CAFC Deems Section 2(c) Unconstitutional As-Applied in "TRUMP TOO SMALL" Refusal to Register

The Lanham Act took another hit in an appeal to the CAFC from a Section 2(c) refusal of the mark TRUMP TOO SMALL for shirts. The Board found that the mark "comprises the name of [former] president Donald Trump without his written consent" and it rejected Applicant Steve Elster's First Amendment challenge to the constitutionality of Section 2(c). [TTABlogged here]. The appellate court reversed, concluding that as applied here, Section 2(c) is unconstitutional because the Government has no substantial interest in "granting all public figures the power to restrict trademarks constituting First Amendment expressions before they occur." In re Steve Elster, 2022 USPQ2d 195 (Fed. Cir. 2022) [precedential].

Section 2(c), in pertinent part, bars registration of a mark that "[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his [sic] written consent . . . ." The CAFC noted that the Supreme Court has, in the past five years, held unconstitutional two portions of Section 2(a) of the Lanham Act: In Matal v. Tam, the Court struck down the "disparagement" provision and in Iancu v. Brunetti it axed the "immoral or scandalous" provision.

The two opinions in Tam and the majority opinion in Brunetti each relied on a “core postulate of free speech law”—that “[t]he government may not discriminate against speech based on the ideas or opinions it conveys”—and concluded that “[v]iewpoint discrimination doomed” the two provisions. Brunetti, 139 S. Ct. at 2299.

However, neither of those cases resolves the constitutionality issue presented here because both holdings were "carefully cabined to the narrow, 'presumptive[] unconstitutional[ity] of section 2(a)'s viewpoint-based restrictions." The Section 2(c) restriction involves content-based discrimination.

The Supreme Court in Tam and Brunetti established that a trademark "represents 'private, not government, speech' entitled to some form of First Amendment protection." Trademarks frequently "have an expressive content" and can convey "powerful messages . . . in just a few words." Brunetti further established that denying to a term the benefits of registration "disfavors" the speech being regulated.

We recognize, as the government contends, that section 2(c) does not prevent Elster from communicating his message outright. But whether Elster is free to communicate his message without the benefit of trademark registration is not the relevant inquiry—it is whether section 2(c) can legally disadvantage the speech at issue here.

Elster asserted that he sought to invoke "a memorable exchange between President Trump and Senator Marco Rubio from a 2016 presidential primary debate, and aim[ed] to 'convey[] that some features of President Trump and his policies are diminutive.'" The CAFC observed that Elster's mark is speech by a private party "in a context in which controversial speech is part-and-parcel of the traditional trademark function, as the Supreme Court decisions in Tam and Brunetti attest."

Speech does not lose its First Amendment protection because it is sold rather than given away, nor is speech entitled to lesser protection because it is printed on a T-shirt. Putting aside whether strict scrutiny or intermediate scrutiny applies to trademarks, the CAFC observed that "there must be at least a substantial government interest in the restriction." The court proceeded to weigh the competing interests.

The First Amendment interests are "undoubtedly substantial," since a major purpose of the First Amendment was and is "to protect the free discussion of governmental affairs." The "fullest and most urgent application" of the First Amendment is to speech concerning public officials. The USPTO, however, asserted that those interests are outweighed by the government's substantial interest in protecting state-law privacy and publicity rights.

The CAFC saw no plausible claim that former president Trump enjoys a right of privacy protecting him from criticism, absent actual malice: the government has "no legitimate interest in protecting the privacy of President Trump, 'the least private name in American life,'" from injury to his "personal feelings" caused by Elster's political criticism.

As to the right of publicity, there was no claim that former president Trump's name is being misappropriated in a manner that exploits his commercial interests or dilutes the commercial value of his name or of any form of intellectual property. Nor could a plausible claim be made that the mark suggests endorsement by Trump (a claim that would fall within the Section 2(a) bar anyway). Moreover, the Restatement of Unfair Competition states that right of publicity claims are "fundamentally constrained by the public and constitutional interest in freedom of expression" such that "use of a person’s identity primarily for the purpose of communicating information or expressing ideas is not generally actionable as a violation of the person’s right of publicity." The CAFC concluded that:

The government has no valid publicity interest that could overcome the First Amendment protections afforded to the political criticism embodied in Elster’s mark. As a result of the President’s status as a public official, and because Elster’s mark communicates his disagreement with and criticism of the then-President’s approach to governance, the government has no interest in disadvantaging Elster’s speech. *** The PTO’s refusal to register Elster’s mark cannot be sustained because the government does not have a privacy or publicity interest in restricting speech critical of government officials or public figures in the trademark context—at least absent actual malice, which is not alleged here.

Although the CAFC's decision involved only an as-applied argument to the constitutionality of Section 2(c), the CAFC observed that there are concerns with the "overbreadth" of that provision.

It may be that a substantial number of section 2(c)’s applications would be unconstitutional. The statute leaves the PTO no discretion to exempt trademarks that advance parody, criticism, commentary on matters of public importance, artistic transformation, or any other First Amendment interests. It effectively grants all public figures the power to restrict trademarks constituting First Amendment expression before they occur."

And so, the CAFC reversed the Board's decision, "reserv[ing] the overbreadth issue "for another day."

Read comments and post your comment here.

TTABlogger comment: Section 2(c) cases are rare at the TTAB. In a May 2019 TTABlog post [here], I listed the seven such decisions since 2014. Add to that the 2020 TRUMP-IT case here.

Elster filed his application on a Section 1(b) intent-to-use basis. As others have pointed out, when he files his specimen of use, the USPTO will have the opportunity to refuse registration based on a failure-to-function ground if, for example, it deems the mark a commonplace meme or if the mark is used merely ornamentally.

Text Copyright John L. Welch 2022.

TTABlog Test: Is "LUCKENBACH" Primarily Merely a Surname for Whiskey?

The USPTO refused to register the proposed mark LUCKENBACH for whiskey, vodka, rum, and gin, on the ground that the mark is primarily merely a surname under Section 2(e)(4). On this appeal, applicant argued that LUCKENBACH has a non-surname meaning because consumers recognize it as applicant's trademark. You've probably heard of Luckenbach in a musical context. How do you thing this came out? In re Luckenbach Texas, Inc., Serial Nos. 87800638 and 87983963 (February 22, 2022) [not precedential] (Opinion by Judge Albert Zervas).

