TTAB Posts October 2021 (Video) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled four (4) oral hearings for the month of October 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.

October 5, 2021 - 1 PM: In re California Exotic Novelties, LLC and Wood Rocket, LLC, Serial No. 88629939 [Refusal to register FUCK ME for "Adult sexual stimulation aids, namely, vibrators" on the ground that the proposed mark is a common phrase that cannot function as a trademark.]

October 12, 2021 - 1 PM: In re California Exotic Novelties, LLC and Wood Rocket, LLC, Serial No. 88629916 [Refusal to register HORNY AF for "Adult sexual stimulation aids, namely, vibrating cock ring" on the ground that the proposed mark is a common phrase that cannot function as a trademark.]

October 14, 2021 - 11 AM: In re Del Monte International GmbH, Serial Nos. 88614478 and 88696297 [Section 2(d) refusal to register FRSHST in the forms shown below, for "Food and beverage kiosk services; retail store services featuring fresh fruits and vegetables, sandwiches, wraps, baked goods, salads, snacks, entrees, prepared meals, dips, hummus, soups and yogurts; all of the foregoing excluding supermarkets," in view of the registered mark FRESH STREET SQUARE for "supermarkets."]

October 26, 2021 - 1 PM: In re James Todd Smith, Serial No. 88595239 [Refusal to register THE INFLUENCE OF HIP HOP for "Radio communications; radio broadcasting information; mobile radio communication" because "the specimen of use does not show use of the mark in connection with the services identified in the application.]

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TTABlog comment: We're heading into NSFW territory. Any predictions?

Text Copyright John L. Welch 2021.

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

A certain TTAB Judge once told me that one can predict the outcome of a Section 2(d) appeal 95% of the time by just looking at the marks and the goods or services. Here are three Section 2(d) refusals that were recently considered on appeal. One of the refusals was reversed. Which one? [Answer in first comment].

In re Herve US, LLC, Serial No. 88703522 (September 27, 2021) [not precedential] (Opinion by Judge Christen M. English) [Section 2(d) refusal of HERVE for "bakery goods and bakery desserts for wholesale distribution" in view of the registered mark HERVÉ for "restaurant and bar services."]

In re Aquatech Seafood LLC, Serial No. 88524996 (September 22, 2021) [not precedential] (Opinion by Judge Peter W. Cataldo) [Section 2(d) refusal of HAPPY CLAWS LUCKY PAWS for "edible pet treats" in view of the registered mark LUCKY PAW for "dog collars; dog collars and leads; muzzles."]

In re Mannington Mills, Inc., Serial No. 88645881 (September 20, 2021) [not precedential] (Opinion by Judge Linda A. Kuczma) [Section 2(d) refusal of AQUABARRIER for "Underlay for laminate flooring; Flooring underlayments; Non-metal building materials, namely, laminate floor boards, all for residential use" in view of the identical mark registered for "thin membrane for attachment to walls for waterproofing purposes."]

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TTABlog comment: How do you like that LUCKYPAW specimen of use?

Text Copyright John L. Welch 2021.

TTABlog Test: Is "MULTI-GRIP" Generic for Exercise Stretch Bands?

The USPTO refused to register the proposed mark MULTI-GRIP on the Supplemental Register, finding it to be generic for manually-operated resistance and stretch bands for physical therapy and exercise. On appeal, Applicant Elliott Goldberg contended that his product is commonly referred to as a "stretch band" or "stretch strap," that there is no evidence that "Multi-Grip" is a noun whose primary meaning to the consuming public is resistance and stretch bands, and that the term Multi-Grip cannot be generic because it “is not used primarily for resistance or stretch bands” but rather it describes a feature of a number of different products. How do you think this came out? In re Elliott Goldberg, Serial No. 88212315 (September 23, 2021) [not precedential] (Opinion by Judge Christen M. English).

The Board agreed with Applicant Goldberg that the identification of goods sufficiently names the genus at issue here: manually-operated resistance and stretch bands for physical therapy and exercise. The Board disagreed, however, with his assertion that Examining Attorney Julie M. Guttadauro "improperly narrowed the genus so that it was limited to resistance and stretch bands that feature multigrips." 

The Board observed that "[a] term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole." Royal Crown, 127 USPQ2d at 1046 (quoting Cordua Rests., 118 USPQ2d at 1638); In re Wm. B. Coleman Co., 93 USPQ2d 2019, 2024-25 (TTAB 2010) (holding ELECTRIC CANDLE COMPANY generic for electric candles, a subcategory of applicant’s broadly worded identification of goods as"lighting fixtures"); Central Sprinkler Co., 49 USPQ2d at 1197 (ATTIC generic for "automatic sprinklers for fire protection" because term identified a category of such goods, namely, sprinklers for fire protection used in the attic).

And so, it was appropriate for the Examining Attorney "to consider whether MULTI-GRIP identifies a sub-group or part of the broad genus of goods here."
 

The record includes extensive third-party evidence showing that: (1) a number of third parties market a sub-group of resistance and stretch bands with multiple grips that allow users to adjust their hand and foot placement providing greater versatility of use and varying degrees of difficulty; and (2) “multi-grip” is widely used in the field to refer primarily to resistance and stretch bands having multiple grips. The evidence is clear and convincing that MULTI-GRIP does not merely describe a feature of Applicant’s stretch and resistance bands, but rather identifies a “key aspect” of a category of stretch and resistance bands within the relevant genus. Applicant’s competitors should be able to continue to use “multi-grip” to identify this key aspect of their goods.

The Board noted that Applicant Goldberg does not display MULTI-GRIP in the manner of a trademark. See Central Sprinkler, 49 USPQ2d at 1197 (considering Applicant’s specimen of use; “we cannot overlook how the relevant public will encounter the matter sought to be registered”). 

The Board was not persuaded by Goldberg's argument that "MULTI-GRIP is not generic because not all resistance and stretch bands are "multi-grip" bands. A term “need not be equated by the general public with the entire broad genus . . . in order for the term to be generic.”

The Board acknowledged that “multi-grip” modifies the term “band” and so functions as an adjective, but that does not foreclose a determination that MULTI-GRIP is generic. Both nouns and adjectives can be generic. See, e.g., Sheetz of Del., 108 USPQ2d at 1366 (“We readily acknowledge that ‘Footlong’ is not the name of a food product; rather it is an adjective referring to the length of the sandwich. This adjectival use, however, does not remove ‘Footlong’ from being generic when used in connection with sandwiches.”).

As an adjective, multi-grip may be used and, as Applicant’s evidence shows, is in fact used to modify other types of goods, including goods unrelated to resistance and stretch bands. But this also does not preclude a finding that MULTI-GRIP is generic for manually operated resistance and stretch bands for physical therapy and exercise. The issue before us is whether MULTI-GRIP is generic for the genus of goods defined in Applicant’s application. The evidence establishes by clear and convincing evidence that MULTI-GRIP bands are encompassed within Applicant’s broadly identified genus of goods.

