TTAB Sustains Opposition to Apple's "LIVE PHOTOS," Finding it Generic or Merely Descriptive

In an 87-page opinion issued nine days after oral argument, the Board sustained an opposition to registration of the proposed mark LIVE PHOTOS for "Computer software for recording and displaying images, video and sound" on the grounds of genericness and, alternatively, mere descriptiveness. As to the latter issue, the Board shot down Apple's claim of acquired distinctiveness under Section 2(f). Gang Cao v. Apple Inc., Opposition No. 91239006 (June 26, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

Standing: Apple argued that Opposer Cao lacked "standing" to bring the opposition because Cao does not use the term "Live Photos." The Board pointed out, however, that a party need not use the term at issue to establish its entitlement to a statutory cause of action. "Opposer has a real interest in the proceeding because [he] has a present or prospective right to use 'Live Photos' as a generic or descriptive term to describe [his] software." Cao "has a legitimate interest in preventing Applicant from gaining an alleged unfair competitive advantage by maintaining a registration for a purportedly generic or descriptive term for such software."

Genericness: The Board found the genus of services to be not just the identified computer software, but also the resulting images, video, and sound produced by the software, because "the resulting images, video, and sound produced by the software are the purpose or key aspect of the software."

Opposer Cao relied on dictionary definitions, Apple's own use of the term, use by authors and reviewers, and significant third-party usage of "Live Photos" and "Living Photos." Apple argued that the Internet documents constituted hearsay, but that Board pointed out that it did not rely on the documents for the truth of the matter asserted therein. "The probative value of these documents lay in the fact that we may infer consumer perception through what the author wrote and, presumably, what the readers read."

Apple further argued that these documents were of little probative value without proof of the amount of viewership or circulation. The Board, however, found that even if some of the sources of the documents were small enterprises, "there is still a significant body of evidence of third-party use."

Although there is no dictionary definition for “Live Photo(s)”, that fact was not dispositive. See, for example, In re Gould Paper Corp., 834 F.2d 1017, 1 USPQ2d 1110, 1111 (SCREENWIPE held generic even though there was no dictionary definition of the compound term).

We find that the evidence of record in its entirety proves that consumers perceive the term “Live Photo(s)” as a generic term for “computer software for recording and displaying images, video and sound,” including the resulting images, video and sound produced by the software. As Judge Rich explained in In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219, 219 (CCPA 1978) (Rich, J., concurring), a term that immediately and unequivocally describes the purpose and function of appellant’s goods is a name for those goods, for “[t]hat is what names do. They tell you what the thing is.” The evidentiary record as a whole proves that consumers perceive the term “Live Photo(s)” as a thing, not a source.

Mere Descriptiveness: The Board then considered the alternative ground of refusal, assuming arguendo that LIVE PHOTOS is not generic. Implicit in the Board's genericness holding is a finding that the term is not only merely descriptive, but highly descriptive. Apple claimed that term has acquired distinctiveness under Section 2(f) and therefore is not merely descriptive under Section 2(e)(1).

Applying the CAFC's Converse factors, the Board noted that there was no survey evidence nor any direct testimony from actual purchasers. Apple's use of the term has not been substantially exclusive. Because the software is pre-installed, it was not clear "whether and the extent to which [consumers] are aware of the “Live Photos” software and whether it plays a role in their decision to purchase an iPhone." There was no evidence that Apple displays the term as a trademark or promotes “Live Photos” as a brand of software exclusively associated with Applicant.

Although Apple's iPhones have been incredibly popular, that fact does little to demonstrate how consumers perceive the term LIVE PHOTOS. Apple claimed extensive copying of the mark, but there was no evidence of any policing efforts on its part. Although media coverage referred to LIVE PHOTOS, it was in the context of a feature of the iPhone camera. "The media attention does not separate 'Live Photo' from Applicant or its iPhone trademark. 'Live Photos' does not stand apart from Applicant or the iPhone mark."

The Board therefore concluded that Apple had failed to prove acquired distinctiveness.

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TTABlogger comment: Hat tip to FOB Marc Levy.

BTW: The Board stated that, in addition to genericness and mere descriptiveness, it sustained the opposition "on the ground that [LIVE PHOTOS] has not acquired distinctiveness." (p. 87). My understanding, however, is that Section 2(f) is not a ground for refusal, but merely an escape hatch to avoid a mere descriptiveness refusal (or various other refusals, such as a surname refusal). In other words, there were two grounds for sustaining the opposition, not three

Text Copyright John L. Welch 2021.

TTABlog Test: Is QUARRY VINEYARD Confusable with PEDRERA for Wine?

The USPTO refused to register the proposed mark QUARRY VINEYARD for "wine" [VINEYARD disclaimed], finding confusion likely with the registered mark PEDRERA, also for wine. The cited registration states that the English translation of the Spanish word "pedrera" is "quarry." Applicant FN Cellars argued that the wine industry often uses foreign words as marks for wine, and so an ordinary American consumers would not "stop and translate" the Spanish word. How do you think this came out? In re FN Cellars, LLC, Serial No. 88902267 (June 25, 2021) [not precedential] (Opinion by Judge David K. Heasley).

The Board observed that, because the involved goods are identical, it must presume that the goods travel in the same trade channels to the same classes of consumers. These factors weighed heavily in favor of affirmance of the refusal. Moreover, because the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. [Does that make sense? - ed.]. 

Examining Attorney Cierra McGill applied the doctrine of foreign equivalents in support of the refusal. That doctrine is applied when "it is likely that the ordinary American purchaser would "stop and translate" the word into its English equivalent. The "ordinary American purchaser" includes "those proficient in a non-English language who would ordinarily be expected to translate the words into English." The purpose of the doctrine is to "protect the perceptions of ordinary American consumers who are multilingual."

The Board has repeatedly and unsurprisingly found that Spanish is a common, modern language in this country, and the Board has "routinely" applied the doctrine of foreign equivalents to Spanish words. The examining attorney submitted dictionary evidence establishing that the Spanish "pedrera" and the English "quarry" are literal and direct equivalents. 

FN Cellars maintained that, because American purchasers are accustomed to purchasing wine under foreign brand names, it is improbable that they would stop and translate a rare foreign word like "pedrera" into "quarry." 

The Board disagreed. It recognized that in some cases relevant consumers would not stop and translate words from common, modern languages (e.g., TIA MARIA for canned fruits and vegetables; the well-established French term CORDON BLEU). 

There is no evidence that PEDRERA is so commonly used among English speakers, like CORDON BLEU, that translation becomes unnecessary. *** There are no personal names, like TIA MARIA and AUNT MARY, to differentiate the marks. *** And there is no exception for alcoholic beverages.

The translation is literal and direct, and there was no evidence that "pedrera" is rare or uncommon. 

FN Cellars pointed to the differences in appearance and sound, but the Board ruled that "the equivalency in meaning outweighs the differences in how the marks look and sound." Both marks suggest wines from grapes grown in a rocky terroir.

The Board therefore found confusion likely and it affirmed the refusal to register.

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TTABlogger comment: How did you do? Looking at the bottles of wine, do you think there would be confusion in the real world?

BTW: If the purchaser is proficient in Spanish, why would that purchaser have to stop and translate the word into English in order to understand its meaning?

Text Copyright John L. Welch 2021.

