Llama Design Mark Fails to Function as a Trademark for Video Game Software, Says TTAB

The Board affirmed a refusal to register the design mark shown below for "downloadable video game software" on the ground that it fails to function as a trademark under Llanham Act Sections 1, 2, and 45. The mark comprises "a fanciful cartoonish image of a llama with the design of a treasure chest on the side portion of its saddle." The Board agreed with Examining Attorney Lleslie I. Richards that Applicant Epics's only specimen did not show use of the design as a source indicator. In re Epic Games, Inc., Serial No. 88233723 (May 26, 2021) [not precedential] (Opinion by Judge Albert Zervas). 

According to Epic, it introduced the llama item into its Fortnite video game in March 2018. The llama item is known to players, streamers, and fans as the "Loot Llama,” “Supply Llama,” or just “the Llama.” In game play, the Llama item serves a function familiar to many players (e.g., a resource cache), but is portrayed in a unique and unusual way. A player opens the llama item by pressing on the hand symbol. When opened, the llama disappears completely and the objects within fall to the ground, along with confetti. 

The examining attorney argued that the llama appears only as a character in the game, not as a source identifier. "[t]he only specimen showing the entire proposed mark appears to be under the ‘NEWS’ tab on applicant’s website, which appears to provide information or news about applicant’s goods. On that specimen, the mark merely floats around the background of the screen multiple times as a character appearing in the game." 

Epic disagreed that the llama is a character in its game. “[t]he Llama does not move, speak, or otherwise interact in any way with players or other objects. The Llama has no personality because it is an inanimate object within Fortnite. Lacking any personality, Applicant’s Llama simply does not meet the definition of the word 'character.'"

In Epic's specimens of use, only the "V3.3 Patch Notes webpage" (above) shows the mark intact and in its entirety.

The repetition of the llama on the specimen in varying sizes, portions and vividity detracts from Applicant’s claim that the single llama depicted in its drawing would be recognized as its mark. In addition, consumers considering the source of the webpage can look to the term FORTNITE which appears at the top left portion of the specimen. We thus find that the applied-for mark displayed on the V3.3 Patch Notes webpage is not used in a manner showing trademark use and does not function as a mark. 

 

The testimony of Epic's witness and the screenshots displayed in his declaration did not persuade the Board that consumers encountering llama design as depicted on the V3.3 Patch Notes specimen would perceive it as an indicator of source.

First, the applied-for design is not depicted in the first image; the saddlebag on the home screen differs from that on the drawing page. Second, the llama in the loading screen appears in what seems to be a scene from the video game and is not used in a manner to indicate source. Third, there is no claim of trademark rights through the designation “TM.” 

Epic argued that its evidence showed that the llama design had achieved acquired distinctiveness, but the Board observed that this was beside the point:

Applicant submitted a webpage as a specimen of use for “downloadable video game software,” and hence must meet the requirements for demonstrating that the webpage demonstrates use of the proposed mark as a source indicator for such goods. Its specimens of use do not show use of the llama as a mark to demonstrate that it functions as a source indicator for such goods.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: The refusal did not apply to Epic's class 41 “entertainment services, namely, providing online video games," so this was not a total lloss for Epic. As to class 9, perhaps Epic may try again with better specimens of use?

Text Copyright John L. Welch 2021.

TTABlog Test: Must "HAUS" Be Disclaimed in "GRAVITY HAUS" for Social Club Services?

The USPTO refused to register the mark GRAVITY HAUS for "Social club services, namely, arranging, organizing, and hosting social events, get-togethers, night club services and parties for club members; conducting guided outdoor expeditions and activities in the nature of guided hiking tours for club members," absent a disclaimer of HAUS. Applicant argued that the word HAUS “does not provide any indication of the type of services offered and certainly does not identify social club services." How do you think this appeal came out? In re Yodeets Digital, LLC, Serial No. 88977161 (May 21, 2021) [not precedential] (Opinion by Judge Christen M. English).

Applicant did not dispute that "haus" is German for "house." That was enough for the Board:

The definition of “house” as a “restaurant, hotel, bar, or club” immediately describes a feature or characteristic of social club services, namely, that the services are often arranged, organized and hosted in a “house.” The general consuming public of Applicant’s social club services are likely to immediately understand that the German word “haus,” meaning “house,” refers to the place or venue where social club services are rendered, e.g. a bar, restaurant, club.

The evidence also showed that "a number of third-parties offering social club services under marks that incorporate the descriptive word 'house' or 'haus'" The Board noted that applicant's recitation of services "does not exclude 'social club services' provided in a dedicated venue or 'house.'"

Moreover, the fact that the application also covers “conducting guided tour expeditions and activities in the nature of guided hiking tours for club members” – activities that would not be provided in a restaurant, bar or club – is of no consequence. A word is merely descriptive where, as here, it describes any of the goods or services for which registration is sought.

The Board then considered whether GRAVITY HAUS is a unitary mark, making the disclaimer requirement inapplicable. "A mark is unitary if it creates a single, distinct commercial impression."

Applicant argued that "“[t]he terms GRAVITY HAUS used together create a sense of unity as the term GRAVITY indicates something that is held to the ground or is of this earth and HAUS represents the article that is held down by gravity. A house is typically centered by gravity and suggests a location that is grounded or stable." However, there was no evidence that consumers would attribute that connotation to the mark. Nor was there any evidence that GRAVITY HAUS is a catch-phrase or slogan.

The Board concluded that GRAVITY HAUS does not have a distinct meaning independent from its constituent elements.

And so the Board affirmed the disclaimer requirement, and allowed applicant 30 days to submit the required disclaimer.

Read comments and post your comment here.

TTABlogger comment: I side with applicant on this one. BTW: Gravity Haus apparently operates several hotels/ lodges in Colorado under that mark.

Text Copyright John L. Welch 2021.

TTABlog Test: How Did These Three Appeals from 2(e)(1) Mere Descriptiveness Refusals 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 88% of these refusals. Answer(s) will be found in the first comment.


In re L-Nutra, Inc., Application Serial No. 88171365 (May 12, 2021) [not precedential] (Opinion by Judge Christpher Larkin). [Mere descriptiveness refusal of FASTING BAR for "Nutritionally balanced prepared meals for medical use consisting primarily of grains, nuts and vegetables; nutritional meal replacement snacks adapted for medical use." Applicant argued that, in view of the dictionary definition of "fast," the proposed mark is an oxymoron because “an individual cannot simultaneously fast and eat – it is one or the other,”]

In re Cybeye, Inc., Application Serial No. 88587327 (May 24, 2021) [not precedential] (Opinion by Judge Linda A. Kuczma). [Mere descriptiveness refusal of LIVE24 for "Downloadable mobile application providing a live streaming-based AMA (Ask-Me-Anything) crowd knowledge platform." Applicant argued that there are 19 definitions of the word "live" and the number '24' alone is not merely descriptive of anything.]

