TTAB Rejects Fraud Counterclaim, Finds ZOOMPAY Confusable With XOOM for Electronic Payment Services

Another fraud claim bit the dust in this opposition to registration of the mark ZOOMPAY for electronic payment services. Opposer PayPal claimed a likelihood of confusion with the registered mark XOOM (in standard character form) for overlapping money transfer services. Applicant ZT Holdings charged PayPal with fraud in procuring five of the pleaded registrations, but ZT failed to prove that any false statements by PayPal were made with an intent to deceive the USPTO. End of fraud story. PayPal, Inc. v. ZT Holdings, LLC2, Opposition Nos. 91208416 and 912173743 (March 29, 2021) [not precedential] (Opinion by Judge Peter W. Cataldo).

Fraud: The Board discussed at length Applicant ZT's claim of fraud. To establish fraud, a party must prove that: (1) the applicant made a false representation to the USPTO; (2) the false representation was material to the registrability of the mark; (3) the applicant had knowledge of the falsity of the representation; and (4) the applicant made the representation with the intent to deceive the USPTO. Bose, 91 USPQ2d at 1941, cited in ShutEmDown Sports, 102 USPQ2d at 1044.

ZT alleged that PayPal intentionally represented to the USPTO that it used its marks in connection with electronic payment and bill payment remittance services when it was engaged exclusively in international money transfers prior to 2014. The Board discussed in detail the the testimony and evidence and found "no direct evidence of an intent to deceive the USPTO, and no clear and convincing evidence to warrant the inference of an intent to deceive." It zoomed in on the testimony of PayPal's witness, Mr. King, who testified that "at all relevant times he believed, and still believes, the truth of the statements about ongoing use of the marks in the pleaded registrations for all the listed services," and who explained the basis for those beliefs.

The Board dismissed the claim of fraud: "Considering the testimony and evidence in its entirety, we do not find that it supports an inference of deceptive intent regarding Opposer’s use of its marks."

Likelihood of Confusion: Since the services of the parties overlap in part, the overlapping services are presumed to travel in the same, customary channels of trade to the same consumers. The Board found the mark XOOM to be inherently distinctive and it concluded, based on sales figures and contextual evidence, that the XOOM mark enjoys widespread recognition among its customers (the general public). ZT's third-party registration evidence, purportedly showing the weakness of the word "zoom," was ineffective since there was no evidence regarding extent of use of those marks and since most of the registrations covered unrelated goods and services.

As to the marks, ZT pointed to the testimony that many of PayPal's customers do not speak English and may not pronounce "xoom" as "zoom." However, PayPal introduced evidence that it promotes the pronunciation of XOOM as "zoom," and also evidence that consumers refer to its products and services as "zoom." Applicant ZT did not provide any evidence of alternative pronunciations. The Board acknowledged that the word PAY at the trailing end of ZT's mark somewhat distinguishes the marks visually and aurally. However, it concluded that the marks are more similar than dissimilar, and so the first DuPont factor favored PayPal

ZT pointed to the lack of evidence of actual confusion during a six-year period of concurrent use, but because of the lack of evidence regarding the extent of use of the ZOOMPAY mark, the Board found this factor to be neutral.

And so the Board found confusion likely and it sustained the opposition.

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TTABlogger comment: The Board has said that you don't need a "smoking gun" to prove fraud, but you do need clear and convincing evidence. See the only Board decision upholding a fraud claim since In re Bose, namely, Nationstar Mortgage LLC v. Mujahid Ahmad, 112 USPQ2d 1361 (TTAB 2014) [TTABlogged here].

Text Copyright John L. Welch 2021.

TTAB Sees Problems with Applicant's Specimen, Affirms Refusal to Register "20/20 IN 2020" for Optometry Advertising Services

The Board affirmed a refusal to register the mark 20/20 IN 2020 for "advertising, marketing and promotion services" in the fields of opthalmology and optometry, because the applicant's specimen of use did not show use of the mark in connection with the recited advertising services. The applicant, a doctor specializing in pain management, displayed the mark in his office, as shown below. In re John Mansell, Serial No. 87220151 (March 18, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The applicant stated that he is not an ophthalmologist or optometrist; he is compensated by providers of those services for patient referrals. He contended that, although the specimen includes no explicit reference to the services, consumers could infer the nature of the services from the context (use with an eyeglasses design) andthe significance of the mark (20/20 in relation to vision), and would make an association. 

During prosecution of the application, the applicant asserted that:

a patient would know that it is in a pain clinic; the patient would know that it was not in an optometrist’s or ophthalmologist’s office and, being aware of its environment, the patient would necessarily and logically know that the provided specimen was Applicant’s advertising of the optometry and ophthalmology services of others.

On appeal, the applicant contended that his specimen showed us of the mark in the rendering of his services. The Board pointed out, however, that '"[w]hile a rendering-type specimen need not explicitly refer to the services, it still must show 'some direct association between the offer of services and the mark sought to be registered therefor.'" In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973).

The Board did not see eye-to-eye with that the applicant, finding that "consumers would not associate 20/20 IN 2020 with advertising services for others in the field of ophthalmology or optometry based on Applicant’s use of the mark in his specimen. *** It fails as a rendering-type specimen, because it does not convey that any service is being advertised for others."

As to applicant's assertion that consumers would infer from the specimen that ophthalmology and optometry services were being advertised, the Board found that inference "too much of a reach."

While the eyeglasses design and reference to 20/20 certainly suggest something associated with vision, exactly what the sign promotes remains a mystery. Given the accompanying name and contact information, we find that consumers probably would view it as an advertisement for Dr. Mansell and his practice. Consumers could derive the impression that Dr. Mansell offers some type of vision-related goods, such as eyeglasses, or vision-related services, such as treatments that improve sight. Alternatively, consumers could perceive the mark as a general slogan for Dr. Mansell’s office or his pain management services. In this regard, we take judicial notice of the second definition of “20/20” in the Merriam-Webster Dictionary, “marked by facilely accurate discernment, judgment, or assessment// hindsight is twenty-twenty,” such that consumers could perceive the mark as an indication that in 2020, they would consider treatment by Dr. Mansell to reflect good judgment. Ultimately, even consumers who are Dr. Mansell’s patients visiting his office would not associate this mark with advertising services for others.

Again pointing out that the specimen "gives no indication that the mark appears in the course of advertising for others," the Board affirmed the refusal.

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TTABlogger comment: As I see it, it looks like the mark is out-of-date anyway, so who cares?

Text Copyright John L. Welch 2021.

SDNY Correctly Applies B&B Hardware In Rejecting Plaintiff Lexington Furniture's TTAB-based Issue Preclusion Argument

The U.S District Court for the Southern District of New York denied Plaintiff LFI's motion for summary judgment in this action for trademark infringement involving Defendant's use of the mark LEXINGTON for home textiles. A decade ago, LFI succeeded in a TTAB proceeding for cancellation of Defendant's registration for the mark shown below, for household linens. (TTABlogged here). Defendant filed a cross-motion for summary judgment on the infringement issue, which motion was also denied. Lexington Furniture Industries, Inc. v. The Lexington Company, AB, Civil Action No. 19-cv-6239 (PKC) (SDNY March 23, 2010).

Issue Preclusion: Plaintiff LFI argued that issue preclusion should bar Defendant from litigating whether its mark is likely to cause confusion, since the Board found that "because the marks are similar, the goods are related and the goods move in the same channels of trade and are sold to the same classes of consumers, [LCC’s] mark LEXINGTON and design for household linens so resembles [LFI’s] LEXINGTON marks for furniture as to be likely to cause confusion." 

 

The Second Circuit observed that:

As a general matter, issue preclusion “applies when (1) the issues in both proceedings are identical, (2) the issue in the prior proceeding was actually litigated and actually

decided, (3) there was a full and fair opportunity for litigation in the prior proceeding, and (4) the issues previously litigated were necessary to support a valid and final judgment on the merits.

