TTAB Posts March 2021 (Video) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled five (V) oral hearings for the month of March 2021. The hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

March 11, 2021 - 10 AM: In re Grupo Bimbo, S.A.B. de C.V., Serial No. 87408465 [Refusal to register the purported mark ARTESANO for "pre-packaged sliced bread," on the ground of genericness or, alternatively, mere descriptiveness (and lack of acquired distinctiveness].

March 17, 2021 - 2 PM: In re Monrovia Nursery Company, Serial No. 88559348 [Section 2(d) refusal to register COLORIFIC for "Live plants, namely, Echinacea and excluding fresh vegetables, for sale online and in garden centers and mass merchants" in view of the identical mark registered for "fresh vegetables"].

March 18, 2021 - 1 PM: In re L-Nutra, Inc., Serial No. 88171365 [Section 2(e)(1) mere descriptiveness refusal of FASTING BAR for "Nutritionally balanced prepared meals for medical use consisting primarily of grains, nuts and vegetables; nutritional meal replacement snacks adapted for medical use."]

March 23, 2021 - 11 AM: Jeffrey Kaplan v. Faulding Healthcare (IP) Holdings, Inc., Cancellation No. 92060205 [Petitioner for cancellation of two registrations for the mark  SEA & SKI for suntan lotions, on the ground of abandonment].

March 31, 2021 - 11 AM: In re Ultra Pro International, LLC, Serial No. 87570853 [Section 2(d) refusal to register CHROMAFUSION for plastic protective sleeves for trading cards in view of the registered marks CHROME, TOPPS CHROME, and BOWMAN CHROME for "trading cards."

Read comments and post your comment here.

TTABlog comment: Any predictions? See any WYHA?s

Text Copyright John L. Welch 2021.

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

The TTAB recently decided the appeals from the three Section 2(e)(1) mere descriptiveness refusals summarized below. Actually, two involved disclaimer requirements. One of the refusals was reversed. Which one? [Answer will be found in the first comment.]


In re Pan American Properties, Corp., Application Serial No. 88277015 (February 10, 2021) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Mere descriptiveness refusal of SANGRIIITA. (in standard characters) for "alcoholic beverages except beers; prepared alcoholic cocktail." Applicant argued that because it owns registrations for SANGRIIIA and GASOLINA SANGRIIIA, consumers will perceived SANGRIIITA as a member of that family of marks and not as descriptive term referring to a cocktail known as a sangrita].

 

In re Viromare Design LLC, Serial No. 87705193 (February 19, 2021) [not precedential] (Opinion by Judge Peter W. Cataldo). [Requirement for disclaimer of PASTA THE ORIGINAL PASTA DONUT in the mark POP PASTA THE ORIGINAL PASTA DONUT for "pasta, non-pastry, non-fried prepared pasta pressed in the shape of a donut and baked, hand-held non-pastry, non-fried prepared pasta product made by shaping and baking pasta." Applicant argued that it coined the term "pasta donut," and further that the mark as a whole is unitary.]

In re Walmart Apollo, LLC, Application Serial No. 88040421 (February 22, 2021) [not precedential] (Opinion by Judge Karen S. Kuhlke). [Requirement for disclaimer of TECH in the mark SUPER TECH for air filters for automobiles. Applicant maintained that "'tech' is primarily an abbreviation for 'technical' or 'technician'" and in the context of Applicant’s goods "conveys that purchasers of the underlying goods are 'super technicians' or, more specifically, super automotive technicians."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2021.

TTABlog Test: Is MS. INTERNATIONAL Confusable With MISS INTERNATIONAL for Beauty Pageant Services?

The USPTO refused to register the mark MS. INTERNATIONAL for beauty pageant services featuring women "26 years of age and up" [INTERNATIONAL disclaimed], finding a likelihood of confusion with the registered mark MISS INTERNATIONAL for beauty pageant services featuring "single women" [two registrations, INTERNATIONAL disclaimed]. The Board found that the services overlap and presumably travel in the same trade channels to the same classes of consumers. But what about the marks? They are pretty close, aren't they? In re Ms. America Pageant, Serial No. 87820883 (February 22, 2021) [not precedential] (Opinion by Judge Christen M. English).

The Board first considered the strength of fame of the cited mark. The record evidence included:

• approximately 15 third-party use-based registrations incorporating the term “international” for beauty pageants wherein the term “international" has been disclaimed or the mark is registered on the Supplemental Register;
• approximately 10 third-party use-based registrations for marks incorporating both the terms “Miss” and “international” for beauty pageants wherein the term “international” has been disclaimed or the mark is registered on the Supplemental Register;
• more than 15 marks in use for beauty pageants incorporating the term “international”
• more than 60 marks in use for beauty pageants incorporating the terms “Miss” and “international”; and
• approximately 8 marks in use for beauty pageants incorporating the terms “Ms.” and “international.”
  
  

As to commercial strength, in addition to the registrations listed above, "the evidence shows that it is common for beauty pageant marks to comprise or incorporate a female courtesy title and the geographic indicator 'international.'" The Board therefore found that the mark MISS INTERNATIONAL is "conceptually and commercially very weak."

As to the marks, the Board found them to be similar in appearance and sound, but different in meaning and commercial impression:

Because the word “Ms.” is intentionally ambiguous as to a woman’s marital status, it can be substituted grammatically for the word “Miss” to refer to an unmarried woman, but the meanings of the terms are specifically different and culturally significant. In addition, the ubiquitous third-party use and registration discussed in the preceding section demonstrates that in the beauty pageant industry, the female courtesy titles “Miss” and “Ms.” refer to different competition categories and eligibility requirements. Accordingly, the words convey different shades of meaning to consumers of beauty pageant services.

This DuPont factor weighed slightly in favor a finding of likely confusion.

With regard to customer sophistication, the Board agreed with the Examining Attorney that contestants and advertisers will be "sophisticated" [i.e., discerning or careful - ed.] in choosing their pageants, "[b]ut not all of the general public spectating beauty pageants will have a familiarity with the beauty pageant industry or otherwise be sophisticated about beauty pageants." 

Since the two pageants have been in operation for the past ten years without any evidence of actual confusion, that factor weighed "somewhat" in Applicant's favor.

Under the eleventh DuPont factor, Applicant established extensive and continuous use of its mark for ten years, but because "there is ubiquitous use and registration of marks for beauty pageants incorporating a female courtesy title and the term “International,” including the third-party mark INTERNATIONAL MS, this factor is neutral or only slightly favors Applicant.

The Board concluded that "the extreme weakness of the cited mark and absence of actual confusion despite nearly ten years of 'extensive' and 'continuous' contemporaneous use are controlling here. It therefore found confusion not likely, and so it reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: You've seen one pageant, you've seen them all.