In re Quizzit, Inc., Serial No. 88522349 (May 24, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Mere descriptiveness refusal of POST. VOTE. SHOP. for downloadable mobile applications for conducting polls and opinion surveys. Applicant asserted "[t]he non-standard presentation of POST. VOTE. SHOP. as three verbs separated by periods creates a unique impression in the minds of consumers," and that the "use of verbs and the use of punctuation in the applied-for mark in fact unite the mark."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2021.

CAFC Affirms TTAB: "BLUE INDUSTRY" Not Confusable with, or Dilutive of, "INDUSTRY" for Clothing

In a nonprecedential disposition, the CAFC affirmed the TTAB's dismissal of an opposition to registration of the mark BLUE INDUSTRY for various clothing items, finding no likelihood of confusion with, and no likelihood of dilution of, various INDUSTRY-formative marks owned by Opposer Pure & Simple (P&S) for clothing and related retail store services. [TTABlogged here]. The court found that the Board’s factual findings were supported by substantial evidence and that the Board correctly concluded there was no likelihood of confusion or dilution. Pure & Simple Concepts, Inc. v. I H W Management Limited DBA The Finchley Group, Appeal No. 2020-1211 (May 24, 2021) [not precedential].

P&S contended that the Board erred by failing to consider "the marketplace impression of the marks at issue upon likely consumers," claiming that the goods are inexpensive and may be bought on impulse. The court, however, noted that P&S failed to raise that issue on appeal and therefore had waived it.

Next, P&S maintained that the Board erred in finding “BLUE” to be the dominant term in Finchley’s mark. The court, however, concluded that "the Board’s finding that BLUE was the lead term in Finchley’s mark and its finding that BLUE 'is most likely to be impressed upon the mind of the purchaser and remembered'" was supported by substantial evidence and was not otherwise contrary to law.

P&S also argued that the Board erred by relying too heavily on third-party registrations without considering actual use of the marks, their continuing validity, or their commercial impression. The court, however, found that "the number of registered 'industry' marks [74], combined with the specific examples of advertised use [12] that were considered by the Board, are substantial evidence indicating that the sixth DuPont factor weighs in favor of Finchley."

Turning to P&S's dilution claim, the court agreed with the Board that the evidence "fell far short of proving that P&S’s marks are famous especially because 'there is no evidence that any of P&S’s marks have risen to the level of consumer recognition as a household name.'"

And so, the CAFC affirmed the Board's dismissal of the opposition.

Read comments and post your comment here.

TTABlogger comment: Finchley's industry in gathering evidence of third-party use and registration paid off.

Text Copyright John L. Welch 2021.

Precedential No. 12: TTAB Grants Petition to Cancel Registration for Gun Barrel Trade Dress Due to Section 2(e)(5) Functionality

In an impressively exhaustive opinion, the Board granted a petition for cancellation of a registration for the trade dress of a gun barrel (see drawing below), on the ground of de jure functionality under Section 2(e)(5). The registered mark "consists of trade dress applied to gun barrels formed with a mottled pattern of irregularly-sized, rippled patches, resembling a quilt having striated patches of varying shapes and reflectivity depending on the ambient light source and viewing angle." As often happens in Section 2(e)(5) determinations, respondent's own utility patent blew a hole in its case. McGowen Precision Barrels, LLC v. Proof Research, Inc., 2021 USPQ2d 559 (TTAB 2021) [precedential] (Opinion by Judge Mark Lebow).

The Board provided a lengthy and detailed explanation of the technology and the process for manufacturing carbon fiber composite gun barrels. There was no dispute that carbon fiber composite barrels provide various functional benefits to rifles.

What the parties dispute is whether the particular appearance of Respondent’s carbon fiber composite barrels is functional because it is a natural by-product of the manufacturing process that creates the barrels, as Petitioner claims, or whether it is simply the result of Respondent’s cosmetic efforts to create a trade dress that consumers associate with Respondent.

The Board observed that a product design or feature is considered functional in a utilitarian sense if: (1) it is “essential to the use or purpose of the article,” or (2) it “affects the cost or quality of the article.” TrafFix, 58 USPQ2d at 1006 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). If functionality is established under the Inwood test, "a full analysis of all types of Morton-Norwich evidence will not change the result―in particular, the availability of alternatives―and is unnecessary."

The Board looked to respondent's utility patent, noting that “[a] prior [utility] patent … has vital significance in resolving the trade dress claim” and “is strong evidence that the features therein claimed are functional.” TrafFix, 58 USPQ2d at 1005. The Board found that respondent’s trade dress is the result of a manufacturing process that follows Claim 22 of respondent's U.S. Patent 10,168,117, entitled "Fiber Winding System for Composite Projectile Barrel Structure" [pdf here].

The Board further found that respondent employs the "best mode" for practicing its patented invention, which yields the trade dress at issue when ground down with no coating applied. In short,  the appearance of the barrel is dictated by its function.

[W]e view the disclosures in the [’117] Utility Patent as so strong as to be sufficient, by [themselves], to sustain the functionality refusal without consideration of the other Morton-Norwich categories of evidence.” In re OEP Enters., Inc., 2019 USPQ2d 309323, *10-11 (TTAB 2019). See also Grote Indus., 126 USPQ2d at 1203. Simply put, the patent evidence, combined with the evidence regarding Respondent’s manufacturing process, is dispositive on the issue of functionality

And so the Board granted the petition for cancellation under Section 2(e)(5).

Read comments and post your comment here.

TTABlogger comment:  The patent statute requires that an applicant "set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention."  

Text Copyright John L. Welch 2021.

USPTO Issues Notice of Proposed Rulemaking to Implement Provisions of the Trademark Modernization Act of 2020, Plans Two Roundtables.

The USPTO has issued a Notice of Proposed Rulemaking (details here) to implement the provisions of the Trademark Modernization Act of 2020. The Office will hold two roundtables to field questions and hear informal public input on the proposed rulemaking. The first roundtable will take place on Tuesday, June 1, from 1-3 p.m. ET. [more information here]. The roundtable is open to all, but registration is required. A recording of the event will be posted to the USPTO website within two weeks of its conclusion. A second roundtable is scheduled for June 14th.

SUMMARY: The United States Patent and Trademark Office proposes to amend the rules of practice in trademark cases to implement provisions of the Trademark Modernization Act of 2020. The proposed rule establishes ex parte expungement and reexamination proceedings for cancellation of a registration when the required use in commerce of the registered mark has not been made; provides for a new nonuse ground for cancellation before the Trademark Trial and Appeal Board; establishes flexible Office action response periods; and amends the existing letter-of-protest rule to indicate that letter-of-protest determinations are final and non-reviewable. The USPTO also proposes to set fees for petitions requesting institution of ex parte expungement and reexamination proceedings, and for requests to extend Office action response deadlines. Amendments are also proposed for the rules concerning the suspension of USPTO proceedings and the rules governing attorney recognition in trademark matters. Finally, a new rule is proposed to address procedures regarding court orders cancelling or affecting registrations.

