TTABlog Test: Are These Two "MW" Design Marks Confusingly Similar for Metal Fabrication Services?

The USPTO refused to register the mark shown below left, for "Metal fabrication and finishing services for others; Machine shop services, namely, machining parts for others," finding confusion likely with the registered mark shown below right for, inter alia, "Treatment of materials, namely, treatment of metals;" "treatment and conversion of metal;" and "rental of machines and machine tools for milling, grinding and treatment of metals." The Board found the involved services to be identical in part, but what about the marks? They look pretty different to me. In re Truth Partners LLC, dba Mid State Fabricating, Serial No. 88944166 (March 29, 2022) [not precedential] (Opinion by Judge Frances S. Wolfson).

The Board found the marks to be "quite similar" in appearance, sound, connotation and commercial impression. "The only cognizable distinction between the marks is the differing stylization of the identical lettering and the differing background designs surrounding and incorporating the letters MW. These distinctions do not serve to produce a meaningful difference between them."

The Board found the letters MW to be the dominant portion or each mark. First, MW is the only pronounceable portion of the marks. Second, the literal element "is more likely than the design features to be impressed upon a purchaser’s memory and to 'be used by consumers to request the goods [or services].'" Third, the stylization of the lettering "is not so unique or unusual that it adds any meaningful distinctiveness to either mark." And fourth, the circular and hexagonal design elements of the marks are ordinary geometric shapes that serve as mere background for the lettering.

Contrary to Applicant’s argument, the fact that the letters MW are visually incorporated into the overall design of each mark does not render the marks distinguishable. “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.”

Applicant pointed to "numerous" application and registrations in Class 40 for MW-formative marks for allegedly similar goods and services. The Board pointed out, however, that applications are proof only that they were filed. Registrations have little probative value with regard to commercial strength, without evidence that the marks "are in use on a commercial scale or that the public has become familiar with them." Registrations are relevant with regard to the inherent or conceptual strength of a term "because they are probative of how terms are used in connection with the goods or services identified in the registrations." Here, however, the services set forth in the third-party registrations were unrelated to applicant’s services, and so they were of no probative value.

Finally, the Board observed that "arbitrary arrangements of letters are generally given a wide scope of protection because they are more difficult to remember than word marks. Thus, when multiple-letter marks are similar, the difficulty of remembering them makes the likelihood of confusion between them more probable." 

And so, the Board affirmed the refusal to register.

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2022.

Pro Se Intent-to-Use Applicant Wins TTAB Priority Battle in Section 2(d) Opposition to DRIPHOUSE CLOTHING & Design

Another pro se applicant successfully fended off a Section 2(d) opposition, this time despite filing no evidence, testimony or briefs. Carlo Bazan opposed Kiren Williams' Section 1(b) application to register the mark DRIPHOUSE CLOTHING & Design for "Online retail store services featuring clothing and footwear," claiming priority and likelihood of confusion with his mark DRIPHAUS for athletic apparel. He also claimed that Williams lacked a bona fide intent to use the challenged mark. Bazan lost on both counts. Carlo Bazan v. Kiren Williams, Opposition No. 91263383 (March 23, 2022) [not precedential] (Opinion by Judge Karen Kuhlke).

Priority: Opposer Bazan did not file his notice of reliance until the day his main brief was due. Generally, the Board does not consider evidence not filed in accordance with the rules. However, because applicant could have filed a motion to strike but didn't, the Board considered that evidence.

Although Applicant Williams did not submit any evidence or testimony, Opposer Bazan was still required to prove his entitlement to a statutory cause of action (formerly "standing) and prove his claims by a preponderance of the evidence. Bazan's application to register was suspended in view of Williams' earlier-filed application, and that vaulted him over the standing bar.

Although Applicant Williams did not submit any evidence of use of his mark, he was entitled to rely on his application filing date of May 3, 2019 as a constructive first use date. Opposer Bazan filed his application on September 5, 2019, and first used his mark on January 16, 2020. Bazan argued that he is the prior user, since Williams has not used his mark. WRONG! Because Williams filing date beat Bazan's filing date, Bazan failed to prove priority. And so the Board dismissed the Section 2(d) claim.

Lack of Bona Fide Intent: Bazan contended that Williams did not produce any documents or provide any testimony regarding the required bona intent to use the challenged mark. Bazan relied on Williams' failure to respond to interrogatories or provide requested documents, and pointed to his own motion to compel. The Board, however, pointed out that the motion to compel was denied due to Bazan's failure to satisfy the "good faith requirement" of Rule 2.120(f)(1).

In view of Opposer’s failure to timely submit its evidence during its testimony period, we do not infer anything from Applicant’s failure to submit evidence during its testimony period. Indeed, the burden of proof is on Opposer so Applicant was not obligated to introduce evidence. Moreover, Applicant’s failure to respond to discovery where there has been no good faith effort to resolve the discovery dispute does not present a circumstance to infer the absence of documentary evidence. In view thereof, Opposer has not established a prima facie case of no bona fide intent to use.

Conclusion: The Board entered judgment in favor of Applicant Williams on the bona-fide-intent claim. As to the Section 2(d) claim, judgment was entered subject to Williams' "establishment of constructive use." [See Lanham Act Section 18: "no final judgment shall be entered in favor of an applicant under section 1051(b) of this title before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 1057(c) of this title."]

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TTABlogger comment: WYHO?

Text Copyright John L. Welch 2022.

TTABlog Test: Are Water-Based Nonalcoholic Beverages Related to Beer for Likelihood-of-Confusion Purposes?

The Board repeatedly tells us that there is no per se rule that all beverages are related for Section 2(d) purposes. Okay, then how do you think this appeal came out? The USPTO refused to register the mark ROCKAWAY for "Non-alcoholic sparkling water-based beverages, namely, functional beverages containing herbal extracts, plant infusions, and fruit," finding confusion likely with the registered mark ROCKAWAY BREWING COMPANY for "Beer; Brewed malt-based alcoholic beverage[s] in the nature of a beer" [BREWING COMPANY disclaimed]. The marks are close enough, but what about the goods? In re Rockaway Drinks LLC, Serial No. 90115947 (March 25, 2022) [not precedential] (Opinion by Judge Mark Lebow).

