TTAB Posts November 2021 (Video) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled eight (VIII) oral hearings for the month of November 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.

November 2, 2021 - 10 AM: In re Garan Services Corp., Serial No. 88674888 [Section 2(d) refusal of MATCH STUDIO for "clothing, namely, tops and bottoms," in view of the mark MATCH in standard character and design form for overlapping clothing items.]

 November 3, 2021 - 2 PM: In re Danica Patrick Brands, LLC, Serial No. 88712080 [Section 2(d) refusal to register DANICA for wine in view of the registered mark DANIKA RANCH for "alcoholic beverages, except beers."]

 

November 4, 2021 - 1 PM: In re OptConnect Management, LLC, Serial Nos. 88458681 and 88458653 [Section 2(d) refusal to register OPTCONNECT MANAGED WIRELESS SOLUTIONS & Design and OPTCONNECT for goods and services used to connect devices to the internet of things, in view of the registered mark OPCONNECT for "interactive computer kiosks comprising computers, computer hardware, computer peripherals, and computer operating software, for use in digital advertising and electric vehicle charging."]

November 9, 2021 - 10 AM: In re BFY LLC, Serial No. 88190652 [Section 2(d) refusal of SLEEPEEZ for "Homeopathic pharmaceuticals for use in the treatment of children's sleeping problems; Medicated candies for use in the treatment of children's sleeping problems," in view of the registered mark SLEEPEASE for “Homeopathic preparations in the nature of an oral spray for the treatment of insomnia and symptoms of insomnia such as wakefulness, restlessness, caffeine sensitivity, emotional stress and anxiety.”]

November 10, 2021 - 1 PM: American Marriage Ministries v. Universal Life Church Monestary Storehouse, Opposition No. 91237315 [Opposition to registration of the mark GET ORDAINED for "On-line retail store services featuring clothing in the nature of shirts, hats, and stoles, stationery, business cards, bumper stickers, license plate holders, badges, pens, pins, musical sound recordings, bookmarks, bread, aromatic oil, portfolios, and publications in the nature of books, hand-outs, workbooks, manuals, brochures, and newsletters in the fields of religion, spirituality, marriage, law, and management," on the grounds of genericness, mere descriptivness, and failure-to-function as a source indicator.]

November 16, 2021 - 1 PM: In re Gunther's Quality Ice Cream, Inc., Serial No. 88646255 {Section 2(d) refusal of GUNTHER'S for "ice cream; Non-dairy frozen confections" and for "restaurant services featuring ice cream and non-dairy frozen confections, namely, frozen dessert parlors" in view of the registered marks GUNTHER'S GOURMET for "sauces" and GUNTHER TOODY'S for restaurant services.]

November 18, 2021 - 1 PM: In re L-Nutra, Inc., Serial No. 88757432 [Mere descriptiveness refusal of  5-DAY FASTING DIET for "Nutritionally balanced prepared meals for medical use consisting primarily of grains, nuts and vegetables, sold to the consumer only after a medical consultation with a doctor or other medical personnel, or upon the completion of a medical questionnaire; nutritional meal replacement drinks, soups and snacks adapted for medical use, sold to the consumer only after a medical consultation with a doctor or other medical personnel, or upon the completion of a medical questionnaire."]

November 30, 2021 - 1 PM: In re Nittany Corporation, Serial No. 88439889 [Refusal to register WEGE for beer on the ground that "the specimens of record do not show the applied-for mark in use in commerce on the goods."]

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TTABlog comment: Any predictions? Any WYHAs?

Text Copyright John L. Welch 2021.

Precedential No. 28: TTAB Sustains Opposition to "I AM THE MARS GENERATION" for Licensing Services on Ground of Nonuse

Alyssa Carson and Abigail Harrison both desire to be the first human being to set foot on Mars, which led to their clash over the term "Mars Generation." Ms. Harrison won, at least at the TTAB. The Board sustained her company's opposition to registration of the marks I AM THE MARS GENERATION and WE ARE THE MARS GENERATION for "licensing of advertising slogans and cartoon characters," finding that Applicant Carson (Alyssa's Father) "did not offer the recited service under the marks in commerce as of the respective filing dates of the use-based applications." The Mars Generation, Inc. v. Albert G. Carson IV, 2021 USPQ2d 1057 (TTAB 2021) [precedential] (Opinion by Judge Chythia C. Lynch).

Click on picture for larger image

Section 45 of the Trademark Act provides, in pertinent part, that a mark is considered to be in use in commerce for services "when it is used or displayed in the sale or advertising of services and the services are rendered in commerce." When a mark has not been used in commerce by the day the use-based application is filed, the application is void ab initio. Couture v. Playdom, 778 F.3d 1379, 113 USPQ2d 2042, 2043-44 (Fed. Cir. 2015).

Applicant Carson's discovery responses established a prima facie case of nonuse as of the filing dates of the underlying applications, and Carson's evidence failed to overcome it. Carson submitted a declaration that contained only conclusory statements that “[e]ach year from 2015 through the present,” he has provided “licensing of advertising slogans and cartoon characters” under both proposed marks “to a wide range of customers located throughout the United States." However, he identified no such customers.

Pages from Carson's website and social media accounts made no reference to "licensing of advertising slogans or cartoon characters." In short, he offered no probative documentary evidence that he ever engaged in such licensing.

The only documents in the record that include the proposed marks and also refer in any way to the recited service are undated documents (the specimens of use) that Applicant has identified in the applications as “advertising.” Even if the “specimens could be found to be technically acceptable” for advertising the service, this does not suffice to establish the mark was actually used in commerce for the service, where “there is no corroborating evidence that applicant offered any of the services identified in the application[s] at the time he filed [them].” See Nationstar Mortg., 112 USPQ2d at 1373-74.

The Board observed that "an applicant’s preparations to use a mark in commerce are insufficient to constitute use in commerce. Rather, the mark must be actually used in conjunction with the services described in the application for the mark.” Aycock, 90 USPQ2d at 1308; see also Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859 F.3d 1023, 123 USPQ2d 1024, 1029 (Fed. Cir. 2017)."

And so, the Board sustained the opposition.

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TTABlogger comment: I'm not sure why this highly fact-based decision was deemed precedential.

Text Copyright John L. Welch 2021.

