The TTABlog<sup>®</sup>: December 2021

TTABlog Quarterly Index: October - December 2021

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Section 2(a) - Deceptiveness:

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

Section 2(a) - False Suggestion of a Connection:

Precedential No. 31: TTAB Affirms Section 2(a) Refusal of "NATO" for Tents, for Falsely Suggesting a Connection With ... Guess What?

Section 2(d) - Likelihood of Confusion:

Section 2(e)(1) - Mere Descriptiveness:

Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:

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

> Section 2(f) - Acquired Distinctiveness:

Precedential No. 32: Color "Cream" for Guitar Pickups Lacks Acquired Distinctiveness, Says TTAB

Fraud:

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

Genericness:

Lack of Bona Fide Intent:

Precedential No. 33: "LOCH MOOSE MONSTER" Fends Off Monster Energy's Lack-of-Bona-Fide-Intent Summary Judgment Motion

Nonuse/Specimen of Use:

Procedural Issues/discovery:

Recommended Reading:

CAFC Rulings:

Other:

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

TTAB Posts January 2022 (Video) Final Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled six (6) oral hearings for the month of January 2022. The hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

January 5, 2022 - 1 PM: Eazy-PZ LLC v. Ez Etail, Inc., Cancellation No. 92064031 [Petition for cancellation of a registration for 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."]

January 11, 2022 - 2 PM: David M. Holdes v. Sean Kelly, Cancellation No. 92063940 [Petition for cancellation of a registration for the mark VELOCETTE for "Coats; Jackets; Shirts; T-shirts; Tops," on the ground of likelihood of confusion with the identical common law mark used, under license, in connection with various clothing items.]

January 12, 2022 - 2 PM: In re Alembic Pharmaceuticals, Inc., Serial No. 88660548 [Section 2(d) refusal of ALEMBIC for "Generic prescription drugs, approved by the U.S. Food and Drug Administration, namely, prescription drugs in the nature of pills, tablets, capsules, caplets, liquid drops, sachets and pharmaceutical preparations, for the treatment of allergic conjunctivitis, Alzheimer's disease, anxiety, bacterial infections, depression, epilepsy, infection, inflammation and allergies, ulcers, bacterial conjunctivitis, bipolar disorder, bronchoconstriction, erectile dysfunction, fungal infection, glaucoma, herpes, hypercholesterolemia, hypertension, hyperuricemia, hypoparathyroidism, influenza A and B, Parkinson's disease/syndrome, insomnia, intraocular pressure, paralysis, amnesia, unconsciousness, high cholesterol, neuropathic pain, arthritic pain and inflammation, ocular infections, overactive bladder, postoperative inflammation, ocular pain, cough, inflammatory and pruritic manifestations, rheumatoid arthritis, seizure, panic disorder, sleep disorder, transfusional iron overload, and moderate to severe scalp psoriasis; all of the foregoing prescribed by a licensed medical doctor with the prescriptions filled by a retail pharmacy licensed to sell prescription drugs," in view of the registered mark ALEMBIC HERBALS & Design for "medicines for human purposes for strengthening the immune system and restoring normal bodily functions, the treatment, mitigation and prevention of diseases and disorders, namely, digestive diseases and disorders, central nervous system diseases and disorders, namely, brain diseases, movement disorders, ocular motility, respiratory diseases and disorders, excretory diseases and disorders, cardiovascular diseases and disorders, reproductive diseases and disorders, endocrinal diseases and disorders, immunological diseases and disorders, namely, autoimmune diseases, immunologic deficiency syndrome, hepatitis, dermatological diseases and disorders, skeletal diseases and disorders, namely, bone diseases, back pain, muscular diseases and disorders, namely, muscular dystrophy, inflammatory muscle diseases, sensory diseases and disorders, namely, blindness” and “retail and wholesale store services for pharmaceutical, veterinary and sanitary preparations and medical supplies; online and physical shop retail and wholesale store services in the field of health preparations for medical purposes."]

January 13, 2022 - 1 PM: Giorgio Armani S.p.A. v. SEH International, Ltd., Opposition No. 91252482 [Opposition to registration of AXIO (Stylized) for "Sports equipment, namely, soccer uniforms, namely, shirts and shorts; jackets, pants and sweatshirts, belts for clothing, and socks," in view of the registered mark AX for, inter alia, "Clothing, namely, pullovers, cardigans, sweaters, trousers, skirts, jackets, blouses, shirts, jeans, sweatpants, shorts, sweatshirts, suits, dresses, overcoats, coats, raincoats, belts, jerseys, neckwear, socks and stockings, tights, vests, waistcoats, jumpers, tracksuits, blousons, gym suits, knickers, T-shirts, anoraks, suspenders, loungewear, underwear, beachwear, sleepwear, overalls, gloves and scarves; headgear, namely, hats and caps; shoes, sandals, boots and slippers."]

January 18, 2022 - 10 AM: Illyrian Import, Inc. v. ADOL Sh.p.k., Oppositions Nos. 91234244 and 91234345 [Oppositions to registration of SKËNDERBEU and GJERGJ KASTRIOTI SKËNDERBEU (Stylized) for "Beverages from wine distillates, namely, brandy and grape brandy" on the grounds of fraud and likelihood of confusion with the previously used mark GJERGJ KASTRIOTI SKËNDERBEU for liquor, including brandy.]