Applicant owns a registration for the mark LUCKENBACH for its entertainment venue, located near the town of Fredericksburg, Texas. Nearby Luckenbach is a scenic community in southeastern Gillespie County with strong musical associations. The site was settled in the later 1840s and early 1850s by German farmers, among them the brothers Jacob Luckenbach and August Luckenbach. It "achieved legendary proportions in 1977 . . . when the Waylon Jennings hit song 'Luckenbach, Texas (Back to the Basics of Love)' became a national favorite." 

The Board agreed with the examining attorney that "Luckenbach is a rare surname" There was no evidence from newspapers or publications that showed use of LUCKENBACH as a surname such as to suggest public exposure to the term as a surname. The examining attorney submitted negative dictionary evidence purporting to support his contention that "luckenbach" is not an English language term. On the other hand, the USPTO failed to establish that any member of the Luckenbach family has ever had an interest in applicant.

Applicant submitted several declarations from Texas customers for its entertainment venue services, supposedly showing that the primary significance of "Luckenbach" is "in reference to Applicant’s business" and not as a surname. The Board was unmoved:

These statements and similar statements made by other declarants are helpful in establishing acquired distinctiveness but have little bearing on whether LUCKENBACH is primarily merely a surname. Any trademark, even a trademark which is asserted as being primarily merely a surname, has an association with a business, once distinctiveness has been shown. *** Applicant’s relevant evidence . . . is not “objective countervailing evidence” of a perception that “the public would perceive a proposed mark as a coinage.” The declarations Applicant submitted are from Texans only, with most declarants saying that they live in or near Fredericksburg, Texas, very near Applicant’s venue.

Turning to the other evidence of record, the Board found that "Luckenbach" has a non-surname meaning due to the prominence of the Waylon Jennings song. In addition, applicant submitted evidence that “luckenbach” has a meaning in German ("gap creek"). The Board has held that “whether a term is primarily merely a surname must take into consideration the meaning the term has in a foreign language." [If most Americans do not speak German, why does the German meaning matter? - ed.].

[W]e find that the mark has one or more recognized meanings other than as a surname because it comprises a key word in the title of a famous Waylon Jennings song and German-speaking U.S. consumers would recognize it as “gap creek.”

Finally, the Board rejected the examining attorney's contention that "Luckenbach" has the structure and pronunciation of a surname. "The evidence that certain people had the surnames Dieffenbach, Katzenbach, Hollenbach or Bach does not persuade us that any sizeable portion of the purchasing public in the United States are familiar with the surnames."

Balancing the relevant factors, the Board found that "consumers do not commonly encounter LUCKENBACH as a surname, it has alternative meanings, and the Examining Attorney has not established that it has the structure and pronunciation of a surname." Resolving any doubts in favor of applicant, the Board concluded that LUCKENBACH is not primarily merely a surname.

Read comments and post your comment here.

TTABlogger comment: FWIW, I don't think much of that Waylon Jennings song.

Text Copyright John L. Welch 2022.

Free Webinar, March 10th, Noon-1PM: What Non-US Practitioners Need to Know About US Trademark Law and the Recent Trademark Modernization Act ("TMA")

Amanda B. Slade and yours truly, The TTABlogger, will present a webinar entitled "What Non-US Practitioners Need to Know About US Trademark Law and the Recent Trademark Modernization Act ("TMA")," on March 10th from Noon to 1 PM EST, sponsored by Wolf, Greenfield & Sacks, P.C. "Admission" is free. Register here.

Join Wolf Greenfield for a discussion of the significant impact that the newly implemented Trademark Modernization Act of 2020 ("TMA") has on the rights of non-US trademark owners.

The United States trademark system is predicated upon use of a mark in commerce. Non-US trademark owners, however, may obtain United States registrations without use, under the aegis of the Paris Convention and the Madrid Protocol. Recent developments in United States law with regard to the requirement of use, and particularly changes brought about by the recently implemented Trademark Modernization Act of 2020 (“TMA”), have significant impact on the rights of non-US trademark owners, one that needs to be taken into account in securing and maintaining their rights in the United States.

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Wolf Greenfield is an accredited CLE provider in New York. If you are seeking CLE credit, please download the Attorney Affirmation New York CLE Credit form to be completed and submitted to the CLE provider after the event.

Text Copyright John L. Welch 2022.

TTABlog Test: Which of These Three Disclaimer Requirements Was/Were Reversed?

Under Section 6(a) of the Trademark Act, "[t]he Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable." Here are three recent TTAB decisions involving refusals based on Section 6(a) disclaimer requirements. At least one of the refusals was reversed. Take a guess at how they turned out. [Answer in first comment].

In re Solar Foundations USA, Inc., Serial No. 88206624 (February 7, 2022) [not precedential] (Opinion by Judge Cindy B. Greenbaum). [Section 6(a) requirement for disclaimer of the term SOLAR FOUNDATIONS in an application to register the mark SOLAR FOUNDATIONS USA & Design on the Supplemental Register for design and installation of solar energy systems, namely, including foundations and racking systems for ground mount solar arrays.]

In re SC Licensing, LLC, Serial No. 88737743 (February 14, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 6(a) requirement for disclaimer of "FARMHOUSE" in the proposed mark THE FARMHOUSE BY RACHEL ASHWELL for various Class 20 goods, including bed frames; fabric figurines; magazine racks; mirror frames; mirrors; picture frames; pillow forms; pillows; screens for fireplaces; wood boxes; shoe racks and beds for household pets (sic!); and window shades.]

In re Stevland Morris d/b/a Stevie Wonder, Serial No. 88388322 (February 16, 2022) [not precedential] (Opinion by Judge George C. Pologeorgis). [Section 6(a) requirement for disclaimer of "SONG PARTY" in the proposed mark THE STEVIE WONDER SONG PARTY LIFE & Design for, inter alia, “Entertainment services, namely, live musical performances and live music concerts  ]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

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

The Board's shutout streak in Section 2(d) appeals is up to 33 affirmances and no reversals. Here are the latest three decisions. Has the streak been broken? How do you think they turned out? [Answer in first comment].

In re People’s Ventures, LLC, Serial No. 88003115 (February 17, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of PEOPLE'S & Design for "Clothing, namely, shirts, t-shirts, tops, tank tops, sweatshirts, hats, and jackets," in view of the registered mark PEOPLES GARMENT CO. for "t-shirts; sweatshirts" [GARMENT CO. disclaimed].]

