TTAB Posts September 2021 (Video) Hearing Schedule

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

September 8, 2021 - 10 AM: Joshua S. Schoonover v. The Burton Corporation, Cancellation No. 92067794 [Petitioner for cancellation of registration s for the mark FORUM for clothing and snowboards, on the ground of abandonment.]

September 9, 2021 - 4 PM: Maker's Mark Distillery, Inc. v. Bowmaker's Whiskey Company, Opposition No. 91239589 [Opposition to registration of the mark BOWMAKER'S WHISKEY for "Distilled spirits; Whiskey; Bourbon" on the ground of likelihood of confusion with the registered mark MAKER'S MARK for whiskey.]

September 21, 2021 - 1 PM: Patxi's Limited. v. Johnny K. Wang, Opposition No. 91252969 [Opposition to registration of PATXI'S for restaurant services on the ground of likelihood of confusion with opposer's identical common law mark for restaurant services.]

September 23, 2021 - 1 PM: Theragun, LLC v. Theragen, Inc., Opposition No. 91250143 [Opposition to registration of THERAGEN and THERAGEN & Design for "Medical devices, namely, electrostimulatory devices for tissue, bone and/or joint treatment, medical treatment apparel, and a kit comprising an electrostimulatory device and medical treatment apparel" in view of the registered mark THERAGUN for massages apparatus and "vibrating apparatus used to stimulate muscles and increase strength and physical performance for health and medical purposes."]

September 24, 2021 - 2 PM: Spotify AB v. U.S. Software, Inc., Oppositions No. 91243297 and 91248487 [Opposition to registration of the mark POTIFY, in standard character and word-plus-design form, for clothing and for software and services related to medical marijuana dispensaries, on the grounds of likelihood of confusion with, and likely dilution (by blurring and tarnishment) of the registered mark SPOTIFY for clothing, downloadable software, and online services.]

September 29, 2021 - 1 PM: Industria de Diseno Textil, S.A. (Inditex, S.A.) v. Benzara, Inc., Opposition No. 91242880 [Opposition to registration of BENZARA for furniture in view of the registered mark ZARA for various goods, including mirrors and coat racks.]

 

 

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TTABlog comment: A pretty boring group of cases. Any predictions?

Text Copyright John L. Welch 2021.

TTAB Affirms Section 2(e)(5) Functionality Refusal of Iconic Eames Chair Design

The Board upheld a Section 2(e)(5) refusal to register the design of the Eames chair (shown below) for "furniture, namely chairs," finding the configuration to be de jure functional. The well known Eames chair was designed in the 1940s and was recognized by Time magazine as the Best Design of the 20th Century. The Board applied the ever-popular Morton-Norwich factors in concluding that "[t]he patent evidence, the advertisements touting the utilitarian advantages of significant design features of the proposed mark, and the limited availability of alternative designs that would work equally well highlight that the features of the proposed mark affect the cost and quality of the chairs." In re Herman Miller, Inc., Serial No. 88027008 (August 25, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch). 

The proposed mark is described as: "The mark consists of a three-dimensional configuration of a chair comprised of a curved trapezoidal seat and back, each with rounded corners but different curvatures and proportions, two arched legs, each of continuous material and offset heights which narrow toward the ground. The broken lines depicting the spine of the chair indicate placement of the mark on the goods and are not part of the mark." [Emphasis supplied].

The Eames Patent: Charles Eames obtained a utility patent in 1951 on a "Furniture Construction" (pdf here) depicted therein:

Reviewing the '490 patent, the Board found that "the contours of the seat and back, the single-piece designs and differing heights of the leg frames, as well as their placement along the spine, contribute to the 'restful and comfortable' nature of the chair, and the ability to 'inexpensively manufacture [it] by mass production methods,' as explicitly stated in the patent." 

Applicant Herman Miller, noting that the spine of the chair is not part of the proposed mark, argued that “the spine is the invention, and the specific seat, back, and legs claimed in the Eames Molded Plywood Chair Design are not essential to the invention." The Board was not persuaded: "[T]he patent claims features of the seat, back, and legs found in the proposed mark, and claims the manner of placement of these features on the spine, as found in the preferred embodiment chair, just as they appear in the proposed mark."

Applicant cannot avoid the functionality refusal merely by dotting out the spine, but retaining all the other elements in the ‘490 Patent’s preferred embodiment, which are constructed in a particular manner around and joined to the spine in exactly the configuration shown in the proposed mark.

The Board observed that, in order in order to practice the invention of the now-expired ‘490 Patent, as depicted in its preferred embodiment, "the features of Applicant’s proposed mark must be constructed as they are shown in the ‘490 Patent and placed around the spine in the manner that they appear in the proposed mark."

The ‘490 Patent indicates that the features of the proposed mark are essential to the use and purpose of the chair, and affect its cost and quality. The patent thus is strong evidence that the matter is functional. See TrafFix, 58 USPQ2d at 1005; Becton, Dickinson, 102 USPQ2d at 1377. To issue a trademark registration covering Applicant's proposed mark would frustrate the policies of patent law whereby, upon the expiration of the ‘490 Patent, competitors should be free to practice the invention. See TrafFix, 58 USPQ2d at 1007; Valu Eng’g, 61 USPQ2d at 1425.

Advertising: The Board found that "significant features" of the proposed design mark are touted in Herman Miller's advertising, emphasizing, for example, the curve of the seat and back and their contouring to fit the human body. One third-party seller described the shape of the back as “low and expansive” to support ergonomics and “help[] your circulation." The Board concluded that the proposed mark "looks the way it does in order to be a better chair, not in order to be a better way of identifying who made it (the function of a trademark)."

Alternative Designs: The Board pointed out that when the first two Morton-Norwich factors demonstrate that a proposed configuration mark is functional and affects the cost and quality of the product, the availability of other designs is irrelevant. See, for example, TrafFix, 58 USPQ2d at 1005; Becton, Dickinson, 102 USPQ2d at 1378. Nonetheless, the Board observed that the record evidence, "including the patents, the advertising, and the articles on Charles and Ray Eames and their chair design at issue, makes clear that competitors would be disadvantaged in trying to find alternative designs that would work equally well."