The Supreme Court, in B&B Hardware, Inc. v. Hargis Indus., Inc. [TTABlogged here], addressed the issue of the preclusive effect of a TTAB decision in a subsequent action for trademark infringement: “[s]o long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply."
Id. at 160. However, "if the TTAB does not consider the marketplace usage of the parties’ marks, the TTAB's decision should 'have no later preclusive effect in a suit where actual usage in the marketplace is the paramount issue.'" Id. at 156–57 (quoting McCarthy on Trademarks and Unfair Competition § 32:101).

 

The district court wisely concluded that issue preclusion does not apply here because, at the time of the TTAB's decision, defendant had not yet entered the U.S. market. [Defendant's registration issued under Section 66(a) of the Lanham Act, not Section 1(a))].

Therefore, all of the marketplace usage at issue here occurred after the TTAB’s decision. *** [W]hether there is a likelihood of confusion in this action depends considerably on the actual marketplace usage of both LFI’s and LCC’s marks. With respect to the factor of similarity between the two marks, the Court considers the context in which the marks are used.

In this civil action, Plaintriff LFI relies in part on Defendant's use of its "Lexington" mark on its social media and its website, in advertisements and on product, but none of these uses were considered by the TTAB. Also, Defendant points out that, in the marketplace, LFI using its "Lexington" marks in conjunction with a brand or collection name. Furthermore, the actual channels of trade may differ. 

[A] reasonable jury could find that the factor of actual confusion in the marketplace weighs
in favor of LFI or LCC. Because the issues in this case turn on actual marketplace usage not
considered by the TTAB, issue preclusion does not apply. See B&B Hardware, 575 U.S. at 154 (“[F]or a great many registration decisions issue preclusion obviously will not apply because the ordinary elements will not be met.”).

 

Denial of the Cross-motions: Running through the Second Circuit's Polaroid factors, the district court explained that three of the factors - (1) strength of mark (2) similarity of the marks and (3) competitive
proximity - involve triable issues of fact. And so the Board denied the summary judgment motions.

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TTABlogger comment: The Second Circuit recently affirmed the EDNY's grant of summary judgment in a trademark infringement case involving the mark REPLY ALL for podcasts, The appellate court found that none of the Polaroid factors weighed in plaintiff's favor. (Opinion here). I bring this up in part because the Wolf Greenfield team, including yours truly, represents defendant Gimlet. 

Text Copyright John L. Welch 2021.

TTABlog Test: Is LOGGERHEAD DISTILLERY for Distilled Spirits and Distillery Services Confusable With LOGGERHEAD LANDING for Restaurant and Bar Services?

The USPTO refused to register the mark LOGGERHEAD DISTILLERY in standard character and design form (shown below) for "distilled spirits" and "alcohol distillery services" [DISTILLERY disclaimed], finding confusion likely with the registered mark LOGGERHEAD LANDING for "bar and cocktail lounge services; café services; restaurant services." Applicant contended that the cited mark is suggestive of the registrant's services, which are offered at a pool bar/restaurant situated inside a beach resort, that the terms DISTILLERY and LANDING are so different as to distinguish the marks, that its customers are discriminating, and that no actual confusion has occurred. How do you think this appeal came out? In re Loggerhead Distillery, LLC, Serial Nos. 88441155 and 88452674 (March 24, 2021) [not precedential] (Opinion by Judge David K. Heasley).

Relatedness: Third-party website evidence convinced the Board that consumers have been widely exposed to distillery services, distilled spirits, and restaurant services offered under the same mark. In addition, media articles discussed "the growing trend of restaurant-distilleries." [Hearsay? - ed.].

Applicant contended that "something more" than the mere fact that distilled spirits could be served at registrant's restaurants, is required to show the relatedness of restaurant services and distilled spirits. Nope. Not when the relatedness is well-known or generally recognized, said the Board. 

On this evidentiary record, the relationship “is the opposite of obscure, unknown, or generally unrecognized, [and] the relevant line of case law holds that confusion may be likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods, on the other.” In re Country Oven, 2019 USPQ2d 443903, at *13.

The fact that registrant offers its services only at a pool bar is irrelevant, since there is no limitation in the cited registration as to channels of trade. "The respective goods and services can be expected to flow through the same or similar channels of trade, as the website evidence demonstrates." "And they would flow to some of the same classes of consumers—in this case, ordinary adult consumers of alcoholic beverages."

The Marks: The Board agreed with Examining Attorney Angela Duong that the word LOGGERHEAD is the dominant element of all of the marks. Moreover, consumers are likely to shorten applicant's mark when ordering a "LOGGERHEAD." The words DISTILLERY and LANDING make "little or not difference" in the commercial impressions of the marks. “[I]f the dominant portion of both marks is the same, then confusion may be likely notwithstanding peripheral differences." And so this DuPont factored weighed against the applicant.

Sophistication, etc.: As to customer sophistication, the applications and cited registration are unrestricted as to price or quality, and "there is no reason to infer that the consumers of the alcoholic beverages will be particularly sophisticated, discriminating, or careful in making their purchases." [Probably the more they consume, the less discriminating - ed.]. The Board considered this factor to be neutral. [Seems like this should favor affirmance - ed.].

Applicant cited seven third-party registrations for marks containing the word LOGGERHEAD, but without evidence regarding extent of use of the marks, the probative value of this evidence was minimal. Moreover, six of the seven were for unrelated goods and services.

Finally, as to the lack of confusion evidence, the Board once again pointed out that this has" little probative weight in the likelihood of confusion analysis, inasmuch as the Board in such cases generally has no way to know whether the registrant likewise is unaware of any instances of actual confusion, nor is it usually possible to determine that there has been any significant opportunity for actual confusion to have occurred."

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

loggerhead sea turtle

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TTABlogger comment: This decision leaves a bad taste in my mouth. In the real world, what are the chances of consumer confusion between these marks?

Text Copyright John L. Welch 2021.

TTABlog Test: Is HOSTIING Merely Descriptive of Rental and Lodging Services?

The USPTO refused to register the proposed marks HOSTIING GROUP and HOSTIING, finding them to be merely descriptive of mobile apps for reserving lodging, management of short term rentals, and booking services for temporary lodging. Applicant asserted that "hosting" has several meanings unrelated to lodging rentals or homesharing, and is most frequently associated with website hosting. Moreover, the applicant "purposefully implemented the double ‘ii,’ lending to different pronunciations that relevant consumers could apply and evoking a distinctive commercial impression." How do you think this came out? In re NGD Homesharing, LLC, Serial Nos. 88452729 and 88454104 (March 18, 2021) [not precedential] (Opinion by Judge Michael B. Adlin).

The Board found that the double "i" in applicant's mark is a "minor misspelling [that] does not change the term’s meaning (or much of anything else in the term )." See, i.e., In re Quik Print, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) (finding QUIK PRINT merely descriptive of printing and copying services, stating “[t]here is no legally significant difference here between ‘quik’ and ‘quick.’”). The Board observed that HOSTIING "looks almost the same as and would be pronounced similarly or identically to “hosting,” a term commonly used and with a well recognized meaning in connection with Applicant’s identified goods and services."

"Hosting" may have other meanings in the abstract, but proposed mark must be considered in the context of the identified goods and services. Applicant itself uses the word "hosting" to refer to its services.

Applicant pointed to several third-party registrations in which the word "host" is not disclaimed, nor was Section 2(f) invoked. The Board once again pointed out that each application must be assessed based on its own record, and the Board is not bound by prior examination errors in other cases.

The Board unsurprisingly also found the mark HOSTIING GROUP to be merely descriptive because " each component retains its merely descriptive significance in relation to the goods and services, and Applicant does not suggest any alternative commercial impression resulting from the combination of these immediately descriptive terms."