Applicant did not argue that the marks are dissimilar, but contended that the cited mark is weak because it is descriptive and registered on the Supplemental Register. The Board, however, observed that even weak marks "are entitled to protection against a mark that is substantially similar in sight, sound, and commercial impression and is used on or in connection with goods that are related."

Turning to the issue of the relatedness of the goods, Examining Attorney Raul Cordova relied on third-party use evidence in contending that beer and "non-alcoholic water-based beverages" (as he characterized applicant's goods) are sold under the same brand name. Third-party registration evidence supported the Examining Attorney's position. Applicant disagreed with the characterization of its goods, insisting that they are more narrowly defined: "they are a specific type of sparkling health beverage containing herbal extracts, plant infusions, and fruit." The Examining Attorney responded that "beers may be infused with herbs and enhancers and thus diminishing the commercial space between beers and non-alcoholic water-based beverages that may be equally infused." The Board sided with the Examining Attorney.

[T]here is no clear definition of what is or is not a 'functional' beverage, and the evidence shows that many of the same ingredients, as well as other fruits and herbs, are used in making beer. ***  As the Examining Attorney’s evidence shows, many beers today also include herbal extracts, plant infusions, and/or fruit, just like Applicant’s purportedly 'functional' non-alcoholic water-based beverages.

The cited registration identifies the goods broadly as "beer," which encompasses beer that includes herbal extracts, herbal infusions, and/or fruit that could be classified as functional. Consequently, the Board found the involved goods to be related. Therefore, it must presume that these goods travel in the same trade channels to the same classes of consumers, "including health-conscious consumers seeking herbal and fruit infusions in their beers or other sparkling beverages."

And so, the Board affirmed the refusal to register.

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TTABlogger comment: There is no per se rule that all beverages are related. It just works out that way.

Text Copyright John L. Welch 2022.

TTABlog Test: Is this MUTILATION? USPTO Says "THE VILLE" Specimen of Use Did not Match the Application Drawing

The USPTO refused to register THE VILLE (in standard character form) for educational and entertainment services provided by the University of Louisville, on the ground that the drawing of the mark was not a substantially exact representation of the mark as used in commerce. In other words, mutilation! Do you agree? In re University of Louisville, Serial No. 90182509 (March 24, 2022) [not precedential] (Opinion by Judge Martha B. Allard).

Section 1(a)(1) of the Lanham Act requires that a trademark applicant submit a specimen depicting its mark as used. Under Rule 2.51(a), the drawing must be "a substantially exact representation of the mark as used." The Board noted that "the term 'substantially' permits some 'nonconsequential variation' from the 'exact representation' standard."

The term "mutilation" is sometimes used when the drawing "does not constitute the complete mark," and the term indicates that "essential and integral subject matter is missing from the drawing." See TMEP Section 807.12(d). It "'all boils down to a judgment as to whether the designation for which registration is sought comprises a separate and distinct 'trademark' in and of itself.'"

Examining Attorney Inga Irvin found that the mark on the application drawing (i.e, THE VILLE) was not a substantially exact representation of the mark as used on the specimen of use (pertinent portion shown above). She suggested that the University submit a substitute specimen of use, but the University refused to do so.

Louisville contended that the commercial impression created by the specimen is "THE VILLE," the University's nickname, while the nondistinctive word "visit" does nothing to change that impression. The Examining Attorney maintained that the mark shown on the specimen is VISIT THE 'VILLE, and she argued that the invitation or command "visit the ville" creates a different commercial impression than simply naming the place to be visited. She also noted that VISIT was not part of the mark as filed, and consequently this added term was not searched for possible likelihood of confusion with other registered marks.

The Board found that the mark shown on the specimen is VISIT THE 'VILLE: "those words are so merged together that the term THE VILLE cannot be regarded as a separable element creating a separate and distinct commercial impression."

Using Applicant's preferred focus on the red field in the specimen, the words VISIT THE 'VILLE! appear together. The words VISIT THE appear on the same line and in the same style and relatively smaller size font. The word 'VILLE! appears in a larger font below and slightly to the right, but in close proximity to the terms VISIT THE and, more importantly, completes the sentence started by VISIT THE. The use of the exclamation point reinforces the notion that the terms VISIT THE 'VILLE! should be read together to form an exhortation .

"Consequently, the drawing, which contains only the term THE VILLE, constitutes a mutilation of the mark as depicted in the specimen."

An applicant may seek to register any portion of a mark, if that portion presents a separate and distinct commercial impression. In re 1175854 Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006). Applicant has, in effect, applied to register only part of the mark shown in the specimen, but that portion, THE VILLE, does not create a separate commercial impression for the reasons discussed above.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Perhaps the University should have either filed a substitute specimen or amended the application to intent-to-use? What do you think?

Text Copyright John L. Welch 2022.

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

It's Friday, so here's your weekly/weakly TTABlog Test. So far in 2022, by my reckoning, the Board has affirmed 52 out of 53 Section 2(d) refusals. Here are the latest three for your consideration. [Results in first comment].

In re TdeltaS Limited, Serial No. 79282075 (March 17, 2022) [not precedential] (Opinion by Judge Thomas Shaw). [Section 2(d) refusal of the mark DELTA GOLD & Design (shown below), for a variety of non-alcoholic, non-medicated beverages used to maintain, promote and enhance health, wellness and fitness and to treat medical conditions, in view of the registered mark DELTAGOLD (standard character form) for "nutritional supplements."]

In re Panacea Financial LLC, Serial No. 88947690 (March 18, 2022) [not precedential] (Opinion by Judge Karen Kuhlke) [Section 2(d) refusal of PANACEA FINANCIAL for, inter alia, "banking and financing services" and "financing and loan services" [FINANCIAL disclaimed], in view of the registered mark PANACEA VENTURE for "financial services, namely, venture capital investment firm services targeted at investments in companies in the healthcare and life sciences fields" [VENTURE disclaimed].  
                   

In re Sea Lion S.R.L., Serial No. 88980119 (March 18, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of  the mark WALLY & Design, shown below, for "Duffel bags, luggage, tote bags, briefcases, leather key holders being key cases, briefcase type portfolios and all purpose carrying bags in the nature of carrying pouches," in view of the registered mark WALLY (standard character form) for "Wallets with card compartments" and WALLY (standard character form) for "garment bags for travel and hanger clamps for use with such bags," the cited registrations having different owners.]