Method of Manufacture: The fourth Morton-Norwich factor - whether the design results from a relatively simple or cheap method of manufacturing the product - is likewise irrelevant in light of the Board's findings regarding the first two Morton-Norwich factors. The Board addressed this factor anyway.

Noting the absence of current evidence about Herman Miller's cost of manufacture, the Board found the record inconclusive. It rebuffed Herman Miller's assertion that the Board should consider the retail price of the chair (expensive), pointing out the price does not necessarily correlate with the cost of manufacture. "Applicant’s chair design has achieved considerable renown, and is a museum piece, which likely drives its retail price." The Board found this Morton-Norwich factor to be neutral.

Conclusion: In light of its findings under the first two Morton-Norwich factors, the Board affirmed the Section 2(e)(5) refusal.

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TTABlogger comment: Any doubt that this will be appealed? Would Herman Miller have been better off not trying to register the proposed mark?

Text Copyright John L. Welch 2021.

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

The TTAB (Tee-Tee-Ā-Bee) 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. Let's see how you do in predicting the results. [Answer will be found in the first comment.]

In re Juice Generation, Inc., Serial No. 88536980 (August 25, 2021) [not precedential] (Opinion by Judge Angela Lykos) [Section 2(d) refusal of HI-FIBE for "Non-alcoholic beverages containing fruits and vegetables juices; smoothies; vegetable-fruit juices and smoothies," in view of the registered mark HI FIBE for "Food additives for non-nutritional purposes high in fiber for use as a flavoring, ingredient or filler for use in bread, tortillas, frozen food entrees, muffins, bagels, cheese, juice drinks, soups, cookies and nutritional bars."]

In re UT Fidem Foundation, Serial No. 88592284 (August 24, 2021) [not precedential] (Opinion by Judge Cheryl S. Goodman) [Section 2(d) refusal of the mark shown below for "Small group Christian ministry services and providing religious faith counseling services" in view of the registered mark KEEP THE FAITH for "Providing a website featuring information about religious belief systems, and, in particular the Catholic religious belief system."]

In re Real-Time Marketing, Ltd., Serial No. 88590001 (August 24, 2021) [not precedential] (Opinion by Judge Michael B. Adlin) [Section 2(d) refusal of METALHEAD for "air fragrancing preparations for automobiles or vehicles," in view of the registered mark METAL HEAD for "non medicated skin care preparations; skin masks."]

 

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

Text Copyright John L. Welch 2021.

TTABlog Test: Is FAST DRINK Merely Descriptive of Nutritional Meal Replacement Drinks?

The USPTO refused to register the proposed mark FAST DRINK, finding it to be merely descriptive of "Nutritional meal replacement drinks adapted for medical use; herbal teas for medical treatments." The Examining Attorney contended that FAST DRINK merely describes a significant feature of the identified goods, namely, that the goods are "for use during periods when a consumer either completely abstains from food, instead consuming herbal teas or meal replacement drinks such as those described in applicant’s application or when a consumer greatly reduces the food for a certain period, instead consuming herbal teas or meal replacement drinks[.]" How do you think this appeal came out? In re L-Nutra, Inc., Serial No. 87635652 (August 24, 2021) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

The Examining Attorney relied on dictionary definitions of the constituent words and on articles, blog posts, and L-Nutra's own advertising materials indicating that its products are used to provide nourishment to someone who is fasting or preparing to fast. 

The Board, however, noted the lack of evidence that FAST DRINK as a unitary term is used to refer to such a drink. This suggests that FAST DRINK "is not a grammatically correct expression or term of art identifying a type of drink used during a fast, and it is unclear whether consumers would understand it as a merely descriptive term when applied to the identified goods." 

Moreover, said the Board, "we believe consumers would perceive FAST DRINK as referring to a product they can prepare quickly or they can use as a quick snack or as on on-the-go meal replacement." The Board observed that marks that creates a double entendre are not merely descripitive. Here, FAST DRINK has multiple meanings and qualifies as a double entendre. 

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I'm not convinced. FAST DRINK in the context of a drink for fasting people would seem to be readily perceived as describing the key purpose of the drink . Moreover, even if it has a second meaning, that meaning is also merely descriptive of the goods. So I dissent.

Text Copyright John L. Welch 2021.

Precedential No. 22: TTAB Allows Withdrawal of Cancellation Petition Prior to Answer, Without Prejudice, Despite Federal Court Ruling Adverse to Petitioner

Petitioner Jim Beam filed a voluntary withdrawal, without prejudice, of its petition for cancellation of a registration for the mark shown immediately below, for "distilled spirits." In the petition, Jim Beam claimed that JL Beverage's "Lips Mark" was merely ornamental and lacked acquired distinctiveness. The cancellation proceeding had been suspended before JL Beverage filed its answer, in light of an infringement action brought by JL Beverage. The Board observed that, under Rule 2.114(c), a petition for cancellation "may be withdrawn without prejudice before the answer is filed." The Board saw no reason to depart from the language of the Rule, which is "plain, clear, and mentions no exceptions," and so it dismissed the petition without prejudice. Jim Beam Brands Co. v. JL Beverage Company LLC, 2021 USPQ2d 885 (TTAB 2021) [precedential]. 

The US Court of Appeals for the Ninth Circuit, on May 17, 2020, affirmed Jim Beam's victory over JL Beverage in the infringement action, finding that Jim Beam's "Pucker" vodka mark did not infringe JL Beverage's Johnny Love "Lips Mark",  based on differences between the bottle designs, marks, product names, and labels. [Ninth Circuit opinion here.]

 

In the civil action, Jim Beam had asserted counterclaims for cancellation of the "Lips Mark" registration on the ornamentality ground, as well as alleging certain claims of infringement of a prior Jim Beam registration. The Ninth Circuit upheld the district court's denial of all claims of the parties.