And so the Board affirmed both refusals.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2021.

QURATE Registrant Fails to Overcome Three-Year Presumption of Abandonment with Proof of Intent to Commence Use, Says TTAB

Although a registration may issue via the Madrid Protocol without use of the mark in this country, the registration is still subject to the same grounds for cancellation as registrations issued under Section 1 or Section 44(e), including abandonment. Saddlesprings, 104 USPQ2d at 1951. Here, the Board granted a petition for cancellation of a registration for the mark QURATE for computer hardware and software, and telecommunication, entertainment, and computer services, finding that Respondent Thomas Brooke never used the QURATE Mark in the United States in connection with any of the identified goods and services, and failed to rebut Petitioner’s prima facie showing of abandonment by proving an intent to commence use. Qurate Retail, Inc. v. Thomas Brooke, Cancellation No. 92069076 (March 22, 2021) [not precedential] (Opinion by Judge Melanye K. Johnson).

Petitioner alleged that Brooke never used his mark, or if he did, he stopped using it for a three-year period after the registration issued, triggering the three year presumption of abandonment under Section 45 of the Lanham Act. The presumption "shifts the burden of production to the party contesting the abandonment to submit evidence of either: (1) use of the mark during the statutory period of nonuse; or (2) activities reflecting an intent to resume (or commence) use during the nonuse period." The ultimate burden of persuasion, however, remains with the party asserting abandonment. Wirecard AG, 2020 USPQ2d 10086, at *4. “In the absence of justifiable non-use, Section 66(a) registrations which have never been used, or for which use has been discontinued with no intent to resume use, may be subject to cancellation for abandonment even if the international registration remains valid and subsisting.” Saddlesprings, 104 USPQ2d at 1952. 

Nonuse: Respondent Brooke conceded that he had not commenced actual use of the mark in the United States.

Respondent admitted [on deposition] that during the three-year period from May 12, 2015 through May 12, 2018, he did not have a single QURATE customer in the United States, he had no employees or promotional teams for QURATE in the United States, he was not registered to do business in the United States, and he had no physical presence for his business in the United States. Respondent also could not recall exact details or approximate circumstances underlying the sale, or offer for sale, of any QURATE-branded good or service in the United States.

Intent to Commence Use:  Brooke claimed that he "always maintained an intent to commercialize the QURATE brand in the United States." He traveled to San Francisco in January 2017 to meet with potential investors and made a presentation regarding the "Qurate digital platform." There was no evidence in the record that Respondent or his employees or agents ever returned to the United States in furtherance of conducting business under the QURATE mark. Nor was there any proof of business plans or continued communications showing Brooke's intention to use the QURATE Mark in U.S. commerce.

The occasional and non-prominent use of the word "qurate" on Brooke's website, which website was headed by a prominent "Q" logo, "likely would be perceived as trade name usage, or in any event, not directly associated with the registered goods and services."

Conclusion: The Board therefore found that Brooke had failed to overcome Petitioner's prima facie case of abandonment, and so it granted the petition for cancellation.

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TTABlogger comment: Another 66(a) registration runs off the use-requirement cliff.

Text Copyright John L. Welch 2021.

TTABlog Test: Are Live Plants Related to Fresh Vegetables for Section 2(d) Purposes?

The USPTO refused to register the proposed mark COLORIFIC for "Live plants, namely, Echinacea and excluding fresh vegetables, for sale online and in garden centers and mass merchants," finding confusion likely with the identical mark registered for "fresh vegetables." Applicant Monrovia argued that its plants are "purely ornamental in nature" and not meant for consumption, that its echinacea plants are sold from its own website, that it does not sell fresh vegetables, and that the garden centers and mass merchants that buy applicant’s live echinacea plants typically do not sell fresh vegetables. How do you think this appeal came out? In re Monrovia Nursery Company, Serial No. 88559348 (March 18, 2021 [not precedential] (Opinion by Judge Elizabeth A. Dunn).

Of course, the Board holds that when the marks are identical, a lesser degree of relatedness between the goods is needed to support a Section 2(d) refusal. [Does this make sense? - ed.]. The Board found an "inherent relationship" between live plants and fresh vegetables. It took judicial notice that echinacea is  “the dried rhizome, roots, or other parts of any of three purple coneflowers that are used primarily in dietary supplements and herbal remedies for the stimulating effect they are held to have on the immune system." Since vegetables are the edible parts of plants, "it is clear not only that Applicant’s goods and the registered goods are inherently related as plant products, but they are functionally related as plant products beneficial to humans, either as herbal remedies or food." [That seems to be a stretch - ed.].

echinacea (coneflower)

As usual, the USPTO turned to third-party registrations and uses to show that the involved goods travel in the same channels of trade. Examining Attorney Claudia Garcia submitted three use-based third party registrations covering both vegetables and live plants. [Only three? color me unimpressed. - ed.]. She also submitted fourteen examples of retailers selling both live plants and vegetables. [Seems like every grocery store I (used to) frequent sells both. - ed.]. 

The Board pooh-poohed Monrovia's arguments, noting that echinacea plants are edible, at least in part. Also, the evidence showed that the channels of trade actually overlap, and in any case there is no restriction in the cited registration as to channels of trade.

Although the Board would have preferred a "deeper record," it nonetheless found confusion likely and it affirmed the refusal.

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TTABlogger comment: We grow coneflowers on Cape Cod. (pictured above). I never mistook them for vegetables

Text and coneflower photo Copyright John L. Welch 2020-2021.

Fourth Circuit Rules That a TTAB Party, After Remand from its CAFC Appeal, May Seek Further Review in District Court

The long and winding road to determination of the genericness of PRETZEL CRISPS for pretzel crackers has taken another twist. The journey began with the TTAB's 2014 decision (TTABlogged here), finding the term to be generic. Princeton Vanguard appealed to the CAFC (under Section 1071(a)). The appellate court vacated and remanded in 2015 because the Board had failed to correctly apply the legal standard (here). On remand, the Board (in 2017) again found PRETZEL CRISPS to be generic for pretzel crackers (here). Princeton Vanguard then filed a complaint in the U.S. District Court for the Western District of North Carolina, seeking Section 1071(b) review of the Board's decision. In October 2019, Judge Kenneth D. Bell ruled (sua sponte) that because Princeton Vanguard had appealed the first Board decision to the CAFC under Section 1071(a) of the Lanham Act, it had waived its right (under Section 1071(b)) to proceed in the district court (rather than the CAFC) as to the second Board decision. Therefore, the district court lacked subject matter jurisdiction over the civil action (here). The U.S. Court of Appeals for the Fourth Circuit, on March 17, 2021, reversed that decision and remanded the case to the district court for further proceedings. Snyder's-Lance, Inc and Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 2021 U.S.P.Q.2d 318 (4th Cir. 2021).



A party seeking review of a TTAB decision may appeal to the CAFC under Section 1071(a) or seek de novo review in a U.S. District Court under Section 1071(b). As the Fourth Circuit observes, the CAFC route may lead to a faster resolution of the appeal, but the record is restricted to that developed at the TTAB. The district court route allows the parties to introduce additional evidence and new issues. [There are other considerations, of course, like cost and "home court advantage" - ed.]. If an appeal is commenced at the CAFC, the appellee may elect to have further proceedings conducted in a district court. The reverse is not allowed.

The parties agreed that certain points of law ruled on by the CAFC are binding as law of the case. They also agreed that the two TTAB decisions were unique and separate decisions. The parties disagreed on whether Princeton Vanguard had the same two options for review in 2017 as it did in 2014. The Board found the statutory language to be "somewhat ambiguous," but it sided with Princeton Vanguard.