TTAB Reverses Refusal of SPEED EZ for Cleaning Brushes, Finding Specimen of Use Acceptable

The Board reversed a refusal to register the mark SPEED EZ for "cleaning brushes for use on automobiles, motorcycles, boats and other vehicles; cleaning brushes for use on wheelchairs; cleaning brushes for use on bicycles," finding Applicant's specimen of use to be acceptable. The examining attorney had maintained that the specimen was a "digitally altered image or a mock-up of the mark on the goods or their packaging" that did not show the proposed mark in actual use in commerce. In re E Z Products, Inc., Serial No. 87906813 (October 21, 2021) [not precedential] (Opinion by Judge David Mermelstein).

Click on photos for larger images

The examining attorney explained: "it appears that the applicant has merely printed the applied-for mark on a piece of paper and attempted to attach it to its current product labels. Thus, the submitted specimen cannot be accepted." Applicant's counsel responded that the label "is not a piece of paper, but an actual label that is affixed to the tag." 

Counsel argued that "[t]here is no rule that says a label when affixed to the goods cannot cover other graphics (in this case the bubbles), nor is there a rule that says the wording has to be in the same font or match the arrangement of the other wording on the tag."

Applicant provided a photograph of one of its products as it is displayed in the marketplace, showing the specimen tag on the product.

The Board sided with the applicant:

Applicant has stated that it uses the mark in commerce and has provided a full explanation of how it uses the mark by affixing the label to tags for the goods. As pictured above, in the actual sales environment, the provided specimen is exactly how the mark is actually used in commerce. Thus, the submitted specimen and the photographs of actual use are consistent and do not contradict each other. While the mark is not preprinted onto the tag, the fact that Applicant printed a label that it affixed to a preprinted tag is not prohibited nor does it make the specimen a mockup. See In re Chica, Inc., 84 USPQ2d 1845, 1847-48 (TTAB 2007) (temporary nature of specimens is not a characteristic that is “fatal” to registration). See also In re Brown Jordan Co. 219 USPQ 375, 376 (TTAB 1983) (the fact that mark is not stamped on tags affixed to the goods until after order is received is not prohibited).

And so, the Board reversed the refusal.

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TTABlogger comment: Who says a specimen of use has to look professional?

Text Copyright John L. Welch 2021.

TTAB Affirms Section 2(a) Deceptiveness Refusal of SMART SUTURE for Bandages

The Board upheld a Section 2(a) deceptiveness refusal of the proposed mark SMART SUTURE for "bandages for surgical use for skin wounds having mechanical hooks that penetrate the skin on either side of the wound for attachment to the skin." The Board found that "sutures" and "bandages" are separate and distinct products, that the term SUTURE misdescribes the goods, that purchasers would believe the misdescription, and that the misdescription is material to the purchasing decision. In re BandGrip, Inc., Application Serial No. 88265665 (October 20, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

Under Section 2(a), a mark must be refused registration as deceptive if:

• (1) it consists of or comprises a term that misdescribes the character, quality, function, composition, or use of the goods;
• (2) prospective purchasers are likely to believe that the misdescription actually describes the goods; and
• (3) the misdescription is likely to affect the purchasing decision of a significant or substantial portion of relevant consumers.

Furthermore, a mark may be deceptive even if only a portion of the mark is deceptive.

The AMERICAN HERITAGE DICTIONARY defines “suture” as, inter alia, “the fine thread or other material used surgically to close a wound or join tissues or the stitch so formed.” The MERRIAM-WEBSTER DICTIONARY defines “bandage” as follows: 1) a strip of fabric used especially to cover, dress, and bind up wounds 2) a flexible strip or band used to cover, strengthen, or compress something." Internet evidence confirmed that sutures and bandages are separate and distinct products. There was minimal evidence "that anyone uses sutures to refer to bandages or vice versa."

Moreover, applicant's own website compares its product to sutures. In sum, "Applicant’s product is 'a strip of fabric used especially to cover, dress, and bind up wounds,' not 'the fine thread or other material used surgically to close a wound or join tissue.'"

Applying the Section 2(a) deceptiveness test, the Board found that: 

• (1) the mark SMART SUTURE consists of or contains a misdescription of the goods because a "suture" is not a "bandage." 
• (2) Moreover, "because doctors, nurses and other caregivers use both sutures and bandages for wound care and they may use them together, Applicant's use of 'sutures' in its mark is not only false but is believable and would mislead consumers into thinking that the goods associated with the mark are sutures." 
• (3) The record evidence convinced the Board that "the type of material used bind or close wounds is material to the purchasing decision of a significant portion of the relevant consumers."

All three prongs of the test having been met, 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: Is "BEDLAM VODKA & Design" for Vodka Confusable With "BEDLAM! & Design" for Beer?

The USPTO refused to register the mark BEDLAM VODKA in the word-plus-design form shown below left, for vodka [VODKA disclaimed], finding confusion likely with the registered mark BEDLAM! in the word-plus-design form shown below right, for beer. Applicant argued that the design elements of the marks are distinct, and further that "vodka and beer are not related on this record because the Examining Attorney proffered evidence of only ten producers that offer both vodka and beer out of more than 7,000 breweries and 424 vodka distilleries in the United States as of 2018." How do you think this appeal came out? In re Graybeard Distillery, Inc., Serial No. 88182246 (October 19, 2021) [not precedential] (Opinion by Judge Melanye K. Johnson).

The Board noted once again that there is no per se rule that all alcoholic beverages are related. However, Examining Attorney Sang Min (Sean) Lee submitted printouts from twelve websites showing ten third-party producers offering both vodka and beer, not infrequently at combination brewery/distilleries. Moreover, some producers offer both vodka and beer under the same mark or house mark (Crown Valley, Dogfish, Rogue, Two Brothers, Brickway, and Round Barn). This evidence convinced the Board that the goods are related.

The trade channels for the involved goods overlap: including breweries and combination brewery/vodka distilleries, as well as liquor stores and other retail establishments which sell both vodka and beer. The consumers of the goods are the same: the general public.

Turning to the marks, the Board observed that, "when evaluating a composite mark consisting of words and a design, the literal elements are normally accorded greater weight because they are likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services."