January 25, 2022 - 1 PM: Empresa Cubana Del Tabaco d.b.a Cubatabaco v. General Cigar Co., Inc., Cancellation No. 92025859 [Petition for cancellation (filed in January 1997) of two registrations for the mark COHIBA (one in standard form, the other stylized) for "cigars," on the grounds of violation of Article 8 of the Pan-American Convention, likelihood of confusion with Petitioner's identical mark for cigars, fraud in filing a Section 15 Declaration, misuse of a registration under Section 14(3), and abandonment.]

Read comments and post your comment here.

TTABlog comment: Any predictions?

Text Copyright John L. Welch 2021.

TTABlog Test: Are Hockey Sticks Related to Sports Gloves Under Section 2(d)?

The USPTO refused to register the mark KINETIXX for "hockey sticks, hockey stick shafts and hockey stick blades," finding confusion likely with the mark shown below, registered for "Baseball gloves, batting gloves, bowling gloves, boxing gloves, fencing gloves, field hockey gloves, football gloves, archery gloves, golf gloves, goalkeepers gloves, weight lifting gloves, windsurfing gloves, workout gloves." Applicant contended that the registrant 'made a conscious decision to not list hockey gloves as part of its goods," and furthermore that the cited mark is distinguishable because of the dominant red X. How do you think this came out? In re Kinetixx Golf, LLC, Serial No. 87671054 (December 15, 2021) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Goods: Examining Attorney Scott Kumis submitted third-party website evidence from entities specializing in athletic equipment, offering athletic gloves and hockey sticks under the same mark: including Dick’s Sporting Goods, Franklin, STX, Academy Sports + Outdoors and Modell’s Sporting Goods. In addition, he provided eleven use-based, third-party registrations for marks covering various athletic gloves and hockey sticks. The Board found that "the totality of the website and third-party registration evidence demonstrates that consumers would readily expect that athletic gloves of various types and hockey sticks could emanate from the same sources."

The absence of "hockey gloves" in registrant's identification of goods "does not, per se, mitigate in favor of a finding of no likelihood of confusion."

Channels of Trade: The website evidence demonstrated that the involved goods travel in the same channels of trade to the same classes of consumer. Moreover, in the absence of any limitations in the identifications of goods, the Board must presume that the goods are offered in all customary channels of trade.

The Marks: The fact that the registered mark is stylized is "of little consequence," since the propsed mark is in standard character form, and therefore the Board "must consider presentations of that mark regardless of font style, size or color in determining their similarity or dissimilarity." The Board found the marks to be identical in sound and meaning and nearly identical in appearance.

Applicant argued that this case is similar to In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) (holding confusion unlikely between REDNECK RACEGIRL and design of large, double-letter RR configuration and registered mark RACEGIRL, even when used on in part identical goods) and In re White Rock Distilleries Inc., 92 USPQ2d 1282 (TTAB 2009) (holding VOLTA for vodka infused with caffeine, and TERZA VOLTA and vine shoot design for wines, not likely to cause confusion).

The Board was unmoved, noting that the proposed mark doses not include a prominent design, but merely consists of the work KINETIXX in stylized form.

As a result, we disagree with Applicant that “the over-seized [sic] red “X” (like the sticks in Terza Volta) stands out as the dominant portion as the first thing an observer notices when seeing the mark under the Cited Registration.” (4 TTABVUE 7.) Even in the event consumers first notice the red-colored letter “X” in the cited mark, they will see it as the penultimate letter in the stylized term KINETIXX.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2021.

TTABlog Test: Is ZERO MEAT Merely Descriptive of Animal, Fish, and Poultry Certification Services?

The USPTO refused to register the proposed mark ZERO MEAT for "Testing, analysis and evaluation of the goods and services of others to determine conformity with certification standards; testing, analysis and evaluation of the food products of others to determine conformity with certification standards relating to animal, fish or poultry," on the ground of mere descriptiveness. Applicant Equity argued that the proposed mark is a coined phrase, and that other terms like "contains no ...", or free of ..." or "vegan" or "vegetarian" would be used to indicate the absence of animal, fish, or poultry content in foods. How do you think this came out? In re Equity IP Holdings, LLC, Serial No. 88517758 (December 16, 2021) [not precedential] (Opinion by Judge George C. Pologeorgis).

Examining Attorney Morgan L. Meyers relied on dictionary definitions of "zero" and "meat," as well as on several Internet items employing the term "zero meat." Applicant, in addition to the arguments mentioned above, pointed to existing registrations of marks comprised of the term “zero” with another words, claiming that the proposed mark deserves like treatment. And it asserted that any doubt on the issue of mere descriptiveness should be resolved in its favor.

The Board was unmoved by applicant's arguments. The "coined term" assertion was belied by the evidence showing use of the term ZERO MEAT by others. Moreover, even if applicant were the first user of the term, that would not preclude a finding of mere descriptiveness.