TTAB Affirms Failure-to-Function Refusal of NIGGA for Clothing

In a sixty-page opinion, the Board upheld a refusal to register the proposed mark NIGGA (in standard character form) for various clothing items, finding that the term fails to function as a trademark in view of its widespread use on clothing offered by multiple third parties. The Board rejected Applicant Snowflake's argument that the Supreme Court decision in Tam requires registration of racial epithets because of their expressive nature. "Applicant has no constitutional right to register NIGGA if it is otherwise ineligible for registration under the Trademark Act." In re Snowflake Enterprises, LLC, Serial No. 87496454 (June 24, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

The Board unsurprisingly agreed with Examining Attorney Kevin G. Crennan that Tam "does not dictate the result here."

To be very clear on this issue, the Supreme Court has ruled that the USPTO may not refuse registration of a proposed mark under the invalidated viewpoint-discriminatory provisions of Section 2(a) of the Trademark Act, which were held to violate the First Amendment, but neither Tam nor Brunetti requires the USPTO to register a term simply because it is a racial epithet if it is otherwise unregistrable under any other provisions of the statute.

The fact that a racial epithet has an expressive component does not make it automatically registrable. Expressive messages may still be refused registration "as a commonplace term, message, or expression pursuant to Sections 1, 2, and 45 of the Trademark Act. In short, Snowflake does not have a constitutional right to register the term NIGGA if it is otherwise ineligible for registration."

The Board then reviewed its precedents on failure-to-function refusals, observing once again that "[t]he critical inquiry in determining whether a proposed mark functions as a trademark is how the relevant public perceives it." "Matter that is widely used to convey ordinary or familiar concepts or sentiments, or social, political, religious, or similar informational messages that are in common use, would not be perceived as indicating source and is not registrable as a mark.”

The Examining Attorney submitted webpages depicting clothing and other items displaying the word "nigga" or "niggas," as well as social media pages displaying "#nigga." 

Snowflake argued that the USPTO provided no "actual evidence" that NIGGA does not function as a trademark, but only speculation and conjecture. It further maintained that the evidence was not authenticated as bearing a date prior to the application filing date. And it asserted that the USPTO had failed to show that the term lacks expressive content. The Board was not impressed.

The record shows that NIGGA is a “commonplace term” with widely understood meanings, “both in general parlance and on the goods at issue,” 40-0, 2021 USPQ2d 253, at *25, “that merely conveys . . . familiar, well-recognized concept[s] or sentiment[s].” “As a result, consumers will not perceive [NIGGA] appearing on [clothing] as pointing uniquely to Applicant as a single source,” Peace Love World Live, 127 USPQ2d at 1403-04, and it thus fails to function as a mark for those goods for this reason alone.

The USPTO is not required to prove "to a moral certainty that consumers will not perceive NIGGA to function as Applicant's mark" It is sufficient that the evidence "is competent to suggest that upon encountering Applicant’s ‘mark’, prospective purchasers familiar with such widespread non-trademark use are unlikely to consider it to indicate the source of Applicant’s goods.’” Team Jesus, 2020 USPQ2d 11489, at *6 (emphasis added) (quoting DePorter, 129 USPQ2d at 1302).

As to authentication of the third-party evidence, Snowflake did not cite any authority for the proposition that the USPTO's evidence must be ignored because it was not authenticated as being dated prior to the filing date.

The Board’s failure-to-function cases do not impose such a requirement, and they have invariably considered evidence of third-party use that post-dated the filing dates of the subject applications. As discussed above, the “critical inquiry in determining whether a proposed mark functions as a trademark is how the relevant public perceives it,” 40-0, 2021 USPQ2d 253, at *24, and the public’s perception is not “frozen” as of the arbitrary filing date of an application.

Snowflake's third argument was likewise unavailing in light of the evidence of third-party use.

Finally, Snowflake threw in a few more constitutional claims: that the USPTO violated the First Amendment by refusing registration "based on the alleged viewpoint of the speech," and that "[s]imilar marks must be treated similarly under Matal v. Tam." The Board pointed out that Snowflake misunderstands the nature of a failure-to-function refusal; the proposed mark was not refused registration because it is a racial epithet or because of any viewpoint it expresses. Registration was refused because NIGGA is a commonplace and commonly understood term that will not be perceived as a source indicator.

The Board similarly rejected Snowflake's disparate treatment argument. As previously observed, Tam does not require that the USPTO register every racial slur. It must assess each application to register on its own record. While consistency in examination is "highly desirable," that desire must yield to the proper determination of registrability under the Trademark Act and Rules.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: This opinion should be precedential. I hope this case is appealed so that we will have the definitive word from the CAFC and the Supreme Court.

Text Copyright John L. Welch 2021.

Wolf Greenfield Seeks Trademark Associate for Boston or New York Office

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

 

 

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

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Recommended Reading: Zerounian and Thiele, "An Introduction to the Trademark Moderization Act"

I recommend this article by Raffi Zerounian and Justin Thiele of Hanson Bridgett, LLP, from The Trademark Laywer magazine (Issue 2 2021). It provides a very good summary of the provisions of the Trademark Modernization Act of 2020.

Conclusion

The TMA provides a number of new tools in the trademark practitioner's toolbox, especially when faced with the task of clearing the federal register of blocking (or potentially blocking) but unused marks. Although the TMA's reforms are largely limited to these areas, it is a promising step in creating a more efficient register. The long lead time before formal implementaion in 2021, gives ample time for the USPTO to promulgate rules under the TMA. Accordingly, much remains to be seen at the practical level of the effects of the TMA.

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TTABlogger comment: Note that on June 21st, the Supreme Court ruled in United States v. Arthrex, Inc. that because Administrative Patent Judges are inferior officers appointed by the Secretary of Commerce, their exercise of "unreviewable authority" to decide inter partes review cases is in violation of the Appointments Clause of the Constitution. The Court further ruled that, in order to remedy the situation, the Director of the U.S. Patent and Trademark Office now has the discretion to review those decisions. 

As to TTAB judges, the authors opine that "Congress' efforts [in the TMA] help to close any controversy and likely will head off any challenges to the TTAB structure."

Text Copyright John L. Welch 2021.

TTAB Affirms Refusal to Register Canned Fish Packaging on the Supplemental Register: Functional and Generic

Applicant Interpage's quixotic attempt to register, on the Supplemental Register, the packaging design shown below for canned fish, ran into a TTABrick wall. The Board agreed with Examining Attorney Christopher M. Nunley that the design is de jure functional and generic. "Granting Applicant exclusive rights to the proposed packaging configuration design would prevent its competitors from continuing to offer their canned or tinned fish with the see-through top feature." In re Interpage International, Inc., Serial No. 88586036 (June 21, 2021) [not precedential] (Opinion by Thomas W. Wellington).

Preclusion against the USPTO?: Interpage had previously applied to register, on the Principal Register, nearly the identical design for some of the same goods, but was refused registration on the ground of functionality and, alternatively lack of distinctiveness. The Board then reversed the functionality refusal but upheld the non-distinctiveness refusal, finding Interpage's Section 2(f) evidence inadequate. [TTABlogged here]. Interpage now argued that, in light of the Board's prior decision on functionality, the USPTO should be precluded from raising that issue again. Nothing doing, said the TTAB. The Board pointed out that the USPTO is not a party in an ex parte appeal, but rather is merely fulfilling its role regarding the examination of applications. Moreover, there is a strong public interest in preventing registration of functional "marks." In short, "the Office should not be precluded from raising a functionality ground for refusal, even if the Office failed to meet its burden in proving the ground in a prior appeal proceeding involving the same applicant, same mark, and same goods or services."