Section 1071(a) states that when a party elects to appeal to the CAFC, it "thereby waive[es] his right to proceed under Section 1071(b)." Moreover, the latter section states that a party dissatisfied with a TTAB decision "may, unless appeal has been taken to . . . the Federal Circuit, have remedy by a civil action." The Fourth Circuit noted that "[a]t first blush," this language seems to foreclose Princeton's path to the district court. However, that interpretation leads to difficulties.

While the statute speaks of “waiving [one’s] right” to district court proceedings and refers to an “appeal [that] has been taken” to the Federal Circuit, it says nothing about how long a choice of forum remains in effect, or whether it can bind a party across appeals from related, but distinct “decisions.” Common sense, however, suggests that there must be some limitation.

Following a detailed examination and analysis of Section 1071, the appellate court concluded that the language supported Princeton Vanguard's position. The court then looked to other sources of authority, including legislative history (of patent-related statutory provisions), the decisions of two other circuits, the Seventh (a patent case) and Ninth (trademark), and relevant policy considerations.

The court noted that a party's need or desire to seek district court review may become clear only after reviewing the Board's second decision. Here, Princeton Vanguard explained that it originally went to the CAFC because it wanted a swift correction of the Board's legal error. After the Board's second decision, Princeton believed that further fact finding would support their case, and so it decided to proceed in the district court. 

The Fourth Circuit observed that its interpretation of the statute, allowing the civil case to proceed, furthers a party's ability to choose its own litigation strategy and to reassess its position after each Board decision.

The court did not agree with district court regarding its concerns about judicial economy. Although the Federal Circuit has certain expertise in a particular trademark matter, district courts are "perfectly capable of applying the law of the case doctrine." Moreover, if the blanket waiver did apply, a dissatisfied party might feel compelled to choose the district court route so as not to foreclose the possibility of further developing the factual record as circumstance might warrant.

And so the appellate court reversed the district court's ruling and remanded the case for further proceedings.

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TTABlogger comment: Marty Schwimmer and I had a case a few years ago in which we first appealed to the CAFC but were allowed by the TTAB to withdraw that notice of appeal and instead proceed in the district court (all within the original appeal deadline). The other party had filed a civil action for unfair competition, which was then consolidated with the Section 1071 action.

Text Copyright John L. Welch 2021.

TTAB Affirms Bifusal of Design Mark for Training Services: Faulty Specimens and Likelihood of Confusion with "KF" Mark

Brian Aquart fell victim to a USPTO bifusal and the TTAB did not come to his rescue. The Board affirmed two refusals to register the gray-and-orange design mark shown below, for "teaching and training in business, industry and information technology," deeming the specimens of use to be inadequate and finding a likelihood of confusion with the standard character mark KF for "educational services, namely, conducting classes, workshops, and conferences in the field of human resources and distributing course materials in connection therewith; executive coaching." In re Brian Aquart, Serial No. 88245504 (March 17, 2021) [not precedential] (Opinion by Judge Cynthia Lynch).

Faulty Specimens: Aquart's original specimens of use consisted of "stationery" (letterhead, envelopes, and business cards) displaying the grey-and-orange mark. Unfortunately the specimens made no reference to his services, and so Examining Attorney Luke Cash Browning rejected them. As the Board observed, "The specimen must show a direct association between the mark and the services." Aquart submitted a substitute specimen (shown below), but that was in black-and-white, not in the claimed colors, and so it too was rejected.

"Given the absence of an acceptable specimen showing use of Applicant’s mark in connection with the applied-for services, we affirm the refusal to register under Sections 1 and 45 of the Trademark Act."

Likelihood of Confusion: For completeness, the Board considered the Section 2(d) refusal. It found that Aquart's broadly worded recitation of services encompassed the more narrow executive coaching services of the registrant. The evidence also showed that the registrant’s human resources classes and workshops are a type of training in business and industry. The Board presumed that these overlapping services travel through at least some of the same channels of trade to the same classes of purchasers.

Turning to the marks, the Board noted that the cited mark KF is registered in standard character form, and could appear in any font style or color, including the same colors as in applicant’s mark. Moreover, the Board found that the circle around applicant's mark is a mere background design for the letters.

Aquart argued that the letters in his mark are "barely recognizable as lettering" [I agree - ed.], but the Board seized on his own statement describing his mark as a “circular design in orange and grey formed by a stylized letter ‘K’ and letter ‘F.’” [Isn't consumer perception what counts? not what an applicant says in a statement buried in the prosecution history that consumers never see? - ed.].

The Board also noted that the letters K and F appear with the words "Kingswood Forest" on Aquart's specimens of use, a fact that may be taken into account in interpreting Aquart's mark. [But he's not trying to register "Kingswood Forest & Design." Just the design. - ed.].

As to the marks’ connotations and commercial impressions, the Board found them to be similar. "Consumers would attribute the same meaning to, and derive the same impression from, the shared lettering KF in Applicant’s marks as they would in the cited mark."

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

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TTABlogger comment: Is the "F" in Aquart's mark all in orange? or is it part orange and part gray? If I looked at the design by itself (not with KF already in mind), I might think it was "CFD" in orange with an abstract gray character representing something leaning on its own tail.

Text Copyright John L. Welch 2021.

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

The TTAB recently decided the appeals from the three Section 2(d) likelihood of confusion refusals summarized below. Keeping in mind that, by my estimate, 90 % of Section 2(d) appeals result in affirmance of the refusal, how do you think these came out? [Answer will be found in the first comment.]


In re Hungry Pet Nutrition LLC, Application Serial No. 88625423 (March 11, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Section 2(d) refusal of SUPERFOOD FOR SUPERDOGS for "dog food, namely, dry kibbles for dogs only; none of the above including dog snacks, dog treats, pet snacks or pet treats" [SUPERFOOD FOR DOGS disclaimed], in view of the registered mark SUPERFOOD SNACKS FOR DOGS for "pet food; edible pet treats; edible organic pet treats for dogs; edible vegan pet treats for dogs" [SNACKS FOR DOGS disclaimed]].

In re Plant Therapy, LLC, Serial No. 88722907 (March 12, 2021) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) Refusal of MUSCLE AID for essential oils [MUSCLE disclaimed] in view of the identical mark registered for "for “blended liquid mineral dietary supplements and nutritional dietary supplements” [MUSCLE disclaimed].

 In re Boulevard West, Inc., Serial No. 87692255 (March 16, 2021) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of BOULEVARD INSURANCE STRATEGIES & Design for "Financial and investment services, namely, financial portfolio management services, investment advisory services, financial planning services, and investment management services for high-wealth individuals and families," in view of the registered mark BOULEVARD for "accepting, processing, and reconciling credit card, debit card, gift card and other forms of payment transactions via a global computer network; financial transaction services, namely, providing secure commercial transactions and payment options."]

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

Text Copyright John L. Welch 2021.

TTABlog Test: Are These Two Design Marks Confusingly Similar for Overlapping Clothing Items?

Nfinity IP opposed Wooter,LLC's application to register the design mark shown below left, for various clothing items and sports bags, claiming a likelihood of confusion with its registered mark shown below right, for overlapping goods. Since the goods are, in part, identical, the Board presumed that those goods travel in the same, normal channels of trade to the same classes of consumers. Although the goods are sold to ordinary consumers and are not limited to price point, the Board found this factor be neutral. [Not sure why - ed.]. But what about the marks? That's the crux of the matter. How do you think this came out? Nfinity IP, LLC v. Wooter, LLC, Opposition No. 91241564 (March 9, 2021) [not precedential] (Opinion by Judge Linda A. Kuczma).

Strength of the Cited Mark: Opposer Nfinity did not provide evidence of its sales figures or marketing expenditures, nor any market share analysis. Nonetheless, its evidence regarding sales efforts and sponsorship of cheerleading tournaments, and the fact that the mark is inherently distinctive, led the Board to conclude that Nfinity's mark is "reasonably strong commercially."