Applicant argued that "Registrant’s 'snarling' orange and yellow bear's head design with 'large, pointy teeth,' 'fanciful horns,' and a crown is dominant, catching the viewer's eye, while the sole literal element, 'BEDLAM!' is much smaller than the bear’s head." Moreover, because of the exclamation point, the cited mark "should be spoken with force and emphasis, further distinguishing it from 'BEDLAM,' featured without an exclamation point."

The Board, however, found that the word "BEDLAM" in applicant's mark stands out as the most visually prominent literal element, conveying the strongest commercial impression. As to the cited mark, the word "BEDLAM!" is positioned "so as to draw the eye first to the word and then to the bear’s head design element." The Board observed that "[t]he 'L' in 'BEDLAM!' is connected to the bear's head, serving to draw the viewer’s eye from the horizontal line segment of the 'L,' up through the vertical line segment, and then to the bear's head." In sum, "the marks share a significant visual and phonetic similarity because of the common element, “BEDLAM,” which forms the dominant portion of each mark."

The Board further observed, not surprisingly, that the exclamation point was not enough to distinguish the marks. Furthermore, it noted that BEDLAM is an arbitrary term entitled to a broad scope of protection.

The Board found it likely "that prospective purchasers familiar with Registrant’s Mark for beer mistakenly would understand that Applicant’s vodka comes from a distillery connected with Registrant."

On balance, the basic similarity between the marks, which results from the presence of the prominent word “BEDLAM” in both, outweighs the dissimilarity which results from the addition of the generic term “vodka” in Applicant’s Mark and the designs of both marks. Considering the marks in their entireties, they are sufficiently similar that the first DuPont factor weighs in favor of a likelihood of confusion finding

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Would you be confused?

Text Copyright John L. Welch 2021.

TTABlog Test: Is "VOTESAPP" Merely Descriptive of a Social Networking App?

The USPTO refused to register the mark VOTESAPP for "online social networking services accessible by means of downloadable mobile applications," finding it to be merely descriptive of the services under Section 2(e)(1). Applicant Mehta stated that the app is "directed toward ‘getting out the vote,'" but he argued that his mark "has no recognized meaning in connection with social networking services and the relationship between the terms 'VOTES' and 'APP' is not immediately clear." How do you think this appeal came out? In re Niraj R. Mehta, Serial No. 88453022 (October 18, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

There was no doubt that the term "app" describes applicant's services. The word "votes," however, was "quite a different matter." The Board took judicial notice that "'vote' is both a verb meaning 'to make an official choice for or against someone or something by casting a ballot, raising your hand, speaking your choice aloud, etc.,' and a noun meaning 'a usually formal expression of opinion or will in response to a prompted decision, especially: one given as an indication of approval or disapproval of a proposal, motion, or candidate for office.'"

The examining attorney argued that "votes" directly describes the subject matter of applicant’s services, just like PSYCHOLOGY PRESS for books in the field of psychology and WEATHER CHANNEL for television programming and weather information services, both of which were found to be merely descriptive. The Board disagreed.

That meaning of VOTES is not at all apparent on the face of the mark, and the Examining Attorney relies solely on Applicant’s statements during prosecution that his service "provides the ability to socialize a user’s self-disclosed vote status (voted, not voted, registered, etc.) amongst their contacts," and "creates a non-political interface that provides the vote status of contacts that utilize the service." Those statements, standing alone, are insufficient to establish that the word VOTES in Applicant’s proposed mark would be understood to have such a descriptive meaning by a consumer who knows that the involved services are "Online social networking services accessible by means of downloadable mobile applications."

In light of the sparse record, the Board was "constrained to agree" with Applicant.

There is nothing on the face of the mark that causes it to immediately convey that a feature of the identified social networking services is “the ability to socialize a user’s self-disclosed vote status (voted, not voted, registered, etc.) amongst their [sic] contacts,” id. at 9, and there is no record evidence to support a finding that the relevant purchasing public would so understand the word VOTES in the mark, or the mark as a whole.

And so, the Board reversed the refusal to register, resolving any doubt in applicant's favor.

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TTABlogger comment: There seem to be a number of voting apps available, called "voteapps."

Text Copyright John L. Welch 2021.

TTABlog Test: Which of These Three Section 2(d) Oppositions Was Dismissed?

A TTAB judge once told 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/services. The judge was talking about ex parte appeals, but inter partes cases are more complicated. Here are summaries of three recent TTAB decisions in Section 2(d) oppositions. One of the oppositions was dismissed. How do you think they came out? [Answers in first comment].

Huttopia v. BoomShout, LLC, Opposition No. 91251604 (October 6, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman) [Section 2(d) opposition to registration of YURTOPIA for "providing hotel accommodation" in view of the registered mark HUTTOPIA for, inter alia, “providing campground facilities; catering of food and drinks at recreational camps and on camp grounds; providing temporary housing accommodations in hotels, boarding houses and tourist homes; providing a website for the organization, arrangement and booking of temporary accommodation and lodging, and campgrounds; organization, booking and arrangement of temporary international accommodation and lodging and campgrounds."]

Sazerac Brands, LLC v. Productores Mexicanos De Invernaderos Promex, S.C., Opposition No. 91250997 (October 5, 2021) [not precedential] (Opinion by Judge Michael B. Adlin) [Section 2(d) opposition to registration of the mark shown below left, for "mezcal" in view of the registered mark shown below right, for "tequila."]

Cytozyme Laboratories, Inc. v. JH Biotech, Inc., Opposition No. 91244593 (September 30, 2021) [not precedential] (Opinion by Judge George C. Pologeorgis) [Section 2(d) opposition to SEEDUP for "microbial inoculants for application to seeds used in agriculture," in view of the registered mark SEED+ for "plant growth nutrients for treatment of seeds for use in agriculture, horticulture and forestry, plant nutrition preparations for the treatment of seeds."]

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2021.

TTABlog Test: Is "ICY (Stylized)" Confusable With "ICEE" for Clothing?

The USPTO refused registration of the mark ICY (stylized) on the ground of likelihood of confusion with the registered mark ICEE, for overlapping clothing items (sweatshirts). So it all boiled down to the marks. Applicant American Branding failed to show that the cited mark is weak, either inherently or conceptually. However, it further maintained that the marks engender different commercial impressions. How do you think this came out? In re American Branding Agency, Corporation, Serial No. 88683570 (September 29, 2021) [not precedential] (Opinion by Judge Robert H. Coggins).