 

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TTABlog comment: How did you do?  

Text Copyright John L. Welch 2022.

Pro Se Applicant Bests Monster Energy in Section 2(d) and Dilution TTAB Battle

I don't like to accuse any party of being a bully. I understand the trademark owner's duty to police its marks. But this case has tested my resolve. The Board dismissed this opposition to registration of the mark shown below left, for "t-shirts," finding no likelihood of confusion with Monster Energy's design mark shown below right, for clothing, including t-shirts. Comparing the marks in their entireties, the Board found (not surprisingly) that "the marks have almost nothing in common ... and ... they are quite dissimilar overall." That finding, along with Monster's failure to prove dilution-type fame, also sunk Monster's dilution-by-blurring claim. Monster Energy Company v. Jamal Jalen Carter, Opposition No. 91255846 (March 21, 2022) [not precedential] (Opinion by Judge Michael B. Adlin).

Likelihood of Confusion: Applicant Jamal Jalen Carter described his mark as "three red scratch marks behind the term 'HVNGRY' in white all against a black background." Monster Energy described its mark as "a stylized letter M in the form of a claw."

The Board found Monster's mark to be conceptually strong and famous for energy drinks, but there was no evidence that its mark is famous, or even commercially strong, for clothing. "[W]hile Opposer fairly extensively licenses its mark for use on clothing, its royalties from these licenses, while not insubstantial, are not particularly impressive either, especially because Opposer only provided 'worldwide' figures and there is no indication how many items of clothing bearing the pleaded marks have been sold in the United States."

Monster "hangs its hat" on the overall appearances of the marks, contending that "[t]he shape of the claw marks are highly similar. Both of the claw marks have rough, jagged edges … and … also have the identical number of claw marks three." The Board found that "while both marks contain three scratch/claw marks, and the scratch/claw marks are 'jagged,' the similarities in appearance end there."

[Wh]ile consumers will perceive Opposer’s mark as merely an “M” or claw, they will perceive Applicant’s mark as multifaceted, with the scratch marks serving to highlight the mark’s literal element by running through the lettering , and the mark’s red, white and black features distinguishing it from the less embellished features of Opposer’s mark. In fact, Opposer’s focus on the three red scratch marks in Applicant’s mark essentially dissects it , which is not the proper way to compare marks.

The Board was unmoved by Monster's argument that the design element in Applicant Carter's mark is dominant. "[I] is settled that 'the verbal portion of a word and design mark likely will be the dominant portion ..'" In re Viterra, 101 USPQ2d at 1911.

The Board concluded that the marks "look quite different," sound "even more different," convey "entirely different meanings," and create "much different commercial impressions."

And so the Board dismissed Monster's Section 2(d) claim.

Dilution-by-Blurring: As to Monster's dilution-by-blurring claim, the Board found that Monster failed to prove that its mark is "widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner." [emphasis added]. In other words, Monster failed to show that its mark is a "household word."

[W]hile “niche” fame is sufficient to establish fame for likelihood of confusion purposes, it is not sufficient to establish fame for dilution purposes. As the Federal Circuit held in Coach Servs., a mark can acquire “sufficient public recognition and renown to be famous for purposes of likelihood of confusion without meeting the more stringent requirement for dilution fame.”

While Monster's mark is famous for energy drinks, its fame ends there. "[T]he record as a whole comes nowhere close to establishing the widespread recognition among the general consuming public necessary to establish fame for dilution purposes."

The Lanham Act further requires that the party claiming dilution prove an "association arising from the similarity between a mark or trade name and a famous mark." Here, the marks are dissimilar in their entireties, "which precludes a finding of dilution, because consumers will not 'conjure up' Opposer’s mark when they see Applicant’s." And so, the Board dismissed Monster's dilution claim.

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TTABlogger comment: WYHO?

Text Copyright John L. Welch 2022.

TTABlog Test: Are "LE CHOCOLAT DES ILES" and "ISLAND CHOCOLATES" Confusable for Chocolate Candy?

The USPTO refused registration of the proposed mark LE CHOCOLAT DES ILES & Design (shown below), for various chocolate products [CHOCOLAT disclaimed], including chocolate candy and chocolate-covered nuts, finding confusion likely with the registered mark ISLAND CHOCOLATES for "chocolate candies, chocolate covered nuts" [CHOCOLATE disclaimed]. The goods overlap, but what about the marks? Are they confusable? In re Iatichand R. Goojha, Serial No. 88479529 (March 21 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Applicant Goojha translated the literal portion of the proposed mark as "“the choclate (sic) of the islands," but contended that the mark is dissimilar in appearance, sound, connotation and commercial impression from the cited mark." Goojha also insisted that the words in each mark are "spelled differently, pronounced differently" and have "different meanings." He asserted that the color gold in the mark "reflect(s) the upscale and fancy foreign product offered."

Goojha maintained that the doctrine of foreign equivalents is not an absolute rule, and the ordinary American consumer could not translate his mark: "the French translation would not be applied or understood by the average American consumer" given that there are only "1,300,000 French speakers as opposed to 231,122,908 English only speakers [that] reside in the United States."

Examining Attorney Evonne M. Neptune's evidence showed that French brands are commonly sold in the United States, and some 1.25M individuals speak French in this country. The Board found that French qualifies as a common, modern language spoken by "an appreciable segment of the population.” It took judicial notice that "île" is French for "island" and "chocolat" is French for "chocolate," and there are no other meanings for these terms.

Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine similarity of connotation with English word marks. See Palm Bay Imps., 73 USPQ2d at 1696. As Applicant has pointed out, the doctrine of foreign equivalents is a “guideline and not an absolute rule.” Id. The doctrine is applied when it is likely that “the ordinary American purchaser would ‘stop and translate [the term] into its English equivalent.’” Id., quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976).

For purposes of the doctrine of foreign equivalents, the "ordinary American purchaser" refers to "the ordinary American purchaser who is knowledgeable in English as well as the pertinent foreign language.” In re La Peregrina Ltd., 86 USPQ2d 1645, 1647-48 (TTAB 2008).

