TTAB Posts December 2021 (Video) Hearing Schedule

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

December 1, 2021 - 11 AM: In re Solar Foundations USA, Inc., Serial No. 88206624 [Refusal to register SOLAR FOUNDATIONS USA for "installation of solar energy systems and alternative energy products for residential and commercial use, namely, foundations and racking systems for ground mount solar arrays" and "design of solar energy systems and alternative energy products for residential and commercial use, namely, support structure and racking systems for ground mount solar arrays" [USA disclaimed] on the ground of genericness.]

December 2, 2021 - 10 AM: In re Jasmin Larian, LLC, Serial No. 87522459 [Refusal to register the three-dimensional design shown below, for "handbags" under Sections 1, 2, and 45 of the Lanham Act on the ground that the design is a generic configuration.]

December 7, 2021 - 11 AM: Made in Nature, LLC v. Pharmavite LLC, Oppositions Nos.  91223683, 91223352, and 91227387 [Section 2(d) opposition to registration of NATURE MADE for, inter alia, snack bars containing dried fruits and fruit juice, on the ground of likely confusion with the registered mark MADE IN NATURE for dried fruits and vegetables, snack products, and fresh fruit.]

December 8, 2021 - 1 PM: Eazy-PZ LLC v. Ez Etail, Inc., Cancellation No. 92064031 [Petition for cancellation of a registration of the mark EZPZ for "on-line retail store services featuring a wide variety of consumer goods of others" on the ground of likelihood of confusion with the registered mark EZ PZ for "On-line retail gift shops; On-line retail store services featuring downloadable electronic books; On-line wholesale and retail store services featuring products for infants babies, and small children."]

December 9, 2021 - 10 AM: In re Six Continents Limited, Serial Nos. 88430142 and 88430162 [Refusal to register ATWELL SUITES, in standard character and stylized form, for various hotel-related services [SUITES disclaimed] on the ground that the proposed mark is primarily merely a surname under Section 2(e)(4).]

December 14, 2021 - 11 AM: In re Lincoln Global, Inc., Serial No. 87896781 [Section 2(d) refusal of PYTHONXOS for "software for controlling the operation of a robotic or automated welding or plasma cutting machine system" on the ground of likelihood of confusion with the registered mark PYTHON for “electric arc welding torches and parts therefor."]

December 15, 2021 - 1 PM: Flex Ltd. v. Bad Elf, LLC, Opposition No. 91254336 [Section 2(d) opposition to registration of FLEX for "Global positioning system (GPS) apparatus; Global positioning system (GPS) receivers" in view of the identical mark registered for custom manufacture of electronics, engineering services and new product development services.]

December 16, 2021 - 2 PM: Belay Mortgage Group, Inc. v. DFB Corporation, Opposition No. 91251959 [Opposition to registration of BELAY FINANCIAL for "banking services; Financial trust operations; Mortgage banking; Mortgage lending" [FINANCIAL disclaimed] on the ground of likely confusion with the common law mark BELAY MORTGAGE GROUP for mortgage brokerage services.]

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TTABlog comment: Any predictions? Any WYHAs?

Text Copyright John L. Welch 2021.

Ted Davis: 2021 Annual Review of U.S. Federal Case Law and TTAB Developments

In connection with his latest presentation at the recent INTA Annual Meeting, Ted Davis offered his "Annual Review of U.S. Federal Case Law and TTAB Developments." Thank you, Ted, for permitting me to post this link.

Ted Davis

As a companion piece to my presentation, here is a link to my outline of CAFC and TTAB decisions for the past 14 months.

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

Holiday Reading: The Trademark Modernization Act of 2020 and Newly-Issued Implementing Regulations

The USPTO has issued its final regulations under the Trademark Modernization Act of 2020. [pdf of Act here]. The new rules [pdf here] go into effect on December 18, 2021, except for the implementation of the shorter response period for office actions, which will go into effect on December 1, 2022. Petitions requesting institution of proceedings for reexamination or expungement will be accepted on or after December 27, 2021.

The Office states that, under the new provisions, individuals, businesses, and the USPTO itself will now have new tools to clear away unused registered trademarks from the federal trademark register, and the Office will have the ability to move applications through the registration process more efficiently. A summary of the new provisions may be found here at the USPTO website.

Read comments and post your comment here.

TTABlogger comment: Note that the new "nonuse" ground for cancellation will not affect the current ground of abandonment.

Text Copyright John L. Welch 2021.

TTABlog Test: Is "SAMSUNG WIZ" for Smartphones Confusable with "THE WIZ" for Consumer Electronics Retail Services?

P.C. Richard & Son opposed an application to register SAMSUNG WIZ for "smartphones; tablet computer[s]," alleging a likelihood of confusion with its registered marks THE WIZ and NOBODY BEATS THE WIZ for retail store services featuring consumer electronics. The Board wasted little time in finding the goods and services to be related, but what about the marks? Are they close enough? And how strong is THE WIZ anyway? How do you think this came out? P.C. Richard & Son Long Island Corp. v. Samsung Electronics Co., Ltd., Opposition No. 91222405 (November 9, 2021) [not precedential] (Opinion by Judge Karen Kuhlke) [P.C. Richard appealed to the CAFC, but the appeal was dismissed after Samsung indicated that it would not pursue the application to register].

Goods/Services: The Board has often recognized that confusion is likely from the use of the same or similar marks for goods and for services involving those goods. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1307 128 USPQ2d 1047, 1052 (Fed. Cir. 2018). Opposer sells both smartphone accessories and tablet computers in its stores. Thus, the channels of trade and classes of consumers overlap.

Since the goods and services in the application and pleaded registration are unrestricted, the Board must assume that the goods and services are offered to ordinary purchasers who exercise no more than ordinary care in their purchasing decisions.