In re Sunrise Apparel Group, LLC, Serial No. 88571635 (February 18, 2022) [not precedential] (Opinion by Judge David K. Heasley). [Section 2(d) refusal of AMERICAN STAR for "clothing, namely, jeans, bottoms, pants, shorts, skirts, shirts, vests, tops, blouses, dresses, coats, sweaters, t-shirts, jackets; headwear; and footwear" [AMERICAN disclaimed], in view of the identical mark for "jewelry" [AMERICAN disclaimed].]

In re Frontline Millionaires LLC, Serial No. 88679886 (February 18, 2022) [not precedential] (Opinion by Judge Jonathan Hudis). [Section 2(d) refusal of RISK & REWARD in view of the registered marks RIZKY REWARDZ and RISK.REWARD (different owners), all for various clothing items, including t-shirts.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

"GET ORDAINED" Fails to Function as a Source Indicator for Ordination-Related Services, Says TTAB

The Board sustained an opposition to registration of the proposed mark GET ORDAINED for on-line retail store services featuring clothing, stationery, publications in the fields of religion, and various other products, conducting religious ceremonies, ordaining ministers, and providing religious information, finding that the phrase is so commonly used that consumers will not perceive it as a source indicator pointing uniquely to the applicant. Alternatively, the Board found the phrase to be merely descriptive and lacking secondary meaning. American Marriage Ministries v. Universal Life Church Monastery Storehouse, Opposition No. 91237315 (February 17, 2022) [not precedential] (Opinion by Judge Christen M. English).

Failure to Function: The Board observed that "[s]logans and other terms and phrases that are ordinarily used in a particular trade or industry will be understood as conveying the ordinary concept normally associated with them, rather than serving any source-indicating function. In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); see also In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1149-50 (TTAB 2019)."

The record included numerous examples of third parties using "get ordained" to convey its ordinary meaning. Applicant acknowledged in an interrogatory response that it is "generally aware that third parties may use the term 'get ordained' when discussing the act of becoming a minister or wedding officiant." Both parties use "get ordained to convey its ordinary meaning."

Applicant’s own use of “Get Ordained” to convey the ordinarily-understood meaning of the words, i.e. “become ordained” or “become a minister,” is strong evidence that Applicant’s consumers will perceive “get ordained” not as a service mark but rather for the commonly understood meaning of the words.

Applicant's use of the "TM" symbol does not transform the phrase into a trademark. See, e.g., In re Aerospace Optics, 78 USPQ2d at 1864. Its intent that the phrase function as a service mark is irrelevant. In re Hulting, 107 USPQ2d 1175, 1180 (TTAB 2013).

The Board concluded that "get ordained" fails to function as a service mark for applicant's services, and so it sustained the opposition.

Because “get ordained” is so commonly used in the field of ministerial ordination, including by Applicant, for its ordinary meaning, i.e., “become ordained” or “become a minister,” consumers will not perceive the phrase as a source indicator pointing uniquely to Applicant. Rather, consumers will perceive the words as conveying their ordinary meaning.

Mere Descriptiveness: The Board found that consumers use applicant's ecclesiastical services so they can "get ordained." Applicant's on-line store services feature products that consumers need to prepare to "get ordained" or once they "get ordained." Thus, "get ordained" describes a purpose, use, or feature of applicant's services and is highly descriptive of them.

With respect to acquired distinctiveness, in view of the highly descriptive nature of the proposed mark, applicant's burden of proof is "commensurately high." Applicant did not provide direct evidence of acquired distinctiveness, such as survey evidence or consumer declarations, but instead relied on circumstantial evidence regarding its length of use, advertising expenditures, sales, and number of users.

The Board found applicant's ten years of use to be "somewhat lengthy" but "not particularly persuasive" on this record. Its advertising expenditures of $1M were "modest" and its sales revenues and number of consumers were "not so impressive as to elevate Applicant's highly descriptive designation to the status of a distinctive mark" in the absence of market share and other contextual information.

Applicant argued that third-party uses of "get ordained" were not uses as a trademark, but the Board refused to bless that argument: "Third-party use need not be of a trademark nature to interfere with a claim of 'substantially exclusive' use under Trademark Act Section 2(f)."

And so, the Board concluded that GET ORDAINED is merely descriptive of applicant's services, and lacks acquired distinctiveness.

Read comments and post your comment here.

TTABlogger comment: WYHA? Would you have applied for registration?

Text Copyright John L. Welch 2022.

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

As of one week ago, the Board had considered 29 appeals from Section 2(d) refusals this year and affirmed every one of them. Here are the latest four decsions. Has the streak been broken? How do you think they turned out? [Answers in first comment].

In re Gruma Corporation, Serial No. 88863832 (February 11, 2022) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of MISSION PLANITAS for tostadas [PLANITAS disclaimed] in view of the registered mark PLANITAS, in standard character and stylized form, for tortillas.]

In re Moxley Homes, LLC, Serial Nos. 88882171 and 88882239 (February 11, 2022) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Section 2(d) refusal of MOXLEY HOMES, in standard character and design form [HOMES disclaimed], for real estate development and construction-related services, in view of the registered mark MOXLEY TEAM for "real estate agency services” [TEAM disclaimed].]

In re OMT Belforte S.R.L., Serial No. 79255285 (February 8, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington). (Section 2(d) refusal of VICTORIA ARDUINO & Design for, inter alia, electric coffee grinders, power-operated coffee grinders, and electric blenders and mixers, in view of the registered mark VICTORIA for "“electric coffee grinders; power-operated coffee grinders; food processors, electric; electric food blenders.”

In re Hyundai Motor Company, Serial No. 88599443 (February 16, 2022) [not precedential] (Opinion by Judge Jonathan Hudis). [Section 2(d) refusal of HYUNDAI CARPAY for payment processing services, in view of the registered mark CARPAY for "software as a service (SAAS) services featuring software for facilitating auto loan payments."]

 

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

USPTO 2021 Performance and Accountability Report

The USPTO's 2021 Performance and Accountability Report is chock full of information and data regarding USPTO operations. (pdf here). The report is slightly more than 250 pages long, so I will hit a few of the highlights regarding our favorite tribunal, the TTAB.