Furthermore, although the Board should strive for consistency in our holdings, we are not compelled to reach the same determination as to functionality of Applicant’s package configuration mark, particularly given a different record has been adduced by the Examining Attorney and Applicant in this appeal.

Functionality: The Examining Attorney contended that the easy-opening, transparent lid and the common round shape have "multiple utilitarian advantages" that make the configuration "one of the superior designs available." The design "offers transparency to inspect the goods and is easier to open than a metal lid." The Board, without much discussion, agreed.  

Genericness: The Board observed that "[T]rade dress that cannot serve as an indicator of source is generic and unprotectable." Product packaging that is common in an industry will not be perceived as indicating source and is not registrable on either Register. The evidence showed that the subject cylindrical can design with a transparent top has been adopted by numerous competitors.

In sum, the evidence establishes that consumers of canned or tinned fish will primarily regard the applied-for product package design as a common type of container for tinned or canned fish, rather than as a source indicator for Applicant’s goods in particular. In view of the above, we find Applicant’s product packaging design to be generic and thus unable to function as a trademark.

 

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2021.

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

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


In re Mad Brewing Company, Application Serial No. 88757335 (June 16, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Section 2(d) refusal of QUIRK for "beer, ale and lagers" in view of the identical mark for "hotel, restaurant and bar services." Applicant argued that the USPTO failed to prove the "something more" required to establish relatedness than the mere fact that bars and restaurants serve beer.

Quirk Hotel, Richmond, VA.

In re Emma Sievers, Serial No. 88559109 (June 16, 2021) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) Refusal of B.A. WOMEN for "Clothing, namely, t-shirts, long sleeved shirts, hoodies, short sets, sport tops, leggings, tank tops, athletic tops and bottoms for women" [WOMEN disclaimed] in view of the registered mark B.A. MAN for "Hats; Jogging suits; Pants; Shorts; Yoga pants" [MAN disclaimed]. Applicant contended that, based on the suspension of the limited liability company that owns the cited mark and her online search of Registrant’s use, the cited mark appeared to be abandoned.]

In re Salt Works Brewing Company, LLC, Serial No. 86970058 (June 11, 2021) [not precedential] (Opinion by Judge George C. Pologeorgis). [Section 2(d) refusal of SALT WORKS BREWING COMPANY for beer, ale, porter, and the like [BREWING COMPANY disclaimed], in view of the registered mark SALTWORKS PROPERTY for "distilled spirits." Applicant maintained that because the USPTO has permitted numerous pairs of similar marks to register for different alcoholic beverages, there can be no likelihood of confusion between its mark and the cited mark. In support, it relied on copies of nineteen pairs of registered marks obtained from the USPTO database.]

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

Text Copyright John L. Welch 2021.

TTABlog Test: Is BREAUXS for Barbecue Grills Primarily Merely a Surname?

The USPTO refused to register the proposed mark BREAUXS for barbecue grills, electric fryers, and the like, finding it to be primarily merely a surname under Section 2(e)(4). Applicant Plummer appealed, arguing that "breaux" is commonly understood as a slang term for "bro," particularly in connection with the "quintessentially masculine American pastime" of barbecue grilling. How do you think this came out? In re MacDonald Plummer, Serial No. 88155158 (June 18, 2021) [not precedential] (Opinion by Judge Peter W. Cataldo).

The evidence showed that "Breaux" is "an actual surname, and is not rare." The term "Breauxs" is likewise to be considered a surname, since "the surname significance of a term is not diminished by the fact that the term is presented in its plural or possessive form." 

Applicant Plummer contended that "Breaux" has a non-surname meaning: it would be understood "as a Cajun slang equivalent or play on the word BROS," and thus will be seen as a reference to the "bro" subculture. Plummer submitted evidence regarding the meaning of the term "bro," and an article discussing the grilling and the masculine culture traditionally surrounding grilling. An Urban Dictionary entry defined "breaux" as a synonym for “bro or brajh, but in this case it’s that guy in the bro crew that is fully cajun and all of this family members [sic] live in new orleans or anywhere in Louisiana for that matter.” Plummer raised this question: "how else does one imagine a Cajun 'breaux' other than standing at a grill with other guys and beers in hand?"

Examining Attorney Jacob W. Neu argued that the surname meaning of "breaux" is "far more familiar to consumers than the meaning of 'breaux' as a novel spelling of 'bro.'" He pointed out that the Urban Dictionary entries were dated 2007 and 2009, whereas the current entry for "breaux" refers to the designer Matteo Breaux.

The Board agreed with the Examining Attorney. The evidence showed that there is a non-surname meaning for "breaux," but "the mere existence of other non-surname meanings of a mark does not preclude a finding that it is primarily merely a surname. The question is "to what degree, if any, the public would associate the particular meaning with the goods or services in the application."

[O]n this record it is not clear to what extent, if any, the term “breaux” is understood to be synonymous with “bro” outside of fans of LSU athletics. Particularly given that a large percentage of individuals with the surname “Breaux” appear to live in Louisiana, it is more likely that consumers viewing BREAUXS will perceive the mark as a plural of the surname.

The Board concluded that, in light of the strong evidence of the surname significance of BREAUX(S), consumers would apply the surname meaning to the mark.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Compare this decision with In re Isabella Fiore [TTABlogged here], where the mark FIORE was found not to be primarily merely as surname because Italian speakers would translate the word as "flower."

Text Copyright John L. Welch 2021.

TTAB Dismisses MANDALAEVERYWEAR Opposition; Opposer Proved Prior Advertisement But Not Prior Rendering of Services

Opposer James Barnard claimed prior use of the mark MANDALA for business consulting and branding services, and alleged likelihood of confusion with the Applicant's proposed mark MANDALAEVERYWEAR for marketing consulting services. However, Barnard's proofs showed only that he advertised his services but not that he rendered the services. The was fatal to his priority claim and so the Board dismissed the opposition. James Barnard v. Mandala Wear, LLC, Opposition No. 91252489 (June 16, 2021) [not precedential] (Opinion by Judge Frances S. Wolfson).

In order to establish a claim under Section 2(d), an opposer must prove both priority of use and likelihood of confusion. Here Opposer Barnard relied on his alleged common law service mark rights, claiming that he had used the mark prior to applicant's filing date (its constructive first use date) of March 26, 2019.

Section 45 of the Trademark Act states, in pertinent part, that a service mark is in use in commerce when "it is used or displayed in the sale or advertising of services and the services are rendered in commerce ...."

Opposer Barnard claimed that he started using the MANDALA mark in 2019. He submitted webpages that he testified were "displayed in 2018," as well as a "proposal" presented to prospective customers in October 2018. The Board found that, although these documents "support Opposer's advertising his mark" for his services, they "do not prove that Opposer has rendered these services." 