JL Beverage argued that the Board should dismiss the petition for cancellation with prejudice because the district court denied Jim Beam's counterclaims, which included a claim allegedly mimicking the claim pending in the Board proceeding. It urged the Board to create an exception to Rule 2.114(c) "in cases where a federal court judgment has a bearing on the Board case," but it failed to provide a persuasive reason for the Board to do so.

Finally, the Board noted that if Jim Beam files another petition for cancellation of the subject registration, JL Beverage may assert any preclusion arguments at that time.

Read comments and post your comment here.

TTABlogger comment: Seems pretty straightforward to me. If the Rule is so plain and clear, why make this decision precedential?

Text Copyright John L. Welch 2021.

CAFC Rules that the USPTO is not Entitled to Expert Witness Fees in a Civil Action for Review of a PTAB Decision. What about the TTAB?

You will recall that in Peter v. Nantkwest, the Supreme Court unanimously upheld an en banc decision of the CAFC, ruling that the USPTO is not entitled to recover its attorney's fees in an appeal from an adverse PTAB (Patent Trial and Appeal Board) decision via a civil action under Section 145 of the Patent Statute. [TTABlogged here]. Well, last week, in Hyatt v. Hirshfeld, Appeal No. 2020-2231 et al. (Fed. Cir. August 18, 2021), the CAFC ruled that the USPTO is not entitled to recover expert witness fees in a Section 145 action. [pdf here]. What's the story on the trademark side, where the issue of recover of attorney fees under Section 1071(b) has been hanging around for several years?

In the Booking.com case, in 2019 the Fourth Circuit upheld the district court's award of attorney's fees to the USPTO in a successful appeal from a TTAB decision deeming the term BOOKING.COM to be generic for travel agency services. However, the Supreme Court in July 2020 remanded the case back to the Fourth Circuit for consideration of the attorney fee award in light of its Nantkwest decision. [TTABlogged here].

Prior History: The Fourth Circuit had followed (seemingly with reluctance) its own decision in Shammas v. Focarino, 784 F.3d 219, 225 (4th Cir. 2015) by affirming the district court's award of attorney's fees to the USPTO. Despite statutory language in Section 1017(b)(3) of the Trademark Act that is virtually identical to that of Section 145 of the Patent Statute, the Fourth Circuit confirmed that the USPTO was entitled to recover its attorney's fees. The district court had awarded the USPTO the sum of $76,873.61, which included $51,572.53 in attorney fees (i.e., USPTO personnel costs) and $21,750.000 in expert witness fees. [TTABlogged here].

Back to the Fourth Circuit: On remand from the Supreme Court, the Fourth Circuit kicked the case back down to the U.S District Court for Eastern District of Virginia "for further consideration in light of the United States Supreme Court's decision in [Peter v. Nantkwest]."

At the district court, both parties agreed that the USPTO was no longer entitled to recover the $51,472.53 previously awarded for the USPTO's personnel costs. On June 3, 2021, the district court allowed Booking.com to reduce the remainder of the award by its costs, resulting in a final award of $23,676.58, which included the USPTO's expert witness fees. [Opinion here].

In late June 2021, Booking.com asked the district court to re-consider the award in light of the anticipated CAFC ruling in Hyatt v. Hirshfeld, but the district court declined. The parties then agreed to an award of $18,676.58, and the court entered an agreed-upon order and closed the case.

Two months later, the Hyatt v. Hirshfeld decision came down.

Read comments and post your comment here.

TTABlogger comment: So where do things stand on the trademark side? Shamas v. Focarino has not been overruled by the Fourth Circuit, and the award of expert witness fees to the USPTO in Booking.com apparently will go unchallenged.

Text Copyright John L. Welch 2021.

TTAB Dismisses HUDL Opposition to HUDL BREWING COMPANY: Proof of Dilution Fame Fails and Goods/Services Too Different for Section 2(d)

In a 96-page opinion, the Board gave the boot to this Section 2(d) and 43(c) consolidated opposition to registration of HUDL BREWING COMPANY for beverage glassware, clothing, and beer (BREWING COMPANY disclaimed). Opposer Agile Sports Technologies claimed likelihood of confusion with, and likelihood of dilution (by blurring) of, its registered HUDL and HUDL-formative marks for various sports-related software and video goods and services. The Board found Agile's evidence insufficient to prove fame for dilution purposes, and concluded that the involved goods are too different to support a conclusion of likely confusion. This post will attempt to hit the high points. Agile Sports Technologies, Inc. v. Hudl Brewing Company LLC, Oppositions Nos. 91247770, 91248316, and 91248342 (August 20, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

Opposer's Common Law Rights: The Board refused to consider evidence regarding Agile's use of the HUDL mark for clothing and beverageware because Agile did not plead common law rights in its notice of opposition. The applicant objected to this evidence, and Agile did not raise the issue of trial by implied consent.

Dilution Fame: Opposer Agile's software products "are built around digital video playback and provide sports teams with an online mobile platform for video sharing, editing, and review." Agile's HUDL products are nearly universally used by coaches and players at all levels, from professional to high school.

The Board observed that dilution fame is difficult to prove. "An opposer must show that, when the general public encounters the mark 'in almost any context, it associates the term, at least initially, with the mark’s owner," TiVo Brands, 129 USPQ2d at 1103 (quoting Coach Servs., 101 USPQ2d at 1725), and that the mark has "become a ‘household term [with] which almost everyone is familiar.'" Neither Agile's advertising and promotion under its HUDL mark, nor the amount, volume, and geographic extent of its sales, supported a finding of "ubiquitous and sustained exposure of the mark to the general public." Agile's evidence of media coverage was "not the sort of media coverage that supports a finding that a mark is a 'household term.'"

The Board concluded that "[b]ecause Agile cannot satisfy the threshold requirement of fame under Section 43(c), it cannot prevail on its likelihood of dilution claim in each opposition."

Likelihood of Confusion: Agile’s marketing numbers were "nowhere near as large as those that have supported fame findings under Section 2(d) in multiple Federal Circuit and Board cases." The Board found the HUDL standard character mark to be "quite strong" in the high school sports sub-market, but of average strength in other sub-markets. Its strength has not been diminished by third-party uses of HUDL- and HUDDLE-formative marks.

