TTAB Posts May 2021 (Video) Oral Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled six (VI) oral hearings for the month of May 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.

May 4, 2021 - 11 AM: Rodney Green v. Tensor International Corporation, Cancellation No. 92068730 [Petition for cancellation of a registration for the mark EARTHLOCK for "Plastic sheet materials for construction; plastic mesh materials for asphalt and concrete reinforcement, and construction of civil engineering structures" and "Soil reinforcement mesh and soil stabilization mesh made of plastic; soil erosion control structures, namely, gabions [new word for me - ed.] and mattresses constructed of plastic mesh; plastic mesh material for construction of civil engineering structures" on the ground of likelihood of confusion with petitioner's common law mark EARTHLOK for soil stabilizers].

May 5, 2021 - 1 PM: Trek Bicycle Corporation v. Christina Isaacs, Opposition No. 91232164 [Opposition to registration of the mark RANGER TREK for various goods and services in classes International Classes 16, 18, 21, 25, 26, 28 and 41, and the mark RANGER TREK EXPEDITION JOURNALS & Design for goods and services in classes 16 and 41, on the ground of likelihood of confusion with the allegedly famous common law and registered mark TREK and formatives thereof for a variety of products, including clothing, backpacks, travel bags, all-purpose sports bags, flashlights, wrist watches, powder mixes for energy drinks and snack bars.]

May 11, 2021 - 1:30 PM: In re Clearly IP Holdings, SRL, Serial Nos. 88150585 and 88156396 [Section 2(d) refusal of the mark CLEARLY SPARKLING, in standard character and stylized form [SPARKLING disclaimed] for "Sparkling waters; carbonated waters; drinking waters; flavored waters; mineral waters; water beverages" in view of the registered mark CLEAR & SPARKLING in stylized form for “Carbonated waters; Drinking water; Seltzer water; Fruit-based beverages; Non-alcoholic beverages, namely, carbonated beverages”]

May 13, 2021 - 2 PM: AWP USA Inc. v. Chubb INA Holdings, Inc., Cancellation No. 92070407 [Petition for cancellation of a registration for the mark CHUBB TRAVEL SMART for "Downloadable mobile applications for planning trips, receiving travel, weather, medical, safety, health, and security information, receiving security alerts, and currency converter tool" on the ground of likelihood of confusion with the common law mark TRAVELSMART for mobile application and web-based software services for providing information related to travel insurance, claim filing, flight status checking, medical assistance, and local emergency and assistance during travels.]

 

May 18, 2021 - 11 AM: In re BFY LLC, Serial No. 88606855 [Section 2(e)(1) refusal to register the mark MULTEEZ for "Homeopathic pharmaceuticals, namely, vitamins," on the ground of mere descriptiveness.]

May 25 2021 - 1 PM: In re Herman Miller, Inc., Serial No. 88027008 [Refusal to register a three-dimensional product configuration of a chair on the ground of de jure functionality under Section 2(e)(5).]

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TTABlog comment: Since TTAB hearings are supposed to be public, shouldn't these video hearings be available for everyone to (at least) hear?

Text Copyright John L. Welch 2021.

IP Talk, Episode 2: "Keeping Tabs on the TTAB." The TTABlogger Speaks!

Former friend David Perlsack once told me that I have a face for radio and a voice for blogging. Well, proof of the former is self-evident. As to the latter, you be the judge. Here is a podcast that I recorded for Wolf Greenfield's new "IP Talk" series, in which I discuss the TTAB's jurisdiction, review some recent cases, and comment on the Trademark Modernization Act. (link).

 

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TTABlogger comment: Perhaps I should stick to blogging.

Text Copyright John L. Welch 2021.

Recommended Reading: Prof. Lorelei Ritchie, "What is 'Likely to be Confusing' About Trademark Law: Reconsidering the Disparity Between Registration and Use"

Former TTAB Judge Lorelei Ritchie, now an Assistant Professor at Southern Illinois University School of Law, has published an article in the American University Law Review, entitled "What is 'Likely to be Confusing' About Trademark Law: Reconsidering the Disparity Between Registration and Use" 70 Am. U. Law Rev. 1331 (2021). [download pdf here]. Professor Ritchie explores the differing ways in which marketplace realities are taken into consideration, or not, in the decision-making of the TTAB and the courts in trademark cases.

Abstract

Federal trademark rights in the United States are widely considered to be use-based. That is, the right derives from the use. Therefore, one might expect that federal trademark registrations would necessarily reflect the marketplace realities of the use of a mark. Based on Constitutional and statutory enablement, this is correct. It is not, however, how the trademark registration system has been implemented by the Court of Appeals for the Federal Circuit and by the U.S. Patent and Trademark Office.

In this regard, there is a perception among judges and practitioners alike that marketplace realities are not, and should not, be taken into account in the federal trademark registration process, as compared with an enforcement action in a federal district court (i.e., trademark infringement). The U.S. Supreme Court has, nevertheless, recently clarified that the right to registration is indeed coexistent with the right to use and enforce a trademark. The Court followed this logic to conclude that an administrative determination regarding registration rights may therefore have a preclusive effect in a later court action involving a claim of trademark infringement. Of course, a dilemma arises when coexistent rights are instead determined by non-coextensive factors. This Article analyzes and addresses the disparity that currently exists between trademark registration and the use on which it is presumptively based. In conclusion, the Article proposes three possible mechanisms to resolve the disparity, including (1) by Congressional legislation, or perhaps most efficiently, (2) by judicial clarification, and (3) by administrative action.

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Text Copyright John L. Welch 2021.

TTABlog Test: Is BARSKI Primarily Merely a Surname for Glassware and Related Goods?

The USPTO refused to register the proposed mark BARSKI for beverage glassware, pitchers, ice buckets, and various other items in Class 21, concluding that the mark is primarily merely a surname under Section 2(e)(4). The Examining Attorney relied on 415 entries in the Lexis.com Surname Database, references to eight individuals with that surname (including former MLB player, Chris Barski), negative dictionary evidence, and a Wikipedia entry stating that the suffix "ski" is often found in Polish names. Applicant argued that BARSKI is an extremely rare surname and the mark was derived from names of its founders, BaumgARten and ZablotSKY. How do you think this appeal came out? In re Majestic Gifts Inc., Serial No. 88682492 (April 12, 2021) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

The record evidence established that “Barski” is an actual surname, but an uncommon one. No one associated with applicant bears the surname “Barski." On the other hand, "surnames of Polish origin often end with the letters 'SKI'; and 'Barski' has no other “ordinary language meaning."