The English translation of “Les Chocolat des Iles” is “Chocolate of the Islands,” which is confirmed by Applicant’s translation statement, “The Choclate (sic) of the Islands.” The evidence clearly shows that this is the only meaning of the phrase, without question, and that is how the phrase would be recognized and understood by the French-speaking American public.

The Board found the doctrine of foreign equivalents to be applicable here: Applicant’s mark is the foreign equivalent and synonymous with ISLAND CHOCOLATES. Moreover, the Board noted, even if the doctrine of foreign equivalents did not apply, "a significant number of American purchasers who are not familiar with the French language upon encountering the term 'Les Chocolat des Iles' would guess its translation is 'Chocolate of Isles,' if not 'Chocolate Islands.'"

Turning to the marks, although they differ in appearance and sound, the design element in applicant's mark reinforces the word "island." The Board found that "the equivalency in meaning of ISLAND CHOCOLATES and LE CHOCOLAT DES ILES outweighs any differences in how the marks look and sound."

The Board noted that the cited registration contains a geographic restriction statement (to Hawaii and Guam), but the Board must presume that applicant is marketing his services in registrant’s trading area because Applicant is seeking an unrestricted registration.

And so, the Board affirmed the refusal.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.

TTABlog Test: Are Supplements and Cosmetics Related for Section 2(d) Purposes?

The USPTO refused to register the proposed mark NUNC for "Dietary supplements and nutritional supplements for promoting nutrition and health, excluding tablets and powdered mixes used to make beverages or drinks and excluding formulations for beauty enhancement" (emphasis supplied), finding confusion likely with the mark NUNC in slightly stylized form, for "Cosmetics and cosmetic preparations; aromatic oils; air fragrancing preparations; fragrances and perfumery; skin soap; dentifrice." There was no question that the marks are confusingly similar, but what about the goods? Are they related? How do you think this came out? In re Your Gummy Vitamins LLC, Serial No. 90007282 (March 17, 2022) [not precedential] (Opinion by Judge George C. Pologeorgis).

Examining Attorney Khanh M. Le relied on "Internet evidence from approximately eleven online retailer websites demonstrating that a single entity commonly promotes and provides Applicant’s goods and Registrant’s goods under the same mark." Applicant Your Gummy contended that its identified goods are sufficiently narrow and different to avoid confusion, pointing to its exclusion of beauty formulations from the scope of its nutritional and dietary supplements.

Applicant’s argument is unavailing. *** [T]he parties’ respective goods do not need to be identical in order to find a likelihood of confusion. Instead, they just need to be related in some manner such that if offered under similar marks may give rise to the mistaken belief that they originate from the same source. The record before us sufficiently demonstrates that Applicant’s and Registrant’s goods are the type offered by a single entity under the same mark.

Your Gummy next argued that the goods in the cited registration are not sold in the United States, but that was an impermissible collateral attack on the cited registration. The pointed out that "an abandonment or nonuse challenge would be appropriate in a cancellation proceeding, but it is not appropriate or permissible in this ex parte proceeding."

 

Your Gummy also maintained that the trade channels are different because registrant is a Japanese company whose business focuses on education, senior care services, and beauty salons, but only in Japan. The Board was unimpressed. "[B]ecause there are no limitations or restrictions in the trade channels or classes of purchasers of either Applicant’s or Registrant’s identification of goods, we must presume that the parties’ respective goods are marketed in all normal trade channels for those goods and to all normal classes of purchasers for such goods, regardless of what any extrinsic evidence might show to be the actual trade channels and purchasers for the goods."

And so the Board affirmed the refusal.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.

TTAB Affirms Refusal of "WEGE": Specimens Fail to Show Use of Mark for Beer

The Board affirmed a refusal to register the proposed mark WEGE for beer on the ground that "none of the specimens show use of the mark ... to indicate the source of beer." Applicant's specimens displayed WEGE only in the phrase "BREWED WITH WEGE OF HANOVER PRETZELS," which use did not show an association of the mark with beer, but rather with the pretzels with which the beer is brewed. In re Nittany Corporation, Serial No. 88439889 (March 17, 2022) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

The Board observed that "[w]hether the prospective purchaser of the goods will perceive a term on the goods as the trademark indicating the source of the goods will vary with the circumstances, including whether more than one term appears on the goods." Multiple terms on a product may comprise a trade name and a trade mark, or a house mark and a product mark, or they may indicate the sources of different goods. See, for example, in In re Bose, 192 USPQ 213, 216 (CCPA 1976) ("[I]t is quite apparent that, in the specimens of record, only INTERAUDIO identifies the loudspeaker systems for high-fidelity music reproduction as originating with appellant and distinguishes such goods from those manufactured and sold by others. The mark SYNCOM merely relates to a speaker-testing computer.").

In sum, the common use of multiple terms on the goods requires careful consideration of how those terms will be perceived by the prospective consumer of the goods. Demonstrating a technical trademark use by affixing a term to the goods in and of itself does not serve the essential specimen purpose of verifying use of the mark by showing that the mark “has been used as a trademark with respect to the goods named in the application.” Bose at 216.

Use of multiple marks on a product may be dubbed "co-branding," but the question remains whether the use of applicant's mark, as it appears on the specimen of use, serves as a source indicator for the goods listed in the application.

Here, the Board agreed with Examining Attorney Elaine Xu that the proposed mark WEGE does not function as a trademark for applicant's beer. Consumers will see ALDUS BREWING COMPANY and the prominent "A" design, in close proximity to the words "pretzel wheat ale," as the trademark for the beer. The phrase "BREWED WITH WEGE OF HANOVER PRETZELS" will be viewed as the source of the pretzels with which the beer is made.

To be clear, there is nothing inherent to the term WEGE which prevents it from functioning as a beer trademark. It is Applicant’s choice to directly associate WEGE with pretzels by only using WEGE as part of “BREWED WITH WEGE OF HANOVER PRETZELS” which prevents the association between WEGE and beer. See Bose, 192 USPQ at 216.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: So when, say, "Bank of America" appears on a city's rental bikes, that's not a trademark use for bikes, right?

Text Copyright John L. Welch 2022.

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

A TTAB judge once said to me that you can predict the outcome of a Section 2(d) appeal 95% of the time by looking at the marks and the goods/services. This year, the Board has affirmed 44 of the first 45 Section 2(d) refusals it has considered. Here are the latest three. How do you think they came out? [Answer in first comment.]