Strength of Opposer's Mark: Opposer claimed that its marks are famous, but its evidence fell short. It did not provide sales figures under each mark, and there was no evidence regarding commercial impressions, social media following, or third-party mentions.

Applicant Samsung argued that the term WIZ is conceptually weak, pointing to a dictionary definition (a wizard or a skilled person) and to third-party registrations and uses for marks that incorporate the word WIZ, for a variety of electronics goods and services. The Board found that the third-party registrations, although not diminishing the commercial strength of Opposer's THE WIZ mark, "do underscore the somewhat suggestive and laudatory nature of the word WIZ in connection with electronic goods as something that is very good, something possessing skill." The Board concluded that WIZ is "somewhat suggestive" for a variety of electronic goods.

Seventeen examples of third-party use of "WIZ" in connection with electronic goods and services tended to show the commercial weakness of "WIZ."

Overall, we find both some conceptual and commercial weakness for the word WIZ in the mark(s) THE WIZ (and NOBODY BEATS THE WIZ) in connection with retail store services in the field of consumer electronics and accessories. We accord the word WIZ in Opposer’s THE WIZ mark a somewhat restricted scope of protection

The Marks: The Board found that SAMSUNG is clearly the dominant portion of applicant’s mark, in view of its position at the beginning of the mark and the great commercial strength of the SAMSUNG mark, as revealed by the record evidence. Furthermore, WIZ is somewhat suggestive and weak in connection with the involved goods and services.

The Board concluded that applicant's mark engenders a different overall commercial impression than opposer's mark, sufficient to avoid likely confusion. "In connection with Applicant’s goods, WIZ is modified by SAMSUNG, it is an electronic SAMSUNG product that is a wiz, by comparison, THE WIZ for retail stores featuring electronic products connotes a person or store that is a wiz."

We are cognizant of Opposer’s argument that if Opposer were to sell the Samsung tablet computer on Opposer’s own retail website using its SAMSUNG WIZ trademark, Opposer’s customers would be confused. Considering the amount of WIZ marks used and registered in connection with electronic goods and services, we find that tends towards a mere theoretical possibility, given the dominant element in Applicant’s mark.

Conclusion: Balancing the relevant DuPont factors,the Board found "the differences between the marks sufficient to avoid likely confusion despite the relatedness of the goods and services, and trade channels, in particular given the differences in overall commercial impression." And so, it dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: Well, somebody beat the Wiz!

Text Copyright John L. Welch 2021.

TTABlog Test: Are Dietary Supplements Related to Skincare Products Under Section 2(d)?

The USPTO refused registration of the proposed mark MANSBRAND for "dietary supplements; erectile dysfunction supplements; male enhancement supplements; herbal supplements; health supplements; health booster supplements; muscle building supplements; and nutraceuticals for use as a dietary supplement," finding confusion likely with the registered mark MANBRAND SKINCARE for "[n]on-medicated skincare products for men, namely, face wash, face lotion, eye cream, body wash, shampoo” [SKINCARE disclaimed]. The marks are too close for comfort, but what about the goods? How do you think this appeal came out? In re Local Holdings, Serial No. 88515551 (November 17, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch).

As to the marks, the Board rejected applicant's argument that "[t]he plural form of MAN (Mans or man’s) is important, creating the commercial impression of products that can be useful for manly men,” because "nothing about the plural or possessive form produces that impression." Instead, it found the two terms to be nearly identical [not surprisingly] and concluded that the marks convey a similar appearance, sound, connotation, and commercial impression.

As to the goods, Examining Attorney Alexandra El-Bayeh submitted various evidence demonstrating the relatedness of these goods, including third-party registrations identifying both supplements and skin care products, and third-party websites offering same. "The evidence shows that these products are promoted together as part of a wellness regime that includes skincare and dietary, health, or muscle-building supplements."

Applicant's attempts to read limitations into the channels of trade (registrant sells only on-line via monthly subscription) and the sophistication of relevant consumers (discerning customers seeking a solution to a male-oriented issue) did not stand up, the Board pointing out for the umpteenth time that the application and cited registration contain no such limitations. "The retail website evidence in the record reflects that these types of products can be inexpensive and are sold through general consumer retail websites. Thus, we find that they do not necessarily involve elevated care in purchasing."

And so, the Board affirmed the refusal to register.

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2021.

Precedential No. 30: TTAB Reverses Descriptiveness Refusal of TAVERNA COSTERA, Declining to Apply Doctrine of Foreign Equivalents

Because the ordinary American purchaser would not stop and translate a mark comprising words from different languages, the TTAB reversed a Section 2(e)(1) mere descriptiveness refusal of TAVERNA COSTERA for “restaurant, cafe, and bar services.” The Board found that applicant’s mark, at most, suggests a “fusion of cuisines.” However, because TAVERNA is a recognized English language word referring to a type of restaurant, disclaimer of that word was required. In re Taverna Izakaya LLC, 2021 USPQ2d 1134 (TTAB 2021) [precedential] (Opinion by Judge Cynthia C. Lynch).

The examining attorney contended that TAVERNA COSTERA translates to “coastal tavern,” and applicant did not dispute the descriptiveness of that term for restaurant services. Instead, applicant maintained that the doctrine of foreign equivalents should not be applied because consumers would take the mark “as it is” rather than translating it. See Palm Bay, 73 USPQ2d at 1696 (“When it is unlikely that an American buyer will translate [a] foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied.”). Because the first word is understood in English, the applicant argued, it is “exceeding likely” that the average consumer would not stop to translate COSTERA, “particularly since the Spanish word COSTERA is pronounceable in English.” The Board agreed:

Given that ordinary consumers would recognize the first word in Applicant’s mark not only as an English word – but one that connotes a Greek café and Greek cuisine – those consumers would not be inclined to stop and translate the next word in the mark from Spanish.

