes at issue are "simple, basic boxes that provide numerous utilitarian advantages for figure 8 or otherwise wound coils of cable and wire designed for dispensing from the center of the coil. That means the boxes are functional, and [Reelex’s] competitors need not look for other possible alternative designs."

And so the CAFC affirmed the Board's decision.

Read comments and post your comment here.

TTABlogger comment: The Board panel included Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. Was this a WYHA? from the git-go?

Text Copyright John L. Welch 2020.

TTAB Denies Cancellation of UNICORN TEARS Registration: Petitioner Failed to Show Trademark Use

[This guest post was written by Kira-Khanh McCarthy, a law clerk in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. Glow Concept petitioned to cancel a registration for the mark UNICORN TEARS for "cosmetics and cosmetic preparations" due to alleged likelihood of confusion with an identical mark for lip gloss(es), as to which Petitioner asserted ownership and prior common law rights. The Board held that Petitioner failed to show trademark use and so did not meet the threshold requirement to prove that it had acquired proprietary rights in order to prevail in its Section 2(d) claim against Respondent Too Faced. Glow Concept Inc. v. Too Faced Cosmetics, LLC, Cancellation No. 92067143 (Nov. 2, 2020) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

Entitlement to Cause of Action: The Board briefly addressed Petitioner’s entitlement to a statutory cause of action (previously analyzed under the rubric of "standing"), finding that Glow Concept met the minimum requirement set forth in Australian Therapeutic Supplies [TTABlogged here], even though Glow Concept alleged only that it owns a pending application for the same mark without showing that the application stands refused in view of Too Faced's registration. [Note that the Australian Therapeutic approach has been superseded by the CAFC's Corcamore decision [TTABlogged here]].

Priority: Pursuant to Section 14 of the Lanham Act, “[a] party claiming prior use of a registered mark may petition to cancel the registration on the basis of such prior use.” The petitioner bears the burden of proving it acquired proprietary rights in the claimed mark by a preponderance of the evidence. Respondent may rely on its registration as proof of constructive use of the mark as of its application filing date (in this case, March 31, 2016). 

Here, the parties did not disagree on the relatedness of the goods. Thus, to prevail, Petitioner needed to prove it acquired proprietary rights in the mark before March 31, 2016. Since Petitioner had no prior registration and did not allege use analogous to trademark use, the Board analyzed Glow Concept’s actual use of the mark. For its case-in-chief, Petitioner presented the following evidence: 

First, Glow Concept’s CEO testified that she invented the term UNICORN TEARS to identify a specific lip gloss, and that the company was using an in-house label (affixing the mark to lip glosses) as early as June 2015. The Board was unmoved by this evidence. It held that “[t]he act of ‘inventing’ a mark does not create prior rights” and, further, in-house labels do not constitute commercial use since there is no proof that the labels were exposed to prospective purchasers.

Second, Glow Concept claimed that it sold lip gloss under the mark in July 2015. As evidence, it submitted printouts from its website which displayed “a large graphic of lips modeling a particular shade of lip gloss, with the name of the color or shade in all capital letters on the next line” (e.g., UNICORN TEARS). The Board again did not find this to be actual use of the mark. “The display of ‘UNICORN TEARS’ on the . . . webpage shows use of the wording merely as a shade or color name for lip gloss . . . one of many such lip gloss shades or colors, and not as a source indicator.”

Third, as evidence that it actually sold lip gloss under the mark, Petitioner submitted a copy of an internal invoice (dated September 12, 2015) detailing a purchase for one “Unicorn Tears” lip gloss and one other shade of lip gloss. The Board was not buying this argument either. It held that the invoice did not constitute documentary evidence to support a finding that Petitioner used the term as a trademark (rather than to simply refer to the shade or color of a particular lip gloss), nor was it “apparent the internal company invoice was included in the shipment of the lip glosses to . . . the purchaser.”

Finally, Glow Concept contended that, from November 2015 to March 2016, it marketed the UNICORN TEARS lip gloss to a variety of vendors. As its evidence, Petitioner presented a series of emails representing its marketing activities. But, again, the Board noted that the email evidence only referenced the term “unicorn tears” twice, and both times it "plainly refer[red] to ‘unicorn tears’ as a shade name." "While a shade name may also function as a trademark, see, e.g., In re Champion Int’l Corp., 183 USPQ 318, 320 (TTAB 1974), the record does not support such a finding here."

Conclusion: After considering all the evidence, the Board found that Petitioner used the term UNICORN TEARS as merely a shade name and not as a source identifier. Petitioner was unable to demonstrate that it acquired proprietary rights before Respondent’s constructive use date of March 31, 2016. It thus could not prevail in its claim of likelihood of confusion, and so the petition for cancellation was denied.

