The Top Ten TTAB Decisions of 2021 (Part I)

The TTABlogger has once again chosen the ten (10) TTAB (Tee-Tee-Ā-Bee) decisions that he considers to be the most important and/or interesting from the previous calendar year (2021). This is the first of two (2) posts; the first five (5) selections are set out below. Additional commentary on each case may be found at the linked TTABlog post. The cases are not necessarily listed in order of importance (whatever that means).

Chutter, Inc. v. Great Management Group, LLC and Chutter, Inc. v. Great Concepts, LLC, 2021 USPQ2d 1001 (TTAB 2021) [precedential] (Opinion by Judge Marc A. Bergsman) [TTABlogged here]. In the seminal fraud case of In re Bose, the CAFC left open the question of whether “reckless disregard” for the truth is sufficient for a finding of fraud on the USPTO. The Board has now answered that question in the affirmative,  significantly lowering the bar for proof of a claim of fraud. It granted a petition for cancellation of a registration for the mark DANTANNA’S for “steak and seafood restaurant” on the ground of fraud. Plaintiff Chutter’s fraud claim was founded on defendant’s filing of a Section 15 Declaration of Incontestability in which its counsel, Mr. Taylor, falsely stated that there were no civil actions or USPTO proceedings pending against the DANTANNA’S mark and registration. Mr. Taylor testified that he did not review the document “carefully enough to see that the statement is in [t]here incorrectly.” Neither he nor Great Concepts notified the USPTO about the false statement, although they were aware of it since 2015. The Board pointed out that in Bose the CAFC held that the intent to deceive must be willful. The Supreme Court and various circuit courts of appeal have ruled that “willful” includes reckless behavior. Therefore, the Board held that “[i]n matters of trademark registration and maintenance, where the USPTO relies on declarations to be complete, accurate, and truthful . . . reckless disregard is equivalent to intent to deceive and satisfies the intent to deceive requirement.”

Fuji Medical Instruments Mfg. Co., Ltd. v. American Crocodile International Group, Inc., 2021 USPQ2d 831 (TTAB 2021) [precedential] (Opinion by Judge Thomas Shaw) [TTABlogged here]. For only the second time since the CAFC’s 2009 decision in In re Bose, the Board upheld a claim of fraud, ordering cancellation of a registration for the mark FUJIIRYOKI for massage chairs. William Shen, the CEO of Respondent ACIGI, filed the underlying application and then assigned the registration to ACIGI soon after issuance. The Board found that Shen knew he was not the owner of the mark, that his false statement of ownership was material to the registration, and that he intended to deceive the USPTO. Respondent ACIGI became Fuji’s exclusive U.S. distributor in 2005 and was still in that role when Mr. Shen filed the underlying trademark application in 2015. The Board found that Fuji was the owner of the mark and that Shen’s claim of ownership was a false and material representation. The Board further found that “contradictions, inconsistencies, and indefiniteness” in Shen’s testimony demonstrated his lack of credibility. The evidence was “clear and convincing” that Shen intended to deceive the USPTO - not only the documentary evidence but also Shen’s “grossly evasive testimony, and his self-serving claims.”

Philanthropist.com, Inc. v. The General Conference Corporation of Seventh-day Adventists, 2021 USPQ2d 643 (TTAB 2021) [precedential] (Opinion by Judge Jonathan Hudis). [TTABlogged here]. Finding that petitioner failed to demonstrate its entitlement to maintain its genericness claim (f/k/a "standing"), the Board tossed out this petition for cancellation of two registrations for the mark ADVENTIST for religious publications, film production and distribution, educational services, and religious and missionary services. Petitioner owned the domain name "adventist.com," but “[a]ll Petitioner has ever done is to hold it for future sale at an inflated price (a practice known as ‘warehousing’), or to redirect Internet users to the TTABVUE docket page for these proceedings.” The Board concluded that the petitioner did not satisfy either prong of the Lexmark test at the time of trial: its interests did not fall within the protectable zone of interests of Section 1064, and there was no reasonable basis in fact for a belief in damages proximately caused by the continued existence of the challenged registrations. “The purpose of the zone-of-interests test is to ‘foreclose[] suit … when a plaintiff’s interests are so marginally related to or inconsistent with the purposes implicit in the statute that it cannot reasonably be assumed that Congress authorized that plaintiff to sue.’” Moreover, “[t]o the extent Petitioner’s belief in damage may have existed at the time Petitioner brought these proceedings in January 2017, clearly it has not been maintained."

The Coca-Cola Company v. Meenaxi Enterprise, Inc., 2021 USPQ2d 709 (TTAB 2021) [precedential] (Opinion by Judge Cynthia C. Lynch). [TTABlogged here]. The Board ordered cancellation of registrations for the marks THUMS UP and LIMCA on the ground that Registrant Meenaxi used the marks to misrepresent the source of its soft drink products, in violation of Section 14(3). Petitioner Coca-Cola proved that it owns the two marks in India and has sold soft drinks in the United States under the marks, and it therefore was entitled to bring a statutory cause of action under Section 14(3). The Board found that Meenaxi deliberately caused consumers to believe that its products were licensed or produced by the same source as the products sold in India. Section 14(3) provides, in pertinent part, that a registration is subject to cancellation if “the registered mark is being used . . . to misrepresent the source of the goods or services . . . .” The misrepresentation “must involve a respondent deliberately passing off its goods as those of another.” The evidence showed that Coca Cola’s THUMS UP and LIMCA brands are well known in India and their reputation extends to the Indian-American population in the United States. The Board concluded that Meenaxi, a purveyor of Indian food products distributed primarily to Indian grocers in this country, “intended to cause consumers exposed to Respondent’s use of the THUMS UP and LIMCA marks to draw the logical conclusion that Respondent’s products in the United States are licensed or produced by the source of the same types of cola and lemonlime soda sold under these marks for decades in India.”

In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478 and 479 (TTAB 2021) [precedential] (Opinions by Judge Jyll Taylor) [here and here]. [TTABlogged here]. The Board upheld two Section 2(e)(1) refusals of the proposed mark CLEAR for footwear, lingerie, and other clothing items, and for handbags, purses, wallets and the like, all “excluding transparent goods,” finding the term to be deceptively misdescriptive thereof. Dictionary definitions and third-party website evidence convinced the Board that consumers “will perceive CLEAR as describing a feature” of Dolce Vita’s clothing and other items. The Board rejected applicant’s contention that its proposed mark CLEAR does not describe a plausible feature of its goods because the identified goods do not include transparent footwear and clothing. “We cannot assume that consumers of Applicant’s goods will be aware that its identification is so restricted, and the restriction is not controlling of public perception.” The Board also rejected Dolce Vita’s argument that consumers are unlikely to believe the misrepresentation because they will visually inspect the goods before purchase, since not all consumers will have that opportunity.

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Text Copyright John L. Welch 2020-2021.