To be considered use in commerce, not only must the mark be used or displayed in the sale or advertising of the services, the services must be actually rendered. Opposer never affirmatively asserted that he has rendered brand concept or brand development services to any customer under the MANDALA mark. Thus, Opposer has not submitted either a statement of facts set forth in detail in an affidavit by a knowledgeable affiant (see Octocom Sys., Inc. v. Houston Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990) (internal citation omitted)) or any additional evidence to demonstrate that Opposer ever rendered his identified services in commerce.

Due to Opposer's failure to prove priority of use, the Board dismissed the opposition.

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TTABlogger comment: Opposer did not argue priority based on use "analogous to trademark use." Would that have worked? Would he need to show significant exposure of the mark in terms of website visits and the like?

Text Copyright John L. Welch 2021.

Precedential No. 17: TTAB Dismisses ADVENTIST Cancellation Petition Due to Failure to Maintain "Standing"

Finding that Petitioner failed to demonstrate its entitlement to maintain its genericness claim (f/k/a standing), the Board tossed out this petition for cancellation of two registrations for the mark ADVENTIST for religious publications, film production and distribution, educational services, and religious and missionary services. The Board concluded that Petitioner did not to satisfy either prong of the Lexmark test at the time of trial: its interests did not fall with the protectable zone of interests of Section 14, and there was no reasonable basis in fact for a belief in damages proximately caused by the continued existence of the challenged registrations. Philanthropist.com, Inc. v. The General Conference Corporation of Seventh-day Adventists, 2021 USPQ2d 643 (TTAB 2021) [precedential] (Opinion by Judge Jonathan Hudis).

In every inter partes proceeding the plaintiff must establish its entitlement to a statutory cause of action, Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), and must maintain that entitlement throughout the proceeding, including at the time or trial. In its case-in-chief, a plaintiff must introduce evidence to support the allegations in its pleading that relate to its entitlement. See Lipton Indus., 213 USPQ at 189; TBMP 309.03(b).

For a cancellation proceeding under Section 14, a plaintiff must demonstrate “an interest falling within the zone of interests protected by the statute and … proximate causation.” Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4 (Fed. Cir.) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067-70 (2014)), cert. denied, ___ S. Ct. ___ (2020).

Another way of stating the requirement is that a plaintiff must prove a real interest in the proceeding and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020); see also Empresa Cubana, 111 USPQ2d at 1062. The CAFC has found “no meaningful, substantive difference between the analytical frameworks expressed in Lexmark and Empresa Cubana.” Corcamore, 2020 USPQ2d 11277 at *4.

Thus, “a party that demonstrates a real interest in cancelling a trademark under [Trademark Act Section 14, 15 U.S.C.] § 1064 has demonstrated an interest falling within the zone of interests protected by [the Trademark Act]. … Similarly, a party that demonstrates a reasonable belief of damage by the registration of a trademark demonstrates proximate causation within the context of § 1064.” Corcamore, 2020 USPQ2d 11277, at *7. 

Often a party that challenges a term as generic will base its entitlement on the fact that it is engaged in marketing goods or services that are the same or similar to those of the other party. That was not the case here. Petitioner's business is the acquisition and sale of domain names. 

Although Section 14 states that any person "who believes that he is or will be damaged" may petition for cancellation, "there are limits to this statutory right – that is, the cancellation plaintiff must meet the 'zone of interests' and 'proximate causation' tests set out in Lexmark, 109 USPQ2d at 2068-70."

“The purpose of the zone-of-interests test is to ‘foreclose[] suit … when a plaintiff’s interests are so marginally related to or inconsistent with the purposes implicit in the statute that it cannot reasonably be assumed that Congress authorized that plaintiff to sue.’” Corcamore, 2020 USPQ2d 11277, at *7 (quoting Lexmark, 109 USPQ2d at 2068 (citation and quotation marks omitted)).

In November 2016, Respondent sent a cease-and-desist letter to Petitioner, demanding transfer of the domain name <adventist.com> to Respondent. Petitioner refused, but offered to sell the domain name for $1.2 million. When that offer was declined, Petitioner filed the instant petition for cancellation in January 2017, a few days before the National Arbitration Forum ruled against Respondent in a UDRP proceeding seeking transfer of the domain name. Respondent did not appeal the UDRP decision or take any further action with regard to the domain name.

Petitioner has never published any content at any website resolving to the domain name. "All Petitioner has ever done is to hold it for future sale at an inflated price (a practice known as 'warehousing'), or to redirect Internet users to the TTABVUE docket page for these proceedings."

Petitioner claimed that it was under a "legal threat" from the ADVENTIST registration, but the Board noted that the cancellation petition included only three of the four classes of goods and services in the registrations, and so even if Petitioner prevailed in this proceeding, it would ostensibly remain under threat from Respondent's continuing ownership of one of the registrations (covering employee health care programs and insurance). The Board concluded that Petitioner failed to satisfy either prong of the Lexmark test:

We find that Petitioner’s interests, which do not have anything to do with trademark concerns (whether its own trademark concerns or concerns about how others’ trademark rights might endanger its business model), are outside the zone of interests reflected in Trademark Act Section 14. Further, it cannot reasonably be assumed Congress intended to authorize a party in Petitioner’s circumstances to bring and maintain these cancellation proceedings. Corcamore, 2020 USPQ2d 11277, at *7. We further find that Petitioner’s claim of proximate causation (its belief in damage) has no “reasonable basis in fact.” Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999). To the extent Petitioner’s belief in damage may have existed at the time Petitioner brought these proceedings in January 2017, clearly it has not been maintained. We therefore conclude that Petitioner has not shown its entitlement to the statutory cause of action it asserts here.

And so, the Board denied the petition for cancellation.

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TTABlogger comment: Readers, you cannot ignore Lexmark any more. "Standing" is no longer a slam dunk.

Text Copyright John L. Welch 2021.

CAFC Affirms TTAB: FOCUSVISION Confusable With FOCUS for Data Management Software

In a straightforward, nonprecedential opinion, the CAFC affirmed the TTAB's decision [here] sustaining an opposition to registration of the mark FOCUSVISION for online software for conducting market research, finding confusing likely with the registered mark FOCUS for database management software. On appeal, FocusVision challenged the Board's analysis regarding several of the DuPont factors, but the CAFC found no error in the Board's factual findings, and no error in the Board's ultimate conclusion. FocusVision Worldwide, Inc. v. Information Builders, Inc., 2021 USPQ2d 638 (Fed. 2021) [not precedential].

Likelihood of confusion is a question of law that the CAFC review de novo. The court reviews the Board's factual findings under each DuPont factor for substantial supporting evidence.

FocusVision argued that the Board improperly dissected its mark to concentrate on the word FOCUS, but the disagreed. However, as long as the Board considers the mark as a whole, it may give more or less weight to a part of the mark. Here the Board gave more weigh to FOCUS as the first word in the mark. The word FOCUS does not change the meaning of VISION; as the Board stated, "FOCUS exhorts the consumer to concentrate on, although emphasizing that the focus is on a vision." 

As to the goods and services, Opposer IBI's marks are not limited to any particular field, and so FocusVision's software for market research is encompassed by IBI's marks. FocusVision argued that its services are provided only on its online portal, but there was no such limitation in its recitation of services. 

As to FocusVision's arguments that the expensive software involved would be purchased with a high degree of care, the court observed that "even sophisticated purchaser may be confused by marks that are sufficiently similar." Furthermore, FocusVision's customers include buyers who do not have significant knowledge or experience with such software. 