The Board found HUDL and HUDL BREWING COMPANY to be "more similar than dissimilar in all means of comparison."

As to the applicant's beverage ware (class 21), the four third-party registrations submitted by Agile, without any evidence regarding use, were insufficient to show relatedness with Agile's services. Similarly with regard to clothing (class 25), eight third-party registrations without proof of use, did not show relatedness with Agile's services. As to beer (class 32), Agile submitted two third-party registrations and argued that "beer and sports (particularly sports as entertainment) are uniquely intertwined." Not good enough, said the Board.

As to channels of trade, Agile failed to show that its software or service overlap with the normal channels of trade for applicant's goods.

The Board concluded that Opposer Agile failed to prove by a preponderance of the evidence that confusion is likely, and so it dismissed Agile's Section 2(d) claim.

Although the marks are similar, Opposer’s HUDL mark is quite strong in the high school sub-market for the goods and services for which it is registered, and Applicant’s goods may be subject to impulse purchase by some consumers, we give greater weight in our analysis to the stark dissimilarity of the goods and services identified in Opposer’s registration and the goods identified in Applicant’s applications, and the lack of any evidence that the respective goods and services are sold in overlapping channels of trade to overlapping consumers. We conclude that the goods and services are simply too far afield for confusion to be likely.

Read comments and post your comment here.

TTABlogger comment: What do you think will happen next?

Text Copyright John L. Welch 2021.

TTABlog Test: Three Recent Section 2(d) Appeals - How Did They Come Out?

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods or services. Here are three recent decisions in appeals from Section 2(d) refusals. How do you think these came out? [Answers in first comment].

In re Draion M. Burch DO Inc., Serial No. 888603134 (August 17, 2021) [not precedential] (Opinion by Judge Frances S. Wolfston). [Section 2(d) refusal of MOMENTUM for "Vaginal moisturizers; Personal lubricants" in view of the registered mark MOMENTUM NUTRITION for nutritional supplements  [NUTRITION disclaimed].]

In re Altoz, Inc., Serial No. 88625236 (August 17, 2021) [not precedential] (Opinion by Judge David Mermelstein). [Section 2(d) refusal of TRX for "[z]ero turn riding lawn mowers," in view of the identical mark registered for "[a]ll terrain vehicles and structural parts therefor."]

In re Edward Kwak, Serial No. 88687305 (August 17, 2021) [not precedential] (Opinion by Judge Peter W. Cataldo) [Section 2(d) refusal of KINDSKIN for "Cosmetic skin care services; Health spa services, namely, cosmetic body care services; Medical spa services, namely, minimally and non-invasive cosmetic and body fitness therapies," in view of the registered mark KIND HEALTH GROUP for "Medical spa services, namely, minimally and non-invasive cosmetic and body fitness therapies."]
 

Read comments and post your comment here.

TTABlog comment: How did you do? Any WYHAs here?

Text Copyright John L. Welch 2019.

TTABlog Test: Is "GENRESTORE" Confusable With "RESTOREGEN" for Dietary Supplements?

The USPTO refused registration of the mark GENRESTORE, finding confusion likely with the registered mark RESTOREGEN, both for dietary supplements. Applicant Live Good conceded that the commercial impression of both marks is that the dietary supplements will “restore” something missing in the user’s body or diet, but the marks differ in sound and appearance. Live Good contended that consumers will will exercise heightened care in purchasing products they intend to ingest. How do you think this appeal came out? In re Live Good Inc., Serial No. 88877980 (August 17, 2021) [not precedential] (Opinion by Judge Michael B. Adlin). 

Live Good argued that the word RESTORE is a weak formative but it failed to timely submit its supporting evidence (a dictionary definition and third-party registrations).

As to the goods, since they are identical, the Board must presume that they travel in the same trade channels to the same classes of consumers. Moreover, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Live Good argued that its supplements are a "pre-dopamine regulater" used for "addiction management," but the Board pointed out once again that it is constrained to consider applicant's goods as they are identified in the application ("dietary supplements"), regardless of actual marketing or use.

As to the marks, the Board noted the differences between the marks but concluded that the similarities outweigh the differences. The reversal of word order was insufficient to overcome "the confusion that would arise out of Applicant and Registrant using identical terms for identical goods." The Board pointed out that word marks and transposed versions thereof "are often found to create highly similar meanings and commercial impressions." [E.g., DIET-RITE and RITE DIET, RUST BUSTER AND BUST RUST, SPRINT STEEL RADIAL and RADIAL SPRINT.]

“[T]he reversal in one mark of the essential elements of another mark may serve as a basis for a finding of no likelihood of confusion only if the transposed marks create distinctly different commercial impressions.” In re Nationwide Indus. Indus., 6 USPQ2d at 1884. Here, there is no evidence that the marks create “distinctively different commercial impressions,” nor any other basis for finding that they do.

As noted, Live Good conceded that the commercial impression of both marks is that the products will "restore" something that's missing. "Thus, to at least that important extent the marks create similar commercial impressions."

Finally, the Board observed that the "average" purchaser "normally retains a general rather than a specific impression of trademarks," and the purchaser "may well transpose the elements of [the marks} in his mind."

The Board acknowledged that some purchasers may exercise heightened care in purchasing a product that they will ingest, but the Board found this factor to be outweighed by the identity of the goods, the overlapping trade channels and classes of consumers, and the similarities between the marks.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Some say the "average" American consumer is below average.

Text Copyright John L. Welch 2021.

TTABlog Test: Is "THE TAILORY" Generic for Custom Tailoring or Dressmaking?

SY Custom, Inc., who offers services under the name "The Tailory of New York," petitioned for cancellation of a registration (on the Supplemental Register) for the mark THE TAILORY for "custom tailoring and dressmaking," on the ground of genericness. SY Custom relied on a dictionary definition of "tailory," on 32 testimony declarations, and on Internet evidence showing the term "tailory" and similar terms. How do you think this came out? Not a fair question, I know, because you have to look at the evidence first. SY Custom, Inc. v. The Tailory, LLC, Cancellation No. 92070569 (August 12, 2021) [not precedential] (Opinion by Judge Michael B. Adlin).