Text Copyright John L. Welch 2021.

TTABlog Test: Is QUERCUS COFFEE for Coffee Confusable With QUERCUS for Wine?

The USPTO refused to register the mark QUERCUS COFFEE for coffee [COFFEE disclaimed], finding a likelihood of confusion with the registered mark QUERCUS for wine. Not surprisingly, the Board found the marks to be "highly similar." But what about the goods? Are wine and coffee related? In re Quercus Coffee LLC, Serial No. 88484601 (February 16, 2021) [not precedential] (Opinion by Judge Jyll Taylor).

Examining Attorney Crystal Yi maintained that coffee and wine are indeed related because they commonly emanate from a single source under the same name. She made of record a number of websites offering both products under the same mark: H & L (stylized), Harry & David, Hoodsport, Biltmore and Biltmore Estate, Fly Creek, Cherry Republic, Devils Gulch Ranch, Nocking Point NP, PB Pepper Bridge Winery and Vampire. She also submitted twenty use-based, third-party registrations showing registration of the same mark by a single entity for both coffee and wine. This evidence convinced the Board that coffee and wine are related for Section 2(d) purposes.

Applicant feebly argued that confusion is not likely because the goods are not identical. The Board brushed aside that assertion and, noting that the applicant and cited registration have no limitations on channels of trade or classes of consumers, found that the goods travel in overlapping trade channels (online and specialty food stores and wineries) to the general public.

Applicant insisted that the involved consumers are "well educated and not likely to purchase on impulse." However, there were no such limitations in the application or cited registration, and the Board must therefore make its determination based on the least sophisticated purchaser. Moreover, coffee and wine may be relatively inexpensive, "ranging from $15-$25 for roasted coffee and some wines offered at similar prices." Thus these products may be subject to impulse buying. 

In any case, "with identical or similar marks used on such goods, even a careful, sophisticated consumer of these goods is likely to believe that the goods emanate from a common source."

Applicant pointed to the lack of evidence of fame for the QUERCUS mark, but the Board pointed out that the registrant has no opportunity to prove fame in an ex parte proceeding, and so fame is a neutral factor in the DuPont analysis. For the same reason,  the lack of evidence of actual confusion is of little probative value.

The Board concluded that confusion is likely and it therefore affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Specialty shop and wineries shouldn't count, I think. If you are in one of those, you expect the house mark to appear on everything. Not so in a supermarket.

Text Copyright John L. Welch 2021.

Recommended Reading: Professors Farley on Genericness, Boyle and Jenkins on University Brand Bullies

In my role as a trademark thought leader (LOL!), I recommend two recent articles that caught my interest and I think will catch yours. Professor Christine Haight Farley of American University's Washington College of Law explains why she is less than thrilled with the Supreme Court's "booking.com" decision. Professors James Boyle and Jennifer Jenkins of Duke University School of Law examine the phenomenon of brand bullies cloaked in academic robes. Links to their respective articles are found below.

Christine Haight Farley, Trademark Law’s Monopoly Problem: The Supreme Court on Generic Terms as Trademarks, Landslide Magazine, Vol. 13, No. 3, January/February 2021. ["Generic.coms present an even greater risk of monopoly powers than a Generic Corp. does. As the dissent in the Fourth Circuit correctly stated, '[t]his case addresses a problem that Booking.com chose to bring upon itself.' The adoption of a generic term as a trademark always involves a problem of the applicant’s own creation. Now, however, in the case of a generic.com, the applicant gets to have it both ways without having to make the usual trade-off between trademark rights and instant communication of the business offerings. Whereas the doctrine of trademark genericity follows the saying that you can’t have your cake and eat it too, the Booking.com rule allows a generic.com that purchases a pricey cake to grab the key to the bakery."]

 

James Boyle and Jennifer Jenkins, Mark of the Devil: The University as Brand Bully, Fordham Intellectual Property, Media & Entertainment Law Journal (Forthcoming). ["We lack both an empirical account of major aspects of the landscape, and a rigorous case study giving individualized, almost ethnographic, information about what the accused academic trademark bullies think they are doing. What are their legal arguments and how would impartial experts assess those claims? What is their intellectual property world-view, their idea of the role that trademarks have in the university’s mission? In this article, we attempt to provide an answer to those questions."]

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

TTAB Seeks Applicants for Attorney Advisor (Interlocutory Attorney) Position

The USPTO is seeking applications for the position of Attorney Advisor (and more specifically, Interlocutory Attorney) at the TTAB. The detailed announcement may be found here. Applications are due by February 25, 2021.

This position is located in the Trademark Trial and Appeal Board (TTAB). As an Interlocutory Attorney in the TTAB, the duties are, but not limited to:

• Analyzing the legal issue in question, developing the strategy to deal with the legal issue, and determining the content and means of delivery of the completed analysis of the legal issue.
• Managing interlocutory matters in oppositions, cancellations and concurrent use cases at the TTAB.
• Serving as a recognized expert in the procedural and substantive aspects of the law, mentoring and coaching others.
• Independently deciding and issuing orders on all procedural and substantive motions that are not potentially dispositive of the proceeding, such as motions to amend pleadings, motions to compel and motions to strike evidence.
• Consulting with and drafting decisions for Administrative Trademark Judges on all procedural and substantive motions that are potentially dispositive of the proceeding, such as motions to dismiss, motions for judgment on the pleadings, and motions for summary judgment.
• Working with Administrative Trademark Judges and the top management of the TTAB, as well as the top management and/or attorneys of other private and public organizations

Text Copyright John L. Welch 2021.

Precedential No. 2: "BURNS NIGHT" Whiskey Opposition Survives Rule 12(b)(6) Motion to Dismiss

The Scotch Whisky Association opposed an application to register the mark BURNS NIGHT for "Malt whisky; Whiskey" on two grounds: geographically deceptive misdescriptiveness under Section 2(e)(3), and deceptiveness under Section 2(a). The Board had denied Applicant ASW's Rule 12(b)(6) motion to dismiss for failure to state a claim, but on reconsideration granted the motion in part. It ruled that the Association had failed to plead a claim under Section 2(e)(3) and under the "wines and spirits" provision of Section 2(a), but did sufficiently plead a claim under the general deceptiveness portion of that Section. The Scotch Whisky Association Ltd. v. ASW Distillery, LLC, 2021 USPQ2d 179 (TTAB 2021) [precedential]. 

Section 2(a): ASW argued that the Board erred in allowing opposer's claim under the more general deceptiveness provision of Section 2(a) because, it asserted, only the portion that specifically pertains to wines and spirits should apply here, and the Association failed to satisfy that portion. Section 2(a), in pertinent part, reads as follows:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises … deceptive … matter; … or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after [January 1, 1996].