The evidence supported the Board's finding that IBI's FOCUS mark is inherently and commercially strong, albeit not famous. FocusVisions evidence of third-party registrations was "simply to thin" to show that the FOCUS mark is weak. 

Finally, the Board found the lack of actual confusion to be a neutral factor. Here, the period of time when confusion could have occurred (June 2014 to January 2018) was "relatively short," and so the lack of confusion was not telling.

We have been shown no error in the Board’s finding of neutrality of the other DuPont factors. See TTAB Opinion, 2020 WL 3027606, at *16–18. And we see no error in the Board’s ultimate weighing of the factors it found to favor IBI to reach a determination that confusion was likely.

And so, the CAFC affirmed the Board's decision.

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TTABlogger comment: We haven't had an interesting CAFC decision in quite a while.

Text Copyright John L. Welch 2021.

TTAB Affirms Genericness Refusal of PICKLESHOT for .... Guess What?

This applicant found itself in a pickle after the USPTO refused to register the proposed mark PICKLESHOT for "alcoholic beverages, except beer," on the ground of genericness and, alternatively, mere descriptivenes (and lack of secondary meaning). Applicant took a shot at an appeal, but the Board's decision ended on a sour note: affirmed! In re The Original Pickle Shot, Inc., No. 88409422 (June 9, 2021) [not precedential] (Opinion by Judge David K. Heasley).

Genericness: Examining Attorney Andrew Leaser submitted a definition of "pickle shot" from the Urban Dictionary ("Double shot: one part vodka, one part pickle juice”), Internet articles showing common use of “pickle shot” for vodka or tequila combined with pickle juice as a mixed drink or a chaser, and an article about applicant's restaurant in Ocean City, Maryland restaurant, using the term "pickle shot" generically. Applicant had disclaimed PICKLE SHOT in a Supplemental Registration for the mark THE ORIGINAL PICKLE SHOT.

Applicant maintained that its identification of goods includes a wide variety of alcoholic beverages and PICKLESHOT is not generic for that genus of goods. It pointed out that the article about its restaurant did not include quotations from the owners using the term generically. As to the Supplemental Registration, applicant asserted that trademark rights are not static, and eligibility for registration should be determined on current facts.

Applicant pointed to a Wikipedia entry stating that "pickle shot" is "an alcoholic vodka spirit bottled by The Original Pickle Shot®." That entry was subsequently deleted. The Board agreed with the examining attorney that this Wikipedia entry should be ignored: "The sentences quoted above are redolent of self-interest, and were later removed. The Board is not obliged to accept unquestioningly such obvious assertions on the ultimate issue of whether Applicant’s proposed mark would be perceived as a mark."

The Board observed that PICKLESHOT "need not encompass all alcoholic beverages to be generic." It is enough that the term refers to part of the claimed genus of goods or services: for example, the term ‘pizzeria’ is generic for restaurant services even though it refers to a particular type of restaurant and not all restaurants. In re Cordua Rests., 118 USPQ2d at 1638 cited in Royal Crown v. Coca-Cola, 127 USPQ2d at 1046-47.

The evidence shows that the relevant public, adult purchasers of alcoholic beverages, would perceive PICKLESHOT as the name of a type of alcoholic beverage. The term has entered the lexicon with such frequency that it is defined in the Urban Dictionary—a source on which Applicant relies, as well.

And so, the Board affirmed the genericness refusal.

Mere Descriptiveness: Applicant feebly claimed that PICKLESHOT is a double entendre: "pickle" or "pickled" is a slang term for "drunk," and "PICKLESHOT conveys an impression of an intoxicating beverage, which can be consumed in a small serving size." The Board was not impressed:

[T]he record shows that “pickle shot” is commonly and invariably used to describe a drink combining pickle juice with a distilled spirit. There is no indication that consumers would readily dissect the term into its constituent words in order to reach a different interpretation. Moreover, the interpretation Applicant proffers is itself merely descriptive, as it immediately conveys knowledge of a characteristic of the goods: an intoxicating beverage that can be consumed in a small serving size. The term is thus not a “double entendre.”

The Board concluded that PICKLE SHOT is highly descriptive of the qualities, ingredients, and characteristics of applicant’s goods. That meant that applicant's burden to show acquired distinctiveness was commensurately high. 

Applicant's proofs under Section 2(f) were seriously inadequate. It offered no evidence of advertising expenditures, only two articles from regional publications, no survey results, and no third-party affidavits or declarations to support its claim. Moreover, its use use of the term had not been substantially exclusive, as required under Section 2(f), since the evidence showed frequent usage by third-parties. 

And so, the Board affirmed that alternative Section 2(e)(1) refusal.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2021.

Failure to Prove "Standing" and Priority Dooms Section 2(d) Cancellation of CHUBB TRAVEL SMART Registration for Mobile Apps

Claiming common law rights in the mark TRAVELSMART for mobile apps related to travel, Petitioner AWP sought cancellation of a registration for the mark CHUBB TRAVEL SMART for similar mobile apps. AWP claim didn't travel very far because it failed to prove its entitlement (f/k/a standing) to bring this cancellation petition and it also failed to prove priority. The Board's opinion smartly analyzes the "standing" issue and the "hearsay" evidentiary rules, leading to a denial of the petition on both grounds. AWP USA Inc. v. Chubb INA Holdings Inc., Cancellation No. 92070407 (June 10, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

Entitlement to a Cause of Action (f/k/a "standing'): "A plaintiff’s entitlement to a statutory cause of action for opposition or cancellation is a threshold issue in every inter partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)). A petitioner may petition to cancel a registration if such cancellation is within the zone of interests protected by the statute, 15 U.S.C. § 1064, and if petitioner has a reasonable belief in damage proximately caused by the continued registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *6-7 (Fed. Cir. 2020), cert. denied, ___ U.S. ___ (2021)." 

Petitioner AWP maintained that there were two bases for its "standing." First, because its application to register the mark TRAVELSMART was blocked by a Section 2(d) citation based of Chubb's registration, and second, because it sells a competing product and it will be damaged by continued existence of the registration.

The problem with the first argument was that, although AWP pleaded ownership of the application, it failed to submit the application into the record. AWP argued that Chubb had admitted AWP's ownership of the application in its Answer to the petition for cancellation, but all Chubb admitted was that AWP was listed as the applicant in the USPTO records, and not that AWP owned the application. Since AWP neither made the application of record nor provided testimony as to its ownership, the Board ruled that AWP could not base its "standing" on the refusal to register.

As to the second argument, AWP failed to prove that it owned and was using the mark TRAVELSMART in commerce. AWP relied solely on advertisements and app store screenshots for the app, claiming that these items showed that its TRAVELSMART app was "widely circulated, advertised, and available to the public."  The Board found this evidence to be very similar to that in WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034 (TTAB 2018). [TTABlogged here].

Like the pages in WeaponX from the opposer’s reputed website at weaponxperformance.com, the pages here from what Petitioner suggests is its website at allianztravel.com “show on their face that some entity is advertising products and services under the [TRAVELSMART] mark, but absent testimony from a competent witness, they are nonetheless hearsay. They do not prove that [Petitioner] owns its pleaded [TRAVELSMART] mark or that it has offered products or services under that pleaded mark.” WeaponX, 126 USPQ2d at 1040.