In re Liquid Web LLC, Serial No. 88910823 (March 14, 2022) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Section 2(d) refusal of SAFE HARBOR for, inter alia, "computer security consultancy services, namely, providing updated security patches in the nature of updating computer software, nightly online scanning and detecting of malware on computers and electronic devices and presenting reports concerning the performance of online systems; maintenance of computer software relating to computer security and prevention of computer risks, namely, detecting and blocking malicious cybersecurity attacks via web application firewall." in view of the registered mark SAFEHARBOR for "Engineering, computer technology, and cybersecurity consulting services for maritime organizations, namely, services for updating computer hardware and software relating to computer security and services for prevention of computer security risks; Providing temporary use of non-downloadable cloud-based software to improve computer security and prevent computer security risks for maritime organizations."] 

In re Affiliated Foods, Inc., Serial No. 88790990 (March 14, 2022) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal of SAV-U-MOR for "retail grocery stores" in view of the registered marks SAV-MOR... YOUR PHARMACY EXPERTS for “Pharmacy and retail drug store services and general merchandise store services; retail pharmacy services, namely, providing an automated interactive telephone and SAV-MOR DRUG STORES & Design for "Retail pharmacy services, retail drug store services and retail general consumer merchandise store services" [DRUG STORES disclaimed]]

In re Alembic Pharmaceuticals, Inc., Serial No. 88660548 (March 11, 2022) [not precedential] (Opinion by Judge Thomas Shaw). [Section 2(d) refusal of ALEMBIC for a variety of "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 . . . filled by a retail pharmacy licensed to sell prescription drugs," in view of the registered mark ALEMBIC HERBALS & Design for a variety of “medicines for human purposes for strengthening the immune system and restoring normal bodily functions, the treatment, mitigation and prevention of diseases and disorders" [HERBALS and the pictorial representation of the mortar, pestle, and flowering herbal plant disclaimed]].

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

Text Copyright John L. Welch 2022.

Viacom Wins "DOUBLE DARE" Section 2(d) TTAB Battle, Survives Abandonment Attack

In an exhausting 96-page decision (including a 27-page appendix containing rulings on the evidentiary objections of the parties), the Board sustained an opposition to registration of the mark DOUBLE DARE for computer game software (class 9), clothing (class 25), toys (class 28), and entertainment services (class 41), finding that applicant Armstrong Interactive lacked a bona fide intent to use the mark for the class 9, 25, and 28 goods, and finding confusion likely with the identical common law mark used by Opposer Viacom as to all four classes. This blog post will hit some of the highlights. Viacom International, Inc. v. Armstrong Interactive, Inc., Serial No. 91243941 (March 11, 2022) [not precedential] (Opinion by Judge David K. Heasley).

Opposer Viacom first aired a game show called DOUBLE DARE in 1986 but ceased airing new episodes in 2000. Reruns followed. In 2009, Viacom let lapse its registration for DOUBLE DARE for production and distribution of a children's game show. Applicant Armstrong contended that Viacocm abandoned the DOUBLE DARE mark between 2009 and 2018, and so Armstrong filed its intent-to-use application in January 2018. Viacom maintained that it retained its common law rights through various ongoing uses between 2009 and 2018, and therefore had priority.

In April 2018, Viacom announced it was releasing new episodes of DOUBLE DARE. Armstrong wrote to Viacom, claiming prior rights in the mark. Viacom proceeded to air an episode of DOUBLE DARE in June 2018 and it filed a civil action seeking a declaratory judgment that it owned the mark. Viacom also filed this opposition. The court dismissed the civil action for lack of subject matter jurisdiction, since it was not clear whether Armstrong would obtain any rights in the mark and since there was no actual harm being caused to Viacom.

Bona fide intent: Although the issue of lack of bona fide intent was not raised in the notice of opposition, the Board found that it was tried by implied consent. Viacom made out a prima facie case by establishing that Armstrong had no documentation to support its claimed bona fide intent to use the mark in commerce as of the application filing date. Armstrong offered no countering evidence for the goods in its application, but the Board found that, as to the class 41 entertainment services, Armstrong demonstrated its capacity to produce a children's program. It also made efforts to set the project in motion, including meeting with Marc Summers, the host of the original Viacom television show.

[T]he testimony, taken as a whole, indicates that Armstrong had more than subjective hopeful or wishful thinking. He had reason to believe that DOUBLE DARE was available, that it was no longer registered, and that Applicant could produce and air the show with the expertise of its former producer and host. Applicant’s contemporaneous actions from August 2017 through July 2018 are consistent with that mental impression and intention. Considering the totality of the circumstances, the low evidentiary bar, and the objective evidence as it bears on Applicant’s subjective intent, this suffices to overcome Opposer’s prima facie case based on lack of documentation.

Priority and abandonment: Armstrong asserted that "[b]etween 2009 and 2018, little to no bona fide use of the Mark in commerce was made by Opposer or anyone else." Viacom contended that it used the mark between 2009 and 2018 "in a variety of overlapping ways: (i) reruns of old DOUBLE DARE episodes that aired on Nickelodeon and other Viacom channels; (ii) live DOUBLE DARE events, beginning in 2012, that took place around the country; (iii) digital downloads of DOUBLE DARE rerun episodes, offered from 2014 onward, that tens of thousands of consumers downloaded and streamed; (iv) 2016 live and on-air reunion specials that were a substantial ratings success, persuading Opposer to (v) produce a 2018 reboot of DOUBLE DARE with new content; all promoted by (vi) extensive social media advertising."

The Board noted that "[i]t is not the law that 'the slightest cessation of use causes a trademark to roll free, like a fumbled football, so that it may be pounced on by any alert opponent.'" The Board look[s] at the evidence as a whole, "as if each piece of evidence were part of a puzzle to be fitted together."

Opposer has adduced evidence of its sequentially overlapping layers of use in a variety of formats, all reasonably calculated to convey to its audience that each is part of a continuing series of the same show: DOUBLE DARE. Rather than presenting contravening facts, Applicant attempts to dissect Opposer’s evidence. Yet despite these attempts, Opposer’s evidence of prior use, taken in its entirety, “stands unrebutted.”