The Board found that the cited mark ICEE "likely has a meaning approximating 'resembling or suggestive of ice or something intensely cold.'" [BTW: see registrant's website here) - ed.]. As to the commercial impression of applicant's mark, evidence of third-party registrations and ornamental uses of ICY on clothing "suggest[] that ICY may have a different commercial impression than ICEE when applied to clothing." 

The Board took judicial notice that “ice” is a slang term for “diamonds” and broadly means “jewelry.” It therefore found that ICY "may connote someone covered with diamonds and jewelry: a lot of bling. Indeed, many of the third-party ornamental uses of ICY give this impression."

The stylization of Applicant’s mark creates a similar commercial impression of ICY. As can be seen from the display of the mark at right, Applicant’s special form drawing displays a stylization of ICY in faceted letters resembling baguette cut diamonds. While the cited mark ICEE may convey a meaning of resembling literal ice or something intensely cold, the commercial impression of Applicant’s stylized ICY mark is atmospheric bling or swag glamour. We therefore find Applicant’s mark suggests a meaning in a way that the cited mark does not.

In sum, the Board concluded that the marks impart different overall commercial impressions, and so it reversed the refusal to register.

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2021.

Precedential No. 27: TTABlog Test: Is "REPUBLIC OF LONDON" Primarily Geographically Deceptively Misdescriptive of Clothing?

The USPTO refused registration of the mark REPUBLIC OF LONDON (in standard character form) for shirts, pants, and other clothing items, deeming the mark to be primarily geographically deceptively misdescriptive under Section 2(e)(3). There was no question that London is a generally known geographic location, and Applicant Jonathan Sibony acknowledged that the goods do not originate in London. But considering the mark as a whole, is its primary significance a geographic place? How do you think this appeal came out? In re Jonathan Sibony, 2021 USPQ2d 1036 (TTAB 2021) [precedential] (Opinion by Judge Jonathan Hudis).

Applicant's specimen of use

In order to support a Section 2(e)(3) refusal, the USPTO must prove that:

(1) the primary significance of the mark is a generally known geographic place or location;

(2) the goods for which applicant seeks registration do not originate in the geographic place identified in the mark;

(3) purchasers would be likely to make a goods-place association; that is, purchasers would be likely to believe that the goods originate in the geographic place identified in the mark; and

(4) the misrepresentation regarding the geographic origin of the goods would be a material factor for a significant portion of the relevant consumers deciding whether to buy the goods in question.

Applicant Sibony maintained that the first prong of the test was not met: the primary significance of the mark is not a generally known geographic location because "there is no such place as the 'Republic of London.'" The examining attorney conceded that "REPUBLIC OF LONDON, literally, is fictitious."

Third-party registrations for marks containing the word "LONDON," submitted by the examining attorney and by the applicant, were of little relevance. In any event, the Board pointed out once again that each case must be decided on its own record.

The Board reviewed several prior decisions and found the mark in this case to be like PARIS BEACH CLUB and MT. RAINIER THE MOUNTAIN OF SEATTLE ESPRESSO & MILK  & Design. All three marks contain "additional textual matter taking the mark outside the prohibition of Trademark Act Section 2(e)(3)."

In the final analysis . . . the Examining Attorney submitted sufficient evidence that London is a generally known geographic place or location known for fashion and apparel manufacture. However, neither “LONDON” nor “the city of London” is the mark at issue. Rather, based on the evidence of record and the applicable authorities, REPUBLIC OF LONDON is a phrase referencing a fictitious place that does not exist, and the addition of “REPUBLIC OF” to “LONDON” shifts the primary significance of the mark away from LONDON proper. Applicant’s mark thus falls outside of the restrictions of Trademark Act Section 2(e)(3).

And so, the Board reversed the refusal to register.

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TTABlogger comment: Looking at applicant's specimen of use (a hangtag), what do think?  

Text Copyright John L. Welch 2021.

TTAB Publishes Form for Nominating a Decision for Designation as "Precedential"

A number of trademark practitioners believe that the TTAB should be issuing more precedential decisions.The Board has recently made available a form for nominating a Board decision as precedential. (link here).

This submission form allows nomination of an issued decision of the Board for designation as precedential. A nomination may be anonymous. Please provide all required identifying information for any nominated decision, and set forth a brief description of the reasons for the requested designation. A person nominating a decision may also enter a name and email address. The Board may use this information to contact the nominating person if there are questions regarding the nomination.

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Text Copyright John L. Welch 2021.

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

The TTAB (Tee-Tee-Ā-Bee) recently decided the appeals from the three Section 2(d) refusals described below. No hints today. How do you think they turned out?  [Answer in first comment].

In re Quantgene Inc., Serial No. 88720359 (October 12, 2021) [not precedential] (Opinion by Judge Robert H. Coggins) [Section 2(d) refusal of QUANTGENE for medical diagnostic testing for cancer and other diseases and disorders, in view of the registered mark QUANTIGEN for "consulting services in the fields of biotechnology, pharmaceutical research and development, clinical laboratory testing, clinical diagnostics, and pharmacogenetics."]

In re Destino Xcaret S.A.P.I. de C.V., Serial No. 88622747 (October 13, 2021) [not precedential] (Opinion by Judge Elizabeth A. Dunn) [Section 2(d) refusal of the mark shown below for, inter alia, "hotel accommodation services" [HOTEL XCARET MEXICO disclaimed] in view of the registered mark HOTELXCARETRESORT.COM for "making hotel and temporary lodging reservations for individuals and groups via a global computer network lists" [on the Supplemental Register].]

In re Alderwood Surgical Center, Serial No. 88427822 (October 12, 2021) [not precedential] (Opinion by Judge Christopher Larkin) [Section 2(d) refusal of ZOMBIE BBL for "Surgery; Cosmetic surgery services; Cosmetic and plastic surgery; Plastic surgery; Plastic surgery services" [BBL disclaimed as an abbreviation for "Brazilian Butt Lift"] in view of the registered marks ZOMBIE BRACES and ZOMBIE TEETH for "dentist services" (BRACES and TEETH disclaimed).

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2021.