Similarity of the Marks: “[S]imilarity in appearance between marks is really nothing more than a subjective ‘eyeball’ test. Because a picture is worth a thousand words, there is little in the way of guidelines to determine that degree of visual similarity which will cause a likelihood of confusion of buyers.” J. Thomas McCarthy, 4 McCarthy on Trademarks and Unfair Competition § 23:25 (5th ed. 2020).

The Board observed that Opposer Nfinity’s mark, which Nfinity calls its "'Infinity' trademark," has the appearance of a stylized “infinity” symbol, i.e., a figure-eight on its side. The “infinity” symbol overlaps in the middle to complete the figure eight. On the other hand, Applicant Wooter’s mark has the appearance of two circles that open up into one another. Nfinity's mark has a three-dimensional quality, whereas Wooter's mark seems two-dimensional and flat.

Opposer’s mark features a stylized infinity symbol, while Applicant’s mark features a stylized depiction of a design which does not convey the same impression as Opposer’s mark. Apart from the fact that both marks feature two lobes, the marks contain different elements, including lobes of different shapes and configurations.

The Board concluded that, although there is a "general similarity" between the marks, the similarity is outweighed by the differences. "When viewed in their entireties, the designs of Opposer’s and Applicant’s marks are clearly distinct in overall appearance such that they create different overall commercial impressions on purchasers."

The Sixth DuPont Factor: Wooter submitted nineteen third-party use-based registrations for marks that include an "infinity loop" symbol, covering the same goods, or related goods, to those listed in Nfinity’s registrations. However, there was no evidence regarding use of these marks, and so the third-party registrations were entitled to "very little weight." "The fact that there are a number of registered marks containing an infinity design does not reflect a crowded marketplace, nor is it evidence of descriptiveness."

Conclusion: The Board concluded that the first DuPont factor - i.e., the dissimilarity of the marks - was dispositive, and so it dismissed the opposition.

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TTABlogger comment: To me, Nfinity's mark looks more like a mobius strip than an infinity symbol.

Text Copyright John L. Welch 2021.

Divided TTAB Panel Affirms Surname Refusal of "INGLIS US & Design" for Firearms

Usually when an alleged surname is combined with a design, the Office will approve the mark for publication. Not this time. The Board affirmed a Section 2(e)(4) refusal of the word-and-design mark shown below, for firearms and related goods. The panel majority found that "the additional geographically descriptive term US and the plain diamond background do not remove the primary surname significance." Judge Bergsman dissented, opining that "[t]he Board should restrict the application of what is 'primarily a surname' to trademarks that consist of a mark that is, and only is, a surname." In re John Inglis Company, Limited dba INGLIS, The Inglis Company, Serial No. 88403123 (March 11, 2021) [not precedential] (Majority Opinion by Judge Karen S. Kuhlke). The panel majority stated the current view of Section 2(e)(4), which looks not specifically to the "rareness" of a surname, but to whether the public has been "exposed" to the proposed mark as a surname:

Among the circumstances that may be probative in making this determination are: the extent to which the term is exposed to the public as a surname; whether the term is the surname of anyone connected with the applicant; whether the term has any recognized meaning other than as a surname; whether the term has the structure and pronunciation of a surname; and whether stylization, design or additional wording is distinctive enough to cause the mark not to be perceived as primarily merely a surname.

The Examining Attorney submitted data from LEXIS/NEXIS showing that INGLIS appears 5,439 times as a surname in the United States. The name also is found in several nationwide media articles, identifying, for example, Bob Inglis, a Congressman from South Carolina, Rev. Holly Inglis, a Presbyterian minister in Jacksonville, Florida, and Kipp Inglis, a local artist in Lodi, Wisconsin. The Board found that "the evidence shows the surname INGLIS has enjoyed a measure of exposure to the general public across the country, thereby raising the probability that the public at large would regard INGLIS as a surname, rather than something else."

Although no person associated with applicant has the surname INGLIS, the company was named after John Inglis and the name is used to indicate the quality of the weapons his company produced. This fact supports the surname refusal.

The applicant pointed to several other meanings of INGLIS, including a town in Florida of that name. However there were no dictionary definitions that provided another meaning for INGLIS, other than as a surname. The minor and obscure meanings provided by applicant "do not constitute a readily recognized meaning to strip it of its primary surname significance."

As to structure and pronunciation, the evidence was inconclusive and the Board deemed this factor to be inconsequential.

Finally, the Board pointed out that adding a generic or descriptive term to a surname does not detract from its surname significance. The same is true for a geographically descriptive term like "US" And the background design is "not so unusual or distinctive to convey a separate commercial impression," and likewise do not change the surname significance of INGLIS.

The panel majority concluded that, on balance, the proposed mark is primarily merely a surname within the meaning of Section 2(e)(4).

Judge Bergsman, in dissent, agreed that INGLIS is primarily merely a surname. "However, the mark is not INGLIS. As described by Applicant, "[t]he mark consists of the stylized wording ‘INGLIS US’, ‘INGLIS’ over ‘US,’ inside a diamond outline.'" Judge Bergsman criticized the majority for "characterizing the letters US and the diamond background design as parts of an individual’s surname or pretending they do not form part of the commercial impression engendered by the mark." 

Judge Bergsman harkened back to Judge Seeherman's concurrence in In re Joint-Stock Co. "Baik," in which the former judge discussed the purpose of Section 2(e)(4). In Judge Bergman's words:

The purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames, as though there were something offensive in viewing a surname. Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses, in the same manner that merely descriptive terms are prohibited from registration because competitors should be able to use a descriptive term to describe their own goods or services.

Nonetheless, Judge Bergsman points out, there has been a general reluctance to protect surnames as registrable trademarks. Yet there is "no absolute rule or public policy suggesting that individuals have an absolute right to use their names."

Therefore, there is no basis for the policy or practice of broadly interpreting the scope of what is “primarily merely a surname.” The Board should restrict the application of what is “primarily merely a surname” to trademarks that consist of a mark that is, and only is, a surname.

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TTABlogger comment: On which side do you come out?

Text Copyright John L. Welch 2021.

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

The TTAB recently decided the appeals from the three Section 2(e)(1) mere descriptiveness (or disclaimer) refusals summarized below. At least one of them was reversed. Let's see how you do with them. Answer(s) will be found in the first comment.


In re MCM Industries, LLC, Application Serial No. 88380496 (March 4, 2021) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 6 requirement for disclaimer of "JEWELED" in the mark JEWELED LULLABY for jewelry. The examining attorney submitted dictionary definitions of "jeweled" as well as marketplace evidence showing the term used descriptively in connection with jewelry by several third parties.]

In re The Trustees of the Crown Acquisitions Discretionary Trust, Serial No. 88666035 (March 9, 2021)[not precedential] (Opinion by Judge Marc A. Bergsman). [Mere descriptiveness refusal of THE LUXURY COLLECTIVE for "Bed sheets; Blanket throws; Burp cloths; Comforters; Mattress pads; Sleeping bags for babies; Swaddling blankets; Bed blankets; Lap blankets" [LUXURY disclaimed]. Applicant argued that the proposed mark not merely descriptive because the composite term does not describe any component of bedding ]

In re JHR Entertainment, LLC, Application Serial No. 88286556 (March 9, 2021) [not precedential] (Opinion by Judge Christopher Larkin). [Mere descriptiveness refusal of MUSICAL TUSHIES for musical greeting cards [MUSICAL disclaimed]. Applicant argued that "[w]hen the terms of the mark are combined, the term 'musical' becomes an adjective for 'tushies'" and no longer describes a greeting card per se, and that a “consumer must then assess what ‘musical tushies’ are.”].

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

Text Copyright John L. Welch 2021.