Armstrong also argued that the mark DOUBLE DARE had lost its trademark significance or had become generic, and that residual goodwill without use did not equate to trademark rights. The Board, however, found that DOUBLE DARE did not lose its trademark significance.

Clearly, DOUBLE DARE is still widely recognized as the mark of Opposer’s children’s game show. As the evidence indicates, viewers have enjoyed DOUBLE DARE over the years through a variety of media—from television and cable to downloading and streaming to live events. The occasional third-party variants or parodies have not diminished this association. The numerous unsolicited press mentions of DOUBLE DARE may not have created Opposer’s trademark rights, but they do evince the continued public recognition of Opposer’s mark. And the surveys, particularly the 2018 survey, corroborate the public’s continued recognition: over a third of that survey population had seen the DOUBLE DARE show, nearly all of that group remembered enjoying the show, which had cross-generational appeal, and nearly nine out of ten said they would tune in for a reboot.

The Board concluded that, since Viacom enjoyed priority for the identical marks, and since the services overlap, confusion is inevitable. And so, it sustained the opposition.

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TTABlogger comment:  For more on residual goodwill see Gilson and Lalonde, "The Zombie Trademark: A Windfall and a Pitfall," 98 Trademark Reporter 1280 (November-December 2008) [pdf here].

Text Copyright John L. Welch 2022.

Recommended Reading: "Navigating the Identity Thicket: Trademark's Lost Theory of Theory of Personality, The Right of Publicity, and Preemption"

Professor Jennifer E. Rothman of the University of Pennsylvania Carey School of Law, a leading expert on the right of publicity, grapples with the overlapping and conflicting rights regarding a person’s identity that arise from trademark law and right of publicity law, in her article, "Navigating the Identity Thicket: Trademark's Lost Theory of Theory of Personality, The Right of Publicity, and Preemption" 135 Harv. L. Rev. 1271 (March 2022). [pdf here].

Both trademark and unfair competition laws and state right of publicity laws protect against unauthorized uses of a person's identity. Increasingly, however, these rights are working at odds with one another and can point in different directions with regard to who controls a person's name, likeness, and broader indicia of identity. This creates what I call an "identity thicket" of overlapping and conflicting rights over a person’s identity. Current jurisprudence provides little to no guidance on the most basic questions surrounding this thicket, such as what right to use a person's identity, if any, flows from the transfer of marks that incorporate indicia of a person's identity, and whether such transfers can empower a successor company to bar a person from using their own identity, and, if so, when.

Part of the challenge for mediating these disputes is that both right of publicity and trademark laws are commonly thought of as concerned solely with market-based interests. But this is not the case. As I have documented elsewhere, the right of publicity has long been directed at protecting both the economic and the noneconomic interests of identity-holders. And, as I demonstrate here, it turns out that the same is true for trademark and unfair competition laws, which have long protected a person's autonomy and dignity interests as well as their market-based ones.

After documenting and developing this overlooked aspect of trademark law, I suggest a number of broader insights of this more robust account of trademark law both for addressing the identity thicket and for trademark law more generally. First, I suggest that recognizing a personality-based facet of trademark law suggests a basis to limit the alienation of personal marks in some contexts. Second, this understanding shores up trademark's negative spaces, especially when truthful information is at issue. Third, recognizing trademark's personality-based interests provides a partial explanation (and limiting principle) for some of its expansionist impulses.

Finally, I contend that recognizing this broader vision of trademark law provides significant guidance as to how to navigate the identity thicket. I employ trademark preemption analysis to mediate disputes between trademark and right of publicity laws. Trademark preemption provides an avenue out of the thicket, but only if trademark law's robust theory of personality is recognized. A failure to do so risks leaving us with one of two bad options: a right of publicity that acts as a "mutant" trademark law, swallowing up and obstructing legitimate rights to use trademarks, or, alternatively, with a shallow husk of trademark law (rooted solely in commercial interests) that swallows up publicity claims at the expense of personal autonomy and dignity. Trademark law already provides us with the tools to avoid both of these unsavory paths — if only we reclaim its lost personality.

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Text Copyright John L. Welch 2022.

TTABlog Test: How Did These Three Recent Section 2(d) Proceedings Come Out?

Here are three recent decisions in Section 2(d) proceedings: two oppositions and one cancellation. Can you guess how they came out based on the minimal information I have provided?  [Answer in first comment].

Sean Stevens v. Valino Tires USA LLC, Cancellation No. 92073974 (February 28, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson). [Petition for cancellation of a registration for the mark VALINO & Design for "tires; tires for land vehicles; tires for vehicle wheels; automobile tires," in view of petitioner's common law mark VELLANO FORGED WHEELS for wheel rims and wheels. The Board found that petitioner’s products are forged, custom built, luxury wheels and rims directed to purchasers "who would exercise a much higher degree of care than an average purchaser of wheels and rims, and as a result, the high degree of care exercised by these purchasers weighs against a finding of likelihood of confusion."]

Sun Bum LLC v. Health Bomb LLC, Opposition No. 91264019 (March 10, 2022) [not precedential] (Opinion by Judge Christopher Larkin) [Opposition to registration of SKI BUM for "Face creams, non-medicated face serum" in view of the registered mark SUN BUM & Design for, inter alia, "body and beauty care cosmetics," "cosmetic preparations, namely, firming creams and lotions," and "facial moisturizers." The goods are legally identical, but are the marks close enough? The Board found that opposer's mark falls on the “strong” side of the spectrum, but not “on the much higher end of the commercial strength spectrum.” Opposer's mark is entitled to something more than “the normal scope of protection to which inherently distinctive marks are entitled.”]

 

Westguard Insurance Company v. Hanover Stone Partners, LLC , Opposition No. 91234475 (March 11, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Opposition to registration of WORKERSCOMP GUARD for various services in the field of workers’ compensation insurance [WORKERSCOMP disclaimed], in view of the opposer's common law mark and shortened trade name GUARD for insurance services and other related services. The Board found opposer's mark to be conceptually weak but commercially strong.]

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TTABlog comment: How did you do?  

Text Copyright John L. Welch 2022.