Applicant’s argument concerning the origin of “Barski” as a combination of its founders’ surnames (neither of which includes the three-letter strings “bar” or “ski”) was unconvincing. [And irrelevant to consumer perception - ed.].

In any case, "the relevant question is whether, when applied to Applicant’s goods, the purchasing public for those goods is more likely to perceive the mark BARSKI, which is in standard characters, as a surname rather than as anything else."

The Board concluded that the evidence did not show "sufficient public exposure to the uncommon surname BARSKI from which we can conclude that consumers likely would perceive BARSKI as a surname." Cf. In re Tapio GmbH, 2020 USPQ2d 1137, at *10-11 (TTAB 2020) (highlighting evidence of “meaningful and fairly widespread public exposure” to the uncommon surname TAPIO “throughout the United States”).

Moreover, when viewed in association with the identified goods, which include barware such as beverage glassware, decanters, drinking glasses, glass beverageware, and ice buckets, we believe consumers likely would perceive BARSKI as a coined term, particularly as a clever bar-related play on the noun “brewski” (a U.S. slang term for “beer”), and that this meaning would be the primary perception of BARSKI to the public.

And so the Board reversed the refusal to register.

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TTABlogger comment: How did you do? Ready for a brewski at your neighborhood barski?

Text Copyright John L. Welch 2021.

Gilead Science Loses Opposition to GILEAD CAPITAL: No Section 2(d) Likelihood of Confusion and No 2(a) False Connection

In a 74-page opinion, the Board dismissed this two-pronged opposition to registration of the marks GILEAD CAPITAL and GILEAD CAPITAL LEADERSHIP INVESTING and Design, for various investment services; Opposer Gilead Sciences alleged likelihood of confusion and Section 2(a) false suggestion of a connection with its registered mark GILEAD for pharmaceutical products, health insurance consultation, and event sponsorship services. Opposer failed to show an overlap in channels of trade and classes of consumers, and also failed to prove that applicant's marks point uniquely to it or that consumers would presume a connection between the two companies. Gilead Sciences, Inc. v. Gilead Capital LP, Oppositions Nos. 91233311 and 91233327 (April 20, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

Common law marks: Opposer argued that it renders financial and business advisory services that are substantially similar to Applicant’s services. The Board, however, reviewed the notice(s) of opposition and concluded that Opposer did not put Applicant on notice that opposer was relying on common law trademark and trade name rights. Moreover, the Board concluded that the issue of Opposer's common usage of GILEAD was not tried by consent, express or implied. Nonetheless, Opposer was "entitled to prove that relevant consumers perceive the manufacture and sale of pharmaceuticals as including Opposer’s financial or investment-related activities."

Strength of Opposer's Mark: Opposer contended that its GILEAD mark is famous for pharmaceutical products. The Board found the mark to be, at worst, suggestive, and inherently strong. "The commercial impression engendered by the mark GILEAD in connection with pharmaceuticals is a reference to the biblical medicinal treatment inasmuch as there is no testimony or evidence that Gilead has any geographical significance for pharmaceutical products."

As to commercial strength,  "Opposer’s testimony and evidence regarding its substantial revenue, extensive advertising and promotional activities, philanthropy, innovative research and development, and media attention prove that GILEAD is a commercially strong mark or famous mark when used in connection with pharmaceutical products." Consequently, GILEAD "is a very strong mark on the spectrum from very strong to very weak and famous, and, therefore, it is entitled to a broad scope of protection."

The Marks: The Board unsurprisingly found the word "Gilead" to be the dominant element in the involved marks. It noted that applicant sometimes refers to itself as "Gilead," and it observed that relevant consumers may do the same. The Board concluded that the applicant's marks are similar in their entireties to Opposer’s mark GILEAD.

The Services: Opposer contended that its investment activities are a key aspect of its pharmaceutical business and those activities provide the required viable relationship among the goods and services at issue. According to opposer, "[i]t is common for pharmaceutical companies to invest in innovative companies and technology in the healthcare industry, investment professionals and others will encounter both parties’ marks in circumstances likely to give rise to confusion or mistake."

Third-party registrations and evidence of investment activities by other pharma companies "established a tenuous nexus between manufacturing and selling pharmaceuticals and investment advisory services and investment management by showing that it is common for large pharmaceutical companies to invest in innovative companies and technologies in the healthcare industry if for no other reason to expand their own research and development capabilities for pharmaceuticals." The Board concluded that applicant's investment services are related to opposer’s pharmaceuticals for purposes of Section 2(d).

Trade Channels/Classes of Consumers: The Board considered the channels of trade only for opposer's pharmaceuticals, since the investments services claimed by opposer were not properly included in the pleadings and were not tried by consent. The Board found no evidence of "a nexus or connection between the parties’ channels of trade and classes of consumers." Nor was there any evidence regarding the conditions under which the parties make sales, leading the Board to find this factor neutral.

Actual Confusion: Opposer's evidence of purported actual confusion lacked sufficient details to be probative. "Opposer did not call any of the individuals who were purportedly confused as witnesses to explain why they thought Opposer and Applicant were associated. In addition, inquiries as to whether Applicant and Opposer are associated do not necessarily prove that the inquirers were confused."

Survey Evidence: Opposer introduced the results of a Squirt-type survey showing a net confusion rate of 15.5%, "within the range of percentages the Board and courts have found probative." However, the Board noted the stimulus cards used in the survey did not reflect "marketplace reality": i.e., they did not show the involved marks as they might appear in actual use (e.g., on a pharmaceutical bottle or a prospectus for an investment).  

In addition, the survey expert did not account for the sampling error derived from a sample size of 209. "For example, if the sampling error derived from a sample size of 209 is over 5% then as much as 20.5% of the population may be confused or as little as 10.5% of the population may be confused."

The survey did not include applicant's mark GILEAD CAPITAL LEADERSHIP INVESTING and design, and so the Board declined to consider the survey evidence with regard to that mark.

Applicant contended that, since opposer claimed that GILEAD is famous, it should have used the Eveready methodology, which "more accurately approximates market conditions by ensuring that respondents are not made artificially aware of the other party’s trademark." 

The Board overruled applicant's objections to the survey, but:
 

[W]e will not infer there is a likelihood of confusion from Opposer’s survey because (i) it does not sufficiently replicate the marketplace, (ii) it presents a side-by-side comparison of the marks when Applicant’s services and Opposer’s goods and services are not offered for sale on a side-by-side basis, (iii) the survey style is more conducive where Opposer’s mark is not famous or commercially strong as we have found it to be here, and (iv) because Opposer did not introduce the sampling error derived from a survey of 209 respondents.