The Board observed that courts and the TTAB have frequently ruled that consumers would not “stop and translate" marks comprised of terms in multiple languages, “often finding that the marks combine the different languages for suggestive purposes to create a certain commercial impression:” e.g., LE CASE for jewelry boxes; GLACÉ LITE for ice cream products. The Board therefore refused to apply the doctrine of foreign equivalents.

The Board noted that the subject application includes a statement in the Translation field that “[t]he English translation of TAVERNA COSTERA in the mark is COASTAL TAVERN”, as well as a Miscellaneous Statement that “the word TAVERNA is Greek and Italian, while the word COSTERA is Spanish.” Not to worry. “The record makes clear that the application’s 'translation' statement is not in fact a literal and direct 'translation,' as commonly understood, from a particular foreign language into English; rather, it is an attempt to fit the square peg of a multi-language mark into the round hole of the 'translation' in the application form.”

And so, the Board reversed the refusal to register but required that the applicant disclaim the descriptive English term TAVERNA.

Read comments and post your comment here.

TTABlogger comment: So if you take the word "taverna" and slap on a foreign word, you've got a registrable mark for restaurant and bar services? 

Text Copyright John L. Welch 2021.

TTAB Affirms Genericness Refusal of "LETTERS & NUMBERS" for . . . . Guess What?

The Board affirmed a refusal to register the proposed mark LETTERS & NUMBERS (in standard character form) on the Supplemental Register, finding it to be generic for printed and electronic publications "in the field of educational and entertainment materials targeted to children on the topic of alphanumeric characters and symbols." Dictionary evidence, applicant's specimen of use and its response to Examining Attorney Tracy Fletcher's request for information, and numerous third-party uses of the same or equivalent terms convinced the Board that the purported mark defines "the type of good (e.g., 'letters and numbers books'), or the integral, paramount or key aspect" of the goods. In re Brand Design Company, Inc. d/b/a DBA House Industries, Serial No. 87658330 (November 16, 2021) [not precedential] (Opinion by Judge Jonathan Hudis).

Applicant and the examining attorney agreed that the genus of goods at issue is "downloadable and printed children’s educational publications on the topic of alphanumeric characters and symbols," and that the relevant public comprises ordinary consumers of these goods. The question, then, was "whether the relevant public understands the proposed mark primarily "to refer to 'downloadable and printed children’s educational publications on the topic of alphanumeric characters and symbols.'" 

Applicant argued that "[a]t best, the evidence supplied by the Office is probative to show that the terms 'letters' and 'numbers,' alone or in combination, may be merely descriptive of relevant topics for, or used descriptively in titles of, educational publications and programs, making its registration appropriate for the Supplemental Register." The Board disagreed:

The Examining Attorney provided numerous examples showing that educational product companies and the relevant purchasing public refer to LETTERS & NUMBERS as a type of learning tool or a key aspect of learning tools – including flash cards, toys, games, instructional books, software apps, wall charts, worksheets, workbooks, tracing sheets, posters, interactive videos – for the understanding and formation of alphanumeric units of the alphabet and numerical integers. We find the third-party examples of LETTERS & NUMBERS, and equivalent terms, do not simply designate the purpose or use these items, but rather define the type of good (e.g., “letters and numbers books”), or the integral, paramount or key aspect of the featured items.

The Board concluded that the record evidence clearly shows the term LETTERS & NUMBERS to be generic for applicant’s identified goods.

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TTABlogger comment: Would the stylized form of the mark be registrable with a disclaimer of the words?

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 Institute of Management Accountants, Serial No. 88626624 (November 9, 2021) [not precedential] (Opinion by Judge Linda A. Kuczma) [Section 2(d) refusal of IMA EXCEL 365: TIPS IN TEN for "a series of online courses demonstrating new excel features helpful to management accountants and financial professionals," in view of the registered mark EXCEL for computer spreadsheet software.]

Argo AI, LLC, Serial No. 88814288 (October 10, 2021) [not precedential] (Opinion by Judge Christopher Larkin) [Section 2(d) refusal of GROUND TRUTH for "On-line journals, namely, blogs featuring autonomous vehicle technology" in view of the registered mark GROUNDTRUTH for various services, including "On-line journals, namely, blogs featuring information written by and for members of local communities around the globe."]

In re BFY LLC, Serial No. 88190652 (November 12, 2021) (Opinion by Judge George C. Pologeorgis)[not precedential] [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."

Read comments and post your comment here.

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

Text Copyright John L. Welch 2021.

USPTO Issues Regulations Implementing the Trademark Modernization Act of 2020 (TMA)

The USPTO today issued regulations [pdf here] implementing the provisions of the Trademark Modernization Act of 2020 (TMA). Many of the provisions will be effective as of December 18, 2021. THe rules for flexible response periods to office actions will take effect on December 1, 2022.

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

New Nonuse Provisions of Trademark Modernization Act May Significantly Impact Non-US Trademark Owners

Here is a Trademark Alert published by Wolf Greenfield yesterday, regarding the Trademark Modernization Act of 2020 ("TMA"), and focusing particularly on the "nonuse" provisions and their impact on non-US owners of US registrations.

In large part, the Trademark Modernization Act (TMA), signed into law by then President Trump on December 27, 2020, will take effect on December 27, 2021. Driven by a rising concern regarding the proliferation of applications and registrations (particularly emanating from China) for trademarks that are not actually in use in United States commerce, the TMA requires the United States Patent and Trademark Office (USPTO) to implement new procedures that will allow third parties to more readily challenge pending applications and issued registrations that may be spurious. The new provisions may have a significant impact on non-US trademark owners and may require a fresh look at their trademark portfolios in order to avoid these new avenues of attack.

• Registrations for marks unused for any three-year period are more easily cancelled.
• Evidence of efforts to commence or restart use is no longer relevant in nonuse challenges. 
• Nonuse provisions require frequent audits and possibly new filings.
  