Precedential No. 7: TTAB Sanctions Party for Flagrant Violation of the Standard Protective Order

In this consolidated opposition proceeding, Opposer Revolution Jewelry Works disclosed Applicant Stonebrook Jewelry's attorneys'-eyes-only (AEO) information in a TTAB filing and allowed its principal to attend an AEO deposition unbeknownst to Stonebrook. Stonebrook moved for judgment as a sanction for the violations of the Standard Protective Order, but the Board refused to go that far, finding lesser sanctions appropriate. Revolution Jewelry Works, Inc. v. Stonebrook Jewelry LLC d/b/a Revolution Jewelry, 2022 USPQ2d 229 (TTAB 2022) [precedential].

Under Rule 2.116(g), the Board's Standard Protective Order is automatically in place in every inter partes proceeding, to govern the exchange of information between parties. It provides that information marked "Attorneys' Eyes Only" may be viewed only by outside counsel for the parties (and by independent experts or consultants). 

Here, during a video deposition under FRCP 30(b)(6) in which Stonebrook's principal, Eric Platt, was the designated witness, Stonebrook produced to Revolution certain documents marked Attorneys'-Eyes-Only (including tax filings and a customer list with purchase amounts). Prior to the deposition, the parties had agreed that the entire deposition would be designated AEO. Counsel for Revolution did not reveal that Jennifer Farnes, Revolution's president and majority shareholder, was present with Revolution's counsel during the deposition.

Stonebrook first learned that Farnes attended the deposition in a response to Stonebrook's summary judgment motion, which response included a declaration from Farnes stating that she attended the deposition and commenting on Platt's testimony. She included one of Stonebrook's AEO documents as an exhibit to her declaration.

Stonebrook moved for entry of judgment as a sanction. Revolution's counsel, in response, stated that the violation was "unintentional" and entirely the fault of counsel. He feebly asserted that he thought a protective order still had to be negotiated, that each party could be privy to the other's depositions without violating any order, and that documents would later be designated confidential. Counsel also argued that the filing of the Farnes declaration showed that counsel did not act in bad faith, and he maintained that Revolution gained no advantage in this proceeding by her attendance at the deposition.

Under Rule 2.120(h), the Board may enter appropriate sanctions for violation of a Board order relating to discovery, including the Standard Protective Order. The sanctions may include those set forth in FRCP 37(b)(2), such as prohibiting the introduction of matters into evidence, striking pleadings, or entering judgment. The Board also has the power to enter sanctions "that extends from the Board's 'inherent authority to control the disposition of cases on its docket.'"

Entry of judgment is a "harsh" sanction, generally "warranted in cases of repeated failure to comply with orders of the Board, where a lesser sanction would not be effective." Counsels' professed ignorance that the Standard Protective Order was automatically in place did not excuse their actions in allowing their client to covertly view AEO information. An attorney representing a party "is expected to know and strictly comply with the Trademark Rules of Practice and, where applicable, the Federal Rules of Civil Procedure."

The Board found it troubling that, putting aside counsels' lack of attention to the rules and the Board's protective order, they disregarded the agreement that the deposition was to be AEO and showed their client documents marked "AEO." And as a matter of common courtesy and transparency, they would be expected to identify all those present at the deposition.

Revolution's contention that access to the AEO information gave it no advantage in this proceeding was meritless: access allowed Farnes to attempt to undermine the testimony of Stonebrook's principal, and it ignored the purpose of the AEO designation "to prevent an unfair competitive advantage in the marketplace."

The Board concluded that sanctions were necessary to deter similar conduct in the future. As required by precedent, the Board first considered whether lesser sanctions than entry of judgment and it found the following sanctions to be "sufficiently effective and appropriate for the violations:"

It is hereby ORDERED:

• Counsel for Opposer, Mr. Simpson and Ms. Olson, are barred from accessing, viewing, or discussing documents produced by Applicant designated “Attorneys’ Eyes Only” for the duration of this proceeding;

• Mr. Simpson and Ms. Olson are also barred from serving, filing and signing submissions in this proceeding or participating in trial depositions;

• Opposer is barred from introducing at trial or on summary judgment Applicant’s documents that were designated “Attorneys’ Eyes Only” and the Rule 30(b)(6) deposition of Mr. Platt;

• Opposer is barred from deposing Mr. Platt again for any reason, including cross-examination if Applicant presents his testimony at trial or on summary judgment; and

• Opposer is barred from presenting at trial or on summary judgment any testimony, whether in the form of an oral deposition or declaration, from Jennifer Farnes, Opposer’s President.

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TTABlogger comment: Do you think this sanction was enough? Should the law firm representing Revolution have been barred from further representation of Revolution in this case?

Text Copyright John L. Welch 2022.

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

Well, we finally had a reversal, or at least a partial reversal, in a Section 2(d) appeal: see the TRITAN decision (here). But the other 40 Section 2(d) appeals decided this year resulted in affirmances. Here are four more appeals decided this week. How do you think they turned out? Answer in first comment.

In re JSS Concepts Holding Co., LLC, Serial No. 88362890 (March 3, 2022) [not precedential] (Opinion by Judge Thomas Shaw) [Section 2(d) refusal of HEIRLOOM HOSPITALITY for "Offering business management assistance in the establishment and operation of restaurants and bars; Outsource service provider in the field of business management of restaurants and bars" [HOSPITALITY disclaimed], in view of the registered mark HEIRLOOM for "Branding services, namely, consulting, development, management and marketing of brands for businesses and/or individuals."]

In re Shell Case Limited , Serial No. 79273053 (March 8, 2022) [not precedential] (Opinion by Judge Thomas Shaw). [Section 2(d) refusal of SHELL-CASE in stylized form, for "Bags, namely, all-purpose carrying bags, leather bags for packaging, leather bags for component packaging, leather bags for shipment of merchandise and components, all-purpose carrying bags for salespeople, bags for climbers in the nature of all-purpose carrying bags, all purpose carrying bags for use by campers, bag for sports, backpacks, suitcases," in view of the registered mark SHELLVCASE, for, inter alia, “Bags adapted for laptops."]

In re Billy Jack Carter, Serial No. 88464536 (March 8, 2022) [not precedential] (Opinion by Judge Karen Kuhlke). [Section 2(d) refusal of CHAPTRE in view of the registered mark CHAPTER for  overlapping real estate services.] 