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

"DEHYDRATION RELIEF FAST" Incapable of Functioning as a Trademark for Hydration Solution Products, Says TTAB

Finding Applicant Drip Drop's proposed mark DEHYDRATION RELIEF FAST for electrolyte powders and electrolyte replacement solutions, to be incapable of functioning as a trademark, the Board affirmed a refusal to register the phrase on the Supplemental Register. Dictionary evidence and third-party usage convinced the Board that the phrase "would be perceived as merely informing consumers about the fast-acting quality of the product, and not identifying its source of origin." In re Drip Drop Hydration Inc., Serial No. 88090507 (May 18, 2021) [not precedential] (Opinion by Judge David K. Heasley).

“Slogans and other terms that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable.” In re Eagle Crest Inc., 96 USPQ2d at 1229 [ONCE A MARINE, ALWAYS A MARINE]. As Professor McCarthy has observed, “As a matter of competitive policy, it should be close to impossible for one competitor to achieve exclusive rights in such common advertising slogans….” 1 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7:23 (5th ed. March 2021 update).

Drip Drop admitted that DEHYDRATION RELIEF FAST is descriptive of its “hydration solution products,” but maintained that the slogan is “a far cry from merely informational wording.” The Board, however, found that Examining Attorney William T. Verhosek’s dictionary references and third-party examples established the merely informational nature of DEHYDRATION RELIEF FAST.

Drip Drop pointed to its specimen of use (shown above) where "Dehydration Relief Fast" appears in an area separate from the informational portion of the package, with the word "Fast" displayed in bright blue. The Board pointed out, however, that Drip Drop's application claims the wording in standard character form. Furthermore, “[r]efusal is proper if the words of the proposed mark are used only in their ordinary sense as part of the advertising statement….” In re Post Properties, Inc., 227 USPQ 334, 335 (TTAB 1985). This is true even if the words are conveyed in a trademark manner. Cf. Univ. of Kentucky v. 40-0, 2021 USPQ2d 253, at *32. In any case, the stylization of the subject phrase "does not and cannot create an impression on purchasers separate and apart from the unregistrable informational phrase itself."

Concluding that the proposed mark would be perceived as merely informing consumers about the fast-acting quality of the product, and not identifying its source of origin, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?? I think so.

Text Copyright John L. Welch 2021.

TTABlog Test: Is "SWISS MILITARY" Generic for Watches of Swiss Origin?

The USPTO refused to register the term SWISS MILITARY for "watches of Swiss origin," on the ground of genericness. The Board, however, ruled that the Office failed to submit the requisite "clear evidence" that SWISS MILITARY "will be perceived by the relevant consumers primarily as a common name for watches of Swiss origin." In re Wenger S.A., Serial No. 85157939 (May 14, 2021) [not precedential] (Opinion by Judge Thomas W. Wellington).

 

The examining attorney, applicant, and the Board all agreed that the pertinent genus of good is "watches of Swiss origin." The question, then, was whether the relevant public (purchasers and potential purchasers of said watches), understands SWISS MILITARY to primarily refer to watches of Swiss origin.

The Board found the term “SWISS” to be geographically descriptive term: i.e., Swiss watches are perceived by the relevant public as watches from Switzerland, and not a type of watch that would originate elsewhere. Although a geographic term may be generic for goods (e.g., French dressing, Gruyere cheese), the record did not establish that this is the case with SWISS for watches of Swiss origin. The term “MILITARY,” however, is generic for, and commonly understood by the relevant public to refer to, a type or category of watch. 

As to the composite term SWISS MILITARY, there was some evidence of use of the term as part of a brand by third parties. Applicant characterized some of those users as "infringers" and its witness asserted that sales of those watches was “insignificant and insubstantial.” There was also some evidence of use of “Swiss military” not as a brand, but the evidence was limited and "often inconsistent as to what 'Swiss military' or 'Swiss Military' is identifying." 

The Board noted that it must resolve any reasonable doubt in favor of the applicant "on the theory that any person who believes that he would be damaged by the registration will have an opportunity ... to oppose the registration of the mark and to present evidence, usually not present in the ex parte application, to that effect."

Applicant offered the results of a "Teflon" survey in which 57% of respondents pegged SWISS MILITARY as a brand name, while 35% deemed it generic. The Board saw no flaw in the survey and accorded it some probative value, but observed that it would have reached the same result with or without the survey evidence.

And so, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: The Board spent some time comparing this case with the PRETZEL CRISPS case vis-a-vis the "Teflon" survey evidence. There, the record included "significant evidence of third-party use of the term PRETZEL CRISPS prior to the applicant’s adoption," whereas here that was no such evidence. "In other words, on the record before us, we cannot conclusively label the survey result for the term SWISS MILITARY as merely a reflection of Applicant’s acquisition of rights in a common term that was already in use, i.e., obtaining 'de facto secondary meaning.'"

Text Copyright John L. Welch 2021.

INTA Pro Bono Legal Clinic (Virtual): June 15th, 11AM to 12PM

INTA will hold its first virtual Pro Bono Legal Clinic on June 15, 2021, from 11:00 am–12:00 pm. Applicant and volunteer information may be found here, including an application form and a pro bono toolkit. Applications are due by May 21st. Additional information may be found in the flyer set out below (click on flyer for a larger image).

For Potential Clients To be eligible to participate in the program, you or your organization must have a valid trademark issue and you must have financial need, which must be shown by providing tax information or the past 12 months of bank statements (which is kept confidential). The specifics of financial need vary based on the business category, and by country. To begin the process, please fill out the application Attorneys, you must: (i) be licensed (in good standing) to practice in your jurisdiction; (ii) carry malpractice insurance, and (iii) be a current member of INTA.

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

Precedential No. 11: Specimen Webpages Fail the "Display-Associated-With-the Goods" Test, Says TTAB

There's nothing like a TTAB specimen-of-use case to cure your insomnia. Applicant MN Apparel applied to register the mark MOSTLY MN ONE WITH EVERYTHING for t-shirts, caps, and the like, but ran into two refusals aimed at its specimens of use: mutilation and failure to show use as a trademark. In a less than pellucid opinion, the Board rejected the first refusal but affirmed the second. In re MN Apparel LLC, 2021 USPQ2d 535 (TTAB 2021) [precedential] (Opinion by Judge Peter W. Cataldo).

Mutilation: In a Section 1(a) application, the drawing of the mark must be a "substantially exact representation of the mark as used on or in connection with the goods." Trademark Rule 2.51(a). 