Read comments and post your comment here.

TTABlogger comment: What does a unicorn have to cry about, anyway?

Text Copyright Kira-Khanh McCarthy and John L. Welch 2020.

TTABlog Celebrates 16th Anniversary!

The TTABlog debuted on November 8, 2004, with a blog post entitled "Leo Stoller Loses Again." (here). Remember him? [Well, he's back!]. Here we are, some 4,500 blog posts and more than 13,000 tweets later.  Thank you readers!



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Text Copyright John L. Welch 2020.

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

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

In re Simoniz USA, Inc, Serial No. 87865135 (November 3, 2020) [not precedential] (Opinion by Judge Christopher Larkin). [Section 2(d) refusal of SIMONIZ CERAMICSHIELD for "Paint sealant for exterior surfaces of vehicle" in view of the registered mark PLATINUM CERAMIC SHIELD for "“Clear coating protectant containing ceramic nanoparticles for use on vehicles" [CERAMIC disclaimed]. Applicant argued that "the common element of the marks, i.e., ‘CERAMIC SHIELD,’ is weak because it is descriptive of the named goods, thus, it is unlikely that consumers will be confused, as the overall combinations have no other commonality."]

In re Sérgio Tsugumiti Kobayashi, Serial No. 88073552 (November 3, 2020) [not precedential] (Opinion by Judge Mark Lebow).). [Section 2(d) refusal of the mark shown below for "Drinking flasks; Drinking vessels; Flasks; Insulated containers for food or beverage for domestic use; insulated flasks; insulated vacuum flasks; Vacuum flasks," in view of the registered marks DONOTDISTURB for "blank note cards; bookmarks; appointment books; announcement cards; business cards; blank cards; greeting cards; note cards; all occasion cards; cards bearing universal greetings; Christmas cards; gift cards; postcards, namely, blank, partially printed and picture post cards; printed paper signs" and the mark DO NOT DISTURB for "Capri pants; Leggings; Lounge pants; Loungewear; Nightgowns; Pajamas; Tank tops; Tops as clothing." Applicant argued that DND is the dominant element in his mark, and that the fact that the goods may be found in the same store does not establish their relatedness.]

In re Sundown Sounds Cruise, LLC, Serial No. 88159692 (November 3, 2020) [not precedential] Opinion by Judge David K. Heasley) [Section 2(d) refusal of SUNDOWN SOUNDS CRUISE for "entertainment services, namely, live musical entertainment performances held on yachts or cruise ships" [SOUNDS CRUISE disclaimed], in view of the registered mark SUNDOWN MUSIC FESTIVAL for "entertainment services in the nature of live musical performances; entertainment services in the nature of a live music festival; entertainment, namely, live music concerts" [MUSIC FESTIVAL disclaimed]. Applicant asserted that its primary business model involves single evening cruises on a yacht with musical entertainment, whereas the registrant uses its mark for terrestrial several-day music festivals.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2019.

TTABlog Test: Which of These Mere Descriptiveness Refusals Was/Were Reversed?

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 last year the Board affirmed, by my calculation, about 93% these refusals. Answer(s) will be found in the first comment.

In re Friendship Retirement Corporation, Serial No. 87942568 (October 29, 2020) [not precedential] (Opinion by Judge David K. Heasley). [Mere descriptiveness refusal of CENTER FOR MODERN AGING for "providing assisted living facilities" and for "continuing care retirement communities (CCRCs) in the nature of nursing home services." Applicant maintained that the Examining Attorney erroneously dissected the proposed mark into its constituent words, each of which has a wide variety of definitions. Applicant claimed that "[w]hen the mark is read as a whole, it is suggestive and invites the consumer to seek out the products and services for further evaluation."]

In re KGEM Golf, Inc., Inc., Application Serial No. 88148572 (November 2, 2020) [not precedential] (Opinion by Judge Mark Lebow). [Mere descriptiveness refusal of GOLFSUITES for "workshops and seminars in the field of golf; Entertainment in the nature of golf tournaments; Golf driving range services; Entertainment services, namely, amusement arcade services; Entertainment and amusement centers, namely, interactive play areas." Applicant maintained that GOLFSUITES is both incongruous and "is a creative double entendre: "[t]he suffix 'SUITES' carries a double meaning as it potentially relates to both “a group of rooms” as well as the 'sweet spot' of hitting a golf ball."]

In re TriarQ Health, LLC, Serial No. 88149951 (November 3, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo). [Mere descriptiveness refusal of ONE TEAM CARE for "providing temporary use of online non-downloadable cloud computing software for coordinating the provision of healthcare among caregivers and patients." Applicant argued that the mark is ambiguous and only suggests a function, feature or characteristic of its services.]

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHA?s here?

Text Copyright John L. Welch 2020.