As usual, the Board found the genus of services at issue to be adequately defined by the recitation of services in the targeted registration. Noting that the word "custom" is superfluous since all tailoring is "custom," the Board found the relevant public to be consumers of these services, whether simple or complicated.

The Board found the single definition of "tailory" ("the work or business of a tailor" and "clothing made by a tailor") to be the most persuasive evidence submitted by Petitioner SY Custom. This was "strong evidence that TAILORY is at best merely and highly descriptive of Applicant's services." The issue, though, was "whether this record establish that the relevant public understands THE TAILORY to refer to custom tailoring services." 

As to SY Custom's 32 declarations, "[t]he quantity of this evidence is impressive. The quality is not." All but one of the declarations were "essentially identical and obviously drafted by someone other than the witness, presumably Petitioner's counsel." They consisted of form, typed paragraphs with blanks or boxes to be filled in by the declarant.  They suffered from many deficiencies and all were unintelligible to some extent. 

The sole remaining declaration was likewise not probative. Rather than make a factual statement, it stated the legal conclusion that three forms of "tailor" are generic. The declarant worked for a single, French company, and he stated only what that company does, not the relevant public. Moreover, the declaration was not specific to the United States.

SY Custom's Internet evidence consisted of truncated results from a Google search for the word "tailor" in various forms. Without appropriate context,  the results had little probative value. SY pointed to respondent's use of "The Tailory" at its own website, but the examples showed the term in initial capitals, used only to identify respondent rather than tailoring services. Respondent did use "tailor," "tailored," and "tailoring" descriptively or generically, but those were not the term in question.

Uses of the term "tailory" in certain video games was of limited value, since it was unclear whether the games reflect the real world use of the term, or even whether these games are played in the United States.

The Board concluded that SY Customs failed to carry its burden of proof.

Given the dictionary definition, we acknowledge that had Petitioner built a different (more extensive and directly relevant) record here, the result could have been different. But on the “mixed” and “ambiguous” record submitted, much of which is illegible, we find that Petitioner has not met its burden of proving that THE TAILORY is generic for tailoring services or the more specifically identified custom tailoring or dressmaking services.

And so, the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: What do you think will happen next? Why would one submit "illegible" evidence?

Text Copyright John L. Welch 2021.

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

The TTAB recently ruled on the appeals from the three Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them, keeping in mind that the Board affirms, by my calculation, some 90% of these refusals. Answer(s) will be found in the first comment.


In re Alpha Link Trading Ltd., Serial No. 88617904 (August 5, 2021) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Mere descriptiveness refusal of BLOOD SUGAR PREMIER for "dietary supplements." Applicant argued that "the notion that blood sugar is first [in importance] is nonsensical" since blood sugar can be "high," "low" or "okay," and the notion that blood sugar is first has no relationship to or in any way describes the goods.]

In re Liebherr-Werk Biberach GmbH, Serial No. 79271097 (August 10, 2021) [not precedential] (Opinion by Judge Jonathan Hudis). [Mere descriptiveness refusal of FIBRE for, inter alia, "cranes of all kinds, in particular, rotating tower cranes, truck-mounted cranes, ship cranes, container cranes, mobile harbour cranes, crawler cranes, stacker cranes" and "support systems for mobile cranes." Although conceding that fibre rope is a specific type of rope that can be used with its goods, applicant contended that "[t]here is at least one degree of separation, one mental leap, required for consumers to take the descriptive meaning attributed to FIBRE when they see FIBRE in connection with machinery and cranes, and there are other reasonable interpretations of FIBRE in connection with machinery and cranes which do not involve taking this mental leap."]

 

In re Advanced Nutritional Supplements, Serial No. 88766676 (August 13, 2021) [not precedential] (Opinion by Judge Jonathan Hudis). [Mere descriptiveness refusal of  QUAD-MASS for "dietary and nutritional supplements." Applicant challenged the Internet articles made of record by the examining attorney as having low probative value, because the Board may consider "these hearsay articles" only for what they say on their face but not for the truth of what is stated in them, and (2) no proof was submitted regarding consumer exposure to the articles.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2021.

WYHA? TTAB Affirms Section 2(d) Refusal of "BRUNO AND THE HOOLIGANS" in view of "THE HOOLIGANS," Both For Live Musical Entertainment

The Board affirmed a Section 2(d) refusal of the proposed mark BRUNO AND THE HOOLIGANS, finding confusion likely with the registered mark THE HOOLIGANS, both for live performances by a musical group and other related services. Applicant David Ceniceros argued, inter alia, that the marks differ in appearance and sound, and further that the cited mark is used only in connection with "Celtic-themed music." The Board was unmoved. In re David Ceniceros, Serial No. 88636171 (July 29, 2021) [not precedential] (Opinion by Judge Peter W. Cataldo).

Because the involved service are, in part, identical, the Board must presume that those services are offered in the same channels of trade to the same, normal classes of consumers.

Turning to the marks, Ceniceros feebly contended that the cited mark is weak because "there is no evidence that the cited Prior Mark is famous or has acquired secondary meaning ...." The Board pointed out that since the cited registration issued on the Principal Register, it is entitled to the presumption of validity afforded by Section 7(b) of the Act. Moreover, there was no evidence of third party use or registration of similar marks for related products or services. 

Although there was no evidence showing marketplace strength, the owner of the cited mark is not a party to the appeal and does not have an opportunity to provide relevant evidence, nor was Examining Attorney Samuel R. Paquin obligated to provide any such evidence. The Board found that the cited mark is arbitrary and distinctive.

As to the applicant's mark, the leading term "BRUNO AND" suggest an individual who is a member of the "THE HOOLIGANS." Although the lead term differentiates the mark aurally and visually, this distinction "does not significantly diminish the strong similarities in connotation and overall commercial impression engendered by these two marks."