Under the heading "CASE LAW DEVELOPMENTS: RECENT DECISIONS" (p. 21):

[T]he constitutionality of the appointment of the TTAB’s ATJs was also called into question in Piano Factory Group v. Schiedmayer Celesta GmbH. Guided by the Supreme Court’s decision in Arthrex, the Federal Circuit held that the Director’s broad supervisory authority over TTAB decisions, together with the absence of any statutory limits on the composition of TTAB panels, indicates that the ATJs are inferior officers under the Appointments Clause and thus are not required to have been appointed by the President and confirmed by the Senate. The court also noted that the TMA further confirmed the Director’s previously implicit authority to exercise supervisory authority by rehearing TTAB decisions.

At pages 91-92, under the heading, "OBJECTIVE 4: ENHANCE OPERATIONS OF THE TRADEMARK TRIAL AND APPEAL BOARD":

The TTAB evaluated the results of its Expedited Cancellation Pilot Program, including the comments of those with whom the Board conferenced in regard to pilot cases. The pilot’s objective was to explore the utility of various means for expediting cancellation proceedings challenging the registration of marks asserted to have been abandoned or not used when necessary to support registration. An analysis of the pilot program revealed the following:

-- Included in 34% of cancellation proceedings, abandonment was the most common claim in the proceedings.
-- Included in 27% of the proceedings, likelihood of confusion was the second most common claim.
-- The default judgment rate for all cancellation proceedings was 44%.
-- The default judgment rate for cancellation proceedings that included a nonuse or abandonment claim was 49%.
-- The default judgment rate for proceedings in which abandonment was the only claim was 60%.

The Expedited Cancellation Pilot Program confirmed that TTAB cancellation proceedings in general provide an effective means for challenging registered marks that are not in use and that may prevent others from registering their marks. Cancellation proceedings play an important part in ensuring the accuracy and integrity of the Trademark Register. With a high default judgment rate overall and a much higher default judgment rate where the only claim is abandonment, cancellation proceedings are efficient tools for removing registrations for marks that are not in use and have been abandoned.

If you want to keep up with the latest developments on the trademark side of the USPTO, you might attend the quarterly meetings of the Trademark Public Advisory Committee.

Read comments and post your comment here.

Text Copyright John L. Welch 2022.

TTABlog Test: Is ROMA PIZZA for Restaurant Services Confusable with ROMA for Frozen Pizza?

Bernatello's Pizza, Inc. opposed Timothy Bammann's application to register the mark ROMA PIZZA for restaurant services [PIZZA disclaimed], alleging a likelihood of confusion with its registered mark ROMA for frozen pizza. Bernatello's also contended that Bammann uses his mark at a single location in Bangor, Michigan, and not in interstate commerce. Bammann maintained that "ROMA" is a weak mark entitled to only a narrow scope of protection, and further that the involved goods and services travel in different channels of trade. How do you think this came out? Bernatello’s Pizza, Inc. v. Timothy Bammann, Opposition No. 91251606 (February 11, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Non-use Claim: Opposer argued that Applicant Bammann's use of his mark at only a single location in Bangor, Michigan, was insufficient to establish use of the ROMA PIZZA mark in commerce. Bammann retorted that "[i]t is inconceivable that a restaurant operating since 1978 has not served out of state customers."

[C]ontrary to Opposer’s arguments, it is not determinative that Applicant admittedly only offers restaurant services in one location in Michigan as it is not necessary that the restaurant “services be rendered in more than one state to satisfy the use in commerce requirement.” Larry Harmon Pictures Corp., 18 USPQ2d at 1295.

In Larry Harmon, the CAFC ruled that restaurant services offered in one location in intrastate commerce constitutes use in interstate commerce. Here, Opposer Bernatello's did not prove "that applicant's rendering of its services in Bangor, Michigan, in the aggregate, does not have an effect on commerce that is regulable by Congress.".

Section 2(d): The Board first considered the relatedness of the involved goods and services. Jacobs v. Int'l Multifoods requires that "[t]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used for foods products and restaurant services." Third-party registrations and third-party website evidence showed the same mark used by a single entity for both restaurant services and frozen pizza sold at retail (for example, Uno Pizzeria and Grill). The Board concluded that there is an "undeniable connection" between opposer's frozen pizza and the pizza offered fresh in applicant's restaurant. Applicant Bammann's identified "restaurant services" are broad enough to encompass restaurants offering pizza. Thus Opposer Bernatello's supplied the "something more" required by Jacobs. As to channels of trade, however, the Board found them to be different for frozen pizza (grocery stores) than for restaurant services.

Pizza is a relatively inexpensive item typically purchased without great deliberation. Restaurant services, too, may be relatively inexpensive. This fourth DuPont factor therefore favored opposer.

Turning to the 5th and 6th DuPont factors, Bernatello's claimed that its mark ROMA enjoys strong marketplace recognition. It sells ROMA brand frozen pizza in supermarkets in 29 states. It spent $2.3 million on advertising from 2017-2020, garnering $81 million in revenues from 2015-2020. However, opposer did not provide information regarding its market share or regarding advertising expenditures by its competitors. There was no evidence of media recognition or brand awareness. The Board therefore concluded that, although the evidence reflected commercial success from sales, it did not prove that the ROMA mark is widely recognized by a significant portion of the general public. And so, the Board deemed the 5th DuPont factor to be neutral.

As to inherent strength, third-party registrations corroborated by a dictionary translation established that "Roma" is "highly suggestive of Rome, Italy when used in connection with goods and services for Italian food such as pizza." Applicant also submitted evidence regarding use of "Roma" in six restaurant names, evidence that had "significant probative value as to commercial weakness."

As to the marks, the Board unsurprisingly found ROMA PIZZA and ROMA to be similar, but in view of the conceptual weakness of ROMA, this factor weighed only slightly in Opposer Bernatello's favor.

Finally, under the eighth DuPont factor, the lack of evidence of actual confusion was neutral since there was insufficient evidence to show that, in light of the parties' respective geographical markets, there had been a reasonable opportunity for confusion to occur.

Conclusion: The Board found that the strength or weakness of opposer's ROMA mark was the most important factor.

In view of the highly suggestive nature of ROMA in the food industry, and its commercial weakness, we find purchasers are able to distinguish among various ROMA marks by looking to other elements of the marks. In this case, that other element is the addition of the term PIZZA to Applicant’s mark rendering Opposer’s and Applicant’s marks sufficiently distinguishable that confusion is unlikely.

And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: Arrivederci Roma! How did you do?

Text Copyright John L. Welch 2022.