CAFC Vacates and Remands TTAB's IBKÜL Decision: The KÜHL Registration It Relied On Was Cancelled

In its decision (here) finding likelihood of confusion between the mark IBKÜL (stylized) and the mark KÜHL, both for clothing items, the Board considered only one of four of Alfwear's registered marks. [TTABlogged here]. After the Board's decision, and while this appeal was pending, "the KÜHL mark was cancelled" (sic!) because Alfwear failed to file a Section 8 Declaration of Use. The parties agreed that this development "necessarily impacts the Board's finding." And so, the CAFC vacated and remanded "for the Board to reconsider its findings in light of the cancellation." IBKUL UBROT LTD. v. Alfwear, Inc., Appeal No. 2020-2120 (Fed. Cir. October 13, 2021).

Note that although the CAFC said "the KÜHL mark was cancelled," we all know that registrations are cancelled, not marks. It appears that Alfwear retains common law rights in that mark. Its other pleaded registrations are for the marks KUUL, KUHL, and KÜHL (in stylized form), all for various clothing items.

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TTABlogger comment: Will the Board allow more briefing? Oral argument?

Text Copyright John L. Welch 2021.

CAFC Upholds TTAB: GM's "SUPER CRUISE" Driving System Not Related to "SUPERCRUISE" Computer Components for Section 2(d) Purposes

In a non-precedential ruling, the CAFC upheld the TTAB's decision (here) denying a petition for cancellation of a General Motors registration for the mark SUPER CRUISE for "computer software, cameras, ultrasonic sensors, global positioning system and radar object detectors for the semi-autonomous driving of motor vehicles." The Board concluded that Petitioner Micro Mobio failed to prove a likelihood of confusion with its registered mark SUPERCRUISE for "“Semiconductor devices, computer hardware, and computer software for use in design, simulation and control of electronic circuits and antenna, receiving and transmitting signals, and modulation, demodulation and media access control in voice and data communications." Appellant Micro Mobio raised seven issues in its appeal, but the court found that none had merit. Micro Mobio Corporation v. General Motors LLC, 2021 U.S.P.Q.2d 1028 (Fed. Cir. 2021) [not precedential].

Micro Mobio argued that the Board should have found its mark SUPERCRUISE arbitrary or fanciful, rather than highly suggestive. The Board found that the mark indicated that the goods "facilitate the extremely quick and smooth receipt and transfer of signals." Micro Mobio insisted that General Motors should have been stuck with the definition of cruise that it "used in its registration" (sic): "to sail from place to place, as for pleasure or in search of something." The court was unmoved. A finding of suggestiveness can be based on any of several definitions of a term, and GM was not prohibited from advocating a different one from that stated in its application.

As to the goods, the court found no legal error in the Board's test for determining whether the involved goods are related: goods are related if the are likely to be encountered by the same purchasers who would be led to believe that the goods came from the same source.

Micro Mobio argued that the Board made a factual error in not finding the goods related, since GM's product contains and depends on computer hardware and software. That is the wrong question. The correct question is stated in the paragraph above. Furthermore, Micro Mobio was wrong in claiming the goods are complementary simply because GM's SUPER CRUISE system uses goods like those of Micro Mobio in order to function.

 

Since the involve goods are not identical, the Board was correct in not presuming that they travel in the same trade channels. Rather, the Board found the goods to be quite dissimilar. GM's products are sold through their own dealers, while Micro Mobio's are sold to original equipment manufacturers or individual engineers in the wireless and mobile phone industry. Thus the channel of trade and classes of consumers do not overlap.

The court found no error in the Board's conclusion that there is no likelihood of post-sale confusion, since Micro Mobio's goods are not auto parts, and there was no evidence that Micro Mobio sells system parts that would be used to repair or service vehicles featuring GM's SUPER CRUISE system. 

Finally, Micro Mobius claimed that the Board was mistaken in finding the extent of potential confusion to be de minimis, since every sale of a GM system involves a sale of a connectivity module as part of the system. The Board, however, found that substantial evidence supported the Board's finding. Just because computer components are found in all sorts of products, such as washing machines, watches, and toys, does not mean that the computer components are complementary goods to those products for purposes of trademark law.

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TTABlogger comment:

Text Copyright John L. Welch 2021.

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

Among the flurry of opinions issued by the Board on September 30th, the last day of the USPTO's fiscal year, were the three listed below, all involving appeals from Section 2(d) refusals. One of the refusals was reversed. How do you think these came out? [Answer in first comment].

In re GK Legacy Foundation, Serial No. 88449012 (September 30, 2021) [not precedential] (Opinion by Judge Jyll Taylor) [Section 2(d) refusal of KEEP YOUR CHIN UP SCHOLARSHIP FUND and Design for "Charitable foundation services, namely, providing fundraising activities, funding scholarships and/or financial assistance for adults returning to college" [SCHOLARSHIP FUND disclaimed] in view of the registered mark THE CHIN UP FOUNDATION and Design for "Charitable services, namely, coordination of non-monetary contributions to charities and non-profits" [FOUNDATION disclaimed]

In re Hangover Zero, Serial No. 90083241 (September 30, 2021) [not precedential] (Opinion by Judge Albert Zervas) [Section 2(d) refusal of HANGOVER ZERO for dietary and nutritional supplements, in view of the registered mark ZERO HANGOVER THE LAST DEFENSE & Design for dietary supplements [HANGOVER disclaimed in both marks].

In re Boot Royalty Company, L.P., Serial No. 88727081 (September 30, 2021) [not precedential] (Opinion by Judge Elizabeth A. Dunn) [Section 2(d) refusal of R2G ROOM 2 GROW and Design for "insoles, footwear," in view of the registered mark ROOM TO GROW for "charitable services, namely the collection and distribution to the needy of clothing and other usable goods."]

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

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. No hints this time. Let's see how you do with them. Answer will be found in the first comment.


In re JHO Intellectual Property Holdings LLC, Serial No. 88784575 (September 10, 2021) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Mere descriptiveness refusal of COGNITIVE CANDY for dietary supplement drinks, nutritional energy bars, and the like. Applicant maintained that "the lofty connotations of 'cognitive' are in stark contrast to the literal and colloquial connotations of 'candy,' creating an incongruous commercial impression."]