Conclusion as to Section 2(d): Because opposer failed to prove an overlap in channels of trade to the same classes of consumers, the Board dismissed opposer's Section 2(d) claim.

Section 2(d) False Association: In order to establish this claim, opposer had to prove that applicant’s use of GILEAD CAPITAL in connection with investment services points uniquely to Opposer. It failed to do so. "The name 'Gilead' is not uniquely associated with Opposer because the name also identifies a region in Jordan, formerly, Palestine, a medicinal treatment originating from Gilead, and a village in Nebraska."

Moreover, opposer had to show that its fame or reputation "is such that, when Applicant uses its marks in connection with Applicant’s services, consumers will presume there is a connection with Opposer." Opposer failed to do so.

Opposer’s likelihood of confusion survey found that only 6.7% of the respondents thought GILEAD CAPITAL is the same company as GILEAD SCIENCES. Such a de minimis percentage of respondents believing GILEAD CAPITAL is the same company as GILEAD SCIENCES is not compelling evidence that the relevant public will presume there is a connection between GILEAD CAPITAL and Opposer.

Since opposer failed to satisfy two of the elements of the Section 2(a) false connection test, the Board dismissed this claim as well.

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TTABlogger comment: What do you think will happen next?

Text Copyright John L. Welch 2021.

Another TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?

This week, the TTAB decided the appeals from the three Section 2(d) likelihood of confusion refusals summarized below. At least one of the three refusals was affirmed. Let's see how you do in divining the results. [Answer will be found in the first comment.]


In re Jacqueline Anne Occasions, LLC, Application Serial No. 88264864 (April 20, 2021) [not precedential] (Opinion by Judge Robert H. Coggins). [Section 2(d) refusal of JACQUELINE ANNE OCCASIONS [OCCASIONS disclaimed] in view of the registered mark JACQUELINE EVENTS & DESIGN [EVENTS & DESIGN disclaimed], for overlapping wedding planning services. Applicant argued that the commercial impression of the marks differ because the cited mark is “highly suggestive of a person named JACQUELINE” whereas Applicant’s mark identifies "JACQUELINE ANNE," a different person with a different name.]

In re Brilliant Massage Therapy dba Brilliant Massage & Skin, Serial No. 88903456 (April 21, 2021) [not precedential] (Opinion by Judge Cindy B. Greenbaum). [Section 2(d) refusal of BRILLIANT MASSAGE & SKIN for "Massage; Skin care salons; Health spa services, namely, cosmetic body care services" [MASSAGE & SKIN disclaimed], in view of the registered mark BRILLIANT AGING for  “Wellness and health-related consulting services" [AGING disclaimed]. Applicant maintained that the marks look different and convey different commercial impressions, and further that the registrant does not provide massage therapy or other services similar to applicant's].

In re Spiritual Warrior Inc., Serial No. 88459695 (April 21, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of SHAKTI WARRIOR for athletic and yoga clothing and gear, including mats, in view of the registered mark SHAKTI WARRIORS for, inter alia, "educational services, namely, providing public appearances, classes, seminars, and workshops designed to educate the general public, patients and health care professionals on the importance of exercise and proper nutrition and emotional well-being and distributing corresponding educational materials." In arguing that the registered mark is entitled to only a narrow scope of protection, applicant submitted six third-party registrations for marks comprising or containing the term "shakti" in connection with yoga-related goods and services.].

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

Text Copyright John L. Welch 2021.

TTAB Finds ARTESANO Generic for Bread, but if not Generic, Registrable Under Section 2(f)

In a 49-page decision, the Board affirmed a genericness refusal of the proposed mark ARTESANO for "pre-packaged sliced bread," but it reversed the USPTO's alternative mere descriptiveness refusal, finding that, if ARTESANO is not generic, it has acquired distinctiveness under Section 2(f). Applicant Bimbo argued that the doctrine of foreign equivalents does not apply because consumers will not stop and translate the foreign word "artesano." Bimbo also offered the results of a Teflon survey to show consumer perception. The Board disagreed as to the doctrine and pooh-poohed the survey results. In re Grupo Bimbo, S.A.B. de C.V., Serial No. 87408465 (April 14, 2021) (Opinion by Judge Marc A. Bergsman).


Genericness: The Board found that the genus at issue was adequately defined by Bimbo's identification of goods: pre-packaged sliced bread. [Does that mean it's packaged before it's sliced? - ed.]. The relevant public comprises ordinary consumers. The question, then, was "whether the relevant public understands that the term Applicant seeks to register primarily refers to that genus of goods."

The Board found that "the resemblance between ARTESANO and the word 'Artisan' is so evident in both sound and appearance that the average American consumer will automatically translate ARTESANO and equate ARTESANO and the word 'artisan.'"

The term ARTESANO in connection with “pre-packaged sliced bread” does not fall into one of the exceptions to the doctrine of foreign equivalents. First, the term ARTESANO does not have such a well-established meaning in the U.S. that even Spanish speakers would forego translating it. *** Second, as shown by the use of the term “Artisan Bread,” the English translation of the term ARTESANO is relevant to consumers purchasing handcrafted bread.

The evidence, including dictionary definitions, website references, third-party usage, and Bimbo's own usage ("artesano style bread") established that "artisan bread" is a type of bread: i.e., handcrafted bread.

 

 

 

 

Bimbo submitted the results of a "Teflon" survey purporting to show that "55.2% of respondents identified ARTESANO as a brand name for the relevant goods (with a 5.7% margin of error), whereas only 23.7% identified it as a common name (with a 4% margin of error)." However, in Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184, 1202-03 (TTAB 2017), the Board found that "Teflon surveys are ineffective at determining the true weight of public perception where the purported trademark owner previously did not control the term at issue as a coined or arbitrary term." 

De facto distinctiveness is, of course, attained when an unregistrable term actually acquires secondary meaning through extensive use and promotion. The difference between de facto distinctiveness and so-called de jure distinctiveness is simply that de facto secondary meaning does not entitle a term to protection under the Lanham Act. No matter how much money and effort the user of the term has spent promoting the sale of its products and no matter how much the public has come to recognize the term as an indicator that the products come from the user of the term, the secondary meaning of the term is said to be de facto, and cannot be the basis for registration of a term that is so highly descriptive of the product that it is legally incapable of distinguishing the product from other similar products. In re E. I. Kane, Inc., 221 USPQ 1203, 1204 (TTAB 1984)

The Board found that Frito-Lay applies here because ARTESANO is the Spanish equivalent of the word “artisan,” and "artisan" is a generic term for a type of bread. It is not a coined or arbitrary term. Therefore the Board accorded Bimbo's survey evidence "little probative value."