As to the third-party registrations, applicant neglected to submit them into evidence. In any event, the Board must make its decision in each case on its own merits. "Even if some prior registrations had some characteristics similar to [Applicant’s] application, the PTO's allowance of such prior registrations does not bind the Board. . . ." In re Nett Designs Inc., 57 USPQ2d at 1566.

The record showed that third parties use the proposed mark to describe goods that do not contain meat. "The evidence supports a finding that consumers who encounter the wording ZERO MEAT in connection with Applicant’s services would immediately understand that the services rendered by Applicant ensure or certify that certain food products do not contain any meat."

And so, having no doubt regarding the issue at hand, the Board affirmed the Section 2(e)(1) refusal.

Applicant requested, in the alternative, that the application be returned to the examining attorney so that applicant "may possibly" amend the application to proceed on the Supplemental Register "upon commencement of use of the trademark." No dice, said the Board. Applicant never made such a request while the application was pending, though the examining attorney suggested such an amendment.

The Board pointed out that, once an appeal has been decided, the application may be reopened only to enter a disclaimer, or upon order of the Director. Neither exception applied here.

Read comments and post your comment here.

TTABlogger comment: Neither applicant nor the Board mentioned that fact that in July 2021, this applicant registered ZERO MEAT on the Supplemental Register for "Food comprised of non-animal content, namely, meat, fish and poultry substitute foodstuffs having no meat, fish, or poultry." [Specimen of use depicted above]. That fact would seem to be relevant to the issue at hand.

Text Copyright John L. Welch 2021.

Precedential No. 35: TTAB Grants MIRAGE BRANDS Cancellation Petition Due To Likelihood of Reverse Confusion

In an otherwise straightforward Section 2(d) analysis, the Board ruled that confusion is likely between Respondent's registered marks MIRAGE BRANDS (standard form) and MIRAGE BRANDS & Design [BRANDS disclaimed], and Petitioner Mahender Sabhnani's previously used and registered mark ROYAL MIRAGE & Design, all for perfume. Finding that "Respondent's presence in the marketplace is considerably greater than that of Petitioner," the Board saw "a circumstance of reverse confusion in which consumers exposed to Respondent’s marks for perfumes who encounter Petitioner’s mark for perfume are likely to believe mistakenly that Petitioner’s goods originate with Respondent." Mahender Sabhnani v. Mirage Brands, LLC, 2021 USPQ2d 1241 (TTAB 2021) [precedential] (Opinion by Judge Christopher Larkin).

Priority: "In a cancellation proceeding . . . where both parties own registrations, priority is in issue." Double Coin Holdings, Ltd. v. Tru Development, 2019 USPQ2d 3373409, at *4 (TTAB 2019). The earliest date on which Respondent could rely was November 23, 2016, the filing date of its underlying applications. Petitioner Sabhnani had an October 27, 2000 filing date of his underlying application and so he established priority of use.

Reverse Confusion: The Board observed that weighing of the DuPont factors "must take into account the confusion that may flow from extensive promotion of a similar or identical mark by a junior user." In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).

The term “reverse confusion” has been used to “describe the situation where a significantly larger or more prominent newcomer ‘saturates the market’ with a trademark that is confusingly similar to that of a smaller, senior registrant for related goods or services.” Id. (quoting Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 24 USPQ2d 1001, 1010 & n.12 (7th Cir. 1992))

The Board noted that Petitioner did not expressly plead reverse confusion, but it "'does not have to be specifically pleaded so long as the plaintiff asserts that the respective marks are so similar as applied to the respective goods or services as to be likely to cause confusion.'" Top Tobacco, 101 USPQ2d at 1175 n.18 (quoting Am. Hygienic Labs. v. Tiffany & Co., 12 USPQ2d 1979, 1983 n.7 (TTAB 1989))." The Board is "obligated to consider confusion in whatever manner it presents itself under Trademark Act Section 2(d)."

Respondent's sales figures were "multiple orders of magnitude larger that Petitioner's sales figures for the same period," suggesting that "it is far more likely that consumers will be exposed to Respondent's marks than to Petitioner's mark."

DuPont analysis: Since the involved goods are identical (in part), the second DuPont factor weighed heavily in petitioner's favor. As to the third and fourth factors, absent any limitations in the identifications of goods, the Board must presume that those identical goods travel in the same channels of trade to the same classes of consumers.

Turning to the sixth factor, respondent argued that petitioner's mark is weak because the word "MIRAGE" is in common use for goods in International Class 3. The Board pointed out that only third-party use evidence is relevant to the commercial strength of petitioner's mark, and the probative value of that evidence depends upon the usage of the mark. Respondent provided evidence of use of only one third-party mark for perfume, clearly insufficient to show commercial weakness of petitioner's mark.

As to third-party registration evidence, which may affect the conceptual strength of a mark, only six of the eight registrations cited by respondent covered "perfume" or "colognes." However, the registered marks - HOLLISTER JASMINE MIRAGE, MIRAGE LAYON, DESERT MIRAGE, RADIANT MIRAGE, GOLD MIRAGE, AND SHINE MIRAGE - also include additional elements "that may cause them to be less similar to Petitioner's marks than Respondent's marks are." Cf. Inn at St. John’s, 126 USPQ2d at 1745-46 (discounting probative value of third-party registrations “contain[ing] the non-identical term ‘Fifth’” in showing that the cited registered mark 5IVESTEAK was weak).