Applicant's specimen of use comprised five Internet webpage excerpts from the company website. The examining attorney claimed that the specimen showed applicant's house mark or tradename MN APPAREL along with different forms of the proposed mark, and therefore that these forms of the mark could not be considered "a substantially exact representation of the mark on the drawing page." [Note; this is the reverse of what the Rule says - ed.].  The Board was unimpressed. It noted that an applicant may apply to register any element of a composite mark that creates a separate and distinct commercial impression. See, e.g., In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988); Institut Nat’l des Appellations D’Origine v. Vintners Int’l. Co., 954 F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992). Here, the house mark was separated from the versions of the  proposed mark and so the latter created separate commercial impressions.

Next, the examining attorney maintained that none of the specimen webpages showed the exact mark of the drawing. [Again reversing the language of the Rule - ed.]. Instead of MOSTLY MN ONE WITH EVERYTHING, the following variations on the specimen webpages:

• MOSTLY MN AND ONE WITH EVERYTHING
• MOSTLY MN, ONE WITH EVERYTHING
• MOSTLY MINNESOTA ONE WITH EVERYTHING
  

The Board pointed out that "exact match" is not the standard, but rather "substantially exact representation." "A drawing displaying only a 'minor alteration' of the mark that 'does not create a new and different mark creating a different commercial impression' from the matter shown in the specimen is acceptable." In re Schehter Bros Modular Corp., 182 USPQ 694, 695 (TTAB 1974).

The Board found MOSTLY MN, ONE WITH EVERYTHING to be a substantially exact representation of MOSTLY MN ONE WITH EVERYTHING, since the added comma does not change the mark's meaning or commercial impression. [Again reversing the language of the Rule - ed.]. Likewise with MOSTLY MN AND ONE WITH EVERYTHING. However, not so with MOSTLY MINNESOTA ONE WITH EVERYTHING, despite the fact that MN is a widely recognized abbreviation for Minnesota. The two terms are significantly different aurally and visually, and further the term MN in applicant's proposed mark may not be perceived as the state abbreviation. 

Use as a Trademark: Secondly, the examining attorney argued that the specimen comprises mere advertising and not displays associated with the goods, and therefore the specimen does not show proper use of the mark in commerce. The Board agreed.

[T]he specimen must contain sufficient practical information about the goods and a way to order the goods, so as to put the prospective customer at the point of purchase. Examples include a catalog order form, a telephone number through which the consumer is invited to call in a purchase, Lands’ End, 24 USPQ2d at 1316, or in the case of webpage specimens, a way to “plac[e] orders for the goods via the Internet,” Anpath Grp., 95 USPQ2d at 1381, such as selecting goods and adding them to a virtual shopping cart.

A specimen fails to qualify as a point-of-sale display if it contains more limited information and would require the customer to "contact applicant to obtain preliminary information necessary to order the goods" before an order could be placed.  Anpath Grp., 95 USPQ2d at 1381; see also U.S. Tsubaki, 109 USPQ2d at 2005.

The Board thumbed through the five pages of applicant's specimen of use and found them wanting. Only one of the five displayed applicant's goods, along with pricing and a "shop now" button, but no version of the proposed mark appeared on the page. The other four pages "fail to include sufficient information to function as point of sale displays associated with the identified goods." See, e.g., Anpath Grp., 95 USPQ2d at 1381; U.S. Tsubaki, 109 USPQ2d at 2005.

And so, the Board affirmed the second refusal to register. 

Read comments and post your comment here.

TTABlogger comment: I suspect this application was deemed precedential because it presents a rare instance in which the Board ruled against a law school clinic. I don't see any other reason.

Text Copyright John L. Welch 2021.

TTAB Sustains Coca-Cola's Dilution Claim Against "Conceal-Carry Registered Handgun" Stylized Mark

The Board sustained an opposition to registration of the proposed mark CONCEAL-CARRY REGISTERED HANDGUN in the stylized form shown below, for "Hats; Hoodies; Jackets; Jerseys; Sweaters; T-shirts; Graphic T-shirts; Short-sleeved or long-sleeved t-shirts; Sports jerseys," on the ground of likelihood of dilution by blurring of opposer's mark COCA-COLA in Spencerian script, for beverage products and a wide variety of other goods, including clothing. The Board found that  opposer's mark is "extremely famous," that Applicant Robert Troy Hoff intended to trade off of opposer's goodwill, and that the distinctiveness of the Coca-Cola mark will be impaired by use and registration of his mark.  The Coca-Cola Company v. Robert Troy Hoff, Opposition No. 91244286 (May 14, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

The Federal Circuit "'has set forth the following four elements a plaintiff must prove in a Board proceeding in order to prevail on a claim of dilution by blurring: 

(1) the plaintiff owns a famous mark that is distinctive;
(2) the defendant is using a mark in commerce that allegedly dilutes the plaintiff’s famous mark;
(3) the defendant’s use of its mark began after the plaintiff’s mark became famous; and
(4) the defendant’s use of its mark is likely to cause dilution by blurring or by tarnishment.’” quoting N.Y. Yankees, 114 USPQ2d at 1501-02.

As to the fame of opposer's mark, the Board reviewed decades of evidence regarding sales and advertising, and concluded that "[a]l of the non-exclusive factors set forth in Section 43(c)(2)(A) of the Trademark Act support a finding that the Coca-Cola Script Mark is a distinctive mark that became extremely famous long ago and remains so today."

The Board then looked to the six non-exclusive factors of Section 43(c)(B)(i)-(vi)) to determine whether Hoff's mark is likely to dilute the distinctiveness of opposer's Script Mark. Paraphrasing the Yankees case, the Board ruled that “consumers encountering Applicant’s mark will immediately be reminded of Opposer’s famous [Coca-Cola Script Mark] and associate the two.” As to the issue of intent, the Board found "no credible explanation for this choice by Applicant other than a desire to have his mark stand out because of its striking similarity to the famous Coca-Cola Script Mark." 

 

Moreover, Applicant Hoff's decision to hyphenate the two words and to use the term "conceal-carry" rather than the common term "concealed carry" is "explicable only by his desire to make the phrase mimic its counterpart “Coca-Cola” in the Coca-Cola Script Mark." Hoff's mark also contains the block letter term “REGISTERED HANDGUN,” which imitates Coca-Cola's historical uses of the terms “Trade-Mark Registered” and “Reg. U.S. Pat. Off.” below the Coca-Cola Script Mark. Hoff displays his mark in white on a red background, just as Coca-Cola has displayed its mark in red and white for decades.

 

 

The Board therefore found that "[a]pplicant is attempting to trade on the goodwill and fame generated by the [Coca-Cola Script Mark] mark in order to promote and market his own [goods]. As such, this dilution factor also favors [O]pposer.'" quoting Chanel, 110 USPQ2d at 2026. 