In re Commonwealth Care Alliance, Inc., Serial No. 88661627 (September 29, 2021) [not precedential] (Opinion by Judge George C. Pologeorgis). [Mere descriptiveness refusal of EL CUIDADO EXCEPCIONAL for consulting services in the field of health care insurance and for managed healthcare services. The English translation of the mark is UNCOMMON CARE. Applicant contended that consumers would not stop and translate the mark and, in any case, the translated phrase UNCOMMON CARE is registered by Applicant for the same services.]

In re Vans, Inc., Serial No. 88677016 (September 29, 2021) [not precedential] (Opinion by Judge Linda A. Kuczma). [Mere descriptiveness refusal of THE ORIGINAL CHECKERBOARD CO. ESTABLISHED SINCE SIXTY-SIX for "Belts; Bottoms as clothing; Footwear; Headwear; Jackets; Pants; Shirts; Shorts; Socks; Sweat Pants; Sweat Shirts; Tops as clothing." Applicant conceded that “ESTABLISHED SINCE SIXTY-SIX” is descriptive, but contended that “THE ORIGINAL CHECKERBOARD CO.” does not convey qualities or characteristics of Applicant’s clothing goods to consumers, but rather is a playfully suggestive unitary phrase that consumers will perceive as referring to Applicant’s “specific and distinct brand identity” involving the “thrills and excitement associated with action sports and skate culture.”]

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

Text Copyright John L. Welch 2021.

District Court Finds Lack of Personal Jurisdiction Over Defendant in TTAB Appeal, Transfers Case Rather Than Dismissing It

In February 2020, the TTAB ordered cancellation of two registration for certain trash bag trade dress, one registration owned by each party to the proceeding, on the grounds of genericness and functionality [TTABlogged here]. Poly-America then brought a civil action in the U.S. District Court for the Eastern District of Texas for review of the Board's decision, under 15 USC Section 1071(b). Defendant API moved to dismiss for lack of personal jurisdiction. The court agreed that personal jurisdiction was lacking, but because Poly-America's time for appeal from the Board decision had expired, the court declined to dismiss the case and instead transferred it to the Southern District of New York. Poly-America, L.P. v. API Industries, Inc., Civil No. 4:20-CV-837-SDJ (September 30, 2021).

The court first concluded that it did not have "general jurisdiction" over API, a Delaware corporation headquartered in New York. A court has general jurisdiction when the defendant's "affiliations with the state are so continuous and systematic as to render them essentially at home in the forum State." Both parties recognized that it is an exceptional case when a corporation's operations in a forum other than its place of incorporation or the location of its principal place of business will satisfy the general jurisdiction standard. 

The court found that API's manufacturing facility and seventy employees in Texas, comprising "only fifteen percent of its workforce," were not enough to make API "essentially at home" in Texas.

Turning to the question of "specific jurisdiction," the court found that API "purposely directed its activities" toward Texas. However, the TTAB proceeding did not arise out of those activities. Rather, "the underlying controversy is the TTAB cancelling [Poly-America's] registration," which has "nothing to do with" API's manufacturing of plastic trash bags in Texas.

And so the court concluded that it did not have personal jurisdiction over API.

Poly-America asked, as an alternative to dismissal, that the court transfer the case under 28 U.S.C. 1361 to the US District Court for the Southern District of New York. It pointed out that if the case were dismissed outright, it would lose its right to appeal under Section 1071, which imposes a sixty-day time limit for appeal. API agreed that the court has the discretion to transfer the case. Section 1361 provides that if a court finds a “want of jurisdiction, the court shall, if it is in the interest of justice, transfer such action or appeal to any other such court . . . in which the action or appeal could have been brought at the time it was filed or noticed.”

The court concluded that the interests of justice supported transfer of the case.

API requested reimbursement for its attorney fees in connection with the motion to dismiss, but the board tossed out that request: "Section 1631 makes no mention whatsoever of attorney’s fees. Thus, the 'American Rule' governs, and Poly-America and API each pay their own attorney’s fees."

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TTABlogger comment: Sooner or later, we'll have the definitive answer to the nagging question of whether the color orange is de jure functional for trash bag draw strings.

Text Copyright John L. Welch 2021.

Precedential No. 26: Claim Preclusion Inapplicable in Concurrent Use Proceeding After Cancellation or Opposition Proceeding

Applicant Haider Capital sought a concurrent registration for the mark SKIN DEEP for beauty salon and health spa services, naming registrant Skin Deep Laser as an excepted user. Skin Deep Laser filed a motion for summary judgment on the ground of claim preclusion in light of an earlier petition for cancellation brought by Haider against Skin Deep Laser and dismissed with prejudice. The Board denied the motion, ruling that because the transactional facts relevant in a concurrent use proceeding are different from those involved in a cancellation (or opposition) proceeding, claim preclusion is inapplicable. Haider Capital Holding Corporation LLC v. Skin Deep Laser MD, LLC, 2021 USPQ2d 991 (TTAB 2021) [precedential].

Issue Preclusion: The Board first considered the issue of collateral estoppel (a/k/a issue preclusion). Registrant Skin Deep Laser argued that Haider had an opportunity to prove priority in the prior proceeding and "should not now have a second bite at the apple." The Board pointed out, however, that the cancellation proceeding was dismissed with prejudice for failure to prosecute under Section 2.132(a). Therefore the issue of priority was not actually litigated, and so issue preclusion cannot apply.

In any case, "priority" in the context of a concurrent use proceeding presents a different issue than "priority" in an opposition or cancellation proceeding. In a concurrent use proceeding, the only way in which priority is considered is in determining whether the concurrent use applicant can establish the jurisdictional requirement for institution of the proceeding: i.e., can the applicant show use in commerce prior to the defendant's (registrant's) application filing date? In an opposition or cancellation proceeding, priority may be established constructively, but not so in a concurrent use proceeding, where "constructive use has little (if any) significance" because the applicant must prove actual use of its mark.

New Application Required?: Registrant Skin Deep Laser argued that, according to TBMP Section 1112, Haider was required to file a new application for concurrent use when its petition for cancellation was dismissed, rather than merely convert its pending application. The Board disagreed. [N.B.: The TBMP is not the law. - ed.].

The "requirement" of TBMP Section 1112 that a new application must be filed applies only in two circumstances. First, when an application for an unrestricted registration was opposed successfully, the applicant must file a new application. Second, when a registrant whose unrestricted registration is cancelled, the registrant must file a new concurrent use application. In both cases, the party required to file a new concurrent use application was an unsuccessful defendant in the prior proceeding. 