The Board concluded that respondent's evidence, comprising one third-party use and six third-party registrations of "varying probative value," was "a far cry from the large quantum of evidence of third-party use and third-party registrations that was held to be significant in both' Jack Wolfskin and Juice Generation." Id. Accordingly, the Board found the sixth DuPont factor to be neutral, and it accorded petitioner's mark "the normal scope of protection to which inherently distinctive marks are entitled." Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1347 (TTAB 2017).

The Marks: Because the goods under consideration are identical, a lesser degree of similarity between the marks is necessary to support a finding of likelihood of confusion. Coach Servs., 101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *14 (TTAB 2020).

Observing that, and a word-and-design mark, the verbal portion is "likely to make a greater impression upon purchasers, to be remembered by them, and to be used by them to request the goods," the Board found that the term ROYAL MIRAGE is the dominant portion of petitioner's word-and-design mark, noting that the surrounding design is an ordinary geometric shape and the crown design "merely reinforces the words." As to respondent's marks, the Board found the word MIRAGE to be the dominant element: the word BRANDS has no source-identifying significance and the stylized "M" primarily reinforces the first letter in the word MIRAGE.

The standard character mark MIRAGE BRANDS may be displayed in any style or font, including that of the words ROYAL MIRAGE in petitioner's mark. The design element in petitioner's mark reinforces the laudatory term ROYAL, similar to the way in which the "M" in Respondent's composite mark the emphasized the first letter of MIRAGE. The Board therefore found the involved marks to be more similar than dissimilar.

As to connotation and commercial impression, the Board gave less weight to the laudatory adjective ROYAL than to the noun MIRAGE. Observing that a consumer "could readily view Petitioner's mark as identifying a particular perfume figuratively "suitable for royalty" that emanates from Respondent's MIRAGE BRANDS 'house.'"

The Board concluded that the similarities between the marks in appearance, sound, meaning, and commercial impression outweigh differences, particularly keeping in mind that a lesser degree of similarity is required when the goods are identical.

Other DuPont Factors: Because the parties' identifications of goods cover "perfume" without limitation as to nature or price, the Board must presume that the goods include inexpensive perfumes bought by ordinary consumers, without careful consideration: for example, via the Internet.

Turning to the eighth factor, Petitioner Sabhnani claimed that actual confusion had occurred, but his evidence was unimpressive. He received telephone calls inquiring whether MIRAGE BRANDS was related to ROYAL MIRAGE, but the Board observed that these calls do not constitute evidence of actual confusion because the inquirer suspected that the brands were not related. Petitioner could not identify any caller or specify the dates of the callsand his testimony was "vague in every respect."

The absence of reported incidents of actual confusion is probative "only if the record indicates appreciable and continuous use by [Respondent] of its mark[s] for a significant period of time in the same markets as those served by [Petitioner] under [his] mark[ ]." Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011) (quoting Gillette Can. Inc. v. Ranir Corp., 1768, 1774 (TTAB 1992)). "In other words, for the absence of actual confusion to be probative, there must have been a reasonable opportunity for confusion to have occurred." Id.

The Board pointed out that, unlike the analysis under the second, third, and fourth DuPont factors, the Board must consider the actual marketplace conditions to determine whether a reasonable opportunity for confusion has occurred. The Board concluded that, in light of the differing channels of trade employed by the parties, and the "very low" level of petitioner's sales ($6,246 gross sales in 2019), there had not been such a reasonable opportunity for confusion to occur during the four years of concurrent use of the parties' marks. Therefore, the eighth DuPont factor was neutral.

Conclusion: Finding that the first, second, third, and fourth DuPont factors weighed in petitioner's favor, while the sixth, seventh, and eight factors were neutral, the Board concluded that petitioner proved by a preponderance of the evidence that confusion is likely. And so, the Board granted the petitions for cancellation.

Read comments and post your comment here.

TTABlogger comment: I don't see why the likely presence of "reverse confusion" makes this case worthy of precedential status. It's still the same DuPont analysis, which is fairly mundane here. Anyway, do you think confusion would occur in the real world?

Text Copyright John L. Welch 2021.

TTABlog Test: How Well Do You Know Your TTAB "Factors"?

Certain case names are associated with certain factors that the TTAB considers in deciding certain issues. For example, in assessing likelihood of confusion the Board applies the "DuPont factors. See if you can match the case names listed below with the issue that each addressses. [Answers provfided in first comment.]

	Case Name		Issue
1	Benthin	A	2(a) deceptiveness
2	Budge	B	excusable neglect
3	Converse	C	2(a) false connection
4	DuPont	D	2(e)(2)
5	Great Seats	E	2(e)(3)
6	Morton-Norwich	F	2(d)
7	Newbridge Cutlery	G	2(f)
8	Notre Dame	H	untimely disclosure
9	Pioneer	I	2(e)(4)
10	Spirits Int'l	J	2(e)(5)

Read comments and post your comment here.

TTABlogger comment: If you put the case name in the TTABlog search engine, you will find references to the factors.

Text Copyright John L. Welch 2021.