[W]e find that BRUNO AND THE HOOLIGANS is more similar than dissimilar to the mark THE HOOLIGANS in terms of appearance, sound, connotation, and commercial impression. As a result, consumers encountering BRUNO AND THE HOOLIGANS and THE HOOLIGANS could mistakenly believe the former is a variation on the registered mark used to identify a particular musical act, e.g., THE HOOLIGANS featuring or appearing with BRUNO as a subset of Registrant’s services, but nonetheless emanating from a common source.

Ceniceros asserted, without evidentiary support, that the involved services can be "extremely expensive," and therefore consumers will be careful in their purchases and less likely to be confused. The Board noted, however, that there are no restrictions in the application or cited registration as to types of consumers or the price points at which the services are offered. Therefore, "[t]he standard of care is that of the least sophisticated purchaser."

Finally, Ceniceros pointed to the lack of evidence of actual confusion. However, as the Board noted, the lack of evidence of actual confusion carries little weight in an ex parte proceeding, where the cited registrant has no opportunity to submit relevant evidence.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Well, would you have appealed?

Text Copyright John L. Welch 2021.

Belmora Files Petition for Writ of Cetiorari in Long-Running FLANAX Battle with Bayer

The long-running saga of Bayer v. Belmora has taken another turn. Belmora and its owner, Jamie Belcastro, have filed with the Supreme Court a Petition for a Writ of Certiorari [here], seeking review of the Fourth Circuit's decision in Belmora LLC v. Bayer Consumer Care AG, Bayer Healthcare LLC, 2021 USPQ2d 126 (4th Cir. 2021), reh’g denied, Mar. 16, 2021. [TTABlogged here].

 

The questions presented in the petition are—

1. Whether, in view of the principle of trademark territoriality, the zone of interests encompassed by Lanham Act §§ 43(a) and 14(3) extends to the foreign owner of a foreign trademark that has not registered or used the mark in the United States.


2. Whether, in the absence of an express limitations period in the Lanham Act, the timeliness of a § 43(a) suit for false association and false advertising is governed by the most analogous state law statute of limitations, or instead, by laches.

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TTABlogger comment: Marty Schwimmer and I wrote an article in 2019, entitled "US Law Inches Towards Protecting Trademark Reputation Without Use," in which we discussed some ramifications of the earlier Fourth Circuit decision deeming Bayer entitled to bring its Lanham Act claims despite never having used the FLANAX mark in the United States.

Text Copyright John L. Welch 2021.

What Firms/Lawyers Represent Opposed Applicants Most Frequently (2018-2021)?

The folks at the data-mining firm, Towergate Software, have provided me with the following data regarding the law firms or lawyers most frequently appearing as counsel for the applicant in trademark opposition proceedings, for each year since 2018. Do you see any trend here? (click on picture for larger and clearer image).

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Text Copyright John L. Welch 2021.

TTAB Affirms Genericness Refusal of CRANIAL/STRUCTURAL for Medical Massage Services, Rejecting "Mixed Evidence" Argument

The Board affirmed a genericness refusal of the proposed mark CRANIAL/STRUCTURAL for "educational services, namely, providing instructional courses in the field of medical massage" and "medical massage therapy services," rejecting the Applicant SET's argument that the evidence of genericness was "mixed" and therefore inconclusive. In the alternative, the Board turned down the SET's claim of acquired distinctiveness under 2(f) despite 15 years of continuous and substantially exclusive use. In re Structural Energetic Therapy, Serial No. 87827772 (August 9, 2021) [not precedential] (Opinion by Judge Albert Zervas).

Genericness: The Board first found, as usual, that the genus of services involved is suitably expressed by the recitation of services in the application at issue. The consumers of applicant's services are members of the general public. 

SET submitted a declaration from its owner claiming 15 years of continuous use for the proposed mark, describing the promotion of the services, and listing the various governmental approvals obtained. He also declared that he "founded the therapeutic technique ... named CRANIAL/STRUCTURAL." SET also submitted 18 "essentially identical" declarations from massage and health professionals, stating that they attended SET's courses and "do not identify the term Cranial/Structural as describing a specific type of massage services, such as Swedish massage, offered by others who have not successfully completed the Cranial/Structural courses." 

Examining Attorney Breanna Freeman relied on dictionary definitions of cranial and structural, and on numerous website pages and articles using the term cranial structural to refer to a specific massage technique. SET contended that the evidence was "mixed," since there were no dictionary definitions of the term and since several therapy-related organizations and websites do not recognize Cranial/Structural as a common form of massage. 

The Board, however, pointed to the statement of SET's owner that "[a]s the name implies, Cranial/Structural addresses the structural aspects of the body in relationship to the cranium." The Board agreed with the examining attorney that third-parties have used the terms "Cranial/Structural" and "Cranial/Structural technique" to identify a certain type of massage. 

Even if SET's owner "founded the therapeutic technique," and even if most of the Internet articles were authored by him, that does not render the proposed mark a non-generic term. "What counts is how 'Cranial/Structural' is used in the evidence." There was no indication in the articles that SET is the source of the technique. The term is "regularly used in the evidence with terms such as 'technique,' indicating a type of massage." Applicant's uses Cranial/Structural "for the most part, as an adjective." 

The eighteen declarations submitted by SET had limited probative value because they are form declarations. There was no indication as to how the declarants used the term, and no declarations from persons who did not participate in SET's courses  The fact that SET uses "Cranial/Structural" as the name of a course "suggests that the term identifies the subject matter taught in the course." 

The Board therefore brushed aside the argument that the record evidence is "mixed." There was little evidence that consumers recognize CRANIAL/STRUCTURAL as a mark, and much of the evidence uses the term to identify a massage technique. 

And so, the Board affirmed the genericness refusal.

Acquired Distinctiveness: The Board also considered SET's claim of acquired distinctiveness, assuming agruendo that the proposed mark is not generic. Since CRANIAL/STRUCTURAL is at least highly descriptive, SET's burden to prove distinctiveness was commensurately high. The Board found SET's evidence to be insufficient. SET offered no details regarding its sales or advertising, no evidence of intentional copying, and no evidence of unsolicited media coverage.