The Board disagreed. First, it observed that "the plain language of the general deceptiveness provision does not exclude wines and spirits, and that provision has previously been held to apply to spirits." See In re Spirits Int'l, N.V., 562 F.3d 1347, 90 U.S.P.Q.2d 1489 (Fed. Cir. 2009). As to ASW's argument that the addition of the "wine and spirits" provision in 1996 made the general provision inapplicable, the Board pointed out that this language was added as a result of the implementation of TRIPS in order to provide "[a]dditional [p]rotection" for wines and spirits. Congress did not say that this addition rendered the general portion of the Section 2(a) descriptiveness provision inapplicable. Nor did Congress overrule the decision in Scotch Whiskey Ass’n v. U.S. Distilled Prods. Co., 952 F.2d 1317, 21 .U.S.P.Q2d 1145, 1146-7 (Fed. Cir. 1991), which applied the general provision in a case involving the mark MACADAMS for whisky. 

The Board agreed, however, that opposer failed to state a claim under the "wines and spirits" portion of Section 2(a), which specifically refers to a "geographical indication" that "identifies a place."

The Notice of Opposition alleges only that the involved mark BURNS NIGHT “is highly evocative of Scotland when used on a whisky product” because the mark refers to celebration of Scottish poet Robert Burns’ birthday (1 TTABVUE 5, paragraph 7). While Opposer, in the ESTTA cover form of the notice of opposition, alleges that the mark is a “[g]eographic indication which, if used on or in connection with wine or spirits, identifies a place other than the origin of the goods” (1 TTABVUE 1), the mere general mention of a claim in the ESTTA cover form for a complaint is insufficient to plead that claim. See Embarcadero Techs. Inc. v. RStudio Inc., 105 U.S.P.Q.2d 1825, 1827 n.2 (T.T.A.B. 2013).

The Board nevertheless found these allegations sufficient to plead a claim under the general deceptiveness provision of Section 2(a).

Robert Burns

Section 2(e)(3): A mark is primarily geographically deceptively misdescriptive when (1) the primary significance of the mark is a generally known geographic location, (2) the goods or services do not originate in the place identified in the mark, and (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark, and the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services. See In re Miracle Tuesday, LLC,  695 F.3d 1339, 1343, 104 U.S.P.Q.2d 1330, 1332 (Fed. Cir. 2012).

ASW contended that a required element for a Section 2(e)(3) claim is missing from the Notice of Opposition: that the primary significance of the mark is a generally known geographic location. The Board agreed, and so it dismissed this claim.

Conclusion: The Board granted the request for reconsideration as to the "wines and spirits" and the Section 2(e)(3) claim but denied it otherwise. The association was allowed twenty days "to file an amended notice of opposition" to cure the deficiencies its claims. [Presumably meaning that the Association may add the required geographical language to its rejected claims].

Read comments and post your comment here.

TTABlogger comment: Do you think BURNS NIGHT has a geographical connotation? I never even heard of it.

Text Copyright John L. Welch 2021.

TTABlog Test: Is CAVIAR & CASHMERE Deceptive for Skin Care Products?

The USPTO issued a trifusal(TM) for the proposed mark CAVIAR & CASHMERE for "non medicated skin care and related personal care and cosmetic products," finding the mark to be deceptive under Section 2(a), or alternatively, not registrable under Sections 2(e)(1) and 6(a) without disclaimer of the deceptively misdescriptive term CAVIAR. Applicant, pointing to the Board's CANINE CAVIAR decision (TTABlogged here), contended that consumers will not believe that the goods actually contain caviar, but rather will see the phrase as indicating superiority and luxury. How do you think this came out? In re Chase Investments, Inc., Serial No. 88042209 (February 11, 2021) [not precedential] (Opinion by Judge Michael B. Adlin).

Section 2(a) Deceptiveness: Section 2(a), in pertinent part, bars registration of a mark that is deceptive as to the goods or a feature or ingredient thereof. Specifically, a mark is deceptive when:

(1) it misdescribes the character, quality, function, composition or use of the goods;

(2) prospective purchasers are likely to believe that the misdescription actually describes the goods; and

(3) the misdescription is likely to affect the purchasing decision of a substantial portion of consumers.

Examining Attorney Christina M. Sobral submitted "evidence from a number of sources, showing that caviar is perceived as having benefits for the skin, and that many skin care products include caviar as an ingredient." Here search of Sephora’s website for “caviar” yielded 68 skincare and related products, and the same search of Ultra Beauty’s website yielded 72. 

Applicant admitted that its products do not contain caviar, but it pointed out that the word caviar means not only the salted roe of a sturgeon or other large fish, but also “something considered the best of its kind." Applicant also noted several registrations for mark containing the word "caviar," including MYOXY CAVIAR for skin care creams and lotions.

According to applicant, caviar is seldom if ever used in skin care products, and in any case CAVIAR & CASHMERE is : (1) a double entendre, suggesting “the chic, luxuriousness of cashmere and caviar; caviar;” (2) incongruous, because caviar “is not a common ingredient in skin care; care;” and (3) unitary, because it “has 6 syllables and appears in a pleasing symmetrical structure both portions beginning with ‘CA’ and relating to luxury goods.”

The Board found that a many skin care products contain caviar and, since applicant's products do not, the term CAVIAR is misdescriptive of them. 

We recognize that both “caviar” and “cashmere” are luxury goods, and that because they do not appear to have anything in common, the proposed mark CAVIAR & CASHMERE in its entirety could convey, at least in the abstract, “a feeling of superiority and luxury.” Nonetheless, because our task is not to consider the mark in the abstract, but in the context of skincare goods (which according to the record often include caviar), we find that at least one meaning of the proposed mark is misdescriptive. 

Moreover, even if CAVIAR & CASHMERE conveys “a feeling of superiority and luxury” to some consumers, that may reinforce the message that the products contain caviar, a luxury good used in skincare products. 

As to the double entendre and unitary marks arguments, the Board was unmoved. As to the former argument, "even if the proposed mark calls to mind the chic, luxuriousness of cashmere and caviar, consumers would still immediately misunderstand the nature of Applicant’s goods and assume they contain caviar when they do not." As to the latter, there was no evidence that the alliteration creates a commercial impression that is more than merely misdescriptive.

Because caviar is a fairly common ingredient in skincare products, consumers would believe that “caviar” identifies an ingredient in Applicant’s goods. In other words, consumers are likely to believe the misdescription. This contrasts with the CANINE CAVIAR case, where the evidence showed that caviar is almost never used in pet food.