TTAB Affirms Unlawful Use Refusal of "PUREXXXCBD" for Plant Extracts and Supplements Containing CBD

In a mere 5-pages, the Board affirmed a refusal to register the proposed mark PUREXXXCBD for "Plant extracts for pharmaceutical purposes; vitamins; dietary supplements; all of the foregoing containing CBD solely derived from hemp containing no more than .3% THC on a dry weight basis" (Class 5). The Board found that Applicant AgrotecHemp lacked a bona fide intent to use the mark in commerce because the goods are not in compliance with the Federal Food, Drug and Cosmetic Act (FDCA) and are therefore unlawful. In re AgrotecHemp Corp., Serial No. 88979905 (February 10, 2022) [not precedential] (Opinion by Judge Thomas Shaw).

Applicant's vitamins and supplements and its plant extracts fall under the FDCA because they are intended to affect the structure or function of humans or animals.

The FDA requires any product marketed with a claim of therapeutic benefit and containing cannabis or cannabis-derived compounds (such as CBD) to be approved for its intended use before it may be introduced into interstate commerce. Because Applicant has not made of record an NDA or ANDA for its goods, it was unlawful for applicant to introduce such goods into interstate commerce as of the application filing date, and remains so.

To repeat, because at the time of applicant's filing date the identified goods could not be lawfully introduced into interstate commerce, applicant did not have the required bona fide intent to use the mark in lawful commerce. See In re Stanley Bros. Social Enters., LLC, 2020 USPQ2d 10658, *9 (TTAB 2020) (where the identified goods are illegal under the FDCA, the applicant’s use is not in lawful commerce).[TTABlogged here].

And so, the Board affirmed the refusal under Sections 1 and 45 of the Lanham Act.

Read comments and post your comment here.

TTABlogger comment: See also the very recent, nonprecedential HARBOR HEMP COMPANY decision [TTABlogged here], also authored by Judge Shaw, which is on all fours with this decision.

PS: the first full sentence on page 3 of the PUREXXXCBD opinion doesn't make sense to me.

Text Copyright John L. Welch 2022.

TTAB Reverses Section 2(a) False Connection Refusal of SPACE COMMAND for Books, Clothing, and Toys

The Board reversed a Section 2(a) refusal to register the mark SPACE COMMAND for books, posters, clothing, toys, and audio video recordings, ruling that the USPTO failed to prove its contention that the mark falsely suggests a connection with the U.S. Space Command. The Board did, however, uphold the Office's requirement that applicant disclaim the word "SPACE." In re Thomas D. Foster, APC, Serial No. 88233967 (February 10, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington).

In order to establish that a proposed mark falsely suggests a connection with a person or an institution under Section 2(a), the USPTO must satisfy “the Univ. of Notre-Dame du Lac test”:

(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 applicant under the mark; and (4) The fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.

Wikipedia evidence showed that the "Air Force Space Command" was a major command of the U.S. Air Force from September 1982 to December 2019, and was re-named as the "United States Space Force," a "new sixth service branch of the United States Armed Forces responsible for space warfare." The United States Space Command was "re-established" in 2019; a previous United States Space Command was "inactivated" in 2002.

The Examining Attorney maintained that SPACE COMMAND is "the same of a close approximation of the name of the U.S. Space Command [re-established in 2019], previously the Air Force Space Command .... Specifically, at the time applicant file[d] the application, SPACE COMMAND referred to the Air Force Space Command."

The Board observed that in order for there to be a false connection under Section 2(a), "the person or institution with which a connection is falsely suggested must be the prior user." Here, although SPACE COMMAND is a close approximation of U.S. Space Command, the evidence did not establish that the U.S. Space Command is the prior user.

According to the Wikipedia evidence, the U.S. Space Command was inactive or non-existent prior to December 18, 2018, when Applicant filed the involved application. Rather, the evidence shows that U.S. Space Command was “reestablished” in August of 2019, approximately 17 years after the first U.S. Space Command was “inactivated” in 2002.

Moreover, the evidence did not show that the Air Force Space Command became the U.S. Space Command, nor that the public or the government refer to U.S. Space Command as a continuation of the U.S. Air Force Space Academy. 

In short, the Board found that the name U.S. Space Command was not in use on December 18, 2018, when applicant filed its application. That alone rendered the Section 2(a) refusal improper.

For the sake of completeness, the Board also considered the remaining prongs of the Notre Dame test. The Board found that the evidence failed to show that the U.S. Space Command, created in late 2019, is well-known to the general public, and thus the USPTO failed to establish the fame or reputation necessary for the mark SPACE COMMAND to point "uniquely and unmistakably" to the U.S. Space Command.  

Thus, two elements of the Notre Dame test were not met by the USPTO, and reversal of the Section 2(a) refusal was appropriate.

Read comments and post your comment here.

TTABlogger comment: A bit confusing regarding the chronology of the use of "space command" this and that. For a recent, helpful discussion of Section 2(a), see Ann Gilson LaLonde, "Giving the Wrong Impression: Section 2(a)’s False Suggestion of a Connection, 110 Trademark Reporter 6 (November–December 2020).

Text Copyright John L. Welch 2022.

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

So far in 2022, the Board has considered 26 appeals from Section 2(d) refusals and has affirmed the refusal in every case. Here are the latest three appeals. Has the streak been broken? How do you think they turned out? [Answers in first comment].

In re Pretentious Beer LLC, Serial No. 88815635 (February 7, 2022) [not precedential] (Opinion by Judge Linda A. Kuczma). [Section 2(d) refusal of the word-and-design mark shown below, for "beer" [BEER CO. KNOXVILLE TENNESSEE disclaimed], in view of the registered mark PRETENTIOUS for "wine."]

In re Jerry Wagreich, Serial No. 87356161 (February 8, 2022) [not precedential] (Opinion by Judge Thomas Shaw). [Section 2(d) refusal of IPAYED & Design (shown below) for electronic payment services, in view of the registered marks PAYD and PAYD PRO, all for services including electronic funds transfer and the processing of prepaid and credit card transactions.]