BACKGROUND

Under current practice, challenges to pending applications are limited in scope, and challenges to registrations require costly cancellation proceedings. Pursuant to the TMA, the USPTO will broaden the range of evidence that a third party may submit for consideration during examination of a pending application (including evidence of nonuse) and will streamline procedures for challenging issued registrations.

In keeping with the focus on clearing the Trademark Register of so-called “deadwood,” the USPTO will encourage owners of registrations to remove goods and services for which the mark is not being used at the time of maintenance or renewal, by charging a fee to a registrant who is required to remove goods or services from the registration due to nonuse.

These changes will help clear the way for legitimate trademark users to obtain registration of their marks without being blocked by specious applications or registrations.

WHAT YOU NEED TO KNOW

Of particular import are two new ex parte procedures for challenging a registration on the ground of nonuse of the registered mark for some or all of the identified goods or services.

In a procedure called reexamination, directed at registrations that issued based on alleged use of the mark, a challenger may submit evidence to show that the mark was not in use either as of the day the underlying application was filed, or as of the day a statement of use was filed. The petition for reexamination must be filed prior to the fifth anniversary of the registration. In addition, the Director of the USPTO may institute a reexamination on his or her own initiative. A successful challenge will result in removal of the “unused” goods and services from the registration.

In a procedure called expungement, a registration may be challenged, between the third and tenth anniversaries of the registration, on the ground that the registered mark was never used in commerce for some or all of the identified goods or services. Again, the Director of the USPTO may institute an expungement proceeding on his or her own initiative. A successful challenge will result in removal of the “unused” goods and services from the registration.

In the traditional inter partes context, the TMA adds a new claim of nonuse that will be available for challenging a registration if the registered mark has never been used. This claim is available after the three-year period following issuance of the registration. In the case of a registration issued under Sections 44(e) and 66(a) of the Lanham Act, the registration will not be cancelled if the owner can prove “special circumstances” that excuse the nonuse.

WHAT TO CONSIDER

For non-US owners of registrations that are not based on actual use, the new ex parte expungement proceeding and the new nonuse cancellation claim will represent a major change in the viability of their registrations. Under current law, a claim of abandonment may be made against a registration when a mark has not been used and there is an intention not to commence or resume use. A registration owner may defeat the abandonment claim by showing an intent to commence use in the US, for example by proving their efforts to license the mark or find distributors for the products or services. Under the new provision, such proof of an intention to commence use will not immunize an owner from expungement or nonuse cancellation.

Non-US registration owners would be wise to recognize that these changes in US law require a re-assessment of their trademark portfolios. For a registration that is more than three years old, and as to which the registered mark has not been used, the owner may want to consider filing a new application to register. For applications that are pending, the owner may want to delay issuance of the United States registration until a time when the owner is ready to put the mark into use; this can be achieved, at some cost, by including in the application a Section 1(b) intent-to-use basis. Once the application receives a Notice of Allowance, the applicant may either drop the Section 1(b) basis and let the registration issue, or postpone issuance for up to three years by filing timely requests for extension of time (including government fees) to submit proof of use.

Read comments and post your comment here.

TTABlogger comment: New regulations implementing many of the provisions of the TMA will be issued soon by the USPTO.

Text Copyright John L. Welch 2021.

CAFC Again Remands GALPERTI Case to TTAB Due To Legal Errors in Assessing Falsity of Claim of Acquired Distinctiveness

The CAFC has again remanded the GALPERTI case to the TTAB, concluding for the second time that the Board erred in dismissing Petitioner Galperti, Inc.'s (Galperti-USA) claim of fraud. Respondent Galperti S.R.L. (Galperti-Italy), in seeking registration based on acquired distinctiveness under Section 2(f), averred that its use of the mark had been "substantially exclusive" for the five preceding years. Gaoperti-USA alleged that this averment was false and fraudulent. In the first appeal [TTABlogged here], the court held that the Board erred in failing to consider, on the question of falsity, whether use of GALPERTI by others was substantial or inconsequential. On remand, the Board again dismissed the fraud claim, but the CAFC found that the Board had committed legal error when it ruled that (1) in order for Galperti-USA's own use of the mark to count, it had to show that it had acquired rights in the GALPERTI mark via secondary meaning, and (2) Galperti-USA could not rely on third-party use of GALPERTI because there was no proof of privity between Galperti-USA and the third-party users. Galperti, Inc. v. Galperti S.R.L., 2021 USPQ2d 1115 (Fed. Cir. 2021) [precedential].

There was no dispute that GALPERTI is primarily merely a surname, and so Galperti-Italy had to prove acquired distinctiveness in order to obtain its registration. Section 2(f) of the Lanham Act allows the USPTO to accept as prima facie evidence of acquired distinctiveness, "proof of substantially exclusive and continuous" use of the mark in commerce for the five years preceding the claim of distinctiveness. In evaluating whether an applicant has had "substantially exclusive" use of a mark, one must consider whether "any use by a third party was 'significant,' or whether it was merely 'inconsequential or infringing.'" (quoting L.D. Kichler Co. v. Davoil, 192 F.3d 1349, 1352 (Fed. Cir. 1999)).

 

On the first remand, the Board found that the third-party uses were inconsequential, not substantial, but it declined to consider uses by Galperti-USA or by certain third-parties not in privity with (although affiliated with) Galperti-USA in determining the falsity of Galperti-Italy's Section 2(f) claim. That was error.

The CAFC pointed out that "even marketplace users of a term lacking secondary meaning for the users are among the uses" that must be counted in assessing whether a mark has been in "substantially exclusive" use. See, e.g., De Walt, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 661 (CCPA 1961); In re Boston Beer Co., 198 F.3d 1370, 1373 (Fed. Cir. 1999). In short, "Galperti-USA does not need to establish secondary meaning of its own uses of GALPERTI in order for those uses to be counted in determining the falsity of Galperti-Italy's claim of substantially exclusive use."