Therefore, the Board affirmed the refusal to register.

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TTABlogger comment: Seems like a bit of a stretch to me.

Text Copyright John L. Welch 2021.

13th DuPont Factor (Prior Registration) Saves AXION From Section 2(d) Refusal Over AXEON LABS for Clothing

The Board reversed a Section 2(d) refusal to register the mark AXION (in standard character form) for "Belts for clothing; Footwear; Headwear; Hoodies; Shirts; Shoes; Shorts; Socks; Sweatshirts; T-shirts; Jogging pants," finding confusion not likely with the registered mark AXEON LABS for overlapping clothing items. Although the Board presumed that the identical goods travel in the same trade channels to the same classes of consumers, and found the marks to be confusingly similar, the 13th DuPont factor was dispositive. In re 1872 LLC, Serial No. 88897035 (September 23, 2021) [not precedential] (Opinion by Judge Thomas Shaw).

The thirteenth DuPont factor allows the Board to consider "any additional probative facts to accommodate the need for flexibility in assessing each unique set of facts." Applicant claimed ownership of the word-plus-design mark shown immediately below, for "clothing, namely, shirts, t-shirts, shorts, sweatshirts, pullovers, pants, jackets, coats, belts, socks, headwear and footwear."

Applicant's prior registration issued in November 2018, before the filing of the underlying application that led to the cited registration. "In other words, applicant owns a registration for a mark incorporating the same applied-for term, AXION, for in-part identical goods."

Cases involving prior registrations under the thirteenth factor customarily consider whether substantially similar marks should be allowed to coexist on the Register because of an applicant’s prior registration of a similar mark for the involved goods or services. See, e.g., In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790 (TTAB 2017) (finding composite mark including the words USA WARRIORS ICE HOCKEY and NONE TOUGHER separated by a logo likely to cause confusion with composite mark including the words USA HOCKEY despite applicant’s prior registration of composite mark including the words USA WARRIORS ICE HOCKEY and NONE TOUGHER separated by a logo); In re Strategic Partners Inc., 102 USPQ2d 1397 (TTAB 2012) (finding that applicant’s ownership of a prior registration for a substantially similar mark for the same goods which had coexisted with the cited registration for over five years was sufficient to “tip the scale in favor of applicant and a finding of no likelihood of confusion.”).

Factors to be considered in this situation include (1) whether the prior registered mark is the same as or otherwise not meaningfully different from the proposed mark; (2) whether the identifications of goods is identical or identical in relevant part; and (3) the length of time the prior registration has coexisted with the cited registration. 

The Board found that AXION "does not differ meaningfully from the literal portion of the mark in Applicant’s prior registration, for partially identical articles of clothing, because consumers are generally more inclined to focus on and remember the word portion of a composite mark."

The Board observed that it was not bound by the prior determination of the examining attorney who allowed the AXEON LABS mark to register over applicant's prior registration. However, "[t]he fact that the USPTO permitted the cited registration to issue over Applicant’s prior registration for a substantially similar mark and in-part identical goods, buttresses our ultimate conclusion that there is no likelihood of confusion between Applicant’s AXION mark and the AXION LABS (sic) mark."

And so, the Board reversed the refusal to register.

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TTABlogger comment: Do you think the marks are confusingly similar?

Text Copyright John L. Welch 2021.

Third-Party Uses and Registrations Show Weakness of Cited Mark ASCENT; TTAB Reverses 2(d) Refusal of ASCENT FEDERAL CREDIT UNION

The Board reversed a Section 2(d) refusal of ASCENT FEDERAL CREDIT UNION for "Credit union services, namely, providing checking and savings accounts, mortgage lending, savings and loan services, bill payment, financing, ATM banking services, individual retirement accounts, payroll tax debiting services, and electronic banking via the global computer  network, excluding providing lease financing for private student loans" [FEDERAL CREDIT UNION disclaimed], finding confusion not likely with the registered mark ASCENT (Stylized) for "providing lease financing for private student loans." Applicant Weber State successfully relied on third-party use and registration evidence in arguing that ASCENT is a weak source indicator in the field of banking and financial services. In re Weber State Federal Credit Union, Serial No. 88675314 (September 14, 2021) [not precedential] (Opinion by Judge Robert H. Coggins).

The Services: Because the services recited in the registration are ambiguous (leasing?), the Board looked to extrinsic evidence regarding the services. Registrant's website indicated that registrant, in effect, offers student loans. 

The Board then concluded that the involved services are related. "Indeed, but for the exclusionary language in Applicant’s identification of services, Applicant's broadly worded 'loan' and 'financing' services would necessarily include the student loans which Registrant offers." Moreover, third-party website  and registration evidence demonstrated that credit unions offer student loans.

Weber State argued that the Examining Attorney ignored the exclusion of "lease financing of student loan services" from its recitation of services. The Board observed, however, that consumers are unaware of this limitation in the application and it is "not controlling of public perception."

Applicant further contended that its consumers exercise a high degree of care in their purchasing decisions, but there was no supporting evidence. Moreover, credit union members are part of the general population. "Even assuming that current or prospective students seeking to borrow money for school would exercise caution in obtaining student loans, there is no evidence that checking or savings account holders, i.e., Applicant’s customers, are particularly discriminating."

And so, the Board concluded that "the services are related, travel in the same channels of trade, and are offered to the same customers who exercise only ordinary care." 

Strength of the Cited Mark:  In support of its argument that ASCENT is a weak mark, applicant relied on 15 examples of third-party internet use of marks containing ASCENT to advertise banking and financial services on the internet, as well as on 12 use-based third-party registrations for marks that include the word ASCENT for various financial services in Class 36. 

The Board found that the services "offered and registered by third parties under ASCENT-formative marks are similar to Registrant’s student loan services so that we may consider those third-party marks under the fifth and sixth DuPont factors." It concluded that the evidence "establishes that ASCENT-formative marks are both conceptually and commercially weak and, therefore, are entitled to a narrow scope of protection."

Moreover, as to conceptual strength, the use of ASCENT by different financial service providers "indicates that ASCENT in this context suggests increasing, raising, or advancing one’s financial goals."

This is reinforced by the multiple mountain-related ASCENT logo marks which also suggest climbing toward one’s goals. The dictionary definition of “ascent” further supports the concept of rising, mounting, or advancing wealth. Thus, we find that ASCENT-formative marks have conceptual weakness in association with financial services.