In re USAPARK LLC, Serial No. 88808161 (February 8, 2022) [not precedential] (Opinion by Judge Christopher Larkin). (Section 2(d) refusal of USAPARK.NET (in standard character form) for "Airport passenger shuttle services between the airport parking facilities and the airport; Parking lot services; Parking space reservation service; Providing a website featuring information on airport parking; Rental of parking spaces; Rental of car parking spaces," in light of the registered mark USA PARKING for "vehicle parking services" [PARKING disclaimed].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

TTAB Affirms Section 2(e)(5) Functionality Refusal of Serrated Knife Blade

Relying on Applicant's own advertising touting the design of its knife blade and its ease of manufacture (yielding lower cost), the Board affirmed Examining Attorney Caroline L. Moran's Section 2(e)(5) functionality refusal of the design of a "serration pattern" on the blade of a knife (shown below). Applicant GB's design patent served as some evidence of non-functionality, but was outweighed by GB's own advertising touting the design's utilitarian benefits. [I suppose one could say that GB stabbed itself in the foot - ed.]. For the purpose of completeness, the Board also considered Applicant GB's claim of acquired distinctiveness but found the evidence insufficient to support the Section 2(f) claim. In re GB II Corporation d/b/a Columbia River Knife & Tool Company, Serial No. 88730809 (February 8, 2022) [not precedential] (Opinion by Judge Jonathan Hudis).

Functionality: In determining the functionality issue, the Board looked to the ever popular Morton-Norwich factors:

(1) the existence of a utility patent that discloses the utilitarian advantages of the subject matter sought to be registered; (2) advertising by the applicant that touts the utilitarian advantages of the subject matter; (3) facts pertaining to the availability of alternative designs; and (4) facts pertaining to whether the subject matter results from a comparatively simple or inexpensive method of manufacture.

GB described the mark (in its brief on appeal) as "the distinct angled shape for the teeth and the angled, semi-circular beveled portions disposed above the cutting edge." Its advertising stated, among other things, that the serrations "make[] for superior cutting of cordage, rope, and fibrous materials," and that they are "easy to sharpen and they work better than traditional serrations."

GB submitted a copy of its design patent covering the same design, arguing that the patent weighs against functionality, since design patents "by definition protect only ornamental and nonfunctional designs." [N.B.: "functionality" in the design patent realm is a very narrow doctrine, much different from "functionality" in the trademark realm. See TTABlog comment below. - ed.]. The Board agreed that the design patent weighs in favor of applicant, but it "can be outweighed by other evidence supporting the functionality determination."

The Board found GB's self-laudatory advertising to be a "strong factor" in favor of the functionality finding. GB, as is typical, claimed that the advertising was "mere puffery," but the Board pooh-poohed that contention.

Although it need not consider alternative designs if the design at issue is found to be functional based on other evidence, the Board considered several third-party knife designs, "for the sake of completeness as 'part of the overall mix'" and because these designs "further support[s] our finding that Applicant's porposed mark is functional." The Board found that the alternative designs "do not work equally well and are not equally cost effective," and so they supported the refusal to register.

Although GB, during prosecution, claimed that its design required a complicated and expensive manufacturing process, its advertising said the opposite, and so the Board found that the subject knife blade design "results from a comparatively simple or inexpensive method of manufacture."

And so, the Board affirmed the refusal under Section 2(e)(5).

Acquired Distinctiveness: Although the Section 2(e)(5) affirmance was dispositive, the Board chose to consider Applicant GB's Section 2(f) claim. Of course, product designs are not registrable as trademarks without proof of acquired distinctiveness. Wal-mart. And an applicant for registration of a product design mark "faces a heavy burden" of proof under Section 2(f).

The Board considered the six factors set forth in Converse, Inc. v. ITC, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018):

(1) Association with a particular source by actual purchasers (typically measured by customer surveys); (2) Length, degree, and exclusivity of use; (3) Amount and manner of advertising; (4) Amount of sales and number of customers; (5) Intentional copying; and (6) Unsolicited media coverage of the product embodying the mark.

GB did not provide any evidence as the fourth, fifth, and sixth factors. It did claim five years of continuous and substantially exclusive use in its application, but that failed to satisfy GB's heavy burden of proof. Even the 15 years of use claimed in its brief (without support) was not enough. The only evidence left was GB's advertising – which failed to instruct consumers to "look for" the serrated design and failed to promote the design  as a trademark – and a handful of responses on the Reddit website to a question posted by applicant. However, the Reddit evidence came nowhere near qualifying as a reliable survey and so it was not probative.

The Board concluded that applicant's serrated design has not acquired distinctiveness, and so it affirmed the USPTO's alternative refusal under Sections 1, 2, and 45.

Read comments and post your comment here.

TTABlogger comment: In my view, the existence of a design patent should have no bearing on the issue of whether the proposed mark is functional in a trademark sense because the respective standards for functionality are different. See Sarah Burstein, Faux Amis in Design Law, 105 TMR 1455 (2015). [pdf here]

.

Text Copyright John L. Welch 2022.

Precedential No. 5: TTABlog Test - Is ATWELL SUITES Primarily Merely a Surname for Hotel Services?

Have you heard of anyone named Atwell? Me neither. The USPTO refused registration of ATWELL SUITES, in standard character and (slightly) stylized form, for various hotel-related services [SUITES disclaimed] on the ground that ATWELL SUITES is primarily merely a surname under Section 2(e)(4). Applicant's survey evidence and its linguistics expert's testimony missed the mark, but what about rareness? What about public exposure to the name? Does "Atwell" look and sound like a surname? How do you think this came out? In re Six Continents Limited, 2022 USPQ2d 135 (TTAB 2022) [precedential] (Opinion by Judge Marc A. Bergsman).

The Board looked to the inquiries set forth in Etablissements Darty et Fils in considering the Section 2(e)(4) issue, noting that these inquiries are not exclusive nor set forth in order of importance:

● Whether Atwell has a non-surname, “ordinary language” meaning;
● The extent to which Atwell is encountered as a surname;
● Whether Atwell is the surname of anyone connected with the applicant;
● Whether the public may perceive Atwell, in the alternative, to be primarily a meaningless, coined term; and
● Whether Atwell has the structure and pronunciation of a surname.

The Board's analysis proceeds "from the perspective of the purchasing public because 'it is that impact or impression which should be evaluated in determining whether or not the primary significance of a word when applied to a product is a surname significance.'" In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975) (quoting Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm’r Pat. 1955)).

When the mark comprises a surname and another term, the Board must determine whether the added term alters the primary significance of the mark as a whole. See Earnhardt v. Kerry Earnhardt, Inc., 123 USPQ2d at 1415 (citing In re Hutchinson Tech. Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)).

Examining Attorney William H. Dawe III submitted excerpts from the LexisNexis surname database, a Wikipedia page for the Atwell surname listing 18 purportedly "notable" people, and Internet website excerpts referring to people named Atwell, including British actress Hayley Atwell, who has "achieved considerable renown" by appearing in the Marvel Comics Captain America and Avengers movie series. [never heard of her - ed].