Finally, because the evidence established that caviar is perceived as beneficial for the skin, “the misdescription would make the product or service more appealing or desirable to prospective purchasers.” Therefore, the misdescription is likely to affect the purchasing decision

The three prongs of the deceptiveness test having been met, the Board affirmed the Section 2(a) refusal.

Deceptive Misdescriptiveness and Disclaimer: Because the word "caviar" is misdescriptive of the goods, the Board affirmed the refusals to register under Sections 2(e)(1) and 6(a) in the absence of a disclaimer of CAVIAR.

Read comments and post your comment here.

TTABlogger comment: What would you call it if the Board issued six refusals? Here is a case where the Board affirmed five refusals (or a "quintfusal"?)

Text Copyright John L. Welch 2021.

TTABlog Test: Is BEENDER Confusable With TINDER for Dating App Software?

Pooria Shahin applied to register the mark BEENDER (in standard character form) for "computer application software for mobile phones, namely, software for social introduction and dating," but Match Group, LLC opposed, claiming a likelihood of confusion with, and likely dilution of, its registered mark TINDER (standard form) for overlapping goods. The Board found the TINDER mark to be "very strong" for likelihood of confusion purposes, but not famous for purposes of dilution. But what about the marks? How do you think this came out? [See results of Twitter poll, below] Match Group, LLC v. Pooria Shahin, Opposition No. 91241077 (February 11, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

Strength of the TINDER mark: Revenue and usage data, and especially the unsolicited references to TINDER in news articles posted on the Internet, led the Board to find that "TINDER falls on the very strong side of the spectrum of very strong to very weak and, thus, TINDER is entitled to a broad scope of protection."

The Goods: The TINDER registration covered "downloadable software in the nature of a mobile application for internet-based dating and matchmaking," but applicant Shahin (appearing pro se) argued that the involved goods are different:

beender was created because of inadequacy and sketchiness of online dating apps, where you are introduced to strangers. As the opposing party describes in its written argument, TINDER® tries “to decrease creepiness of communicating with strangers”, whereas beender is an app designed to facilitate approaching people you meet in person, and not strangers.

The Board, however, pointed out once again that it must "look to the description of goods in the application and registration, not to extrinsic evidence about the scope of the goods" and, in any case, "Applicant’s argument does not present any meaningful distinction between his software and Opposer’s software: that is, both products seek to make meeting people easier or less difficult."

The Marks: The Board noted that when the involved goods are (in part) identical, a lesser degree of similarity between the marks is required to support a findig of likelihood of confusion. (FWIW, Applicant's drawing depicted the mark in lower case letters (beender), but he did not claim any special form for the mark.)

A mark displayed in standard form is not limited to any particular depiction of the mark. For example, Applicant Shahin displays his mark as follows:  

Opposer, whose registered mark is depicted in standard character form, may display its mark thusly:

[Does this point make any sense? - ed.].

"Under these circumstances, including the renown of Opposer’s mark and the identity of the services, the marks are similar, albeit not identical in appearance."

The Board also found that "beender" could be pronounced as "bender," since the word "been" is pronounced as "ben." [That pronunciation never crossed my mind. I think applicant's mark would be pronounced "bean-der." - ed.] . Despite no apparent supporting evidence, the Board concluded:

[O]n this record, it strains credulity to reject finding that a significant segment of consumers will pronounce Applicant’s mark as rhyming with Opposer’s mark and instead find that consumers will use some alternative pronunciation (although some might).

The Board bent over even further toward opposer when it considered the meanings of the marks. Applicant Shahin maintained that "beender" is a term he coined, derived from the phrase "been there, done that." The Board, however, noted that some dictionaries define "bender" as a slang term meaning “a drinking spree,” and the Urban Dictionary, one website, and one blog post refer to a "tinder bender" as a "string of dates." According to the Board, some users "may believe that beender is a shortened form of 'Tinder Bender." [Where's the proof? - ed.]

Opposer’s contention that “no evidence in the record suggests BEENDER has a commercial meaning different from Opposer’s TINDER® mark” and “consumers are more apt to believe [beender] is an extension or variation of, or otherwise related to, [Opposer’s] famous TINDER® app” is not frivolous. [Doesn't opposer have the burden of proof? - ed.]

The Board therefore sustained the Section 2(d) claim.

Dilution: Opposer's evidence of fame for dilution purposes fell short because it failed to show that the mark is famous to the general public, as opposed to users of mobile dating apps (i.e., niche fame). And so opposer's dilution claim was dismissed.

Read comments and post your comment here.

TTABlogger comment: I'm not convinced. How about you? The results of a Twitter poll that ran for five days:

Text Copyright John L. Welch 2021.

TTAB Reverses Failure-to-Function Refusal of "SAY YES TO WHAT’S NEXT" for Clothing and Religious Books.

The Board said "No" to the USPTO's refusal to register the phrase SAY YES TO WHAT'S NEXT for clothing, religious books, and "Entertainment and educational services, namely, the presentation of seminars, workshops and panel discussions, and ongoing television and radio shows all in the field of women aging and how to improve quality of life in the last quarter of life." The Examining Attorney maintained that the phrase fails to function as a source indicator because it is "a commonplace message or expression” . . . "that merely conveys an ordinary, familiar, well-recognized sentiment." The Board, however, found the USPTO's evidence insufficient. In re Lori Allen Enterprises, LLC, Serial No. 88546889 (February 12, 2021) [not precedential] (Opinion by Judge Cheryl S. Goodman).

“A critical element in determining whether a term or phrase is a trademark is the impression the term or phrase makes on the relevant public.”  “[E]vidence of the public’s perception may be obtained from ‘any competent source, such as consumer surveys, dictionaries, newspapers and other publications.”’

There was no record evidence of applicant's actual use of the mark, and so the Board looked to how others used the phrase in the marketplace. “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 examining attorney maintained that this phrase "is widely used by the general public as an affirmation encouraging perseverance and positivity in the face of change” and that "multiple third parties” in a “variety of industries and businesses” use this term or expression as “an affirmation of encouragement to overcome obstacles and embrace change.”

The examining attorney submitted twelve examples of use of the phrase "say yes to what's next." Three were from the same "parenting coach's women/tween group."  The examples  showed use of the phrase “in the context of career, personal, and parenting coaching (3), faith/ministry (2) information about leadership, success, and personal growth (4), and an advertisement about a beverage (1)." Another example came from a career coach website and a post about virtual small business coaching for women entrepreneurs.

The Board observed that evidence of use "by media and businesses in a variety of industries may be probative, and it is not necessary that the evidence show use by competitors of Applicant." However, "the evidence must be sufficiently widespread to show that the public would not perceive it as a trademark."