The Board concluded that "the primary consumer perception of the term ARTESANO is as the generic term for a type of bread (i.e., traditionally handcrafted bread)."

Acquired Distinctiveness: Assuming arguendo that ARTESANO is not generic, the Board addressed the alternative Section 2(e)(1) mere descriptiveness refusal. Based on the evidence provided by Examining Attorney Tamara Hudson, the Board found ARTESANO to be highly descriptive of pre-packaged sliced bread. Consequently, applicant's burden of proof under Section 2(f) was commensurately high.

Applying the Converse factors (adopted by the Board in SnoWizard), the Board found that applicant's Teflon survey was probative on the acquired distinctiveness issue. It noted that "[g]enerally, survey results showing over 50% brand recognition are sufficient to establish acquired distinctiveness." Moreover, Bimbo's extensive and and substantially exclusive use of the term since 2015, its substantial advertising expenditures and sales revenues, and unsolicited media coverage, supported its Section 2(f) claim.

The Board therefore concluded that the purported mark ARTESANO has acquired distinctiveness, and so it reversed the mere descriptiveness refusal.

 

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TTABlogger comment: How does this decision hold up in light of the Supreme Court's Booking.com decision? In footnote 94, the Board states: "The sole challenge in Booking.com was that 'as a rule, combining a generic term with ‘.com’ yields a generic composite.' Thus, the issue of whether the Board erred in its weighing of evidence was not before the Court." Thus de facto secondary meaning does not avoid genericness in the eyes of the TTAB.

Text Copyright John L. Welch 2021.

TTAB Test: Which of These Three Section 2(d) Refusal Was/Were Reversed?

On April 15th, the TTAB decided the appeals from the three Section 2(d) likelihood of confusion refusals summarized below. At least one of the three refusals was reversed. Let's see how you do in divining the results. [Answer will be found in the first comment.]


In re Golden Coffee LLC, Application Serial No. 88577515 (April 15, 2021) [not precedential] (Opinion by Judge Christen M. English). [Section 2(d) refusal of STAY GOLDEN COFFEE CO. in the stylized form shown on the specimen below [COFFEE CO. disclaimed], for "bagged coffee sold to wholesale consumers by the pound" in view of the registered mark STAY GOLDEN for "restaurant services; café services." The applicant argued that the goods and services are directed to different audiences through different channels of trade.]

In re Michelle Mora, Serial No. 88704761 (April 15, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Section 2(d) Refusal of HIGH LIFE COSMETICS for cosmetics and not including perfumes, colognes or other fragrances [COSMETICS disclaimed], in view of the registered mark HAUTE VIE for"fragrances and perfumery." The applicant maintained that consumers would not stop and translate the cited mark.]

In re Just a Pinch Recipe Club, LLC, Serial No. 88463841 (April 15, 2021) [not precedential] (Opinion by Judge Christopher Larkin). [Section 2(d) refusal of PINCH IT! RECIPE BOX for, inter alia, "Downloadable computer application software for mobile phones, namely, software for enabling users to discover, access, share, bookmark, annotate, index, and store information about, and media content concerning, goods, services, experiences, recipes, cooking, and food, and to interact online with information and media content that other users share concerning goods, services, experiences, recipes, cooking, and food" [RECIPE disclaimed] in view of the registered mark THE RECIPE BOX for "Computer application software for mobile phones, tablet computers, and portable and handheld digital electronic devices, wireless communication devices, namely, software for creating, obtaining, editing, displaying and managing recipes, food and beverage information” [RECIPE disclaimed]. The applicant contended that "RECIPE BOX" is a weak term due to commonplace use for online databases and software].

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

Text Copyright John L. Welch 2021.

Precedential No. 8: TTAB Orders Cancellation of "NT-MDT" Registration Due to Nonuse

In a soporific, yet precedential decision, the Board granted a petition for cancellation of a registration for the mark NT-MDT (in the design form shown below) for, inter alia, microscopes, sustaining Petitioner's claim that Registrant Irina Kozodaeva did not use the registered mark prior to expiration of the time for filing a statement of use in her underlying Section 1(b) trademark application. Although  Kozodaeva admitted that she had not used the mark, she claimed to have acquired trademark rights via several prior transactions, which would provide her with an early use date. However, her proofs were inadequate. NT-MDT LLC v. Irina Kozodaeva, 2021 USPQ2d 433 (TTAB 2021) [precedential] (Opinion by Judge Albert Zervas).

The Board noted that Ms. Kozodaeva's admission that she never used the subject mark in United States commerce "would appear to seal Petitioner's victory on the nonuse claim." However, Kozodaeva contended that she was entitled to rely on several trademark assignments that provided her with a 1999 first use date, and on that basis she could amend the dates in her registration to claim that early date and thereby overcome the nonuse problem.

The Board observed that Section 7(e) requires a showing of "good cause" for an amendment to a registration. Moreover, "clear and convincing" evidence is required to justify an amendment claiming an earlier first use date than that set forth in a registration. See Bass Pro Trademarks LLC v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1856 (TTAB 2008). 

Despite Kozodaeva's violation of the applicable rules - she failed to pay the required fee and failed to submit the required verified statement - the Board chose to consider the merits of her motion. [Does that make the entire discussion of the merits mere dictum? - ed.] 

Reviewing in detail the three agreements that Kozodaeva relied upon to support her claim of a 1999 first use date, the Board found that the agreements did not establish that she had obtained rights in the subject mark. The Board therefore sustained Petitioner's claim of nonuse in commerce prior to the expiration of Respondent's period for filing a statement of use.

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TTABlogger comment: The only reason that I can think of for making this opinion precedential is the fact that the parties invoked the Board's ACR regime since the Board likes to highlight the use of ACR. The decision is so fact-based that it's hard to see what precedential value it might have.

Text Copyright John L. Welch 2021.

Apple, Inc. Survives Section 2(d) Opposition Challenge to APPLE MUSIC by Tacking On Prior Use of APPLE by Apple Corps

The Board dismissed this Section 2(d) opposition to registration of APPLE MUSIC for various entertainment-related services, including the production and distribution of sound recordings, finding that Apple, Inc. proved priority over Opposer Charles Bertini's use of the common law mark APPLE JAZZ for entertainment services. Bertini's earliest date of use was in 1985, whereas Apple, Inc. was permitted to tack on use of the mark APPLE by the Beatles record company, Apple Corps, and thus established priority as of August 1968. Charles Bertini v. Apple, Inc., Opposition No. 91229891 (April 16, 2021) [not precedential] (Opinion by Judge Thomas Shaw).