As to any non-surname meaning of Atwell, applicant's expert opined, without evidence, that the word has a "metaphorical meaning akin to AT A GOOD PLACE." The Board, however, found that "Atwell" has no non-surname meaning, a factor that supports the refusal to register. There also was no evidence that anyone named Atwell is associated with the applicant, a neutral factor.

The question of whether Atwell has the structure and pronunciation of a surname is a "decidedly subjective" inquiry. Benthin, 37 USPQ2d at 1333. The examining attorney submitted website evidence regarding surname with similar structures to Atwell: for example, Attwell, Caldwell, Adwell, Farwell, Attwood, Atkins. The Board observed that "on its face, 'Atwell' does not look like a coined word or an acronym, nor like anything else but a surname."

Applicant's disclaimer of "suites" is a concession that the word is not inherently distinctive, and also a concession that ATWELL SUITES is not a unitary mark. Furthermore, applicant provided no evidence that adding the descriptive word "suites" to "Atwell" alters the primary meaning of "Atwell" as a surname in the mark ATWELL SUITES. Therefore, the Board found that "the additional, disclaimed term 'suites' does not alter public perception of the mark as a whole as primarily merely a surname."

In support of its contention that consumers will perceive ATWELL SUITES as something other than as a surname, applicant again pointed to the testimony of its linguistics expert, but the Board again pointed out the lack of evidentiary support for his assertion that "Atwell" refers to "a good place to rest."

Applicant also relied on the results of a consumer survey purportedly showing that "consumers do not think that the primary meaning of the applied for mark ATWELL SUITES is a surname." The Board was unimpressed: "This is not surprising because consumers are unlikely to associate a surname combined with a descriptive term as being a surname, let alone primarily merely a surname (e.g., it is unlikely anyone perceives Atwell Suites, Barr Group, or Earnhardt Collection as actual surnames)."

[T]he essence of these appeals is whether the combination of the descriptive word “Suites” with the surname Atwell diminishes the surname significance of “Atwell” such that the primary significance of ATWELL SUITES is other than as a surname. Miller v. Miller, 105 USPQ2d 1615, 1622 (TTAB 2013). In other words, does the mark in its entirety engender a different commercial impression than the component parts of the mark (i.e., a surname and a descriptive term)? See Earnhardt v. Kerry Earnhardt, Inc., 123 USPQ2d at 1415 (citing Hutchinson Tech., 7 USPQ2d at 1492).

The Board observed that applicant's survey asked the wrong questions. Instead of asking "What is the primary meaning of ATWELL SUITES to you?", the survey should have asked "What is the primary meaning of the term ATWELL in the mark ATWELL SUITES to you?" The second question should have been "which of the following, if any, do you associate with the term ATWELL in the mark ATWELL SUITES?", followed by the list of sixteen choices. Moreover, the structure of the survey questions were highly leading toward the response that applicant desired.

Finally, applicant relied on the issuance of its existing registration for ATWELL SUITES AN IHG HOTEL & Design for the same services as identified here, as support for its position, but the Board deemed the prior registration irrelevant since that mark includes the inherently distinctive term IHG.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: In a footnote, the Board stated that even if the survey evidence were accepted at face value, it would not overcome the USPTO's prima facie case.

Text Copyright John L. Welch 2022.

TTAB Seeks Applicants for Attorney Advisor (Interlocutory Attorney) Position

The USPTO is seeking applications for the position of Attorney Advisor (and more specifically, Interlocutory Attorney) at the TTAB. The detailed announcement may be found here at the USA Jobs website. The deadline for applications is February 18, 2022.

Job Title: Attorney Advisor (Trademark)
Department: Department Of Commerce
Agency: Patent and Trademark Office
Job Announcement Number: TMCO-TTAB-22-11375190-EX

This position is located in the Trademark Trial and Appeal Board (TTAB). The TTAB is an administrative tribunal within the U.S. Patent and Trademark Office (USPTO) that hears and decides trial level adversary proceedings involving two or more parties. These include oppositions, cancellations, and concurrent use proceedings. The TTAB also hears and decides appeals from final refusals issued by USPTO Trademark Examining Attorneys following review of applications to register marks.

* * * * * * * *
The individual selected for this position will:

• Analyze the legal issues in question, develop the strategy to deal with the legal issue, and determine the content and means of delivery of the completed analysis of the legal issue
• Manage interlocutory matters in oppositions, cancellations and concurrent use cases at the TTAB.
• Serve as a recognized expert in the procedural and substantive aspects of the law, mentoring and coaching others.
• Independently decide and issue orders on all procedural and substantive motions that are not potentially dispositive of the proceeding, such as motions to amend pleadings, motions to compel and motions to strike evidence.
• Consult with and draft decisions for Administrative Trademark Judges on all procedural and substantive motions that are potentially dispositive of the proceeding, such as motions to dismiss, motions for judgment on the pleadings, and motions for summary judgment.
• Work with Administrative Trademark Judges and the top management of the TTAB, as well as the top management and/or attorneys of other private and public organizations.

Text Copyright John L. Welch 2022.

TTAB Default Judgment Has No Collateral Estoppel Effect, Says E.D. California District Court

In December 2019, the U.S. Court of Appeals for the Ninth Circuit reversed (in part) the district court's dismissal of a civil action for unfair competition, trademark dilution, and trademark infringement involving Defendant Meenakshi's three IDHAYAM marks registered for sesame seed oil. The district court had dismissed the claims as to one of the marks (the "'654 mark") on the ground of claim preclusion, based upon the TTAB's entry of judgment by default on Plaintiff VVV's petition for cancellation of the registration for that one mark. The court of appeals, however, ruled that claim preclusion did not apply because VVV was entitled to seek remedies in the district court that were not available at the TTAB. [TTABlogged here]. Now back at the district court, Defendant Meenakshi dubiously moved to dismiss VVV's claims on the ground of collateral estoppel (issue preclusion). The district court denied the motion because no issue was "actually litigated" before the TTAB. V.V.V. & Sons Edible Oils Limited v. Meenakshi Overseas, LLC, No. 2-14-cv-02961-TLN-CKD (E.D. CA. January 24, 2022).

Meenakshi contended that VVV lacked standing and/or failed to state a claim upon which relief can be granted because the only mark at issue was the '654 mark and VVV was collaterally estopped from pursuing that claim in view of the TTAB default judgment.