As to commercial strength, the evidence was "powerful" that "consumers encountering marks in the financial field have become conditioned to distinguish marks incorporating ASCENT-formative terms based on minute differences including the addition of descriptive and generic terms such as 'financial advisors,' 'financial network,' 'financial management,' 'financial strategy,' 'processing,' etc."

The Board concluded that the cited mark falls on the lower end of the spectrum from very strong to very weak, and that "minute differences between ASCENT-formative marks used in association with financial services are sufficient to distinguish them."

The Marks: Finally, as to the marks, although both contain the word ASCENT, the Board found that, in light of the evidence of record, the additional wording FEDERAL CREDIT UNION. "which designates Applicant’s entity," would enable consumers to distinguish the marks based on that difference.

Conclusion: "The ubiquity of ASCENT in the financial industry and the additional wording present in Applicant’s mark outweigh the similarities between the services, trade channels, and consumers." And so, the Board reversed the refusal to register. 

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TTABlogger comment: Should ASCENT have been registered in the first place?

Text Copyright John L. Welch 2021.

TTABlog Test: Is PARMA COFFEE Primarily Geographically Descriptive of Coffee and Other Food Items?

The USPTO refused to register the proposed mark PARMA COFFEE for "chocolate; chocolate-based beverages; cocoa; cocoa-based beverages; coffee extracts; coffee and coffee substitutes; honey; honey substitutes; natural sweetener; sugar; tea; tea extracts; tea-based beverages; preparations for making coffee-based beverages” [COFFEE disclaimed], deeming it primarily geographically descriptive under Section 2(e)(2). Applicant conceded that Parma is an Italian city "well known for its architecture, music, art, ham and cheese," but not for the products identified in the application. How do you think this came out? In re A. ZETA S.R.L., Serial No. 88300086 (September 21, 2021) [not precedential] (Opinion by Judge Thomas W. Wellington).

The test for geographical descriptiveness under Section 2(e)(2) has three required elements:

1.  The mark is the name of a place known generally to the public;
2.  The goods for which registration is sought originate in that geographic place; and
3.  Purchasers would be likely to believe that the goods originate in that geographic place.

The inclusion of the generic term COFFEE in applicant's mark does not alter the Section 2(e)(2) analysis.

Under the first element of the test, the relevant inquiry is whether Parma is a generally known geographic location, not whether Parma is "known for" the identified goods. The evidence submitted by Examining Attorney Erin Falk established that "the primary meaning of Parma is to signify the city in northern Italy," a generally known geographic location. 

As to the second element, the Board noted that applicant is an Italian corporation with an Italian address. Applicant did not contend that its goods do not come from Parma. Applicant admitted that its goods are being "developed" in Parma, and so the Board concluded that the goods originate in Parma.

As to the third element, since the geographic location named by the mark is not obscure, a goods/place association may be presumed from the fact that the goods originate in Parma. "Accordingly, because Applicant’s goods are admittedly 'developed' in Parma, Italy, we presume that there is a goods/place association amongst the consuming public." 

Applicant pointed to six third-party registrations for the mark PARMA for various goods and services, as well as its own EU registration for the proposed mark. The Board once again pointed out that each application must be examined on its own record, regardless of any earlier mistake the Office may have made in registering another mark. The EU registration, the Board observed, is irrelevant. 

And so, the Board affirmed the refusal to register.  

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2021.

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

The Board recently decided the appeals from the three Section 2(d) refusals described below. One of the refusals was reversed. How do you think these came out? [Answer in first comment].

In re Stella & Chewy's LLC, Serial No. 88916952 (September 20, 2021) [not precedential] (Opinion by Thomas Shaw) [Section 2(d) refusal of CRAV'N BAC'N BITES for "edible pet treats" [BAC'N BITES disclaimed] in view of the registered mark CRAVIN' CHICKEN DINNER for "pet food; pet treats" [CHICKEN DINNER disclaimed]. Applicant argued that consumers will not encounter the products together in the marketplace because its goods are bacon treats for dogs whereas the registrant's products are chicken dinners for cats.]

In re Keygo LLC, Serial No. 88588055 (September 15, 2021) [not precedential] (Opinion by Judge Thomas W. Wellington) [Section 2(d) refusal of URBAN GREEN in the stylized form shown below, for "towels; wrapping cloth for general purposes; children’s towels; cotton base mixed fabrics; cotton fabric; kitchen towels; washcloths; all of the foregoing goods made from environmentally friendly materials" [GREEN disclaimed], in view of the registered mark urbangreen for various types of furniture "made from environmentally friendly materials" [FURNITURE disclaimed]. Applicant argued that the terms "urban" and "green" are weak formatives for goods in classes 20 and 24.]

In re Weber State Federal Credit Union, Serial No. 88675314 (September 14, 2021) [not precedential] (Opinion by Judge Robert H. Coggins) [Section 2(d) refusal of ASCENT FEDERAL CREDIT UNION for "Credit union services, namely, providing checking and savings accounts, mortgage lending, savings and loan services, bill payment, financing, ATM banking services, individual retirement accounts, payroll tax debiting services, and electronic banking via the global computer  network, excluding providing lease financing for private student loans" [FEDERAL CREDIT UNION disclaimed], in view of the registered mark ASCENT (Stylized) for "providing lease financing for private student loans." Applicant relied on third-party use and registration evidence in arguing that ASCENT is a weak formative in the field of banking and financial services.]

 Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2021.

TTABlog Test: Is MICHELLE MAE for Wholesale Clothing Confusable With MICHELLE MAY NEW YORK for Jewelry?

The USPTO refused to register the proposed mark MICHELLE MAE for "clothing sold wholesale, namely, hoodies, kimonos, shirts, and vests," on the ground of likelihood of confusion with the registered mark MICHELLE MAY NEW YORK for "jewelry" (NEW YORK disclaimed). Applicant argued that the term "NEW YORK" distinguishes the marks, and that the classes of consumers do not overlap because applicant's clothing is sold at wholesale to sophisticated customers. How do you think this appeal came out? In re Ashley Lacer, Serial No. 88692683 (September 15, 2021) [not precedential] (Opinion by Judge Michael B. Adlin).

The Marks: Since the term "NEW YORK" is geographically descriptive, it is of less significance in the likelihood of confusion determination. Personal name marks are common in the fashion industry, often identifying designers. "Thus, clothing consumers exposed to Applicant’s mark may very well assume that the mark identifies a designer because the mark appears to be a personal name; this may be especially true of the 'wholesale' consumers exposed to Applicant’s mark, as they would likely have more exposure to and knowledge of the common use of personal names to identify fashion designers." 

Moreover, consumers could view applicant's mark as a shorthand version of registrant's mark, or conversely see registrant's mark as a version of applicant's mark that identifies where the goods are made. 

Thus the first DuPont factor weighs in favor of likelihood of confusion.