 

There was no evidence of actual association between the involved marks, but Hoff's application was filed on an intent-to-use basis, and he admitted in discovery that “[a]s of August 7, 2019, he had no sales of product bearing the Mark.” “'Thus, there has been a limited opportunity for the public to make any actual association between the parties’ design marks. We find this factor to be neutral.'” quoting N.Y. Yankees, 114 USPQ2d at 1509.

 

With regard to the impairment of the Coca-Cola script mark, opposer's witness "expressed Opposer’s concern that if it 'was incorrectly associated with a position that TCCC had not adopted or with which TCCC did not agree, TCCC would lose control of at least a portion of its goodwill and reputation that the Coca-Cola Script Mark symbolizes, especially with consumers who do not agree with the position.'"

 

Opposer’s concerns are legitimate. There is a fervent debate in the United States between proponents of gun rights, such as Applicant, and proponents of limitations on those rights. In that debate, Opposer, like Applicant, has the right to take one side or the other, or not to participate at all. We have found above, however, that Applicant’s mark will immediately conjure up Opposer’s famous Coca-Cola Script Mark, resulting in the association of Opposer with a particular position in the minds of purchasers and observers of Applicant’s clothing. Even if that association is ephemeral for some persons, it compromises Opposer’s ability to exercise exclusive control over the goodwill symbolized by the Coca-Cola Script Mark. For members of the public who have been exposed to Applicant’s mark, Opposer may appear to be a hypocrite if it later elects to take the opposite position in the gun rights debate or simply remains neutral.

The Board concluded that Hoff's use and registration of his proposed mark is likely to dilute by blurring the distinctiveness of the Coca-Cola script mark, and so the Board sustained the opposition under Section 43 of the Trademark Act. 

Read comments and post your comment here.

TTABlog comment:  Not very often does the Board decide a dilution claim. Usually if it finds likelihood of confusions it will decline to reach dilution. Here it did the opposite. BTW, why wasn't this deemed precedential? Maybe the decision breaks no new ground, but the opinion is an impressive review of dilution law.

Text Copyright John L. Welch 2021.

TTAB Affirms Refusal of ELECTRONIC PAYMENTS: Providing Independent Sales Reps is Not a Registrable Service

The Board affirmed a refusal to register the term ELECTRONIC PAYMENTS for "Business to business commerce services, namely, providing a network of independent sales representatives that earn bonus incentives to promote multi-function point of sale credit card and debit card processing equipment and supplies of others to merchants that enable payment authorization processing and inventory management solutions for merchants; and not available to cardholder markets," on the ground that the activities recited in the application are not registrable services. In re Electronic Payments Inc., Serial No. 87239532 (May 10, 2021) [not precedential] (Opinion by Judge Cheryl S. Goodman). 

To qualify as a registrable “service,” the activity in question "must be (1) a real activity; (2) performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service."

Applicant’s principal business is processing payments from merchants via point of sale (POS) terminals that have payment authorization enabled through Applicant. Thus, promoting and placing POS hardware is an inherent part of marketing Applicant’s merchant acquiring services. Applicant earns its revenue from these sales transactions by placing the POS hardware at the merchant business, programmed to request authorization through Applicant.

The Board found that the recited "independent sales agent services that obtain new merchant accounts for Applicant, and promote the POS hardware of others to these merchants, is a routine activity provided in connection with Applicant’s primary service, merchant acquisition services, and is not a sufficiently separate activity to constitute a service rendered for the benefit of others."

Although third-party hardware manufacturers may derive some benefit from these activities, the Board found that this benefit is incidental to that obtained by Applicant from the independent sales organization, "which operates primarily for Applicant’s benefit to convert a potential merchant to a merchant account so that Applicant can earn fees for sales transactions and servicing the account."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: In November 2019, the Board found the term ELECTRONIC PAYMENTS to be generic for credit card payment processing services, on an application owned by the same applicant as here. Opinion here.

Text Copyright John L. Welch 2021.

California Lawyers Association Webinar June 15: "Trademark Cases To Remember From A Year To Forget"

The IP Section of the California Lawyers Association (f/k/a the California Bar Assn.) will host a webinar on June 15th from 1:00 PM to 2:30 PM (Pacific Standard Time), entitled "Trademark Cases To Remember From A Year To Forget." Martin B. "Marty" Schwimmer and Yours Truly will share the spotlight in what we hope to be an informative and entertaining presentation. CLE credit is available. Details and registration here.

The TTAB is where the rubber hits the road in terms of trademark registrability. Speakers shall peruse a formidable pile of failure-to-function cases that have made the trademark practitioner’s journey more problematical. The TTAB’s latest surname decision raised the bar to registration, and it decisions on Section 2(e)(5) functionality continue to trip up would-be registrants of product configurations. Speakers will address SCOTUS’ Lexmark decision on “standing,” and the TTAB’s consideration as to whether a plaintiff is “entitled to bring a cause of action.”

Turning to the contours of trademark enforceability, the speakers will discuss SCOTUS’ decision in the genericness case involving the mark BOOKING.COM and the Tiffany v. Costco lawsuit involving Costco’s use of the term “Tiffany Setting,” and will consider how functionality limits the protection of product configuration, including protection of Gorilla Glue blister packs, the POCKY-brand chocolate cookie sticks, and a rainbow of adhesives in a dental adhesive gun.

The speakers will review appellate cases targeting the RedBubble online marketplace and the issue of intermediate liability, parody and free speech, as it relates to the BAD SPANIELS dog toy case, and the recent Nike “Satan Shoes” dispute.

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

"INVENTORY IS EVIL" Fails to Funtion as a Trademark for Business Consulting Services, Says TTAB

Another proposed mark ran into the TTABrick wall known as the failure-to-function refusal. The Board affirmed a refusal to register the phrase INVENTORY IS EVIL as a service mark for "business consulting; business consulting, management, and planning services in the field of product distribution, operations management services, logistics, reverse logistics, supply chain and production systems, and distribution solutions." The evidence provided by Examining Attorney Robert N. Guliano "overwhelmingly establishes that the term INVENTORY IS EVIL is a common phrase that is widely used in business management and consulting throughout a variety of industries." In re Arthur Koch Management Consulting, LLC, Serial No. 88325642 (May 10, 2021) [not precedential] (Opinion by Judge Mark Lebow).

Matter that is widely used to convey ordinary or familiar concepts or sentiments, or similar informational messages that are in common use, would not be perceived as indicating source and is not registrable as a mark. See In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *1 (TTAB 2020) (PAST PRESENT FUTURE); Team Jesus, 2020 USPQ2d 11489 at, *7 (TEAM JESUS); Texas With Love, 2020 USPQ2d 11290, at *2 (TEXAS LOVE); see also D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (I ♥ DC). “The more commonly a phrased is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” In re Eagle Crest, Inc., 96 USPQ2d at 1229.