Objections: The Board first ruled on several interesting evidentiary objections. It rejected Apple Inc.'s hearsay objections to certain articles submitted by Bertini, because the articles were more than twenty years old and therefore fell within the exception of FRE 902(6). It likewise rejected Bertini's' objection to historical testimony by a witness who began working at Apple Corps only in 2007, the Board observing that "where a corporation has been in existence for a considerable period of time, there may not be an individual currently with the organization that could relate vital statistics of the business based upon personal knowledge" and therefore "proper recourse may be made to historical documents and similar documents maintained by the corporation over the years, in the normal operation thereof or even to biographical matter, provided the material is made of record subject to the scrutiny and cross-examination of the adverse party."

 

Is APPLE JAZZ Primarily Geographically Descriptive?: Apple, Inc. feebly argued that Bertini could not establish priority because APPLE JAZZ is primarily merely geographically descriptive under Section 2(e)(2). Bertini admitted that he chose the mark APPLE JAZZ because of his connection with the Cortland region of New York, known for its apples. The Board, however, found that the word "apple" in Bertini's mark does not have a geographical connotation. The Cortland area is sometimes referred to as "apple country," but Bertini's mark is not APPLE COUNTRY JAZZ. In his mark, "apple" primarily refers to the fruit. 

Use by Apple Corps: Apple, Inc. has used the mark APPLE MUSIC since 2015, when it launched the APPLE MUSIC streaming service. It asserted that it acquired trademark rights in the mark APPLE from Apple Corps. in connection with sound recordings and films, and that it therefore has priority for the services recited in its application that are "closely related to the production and distribution of sound recordings."  Based on the evidentiary submissions, the Board found that Apple Corps continuously used the mark APPLE in connection with musical sound recordings and films since 1968.

In 2007, Applicant Apple, Inc. acquired all of Apple Corps’ trademark and service mark rights in its APPLE marks, including two registrations. It then granted back to Apple Corps a license to continue using the marks, which use inured to Apple, Inc.’s benefit.

Tacking?: In Hana Financial, the Supreme Court observed that "in limited circumstances, a party may clothe a new mark with the priority position of an older mark. This doctrine is called 'tacking,' and lower courts have found tacking to be available when the original and revised marks are 'legal equivalents' in that they create the same, continuing commercial impression." Moreover, one may tack on the priority position of a mark acquired by assignment.

Two marks are "legal equivalents" if they "create the same, continuing commercial impression so that consumers consider both as the same mark." Hana Fin., 113 USPQ2d at 1367. The Board noted that "[t]he standard for tacking is very strict and tacking in general is permitted only in 'rare instances.'" Sometimes the addition of a single word makes a difference  [e.g., AMERICAN MOBILPHONE and AMERICAN MOBILPHONE PAGING], sometimes not  [e.g., AMERICAN SECURITY and AMERICAN SECURITY BANK]. The Board found this case to be more like the latter.

The addition of the term MUSIC does not create a different commercial impression because it is generic when used in connection with sound recordings and the production and distribution of sound recordings. Consumers would know they were dealing with a music company, particularly because Applicant’s licensee, Apple Corps, has used variations of the APPLE mark, with APPLE as the dominant element, to identify its musical recordings, which inures to Applicant’s benefit, and because Applicant uses APPLE MUSIC to identify its service of publishing and distributing sound recordings.

Apple Corps' long use of APPLE-formative marks, as well as its apple design, suggests that customers are "already accustomed to seeing slight variations in Apple Corps' APPLE mark." It would not be unexpected for the company to modernize its mark by adding the word MUSIC.

Tacking also requires that the goods or services marketed under the earlier mark be "the same or similar" as the goods or services marketed under the later mark. The Board found that the sound recordings identified in the two registration acquired from Apple Corps are “the same or similar” for purposes of tacking as the production and distribution of sound recordings identified in Apple Inc.’s opposed application.

Conclusion: Finding that Apple, Inc. enjoys priority, the Board dismissed the opposition.

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TTABlogger comment: How do you like them apples? Mr. Bertini had obtained partial summary judgment that APPLE MUSIC and APPLE JAZZ are confusingly similar. Little good it did him.

Text Copyright John L. Welch 2021.

Fourth Circuit Affirms E.D.Va.: VAGISAN Confusable With VAGISIL for Feminine Hygiene Products

The U.S. Court of Appeals for the Fourth Circuit affirmed the E.D.Va's May 23, 2019 decision [TTABlogged here] reversing the TTAB's dismissal of Combe Incorporated's Section 2(d) opposition to registration of the mark VAGISAN for various feminine hygiene products. The Board had found that Combe failed to prove likely confusion with the registered mark VAGISIL for overlapping products. Combe Incorporated v. Dr. August Wolff GmbH & Co. KG Arzneimittel, Appeal No. 19-1674 (Fourth Cir. April 13, 2021) [unpublished].

The district court was persuaded by survey evidence, sales figures, advertising, and unsolicited media recognition that VAGISIL is commercially famous. Due to their "close similarities in sight, sound, and meaning," the court concluded that the marks are "sufficiently similar" to confuse consumers. Moreover, the results of Combe's confusion survey was "powerful evidence of actual confusion."

 

 

Before the Fourth Circuit, Wolfe argued that the district court erred in assessing four of the confusion factors: strength or distinctiveness of the VAGISIL mark, similarity of the two marks, actual confusion, and sophistication of the consumer. The appellate court concluded that the district court’s determinations were not clearly erroneous as to any of these factors.

Given that the district court did not clearly err as to any of its individual assessments of the challenged factors, we have no basis for reconsidering its overarching assessment that the factors demonstrated a reasonable likelihood of confusing the Vagisil and Vagisan marks. The court did not err in entering judgment in favor of Combe and ordering appropriate relief. For these reasons, the judgment of the district court is AFFIRMED.

   

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TTABlogger comment: Survey evidence the key.

Text Copyright John L. Welch 2021.