The Goods: Examining Attorney John S. Yard submitted website pages showing that clothing and jewelry are offered under the same marks and travel in the same trade channels: e.g., Chico's, Banana Republic, Ann Taylor, Kate Spade, Vera Wang, and Calvin Klein offer clothing and jewelry. Wholesalers OrangeShine, Fashion Bella, and Judson & Co. do likewise. Indeed, registrant sells both jewelry and clothing (including vests). "In short, the Examining Attorney’s third party use evidence establishes a relationship between the goods."

In addition, the Examining Attorney submitted more than 20 use-based third party registrations showing the same mark registered for clothing and jewelry. 

Applicant contended that the classes of consumers do not overlap because she sells at wholesale. The Board, however, pointed out that the cited registration is not restricted to retail sales. And the website evidence showed that wholesalers sell both clothing and jewelry under the same mark.

Finally there was no evidence supporting applicant's argument that her customers are "sophisticated" and "must be approved by applicant to place orders and such customers are only allowed to purchase items in bulk, which results in an expensive price." In any case, there is no price limitation in the application at issue, and the Board must base is decision on the "least sophisticated potential purchasers" for the goods, "which could encompass inexpensive wholesale shirts or hoodies, perhaps shirts or hoodies purchased by small souvenir shops or street vendors in relatively low 'bulk' quantities."

 Conclusion: Finding that he marks are similar, the goods are related, and the channels of trade and classes of consumers overlap," the Board affirmed the refusal to register. 

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TTABlogger comment: Is this a WYHA? When clearing a mark for clothing, do you check jewelry marks?

Text Copyright John L. Welch 2021.

Third Circuit Rules That TTAB Decision Has No Claim Preclusive Effect on "THE EBONYS" Section 43(a) Claim

[Caveat: Marty Schwimmer and Yours Truly represented David Beasley in this appeal]. In a long-running dispute over the band name THE EBONYS, the U.S. Court of Appeals for the Third Circuit reversed the order of the New Jersey district court dismissing David Beasley's Section 43(a) infringement claim on the ground of claim preclusion. The appellate court ruled that because the jurisdiction of the TTAB is limited to the issue of registrability and does not extend to "use" of a mark or allow for broader remedies, the earlier TTAB judgments against Beasley "do not carry claim preclusive effect against subsequent Article III infringement proceedings under section 43(a)." David Beasley v. William H. Howard, 2012 USPQ2d 960 (3rd Cir. 2021) [precedential].

In 1969, David Beasley formed "The Ebonys" in Camden, New Jersey. The Ebonys were one of several bands that offered a style of rhythm and blues dubbed the "Philadephia Sound." William Howard joined the band in the mid-1990s. In 2012, Howard obtained a federal registration for the band name, without Beasley's authorization. In 2013, Beasley filed a pro se petition for cancellation of the registration on the ground of fraud, but he failed to prove his case and the Board dismissed the petition. In 2017, Beasley filed another petition for cancellation, but that was summarily dismissed by the Board on the ground of claim preclusion. [TTABlogged here].

Claim preclusion, sometimes called res judicata, protects a defendant from the risk of "repetitious suits involving the same cause of action" once "a court of competent jurisdiction has entered a final judgment on the merits." The preclusive effect of the prior judgment extends not only to the claims that were brought, but also to claims that could have been raised and decided in the prior action, even if not actually litigated.  

In April 2019, Beasley filed a handwritten, pro se complaint [pdf here] in the U.S. District Court for the District of New Jersey, asserting a claim under Section 43(a). Howard moved to dismiss on the ground of claim preclusion and the court granted the motion, reasoning that Beasley's claim "turned on 'facts and legal theories [that] were actually litigated" in connection with Beasley's 2017 petition for cancellation. [district court order here].

Beasley appealed to the Third Circuit. The appellate court summarized the case and its decision as follows:

Beasley limits this appeal to whether the District Court properly dismissed his section 43(a) infringement claim, so its central issue is whether Beasley’s prior losses in cancellation proceedings before the TTAB preclude his section 43(a) claim before the District Court. We hold that they do not. Despite the factual similarities between Beasley’s petitions for cancellation and the complaint he filed in the District Court, the jurisdictional limits on the TTAB that accompany its role as the primary venue for narrow questions of trademark registration ensure that proceedings before it do not carry claim preclusive effect against subsequent Article III infringement proceedings under section 43(a).

The appellate court rejected Howard's argument that Beasley could and should have pursed his claims in the district court in the first instance, since a cancellation claim could be included in a civil action. The court pointed out that this "would oblige a plaintiff wishing to avoid claim preclusion not only to assert every available claim, but also to choose the forum with the broadest jurisdiction in which to do so."

 

Granting claim preclusive effect to TTAB proceedings against subsequent infringement suits would penalize trademark holders who promptly oppose or seek to cancel an invalid mark, rather than delay litigation until that party could assert all possible causes of action in the District Court. A rule encouraging such delay would moreover stand in tension with sections 14(1) and 15 of the Lanham Act, 15 U.S.C. §§ 1064(1), 1065, which urge prompt opposition and cancellation petitions by providing that trademark registrations over five years old are generally incontestable and cannot be challenged.

The appellate court observed that, as Beasley conceded, issue preclusion applies to any fraud claim that Beasley may assert in the district court. And so the court affirmed the dismissal of "any claim that Howard defrauded the PTO."

The court also rejected Howard's argument that the district court's dismissal order should be affirmed because Howard's right to exclusive use of the mark is incontestable. The court pointed out that Section 15 of the Lanham Act "makes clear that incontestability only applies 'except to the extent, if any, to which the use of a [registered mark] infringes a valid' state or common law trademark 'continuing from a date prior to the date of registration.'" In other words, incontestability is not a defense against a claim brought by a prior common law user.

And so, the Third Circuit affirmed in part and reversed in part, remanding the case to the district court for further proceedings.

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TTABlogger comment: The Third Circuit noted that its decision aligns with two other circuits: the Ninth Circuit in V.V.V. & Sons Edible Oils Ltd. v. Meenakshi Overseas, LLC, 946 F.3d 542 (9th Cir. 2019) [TTABlogged here], and the Second Circuit in Jim Beam Brands Co. v. Beamish & Crawford Ltd., 937 F.2d 729, 736 (2d Cir. 1991).

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. Answer will be found in the first comment.



In re UDP Labs, Inc., Serial No. 88573702 (September 8, 2021) [not precedential] (Opinion by Judge Peter W. Cataldo). [Mere descriptiveness refusal of BED METRICS (in standard characters, METRICS disclaimed) for "Computer hardware; downloadable computer software for the collection, processing, analysis, measuring, monitoring, tracking and distribution of biometric data; electronic sensors for monitoring movement, respiration, and heart rate," and "Software as a Service (SaaS) services featuring software for the collection, processing, analysis, measuring, monitoring, tracking and distribution of biometric data." Applicant conceded that the mark "is immediately descriptive of goods or services that measure a bed," but it argued that the mark "does not tell the user the goods collect biometric data from a person, analyze it and provide health recommendations."]