The Board concluded that the USPTO's evidence fell short:

The record evidence does not show use in connection with any of the type of goods (religious books and women’s clothing) or services (workshops, seminars, panels, radio and television shows related to women’s aging and improving quality of life) identified by Applicant, although it does show de minimis use in connection with ministry/faith groups and programs related to women’s growth and success. In this case, the Examining Attorney’s evidence does not rise to the level of demonstrating that use of “say yes to what’s next” is so common or widespread that the consuming public would view it as a common place expression or sentiment. See Eagle Crest, 96 USPQ2d at 1230 (voluminous evidence of third-party use). Therefore, based on the present record, the Examining Attorney has not met his burden to establish that Applicant’s applied-for mark, SAY YES TO WHAT’S NEXT, fails to function as a mark.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: How many third-party uses is too many? PS: I think the term "applied-for mark" should be banished.

Text Copyright John L. Welch 2021.

Rocker Switch Actuator Configurations Lack Acquired Distinctiveness, Says TTAB

The Board affirmed refusals to register the two product configuration marks shown below (claimed design shown in solid lines), for "“actuators for rocker switches," on the ground that Applicant Carling Technologies failed to prove that the designs had acquired distinctiveness under Section 2(f). Although Carling's design patent ensured exclusive use of the designs for fourteen years (2002-2016), the Board pointed out that long and exclusive use of a proposed mark does not necessarily mean that acquired distinctiveness has been attained. In re Carling Technologies, Inc., Serial Nos. 88279409 and 88279448 (January 8, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

Under Wal-Mart, product configurations, of course, cannot be inherently distinctive. In determining whether Carling's designs enjoyed acquired distinctiveness, the Board first had to determine the degree of descriptiveness of the designs, Royal Crown Cola Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018), and then apply the factors set forth in Converse, Inc. v. ITC, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018).

Carling admitted that, once its design patent expired, third parties were “quickly popping up at an alarming rate” to sell rocker switches with actuators that Applicant admits resembled its own. Because there were a significant number of examples in the record, "registrations of the claimed marks 'may not issue except upon a substantial showing of acquired distinctiveness.'"

Carling submitted declarations from two non-parties attesting to the source-identifying significance of the design, but the Board found the declarations to be problematic for two reasons: first, the declarations were obviously prepared by Carling or its counsel, and "the form nature of the declarations reduces their evidentiary value;" and second, the two declarants were not representative of the universe of purchasers of the goods. 

Because many similar-looking actuators are on the market, Carling's 14-years of exclusive use had little probative value. Carling provided copies of advertisements but no data regarding the geographic scope or amount of the advertising nor the amount of expenditures. None of the advertisements directed customers to "look for" the subject design as a source indicator. Although the actuators were depicted in Carling's advertisements, the proposed design marks did not stand out.

Given the emphasis in the industry, and in Applicant’s own materials, on the non-source identifying features of the goods, “for consumers to have any realistic chance of recognizing the applied-for mark[s] in Applicant’s advertising, separate and apart from” the multiple other products, the Carling house mark, and even the other features of the Contura V rocker switches and actuators themselves, “Applicant’s advertising would have to ‘direct[ ] the potential consumer in no uncertain terms to look for’ the applied-for mark[s].”

Carling's sales figures (about $3M per year) were "muddled" because they did not segregate actuators from switches. Moreover, Carling did not place the sales figures in context with others in the industry. In any case Carling's sales may merely reflect the popularity of its products rather than recognition of its proposed marks.

Carling argued that competitors had copied its design and that actual confusion had occurred (consumers had returned defective switches made by others to Carling). The Board pointed out, however, that the confusion evidence related to entire switches, not actuators, and the copying also involved entire switches."[W]e cannot find from this evidence that the particular features of the actuators for which Applicant seeks registration are recognized as Applicant’s marks." Carling's inaction vis-a-vis policing the proposed marks against supposed infringers cut against its claim of acquired distinctiveness.

Although this evidence of copying and product returns had some probative value, it lacked the specificity to show that "the copyists and consumers recognize the specific actuator features for which Applicant seeks registration as Applicant’s marks."

Considering the entire record, the Board concluded that Carling had failed to prove acquired distinctiveness.

 Read comments and post your comment here.

TTABlogger comment: Should the 14-year period of design patent exclusivity count toward acquired distinctiveness? Should the designs fall into the public domain once the patent expired?

 Text Copyright John L. Welch 2021.

Precedential No. 1: TTAB Dismisses Olympic Committee's Section 2(a) False Connection Opposition to PIERRE DE COUBERTIN for Various Goods

In its first precedential opinion of 2021, the TTAB dismissed the United States Olympic Committee's opposition to registration of the mark PIERRE DE COUBERTIN for various goods in classes 3, 9, 14, 16, 25, and 28, including perfume, sunglasses, jewelry, luggage, clothing, and sporting goods.The Board found that the USOC had failed to prove its claim that the proposed mark falsely suggests a connection with the Olympic Movement in violation of Section 2(a) of the Lanham Act. The United States Olympic Committee v. Tempting Brands Netherlands B.V., 2021 USPQ2d 164 (TTAB 2021) [precedential] (Opinion by Judge Cynthia C. Lynch).

Pierre de Coubertin is the name of a French baron who died in 1937. Mr. de Coubertin was instrumental in reviving the Olympic Games in the late nineteenth century by co-founding the International Olympic Committee and later becoming its president. He designed the Olympic Rings logo, proposed the Olympic motto Citius, Altius, Fortius (Faster, Higher, Stronger), and created the Olympic Creed. The Olympic Games feature a sportsmanship award given only occasionally, named the Pierre de Coubertin medal.

Section 2(a), in pertinent part, bars registration of a mark that consists of or comprises matter that may falsely suggest a connection with a person or institution. 15 U.S.C. § 1052(a). There are four elements of a false suggestion of connection claim:

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

Pierce-Arrow Society, 2019 U.S.P.Q.2d 471774, at *13. at *14; see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 U.S.P.Q 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the current four-part test used by the Board to determine the existence of a false connection). The Board concluded that the USOC failed to establish either of the first two elements of the Section 2(a) test.

In establishing its entitlement to pursue the Section 2(a) claim, the USOC relied on its status as “part of the ‘institution’ to which use of the PIERRE DE COUBERTIN mark would falsely suggest a connection – i.e., the Olympic Movement.”  The Board found that the evidence here "support[ed] the finding previously made by the Board in In re Urbano that 'the entire organization which comprises the Olympic Games, as a whole, qualifies as an 'institution' within the meaning of Section 2(a) of the Trademark Act.'" 51 USPQ2d 1776, 1779 (T.T.A.B. 1999). 

Same or Close Approximation?: In order to satisfy the first element of the test, USOC had to show that consumers associate PIERRE DE COUBERTIN "so closely with Opposer that they recognize it as Opposer’s name (or nickname), identity or persona.” Bos. Athletic Ass’n v. Velocity, LLC, 117 U.S.P.Q.2d 1492, 1497 (T.T.A.B. 2015). The USOC failed to do so.