Even as to the 15 years of use, the Board had questions as to how the proposed mark was presented to the therapists. And there was no direct evidence that consumers associate the term with SET as a source indicator. As to the 18 declarations, "some degree of geographic and customer diversity is necessary for the declarations to have probative value."

And so, the Board rejected the alternative Section 2(f) claim.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2021.

TTABlog Test: Are Protective Clothing and Sporting Gear Related to Underwear and Loungewear for Section 2(d) Purposes?

The USPTO refused to register the mark PFANNER STRETCHFLEX for various items of protective clothing (e.g., accident, radiation and fire protection garments) and protective sporting gear (e.g., athletic protective shin, knee, back and elbow pads for playing sportse), finding confusion likely with the registered mark STRETCHFLEX for underwear and loungewear. The Board found the marks to be similar in appearance, sound, connotation and commercial impression. But what about the goods? Is relatedness too much of a stretch? In re Pfanner Schutzbekleidung GmbH, Application Serial No. 79247130 (August 5, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Marks: The Board found the term "stretchflex" to be suggestive of a desirable characteristic of registrant's goods, but "it is not necessarily a weak term entitled to only a limited scope of protection." Comparing the marks, the Board noted that there is no per se rule that when an applicant incorporates the whole of the cited mark, the marks must be found to be similar. However, it does increase the perception that the marks are similar.

Applicant claimed that PFANNER is the dominant term in its mark because it appears first and because STRETCHFLEX is weak. The Board rejected the weakness arguments, and it pointed out that consumers may perceive the addition of the corporate name PFANNER as indicating the previously anonymous source of the STRETCHFLEX products.

As mentioned above, the Board found the marks to be similar in appearance, sound, connotation, and commercial impression.

The Goods: To show the relatedness of the goods, the Examining Attorney relied on several websites (including Carhartt, Under Armour, Adidas, and Nike) showing "the same mark used to identify the relevant products." The Board was not impressed, noting that the Examining Attorney did not submit any third-party registrations for marks covering both types of goods.

Two examples of entities selling both protective clothing and underwear or loungewear as their core product lines, and three examples of entities selling both protective sporting gear and underwear or loungewear is not sufficient to prove protective clothing and protective sporting gear are related to underwear or loungewear.

The Board concluded that the Examining Attorney failed to prove the relatedness of the goods, and so, it reversed the refusal.
 

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TTABlogger comment: The Examining Attorney must have thought that those big name websites were enough proof of relatedness. I probably would have thought the same.

PS: I suppose if you sleep on a bed of nails, you might wear protective loungewear.

Text Copyright John L. Welch 2021.

TTAB Dismisses TREK Bicycle's Opposition to RANGER TREK for Overlapping, Non-Bicycle Goods

Frequent TTAB plaintiff Trek Bicycle finished second in this Section 2(d) opposition to registration of the marks RANGER TREK . RANGER TREK & Design and RANGER TREK EXPEDITION JOURNALS & Design for various goods and services in International Classes 16, 18, 21, 25, 26, 28 and 41, on the ground of likelihood of confusion with the allegedly famous common law and registered mark TREK and formatives thereof (34 registrations) for a variety of products, including bicycles, clothing, backpacks, travel bags, all-purpose sports bags, flashlights, wrist watches, powder mixes for energy drinks and snack bars. In a nutshell, the Board found "the differences between the marks sufficient to avoid likely confusion despite the identical goods and trade channels and the fame of Opposer’s marks for bicycles, in particular given the differences in overall commercial impression." Trek Bicycle Corporation v. Christina Isaacs, Opposition No. 91232164 (August 4, 2021) [not precedential] (Opinion by Judge Karen Kuhlke).

Based on Trek Bicycle's sales figures, market share, promotional efforts, and media attention, the Board found the mark TREK to be famous, but only for bicycles and bicycle accessories. Applicant Isaacs argued that TREK is conceptually weak, pointing to dictionary definitions (e.g., "a slow or difficult journey, hike or trip)," and third-party registrations for TREK-containing marks for clothing, bags, or recreation-related information services.

Although the third-party registrations (without proof of the extent of use of the marks) do not affect the commercial strength of the TREK mark, they overall "tend to show the common adoption of the word TREK by third parties to carry the suggestion the goods or services may be appropriate for 'trekking' or simply to evoke the idea of hiking in connection with the goods or services."

Thus, conceptually the mark TREK appears to be somewhat suggestive in connection with backpacks, clothing, and recreation-related information services and the commercial strength for bicycles and bicycle accessories has not been shown to apply to these goods and services. We accord Opposer’s TREK marks the scope of protection to which somewhat suggestive marks are entitled, keeping in mind the mark’s wider scope of protection in the bicycle industry.

 
The Board also found RANGER to be somewhat suggestive in connection with the involved goods and services, but the word RANGER "is more dominant, placed at the beginning of Applicant’s mark, and presents a different overall commercial impression, sufficient to avoid likely confusion. TREK by itself simply references a journey or hike. RANGER TREK evokes a person on a journey or hike and not any person but a specific type of person with a mission on a RANGER TREK."

[G]iven the dissimilarities in appearance, sound, connotation and commercial impression, even ignoring the somewhat conceptually weak nature of the word TREK in connection with the various Class 18 and 25 goods and Class 41 services to the extent it suggests they are for trekking or simply evokes the idea of trekking, we find the marks are not confusingly similar when used on the goods or services for which Opposer has established priority.

Applicant Isaacs pointed to statements made by Opposer Trek in prosecuting applications for several TREK marks, distinguishing them over cited TREK-containing marks. The Board found that those statements, although not in "full conflict" with Trek's positions here, suggest that "Applicant’s marks, where the addition of “RANGER” creates a sufficient distinction, may coexist as well."

And so the Board dismissed the opposition. 

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TTABlogger comment: Applicant Isaacs put up quite a fight here: four and one half years and 132 TTABVUE entries, topped off with oral argument. One might say it was a long trek to registration.

Text Copyright John L. Welch 2021.

TTABlog Test: Which of These Three Section 2(d) Refusals 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. Let's see how you do in predicting the results. [Answer will be found in the first comment.]