The Examining Attorney provided dictionary definitions of “inventory” and "evil" and printouts from numerous third-party websites, to support his argument that “[t]he expression INVENTORY IS EVIL is commonly used in the business supply chain and logistics industry as an adage or mantra and, in the context of business consulting, management, and planning services, informs consumers that the principle guiding those services is that having goods on hand causes harm.” 

The Board agreed with the Examining Attorney, finding that the evidence "overwhelmingly establishes that the term INVENTORY IS EVIL is a common phrase that is widely used in business management and consulting throughout a variety of industries, in news articles, and in academia, as an adage or mantra expressing the concept or sentiment that large inventories of goods can be extremely damaging to the economic well-being of companies in any industry for a variety of reasons, and that reducing inventory can save businesses and even a global crisis brought on by a recession or a pandemic."

Applicant argued that the cited articles that use the phrase "Inventory is evil" do not refer to the sale or promotion of business consulting services, but rather to a broad concept that is not intended to be a source indicator. The Board was unimpressed: "The fact that the plethora of evidence in this case shows widespread use and common use of the term INVENTORY IS EVIL as a well-known concept within the industry of business management and consulting, and not as a mark promoting goods or services, does not detract from its probative value; it enhances it."

While not used as a mark in the evidence, the term INVENTORY IS EVIL is routinely used by providers of business management and consulting services, or other services, in the course of explaining this well-known business management concept, either to agree or disagree with it, as shown by the evidence.

Applicant conceded that “[t]he concept behind Applicant’s INVENTORY IS EVIL mark stems from a quote by Tim Cook, the current CEO of Apple,” who was quoted widely in the Internet articles of record. The Board again agreed with the Examining Attorney: "the evidence of a prominent business leader’s adoption of a closely similar phrase as a business principle enhances the mark’s significance as a business mantra and reinforces the commonality of the phrase in the minds of business consulting, management, and planning consumers."

Applicant provided several examples of its use of the term INVENTORY IS EVIL on its website but none demonstrated that the phrase INVENTORY IS EVIL would be perceived as a source-indicator for business consultation services.

Consequently, the Board concluded that the term INVENTORY IS EVIL fails to function as a mark under Sections 1, 2, 3 and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2021.

TTABlog Test: Must "DANK" be Disclaimed in DANK TANK for Ale and Beer?

The USPTO refused to register the proposed mark DANK TANK for "Ale; Beer," without a disclaimer of the word "DANK." The Examining Attorney maintained that the term DANK "means or refers to ‘…sticky, juicy, very pungent and of a high level’ and ‘[v]ery hoppy, cloudy IPAs with high alcohol content and flavors with a very funky taste.’" Applicant Sweetwater Brewing argued that DANK TANKS is a unitary mark and a double entendre, and so disclaimer of DANK should not be required. How do you think this came out? In re Sweetwater Brewing Company, LLC., Serial No. 87772674 (May 3, 2020) [not precedential] (Opinion by Judge Linda A. Kuczma)

Examining Attorney Richard J. Struck relied on a Detroit Free Press article and on an Urban Dictionary entry for the definitions of "dank." Third-party websites showed use by multiple third parties of "dank" to describe beer and ale. For example, ". . . you see, cannabis and hops are relatives, and both get their flavors and aromas from compounds called terpenes. That’s why brewers like to describe super-hoppy IPAs the way that they might talk about marijuana: 'dank,' 'resinous,' 'sticky.'" (washingtonpost.com). 

Sweetwater feebly argued that but DANK TANK "requires imagination to determine what the goods actually will be, namely – such wording cannot be deemed merely descriptive and is, at most, suggestive of a beer or ale product that does not include cannabis." The Board pointed out, however, that descriptiveness is considered in the context of the goods, not in the abstract, and other meanings of the term "dank" in other contexts are irrelevant.

As to Sweetwater's argument that DARK TANK is a unitary mark, the Board observed that "[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, "the whole [must be] something more than the sum of its parts."

However, in the absence of legal argument or evidence showing that its mark is unitary, we find that prospective purchasers seeing Applicant’s mark DANK TANK knowing that “dank” is descriptive of ale and beer, and “TANK” is defined as “1: a usually large receptacle for holding, transporting, or storing liquids (such as water or fuel)” would readily understand it to be comprised of the two separate terms “dank” and “tank.” While the two terms in Applicant’s proposed mark rhyme, the rhyming quality imparts no new or different meaning to “DANK TANK.”

As to the double entendre issue, again Sweetwater provided no legal argument or evidence, DANK, "retains its descriptive significance in relation to Applicant’s ale and beer. Therefore, “DANK” would be perceived by purchasers of Applicant’s ale and beer as signifying a quality, feature or characteristic of those goods resulting in no unitary meaning or double entendre imparted by DANK TANK."

And so the Board affirmed the disclaimer requirement.

Read comments and post your comment here.

TTABlogger comment: It seems that breweries are getting more and more desperate to find brand names. DANK TANK is not one that would attract me to purchase the product. 

Text Copyright John L. Welch 2021.

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

The TTAB recently decided the appeals from the three Section 2(d) likelihood of confusion refusals summarized below. At least one of the three refusals was reversed. How do you think they came out? [Answer will be found in the first comment.]


In re Mas Clarella SL, Application Serial No. 88079246 (May 6, 2021) [not precedential] (Opinion by Judge George C. Pologeorgis). [Section 2(d) refusal of NYMPHS OF CLARELLA in view of the registered mark THE NYMPH, both for wines. Applicant maintained that “nymph” is somewhat suggestive or even descriptive of wine because the term  has a strong association with Dionysus, the Greek god of wine, and therefore the term "OF CLARELLA" distinguishes the marks.]

In re ProBleu, Inc., Serial No. 88310811 (May 4, 2021) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) Refusal of PROBLEU for computer information security and computer network support services, in view of the registered mark BLUEPRO & Design for overlapping computer security services. Applicant argued that the transposition of the wording is significant because neither mark gives "any indication as to the goods and/or services they are selling or providing, and the ordering and appearance of the terms thus makes all the difference."]

In re Royal Realty Corp., Serial No. 88380382 (April 22, 2021) [not precedential] (Opinion by Judge Karen Kuhlke). [Section 2(d) refusal of LIVE ON POINT for "Real estate services, namely, leasing and management of buildings," in view of the registered mark ON POINT CAROLINAS REALTY for identical or related real estate services [CAROLINAS REALTY disclaimed]. Applicant argued that the real estate market is replete with uses of "on point," and further that its mark exhorts consumers to LIVE ON POINT, whereas the cited mark informs customers that registrant's services are directed to a specific geographic location.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2021.

TTABlog Test: Are These Two "Bull" Designs Confusingly Similar For Auto Parts?