Recommended Reading: "Fanciful Failures: Keeping Nonsense Marks off the Trademark Register"

In my role as trademark thought follower, I recommend this recent note in the Harvard Law Review, by Grace McLaughlin, entitled "Fanciful Failures: Keeping Nonsense Marks off the Trademark Register," 134 Harv. Law. Rev. 1804 (March 2021). [on-line version here; pdf here]. Ms. McLaughlin discusses the proliferation of registrations for "nonsense" trademarks - marks that consist of an apparently random string of letters unpronounceable in English and with no meaning in another language - often originating in China due to economic incentives offered by the Chinese government, or spawned by a desire to take advantage of Amazon's Brand Registry. She suggests that "by extending failure to function to encompass marks that do not work because they are linguistically incoherent and unmemorable, courts and the USPTO can keep these marks off the Register and prevent them from further muddying the trademark system."

 

Part I of this Note explains why nonsense marks do not fit within the established purposes of trademark law and why, nevertheless, existing barriers to registration do not filter them out. Part II then explores the problems with having these marks on the Register, outlining the harms to other brand owners, trademark examiners, and the system of meaning established by trademark law. Part III provides an overview of failure to function doctrine, while Part IV advocates for an extension of this doctrine, so that it captures marks that do not function because they have no staying power in consumers’ minds. By focusing on whether these marks work as trademarks are supposed to, those applying failure to function can offer a legal basis for the common sense conclusion that the only mark that matters to consumers in this context is Amazon’s.

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Text Copyright John L. Welch 2021.

TTABlog Job Posting: Fresh IP Seeks Experienced Trademark Attorney

Fresh IP has asked me to post its announcement of a job opportunity. Being a cooperative fellow, I agreed to do so. The firm has offices in Reston, VA, Overland Park, KS, and Cambridge, UK, but team members can work remotely from anywhere.

Fresh IP PLC is seeking an experienced U.S. trademark attorney with a significant portable book of business to join our friendly team and rapidly growing practice.

Your responsibilities would include supervising paralegals in carrying out domestic and international filings and prosecution work, as well as assisting with contested proceedings and business development activities. The firm has offices in Reston, VA, Overland Park, KS, and Cambridge, UK, but all team members can work remotely from anywhere utilizing our reliable and cutting-edge cloud-based software systems.

Our team of support staff handles everything administrative and paralegal-level so you can focus on high-value work and business development activities. We are growth-oriented and will assist you with marketing and business development. Our trademark attorneys are experienced in all aspects of trademark practice, including global portfolio management, domestic and international clearance, enforcement and negotiation, contested proceedings (TTAB and litigation), and prosecution and appeals, and we emphasize close collaboration and mutual support. Our partners also retain a very high percentage of their client billings.

The ideal candidate is an established trademark attorney with a significant portable book of business and 5-10 years of experience in trademarks, including the areas mentioned above. Excellent work product is essential.

This is an opportunity for a large firm attorney looking to work with greater autonomy in a smaller firm environment, an established solo needing staffing and support to take their practice to the next level, or any partner- or near-partner-level trademark attorney looking for a better platform for business development and growth.

Apply via email to: cliff at freship.com

Please include a relevant writing sample with your bio.

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Text Copyright John L. Welch 2021.

TTABlog Test: Is PENNSTATE HEALTH Primarily Geographically Descriptive of Health Care Services?

The USPTO refused to register the proposed mark PENNSTATE HEALTH in standard character form, for various educational, research, and health care services, finding it to be primarily geographically descriptive under Section 2(e)(2). The Office refused to register the word-and-design mark shown below absent a disclaimer of that same phrase, for the same services. The Examining Attorney pointed out that the applicant had disclaimed "PENN STATE" in some of its registrations, or claimed acquired distinctiveness. Applicant argued that "Penn State" is not a nickname for the Commonwealth of Pennsylvania, but rather for the University. How do you think this came out? In re The Pennsylvania State University, Serial Nos. 88311154 and 88311234 (March 9, 2021) [not precedential] (Opinion by Judge Frances S. Wolfson].

 
In order to establish a violation of Section 2(e)(2), the USPTO must show that:
 

1. the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public; 
2. the source of the goods or services is the place named in the mark; and 
3. the public would make an association between the goods or services and the place named in the mark by believing that the goods or services originate in that place. 

 
A geographic nickname, like "Big Apple" or "Motown," or an abbreviation or other variant of the name of a geographic location is treated the same as the actual geographic name.

Here, there was no question that the services are rendered in Pennsylvania, nor that a services-place association would be made by consumers if the mark, as a whole, "projects a geographic significance." And so the main issue here concerned the first prong of the Section 2(e)(2) test: whether the primary significance of the term PENNSTATE connotes "a place generally known to the relevant American public." 

The Examining Attorney contended that PENN is a common abbreviation for Pennsylvania and STATE describes one of the fifty states, and so "by definition the combination of words, 'PENN' and 'STATE' describes a geographic location." Applicant maintained that "the 'primary' significance of PENNSTATE in the minds of potential purchasers is unquestionably as the well-known nickname for the applicant Penn State."

The Board agreed with applicant that the unitary term "PENNSTATE" is not a generally known geographic location. Dictionary and acronym definitions for "Penn" and "Penn." were inconclusive, "referring equally to Pennsylvania, Admiral Penn and his son, and the University of Pennsylvania." As to the disclaimers and Section 2(f) claims in applicant's other registrations, the Board noted the term PENNSTATE (as opposed to the two-word PENN STATE) was treated as unitary, without disclaimer or 2(f) claim.

Third-party website references overwhelmingly referred to the applicant. None of the articles or search results use "PENN" or "PENN." as an abbreviation for Pennsylvania. 

The Board concluded that the USPTO had failed to establish that PENNSTATE is the name of a place known generally to the public. The primary significance of PENNSTATE, the Board found, is to refer to Applicant.

The Board noted that any doubt on the question must be resolved in applicant's favor, leaving others who disagree, the option of opposing the application when published.

And so the Board reversed both refusals.

Read comments and post your comment here.

TTABlogger comment: What if the evidence showed that people in Pennsylvania perceive PENNSTATE as referring to the University, but nationwide, consumers of the identified services see PENNSTATE as referring to the "state" of Pennsylvania? Wouldn't that justify the refusal?

Text Copyright John L. Welch 2021.

Precedential No. 7: Denying FRCP 12(b)(6) Motion, TTAB Finds DOCTOR DISABILTY Fraud and Likelihood of Confusion Claims Adequately Pleaded

Petitioner DrDisabilityQuotes.com seeks cancellation of two registrations, one for the word-and-design mark shown below ("the Stethoscope Mark") and the other for the standard character mark DOCTOR DISABILITY, both for insurance brokerage services. Respondent Krugh moved under FRCP12(b)(6) to dismiss the two counts aimed at the standard character mark - fraud and likelihood of confusion - asserting that petitioner had failed to state claims on which relief can be granted. The Board denied the motion. DrDisabilityQuotes.com, LLC v. Charles Krugh, 2021 U.S.P.Q.2d 262 (T.T.A.B. 2021) [precedential].

In the DOCTOR DISABILITY standard character application, Krugh claimed acquired distinctiveness under Section 2(f) by way of its ownership of the Stethoscope Mark registration and also by way of use of the standard character mark for at least five years. [The statement appeared in the application as filed, signed by Krugh's attorney].

Fraud: A properly pleaded fraud claim must allege that:

1) the respondent made a false representation (misrepresentation) to the USPTO; 2) the false representation is material to the determination of registrability (or maintenance) of a mark; 3) the respondent had knowledge of the falsity of the representation; and 4) the respondent made the representation with the intent to deceive the USPTO to issue (or maintain) the registration. See In re Bose Corp., 580 F.3d 1240, 91 U.S.P.Q.2d 1938, 1941 (Fed. Cir. 2009). [I think reliance by the USPTO is also required - ed.]