The Board's ruling regarding privity between Galperti-USA and third-party users was also contrary to the court's precedent. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320 (CCPA 1981); Converse, Inc. v. Int’l Trade Comm’n, 909 F.3 (Fed. Cir. 2018).

.

Use by anyone, regardless of relation to the challenger, may undercut a claim of substantially exclusive use. This straightforward point is reflected in our prior opinion in the present matter, where we said that “any use by a third party” could be significant. 2019 CAFC Op., 791 F. App’x at 910. 

And so the CAFC vacated the decision and remanded the case to the Board. "Further analysis of the falsity issue must proceed in the absence of the legal errors we have identified. We do not address the intent aspect of the charge of fraud, which the Board has not addressed."

Read comments and post your comment here.

TTABlogger comment:  If the Board cannot get the law right, how was Galperti-Italy supposed to know that its statement was false? Seems like a legal conclusion, not a statement of fact.

Text Copyright John L. Welch 2021.

TTAB Affirms Refusal of "MADE FOR MORE" for Employee Recruitment: Not Rendered for the Benefit of Others

The California Highway Patrol applied to register the mark MADE FOR MORE for the services of advertisement and recruitment for law enforcement purposes. The Board upheld the USPTO's refusal to register on the ground that Applicant is not rendering a service within the meaning of Sections 1, 2, 3 and 45 of the Trademark Act. In re California Highway Patrol, Application Serial No. 88796327 (November 4, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

Specimen of Use

The Trademark Act does not define "service." Although case law indicates that the term should be construed broadly, "not every activity constitutes a service within the meaning of the Trademark Act."

The following criteria have evolved for determining what constitutes a service:

• (1) A service must be a real activity;
• (2) A service must be performed to the order of, or for the benefit of, someone other than the applicant; and
• (3) The activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service. 

The Board observed that "the controlling question is who primarily benefits from the activity for which Applicant is seeking registration." "[I]f the activity primarily benefits Applicant, it is not a registrable service even if others derive an incidental benefit."

Examining Attorney Mary E. Coombe did not contest the first element of the test.. As to the second element, she pointed to the Applicant CHIP's specimen of use, arguing that the activities listed in the subject application "are for Applicant to recruit personnel to perform law enforcement activities for Applicant and, therefore, they are not primarily for the benefit of others." Thus, Applicant is the primary beneficiary of these activities.

CHIP maintained that the public is the primary beneficiary of the activities. "The entire purpose behind the Mark is to enable Applicant to provide for the betterment of the people of California, not Applicant itself." Furthermore, it maintained that it would still exist even without these services because these services are not necessary to the performance of CHIP's functions.

The Board found that Applicant performs the recited activities primarily for its own benefit, rather than the benefit of others. 

Applicant’s description of services is essentially employee recruiting services for itself. This is clearly an activity that Applicant is rendering for itself to fill positions in its ranks. Applicant, in its arguments, leaves out the key fact that the recruitment activities at issue are for hiring Applicant’s own employees as opposed to rendering recruiting services for other employers or some other activity that primarily benefits employees or potential employees.

As to the third prong of the test, the Board pointed out that "[r]ecruiting and hiring one’s own employees is not in any material way a different kind of economic activity done in connection with that which any business or organization normally performs." Thus, the recited activities "are not qualitatively different from anything necessarily done in connection with Applicant’s core law enforcement activities."

Applicant having failed to meet the second and third elements of the test, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Services rendered for the benefit of employees may be registrable, but not recruiting employees in the first place.

Text Copyright John L. Welch 2021.

Precedential No. 29: TTAB Affirms Refusal of "DRINK MORE BEER" For Bottle Caps: Not Used as a Source Indicator

To be registrable, a proposed trademark must function as a source indicator in the eyes of relevant consumers. Applicant Maugus Manufacturing tripped over that hurdle when it applied to register DRINK MORE BEER for "non-metal and non-paper closures for containers." The Board agreed with Examining Attorney Tejbir Singh that the proposed mark, as presented on Maugus's specimens of use, would not be perceived as identifying source, but rather would be seen as an example of how wording may appear on the products that consumers purchase. In re Maugus Manufacturing, Inc., 2021 USPQ2d 1100 (TTAB 2021) [precedential] (Opinion by Judge Cindy B. Greenbaum).

In determining whether a proposed mark functions as a source indicator, the Board (not surprisingly) reviews the specimens and other evidence of record. In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013)

Whether matter applied for as a trademark functions as a trademark depends on how it would be perceived by the relevant public, here a brewery owner, manager, or other employee who is responsible for ordering the goods, as is evident from the specimens, and also members of the general public associated with home brewing (e.g., home brew supply shops, home brewers). In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006).

Applicant's specimens of use showed that it uses the trademark “NNBC” to identify and distinguish the source of its closures [See applicant's website - ed.]; DRINK MORE BEER "merely identifies optional wording that may appear on one of the products, or one of the available styles for the product sold, under the NNBC mark." The Board found its decision in In re J. Hungerford Smith Co., 279 F.2d 694, 126 USPQ 372 (CCPA 1960), to be instructive. There, the applicant used "JHS" or “J. Hungerford Smith” to identify the source of its soft drink syrup; the proposed mark "Burgundy" appeared only as a flavor designation and not as a trademark.

The Board concluded that purchasers would view the proposed mark "as an example of how their own marks might look on Applicant’s growler caps. They would not associate the wording DRINK MORE BEER stamped or embossed on the growler cap as a source identifier of the 'non-metal and non-paper closures for containers' identified in the application."

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Suppose an acceptable specimen of use had been submitted. Is DRINK MORE BEER too common a phrase to serve as a trademark?