Here's another Section 2(d) opposition involving dueling design marks, this time for overlapping and related auto parts and services. Applicant K2 refers to its mark (on the left) as "an abstract partial body view of a cattle like creature." Opposer Streetcar refers to its mark (on the right) as a "fanciful design of a bison." Confusable? You be the judge. StreetCar ORV, LLC d/b/a American Expedition Vehicles v. K2 Motor Corp., Opposition No. 91248742 (May 3, 2021) [not precedential] (Opinion by Judge David K. Heasley). 

Since the parties goods are in part identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board observed that side-by-side comparison is not the proper approach for comparing the marks. Nonetheless, "the relevant consumers—motorists seeking customized structural modifications for their vehicles—are likely to perceive the parties’ marks as more similar than dissimilar."

The bovine subfamily includes cattle and bison. Both designs depict bulls. Both bulls appear in a three-quarter perspective, their feet planted, their heads lowered beneath prominent humps, as if threatening to charge. Although one faces left and one faces right, that distinction would be little noted nor long remembered—as demonstrated by analogous cases[.]

The Board found that consumers "could easily perceive Applicant's design mark as a stylistically modified version of Opposer’s design mark."

The Board also found that Opposer Streetcar's marks are "somewhat commercially strong." Applicant K2 submitted dozens of third-party registrations for marks that included a bull or a bison figure, but withouy evidence regarding the extent of use of the marks they were entitled to little evidentiary weight. Furthermore, many of the marks were not that similar to Streetcars mark, and the identified goods were as close to Streetcar's goods as are Applicant K2's.

The Board noted that "the frequent, common adoption of bull or bison designs by third parties, as evinced by their registrations, serves to show that the designs are suggestive of the rugged, strong, characteristics or qualities of auto parts." However, "suggestive registered marks are entitled to protection against registration of confusingly similar marks—especially marks used on identical or legally identical goods."

Considering all the relevant DuPont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: A well-written ramble through the DuPont factors.

Text Copyright John L. Welch 2021.

In a Six-Year TTAB Tussle, Monster Energy and Toronto Raptors Claw Their Way to a Dismissal of All Section 2(d) Claims and Counterclaims.

In a 71-page decision, including a 15-page appendix listing the involved registrations and applications, the Board dismissed Monster Energy's oppositions and the applicants' counterclaim alleging likelihood of confusion between various claw-containing design and logo marks for a variety of goods and services. Opposer Monster Energy alleged a likelihood of confusion between the applicants' four "claw" marks shown first below in view of its "M-Claw" mark shown second below. Applicants counter-claimed on the ground of likelihood of confusion between the M-Claw mark and a fifth claw mark (the "Prior Claw Mark") shown third below. Monster Energy Company v. Maple Leaf Sports & Entertainment Ltd. and NBA Properties, Inc., Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458 (May 3, 2021) [not precedential] (Opinion by Judge Jonathan Hudis).

Monster Energy's Section 2(d) Claims: The Board found Monster's M-Claw mark to be inherently strong. Applicants' third-party registration evidence, without any showing of the manner or extent of use, was insufficient to weaken that inherent strength. As to commercial strength, the applicants conceded that the M-Claw mark is famous, in the likelihood of confusion context, for energy drinks, but the Board agreed with the applicants that this fame did not extend to other markets. 

Comparing the M-Claw mark with the first four of applicants'marks, the Board found them to be distinguishable:

While we find Monster’s M-Claw Mark distinctive and famous for likelihood of confusion purposes, the significant differences in appearance, sound (if any), meaning and commercial impression between Monster’s mark and Maple Leaf’s and NBA’s involved marks precludes a finding of likelihood of confusion. Kellogg v. Pack’em, 21 USPQ2d at 1145. We therefore dismiss Monster’s likelihood of confusion claims. 

Dilution:  Monster Energy also claimed dilution by blurring, but its proofs fell short of meeting the high standard for dilution fame. The Board noted that "the extent of actual recognition of Monster’s M-Claw Mark appears limited to sports drinks." Moreover, because applicants' marks are distinguishable from the M-Claw mark, "none of the former conjure up the latter."

Applicant's Counterclaim: Applicants' counterclaim "appears not as a direct assertion that confusion between its Prior Claw Mark and Monster’s M-Claw Mark is likely, but rather as an odd contingent claim." They asserted that, if the other marks are confusable, they should win on the basis of their prior use. 

The Board noted that applicants had already won, but it considered the counterclaim anyway. It found the Prior Claw mark to be inherently distinctive, but there was no proof regarding commercial success.

As to the marks, the Board found that the applicants' "Prior Claw Mark is so different from Monster’s M-Claw Mark in appearance, sound (if any), meaning and overall commercial impression so as to preclude a finding of likelihood of confusion."

And so the Board dismissed the counterclaim.

Read comments and post your comment here.

TTABlogger comment: This proceeding began in June 2015.  I took nearly six years to reach the conclusions that were quite apparent at the outset: the marks are not confusingly similar!

Text Copyright John L. Welch 2021.

TTAB Finds DENVER MIX Generic for ..... Guess What?

Concluding that DENVER MIX "is the name of a key aspect of popcorn, specifically, the flavor of the popcorn," the Board affirmed a refusal to register the proposed mark on the ground of genericness. In the alternative, the Board found the term to be merely descriptive and lacking in acquired distinctiveness. In re Doc Popcorn, LLC, Serial No. 88151165 (April 29, 2021) [not precedential] (Opinion by Judge Kuhlke)

Genericness: The Board found the genus of the goods to be "popcorn" and the relevant consumers to be the general public. 

Examining Attorney Mark Shiner maintained that "[i]n relation to popcorn, the evidence shows that the wording 'Denver' when used alone or together with 'mix' means the combination of white cheddar cheese popcorn and caramel popcorn." He submitted 25 examples of third-parties using the term DENVER MIX and 13 using the term DENVER alone "to refer to a key aspect of the popcorn, specifically the flavor mixture of caramel and white cheddar."

Applicant Doc Popcorn's specimen of use described DENVER MIX as a cheddar/caramel flavor: “Snowy white kernels of Triple White Cheddar slaloming down Rocky Mountains of Caramel Bliss, creating an incredible flavor sensation.”

The Board concluded that DENVER MIX is generic for popcorn.

Acquired Distinctiveness: Doc Popcorn claimed distinctiveness under Section 2(f), thereby conceding that DENVER MIX is merely descriptive of popcorn. Moreover, in light of the record evidence, the Board concluded that the proposed mark is highly descriptive. Therefore, applicant's burden of proof was "commensurately high." 

 

The Board applied the SnoWizard/Converse factors in determining whether DENVER MIX has acquired distinctiveness. Applicant has used the mark for more than six years and spent some $6500 in advertising per year. From 2014 to 2019 its annual sales have increased from $110,000 to $220,000. Doc Popcorn did not provide any market context for those numbers. 