CAFC Upholds TTAB: Affirms Order for Cancellation of MOBILEBLACKBOX Registration for Audio Speakers on the Ground of Nonuse

In a brief, nonprecedential opinion, the CAFC affirmed the TTAB's decision of November 23, 2018 (pdf here) granting a petition for cancellation of a registration for the mark MOBILEBLACKBOX (Stylized) for "audio speakers for computers" and "analog and digital audio signal transmitters" on the ground that the mark was not in connection with the goods prior to the filing of the underlying application. Matey Michael Ghomeshi v. Strongvolt, Inc.., Appeal No. 2019-1850 (Fed. Cir. April 12, 2021) [not precedential] (Andrew Hirschfield, Director of the USTPO, Intervenor).

The Board found that Mr. Ghomeshi's purported sales of headphones did not qualify as "audio speakers," and even if they did, the only receipts proffered by Mr. Ghomeshi were for “samples.” He did not provide evidence that the mark was used on headphones or their packaging. Mr. Ghomeshi’s advertisement, which displayed the registered mark with headphones, was undated and did not include a means for ordering headphones.

As to analog and digital audio signal transmitters, the Board first concluded that a series of undated documents showing some transmitters bearing the mark and others not bearing the mark lacked probative value. A single receipt reflecting a sale of a transmitter did not show use prior to filing, or display the mark on the goods.

After the Board's decision, the petitioner corporation was dissolved. Mr. Ghomeshi argued that, as of its dissolution, petitioner StrongVolt "did not satisfy the statutory requirements to contest his registration." The CAFC rejected that argument, observing that there was no evidence that StrongVolt had stopped using its BLKBOX mark during its winding up period, during which period it had the right to litigate its claims. Moreover, since the dissolution came after the Board's decision, the court saw no reason to disturb the decision.

The CAFC found no error in several procedural rulings by the Board. Moreover, substantial evidence supported the Board’s conclusion that Mr. Ghomeshi failed to use his mark in commerce with audio speakers for computers prior to filing his registration, and it saw no error in the Board's rejection of his evidence of use of the mark for audio signal transmitters.

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TTABlogger comment: Seems like Mr. Ghomeshi should file a new application. Perhaps an I-T-U.

Text Copyright John L. Welch 2021.

TTAB Finds CERTIFIED BISON Generic for . . . . Guess What?

The Board affirmed a refusal to register CERTIFIED BISON on the Supplemental Register  for "bison meat; prepackaged meals consisting primarily of bison meat and vegetables, all of the aforementioned bison meat being certified" [BISON disclaimed] on the ground of genericness under Section 23(c). The Board concluded that consumers will perceive CERTIFIED BISON as a subcategory or subgenus of bison meat. "In other words, relevant consumers perceive the wording CERTIFIED BISON as the subgenus and key aspect of bison meat that meets certain criteria." In re Golden Bison Consolidated, LLC , Serial No. 87980485 (April 12, 2021) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Board agreed with Examining Attorney Giancarlo Castro that the genus of goods is adequately defined by the identification of goods. The relevant consumers are members of the public who purchase bison mean or meals primarily containing bison meat [not me - ed.], and institutional purchasers such as restaurants. 

The Examining Attorney relied on websites that use the word "certified" in connection with meat products, including "GAP certified bison" and "USDA certified bison." Applicant's website sets out "(1) which quality assurances are ensured by Applicant’s certified bison seal; (2) what ranching and animal welfare standards are met under Applicant’s certified bison seal; and (3) what food safety inspections, testing, and verification are required for Applicant’s 'Certified Bison.'" 

 Applicant contended that bison meat is not "certified" or otherwise graded by the USDA, and that "USDA Certified Bison" simply does not exist. It maintained that the third-party websites do not use "certified bison" as a stand-alone term and that the word "certified" is at most descriptive of its products. 

The issue before the Board was whether the Internet materials submitted by the Examining Attorney, along with the dictionary definition of the "certified" submitted by Applicant ("genuine, authentic") constitute "clear evidence" that "the addition of the term CERTIFIED to the generic wording BISON results in a generic designation in relation to the identified goods." The Board found that they do.

[I]t is clear that relevant consumers of meat products have been exposed to the concept that meat products may be certified, whether they are certified as organic, grass fed, raised in a particular manner or genuine. Moreover, Applicant’s identification of goods, as well as it s own web site , specifically states that its bison meat products are certified.

The Board found of "no consequence" the fact that Applicant certification is not based on U.S. governmental or industry wide standards, but rather on its own criteria or the criteria of a purported affiliated entity. 

Applicant’s reliance on the Supreme Court’s decision in the Booking.com case was off base. There the Court was considering whether a composite designation comprised of a purportedly generic term and a top level domain name is capable of functioning as a service mark for online hotel reservation services. The question in this case is whether the combination of the term "certified" with the generic term "bison" renders the composite designation generic for Applicant’s goods. 

Booking.com is distinguishable because it is technically impossible for there to be more than one “booking.com,” whereas here, the record shows several uses of “certified bison” and reveals that certain meat products are commonly identified as “certified.”

The Board concluded that CERTIFIED BISON, taken as a whole, identifies "a subgenus and key aspect of bison meat and, therefore, is the generic name of Applicant’s goods. Therefore it affirmed the refusal to register.

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TTABlogger comment: Seems to me that genericness is the wrong pigeonhole here. Mere descriptiveness seems more appropriate.  

Text Copyright John L. Welch 2021.

TTABlog Test: Is CHROMAFUSION for Plastic Sleeves for Trading Cards Confusable WIth CHROME for Trading Cards?

The USPTO refused to register the mark CHROMAFUSION for plastic protective sleeves for trading cards and gaming cards, "having an opaque side and a translucent side" ... " for use in card game competitions and tournaments," finding confusion likely with the registered mark CHROME for trading cards. The Examining Attorney submitted evidence that the goods involved are of types that are sold through the same trade channels, but Applicant Ultra Pro argued that its protective sleeves are unsuitable for trading cards [despite use of that term in its identification of goods] because they are opaque on one side. How do you think this came out? Are the marks close enough for confusion? In re Ultra Pro International, LLC, Serial No. 87570853 (April 2, 2021) [not precedential] (Opinion by Judge Frances S. Wolfson).

 
Examining Attorney Jacqueline A. Jones objected to the inclusion of evidence attached to Ultra Pro's brief. The Board, as usual, found the evidence to be either duplicative of evidence already in the record, or untimely. In any case, the excluded evidence did not affect the outcome of the case. 

The Board found the involved goods to be complementary.  As to Ultra Pro's argument about the opacity of one side of its protective sleeves was irrelevant, the Board made this curious statement: "[I]n evaluating whether the goods are related or complementary, we must base our determination on the goods as identified in the application and cited registrations, rather than what occurs in the marketplace." [Actually the opacity limitation does appear in Ultra Pro's application - ed.].