Rule 9(b) of the Federal Rules of Civil Procedure requires that fraud be pleaded "with particularity." Petitioner alleged that Krugh's Section 2(f) claim was false and misleading because Krugh had abandoned and ceased using the Stethoscope Mark, and also because he had not used the DOCTOR DISABILITY standard character mark for the five years preceding his Section 2(f) claim. Petitioner further alleged that these false statements were material to his application, were made with the intent to deceive the USPTO, and were relied upon by the USPTO in issuing the registration.

The Board found that petitioner's allegations satisfied the requirements of FRCP 9(b), and it concluded that petitioner had stated a claim for fraud on the USPTO. 

Likelihood of Confusion:  In order to state a Section 2(d) claim, a plaintiff must allege that it owns prior proprietary rights in a mark or name for its good or services, and use by the defendant of a mark or name that is likely to cause confusion, mistake, or deception of consumers as to the source of the goods or services. See Herbko Int’l., Inc., v. Kappa Books, Inc., 308 F.3d 1156, 64 U.S.P.Q.2d 1375, 1378 (Fed. Cir. 2002); Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 U.S.P.Q.2d 1733, 1735 (T.T.A.B. 2001).

Petitioner alleged that it owns prior common law rights in the mark DrDisabilityQuotes.com for the same services as those of Krugh, that the standard character mark DOCTOR DISABILITY is confusingly similar to Petitioner’s mark, and that there results a likelihood of confusion in the marketplace.

Krugh contended that the claim should be dismissed because Petitioner could not establish priority. He alleged that he enjoys "constructive priority under 15 U.S.C. Section 1057(c) because of the registration of the Stethoscope Mark in 2006," the priority of which may be tacked onto the standard character mark. 

The Board, however, found Krugh's tacking argument to be premature. A motion to dismiss under FRCP 12(b)(6) tests only the sufficiency of the pleaded allegations, not the merits of the claim. Once Krugh files his answer, he may plead tacking and then he may try to establish "the stringent elements of tacking." 

And so the Board concluded that petitioner had properly pleaded a Section 2(d) likelihood of confusion claim.

Read comments and post your comment here.

TTABlogger comment: Petitioner also alleged that Krugh committed fraud when he stated false first use dates. The Board pointed out in a footnote that, as long as the mark was in use in commerce as of the filing date of the application, false first use dates are not material to the issuance of the registration and thus cannot support a fraud claim. See Hiraga v. Arena, 90 U.S.P.2.d 1102, 1108 (T.T.A.B. 2009). 

BTW: Do you think that Krugh's two marks are similar enough for tacking? In any case, Petitioner also claims that the Stethoscope Mark has been abandoned.

Text Copyright John L. Welch 2021.

Precedential No. 6: Applying Res Judicata, TTAB Again Affirms Mere Descriptiveness Refusal of POWERCOATINGS for Solar Cell Chemicals

The TTAB sun again failed to shine on Applicant SolarWindow Technologies, Inc. The Board applied the doctrine of res judicata in affirming a Section 2(e)(1) mere descriptiveness refusal of POWERCOATINGS for coatings for solar cells. SolarWindow filed an application in 2014 for the same mark for the same goods, and in 2016 the Board affirmed a mere descriptiveness refusal of that application. SolarWindow filed again in 2018 and was rejected again on both Section 2(e)(1) and res judicata grounds. Here, the Board affirmed on the latter ground because SolarWindow failed to show any change of conditions or circumstances that would excuse the application of res judicata. In re SolarWindow Technologies, Inc., 2021 U.S.P.Q.2d 257 (T.T.A.B. 2021) [precedential] (Opinion by Judge Jyll Taylor).

Under the doctrine of res judicata, or claim preclusion, "a judgment on the merits in a prior suit bars a second suit involving the same parties or third privies based on the same cause of action." In re Bose Corp., 476 F.3d 1331, 81 U.S.P.Q.2d 1748, 1752 (Fed. Cir. 2007) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 (1979)). The CAFC in Bose warned, however, that particular caution is warranted in the application of [claim] preclusion by the PTO, for the purposes of trademark procedures include protecting both the consuming public and the purveyors." In re Bose, 81 U.S.P.Q.2d at 1752 (quoting Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 U.S.P.Q.2d 1310, 1314 (Fed. Cir. 2005)).

In general, there is nothing to preclude an applicant from attempting a second time in an ex parte proceeding to register a particular mark if conditions and circumstances have changed since the rendering of the adverse final decision in the first application. The question generally in the second proceeding is whether changes in facts and circumstances do exist and, if so, whether they can support the registration sought. In re Honeywell Inc., 8 U.S.P.Q.2d 1600, 1601-02 (T.T.A.B. 1988). [In Honeywell, 17 years had elapsed between the two applications and Honeywell's design patent had expired, resulting in the Board's conclusion that "conditions have changed."]

Applicant SolarWindow argued that there are "additional facts" that preclude the application of res judicata. The Board observed, however, that "pointing to additional facts or even making a more persuasive argument based on those facts does not avoid preclusion from an earlier decision." Cf. SynQor, Inc v. Vicor Corp., No. 2019-1704, ___ F.3d ___, 2021 USPQ2d 208, at *12 (Fed. Cir. Feb. 22, 2021) (“A losing party does not get a second bite at the apple simply because they can find [] new and arguably more persuasive” evidence to present in the second proceeding.). The losing party must demonstrate "a material change in the relevant conditions or circumstances," and applicant failed to do so.

Applicant’s arguments raised in its response to the Examining Attorney’s assertion of res judicata are, at best, alternative arguments why it believes its mark is not merely descriptive of its goods. See Bose, 81 U.S.P.Q.2d at 1752 (rejecting argument that new evidence in the form of applicant’s new promotional materials “represent a changed circumstance such that we should bar application of the doctrine of res judicata”); Honeywell, 8 U.S.P.Q.2d at 1601-02.

 
SolarWindow asserted that consumers may be confused as to whether the term POWERCOATINGS refers to a type of protective coating or finish applied to the product, or a method for applying the coating, or whether the term is a misspelling of the term "powder coating." However, applicant failed to show that this argument was not available during prosecution of its first application.

In other words, Applicant does not demonstrate the required material change of circumstances or conditions merely by bringing up a new argument which could have been made during the prosecution of Applicant’s Prior Application. (Emphasis by the Board).

The Board therefore affirmed the refusal to register on the ground of res judicata.

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TTABlogger comment: Was the Board's bold-face emphasis really necessary? It kind of hurt my brain. BTW: Why is this decision precedential? Seems rather straightforward to me.

Text Copyright John L. Welch 2021.

Precedential No. 5: Sustaining U. Kentucky's Opposition, TTAB Finds that "40-0" Fails to Function as a Trademark for T-Shirts

In a case "markedly similar" to the #MAGICNUMBER108 case of two years ago [which Cub fans may remember], the Board sustained the University of Kentucky's opposition to registration of the proposed mark 40-0 for t-shirts, finding that the term is a widely used, common expression that fails to function as a trademark. The University did not go undefeated, however. The Board dismissed UK's fraud claim and granted the applicant's motion to amend its use-based application to delete certain goods for which the mark had not been used. University of Kentucky v. 40-0, LLC, 2021 U.S.P.Q.2d 253 (T.T.A.B. 2021) [precedential] (Opinion by Judge David K. Heasley).

For those of you who didn't know (or care), in the basketball world, 40-0 refers to a perfect winning record in NCAA Division 1 basketball, something that UK (and every other Division I school) desires to achieve. [For the record, 40-0 perfection has been achieved twice: by the women's b-ball teams at Baylor and U. Conn.]. Applicant's owner, a fan of UK basketball, formed the applicant company and sought, unsuccessfully, to work with UK in marketing the 40-0 clothing. 