In re Deirdre C. Glascoe, Serial No. 88374879 (September 13, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Mere descriptiveness refusal of SCIENTIFIC STUDY OF GOD in standard characters for “Scientific research." Applicant maintained that the proposed mark "is not about humans studying GOD, it’s about GOD studying human behavior, encoding His study results in His logo – the mark, SCIENTIFIC STUDY OF GOD…."]

 

In re DRYPZ, LLC, Serial No. 88711363 (September 13, 2021) [not precedential] (Opinion by Judge Thomas Shaw). [Mere descriptiveness refusal of DRYPZ, in standard characters, for "Therapeutic services, namely, intravenous hydration therapy, intravenous electrolyte replacement therapy, intravenous vitamin infusion therapy, intravenous hangover alleviation therapy, intravenous amino acid therapy, intravenous micronutrient therapy, intramuscular vitamin therapy, lipotropic injection therapy, oxygen therapy, wellness treatments in the nature of therapeutic intravenous drip services and booster shots." Applicant argued that the proposed mark "is suggestive because DRYPZ “could involve several different products or services, such as plumbing, coffee shops, irrigations systems, and fashion."]

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TTABlog comment: How did you do? See any WYHAs here? P.S.: No, that is not a drawing of Rudy Giuliani.

Text Copyright John L. Welch 2021.

TTAB Affirms Section 2(e)(5) Functionality Refusal of Mark Consisting of the Transparency of Plastic Food Packaging Trays

The Board affirmed a refusal to register, on the Supplemental Register, a mark whose "essence" is "the transparent nature of the goods," for "Rigid plastic overwrap trays for packaging of uncooked meals," finding that the proposed mark is de jure functional under Section 2(e)(5). The Board, after sorting through the convoluted and messy prosecution history and the disjointed and confusing briefing by applicant, determined that applicant was not attempting to claim a "color" but rather the absence of color. In re Converter Manufacturing, LLC, Serial No. 87587855 (September 14, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

Examining Attorney Gene V.J. Maciol, II, submitted webpages discussing the functional benefits of transparent packaging for foods. One webpage stated that nearly one-third of shoppers gauge the freshness of a product by its appearance rather that its "use-by" date. Applicant argued, however, that for uncooked meat, opaque trays are desirable so that the consumer does not see any juices flowing (or purging) freely in the package, and therefore a clear tray is less functional than an opaque tray.

Applicant pointed to the first three Morton-Norwich factors to show that its proposed mark is not functional. First, there are no applicable utility patents. Second, applicant has not advertised any utilitarian advantages over other designs. And third, there are many alternative designs available.

The Examining Attorney disputed the applicant's argument because not all meats "purge," vacuum-packed meats are not susceptible to "purging," and meat-packers would desire the clear packaging in order to increase sales.

The Board pointed out that applicant's argument regarding the "anti-functional" nature of its transparent packaging was unsupported by sworn statements or other evidence. In short, "[a]ttorney argument is no substitute for evidence." Moreover, the argument was counter-intuitive:

Applicant would be acting contrary to its own economic self-interest in offering transparent overwrap trays if “packers of uncooked meats seek to obscure their customers’ view of juices which issue from uncooked meats,” 13 TTABVUE 5, and “seek to use opaque trays, through which neither the juices nor a juice-engorged pad can be viewed by their customers.” Id. It would be irrational for Applicant to “def[y] the common sense in this industry,” id., by producing transparent trays rather than focusing solely on the production of opaque trays to satisfy the claimed demand of meat packers for only such packaging. Yet Applicant has not only developed its transparent packaging as an alternative to opaque packaging, but has sought to register the transparent packaging as its trademark. Applicant’s actions belie its claim that its product is “anti-functional.”

Finally, applicant's "anti-functional" argument was contradicted by its own marketing brochure, which touts the utilitarian benefits of "Clarity," "Efficiency," and "Strength." Under the heading "Clarity," applicant states that the "crystal clear" color "allows you to make your product the STAR of the package." This is "a clear reference to the fact that the transparent nature of this particular overwrap tray in Applicant’s product line enables the packers’ customers, the ultimate consumers of the uncooked meats, to see the products prior to purchase."

Thus, contrary to applicant’s unsupported arguments, "at least some meat packers want to make their meats 'the STAR of the package' by showing the goods to their customers, and for those packers, Applicant touts the transparent nature of its goods as a functional benefit."

The Board found this advertising to be strong evidence of functionality. The brochure "persuasively demonstrates that the claimed mark is functional because 'it is essential to the use or purpose' of the trays in displaying the packers' uncooked meat products ...." (quoting TrafFix, 58 USPQ2d at 1006). With functionality established under the Inwood test, it was unnecessary to undergo a full Morton-Norwich analysis.

Therefore the proposed mark is not eligible for registration on the Supplemental Register, and so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: If this "mark" were to register, where would you put the R-in-a-circle symbol?

Text Copyright John L. Welch 2021.

"NAMX" Not Confusable with "NYMEX" for Electronic Financial Services, Says TTAB

In this nearly-six-year-old opposition proceeding, the Board rejected the New York Mercantile Exchange's Section 2(d) claim, concluding that confusion is not likely between opposer's NYMEX mark and applicant's mark NAMX, both for various electronic financial services. "The conditions under which sales are made (i.e., the degree of purchaser care) and the dissimilarity of the marks" outweighed the other DuPont factors. New York Mercantile Exchange, Inc. v. North American Monetary Exchange Corporation, Opposition No. 91225279 (September 10, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Services: The Board found applicant’s “clearing and reconciling financial transactions” and “currency exchange services” to broad enough to encompass opposer’s “providing … electronic exchange markets for trading, clearing, confirming transactions and other services in the field of commodity futures, options and other derivatives.”

Because the services are in part legally identical, the Board presumed that those services travel in the same trade channels to the same classes of consumers.

Conditions of Sale: Opposer's NYMEX services are rendered to individuals and companies that trade precious and industrial metals and energy contracts, as well as those desiring to hedge risk, create security interests in metals, or invest in metals for the future. The Board concluded that "[t]he consumers who encounter both Opposer’s mark and Applicant’s mark are highly sophisticated, careful individuals who exercise a high degree of purchasing care."

Strength of Opposer's NYMEX Mark: Opposer contended that NYMEX is a strong and famous mark, but its evidence fell short of the latter target.