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 Esther Yang, Serial Nos. 88708065 and 88708080 (November 1, 2021) [not precedential] (Opinion by Judge Jyll Taylor). [Mere descriptiveness refusals of HOT KARATE and HOT SELF DEFENSE for physical fitness instruction and training services. Applicant maintained that the marks are registrable because they create "double meanings," since "hot" can mean high in temperature or "hot" as in "currently popular or in demand."]

In re Oral Arts Laboratory, Inc., Serial No. 88092627 (November 3, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Mere descriptiveness refusal of BIOLOGIC HYBRID (Stylized) for "dental implants; dental crowns; dental fixtures, namely, prefabricated parts for crowns, bridges and pontics." Applicant argued the mark is merely suggestive because "biologic" suggests something that is biological in nature, thus making the goods more appealing to consumers by implying that they are natural and thus compatible with the human body.]

In re Foil Boarding Company, Inc., Serial Nos. Serial No. 88622718 and 88622731 (November 4, 2021) [not precedential] (Opinion by Judge Christopher Larkin). [Mere descriptiveness refusal of FOIL, in standard character and stylized form, for "electric hydrofoil surfboards." Applicant asserted that "foil" is not "unconditionally defined as a hydrofoil," since there are more than 30 other definitions of the word "foil" and in any case, the term does not describe a significant characteristic of the goods.]

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

Text Copyright John L. Welch 2021.

TTABlog Celebrates 17th Anniversary!

The TTABlog debuted on November 8, 2004, with a blog post entitled "Leo Stoller Loses Again." (here). Remember him? Here we are, some 4,800 blog posts and more than 14,000 tweets later.  Thank you readers!

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Text Copyright John L. Welch 2021.

TTAB Bifurcates "RAPUNZEL" Doll Opposition; Will Re-Visit "Standing" Issue Before Considering Merits of Professor Curtin's Claims

The Board has decided to take a second look at the issue of opposer's entitlement to bring a statutory cause of action in the RAPUNZEL trademark opposition. Opposer Rebecca Curtin, a professor at Suffolk University Law School in Boston, alleges that the proposed mark fails to function as a trademark under Sections 1, 2, and 45 of the Trademark Act on the grounds that it is purely informational and highly descriptive, if not generic, for the goods. Applicant United previously moved to dismiss on that ground that Professor Curtin lacked standing because she is not a competitor and "has not used the mark in connection with the manufacture or sale of dolls." [TTABlogged here]. The Board disagreed, observing that "[c]onsumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain." Rebecca Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (December 28, 2018) [not precedential].

In April 2021, Professor Curtin moved for partial summary judgment on the "entitlement" claim, but the Board has denied the motion because "genuine disputes of material fact remain for trials" regarding that issue. [pdf here].

The Professor maintained that she has a real interest in the proceeding: she is "a mother of a young girl who has purchased and continues to purchase dolls, including fairy tale dolls," and therefore she and other consumers will be damaged if the mark is registered because they "will have to expend increased time and costs in locating and identifying Rapunzel character dolls and toys" and "will be denied access to healthy marketplace competition for the identified goods."

The Board observed that Lexmark provides the applicable standard for determining whether a party is entitled to bring a statutory cause of action.

[T]o establish entitlement to a statutory cause of action under Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063 and 1064, on summary judgment, a plaintiff must demonstrate that there is no genuine dispute of material fact that its interest in opposing or cancelling the registration is within the zone of interests protected by the statute and that plaintiff has a reasonable belief of damage proximately caused by registration of the mark. Corcamore, 2020 USPQ2d 11277, at *6-7; cf. Empresa Cubana Del Tabaco, 111 USPQ2d at 1062.

The Board concluded that, in light of recent case law, it is "appropriate to revisit this issue." It therefore bifurcated the proceeding into two phases: the first dealing with the issue of Professor Curtin's entitlement to bring a statutory cause of action, and the second phase (if necessary) dealing with the merits.

Read comments and post your comment here.

TTABlogger comment: Suppose the Board rules in favor of Professor Curtin on all the issues. If the applicant appeals that decision, will it have Article III standing? See the CAFC's recent Brooklyn Brew Shop decision [TTABlogged here] in which the CAFC made clear that Article III standing requires a different (and higher) standard than entitlement to a statutory cause of action before an administrative tribunal.

Text Copyright John L. Welch 2021.

TTABlog Test: Is "SPECTACLES" Generic for Computer Hardware and Peripherals Wearable as Glasses?

The USPTO refused to register the proposed mark SPECTACLES for wearable computer hardware and peripherals, on the ground of genericness. Applicant Snap argued that its product does not correct vision, but is "a sophisticated digital camera with a battery and related software and hardware that allow users to upload pictures and short videos to the Snapchat photo/video sharing and social networking application." How do you think this appeal came out? In re Snap Inc., Serial Nos. 87177292 and 87211997 (November 3, 2021) [not precedential] (Opinion by Judge Michael B. Adlin).

The Board found the relevant public to be "vast, and practically coextensive with the consuming public at large, due to the ubiquity of computer hardware, software and peripherals in today’s society." The genus of the goods at issue was found to be "hardware and peripherals that are wearable as glasses."

Examining Attorney April Roach submitted dictionary definitions of "spectacles" that were "significant, consistent and persuasive − SPECTACLES means “glasses “eyeglasses” or “something resembling eyeglasses in shape or suggesting them in form.” Applicant Snap, in its briefs, referred to its goods as “smart glasses” or “camera glasses.”

The Board pooh-poohed Snap's argument that "spectacles" is merely an old fashioned term popular in the 18th Century. The evidence showed, however, that the media and applicant’s competitors currently use the term "spectacles" to refer to sophisticated high-tech products at the cutting edge of social media, information technology and consumer electronics.  

And so, the Board affirmed the genericness refusal.

For the sake of completeness, the Board also considered applicant's claim that the proposed mark, assuming it is not generic, has acquired distinctiveness. The Board found the term SPECTACLES to be highly descriptive, and therefore, applicant’s burden to show acquired distinctiveness was “concomitantly high.”