USPTO Issues Examination Guide 1-21: Expungement and Reexamination Proceedings Under the Trademark Modernization Act of 2020

Monday, December 27, 2021, is opening day for the new USPTO ex parte expungement and reexamination procedures. The Director of the USPTO is expected to throw out the ceremonial first brief and holler "play ball!" Meanwhile the Office has issued "Examination Guide 1-21: Expungement and Reexamination Proceedings Under the Trademark Modernization Act of 2020." [pdf here]. The Office has also made available a new TEAS form called "Petition for Expungement or Reexamination."

Establishing a prima facie case of nonuse may be not be easy. Proving a negative never is. Be sure to read the Board's decision in TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, 128 USPQ2d 1786 (TTAB 2018) [TTABlogged here], involving an "expedited cancellation" proceeding in which the Petitioner TV Azteca failed to establish a prima facie case of abandonment based on its pleaded claim of nonuse during the three-year period immediately preceding the filing of the petition to cancel.

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

CAFC Affirms TTAB's Dismissal of SKY CINEMAS Opposition: Not Confusable with SKY NEWS for News Reporting Services

In a nonprecedential ruling, the CAFC upheld the Board's decision dismissing an opposition to registration of SKY CINEMAS for "movie theaters" [CINEMAS disclaimed], finding the mark not likely to cause confusion with SKY NEWS for radio and television news services. The Board concluded that the involved services are not related nor offered through the same trade channels, and it found that opposer failed to show that movie theaters are within its natural zone of expansion. [TTABlogged here]. Sky International AG v. Sky Cinemas LLC, Appeal No. 21-1575 (Fed. Cir. December 17, 2021) [not precedential].

Opposer Sky International raised three issues on appeal: it argued that (1) the Board improperly "bifurcated" the case by deciding International's own claims before considering Cinema's counterclaims; (2) the Board erroneously considered only International's standard character registrations; and (3) the Board's finding that movie theaters were outside of International's natural zone of expansion was not supported by substantial evidence.

As to the first argument, the court did not agree that the case was bifurcated. And in any case, the Board merely postponed consideration of the counterclaims and then addressed the counterclaims in a separate order.

As to the second argument, the court agreed that the Board should have considered a word-plus-design registration owned by International, since it included service in addition to those recited in the two standard character registrations for SKY NEWS that the Board considered. However, the error was harmless because the Board did consider the additional services when it analyzed International's natural-zone-of-expansion argument.

As to the third argument, the court reviewed the Board analysis as to whether International was likely to "bridge the gap" between its services and the operation of movie theaters. The Board found that there was an overlap in customers and direct competition between the involved services, that International has expanded its business into the production of films, and that it offered streaming services for a variety of platforms, including mobile devices, laptops, and desktop computers.

Nonetheless, the Board found that a motion picture production company would be unlikely to “go into the business of operating a movie theater without significant new technology or know-how,” that the nature of the parties' services was different, and that “there [was] no record evidence showing that companies that produce films or distribute films over users’ personal devices have expanded to owning or running movie theaters.”

And so, the CAFC held that "substantial evidence supports the Board’s finding that operating movie theaters is not within Sky International’s natural zone of expansion."

Read comments and post your comment here.

TTABlogger comment: By considering the marketplace in dealing with the natural-zone-of-expansion argument, the Board has created some serious issue preclusion problems for Sky International if it pursues an infringement suit against Sky Cinema.

Text Copyright John L. Welch 2021.

On Remand from the CAFC, TTAB Denies Petition for Cancellation of "NAKED" Registration for Condoms

The NAKED condom case returned to the TTAB after a CAFC reversal [TTABlogged here] and the Supreme Court's denial of the registrant's petition for writ of certiorari (September 2021). The CAFC ruled that the Board erred in concluding that Petitioner Australian Therapeutic lacked "standing" to bring its petition for cancellation, pointing out that a petitioner need not have a proprietary interest in a mark to have standing. On remand, the Board has denied all three of Australian's claims: Section 2(d) likelihood of confusion (due to lack of proprietary rights in its purported marks NAKED and NAKED CONDOMS), lack of bona fide intent, and Section 2(a) false suggestion of a connection. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, Cancellation No. 92056381 (December 16, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

In its December 2018 decision, the Board concluded that Petitioner Australian lacked "standing": it could not show an interest in the proceeding or a reasonable belief of damage because it had contracted away its proprietary rights in its unregistered marks. In July 2020, the CAFC reversed and remanded, holding that "[a]n absence of proprietary rights does not in itself negate an interest in the proceeding or a reasonable belief of damage." The court concluded that Australian had established its entitlement to bring a cancellation proceeding under Section 1064 because it had a real interest in the proceeding and a reasonable belief of damage "regardless of whether petitioner lacks a proprietary interest in an asserted unregistered mark."

Section 2(d) likelihood of confusion: Petitioner Australian claimed a likelihood of confusion between the registered mark NAKED and its purported common law marks NAKED and NAKED CONDOMS, for condoms. [equally oxymoronic? - ed.] According to Section 2(d), Australian was required to show ownership of a mark "previously used in the United States . . . and not abandoned." Establishing priority requires proof of proprietary rights in the mark that produces a likelihood of confusion.