While Pierre de Coubertin certainly was associated with the Olympic Movement, this record does not demonstrate that the public would perceive Applicant’s mark as a name or identity of the Olympic Movement or Opposer, or a close approximation thereof. Thus, this mark differs from the SYDNEY 2000 mark at issue in Urbano, about which the Board stated, “we have no doubt that the general public in the United States would recognize this phrase as referring unambiguously to the upcoming Olympic Games in Sydney, Australia, in the year 2000.” Urbano, 113 U.S.P.Q.2d at 1644.

Here, the USOC admitted that it “does not use ‘Pierre de Coubertin’ interchangeably with ‘Olympic Games’ as a name for the Olympic Games.” It also admitted that the name was not mentioned in the 2016 USOC Annual report or in the "U.S. Olympic and Paralympic Brand Usage Guidelines." Nor is the name listed in the Ted Stevens Olympic and Amateur Sports Act, which gives the USOC special statutory exclusive rights to certain specified Olympic-related designations.

The record lacked evidence like that in the ROYAL KATE and MARGARITAVILLE cases, where the public "knew the person or institution by the nickname or close approximation of a name or identity in the mark." Instead, the evidence showed that PIERRE DE COUBERTIN "would be understood as a reference to the historical person" and not to the Olympic Movement.

Points Uniquely?: Even assuming arguendo that PIERRE DE COUBERTIN were the USOC's name or identity, or a close approximation thereof, the Board found that the mark does not point uniquely and unmistakably to the USOC. Even in the context of the Olympics, the name is associated with the person, "rather than serving merely as a synonym of the Olympic institution."  

The USOC asserted that the applicant intended to create a false association with the Committee and the Olympics, but the Board was not persuaded by the evidence. Moreover, any intention on the part of the applicant to create a connection with the individual, rather than the USOC, "cannot help establish a Section 2(a) claim for Opposer."

Because the USOC failed to satisfy either of the first two elements of the Section 2(a) test, the Board found it unnecessary to consider the other two elements.

Read comments and post your comment here.

TTABlog comment: Based on my experience, the USOC is, in my opinion, a trademark bully.

Text Copyright John L. Welch 2021.

TTAB Affirms Genericness Refusal of "ECOMANSION" for . . . . . Guess What?

The TTAB affirmed a refusal to register the proposed mark ECOMANSION (in standard character form) on the Supplemental Register for "House building and repair; Housing services, namely, development of real property, namely, repair, improvement, and new construction," on the ground of genericness. Applicant Lance King contended that the evidence of usage was "mixed" and that the USPTO did not provide the required clear evidence of genericness. The Board disagreed. In re Lance King, Serial No. 87660124 (February 8, 2021) [not precedential] (Opinion by Judge Mark Lebow).

Examining Attorney Gidette Cuello and Applicant King agreed that the identification of services in the application appropriately sets forth the genus of services at issue. Therefore, the ultimate inquiry wa whether the relevant public understands ECOMANSION to "refer to" any of the following: “House building and repair; Housing services, namely, development of real property, namely, repair, improvement, and new construction.” [As Professor McCarthy has pointed out here, "refer to" is a rather broad and vague test for genericness - ed.].

The USPTO relied on dictionary definitions of "eco" (meaning “habitat or environment” and “ecological or environments”) and "mansion" (a “manor house; a large imposing residence), as well as articles, blog posts, home listings, and third-party websites using the terms "eco-mansion," "eco mansion," "eco house," and "eco-home" to show that “the relevant public understands the term ECOMANSION primarily refers to a genus of house building and repair type services.”

Applicant King contended that the evidence consists of  "a small handful of obscure Internet articles, mostly containing mixed-use references" that "describe the ecologically-friendly qualities of certain celebrity homes.” He asserted that "this small number of speculative, mixed-use references in obscure Internet articles - without readership evidence" was insufficient to prove genericness.

The Board found that King's reliance on Merrill-Lynch to support his "mixed usage" argument was misplaced. "Applicant confuses Merrill Lynch’s 'mixture of usages'—which referred to a mixture of consumer recognition of the term as used by the applicant and as a generic reference—with the use of a hyphen or addition of a space, which is not the type of mixed usage referred to in Merrill Lynch."

Likewise, King's citation of In re Tennis Indus. Assn. missed the mark. That case involved the phrase TENNIS INDUSTRY ASSOCIATION, and stands for the proposition that when considering a phrase, the Board cannot “simply cite definitions and generic uses of the constituent terms of a mark,” but instead needed to consider the meaning of the phrase as a whole. "Here, the term ECOMANSION is not a phrase, but rather a compound term, and there is ample evidence of generic use of the entire term."

Contrary to King's assertions, the Board did not find the evidence to be “speculative.” "Most of the Examining Attorney’s Internet references refer to existing properties, those in the process of being constructed, or discussions about the importance, impact, or relevance of those properties targeting wealthy, eco-conscious buyers." Nor was the evidence "obscure" or derived from foreign sources.

The evidence comes from a variety of publications and sources, some of which are well-known (i.e., New York Times, Chicago Daily Herald, Reuters, CNET, and Popular Mechanics), others perhaps lesser known, which, taken as a whole, consistently shows ECOMANSION, ECO-MANSION, or ECO MANSION being used to describe ecologically-friendly mansions.

The Internet evidence discusses not only eco-friendly homes, but also their building and construction. "For example, one of the articles referring to Tom Brady’s eco-mansion explains that it took five years to build, and everyone involved in the design and construction was asked, “[H]ow can we make it as sustainable as possible?”

Guess who?

The Board concluded that "the relevant public would understand that the term ECOMANSION primarily refers to a key aspect of 'house building and repair; housing services, namely, development of real property, namely, repair, improvement, and new construction.' Accordingly, the term is generic and should be freely available for use by competitors."

Read comments and post your comment here.

TTABlogger comment: I agree with this one. Do you?

Text Copyright John L. Welch 2021.

Fourth Circuit Affirms E.D. Virginia, Upholds Apple's Summary Judgment Victory in "IPAD" Case

In a long-running battle over the mark IPAD. The United States Court of Appeals for the Fourth Circuit affirmed the entry of summary judgment by the U.S. District Court for the Eastern District of Virginia [TTABlogged here], in favor of Apple on all claims asserted by RxD Media and on all counterclaims asserted by Apple, The appellate court also ruled that the district court did not abuse its discretion in permanently enjoining RxD Media from all uses and variations of the terms "ipad" and "ipod." RxD Media, LLC v. IP Application Development LLC and Apple, Inc., 2021 USPQ2d 81 (4th Cir. 2021).