The evidence showed that both applicant’s and registrant’s types of goods are sold online by the same third-party vendors under a single mark: e.g., Pokémon Center sells card sleeves and cards under the mark POKÉMON TCG.

As to the marks, the Board found them to be "somewhat similar in appearance and pronunciation due to the shared element 'CHROM.' Nonetheless, they convey substantially different connotations and overall commercial impressions." 

"Whereas the term 'chrome' is defined as 'chromium plate as a decorative or protective finish on motor-vehicle fittings and other objects,' ... the term 'chroma' is defined as 'purity or intensity of color'" or as the saturation of a color. Moreover, the Board found that the term CHROMA is not separable from the remainder of applicant’s mark. "Rather, together with the word FUSION, it forms part of a unitary, compound mark."

A unitary mark has certain observable characteristics. Specifically, its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its own independent of the meaning of its constituent elements. In other words, a unitary mark must create a single and distinct commercial impression. This test for unitariness [includes an examination of] … the meaning of the words and how the meaning relates to each other and to the goods....

CHROMAFUSION brings to mind "a confluence of intense colors merged together," and thus engenders a very different overall commercial impression than the mark CHROME.

The Board found this first duPont factor to be dispositive: "Applicant’s mark is so different from Registrant’s marks that confusion is unlikely."

And so the Board reversed the refusal.

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TTABlogger comment: How did you do? Did you play your cards right? Do you find the Board's opinion somewhat opaque?

Text Copyright John L. Welch 2021.

E.D. Va. District Court Upholds TTAB Affirmance of Functionality of Bathtub Overflow Drain Cap

In another action for review under Section 1071(b) of the Trademark Act, the U.S. District Court for the Eastern District of Virginia (a/k/a the Rocket Docket) wasted no time in upholding the TTAB's decision finding the product configuration of a bathtub overflow drain cap to be de jure functional under Section 2(e)(5). The court granted the Commissioner of Patent's motion for summary judgment and denied Applicant WCM's cross-motion. WCM Industries, Inc. v.Andrew Hirschfield, Case No. 1:20-cv-00558 (E.D. Va. April 6, 2021).

 In its March 17,  2020 decision [TTABlogged here] the Board found that applicant's own utility patents were "sufficient to make the determination of functionality." Reviewing applicant's patents, the Board found that "the product configuration mark results from the utilitarian snap on feature. The size of the cover is dictated by the curvature of the tub, the depth of the side walls is dictated by the requirement to be able to snap on and allow water flow but not too deep as that is aesthetically unpleasant."

Applicant argued that its utility patents protect the functional aspects of the interior of the cover, not the outward face and sidewall, which provide an aesthetically pleasing design. The Board nixed that argument:

The overall configuration is directed by utilitarian concerns of an overflow cover that is used to cover the round overflow pipe and plate while allowing water to flow through the drainage hole. The product configuration makes the overflow cover easier to install (no screws, rounded configuration snaps on to cylindrical retainer nut) and safer (no screws so smooth rounded surface to avoid abrasion on the skin). In addition, the drainage opening encompassed by the sidewall allows for the circular overflow cover to snap onto the circular retainer nut.

The district court observed that "The Supreme Court has articulated a preference against granting trade dress status because 'product design almost invariably serves purposes other than source identification." TrafFix Devices, Inc. v. Mktg. Displays, Inc., 523 U.S. 23, 29 (2001). The first hurdle to trademark protection for a product shape is functionality. "The proper avenue for the protection of a functional article is patent law, not trademark law." 

The court applied the Morton-Norwich factors, noting that the first two "carry the most weight:" (1) utility patents and (2) advertising touting the utilitarian benefits of the design. As to the first factor, "the products design is present in Plaintiff's utility patents for their overflow drain system as a whole." 

Moreover, Plaintiff WCM had "used these utility patents to protect their Innovator line of product, including the design of the Overflow Cap Mark, in litigation." In one case, a representative of WCM testified that the cap has the "functional purpose" of preventing items from entering the drainpipe." [That's de facto functionality (i.e., utility), not de jure functionality - ed.]. In a complaint filed with the ITC, WCM stated that is utility patents are directed to an assembly that is free of screws and includes a "decorative cap which snaps on to an associated nut element, eliminating the possibility of cross-threading or damaging components of the assembly. [Seems innocuous to me - ed].

As to the second factor, the record included advertising by WCM that touted the functional advantages of the design. The court noted that the inclusion of the term "Hi-Flow" in the product name "strongly suggests that its flow capacity is a practical advantage and thus that this design, in the eye of its manufacturer, has a functional benefit as well as an aesthetic one." 

The court declined to address the third Morton-Norwich factor (alternative designs), since that issue is irrelevant when the first two factors are satisfied. TrafFIx, 522 U.S. at 33-34. Finally, under the fourth factor, one of the patents indicated that the subject design is "comparatively simple or cheap to manufacture." 

Concluding that WCM had failed to satisfy its burden of proof to show that its product configuration is non-functional, the court granted the USPTO's motion for summary judgment.

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TTABlogger comment: It's very hard to overcome utility patent evidence in these product configuration cases. Not that I'm shedding any tears for the patentee.

Text Copyright John L. Welch 2021.

M.D. Florida District Court Upholds TTAB Decision Affirming Section 2(d) Refusal of VIVE HEALTH for Retail Medical Suply Services

On cross-motions for summary judgment in this civil action for review under Section 1071(b) of the Trademark Act, the U.S. District Court for the Middle District of Florida upheld the TTAB's decision finding confusion likely between Applicant's mark VIVE HEALTH for "On-line retail store services featuring a variety of medical equipment, medical supplies and home health products," in view of the registered mark VIVOHEALTH! (in standard character form) for "retail stores services  . . . featuring health and wellness products, including medical goods." Vive Health LLC v. Andrew Hirschfeld, Civ. No. 2:19-513-FtM-H.B-NPM (M.D. Florida March 23, 2021).

Although Vive Health presented little evidence to the USPTO, it hired expert witnesses and submitted "voluminous materials" in the de novo review afforded by the district court action. 

The court began by making several curious comments regarding the strength of the cited mark VIVOHEALTH! First the court stated that the VIVOHEALTH! mark is considered incontestable because "it has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce." Actually, a Declaration under Section 15 is also required to achieve incontestability.