The Board again reviewed in detail the communications between the parties and concluded that they had reached an oral agreement:

Petitioner’s proprietary interest in its purported common law NAKED trademarks is intrinsically connected with the question of whether the parties have an enforceable agreement that precludes Petitioner from using or registering the mark NAKED or NAKED CONDOMS and from challenging Respondent’s use and registration of the NAKED mark for condoms. Petitioner’s actions and communications stating that it no longer had any NAKED brand condoms in the United States so that it should be 'clear sailing' for Respondent to launch its NAKED brand condoms caused Respondent to reasonably believe that any rights Petitioner had in the NAKED trademark for condoms had been abandoned. Therefore, we find that Petitioner agreed that it would not use or register the mark NAKED for condoms in the United States and that Respondent could use and register the mark NAKED for condoms in the United States.

Therefore, the Board concluded that, because Australian failed to prove a proprietary interest in its purported common law NAKED trademark and failed to prove priority, "having contracted away its right to use and register NAKED and by extension NAKED CONDOMS."

Lack of Bona Fide Intent: Australian argued that, prior to filing the underlying application (on September 22, 2003), respondent did not have a written business plan, did not have any agreements for design or manufacture of condom wrappers featuring the NAKED mark, did not have any agreements with distributors, wholesalers, or retailers, and did not have a website. Nor did respondent have advertising material or seek FDA approval. Moreover, in the two-year period 2003-2005, respondent's principal cause 27 intent-to-use applications for various marks for condoms, despite admittedly not knowing the legal meaning of "intent to use."

Respondent's evidence and testimony showed that its principal had worked in the birth control industry since 1989, designing a "relaxed-fit" condom. He conducted clinical trials in 2000 and manufacturing began in 2002-2003. He developed his own formula for a lubricant, as well as special packaging.

The Board observed that an applicant may file more than one intent-to-use application for the same goods, and still have the required bona fide intention to use each mark. See Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d at 1506 n.7 (citing S. Rep. No. 100-515, 100th Cong. 2d Sess. at 24-25 (1988)). It then concluded that respondent did have a bona fide intention to use the NAKED mark at the time of its filing.

In sum, consideration of the evidence as a whole supports finding that Respondent had a bona fide intent to use the mark NAKED for condoms at the time it filed the application. Ireland’s testimony is credible, clear, uncontradicted and supported by enough documents to comprise objective facts that establish Respondent’s bona fide intent to use the mark. Lane Ltd. v. Jackson Int’l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994).

False Suggestion of a Connection: The Board applied the well known four-part test set fourth in Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

1. The mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;
2. The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
3. The person or institution named by the mark is not connected with the activities performed by the defendant under the mark; and
4. The fame or reputation of the person or institution is such that, when the mark is used with the defendant’s goods, a connection with the person or institution would be presumed.

The Board concluded that Petitioner Australian failed to meet the first, second, and fourth elements of the test. It found that NAKED is not petitioner's name, and there was no evidence that consumers perceive NAKED as Petitioner's identity or persona. Moreover, even assuming that NAKED is petitioner's identity, there was no evidence that the mark points uniquely and unmistakably to petitioner. Finally, petitioner's minimal advertising and sales figures were insufficient to prove that petitioner enjoyed a reputation that would cause consumers to presume that respondent's use of NAKED would be associated or connected with petitioner.

And so, the Board dismissed the Section 2(a) false association claim.

Read comments and post your comment here.

TTABlogger comment: If you think, as I do, that this opinion should be precedential, you can tell the TTAB so via this nomination form: (link here).

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

Here are three recent TTAB decisions in Section 2(d) inter partes proceedings. Not knowing all the facts, see if you can guess how they came out. At least one of the three was dismissed or denied. Answer(s) in the first comment.

Trusted Debit, LLC v. My Canna PayG Financial, Opposition No. 92073715 (December 9, 2021) [not precedential] (Opinion by Judge Angela Lykos). [Petition for cancellation of a registration for the mark MY CANNA PAY & Design for payroll services, on the ground of likelihood of confusion with the registered mark CAN PAY & Design for electronic commerce payment services].

The Children’s Hospital of Philadelphia v. Arkansas Children’s, Inc., Opposition No. 91242802 (December 14, 2021) [not precedential] (Opinion by Judge Christen M. English).[Section 2(d) opposition to registration of ARKANSAS CHILDREN'S & Design for "Charitable fund raising services, namely, raising funds to support pediatric care, research, education and prevention programs" [ARKANSAS CHILDREN'S disclaimed], in view of the registered marks CHILDREN'S HOSPITAL OF PHILADELPHIA & Design for "charitable fundraising services” [CHILDREN'S HOSPITAL disclaimed] and CH & Design for hospital services].

Lagunitas Brewing Company v. Deanna Fulton and Kunoor Chopra, Opposition No. 91254430 (December 14, 2021) [not precedential] (Opinion by Judge Jonathan Hudis). [Section 2(d) opposition to registration of LAGUNATIC for various goods in four classes, including beer glasses, towels, clothing, and non-alcoholic beer, in view of the registered mark LAGUNITAS for ale.]

Read comments and post your comment here.

TTABlog comment: How did you do?