Here, Haider was the plaintiff in the cancellation proceeding and its application remained pending. Therefore, when its petition for cancellation failed, it needed only to amend its application to seek concurrent use.

Claim Preclusion: The Board held that "claim preclusion does not apply to a concurrent use proceeding when the prior proceeding is either an opposition or cancellation proceeding between the parties." 

In opposition and cancellation proceedings based on likelihood of confusion, the issue is whether a party is entitled to a geographically unrestricted registration when the involved marks are used in the same geographic area. In a concurrent use proceeding, however, the Board must consider the likelihood of confusion when the marks are used "under conditions and limitations as to the mode or place of use of the marks, i.e., different geographic areas."

Thus, a critical element for determining whether claim preclusion applies to a later concurrent use proceeding cannot be satisfied in a concurrent use proceeding. Specifically, to establish claim preclusion, the movant must show that “the second claim is based on the same set of transactional facts as the first.” Jet Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1857 (Fed. Cir. 2000).

In short, the facts on which the Board must decide a concurrent use proceeding are not the same as those considered in a prior opposition or cancellation proceeding. Therefore, claim preclusion cannot apply.

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TTABlogger comment: Surprised that this issue never came up before.

Text Copyright John L. Welch 2021.

Precedential No. 25: TTAB Rejects Proposed Modification of Standard Protective Order, Refuses to Apply EU Privacy Regulation

In a precedential order, the Board denied a motion to modify the Standard Protective Order (SPO) to permit in-house counsel to view documents designated as "Confidential - Attorney's Eye's Only" (trade secret and commercially sensitive) ("AEO"), and it ruled that the European Union General Data Protection Regulation (GDPR) does not apply in Board proceedings. As to the motion, Opposer Chicago Mercantile Exchange (CME) failed to show good cause for modification of the SPO. As to the GDPR, the Board found that the SPO adequately protects any personal information that Intercontinental Exchange (ICE) sought to redact from its discovery responses. Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc. and Chicago Mercantile Exchange, Inc. v. Intercontinental Exchange Holdings, Inc., 2021 USPQ2d 988 (TTAB 2021) [precedential] (Order by M. Catherine Faint, Interlocutory Attorney).

Modification of the SPO: Under the SPO, which is automatically entered in all inter partes proceedings, only outside counsel have access to confidential material and information that is designated as AEO. However, under Rule 2.116(g), the SPO may be modified by stipulation approved by the Board, or upon a motion granted by the Board. CME sought to designate either of two individuals as an in-house counsel with access to AEO material.

To establish good cause to allow disclosure of AEO material to in-house counsel, the movant must provide "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements," based on "the factual circumstances surrounding each individual counsel's activities, association and relationship with a party."

The Board applied a three-element test to determine "whether, to whom and under what conditions a protective order can be amended to allow release of AEO to in-house counsel:"

• (1) consideration of a party’s need for the confidential information in order to adequately prepare its case, 
• (2) the harm that disclosure would cause the party submitting the confidential information, and 
• (3) the forum’s interest in maintaining the confidentiality of the information sought.

Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1483-84, 1 USPQ2d 1241, 1249 (Fed. Cir. 1986).

The Board "must be able to balance the risk of inadvertent disclosure of trade secrets or commercially sensitive matter against the risk that protection of those trade secrets will impair CME's prosecution of [its] claims."

CME did not provide declarations from the two individuals as to their specific duties. The Board could not find that the individuals are not involved in competitive decision making, since they are involved in "legal issues related to intellectual property," which include licensing agreements. In any case, CME did not provide any evidence regarding the first element of the test: the need for its in-house counsel to have the information. As to the second factor, the Board found that potential disclosure of ICE's competitive information "may provide a competitive advantage to CME and such disclosure would harm ICE." As to the third factor, the Board noted that "sensitive business information is central to the Board's fact-finding process," that the scope of discovery is narrower in Board proceedings that in civil cases, and that the Board provides a Standard Protective Order as a means to protect such information. In short, the Board has an interest in "protecting confidential information and protecting against its inappropriate release."

The Board concluded that CME failed to demonstrate good cause and a need for in-house counsel to have access to ICE's confidential information, and so it denied the motion for amendment of the protective order

Applicability of the EU Privacy Regulation: CME raised the issue of whether ICE may redact names, addresses, and other information from its documents and ESI originating in the EU on the basis that the GDPR requires such redaction. ICE argued that forcing it to produce such information could subject it to monetary penalties under the GDPR.

The GDPR is an EU regulation that seeks to protect the privacy of EU citizens' personal data by limiting transfer of such information among EU member states as well as between EU countries and the United States. The Board noted that the GDPR does not per se bar disclosure of protected information when "the transfer is necessary for the establishment, exercise or defence of legal claims," provided that the information is "relevant and necessary" to the litigation.

The Supreme Court has set out five factors to be considered in balancing the interests of the United States and the party seeking discovery, on the one hand, and the foreign state's interest in secrecy, on the other hand:

• (1) the importance to the litigation of the documents or other information requested;
• (2) the degree of specificity of the request;
• (3) whether the information originated in the United States;
• (4) the availability of alternative means of securing the information; and
• (5) the extent to which noncompliance with the request would undermine important interests of the United States, or compliance with the request would undermine important interest of the state where the information is located. 

Societe Nationale Industrielle Aerospatiale v. U.S. Dist. Court, 482 U.S. 522, 544 n.28 (1987).

As to the first element, the Board concluded that the identity and contact information of current or former employees and others is directly relevant to the claims in dispute, in order to authenticate documents, identify parties who may have discoverable information, and determine how the involved mark is used. ICE failed to show why "basic discoverable information" submitted under the SPO should be redacted.

As to the second element, CME narrowed its requests to seek only "representative documents." That was sufficiently specific since it seeks business records commonly produced in U.S. litigation and is not unduly burdensome.

As to the third, although some of the requested information is stored on servers in the EU, discovery is normally permitted, "particularly where the documents, even if located in foreign countries, are in the possession or control of the U.S. company."

Under the fourth element, ICE argued that it will produce information regarding U.S-based personnel and so EU-materials will be unnecessary. The Board, however, concluded that this approach was not acceptable because it is not the same as supplying the basic, discoverable information regarding the names of those who have sent or received communications.