The TTAB had dismissed RxD Media’s Section 2(d) opposition to Apple's registration of the mark IPAD for various business and computer services, including storage and retrieval of data. RxD Media claimed prior use of the identical mark for "providing temporary use of a web-based software application for mobile-access database management whereby users can store and access their personal information." [TTABlogged here].

RxD Media then brought a civil action under Section 1071(b) seeking review of the Board's decision, and it added four more counts, including trademark infringement and unfair competition. Apple joined with its subsidiary as defendants and counterclaimed for trademark infringement and unfair competition. The court ruled in favor of Apple across the board.

RxD Media claimed that it began using the descriptive term "ipad" in 2007, prior to Apple's attainment of acquired distinctiveness in the term, and so as the senior user of the term, RX Media could not have infringed "a junior descriptive mark." The appellate court, however, ruled that Apple had acquired the right to claim the filing date of January 2002 as its priority date upon acquiring a pending application of Fujitsu. Thus RxD Media's claim of priority was meritless.

 

As to RxD Media's use of "ipadtoday.com," which began in October 2016, Apple had acquired distinctiveness in the term "ipad" by then, and therefore Apple was entitled to claim infringement by RxD Media by the latter's use of "ipad" on its ipadtoday.com website. The court observed that, even if RxD Media had been the first user of "ipad" and was entitled to continue using it, RxD Media was not entitled to expand beyond its original product line into an area occupied by an intervening junior user who has established its own rights in the mark. RxD Media's original product line in 2007 was limited to a mobile internet notepad used for creating simple lists. In 2010, Apple released its "iPad" device, a much different product than RxD Media's notepad. Apple was allowed to assert those rights against RxD Media's re-branding and expansion into website services in 2016.

As to the scope of the injunction, the Fourth Circuit concluded that the lower court properly required RxD Media to keep a "safe distance" from its previously unlawful conduct. 

Read comments and post your comment here.

TTABlogger comment: Even if the Apple iPad of 2010 was a "much different product" than RxD Media's 2007 notebook, aren't they at least related for Section 2(d) priority purposes?

Text Copyright John L. Welch 2021.

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

The TTAB recently decided the appeals from the three Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them, keeping in mind that in the past several years the Board affirmed, by my calculation, just about 9 out of 10 of these refusals. Answer(s) will be found in the first comment.


In re Douglas Wood, Application Serial Nos. 88388867 and 88388875 (January 28, 2021) [not precedential] (Opinion by Judge Michael B. Adlin). [Mere descriptiveness refusal of MISSIONAL MILLIONAIRE for publications and services in the field of faith-based life coaching. Applicant argued that the proposed mark is incongruous because the term "combines religious or spiritual services with great wealth, in a way that is contrary to the commonly understood notions of both of those terms. Missions are associated with religious based services for the poor, while millionaires are traditionally seeking to make money for themselves."]

In re Nouveau Bakery LLC, Serial No. 87753592 (January 29, 2021) [not precedential] (Opinion by Judge Mark Lebow). [Mere descriptiveness refusal of CROISSANT TOAST for "bakery products." Applicant contended that the proposed mark is incongruous, and therefore merely suggestive, because “the word CROISSANT brings to mind a soft, moist and flaky crescent shaped bakery product,” whereas “[t]he word TOAST, in contrast, immediately brings to mind a hard, stiff, loaf shaped sliced bakery product.”]

In re OMG Electronics, LLC, Application Serial No. 85703706 (February 5, 2021) [not precedential] (Opinion by Judge Jonathan Hudis). [Mere descriptiveness refusal of I-WATCH for "mobile phones; devices for hands-free use of mobile phones; portable and handheld digital electronic devices, namely, mobile phones and cell phones, for recording, organizing, transmitting, manipulating, and reviewing text, data, audio and video files." Applicant asserted that "[t]he fact that Applicant’s goods can display time, a rather minor and relatively insignificant feature of the goods (which feature may or may not be utilized by every consumer and, even if utilized, the feature will not be utilized to the same extent by every consumer), does not mean that the mark is ‘merely descriptive’ of the goods.”]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2021.

MAMA BEAR Fails to Function as a Trademark for Clothing, Says TTAB

The TTAB upheld yet another failure-to-function refusal, this time for the proposed mark MAMA BEAR for various clothing items, including t-shirts and sweatshirts. The Board recited its now-standard litany of f-to-f precedents and concluded that "[u]biquitous use of MAMA BEAR, emblazoned in an ornamental manner on the front of t-shirts and sweatshirts by Applicant and many third parties, supports a finding that the phrase MAMA BEAR will be perceived as a widely used message, and not as a unique source identifier." In re Sarah Marie Duncan d/b/a Loved by Hannah and Eli, Inc., Serial No. 86923714 (February 3, 2021) [not precedential] (Opinion by Judge Jonathan Hudis).

Examining Attorney Steven W. Ferrell Jr. submitted dictionary definitions of MAMA BEAR ("A tough, aggressive, and protective mother. Often going to extreme lengths to protect her child, usually her son, and herself"), usage in literature (THE STORY OF GOLDILOCKS AND THE THREE BEARS) and in media ("The Problem with 'Mama Bear' Syndrome", PARENTING magazine), and third-party uses of MAMA BEAR on clothing (often depicted as being worn by pregnant women). 

Applicant pointed to some 19 issued registrations for marks comprising or containing MAMA BEAR for a variety of goods and services. She argued that the USPTO was acting in an inconsistent and arbitrary manner in rejecting her application. Applicant also pointed out that she uses MAMA BEAR in a trademark manner on hangtags, sewn-in labels, packaging, and invoices. The Examining Attorney maintained that MAMA BEAR is a commonplace message or expression that is widely used by a variety of sources, especially when displayed in an ornamental manner on clothing. 

 

The Board observed that the USPTO's policy regarding the registrability of widely used messages is summarized in TMEP § 1202.04(b):

Messages that merely convey ordinary, familiar concepts or sentiments that are used by a variety of sources in the marketplace are considered commonplace and will be understood as conveying the ordinary concept or sentiment normally associated with them, rather than serving any source-indicating function.

As to the registrations cited by Applicant, the Board pointed out once again that each case must be decided on its own record. In addition, the registrations (including one owned by Applicant for IT'S A MAMA BEAR THING) merited little probative value because the registered marks are distinguishable from the proposed mark. Moreover, all of the third-party registrations involved goods and services other than clothing.

Applicant claimed that her use of MAMA BEAR preceded that of the third-party marks, and that the sellers are vendors who copied her design. The Board was unmoved: "That Applicant may have been the first user of the ubiquitous MAMA BEAR designation is not dispositive on the issue of registrability where, as here, the evidence shows that the term indeed is ubiquitous."