CAFC Affirms TTAB: "BF-7" Registration for Nutritional Supplements Invalid Due to Non-Ownership

In a non-precedential ruling, the CAFC affirmed the Board's decision (here) ordering cancellation of a registration for the mark BF-7 for "nutritional supplement goods" on the ground that Registrant Sunbio was not the owner of the mark at the filing date of the underlying application because it had not used the mark. The court rejected Sunbio's arguments that (1) it did not have proper notice of the theory on which cancellation was based, and (2) the Board's finding of nonuse was not supported by substantial evidence. Biogrand Co., Ltd. v. Sunbio Corporation, 2021 USPQ2d 1220 (Fed. Cir. 2021) [not precedential].

Notice: Appellant Sunbio claimed that is was not aware of Biogrand's non-ownership theory until Biogrand's reply brief, at which time it was too late for Sunbio to address the issue. The court, reviewing the record, disagreed, concluding that Sunbio was put on notice of the non-ownership issue by Biogrand's opening brief. In fact, Sunbio addressed that argument in its responding brief.

Evidence of Non-ownership: The court found that the record evidence of non-ownership "more than satisfies the substantial evidence standard." Sunbio's specimen of use (shown above) did not display Sunbio's company name. The testimony indicated that this sample product was made for a company called SmartNutri. Documents showed that Sunbio was merely a middle-man in the sale of product by SmartNutri to its customers.

Furthermore, Sunbio's website promoted a product called "CERA-Q" and not the BF-7 product, and the website of Sunbio's sole customer also referred to the same CERA-Q mark. However, SmartNutri's website showed a product promoted by the BF-7 trademark.

The record evidence, viewed collectively, provides ample support for the Board’s finding that "all indicia point to SmartNutri as being the owner of the BF-7 mark when [Sunbio] filed its underlying trademark application.

Finally, the CAFC agreed with the Board that SmartNutri's use of the BF-7 mark could not be attributed to Sunbio under the "related company" doctrine. Although SmartNutri was founded and formerly controlled by one Mr. Chang, who also founded Sunbio, he maintained the companies as two separate entities. Sunbio did not exercise control over the nature and quality of Smartnutri's product and there was no agreement between the two regarding use of the mark.

Read comments and post your comment here.

TTABlogger comment: The CAFC opinion says that "the Board cancelled the mark." However, registrations are cancelled, not marks.

Precedential No. 34: TTAB Affirms Nonuse Refusal - Service Mark Use Requires Rendering of the Services, Not Just Preparation

In a somewhat muddled decision, the Board affirmed a refusal to register the proposed mark HAVE SOME DECENCY for various charitable fund raising services on the ground that the mark was not in use as of the applicant's Section 1(a) filing date. Applicant Suuberg made preparatory measures to use the mark but never rendered the services before her filing date. In re Alessandra Suuberg, 2021 USPQ2d 1209 (TTAB 2021) [precedential] (Opinion by Judge Albert Zervas).

In an application based on use in commerce under Section 1(a) of the Lanham Act, the applicant must use the mark in commerce on or in connection with all the goods and services listed in the application as of the application filing date. See Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043 (Fed. Cir. 2015). According to Section 45, a mark is used in commerce "on services when [1] it is used or displayed in the sale or advertising of services and [2] the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services." [Emphasis added].

Statements on Ms. Suuberg's website indicated that she was not accepting donations and was looking for volunteers to "get our organization off the ground." Ms. Suuberg explained that, at the time of her trademark application filing, she had recently completed a post-baccalaureate premedical program, incorporated a non-profit organization, applied for tax-exempt status, and registered a domain name.

The Board found the Couture case to be relevant: there, the applicant had not rendered his entertainment services in commerce as of his filing date, but had merely advertised his "readiness, willingness and ability" to do so. The CAFC declared 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." Couture, 113 USPQ2d at 2042-43.

Just as in Couture [TTABlogged here], where the applicant’s activities were preliminary and had not resulted in any use of the mark in commerce prior to the filing of the application, Applicant here was in the nascent stage of developing her business when she filed her application. She had just finished her education and had just formed an entity to develop her vision of “encouraging 'decency' in medicine and medical research." Applicant’s incorporation of her organization, application for tax-exempt status and registration of her domain name did not accord her service mark rights. See Stawski v. Lawson, 129 USPQ2d 1036, 1045 (TTAB 2018) (citing Brookfield Comms., Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 50 USPQ2d 1545, 1555 (9th Cir. 1999); In re Letica Corp., 226 USPQ 276, 277 (TTAB 1985)).

The Board concluded that none of the applicant's preparatory measures amounted to use in commerce. And so, the Board deemed the application void ab initio.

Read comments and post your comment here.

TTABlogger comment: I think the Board should have made clear that, regardless of whether she advertised her services, the statute requires that the services be rendered before the filing of a Section (a) application. Here's a question for you: suppose a restaurant opens for business on day 1, but the first customer is served on day 2. What is the first use date for the restaurant's services?