Similarly, as to the app store screenshots AWP assumed that the “Allianz TravelSmart” app shown and described on these pages is its own product, but again that fact was not established by the screenshots alone. 

The Board concluded that AWP failed to establish that it has a reasonable belief in damage proximately caused by the continued registration of Chubb's mark arising from AWP's alleged ownership of its pleaded application to register. Therefore AWP did not establish its entitlement to bring this petition for cancellation, and the petition was denied on that ground.

Priority: Although the lack of "standing" was sufficient to resolve the case, the Board went on to discuss the issue of priority, since the same hearsay problems arose there. It again observed that "Internet evidence is only admissible for what it shows on its face ...." Assertions appearing in the Internet printouts must by corroborated by testimony as to the truth of the matter asserted. "WeaponX teaches that it is necessary to connect the dots between a mark displayed on a webpage, its putative owner, and the goods or services with which it is used, by evidence other than the webpage itself, such as 'testimony from a competent witness,' id., but Petitioner offered none here."

“In sum, [Petitioner] has not proven it is the owner of the mark pleaded in the [Petition for Cancellation], and even if it did prove ownership, it has not demonstrated its priority. Accordingly, [Petitioner] cannot prevail on its claim of likelihood of confusion.” WeaponX, 126 USPQ2d at 1041-42. The Petition for Cancellation must be denied for this reason as well.

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TTABlogger comment: A tip of the TTABlog fedora to FOB Jennifer deWolf Paine. BTW: I would have made this decision precedential. PS: A simple testimonial declaration would seemingly have avoided these problems.

Text Copyright John L. Welch 2021.

Precedential No. 16: WYHA? TTAB Affirms Mere Descriptiveness Refusal of ONLINETRADEMARKATTORNEYS.COM as Claim of Acquired Distinctiveness Fails

For some reason that completely escapes me, the Board has re-designated as precedential its February 2021 decision affirming a Section 2(e)(1) mere descriptiveness refusal of the proposed mark ONLINETRADEMARKATTORNEYS.COM for "legal services," Applicant Saucer Summers claimed acquired distinctiveness under Section 2(f) but its submissions were woefully inadequate to satisfy the heightened burden of proof for this highly descriptive mark. In re Sausser Summers, PC, 2021 USPQ2d 618, (TTAB 2021) [re-designated as precedential] (Opinion by Judge Christopher Larkin).

The Board was first required to determine the degree of descriptiveness of the proposed mark, because "the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning." Royal Crown Cola Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018) (quoting In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (internal quotation omitted)). 

Examining Attorney Andrea B. Cornwell relied on dictionary definitions and evidence of third-party use of the term "online trademark attorney(s)" or close variants. Applicant described its business model as "a law firm that runs completely online," thereby keeping its overhead low, so that it "provides copyright and trademark registration services on a flat rate basis." 

The Board found that "“on the scale ranging from generic to merely descriptive, Royal Crown Cola, 127 USPQ2d at 1048, ONLINETRADEMARKATTORNEYS.COM is much closer to the generic end of the scale than to the merely descriptive end, making it highly descriptive of the 'legal services' identified in the application."

Sausser Summers relied on both its verified statement that the proposed mark has been in substantially exclusive and continuous use for at least five years, and on its evidence of acquired distinctiveness. As to the five-year claim, the Board noted that Section 2(f) provides that the USPTO may accept such a statement as prima facie evidence of acquired distinctiveness, but the Office is not required to do so. The Board ruled that, in view of the highly descriptive nature of the proposed mark, the Examining Attorney "was well within her discretion to reject Applicant's claim of five years of substantially continuous use as insufficient to prove acquired distinctiveness." 

As to applicant's evidence, the Board applied the Converse factors to determine whether the proposed mark had achieved acquired distinctiveness. Applicant offered neither consumer survey evidence, nor declarations from clients attesting to their association of the proposed mark with the applicant. It submitted testimonials from 125 clients, but only a tiny fraction even mentioned the proposed mark; the vast majority referred to applicant by its law firm name. In sum, the testimonials were nonprobative. 

The fact that applicant may have exclusive use of the domain name is of little probative value as to exclusivity of use in light of the evidence that "multiple third parties describe their legal services as being provided by "online trademark attorneys." 

Sausser Summers claimed "vast and worldwide advertising" resulting in the expenditure of "a substantial amount in advertising each year," but the Board pooh-poohed these "grandiose claims": "It strains credulity that a business striving to keep overhead low and charging low flat fees would (or even could) engage in 'vast and worldwide advertising' and 'spend[ ] a substantial amount in advertising each year.' In the absence of supporting evidence, we cannot find that Applicant has advertised extensively." 

Sausser Summers also claimed that it “has advertised in print magazines, social media platforms, internet ads, and various other sources across the U.S. and in other countries” and “has placed ads via social media platforms, and places advertisements via Googleads on a daily basis,” but it failed to provide any evidence regarding the duration and extent of exposure of any of these materials. It submitted only a single print advertisement from the July 2019 edition of the Charleston Business Magazine, a publication apparently directed to businesses located in Charleston, South Carolina, the city in which Sausser Summers has its "brick-and-mortar world address."

Here, we have no useful information regarding even Applicant’s efforts to establish such an association through its advertising and promotion, and we cannot infer anything about its success based on its evidence under this Converse factor.

Sausser Summers did not reveal the amount of revenue garnered from its legal services, nor did it state the number of clients served. Although applicant was listed for several years as one of the top-filing firms in the U.S., that was under the firm name, not under the proposed mark. There was no probative evidence of intentional copying of the proposed mark by others, and no probative evidence regarding unsolicited media coverage.

Considered as a whole, Applicant’s evidence on the Converse factors falls far short of carrying Applicant’s heavy burden of showing that its highly descriptive proposed mark ONLINETRADEMARKATTORNEYS.COM has acquired distinctiveness for legal services.

And so, the Board affirmed the refusal to register. 

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TTABlogger comment: Another disaster! WYHA? By the way, the Board stated that the refusal to register was under Sections 2(e)(1) and 2(f) of the Trademark Act, but Section 2(f) is not a basis for refusal. Section 2(f) provides a way to overcome other refusals, including Section 2(e)(1).

Text Copyright John L. Welch 2021.

Precedential No. 15: On Remand, TTAB Reverses COOKINPELLETS.COM Genericness Ruling, But Affirms Mere Descriptiveness and Lack of Acquired Distinctiveness

In July 2020, the CAFC remanded to the TTAB the Board's decision that found the proposed mark COOKINPELLETS.COM to be generic for "Processed wood fuel in the nature of pellets for use in barbecue grills," and alternatively merely descriptive of those goods. [TTABlogged here]. The TTAB has now reversed its original finding of genericness, but has affirmed the mere descriptiveness refusal. The evidence established that COOKINPELLETS is generic for the goods, but the addition of ".COM" created enough doubt on that issue to justify the reversal. However, as to applicant's Section 2(f) claim, applicant failed to meet the elevated burden of proof applicable when considering acquired distinctiveness for such a highly descriptive term. In re GJ & AM, LLC, 2021 USPQ2d 617 (TTAB 2021) [precedential] (Opinion by Judge Marc A. Bergsman).