Opposer’s testimony and evidence regarding the use of its NYMEX mark prove that NYMEX is a commercially strong, but not famous mark. First, we note that Opposer did not introduce any evidence of unsolicited media discussing the renown of Opposer’s NYMEX mark. Second, the representative samples of Opposer’s advertising focus on the CME GROUP mark and CME GROUP logo, not the NYMEX mark. This throws doubt on LaPierre’s testimony that Opposer spends a million dollars a year advertising the NYMEX service mark. Based on Opposer’s testimonial and evidentiary showing, it appears that a million dollars a year is primarily spent advertising CME GROUP and the CME GROUP logo with a nod to NYMEX.

The Marks: "Opposer’s consumers are sophisticated consumers who recognize the mark [NYMEX] as an abbreviation of New York Mercantile Exchange." Applicant's mark NAMX is "an arbitrary combination of letters with no apparent meaning based on the record before us as the letters do not correspond identically to the first letter in each of the words of the Applicant’s name." The Board therefore concluded that the marks have different meanings and engender different commercial impressions. 

Opposer argued that the marks look alike, but the Board disagreed. "Opposer’s mark NYMEX engenders the commercial impression NY MEX or New York Mercantile Exchange in part because NY is a well-known abbreviation for New York. On the other hand, Applicant’s mark NAMX is an arbitrarily arranged combination of letters with no apparent meaning." Furthermore, opposer's mark begins with "NY", which will catch the consumer's attention and will distinguish the marks.

The Board also disagreed with opposer's contention that the marks sound alike. The Board noted that there is no correct pronunciation of a mark that is not a common word.

Nevertheless, because consumers recognize the letters NY in Opposer’s mark NYMEX as the well-known abbreviation for New York, to the extent it is pronounced, consumers will say “New York Mex” or “NY Mex.” On the other hand, based on standard English pronunciation, it is likely that consumers will pronounce Applicant’s mark, if they say it at all, as Nam X or Name X because they will turn Nam into something they recognize. However, it is just as likely that consumers will refer to NAMX by its letters (i.e., N-A-M-X).

The Board found the marks to be more dissimilar than similar.

Conclusion: The Board dismissed the opposition.

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TTABlogger comment: I wonder what a survey regarding pronunciation would have yielded?

Text Copyright John L. Welch 2021.

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

The Board recently decided the appeals from the three Section 2(d) refusals described below. One of the refusals was reversed. Let's see how you do. [Answer in first comment].

In re Michael-David, LLC, Serial No. 88662293 (August 28, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman) [Section 2(d) refusal of NORTHCOAST WINE CO. for "wine" in view of the registered marks NORTH COAST BREWING, in standard character form, and the two word-plus-design marks shown immediately below, for "beer, ale, lager, stout and porter," the three cited registrations being owned by the same entity.]

In re James Bay Distillers, Ltd., Serial No. 88510595 (September 9, 2021) [not precedential] (Opinion by Judge Thomas Shaw) [Section 2(d) refusal of the mark GALLOPING GOOSE for "Distilled spirits" in view of the registered mark GALLOPING GOSE for "beer" [GOSE disclaimed].

In re Tangled Roots Beverage Company LLC, Serial No. 88685983 (September 9, 2021) [not precedential] (Opinion by Judge Cindy B. Greenbaum) [Section 2(d) refusal of the word-plus-design mark shown below, for "beer," in view of the registered mark PAINTBOX for "alcoholic beverages except beers."]

  Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2021.

"Advanced Practice Before the TTAB," IP Institute, USC Gould School of Law, September 22, 2021 (11:30 AM (PST))

The USC Gould School of Law will hold its virtual IP Institute on September 21-23, 2021, featuring a "sophisticated discussion of emerging issues and best practices in copyright, patent, trademark, trade secret and related fields." Speakers and panelists will include federal judges, leading academicians, in house counsel, national officials, and top practitioners. [Brochure here]. Yours truly, the TTABlogger, will join a panel entitled "Advanced Practice Before the TTAB," with TTAB Judge Christoper Larkin, former TTAB Judge (and now Assistant Professor at Southern Illinois University School of Law) Lorelei Ritchie, TTAB Interlocutory Attorney Mary Beth Myles, and moderator Raffi Zerounian. The panel discussion will being at 11:30 AM (PST) for one hour.

Although practice before the Trademark Trial and Appeal Board (TTAB) may feel familiar for federal court practitioners, there are many traps for the unwary. This panel will discuss advanced practice tips for litigation before the TTAB, including non-obvious practical do’s and don’ts of TTAB practice and insights into how counsel can best present a case before the TTAB. The panel will touch on the Trademark Modernization Act and the recent uptick in questionable trademark application filings by non-US parties.

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

Precedential No. 23: TTAB Refuses to Allow Withdrawal of Express Abandonment of Opposed Application

In a straightforward application of Trademark Rule 2.68, the Board denied Applicant Grüne Erde's motion for relief from judgment after Grüne Erde had filed an express abandonment of its opposed multi-class application for the mark shown below. The Board had deemed the application abandoned in its entirety without prejudice (since the opposers had consented to the withdrawal) and it dismissed the opposition without prejudice. Grüne Erde claimed that it had mistakenly failed to limit the abandonment to its Class 3 goods, the only target of the opposition, and it asked the Board to allow it to withdraw the abandonment. No dice, said the Board. Rwachsberg Holdings Inc. and Apollo Health and Beauty Care Inc. v. Grüne Erde Beteiligungs GmbH, 2021 USPQ2d 926 (TTAB 2021) [precedential].

FRCP 60(b)(1) provides that a party may be relieved from a final judgment, order, or proceeding because of "mistake, inadvertence, surprise, or excusable neglect." However, Rule 2.68 "unequivocally states that '[a] request for abandonment or withdrawal may not subsequently be withdrawn.'" Therefore, Grüne Erde's requested withdrawal of its express abandonment was impermissible.

End of story.

Read comments and post your comment here.  

TTABlogger comment: So does Grüne Erde file a new application? 

BTW: Why didn't the Federal Rule supersede Trademark Rule 2.68? Rule 2.116 states: "(a) Except as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure."

Text Copyright John L. Welch 2021.

Trademark Reporter: July–August 2021 (Vol. 111 No. 4) issue

Looking for something interesting to read? In any case, here's the July-August 2021 issue of The Trademark Reporter (TMR). [pdf here]. Editor-in-Chief Willard Knox summarizes the contents below.

In this issue we offer our readers an article exploring how the mismatch between market reality and European Union trademark law permits “copycats” to escape traditional trademark infringement tests, a commentary responding to a previously published TMR piece on trademark dilution, and a review of a comprehensive one-volume treatise on Canadian unfair competition law.