Although the proposed mark has been in use for five years, that alone was not sufficient to establish acquired distinctiveness. The product enjoyed limited success in its early years. The probative value of the large number of media reports regarding the product was diminished because they appeared in niche publications.  Even assuming some consumers were exposed to the mark, there was "no information about the overall extent of consumer exposure, or how consumer exposure to the SPECTACLES mark and product compares to consumer exposure to competitive marks or products."

Snap did not provide survey evidence, nor did it furnish sales and advertising figures, "often the most important evidence of acquired distinctiveness."

Moreover, Snap's use of the proposed mark was not “substantially exclusive” because third parties, including at least a few of applicant’s competitors, use "spactacles" in connection with their products. 

And so, the Board concluded that, "[i]n short, the record does not support Applicant’s Section 2(f) claim."

Read comments and post your comment here.

TTABlogger comment: How about PINCE-NEZ instead of SPECTACLES?

Text Copyright John L. Welch 2021.

Crowded Field of Third-Party Registrations and Uses Leads to TTAB Reversal of "MATCH STUDIO" Over "MATCH" for Clothing

The Board reversed a Section 2(d) refusal to register the mark MATCH STUDIO for "clothing, namely, tops and bottoms," finding confusion not likely with the registered marks MATCH in standard character and design form for overlapping clothing items. Applicant Garan demonstrated that the term MATCH is a weak formative in light of third-party registrations and uses, and thereby convinced the Board that the marks are distinguishable. In re Garan Services Corp., Serial No. 88674888 (November 3, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

MERRIAM-WEBSTER DICTIONARY defines "match" as "a pair suitably associated // carpet and curtains are a match," and "to harmonize with // the jacket matched the pants." Applicant Garan also submitted 55 third-party registrations consisting, in part, of the word "match" for clothing products. Twenty of the registrations issued before registration of the cited marks.

 

We presume that the owner of the cited registrations did not perceive its MATCH marks as interfering with the prior-registered MATCH marks and that the owners of those prior registrations did not perceive Registrant’s MATCH marks as interfering with their use of their MATCH marks. Likewise, we presume that Registrant and the other owners of the prior MATCH registrations did not have a problem with the registration of the third-party marks issued after the registration of the Registrant’s marks.

More than a dozen third-party websites used the word "match" as part of a trademark in connection with the sale of clothing. These websites "show that others in the clothing field consider the word 'match' to have a highly suggestive significance when applied to clothing (i.e., that clothing products should complement or enhance each other)."

 

Under these circumstances, based on the evidence of record, we accord marks consisting, in whole or in part, of the word “match” in connection with clothing a narrow scope of protection. Such marks, inherently, are highly suggestive; in the marketplace, such marks travel in a crowded field. In other words, Registrant’s MATCH marks are not entitled to such a broad scope of protection that they will bar the registration of every mark comprising, in whole or in part, the word “match”; they will only bar the registration of marks “as to which the resemblance to [Registrant’s marks] is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two.”

Turning to the marks, the Board focused on the mark MATCH in standard form, the Board disagreed with the examining attorney's contention that MATCH is the dominant element in Applicant Garan's mark. "We find that, although MATCH is the entirety of the commercial impression created by Registrant’s mark, in Applicant’s mark the words 'match' and 'studio' have equal weight in creating the commercial impression. This is because, as discussed above, we found the word 'match' to be highly suggestive as applied to clothing."

The Board concluded that the inclusion of the word "studio” in Garan's mark sufficed to distinguish the two marks when considered in their entireties. And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Sometimes the only way to overcome a 2(d) refusal is via a "crowded field" and "weak formative" argument, relying on Jack Wolfskin and Juice Generation. This case shows how to do it.

Text Copyright John L. Welch 2021.

CAFC Largely Affirms TTAB's "BROOKLYN BREW SHOP" Decision Finding that Laches Barred Brooklyn Brewery's Section 2(d) Claims

The CAFC has affirmed most of the Board's rulings in the Brooklyn Brew Shop case [TTABlogged here], upholding the denial of Plaintiff Brooklyn Brewery's petition for cancellation of a registration for the mark BROOKLYN BREW SHOP (in standard form) for beer-making kits. The Brewery did not challenge the Board's application of laches to its Section 2(d) claim, and the Brewery failed to prove its claim that the mark is merely descriptive. As to the Brewery's opposition to the stylized version of the mark, the court upheld the Board's application of laches to the Section 2(d) claim, but as to the mere descriptiveness claim it reversed and remanded because the Board failed to make sufficient factual findings on that issue. Brooklyn Brewery Corporation v. Brooklyn Brew Shop, LLC, 2021 USPQ2d 1069 (Fed. Cir. 2021), errata issued January 18, 2022 (here).

Standing: The CAFC first dealt with the Brewery's appeal from the Board's dismissal of its opposition to registration of Defendant BBS's stylized mark for "sanitizing preparations for household use." The court found that the Brewery lacked Article III standing to appeal that decision because it failed to demonstrate that it would suffer injury if the registration were granted, since the Brewery does not sell sanitizing preparations.

[T]he test for likelihood-of-confusion or descriptiveness purposes is whether the challenger and registrant compete in the same line of business and failure to cancel an existing mark, or to refuse registration of a new mark, would be likely to cause the opposer competitive injury.

Therefore, the court dismissed the appeal as to those Class 5 goods.

Laches: The Brewery argued that the Board committed legal error by finding the two challenged marks to be substantially similar so that laches from the cancellation proceeding applied to the opposition as well. The court, however, found that the Board did not err. It also agreed with the Board's conclusion that confusion was not inevitable, which would have prevented the application of laches, since "neither the marks nor the goods were nearly identical." And so, the Board properly dismissed the Brewery Section 2(d) claim as to the stylized mark.