In ordering remand, the CAFC directed the Board to consider its original rulings in light of the Supreme Court’s decision in USPTO v. Booking.com B.V., 2020 USPQ2d 10729 (2020). There, the Court rejected a per se rule that a "generic.com" is always generic or always non-generic. The determination of genericness turns on "whether consumers in fact perceive [the] term as the name of a class or, instead, as a term capable of distinguishing among members of the class."

Genericness: The meanings of the terms "cooking," "pellets," and ".com" were not in dispute, nor did applicant contest that "cookin" and "cooking" mean the same thing. The Board then closely reviewed the evidence: applicant's own use of COOKINPELLETS and COOKINPELLETS.COM, third-party commercial use of the terms, use in on-line forums, news articles, and Internet search results. The Board concluded that "Cooking Pellets" is "indisputably generic": "the combination of "cooking" and "pellet" does not result in a term that purchasers ... will understand as anything other than a cooking fuel." The terms are "as generic in the compound COOKINPELLETS as they are individually, and the compound term itself is generic."

As to the proposed mark COOKINPELLETS.COM, the individual words "cookin" and "pellets" retain their generic meaning because the compression of the terms does not create an incongruous term, nor does it invoke a unique commercial impression." In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987). Nonetheless, applicant argued that relevant consumers perceive COOKINPELLETS.COM as its brand name," and the evidence showed that some third-parties use or understand COOKINPELLETS (with or without a space) and COOKINPELLETS.COM as capable of serving as a source indicator.

Although this evidence of consumer perception is limited, on the specific facts and record before us, we find it is sufficient to create doubt about whether consumers would perceive COOKINPELLETS.COM as a whole as generic, or rather as capable of indicating source and thus eligible for registration on the Supplemental Register or on the Principal Register under Section 2(f) if Applicant can show it has acquired distinctiveness. We are constrained to resolve that doubt in favor of Applicant. See, e.g., In re Waverly Inc., 27 USPQ2d 1620, 1624 (TTAB 1993).

And so, the Board reversed the genericness refusal.

Acquired Distinctiveness: Applicant claimed that its proposed mark has acquired distinctiveness under Section 2(f), a claim that served a concession that the term is not inherently distinctive. See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009). The Board then turned to a determination of the degree of descriptiveness, since the more descriptive a term, the more proof required under Section 2(f). Royal Crown, 127 USPQ2d at 1047 (quoting Steelbuilding.com, 75 USPQ2d at 1424); see also Nazon v. Ghiorse, 119 USPQ2d 1178, 1187 (TTAB 2016).

Based on the evidence regarding genericness, the Board concluded that COOKINPELLETS.COM is "closer to the generic than suggestive line" and is highly descriptive. The Board then applied the CAFC's Converse analysis to applicant's evidence: use of the proposed mark since 2007, approximately 250,000 units sold for $3M in revenue, $25,000 spent for advertising, promotion of mark on social media an on its website, and a ranking for several years as the best-selling and highest-rated pellet on Amazon.com.

The Board was not impressed. Long use of a term does not necessarily establish acquired distinctiveness. See, for example, Apollo Med. Extrusion Techs., 123 USPQ2d at 1855 (25+ years not sufficient to prove acquired distinctiveness); Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d at 1766 (19 years use insufficient to prove acquired distinctiveness). The sales figures were modest and were not placed in context (market share), and the advertising figures lacked information as to the extent of exposure. There was no survey evidence, no evidence of intentional copying, and minimal media coverage.

After considering all of the factors for which there is evidence in determining whether Applicant’s mark COOKINPELLETS.COM has acquired distinctiveness, we find that Applicant has failed to meet its burden of showing that the highly descriptive term COOKINPELLETS.COM has acquired distinctiveness. Specifically, because Applicant did not submit any testimony or evidence defining the size of the market or otherwise providing context as to how the raw numbers Applicant provided compare in the marketplace, we analyze the evidence regarding consumer recognition, Applicant’s modest advertising expenditures, and modest sales in a vacuum.

 

And so, the Board affirmed the mere descriptiveness refusal.

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TTABlogger comment: I predicted this result when the CAFC ordered remand. Sometimes even a blind squirrel ....

Text Copyright John L. Welch 2021.

Precedential No. 14: Indefinite Recitation of Services and Failure to Adequately Respond to Information Request Sink SHIFTMAG Application

Applicant SICPA Holding SA ran into double trouble when it applied to register the mark SHIFTMAG for "security consulting in the nature of professional consulting on magnetic stripe color shifting smart designs based on liquid crystal technology for visual card authentication, embed protection and brand identity customization.” In a dubiously precedential opinion, the Board agreed with Examining Attorney Brian Pino that SICPA's recitation of services was fatally indefinite, and the Board also upheld a second refusal based on SICPA's failure to respond timely and adequately to a Rule 2.61(b) request for information. In re SICPA Holding SA, 2021 USPQ2d 613 (TTAB 2021) [precedential] (Opinion by Judge Michael B. Adlin).

Indefiniteness: Examining Attorney Pino maintained that, because of the indefiniteness of the recitation of services, they cannot be properly classified. SICPA argued that it is a "one-of-a-kind business entity," that the services it offers are "not in the ID Manual," and that "[n]ot everything in the world is in the ID Manual." 

The Board sided with the USPTO, observing that specificity is required "to provide public notice and to enable the USPTO to classify the goods and services properly ...." In re Fiat Grp Mktg. & Corp. Commc’ns. S.p.A.A., 109 USPQ2d 1593, 1597 (TTAB 2014). Moreover, "[i]t is within the discretion of the PTO to require than one's goods be identified with particularity." In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007) (quoting In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91 (CCPA 1980)).

In In re Omega, the CAFC upheld a requirement that the term "chronographs" be identified more specifically because the term could refer to "watches" in class 14 or to time recording instruments in class 9. Similarly, here the term "security" in SICPA's recitation of services is ambiguous: "it is unclear whether the term refers to data security, as suggested by the services relating to 'card authentication and identification,' or to physical security." SICPA claimed that it "does not do data security," but that did not make the identification less ambiguous. Moreover, it was not clear from SICPA's examples of use whether it was offering a product or a product feature, rather than a service.

While Applicant’s product may very well be “one of a kind,” that does not excuse Applicant from complying with the requirement to identify its goods or services with sufficient particularity and in an understandable way. Goods and services implementing emerging technologies, by their very nature, may not to be represented in the ID Manual. Nonetheless, the Trademark Rules and decisional law require an applicant to identify its goods or services in a clear manner that permits proper classification. Applicant did not do so here, however.

Request for Information: Under Rule 2.61(b), "[t]he Office may require the applicant to furnish such information . . . as may be reasonably necessary to the proper examination of the application." "Equivocal, vague or evasive responses are unacceptable." In re AOP LLC , 107 USPQ2d 1644, 1651 (TTAB 2013). Failure to comply with a request for information is an independent ground for refusal of an application. In re Cheezwhse.com Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP , 67 USPQ2d 1699, 1701 (TTAB 2003). 

Of the five requests made by the Examining Attorney, SICPA failed to respond to two of them until its final brief. "But that was too late."
 

The Rule’s purpose is thwarted , proceedings are unduly prolonged, and the expenditure of agency resources is needlessly increased if the information is not provided until examination is over and the application is on appeal before the Board.