The Siren Song of the Subtle Copycat—Revisiting Trademark Law with Insights from Consumer Research, by Martin Senftleben and Femke van Horen

In this article, the authors examine how the mismatch between market reality and European Union trademark law permits “copycats” with a subtle imitation strategy to slink away (as it were) from applicable infringement tests.


Commentary: Response to the Commentary Entitled “The Science of Proving Trademark Dilution”, by Hal Poret

In this commentary that continues the TMR’s tradition of authors engaging in a robust and respectful dialogue about issues of importance, the author argues the methodologies proposed in “The Science of Proving Trademark Dilution,” 109 TMR 955 (2019), fail to meaningfully test for likelihood of dilution.


Book Review: The Canadian Law of Unfair Competition, by Daniel R. Bereskin, by Julian Bibb

The reviewer of this book on the Canadian law of unfair competition finds that the author’s critical commentary and thoughtful observation make this one-volume treatise indispensable.

This issue of the TMR is Copyright © 2021, the International Trademark Association, and is made available with the permission of The Trademark Reporter®.

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Another Fraud Claim Fails to Clear the "Deceptive Intent" Hurdle

Fraud is very difficult to prove. It's not the falsity of the statement, or its materiality, that causes the problem. It's proving an intent to deceive the USPTO. Petitioner Jason Green tripped over that particular hurdle in this proceeding seeking cancellation of a registration for the mark OMNI BIOTIC for food supplements. Green claimed priority and likelihood of confusion with his common law mark OMNIBIOTICS for supplements, as well as fraud. He proved neither. Jason Green v. Institut Allergosan Pharmazeutische Produkte Forschungs- und Vertriebs GmbH, Cancellation No. 92069600 (September 1, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

Section 2(d):  The Board dismissed this claim because Petitioner Green failed to show, by a preponderance of the evidence, that he used the OMNIBIOTICS mark prior to respondent’s first use of its OMNI BIOTIC mark in the United States in 2009, 2011, and 2014. Although respondent's sales in the U.S. may have been minimal, they sufficed to establish priority.

Fraud: Petitioner's fraud claim was based on the allegation that respondent did not have a bona fide intent to use the OMNI BIOTIC mark when it filed its Section 66(a) application that matured into the challenged registration.

To show fraud, Petitioner must prove that (1) Respondent made a false representation to the USPTO, (2) the false representation was material to the registrability of the mark, (3) Respondent had knowledge of the falsity of the representation, and (4) Respondent made the representation with intent to deceive the USPTO.

Petitioner Green insisted that respondent did not have a bona fide intent because it introduced "no documentary evidence to show any intention of [sic] plans for using its mark in the United States at the time of filing the OMNI BIOTIC mark." The Board pointed out that it didn't need to decide whether respondent had a bona fide intent because "that is not the claim before us." Greem asserted fraud, and "even if Respondent materially misrepresented to the USPTO that it had a bona fide intention to use the mark in commerce, Petitioner must show that the false representation was made with a 'knowing intent to deceive.'"

Petitioner makes no effort to do so, instead arguing that “the submitted OMNI BIOTIC application contained knowingly false material representations of fact with the intent to deceive the USPTO regarding use of food supplement products in International Class 5, and therefore constitutes fraud.” ***  Petitioner essentially assumes the existence of a “knowing intent to deceive” from the fact that a misrepresentation was made.

Respondent's witness testified that "since at least as early as 2009, IAP has steadfastly intended to use the OMNI BIOTIC mark in U.S. commerce in connection with the goods identified in the registration under attack in this proceeding." Petitioner did not cross-examine her or otherwise impeach her testimony.

"Absent proof of the requisite intent to mislead the PTO, 'even a material misrepresentation would not qualify as fraud under the Lanham Act,'" 40-0, 2021 USPQ2d 253, at *24 (quoting Bose, 91 USPQ2d at 1940), and Petitioner's "fraud claim fails and is dismissed."

Read comments and post your comment here.

TTABlogger comment: In the two cases since Bose in which the Board found fraud, the finding of deceptive intent was based on the contradictory and evasive testimony of the defendant. So if you want to prove fraud and you don't have a "smoking gun" document, you need to examine the other side's witnesses.

Text Copyright John L. Welch 2021.

Martha B. Allard Appointed to Trademark Trial and Appeal Board

Chief Judge Gerard F. Rogers has announced the appointment of Marth B. Allard as an Administrative Trademark Judge at the Trademark Trial and Appeal Board. Judge Allard's duties commenced on August 1, 2021. This appointment brings the total number of TTAB judges to 27, including Chief Judge Rogers and Deputy Chief Judge Mark Thurmon.

Martha Allard has practiced in the field of intellectual property (IP) law for more than 20 years. Ms. Allard comes to the Board from a position as Counsel to the Nashville, Tennessee law firm of Bass Berry & Sims PLC. Previously, she was an attorney with four other law firms, in New England and Tennessee. At the Bass Berry firm she was in charge of the trademark practice and docket. In representing firm clients, Ms. Allard was involved in both ex parte and inter partes proceedings at the USPTO, litigation in federal courts, and domain name proceedings and transactions, both for businesses and individuals. Her business clients included private and public companies, including Fortune 100 companies, healthcare companies, and technology companies as well as sports teams. As the head of the Bass Berry trademark practice, Ms. Allard was responsible for firm clients’ cases at the TTAB, as can be seen from the many electronic file records at the TTAB that include filings made by Ms. Allard and her associates. Because of her litigation experience, Ms. Allard was invited by the Chief District Judge for the Middle District of Tennessee to serve as a member of a select group of practitioners and judges tasked with proposing amendments to the local rules of civil procedure for that district.

Active in both IP professional organizations and in her community, Ms. Allard has held many leadership positions, including as a member of the Board of Directors, Vice President and President of the Tennessee IP Law Association. She has given presentations and written articles on IP practice considerations and legal issues.

A graduate of the University of Kentucky with a bachelor’s degree in Electrical Engineering, Ms. Allard earned her law degree, cum laude, from Western New England University School of Law, in Springfield, Massachusetts, where she was a member of the law review.

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

CAFC Rejects Constitutionality Challenge to Appointment of Administrative Trademark Judges, Affirms TTAB's "SCHIEDMAYER" False Association Decision

The CAFC soundly upheld the TTAB's decision ordering cancellation of a registration for the mark SCHIEDMAYER for pianos [TTABlogged here] on the ground of false association under Section 2(a). The appellate court first rejected the appellants' challenge to the constitutionality of the appointment of TTAB Administrative Law Judges, ruling that their appointments did not suffer from the defect that the Supreme Court recently fixed in U.S. v. Arthrex with regard to PTAB judges.  Piano Factory Group, Inc. and Sweet 16 Musical Properties, Inc. v. Schiedmayer Celesta GmbH, 2021 USPQ2d 913 (Fed. Cir. 2021) [precedential].