Acquired Distinctiveness: As to the registered, standard form mark, the Board found that the Brewery failed to overcome the presumption of inherent distinctiveness that attaches to a registered mark. That finding was supported by substantial evidence.

However, as to the unregistered, stylized version of the mark, because registration was sought under Section 2(f), the burden of proving acquired distinctiveness was on Defendant BBS, not on the Brewery. BBS contended that the Board did not have to address this issue, because, once the Board had denied the petition for cancellation, the Morehouse defense barred a challenge to the stylized mark since it is "essentially the same mark for the same goods."

The court observed that the Morehouse defense is premised on the principle that a party damaged by an existing registration “cannot suffer legal damage from [an] additional registration, over and above any damage it may suffer from [an] existing registration” for essentially the same mark and same goods. Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 884 (CCPA 1969).

The CAFC ruled that the Morehouse defense was inapplicable, noting that in the standard form registration for BROOKLYN BREW SHOP, the term BROOKLYN BREW was disclaimed, whereas in the stylized application, BREW SHOP was disclaimed. 

Therefore, because BBS’s applied-for mark claims rights to BROOKLYN and the registered mark disclaims rights in BROOKLYN BREW, the harm the two marks cause to Brewery’s BROOKLYN and BROOKLYN BREWERY marks is potentially different.

Because the Board did not make any factual findings as to whether BBS had met its burden of proof, the court remanded the case to the Board on that issue.

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TTABlogger comment: Since the registration for the standard character mark survived, maybe BBS should drop the stylized application. What do you think?

Text Copyright John L. Welch 2021.

Recommended Reading: The Trademark Reporter, September-October 2021 Issue

INTA has published the September-October, 2021 (Vol. 111 No. 5) issue of The Trademark Reporter (TMR). [pdf here]. Willard Knox, Editor-in-Chief, summarizes the contents as follows (and below): "In this issue, we offer our readers an article by two international scholars on the challenges posed to trademark owners by new generic top level-domains; an article by two brand professionals on how to avoid the potential pitfalls associated with trademark assignments in gross; and a review by a member of the TMR Committee of a comprehensive and authoritative resource on enforcing intellectual property rights in Africa."

 

Trademarks, Free Speech, and Fair Competition in a World of New Generic Top-Level Domains, Alpana Roy and Althaf Marsoof. The authors explore the challenges and opportunities posed to Internet users generally and trademark owners specifically by new generic top-level domains (gTLDs) under the "New gTLD Program" launched by the Internet Corporation for Assigned Names and Numbers in 2011.

How Gross Is Your Assignment? Actions Speak Louder Than Words When Transferring Goodwill, Lynda Zadra-Symes and Jacob Rosenbaum. The authors address the perennial problem of a trademark assignment "in gross"—that is, without the corresponding goodwill—and provide practitioners with guidance on how to reduce the risk of a subsequent abandonment finding. 

Book Review: Enforcement of Intellectual Property Rights in Africa. Marius Schneider and Vanessa Ferguson, Stuart Green. The reviewer finds that the authors have produced a comprehensive and authoritative resource on the state of protection and enforcement of these rights across the world’s second largest continent. 

 

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TTABlog comment: Once again, I thank The Trademark Reporter for allowing me to provide this issue to you all. This issue of the TMR is Copyright © 2021, the International Trademark Association, and is made available with the permission of The Trademark Reporter®.

Text Copyright John L. Welch 2021.

Licensee's Prior Common Law Use Established Priority for "SNORE MD" Mark

The Board sustained an opposition to registration of SNORE DOCTOR for "nasal dilators; therapeutic mouthpieces for the prevention of snoring" [DOCTOR disclaimed], finding confusion likely with Opposer James S. Fallon’s common law mark SNORE^MD for a therapeutic mouthguard to be worn over the teeth to reduce the effects of snoring. Opposer Fallon licensed the mark to his company, Apnea Sciences Corporation, and was entitled to rely on the corporation's use of the mark to establish his "standing" and to prove priority. From there, the likelihood of confusion analysis was a bit of a snoozer. James S. Fallon v. Brown Innovation, LLC, Opposition No. 91252488 (October 30, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The Board observed that "use of a mark by a licensee pursuant to a controlled licensing agreement is a use which may properly inure to a licensor/owner for purposes of trademark registration, even though the licensor may never have used the mark itself." In re Raven Marine, Inc., 217 USPQ 68, 70 (TTAB 1983), citing  Pneutek, Inc. v. Scherr, 211 USPQ 824 (TTAB 1981). Although Fallon did not submit a written license agreement, an oral license is sufficient. Id. 

Fallon's testimony together with certain documentary evidence established use of the mark in commerce by Apnea since a date prior to Applicant Brown Innovations’s constructive use date, thus establishing Fallon's priority.

The Board's Section 2(d) analysis was straightforward: it found the marks to be similar and used on in-part legally identical goods that travel in overlapping channels of trade to overlapping consumers. 

Brown Innovation pointed out that, although Fallon here argued that "MD" means "medical doctor," Fallon had in a different proceeding argued that the term was an abbreviation for "medical device." The Board noted that "[w]hile not conclusive of consumer perception of the mark, Opposer’s prior statements are facts to be considered in our analysis." 

Even though such a prior statement constitutes an admission and may be considered as evidence, "[u]nder no circumstances may a party’s opinion, earlier or current, relieve the decision maker of the burden of reaching his own ultimate conclusion on the entire record.” Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978). The Board found the argument regarding the meaning as "medical device" to be "unpersuasive," while the "medical doctor" abbreviation was supported by dictionary evidence and by the nature of the use of Fallon's mark in connection with the goods.

And so, the Board sustained the opposition.

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TTABlogger comment: This opinion was originally marked "precedential," but the Board promptly issued a correction.

Text Copyright John L. Welch 2021.