As to the fifth element, sometimes considered the most important, the Board pointed out that the United States has a "strong interest in ensuring parties in proceedings before the Board have access to the information they need to litigate their claims and for the Board to fully and fairly adjudicate them." 

As to ICE's assertion that it was at risk of "substantial monetary penalties" under the GDPR, ICE did not identify how disclosure of the information would violate the GDPR when a protective order is in place, nor did it show that there has been any enforcement of the GDPR when information has been produced under a protective order in U.S. litigation.

Weighing all the factors, the Board found that ICE is sufficiently protected by the SPO. Therefore ICE was ordered to produce the requested information in unredacted form under the appropriate tier of confidentiality.

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TTABlogger comment: Will this strong language about the importance of discovery in TTAB proceedings encourage the weaponization of discovery - i.e., the use of sweeping discovery demands as a bludgeon?

Text Copyright John L. Welch 2021.

Precedential No. 24: TTAB Rules that Reckless Disregard for the Truth Is Sufficient for Proving Fraud

In the seminal fraud case of In re Bose, the CAFC left open the question of whether "reckless disregard" for the truth is sufficient for a finding of fraud on the USPTO. The Board has now answered that question in the affirmative, granting a petition for cancellation of a registration for the mark DANTANNA'S for "steak and seafood restaurant" on the ground of fraud. By no longer requiring proof of an intent to deceive the USPTO, the Board has significantly lowered the bar for proof of fraud. In a much less consequential ruling, the Board also sustained Plaintiff Chutter's opposition to registration of the marks DANTANNA'S for "spices and spice rubs" and DANTANNA'S TAVERN for "restaurant and bar services" in view of Chutter's previously used mark DAN TANA'S for restaurant services and marinara sauce. Chutter, Inc. v. Great Management Group, LLC and Chutter, Inc. v. Great Concepts, LLC, 2021 USPQ2d 1001 (TTAB 2021) [precedential] (Opinion by Judge Marc A. Bergsman).

Fraud: Plaintiff Chutter's fraud claim was founded on Defendant Great Concepts' filing of a Section 15 Declaration of Incontestability in which its counsel, Mr. Taylor, stated that there were no civil actions or USPTO proceedings pending against the DANTANNA'S mark and registration. Chutter alleged that this statement was knowingly false (because there were pending a cancellation proceeding and a civil action involving the DANTANNA'S mark) and was made with intent to deceive the USPTO into "accepting" the declaration.

The Board observed that it is "well-settled that the inclusion of false statements in a Section 15 affidavit/declaration is material, and if made with the relevant degree of intent constitutes fraud warranting cancellation of the involved registration under Section 14(3) of the Trademark Act."

A false Section 15 affidavit/declaration, when relied on by the USPTO, allows a registrant to obtain a new right which it would not otherwise have, specifically, the right to have its registration, in litigation, accepted as conclusive evidence, rather than merely prima facie evidence, of the registrant’s exclusive right to use the registered mark in commerce. See Trademark Act Section 33, 15 U.S.C. § 1115(b).

The Board noted that the USPTO does not "accept" a Section 15 affidavit or declaration, but merely reviews the documents for compliance with the statute and rules (signature, timeliness, and proper terminology) and then acknowledges receipt.

It was undisputed that, at the time the declaration was filed, Mr. Taylor knew of the pending legal proceedings involving the DANTANNA'S mark and registration, that he was not aware of the legal requirement for filing a Section 15 declaration, and that the USPTO acknowledged receipt of his declaration. Mr. Taylor testified that he did not review the document "carefully enough to see that the statement is in [t]here incorrectly." Neither he nor Great Concepts ever notified the USPTO about the false statement, though they were aware of same since 2015. Great Concepts admitted that the statement was false.

Chutter charged that the false statement was made with "willful blindness" as to the contents of the declaration or, alternatively, with "reckless disregard" as to the truth of the declaration because Mr. Taylor did not know what he was signing and failed to inquire as to its accuracy. The Board agreed with the latter allegation.

“Reckless disregard” is defined as the “conscious indifference to the consequences of an act.” See BLACK’S LAW DICTIONARY (11th ed. 2019) under “Disregard.” The Board observed that "[a] declarant is charged with knowing what is in the declaration being signed, and by failing to make an appropriate inquiry into the accuracy of the statements the declarant acts with a reckless disregard for the truth."

Mr. Taylor paid little, or no, attention to the document he was signing under oath and thereby disregarded the significance of the benefits he was obtaining for his client. By failing to ascertain and understand the import of the document he was signing, far from conscientiously fulfilling his duties as counsel, Mr. Taylor acted in reckless disregard for the truth; nor did he take any action to remedy the error once it was brought to his attention.

If the Board were to find that Mr. Taylor's conduct did not constitute fraud, that could "encourage declarants to conclude that such disregard carries no consequence and they can fail to read documents they are signing without penalty. 'Statements made with such degree of solemnity clearly are or should be investigated thoroughly prior to signature and submission to the USPTO.'"

The Board pointed out that in Bose the CAFC held that the intent to deceive must be willful. The Supreme Court and various circuit courts of appeal have ruled that "willful" includes reckless behavior. Therefore, the Board held:

In matters of trademark registration and maintenance, where the USPTO relies on declarations to be complete, accurate, and truthful ... reckless disregard is equivalent to intent to deceive and satisfies the intent to deceive requirement. [Emphasis supplied].

And so. the Board granted the petition for cancellation of the DANTANNA'S registration on the ground of fraud. 

Likelihood of Confusion: The Board's likelihood of confusion analysis was straightforward: the marks are highly similar; the goods are related and travel in the same trade channels to the same classes of consumers; and the services are identical in part and are offered in the same trade channels to the same classes of consumers. 

Therefore, the Board sustained the opposition to both applications. 

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TTABlogger comment: So will we see more allegations of fraud? It seems that, to prove reckless disregard, one would need to take the testimony of the declarant, just as in the straight "intent to deceive" case. Are we in effect back to the old "knew or should have known" standard of Medinol?

Does this ruling make the failure to delete goods of services in a Section 8 Declaration a more serious problem? Can it be "fraud" to sign a Section 8 declaration that includes "unused" goods and services?

Text Copyright John L. Welch 2021.