The court also asserted that "[a]n incontestable mark is generally entitled to 'strong protection.'" So say some circuits, but TTAB precedent holds that incontestability is irrelevant to the strength of mark. Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010) [precedential]. As a practical matter, even a weak, suggestive mark, or a mark that is in minimal use, can attain incontestability just through five years of use and the filing of a declaration. Becoming incontestable has no effect on the strength of the mark: it is the same the day before and the day after.

The court concluded, on somewhat shaky grounds, that the VIVOHEALTH! mark - "which is incontestable and as a suggestive mark, is relatively strong" - is a "strong mark."

Survey evidence regarding pronunciation of the two marks was inconclusive, with some respondents pronouncing "vive" like 'five," and others not. Some respondents pronounced "vive" with two syllables. In any event, the court found the marks to be sufficiently similar in overall commercial impression to support the Board's finding on this factor.

The court found that the services as identified in the application and cited registration overlap, and presumably travel in the same trade channels to the same classes of customers. Applicant asserted that the cited mark is used primarily only in New York [which is irrelevant here - ed.], but the court noted that applicant's own services are not geographically limited. 

Applicant pointed to a lack of evidence of actual confusion, but the court observed that lack of actual confusion is entitled to little weight in an ex parte context.

Concluding that the applicant had failed to carry its burden to prove that confusion between the involved marks is not likely, the court granted the USPTO's motion for summary judgment and dismissed the action.

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TTABlogger comment: Looks like the survey evidence bore out the common TTAB wisdom that there is no correct pronunciation of a trademark (except for common words). For example, how do you pronounce the trademark TTABlog?

Text Copyright John L. Welch 2021.

TTABlog Test: Is MALIBU SUPPER CLUB Primarily Geographically Descriptive of Restaurant Services?

The USPTO refused to register the proposed mark MALIBU SUPPER CLUB for restaurant and bar services [SUPPER CLUB disclaimed], finding the mark to be primarily geographically descriptive under Section 2(e)(2). On appeal, the applicant argued that the word Malibu "will be seen by consumers not primarily as a place, but rather as a general reference to luxury and relaxation – a “[glitzy] area that Hollywood movie stars flock to." How do you think this came out?  In re Argent Media Group, LLC, Serial No. 88780676 (April 6, 2021) [not precedential] (Opinion by Judge Frances S. Wolfson). 

 

Photos: Copyright William Maguire 2017.

Section 2(e)(2) of the Trademark Act bars registration on the Principal Register of a mark which “when used on or in connection with the goods of the applicant is primarily geographically descriptive of them." To establish that a mark is primarily geographically descriptive, the USPTO must prove three elements: 

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 services originate in 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.
   
   

In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448 (Fed. Cir. 2015) (internal quotations and citations omitted).

 

The evidence established that MALIBU is a generally known geographic location, as shown by gazetteer and dictionary references, that "supper club" is commonly used to identify a type of registrant, that applicant's services will (admittedly) originate in Malibu, and that consumers will immediately make a connection between the services and Malibu.

Applicant relied upon a portion of a "Pop Culture Dictionary" excerpt from dictionary.com, but the fuller reference "shows that the primary significance of 'Malibu,' even in pop culture, is to the geographic location." The full version of the dictionary entry states:

“Malibu variously refers to a wealthy beach city near Los Angeles, a coconut-flavored liqueur made with rum, and a sedan made by Chevrolet.” *** “This is not meant to be a formal definition of Malibu like most terms we define on Dictionary.com, but is rather an informal word summary that hopefully touches upon the key aspects of the meaning and usage of Malibu that will help our users expand their word mastery.”

The Board found that, in the context of the restaurant and bar services of the subject application, consumers would immediately perceive MALIBU as designating the location of applicant's restaurant. 

Applicant's third-party registrations for marks containing MALIBU were not life savers for applicant. One group involved goods and services unrelated to restaurant services. Another group contained additional distinctive wording: MALIBU PRINCESS and MALIBU GIRLS for dresses, MALIBU ROAD for clothing, MALIBU BEACH BASICS for handbags. 

 

The sole remaining registration, MALIBU for alcoholic and non-alcoholic beverages - even if the goods were considered related to applicant' services - was alone not enough to overcome the other evidence of record.

Examining Attorney James Hill submitted eleven third-party registrations that include disclaimers of the word MALIBU, five of which were for restaurant services.

Third-party registrations featuring services that are the same as or similar to Applicant’s services are probative evidence on the issue of geographic descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. See Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006).

The Board concluded the USPTO had established the elements for a Section 2(e)(2) refusal, and so it affirmed the USPTO refusal.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2021.

TTABlog Test: How Did These Three Mere Descriptiveness Appeals Turn Out?

The TTAB recently decided the appeals from three Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them, keeping in mind that last year the Board affirmed, by my calculation, about 93% of these refusals. Answer(s) will be found in the first comment.


   

In re Tailored Management System, Inc., Application Serial No. 88857513 (March 26, 20221 [not precedential] (Opinion by Judge Michael B. Adlin). [Mere descriptiveness refusal of TAILORED MANAGEMENT SYSTEM “providing temporary use of online non downloadable computer software for insurance claims management for inputting first notice of loss, assigning claim to an adjuster, as well as performing billing and production, provide management reports, and tracking accounts receivable, related to the claim" [MANAGEMENT SERVICES (sic) disclaimed]. Applicant (based in Colleyville, Texas) argued that the proposed mark is suggestive rather than descriptive because "the term TAILORED is merely suggestive … the word TAILORED is not literally a description of the Applicant’s [ services], they don’t offer custom software services, but a standardized product. TAILORED suggests that the product will be suited for the customer’s needs, but it is not an actual description of the services."]

In re Consolidated Credit Counseling Services, Inc.., Application Serial No. 88396820 (March 29, 2021) [not precedential] (Opinion by Judge Frances S. Wolfson). [Mere descriptiveness refusal of CONSOLIDATED CREDIT for providing financial information, retirement information, and homebuyer education services. Applicant maintained that "credit is not consolidated and the term 'consolidated credit' has no meaning at all" and that the third parties using CONSOLIDATED CREDIT are "infringers of Applicant’s Mark."]

In re Rayhawk Corporation, Serial No. 8857462 (March 31, 2021) [not precedential] (Opinion by Judge Robert H. Coggins). [Mere descriptiveness refusal of LESS FRICTION for "medical services." Applicant asserted that “[t]here are no ‘less friction’ medical services or the like," and moreover, the proposed mark is a double entendre.]

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

Text Copyright John L. Welch 2021.