Constitutional Challenge: Appellants contended that the administrative trademark judges (ATJs) who sat on the Board panel were appointed in violation of the Appointments Clause of Article II of the Constitution, and therefore the Board's decision must be vacated. The Director of the USPTO intervened to argue that the appointments were lawful.

Appellants relied on U.S. v. Arthrex, Inc., 141 S. Ct. 1970 (2021), wherein the Supreme Court held that the administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB), because they exercised unreviewable authority in deciding ex parte review proceedings, were acting as principal officers of the United States. Under the U.S. Constitution, principal officers must be appointed by the President and confirmed by the Senate, and since APJs were not so appointed and confirmed they were acting unlawfully. Appellants argued that the ATJs were likewise principal officers of the United States, and were unconstitutionally appointed.

 

In Arthrex, the Court solved the problem by making PTAB determinations reviewable by the Director of the USPTO, observing that this approach would "follow the almost-universal model of adjudication in the Executive Branch" and "aligns the PTAB with the other adjudicative body in the PTO, the Trademark Trial and Appeal Board." 141 S. Ct. at 1987. The CAFC observed that the Court "thus effectively confirmed that in light of the Director’s authority over decisions of the TTAB, the statutory scheme governing TTAB decision-making is not subject to the Appointments Clause problem the Court identified with regard to the PTAB."

 

Moreover, the role of the PTO Director was addressed in the Trademark Modernization Act of 2020 (TMA), which explicitly confirmed the Director's authority to review decisions of the TTAB. "The current trademark statutes plainly render the ATJs 'inferior officers,' making their appointments by the head of a department, i.e., the Secretary of Commerce, lawful."

However, the Board decided the instant cancellation proceeding in 2019, prior to enactment of the TMA, but the CAFC pointed out that the Director, by reason of the Intellectual Property and Communications Omnibus Reform Act of 1999, "has for more than twenty year had the authority to direct that any Board case be decided by a single member of the TTAB, either initially or on rehearing." Since the Director is a standing member of the TTAB, "he enjoys the authority to designate himself as the sole member of a TTAB rehearing panel, thereby allowing him to review and reverse decisions of a panel of ATJs." 

The end result of the Court’s decision in Arthrex was to create a regime very similar to the trademark statutory scheme in place as of 2019. There was at that time no limitation on the composition of TTAB panels, see 15 U.S.C. § 1067, and the Director had broad authority to control TTAB proceedings, see id. § 1123 (2000 ed.). The Supreme Court held highly similar conditions sufficient to render APJs inferior officers despite the “shall issue and publish” language of section 318(b). The same result necessarily follows with respect to ATJs and the language of 15 U.S.C. § 1092 (2006 ed.).

And so, the CAFC rejected Appellant's challenge to the legitimacy of the TTAB panel that decided this case.

 

False Association: The CAFC ruled that the TTAB had properly applied the four-factor test for determining whether a registration should be canceled under Section 2(a) because it falsely suggests a connection with another person or entity. It saw no error in the Board's finding that the name "Schiedmayer" points uniquely and unmistakably to the appellee, and it concluded that substantial evidence supported the Board's findings that the Schiedmayer name enjoyed fame and reputation in the field of keyboard instruments, that appellants' pianos were sufficiently similar to appellee's celestas, and that appellants intended to create a connection with appellee. 

 

And so, the CAFC affirmed the Board's decision, summing up its view of the case as follows:

 

Taking a step back from the doctrinal principles discussed above, a fair characterization of what has gone on in this case is that Sweet 16 has falsely labeled its pianos with a German-sounding name to suggest that its pianos are high-quality European instruments, rather than lower quality instruments made elsewhere. And in so doing, Sweet 16 has not chosen just some arbitrary German-sounding name to stencil on its no-name pianos. Instead, it has chosen a name long associated with a German manufacturer of high-end keyboard instruments, a manufacturer that still produces celestas. The inference is inescapable that Sweet 16 is attempting to take advantage of the reputation of Schiedmayer products by suggesting that its Schiedmayer-branded pianos were made by a Schiedmayer company and can therefore be assumed to be of high quality. That is the essence of “falsely suggest[ing] a connection” with another entity under section 2(a) of the Lanham Act. To put the matter succinctly, as the Second Circuit did more than a century ago, “No one has a right to apply another’s name to his own goods.” Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407, 410 (2d Cir. 1917).

Read comments and post your comment here.

TTABlogger comment: I don't know about you, but for me the sound of the celesta gets to be annoying after about two minutes.

Text Copyright John L. Welch 2021.

TTAB Affirms Unlawul Use Refusal of ITU Application for "FOR JOY" for CBD-Containing Tea

The Board upheld the USPTO's refusal to register the proposed mark FOR JOY for, inter alia, tea-based beverages containing CBD, on the ground that the goods are per se violations of the Food, Drug, and Cosmetic Act (FDCA), and therefore applicant lacks the required bona fide intent to lawfully use the mark in commerce under Sections 1 and 45. Applicant argued that it has "a bona fide intent to show legal use . . . in commerce in the future because it reasonably anticipates that the legal framework will change within a reasonable amount of time." Not good enough, said the Board. In re Joy Tea Inc., Serial No. 88640009 (September 1, 2021) [not precedential] (Opinion by Judge Robert H. Coggins ).

 

 

As Examining Attorney Tasneem Hussain pointed out, the FDCA prohibits "any food to which has been added . . . a drug or biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public . . . ." 21 U.S.C. § 331(ll). There was no question that applicant’s goods include food to which CBD has been added, that CBD was the subject of substantial clinical investigations during prosecution of the involved application, and that some of applicant’s goods are therefore currently illegal under the FDCA.

The Board saw the issue at hand as "narrow and simple: whether an applicant for a federal trademark registration can have a bona fide intent to use its mark in commerce on goods that are currently prohibited under federal law but that may, perhaps, become lawful in the future."

Applicant sought to overturn, or at least narrow, the Board's holding in JJ206 that there can be no bona fide intent to use the mark in lawful commerce if the goods are unlawful. [TTABlogged here]. It argued that it has a "subjective intent to use its mark in future legal commerce" because it "anticipat[es] a beneficial change in the law within a reasonable amount of time."

The Board, however, ruled that it is "not possible to have a bona fide intent to use a mark on goods which are unlawful at the time of the application." Otherwise, the result would be "a mere reservation of a right in a mark until such time, if ever, at which the currently unlawful goods become lawful."

And so, the Board affirmed the refusal to register. 

 

Read comments and post your comment here.

TTABlogger comment:

What if applicant applied to register the mark just for tea, with no mention of CBD? It could keep the application alive for three years after the notice of allowance, and maybe its CBD-infused tea would be legal by then. Text Copyright John L. Welch 2021.