Precedential No. 33: "LOCH MOOSE MONSTAH" Fends Off Monster Energy's Lack-of-Bona-Fide-Intent Summary Judgment Motion

Tom & Martha LLC's application to register the mark LOCH MOOSE MONSTAH for gift shop goods and services survived a feeble summary judgment attack by frequent TTAB plaintiff Monster Energy, who claimed that the applicant lacked a bona fide intent to use the mark in commerce. Although the evidence did not show that applicant "took concrete steps to launch all the goods and services in its application," it did show applicant's "capacity to market" them. The existence of a genuine issue of material fact as to applicant's bona fide intent precluded summary judgment. Monster Energy Company v. Tom & Martha LLC, 2021 USPQ2d 1197 (TTAB 2021) [precedential].

The Board observed that "an application will not be deemed void for lack of bona fide intention to use absent … proof of a lack of bona fide intention to use the mark on all the goods identified in the application, not just some of them." Wet Seal, 82 USPQ2d at 1633. "[A]s long as the mark was used on some of the identified goods or services as of the filing of the application, the application is not void in its entirety." Grand Canyon W. Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1697 (TTAB 2006). And in Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1943 (TTAB 2013), the Board explained that in an opposition involving a claim of lack of bona fide intent to use, amending the identification is permissible “to reflect those goods with which [the party] has a bona fide intent to use the mark.”

Opposer relied on the deposition testimony of one of applicant's principals, Mr. Byrne, but many of his statements were qualified and "when read in their entirety, reveal that Applicant’s plans to expand were contingent on whether the business was a success." For example:

“But if it had taken off, or if it does take off, then we could do it”;
“If it takes off and they were going to sell, sure”; and
“But I’m not going to rule it out if it was going to take off. I’m not going to say well, I’ll never do that.”

Applicant argued, and Mr. Byrne confirmed in a declaration, that applicant is a small business that has developed a number of marks intended for use on a wide range of consumer goods; its brand development strategy is to identify a brand, file an intent to use application for the intended goods, and then start the process of bringing the goods to market. Moreover, applicant produced photographs showing use of its LOCH MOOSE MONSTER mark on hooded sweatshirts, t-shirts, canvas tote bags, hats, and mugs.

The Board observed that "[e]vidence that a party has the capacity to market or manufacture a product can rebut a lack of bona fide intent to use claim." Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1643 (TTAB 2007).

Although the record does not show that Applicant took concrete steps to launch all the goods and services in its application, it does not necessarily indicate the absence of a genuine dispute of material fact that Applicant lacked a bona fide intent to use its mark in commerce in connection with the identified goods and services as of the application filing date. See Wet Seal, 82 USPQ2d at 1643. The evidence of record, and in particular the Byrne declaration, show Applicant has the capacity to market goods and services such as those listed in its application. See id.

The Board found that a genuine dispute of material fact exists with respect to, at a minimum, the issue of whether the applicant "lacked a bona fide intent to use its mark on any particular goods and services in each class identified in the application as of the application filing date." It therefore denied the motion for summary judgment.

Read comments and post your comment here.

TTABlogger comment: Would you have moved for summary judgment? (or WYHMFSJ?) PS: not the clearest decision I've ever read.

The TTABlog®

Friday, December 31, 2021

TTABlog Quarterly Index: October - December 2021

Thursday, December 30, 2021

TTAB Posts January 2022 (Video) Final Hearing Schedule

Wednesday, December 29, 2021

TTABlog Test: Are Hockey Sticks Related to Sports Gloves Under Section 2(d)?

Tuesday, December 28, 2021

TTABlog Test: Is ZERO MEAT Merely Descriptive of Animal, Fish, and Poultry Certification Services?

Monday, December 27, 2021

Precedential No. 35: TTAB Grants MIRAGE BRANDS Cancellation Petition Due To Likelihood of Reverse Confusion

Friday, December 24, 2021

TTABlog Test: How Well Do You Know Your TTAB "Factors"?

Thursday, December 23, 2021

USPTO Issues Examination Guide 1-21: Expungement and Reexamination Proceedings Under the Trademark Modernization Act of 2020

Wednesday, December 22, 2021

CAFC Affirms TTAB's Dismissal of SKY CINEMAS Opposition: Not Confusable with SKY NEWS for News Reporting Services

Tuesday, December 21, 2021

On Remand from the CAFC, TTAB Denies Petition for Cancellation of "NAKED" Registration for Condoms

Monday, December 20, 2021

Recommended Reading: The Trademark Reporter, November-December 2021 Issue

Friday, December 17, 2021

Recommended Reading: Germain and Sitler, "The Constitution Commandeth: Thou Shalt Not Protect the Same Subject Matter Under Design Patent and Trade Dress Laws"

Thursday, December 16, 2021

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

Wednesday, December 15, 2021

CAFC Affirms TTAB: "BF-7" Registration for Nutritional Supplements Invalid Due to Non-Ownership

Tuesday, December 14, 2021

Recommended Reading: "Trademark Injury in Law and Fact: A Standing Defense to Modern Infringement"

Monday, December 13, 2021

Precedential No. 34: TTAB Affirms Nonuse Refusal - Service Mark Use Requires Rendering of the Services, Not Just Preparation

Friday, December 10, 2021

Precedential No. 33: "LOCH MOOSE MONSTAH" Fends Off Monster Energy's Lack-of-Bona-Fide-Intent Summary Judgment Motion

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