The court observed that collateral estoppel applies to issues that have been actually litigated and decided in a prior proceeding. The doctrine does not apply to a default judgments unless actually litigated before the judgment was entered, or the defaulting party used deliberate and dilatory tactics. Here, VVV "did not substantially participate in the proceedings before the judgment was entered."

Plaintiff's only involvement was filing the Notice of Opposition. As previously noted, on May 29, 2009, Plaintiff filed the 2009 Opposition with the TTAB requesting that it refuse Mr. Gandhi's application for '654 mark due to Plaintiff's prior use of IDHAYAM. (ECF No. 7-3 at 1-4.) Plaintiff alleged Mr. Gandhi had "never manufactured or marketed sesame oil products under the IDHAYAM brand in the United States or anywhere" (ECF No. 7-1 at 5), and Mr. Gandhi subsequently denied the allegation in his December 28, 2009 Answer but did not specify his use of the mark (ECF No. 7-4 at 2). On January 3, 2011, the TTAB issued a default judgment dismissing the case with prejudice solely because of the Plaintiff's lack of response to TTAB's November 15, 2010 "order to show cause based on opposer's apparent loss of interest in this case" (ECF No. 7-5).

Defendant Meenakshi made no showing that VVV used deliberate and dilatory tactics, and no showing that VVV participated in discovery or other facets of litigation prior to the entry of default judgment. Therefore, collateral estoppel did not apply.

Read comments and post your comment here.

TTABlogger comment: The Third Circuit in its recent Beasley v. Howard decision [TTABlogged here] joined the Ninth Circuit' (in VVV v. Meenakshi) in "recognizing the limited preclusive effect of TTAB proceedings."

Text Copyright John L. Welch 2022.

CAFC Affirms TTAB: ETHIK CLOTHING CO. & Design Confusable With ETHIKA for Clothing

In a nonprecedential disposition, the CAFC upheld the TTAB's decision [pdf here] granting a petition for cancellation of a registration for the mark ETHIK CLOTHING CO. & Design for various clothing items. The Board deemed confusion likely with the mark ETHIKA for overlapping clothing items. The appellate court concluded that the Board correctly analyzed the marks at issue, and the court rejected appellant's newly presented argument regarding the weakness of the ETHIKA mark. Alexander Hage-Boutros v. Ethika, Inc., Appeal No. 2021-1615 (Fed. Cir. February 4, 2022) [not precedential].

Appellant Hage-Boutros, appearing pro se, contended that the Board improperly dissected his mark instead of considering the involved marks in their entireties. Not so, said the court. The Board properly gave little weight to the descriptive term CLOTHING CO. and likewise properly discounted the impact of the design portion of the mark "because clothing consumers are likely to verbally refer to the goods by the term ETHIK rather than by design or by non-distinctive words."

Hage-Boutros raised a new argument on appeal: that the differences in the marks eliminate any likelihood of confusion because petitioner's mark is weak in view of three third-party registrations and a pending application (for marks containing the term ETHIC or ETHICS). Therefore, he asserted, petitioner's s mark should be accorded a narrower scope of protection. The court noted that it does not generally consider issues "not passed on below" or entertain arguments not presented to the lower tribunal. However, a pro se party is given some leeway: "a court of appeals may be appropriately less stringent in requiring that the issue have been raised explicitly below." And so, the court chose to consider this argument.

However, Hage-Boutros's new argument failed on the merits. He offered no evidence regarding the extent or impact of third-party use. Quoting Palm Bay Imports, the court observed: "The probative value of third-party trademarks depends entirely upon their usage" and "where the record includes no evidence of third-party uses[.] the probative value of this evidence is thus minimal."

Finally, the court rejected petitioner's claim that the appeal was frivolous and therefore warranted sanctions. The TTAB's judgment was not "so plainly correct and the legal authority contrary to appellant's position so clear that there really is no appealable issue." "Mr. Hage-Boutros may have presented an unpersuasive argument, but his appeal was not clearly frivolous under the auspices of Rule 38."

Read comments and post your comment here.

TTABlogger comment: The same petitioner is currently opposing Mr. Hage-Boutros's applications to register ETHIK BMX and ETHIK SKATE (in the same design form as above), for athletic clothing.

Text Copyright John L. Welch 2022.

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

In January 2022, the Board decided twenty-two (22) appeals from Section 2(d) refusals. It affirmed them all. Here are the first four Section 2(d) decisions of this month. Has the streak been broken? How do you think they turned out? [Answers in first comment].

In re Charlie’s Chalk Dust, LLC, Serial No. 88417905 (February 1, 2022) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Section 2(d) refusal of PACHAMAMA for, inter alia, "herbal tinctures" and "essential oils; non-medicated topical skin care preparations" all "containing naturally occurring trace amounts of CBD derived from hemp and less than .3% THC," in view of the registered mark PACHAMAMA PEOPLE for “Dietary and nutritional supplements made of herbs; Herbal tinctures for use as nutritional supplements; Herbal tinctures for use in healing.”]

In re GMC Machine Tools Corp., Serial No. 88773861 (February 1, 2022) [not precedential] (Opinion by Judge Robert H. Coggins). [Section 2(d) refusal of GMC for "metalworking machines, milling machines, lathes, fabrication shearing machines, and replacement parts for all of the aforementioned goods," in view of the registered marks GMC CORE and GMC GLOBAL MACHINERY COMPANY (Stylized), for various machine and power tools, including saws, electric drills, and electric screwdrivers [GLOBAL MACHINERY COMPANY disclaimed.]

In re Foxmind Canada Enterprises Ltd., Serial No. 88780851 (February 2, 2022) [not precedential] (Opinion by Judge Michael B. Adlin) [not precedential]. [Section 2(d) refusal of KABAMMM! for "card games; parlor games" on the ground of likely confusion with the registered mark KABAM for “ entertainment services, namely, providing on line computer games."]

In re Center For Excellence In Higher Education, Inc., Serial No. 88893908 (February 2, 2022) (Opinion by Judge Martha B. Allard) [not precedential]. [Section 2(d) refusal of ONLINE BUT NEVER ALONE. for "educational services, namely, providing online learning instruction at the college and post-secondary educational levels," in view of the registered mark ONLINE. BUT NOT ALONE. for "Educational services, namely, providing accredited and certified courses of instruction at the post-secondary and college level and distributing course materials in connection therewith."]

 

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.