 

The Doc submitted declarations from seven customers and one franchisee asserted that Applicant "is the owner of the mark sought to be registered," that no others have "the right to use said mark in commerce," and that they recognize DENVER MIX "is owned by the Applicant." 

 

The Board observed that six years of use of a highly descriptive mark "is not particularly long." Moreover, the third party uses of the term were more than "inconsequential" or "infringing." In fact they were substantial enough to support a finding of genericness. The form declarations from six customers and one franchisee constitute "an infinitesimally small portion of potential consumers of popcorn."

All seven are identical in substance, having been written on preprinted forms with space saved for the declarant to add his or her location of residence, signature, printed name and date. Form declarations such as these may not "actually reflect the views of the declarants" and are entitled to "little weight."

In sum, the Board found the probative value of these declarations to be extremely limited. 

 

The Board concluded that, "[g]iven the highly descriptive nature of Applicant’s proposed mark, this record does not support a finding of acquired distinctiveness." And so, the Board affirmed both the genericness refusal and the alternative mere descriptiveness refusal.  

 

Read comments and post your comment here.

TTABlogger comment: What is Boston Mix? Cheese popcorn, popcorn shrimp, and baked beans.

Text Copyright John L. Welch 2021.

Schwimmer and Welch: "Where to appeal a TTAB decision? The choice is complicated"

Martin B. "Marty" Schwimmer and Yours Truly co-authored an article recently published by the World Trademark Review, entitled "Where to appeal a TTAB decision? The choice is complicated." [pdf here]. The springboard for the article was the Fourth Circuit's ruling in the long-running PRETZEL CRISPS case in which the court ruled that Snyder's/Princeton Vanguard, by appealing a TTAB decision to the CAFC under Section 1071(a) of the Trademark Act, did not waive its right to appeal to the district court, under Section 1071(b), from a subsequent TTAB decision in the same case.

A party appealing an adverse TTAB decision has two options: appeal to the US Court of Appeals for the Federal Circuit (CAFC) or commence a civil action in US district court. In this guest piece, Leason Ellis LLP’s Martin Schwimmer and Wolf, Greenfield & Sacks, PC’s John L Welch unpick the recent Fourth Circuit decision in the PRETZEL CRISPS genericness case to examine the practical factors at play when making that decision.

Author Schwimmer provided this flowchart to illustrate how Section 1071 of the Trademark Act works (click on the picture for a larger image): 

 

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TTABlogger comment: We thank the World Trademark Review for granting us permission to distribute copies of this article.  

Text Copyright John L. Welch 2021.

Precedential Nos. 9 and 10: TTAB finds "CLEAR" Deceptively Misdescriptive of Non-Transparent Clothing and Handbags

The Board affirmed two Section 2(e)(1) refusals of the proposed mark CLEAR for footwear, lingerie, and other clothing items, and for handbags, purses, wallets and related items, all "excluding transparent goods," finding the term to be deceptively misdescriptive of the goods. The Board observed that consumers are not aware of the "nontransparent" limitation in the application, and not all purchases of Applicant Dolce Vita's goods are made after direct inspection of the goods. In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478 and 479 (TTAB 2021) [precedential] (Opinions by Judge Jyll Taylor).

A mark is considered deceptively misdescriptive under Section 2(e)(1) if: (1) the mark misdescribes a quality, feature, function, or characteristic of the goods or services with which it is used; and (2) consumers would be likely to believe the misrepresentation. See In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988); In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Quady Winery, Inc., 221 USPQ 1213, 1214 (TTAB 1984)). [T]he reasonably prudent consumer test is applied in assessing whether consumers are likely to believe the misrepresentation. In re Hinton, 116 USPQ2d at 1052 (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)).

Dictionary definitions and third-party website evidence convinced the Board that consumers "will perceive CLEAR as describing a feature" of Dolce Vita's clothing and clothing items, handbags, wallets, etc. 

As to Dolce Vita's exclusion of "non-transparent goods," the Board found that this exclusion "conclusively establishes" the CLEAR misdescribes a feature of the goods, satisfying the first element of the Section 2(e)(1) test.

Applicant’s contention that its proposed mark CLEAR does not describe a plausible feature of its goods because it has restricted its identification so that the recited goods do not include transparent footwear and clothing is unavailing. We cannot assume that consumers of Applicant’s goods will be aware that its identification is so restricted, and the restriction is not controlling of public perception. See In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187-88 (TTAB 2018). Cf., e.g., In re Clorox Co., 578 F.2d 305, 198 USPQ 337, 340 (CCPA 1978) (“[T]he locus of potential confusion is [not] in the files of the PTO.”); In re Wada, 48 USPQ2d 1689, 1692 (TTAB 1998) (public is unaware of disclaimers that “quietly reside” in the records of the Office).

The Board observed that Dolce Vita "cannot avoid a finding of deceptive misdescriptiveness by excluding from its identification the very characteristic that its mark is misdescribing. Cf. In re ALP of South Beach, Inc., 79 USPQ2d 1009, 1010 (TTAB 2006) (“We find that the word CAFETERIA used in connection with restaurant services that explicitly exclude cafeteria-style restaurants does misdescribe the services.”)."

Next, as to the second element of the test, because the evidence showed that various types of clothing, footwear, and handbags may be transparent in whole or in part, the Board found that relevant consumers are likely to believe the misrepresentation. 

The Board rejected Dolce Vita's argument that consumers are unlikely to believe the misrepresentation because they will visually inspect the goods before purchase. Dolce Vita relied on three TTAB decisions, but the Board distinguished them: In re Econoheat, Inc., 218 USPQ 381, 383 (TTAB 1983) (SOLAR QUARTZ for space heaters), Nw. Golf Co. v. Acushnet Co., 226 USPQ 240, 242-43 (TTAB 1985) (POWER-STEP for golf clubs), and In re Robert Simmons, Inc., 192 USPQ 331, 333 (TTAB 1976) (WHITE SABLE for paint brushes made from synthetic fibers). As to WHITE SABLE, consumers are not likely to believe that paint brushes would be made from the hair or fur of a sable. As to POWER-STEP, the word STEP did not necessarily signify that the golf club shafts had a single "step." And as to SOLAR QUARTZ, there we no evidence that there was such a thing as a solar quartz heater.

Moreover, not all consumers will have the opportunity to visually inspect the goods:

If Applicant’s goods were to be promoted by word-of-mouth or on social media or in print (e.g., in fashion blogs, magazine articles, or even Applicant’s future advertising) without an image of the goods, a reasonable consumer seeking what the record shows to be a fashion trend would believe that Applicant’s goods, promoted under the proposed CLEAR mark, would feature transparent or clear attributes.

The second element of the test having been met, the Board concluded that proposed mark is deceptively misdescriptive of the goods, and so it affirmed the refusals to register.

Read comments and post your comment here.

TTABlogger comment: Not clear why these appeals weren't consolidated.

Text Copyright John L. Welch 2021.