And so, the Board affirmed the second refusal. 

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TTABlogger comment: What a disaster! The Board noted that, as to the information requirement, SICPA could have asked for remand to the USPTO in order to respond to the two unanswered requests.

Text Copyright John L. Welch 2021.

North Carolina District Court Finds PRETZEL CRISPS Generic, Orders Cancellation of Registration

In the latest twist in this long-running saga, the United States District Court for the Western District of North Carolina has found the term PRETZEL CRISPS to be generic for pretzel crackers. The court therefore upheld the decision of the TTAB [here] ordering cancellation of the PRETZEL CRISPS Supplemental Registration. The court observed that there was no dispute that the product was "hugely successful, due in no small part to Plaintiffs’ extensive marketing efforts and the PRETZEL CRISPS trademark registration they received and have enforced to clear the field of similarly named products. However, no matter how much commercial success the product enjoys, Plaintiffs are not entitled to monopolize the common name of the product being sold." Snyder's Lance, Inc. and Princeton Vanguard, LLC v. Frito-Lay North America, Inc., (W.D.N.C. June 7, 2021).

Judge Kenneth Bell first considered whether the combination of the generic terms "pretzel" and "crisps" creates any additional meaning for consumers from which they can distinguish Plaintiff's product." He concluded that it did not, and therefore that PRETZEL CRISPS is generic. 

The court did not rest its decision on that finding alone. Judge Bell reviewed in detail all the evidence submitted by the parties, including the dictionary definitions, usage by competitors and others in the field, media reference, plaintiff's own usage, press releases, business references, social media, and consumer surveys. [Of the two surveys submitted by plaintiff, one was "inconclusive" and the other supported a genericness finding.]

Summarizing the evidence on the genericness of the mark, considered as a whole, the Court finds that the combination of the acknowledged generic elements of the compound mark “yields no additional meaning to consumers capable of distinguishing the goods” and, independently, usage by competitors, media references and consumer surveys (as well as some use by Plaintiffs) reflects that, on balance, consumers primarily perceive “pretzel crisps” to be a common/generic name.

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TTABlogger comment: The NYU article blogged here last Friday includes a discussion of the Teflon survey in the PRETZEL CRISPS case.

Text Copyright John L. Welch 2021.

Recommended Reading: "The Role of Consumer Uncertainty in Trademark Law: An Experimental and Theoretical Investigation"

Barton Beebe, Roy Germano, Christopher Jon Sprigman, and Joel H. Steckel, scholars at New York University (the first three at the law school), have published an important article on the topic of trademark survey evidence: "The Role of Consumer Uncertainty in Trademark Law: An Experimental and Theoretical Investigation". For those of you contemplating the commissioning of a survey (and who isn't?), this is a must read. [download here].

Abstract

Nearly every important issue in trademark litigation turns on the question of what consumers in the marketplace subjectively believe to be true. To address this question, litigants frequently present consumer survey evidence, which can play a decisive role in driving the outcomes of disputes. But trademark survey evidence has proven to be highly controversial, not least because it is notoriously prone to expert manipulation. In this Article, we identify and present empirical evidence of a related, but more fundamental problem with trademark survey evidence: while all the leading survey formats in trademark law test for whether consumers hold a particular belief, they do not test for the strength or the varying degrees of certainty with which consumers hold that belief. In short, by treating the question of consumer beliefs as essentially binary, the formats do not test for belief strength. Yet as the social science literature has long recognized, the strength with which consumers hold particular beliefs shapes their behavior in the marketplace, and thus it should also shape, we believe, how trademark disputes play out in the courtroom. Through a series of experiments using the three leading trademark survey formats (the so-called Teflon, Eveready, and Squirt formats), we show the remarkable degree to which these formats as conventionally designed overlook—or suppress—crucial information about consumer uncertainty. We further demonstrate how a low-cost, easily-administered, and relatively simple modification in these formats can reveal that information. We discuss both the practical and theoretical implications of our findings. As a practical matter, trademark survey evidence that shows only weakly-held beliefs (or that does not even test for belief strength) should not, without more, satisfy a litigant’s burden of persuasion on the issue addressed by the survey. Furthermore, in line with courts’ growing efforts in intellectual property cases to tailor injunctive relief, survey evidence showing only weakly-held mistaken beliefs may provide courts with the opportunity to fashion more limited forms of relief short of an outright injunction. As a theoretical matter, we explain how trademark survey formats that reveal the true extent of consumer uncertainty in the marketplace may finally force trademark law and policy to confront normative questions it has long left unanswered going to exactly what kind of harm trademark law is meant to forestall.

 

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TTABlogger comment: Once again, the empirical strikes back.

Text Copyright John L. Welch 2021.

Catch-all Thirteenth DuPont Factor Saves HANA BANCORP & Design from Section 2(d) Refusal

The Board reversed a Section 2(d) refusal to register the mark HANA BANCORP & Design (shown first below) for various business, financial, and banking services [BANCORP disclaimed], finding no likelihood of confusion with the registered mark HANA FINANCIAL & Design (shown second below) for financial services [FINANCIAL disclaimed]. Although the first, second and third DuPont factors weighed in favor of a finding that confusion is likely, the catch-all thirteen DuPont factor was dispositive. In re Hana Financial Group Inc., Serial No. 86019890 (June 2, 2021) [not precedential (Opinion by Judge Jonathan Hudis).

The thirteenth DuPont factor allows for consideration of "any other established fact probative of the effect of use." DuPont, 177 USPQ at 567. Applicant argued that its mark HANA BANCORP & Design is nearly identical to the marks shown in four federal registrations that it claimed to own, including the mark HANA BANK & Design for "banking" and HANA GROUP & Design for business management services:

The Board noted that these registration are owned by Hana Bank, but since Hana Bank is a wholly-owned subsidiary of Hana Financial Group, Inc., applicant may rely on them for purposes of the 13th DuPont factor.

The Board looked to In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012) [TTABlogged here] for guidance. Strategic Partners (involving the mark ANYWEAR (stylized) and a prior registration for ANYWEARS (standard characters) for footwear) set out the following non-exclusive factors to be considered with regard to the significance of a prior registration owned by an applicant:

• There is no “meaningful difference” between the marks in applicant’s prior registration and its present application – that is, there is no material difference between the marks;
• The services are at least in-part identical; and 
• Both the applicant’s prior registration and the cited registration are more than five years old and thus immune from attack on likelihood of confusion grounds.

Here, the Board found no "meaningful difference" between the proposed mark and the two registered marks, and it further found the services to be identical or closely related. Although the HANA GROUP and Design registration and the cited HANA FINANCIAL and Design registration have coexisted for only 2-½ years, that was but one fact to be considered.

We find, under the circumstances of this case, where (1) a prior registration, for a mark with no material difference from Applicant’s pending mark, existed in excess of five years for identical and related services; and (2) the younger prior registration, again for a mark with no material difference from Applicant’s pending mark, existed in excess of two years for identical and related services, the thirteenth DuPont factor overcomes the other DuPont factors that otherwise might support a finding that confusion is likely.

And so, the Board reversed the refusal.

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TTABlogger comment: Seems to open the door to registration a bit more than Strategic Partners did.

Text Copyright John L. Welch 2021.