Entitlement to a Cause of Action (f/k/a "Standing"):  The Applicant challenged UK's entitlement to bring this opposition, asserting that UK would not be damaged by registration of 40-0 because it has no proprietary interest in the term, is not a competitor of applicant, and need not fear an infringement suit by applicant. The Board was unimpressed. 

The Board pointed out that one need not have a proprietary interest in a term to be entitled to bring an opposition. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 U.S.P.Q.2d 10837, at *1 (Fed. Cir. 2020). A present or prospective interest in using the term is sufficient. Cf. De Walt, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 129 U.S.P.Q. 275, 280 (C.C.P.A. 1961) (Standing “will be presumed or inferred when . . . the opposer or petitioner is one who has a sufficient interest in using the descriptive term in its business.”). 

The Board concluded from the record evidence, including the use by Baylor and U. Conn. of 40-0 and UK's use of 16-0, 31-0,and 34-0 on t-shirts, that UK "has a present or prospective interest in using the term '40-0' on T-shirts and other apparel to indicate its aspiration or achievement of an undefeated season, either in men's or women's basketball." 

Moreover, UK has a "direct commercial interest in licensing and selling apparel products" and, regardless of whether the applicant is a competitor, the UK has" a reasonable basis for its belief in damage" from registration of the mark 40-0.

The applicant's forbearance from suing UK (or Baylor or U. Conn.) for trademark infringement "misses the point, as registration would accord Applicant rights it does not presently have ...." A registration, which enjoys the presumptions afforded by Section 7(b) of the Lanham Act, could be used to harass UK or others "into ceasing use of [the term] on pain of defending a lawsuit." De Walt v. Magna Power Tool, 289 F.2d 656, 129 U.S.P.Q. 275, 280 (C.C.P.A. 1961). The Board has followed the same reasoning in mere descriptiveness cases under Section 2(e)(1):

The rationale behind these cases involving damage from the registration of merely descriptive terms lies in the presumptions afforded a registration under Section 7(b) of the Statute. That section provides that registration on the Principal Register is prima facie evidence of the registrant's “exclusive right to use the mark in commerce in connection with the goods”. Implicit in the “exclusive right” to use is the right “to exclude” others. Thus, a registration of a merely descriptive term would be inimical to the right of others in the trade engaged in the sale of the same or similar goods to use the notation as a word of art in describing their goods and would bestow upon the applicant a competitive advantage to the extent that purchasers may be deceived or misled into believing goods so marketed are the only ones of that type available in the marketplace. This constitutes damage within the intent and meaning of Section 13. (quoting Southwire Co. v. Kaiser Aluminum & Chem. Corp., 196 U.S.P.Q. 566, 572-73 (T.T.A.B. 1977)).

Motion to Amend Application: Applicant admitted that, as of the filing date of the underlying application, it had used the mark 40-0 only on T-shirts. It moved under Rule 2.133(a) to delete the improperly-included goods. The Board, applying the test set forth in Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 U.S.P.Q.2d 10914, at *5 (T.T.A.B. 2020), granted the motion and entered judgment against applicant as to the deleted goods.

Fraud: The Board has upheld only one fraud claim since the Bose decision in 2009. [can you name the case? - ed.]. It kept that record intact by denying UK's claim that applicant committed fraud when it included in its application goods for which the mark had not been used.

We all know that fraud must be proven "to the hilt." "There is no room for speculation, inference, or surmise and, obviously, any doubt must be resolved against the charging party." In re Bose Corp., 580 F.3d 1240, 91 U.S.P.Q.2d 1938, 1939 (Fed. Cir. 2009)). (quoting Smith Int’l, Inc. v. Olin Corp., 209 U.S.P.Q. 1033, 1044 (T.T.A.B. 1981)). Here, applicant admittedly made a false and material statement to the USPTO regarding use of the mark 40-0. The question, then, was whether the statement was made knowingly, with an intent to deceive the Office.

UK pointed out that applicant's founder and owner, Mr. Son, is a Harvard graduate [Big deal! - ed.] and a lawyer [Louisville]. Moreover, his firm holds itself out as a provider of intellectual property services. [Don't they all? - ed.]. According to UK, Mr. Son's deposition testimony "suggests that Applicant's intellectual property counsel signed the declaration on Applicant's behalf with full knowledge that the mark had not been used on any goods but t-shirts."

Mr. Son testified that he had no experience filing trademark applications and was not familiar with the rules of practice. He thought he was applying for the right to use the mark on all the goods he listed. The Board noted that his education "did not imbue him with knowledge of trademark law." Moreover, Mr. Son took the advice of his counsel, who signed the application. UK did not depose that attorney and there was no meaningful evidence of his or her state of mind.

Acting on “advice of counsel” may not automatically immunize one from a charge of fraud; but on this record, where Applicant misunderstood the requirements for a use-based application and sought the advice of counsel, “the overly expansive description of goods, while a false statement, falls short of constituting a fraudulent statement which carries with it an actual or implied intent to deceive the USPTO.” M.C.I. Foods, Inc. v. Bunte, 96 U.S.P.Q.2d 1544, 1549 (T.T.A.B. 2010). 

And so the Board dismissed the fraud claim.

Failure-to-Function: As the Board has pointed out in a stream of recent failure-to-function cases, the critical issue is "how the relevant public perceives the term sought to be registered." Mr. Son testified that the mark 40-0 was intended to convey "the concept of a perfect basketball season." "It represents the pursuit of perfection. The holy grail." [What does his intention have to do with public perception? - ed.].

Applicant's use of the term 40-0 on its social media sites was, the Board found, "informational, indicating historical or aspirational perfect basketball seasons, not the source of the T-Shirts." See In re Wal-Mart Stores, Inc., 129 U.S.P.Q.2d 1148, 1152 (TTAB 2019) ("The text on Applicant's website confirms the merely informational nature of the phrase."). Moreover, applicant displayed the term 40-0 in large numerals on the front of T-shirts and nowhere else.

We agree with Opposer that Applicant’s proposed mark “40-0” is merely informational in nature, expressing support, admiration or affiliation with college basketball teams that either have achieved perfect records in a single season or aspire to do so.88 Consumers understand such a widely used, commonplace message as conveying the ordinary concept or sentiment normally associated with it, rather than serving any source-indicating function. E.g., In re Mayweather, 2020 U.S.P.Q.2d 11298, at *1 (PAST, PRESENT, FUTURE); In re Greenwood, 2020 U.S.P.Q.2d 11439, at *2 (GOD BLESS THE USA); In re Team Jesus, 2020 U.S.P.Q.2d 11489, at *5-6 (TEAM JESUS); see generally TMEP § 1202.04(b).

Applicant maintained that there was no evidence that the term 40-0 is in widespread use, but the Board disagreed. The record showed use of 40-0 on T-shirts by Baylor and  U.Conn., and in numerous "posts" by third parties using 40-0 in an informational sense.
 

The preponderance of evidence thus shows widespread, common use of "40-0" in an informational manner to convey a perfect, undefeated NCAA basketball season. Applicant cannot appropriate the term exclusively to itself, denying the competing colleges, as well as their fans, the right to use it freely. “[I]t is the type of expression that should remain free for all to use.” In re Eagle Crest Inc., 96 U.S.P.Q.2d 1227, 1230 (T.T.A.B. 2010). It therefore fails to function as a trademark.

And so the Board sustained UK's failure-to-function claim.

Read comments and post your comment here.

TTABlogger comment: So now every Division 1 basketball team can sell 40-0 T-shirts. Good luck with that! By the way, here's an article on academic trademark bullies: James Boyle and Jennifer Jenkins, Mark of the Devil: The University as Brand Bully, Fordham Intellectual Property, Media & Entertainment Law Journal (Forthcoming). I think one trademark of a bully, academic or not, is to make baseless fraud claims.

Text Copyright John L. Welch 2021.