In re Golf Partner Co., Ltd., Serial No. 87409894 (August 4, 2021) [not precedential] (Opinion by Judge Peter W. Cataldo) [Section 2(d) refusal of NEXGEN for golf clubs and golf accessories, in view of the registered mark THE NEXT GENERATION IN GOLF MATS! for "driving practice mats."]

 

In re Masco Canada Limited, Serial No. 88619996 (August 4, 2021) [not precedential] (Opinion by Judge Albert Zervas) [Section 2(d) refusal of ZAHRA for "plumbing products, namely, bathing units in the nature of bathtubs and shower enclosures," in view of the registered marks ZARA and ZARA HOME for lamps, lamp shades, mirrors, and soap.]

 

In re Get Cozy Holdings LLC, Serial No. 88644497 (July 28, 2021) [not precedential] (Opinion by Judge Mark Lebow) [Section 2(d) refusal of BUBBLES & BREWS for "bar services in the nature of providing a mobile bar without a bartender; mobile bar services; mobile bar rentals; mobile bar services for providing drinks" [BREWS disclaimed], in view of the registered mark BEER AND BUBBLES for "catering services" [BEER disclaimed].]

 

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

Text Copyright John L. Welch 2021.

TTABlog Test: Is KING'S RANSOM for Scotch Whiskey Sold by Invitation Confusable With the Identical Mark for Wines?

The USPTO refused to register the mark KING'S RANSOM for "spirits, namely, aged luxury Scotch whisky for private sale only by invitation," finding a likelihood of confustion with the identical mark registered for "wines." Applicant Signatory argued that its restricted identification of goods "sets its whiskey apart from the ordinary retail channels of trade or whiskey, and limiting sales as private and invitation-only weighs heavily against a likelihood of confusion." How do you think this appeal turned out? In re Signatory Vintage Scotch Whisky Company Limited, Serial No. 79261464 (August 3, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The examining attorney relied on website evidence that purportedly showed whiskey and wine being offered in the same trade channels to the same classes of consumers, and also on third-party, use-based registrations covering wine and whiskey. 

Signatory introduced evidence of high-end whiskey being sold for tens of thousands of dollars per bottle. The Board granted Signatory's request that it take judicial notice of the definition of "luxury" as "something expensive which is not necessary but which gives you pleasure." Signatory emphasized that its identified goods are not sold in the ordinary channels of trade for whiskey, since its sales are private and by invitation-only. 

The Board observed that only two of the pieces of evidence showed the same mark being used for whiskey and wine. One involved Costco's Kirkland house brand, which covers an unusually broad range of goods, and the other was a foreign website. The Board deemed this evidence "minimally probative."

Moreover, the evidence of online retail stores selling whiskey and wine under various marks "does not establish relatedness or common trade channels for wine and whisky 'for private sale only by invitation,' because the latter on its face would not be available on an Internet retail site generally available to the public." Likewise, the third-party registrations were insufficient to establish that wine is related to "aged luxury Scotch whisky for private sale only by invitation."

The Board agreed with Signatory that, on the face of its identification of goods, its whiskey would involve relatively careful purchasing decisions and more sophisticated purchasers.

Balancing the relevant DuPont factors, the Board concluded that confusion is unlikely, and so it reversed the refusal to register.

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TTABlogger comment: Whisky? Whiskey? Wiskie? How did you do?

Text Copyright John L. Welch 2021.

TTABlog Test: Is "ONE GREEN" Confusable With "8GREENS" for Nutritional Supplements?

Tasty Greens LLC opposed an application to register the mark ONE GREEN for nutritional supplements, claiming a likelihood of confusion with its registered mark 8GREENS, also for nutritional supplements. Opposer's supplements are made from eight green vegetables, and its registration issued under Section 2(f) based on acquired distinctiveness. How to you think this opposition came out? Tasty Greens LLC v. Sylvio Campos, Opposition No. 91255119 (July 9, 2021) [not precedential] (Opinion by Judge Johathan Hudis).

The Goods: Applicant Campos's identification of goods ("dietary and nutritional supplements; vitamins") encompassed Opposer Tasty Green's goods as identified in its pleaded registrations (nutritional supplements containing green leafy vegetables and herbs), and so the Board considered the involved goods to be legally identical. It therefore presumed that the goods travel in the same trade channels to the same potential customers. Moreover, the goods are ordinary consumer items available at a relatively low cost, and are therefore purchased with less care by consumers.

The Marks: Tasty Greens' mark 8 GREENS is inherently descriptive and conceptually weak. Applicant Campos submitted a single third-party registration (TRIPLE GREENS) and some evidence of third-party use of marks containing the word GREEN for supplements and the like, all of which constituted some evidence that Opposer's mark is weak.  As to commercial strength, Tasty Greens submitted "significant evidence" that its mark has acquired "a modicum of distinctiveness or secondary meaning in the marketplace." Tasty Greens did not provide evidence of its relative market share, and therefore the Board could not find that 8GREENS is a famous mark.

[W]e find that, while inherently weak, Opposer’s 8GREENS mark has attained a degree of marketplace recognition and is therefore entitled to protection against the registration by a subsequent user of a similar mark for legally identical goods.

Turning to a comparison of the marks, the Board found them to be similar in sight, sound, meaning, and overall commercial impression because "they both start with a number and end with the identical term 'GREEN(S),' differ only by a numerical prefix, share the same format and structure - a single digit number combined with "GREEN(S)' - followed by the five shared letter and the same suffix - GREEN/GREENS[.] and have the same number of syllables." Furthermore, each mark conveys that the products contain a certain number of "GREEN(S)" and provide the health benefit of a "green."

The Board therefore concluded that confusion is likely, and it sustained the opposition.

Lack of Bona Fide Intent: Applicant Campos provided no documentation to show that he had a bona fide intention to use the mark ONE GREEN in commerce. And so the Board sustained the opposition on this ground as well.

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TTABlogger comment: How did you do? Applicant Campos failed to submit timely responses to Opposer's admission requests, and so the Board deemed the requests to be admitted. The Board, however, decided the case without relying on the admissions.

Text Copyright John L. Welch 2021.