As the manner of Applicant's use of MAMA BEAR, the Board noted that this usage was the same as others using the phrase on clothing. Moreover, Applicant's hang tag contains other words and designs that appear as trademarks. 

The Board found  from the evidence of record that "target consumers who purchase and wear this merchandise express to others that they exude protective maternal behavior. MAMA BEAR is therefore a common, widely used and generally understood term to convey a messages of an ordinary or familiar concept or sentiment – aggressive protective parenting."

Consequently, the Board concluded that MAMA BEAR does not serve as a designation of source for Applicant’s clothing products and is unregistrable under Sections 1, 2, and 45 of the Lanham Act.

Read comments and post your comment here.

TTABlogger comment: A letter of protest containing pictures of many clothing items was submitted (as I understand it) by Trademark Watch Dawgs, a self-described group of entrepreneurs in the e-commerce and print-on-demand space that specializes in letters of protest.

PS: Question for you: What sports figure is or was known as "Papa Bear?" 

Text Copyright John L. Welch 2021.

Fourth Circuit Returns Long-Running FLANAX Case to E.D. Virginia on Laches, Statute of Limitations, and Tolling Issues

After fourteen (14) years of litigation at the TTAB and in the courts, the battle between Bayer and Belmora over the mark FLANAX continues. The United States Court of Appeals for the Fourth Circuit has knocked the ball back into the district court. The appellate court affirmed the E.D. Va.'s entry of summary judgment denying Belmora's counterclaims and it upheld the district court's affirmance of the TTAB's decision cancelling Belmora's FLANAX registration under Section 14(3) of the Lanham Act. [The district court decision is TTABlogged here]. However, the Fourth Circuit rejected the district court's conclusion that Bayer's unfair competition claims were barred by the applicable statute of limitations, ruling that laches rather than a state statute of limitations should be applied to the issue of timeliness. Belmora LLC v. Bayer Consumer Care AG, 2021 USPQ2d 126 (4th Cir. 2021).

Belmora's FLANAX

So what's left of the case? Bayer's unfair competition claims under federal and California state law. The district court had concluded that Bayer's Section 43(a) claims for unfair competition and false advertising, and its similar claims under California law, were barred by the applicable statute of limitations. The court found that the limitations period began to run in September 2004 and it that, whether it applied a three-year or four-year statute of limitations in accordance with California law (there was some split in the Ninth Circuit courts), "Bayer's filing of this action [in June 2014] misses the statute of limitations by almost a decade. There are at least six different dates [in 2004, 2005, 2006, and 2009] that establish that Bayer either knew or should have known of its Lanham Act rights." 

The Fourth Circuit, however, ruled that the district court erred in apply a state statute of limitations to Bayer's federal claims. Although the Fourth Circuit "typically" holds that "Congress intended that the courts apply the most closely analogous statute of limitations under state law," it observed that such statutes "can be unsatisfactory vehicles for the enforcement of federal law." Noting that Section 43(a) claims for damages are "subject to the principles of equity," it concluded that laches is the appropriate defense.

We conclude that § 43(a) is one such federal law for which a state statute of limitations would be an unsatisfactory vehicle for enforcement. Rather, the affirmative defense of laches, which applies to claims that are equitable in nature, see White v. Daniel, 909 F.2d 99, 102 (4th Cir. 1990), “provides a closer analogy than available state statutes,” DelCostello, 462 U.S. at 172.

 
And so the Fourth Circuit remanded the Bayer's federal claims to the district court for consideration of the laches defense. It noted that the statute of limitations will still play "an important role" in the analysis. Laches is presumed to bar Section 43(a)claims filed beyond the analogous limitations period.

Should the district court conclude that the presumption applies to Bayer’s § 43(a) claims, the district court should consider the following factors to determine if Bayer can overcome the presumption: (1) whether Bayer knew of Belmora’s adverse use of the FLANAX mark, (2) whether Bayer’s delay in challenging that use “was inexcusable or unreasonable,” and (3) whether Belmora “has been unduly prejudiced” by Bayer’s delay. See Ray Commc’ns, Inc., 673 F.3d at 300.

As to Bayer's state law unfair competition and false advertising claims, the district court never decided whether the statute of limitations was tolled when the cancellation proceeding was filed in June 2004.  The Fourth Circuit therefore also vacated the portion of the district court's order granting summary judgment on those claims, and directed the court on remand "to determine in the first instance whether those claims are subject to tolling and to make any further factual finding necessary to support that determination."

Read comments and post your comment here.

TTABlogger comment: Marty Schwimmer and I wrote an article not so long ago, entitled "US Law Inches Towards Protecting Trademark Reputation Without Use," in which we discussed some ramifications of the earlier Fourth Circuit decision deeming Bayer entitled to bring its Lanham Act claims despite never having used the FLANAX mark in the United States.

Text Copyright John L. Welch 2021.

TTABlog Test: Is CAFFREY Primarily Merely a Surname for Plumbing Products?

The USPTO refused to register the proposed mark CAFFREY for "plumbing products, namely, faucets, showerheads and toilets; lighting products, namely, lighting fixtures," deeming the mark to be primarily merely a surname under Section 2(e)(4). Examining Attorney Joseph P. McCarthy pointed to 5728 entries for “Caffrey” in the Whitepages Database, and to "Neal George Caffrey," the main character of the USA Network original series White Collar. Applicant argued that the mark is fanciful and "extremely rare." How do you think this came out? In re Delta Faucet Company, Serial No. 88411428 (January 29, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch).

In addition to the Whitepages evidence, the examining attorney submitted search results from the Lexis.com Surname Database showing 5530 entries for "Caffrey," negative dictionary evidence containing no entry for "caffrey," website evidence stating the "Caffrey" is an Irish surname, various internet references to the White Collar character, and several articles about the NFL player Christian McCaffrey. Applicant Delta did not submit any evidence.

The evidence of thousands of individuals in a number of locations in the United States who bear the CAFFREY surname show that it “is not so unusual that such significance would not be recognized by a substantial number of persons.” Darty, 225 USPQ at 653. In addition, the use of the surname for the lead character in a USA Network series further demonstrates consumer exposure to CAFFREY as a surname.

Applicant Delta feebly argued that CAFFREY does not have the structure and pronunciation of a surname, and is merely fanciful. The Board was unmoved.

Overall, the record contains multiple sources showing that CAFFREY is an actual surname to which consumers have been exposed, and for which no other meaning exists. The record also features some proof that the structure and pronunciation of CAFFREY is similar to the MCCAFFREY surname of a well-known sports figure.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: I think this as WYHA? Do you? 

Text Copyright John L. Welch 2021.