In re Moonlite Bar-B-Q Inn, Inc., Serial No. 86636794 (March 9, 2022) [not precedential] (Opinion by Judge Albert Zervas. [Section 2(d) refusal of MOONLITE for "wines" in view of the registered mark MOONLIGHT MEADERY for "honey wine, wine" [MEADERY disclaimed]].

>

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

Text Copyright John L. Welch 2022.

Precedential No. 6: Title of Single Work "STRONGHOLDS & FOLLOWERS" Fails to Function as a Trademark, Says TTAB

Following long-standing precedent, the Board affirmed a refusal to register the proposed mark STRONGHOLDS & FOLLOWERS for "Role playing game equipment in the nature of game book manuals" on the ground that the mark is the title of a single work and therefore does not function as a trademark under Section 1, 2, and 45 of the Lanham Act. In re MCDM Productions, LLC, 2022 USPQ2d 227 (TTAB 2022) [precedential] (Opinion by Judge Elizabeth A. Dunn).

The CAFC and its predecessor, the CCPA, have ruled that "[t]he title of a single creative work, such as a book, is not considered to be a trademark, and is therefore unregistrable." See, for example, Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); In re Cooper, 254 F.2d 611, 117 USPQ 396 (CCPA 1958). ("[H]owever arbitrary, novel, or nondescriptive of contents the name of a book - its title - may be, it nevertheless describes the book.").

Applicant MCDM's goods "plainly are books" and admittedly not a series of books. The term STRONGHOLDS & FOLLOWERS appears on the front of the game manual (see specimen above) in the place where the title usually appears. MCDM's website allows the purchase of "STRONGHOLDS & FOLLOWERS" as a single title in print and electronic (.pdf) formats. The Board observed that "selling a book in different formats does not preclude a finding that the title names a single work." See Mattel v. Brainy Baby, 101 USPQ2d at 1144; In re Appleby, 159 USPQ 126, 127 n.1 (TTAB 1968).

MCDM contended that STRONGHOLDS & FOLLOWERS is recognized by consumers as a source indicator, but the Board found no evidence that the term is seen as anything other than the title of the manual. The Board rejected MCDM's contention that an analysis of acquired distinctiveness is relevant. MCDM relied on the nonprecedential Board decision in In re King Prod, Inc. [TTABlogged here]. "The Federal Circuit has foreclosed the argument that the title of a single work is registrable if it has acquired distinctiveness." See Herbko, 64 USPQ2d at 1378 ("the publication of a single book cannot create, as a matter of law, an association between a book's title (the alleged mark) and the source of the book (he publisher.)").

MCDM next pointed to third-party registrations for similar role playing game manuals, but the Board once again pointed out the each case must be decided on its own record. Moreover, it was not clear whether the third-party marks were used for a series of works, which would make their registration consistent with case precedent.

Finally, MCDM argued that its manual is an activity book not subject to the single work refusal. See TMEP Section 1202.08(b). The rationale expressed in the TMEP is that an activity book changes in content with each new issue. The Board, however, found that MCDM's manual does not offer activities, but rather instructions.

The record shows that Applicant’s role playing game manuals, though intended to guide action in a game, are not activity books in which the content changes with each issue. Rather, Applicant’s role playing game manuals include unchanging instruction on a method of play, and so the refusal of the title fits squarely in the line of cases finding that registration of the title of a single instructional manual is barred.

And so, the Board affirmed the refusal.

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TTABlogger comment: In Cooper, the CAFC found that registration of a title of a single work as a trademark may create obstacles when the published material enters the public domain, since "others must have the right to call the work by its name." (117 USPQ at 400).

Text Copyright John L. Welch 2022.

TTAB Denies Cancellation Petition for Failure to Prove Nonuse or Abandonment

The Board dismissed a petition for cancellation of a registration for the mark NUTRIVITA, in standard character form, for "dietary and nutritional supplements," on the alleged grounds of nonuse and abandonment. The Board observed: "Decisions to forego testimony and rely instead on notices of reliance alone often prove fateful, perhaps especially in nonuse/abandonment and other types of fact-intensive cases. This is such a case." Nutravita limited v. Jenny Do, Cancellation No. 92073305 (March 7, 2022) [not precedential] (Opinion by Judge Michael B. Adlin).

Petitioner relied on Internet printouts, official records, and respondent's discovery responses. Internet printouts are admissible via notice of reliance, but they "have little probative value. They are admissible to show what has been printed, not the truth of what has been printed."

The more specific problem with notice of reliance evidence in nonuse and abandonment cases is that plaintiffs often bear the burden of proving a negative − that the defendant was not using her mark or did not intend to resume its use. It is unlikely that documents admissible only for what they show on their face could establish either of these often crucial elements of nonuse/abandonment claims.

As noted, petitioner bore the burden of proof on the nonuse and abandonment claims because respondent benefits from the Section 7 presumption of validity. The CAFC has observed that "when a party must prove a negative, as in proving abandonment through nonuse, without resort to proper inferences the burdened party could be faced with an insurmountable task.” Cerveceria Centroamericana, 13 USPQ2d at 1310. Here, the record did not support the inferences that petitioner sought.

For example, the fact respondent abandoned a prior registration for NUTRAVITA in a design form was irrelevant. Likewise, that the nutravita.com website appeared to be owned by someone else was also not probative of respondent's use of her mark. The Board noted that petitioner could have explored this issue by way of a discovery deposition but chose not to do so. Or it cold have provided third-party testimony on these points.

The Board pointed to TV Azteca, S.A.B. de C.V v. Martin, 128 USPQ2d 1786 (TTAB 2018) as as illustrative of petitioner's problem. [TTABlogged here]. There, in an "expedited cancellation proceeding" the petitioner relied on certain official records in attempting to show that "Pennant East closed in 2011." The records showed that "what appeared to be a Pennant East liquor license lapsed twice and was not renewed." Not good enough, said the Board.

[e]ven if Pennant East twice lost its liquor license, that alone does not establish that the premises were shuttered, did not move elsewhere, or did not continue operating as an alcohol-free establishment or in violation of the licensing laws. Furthermore, even if the evidence could suggest that Pennant East closed in 2011, it is at best inconclusive as to whether Respondent discontinued use of his mark from March 2015 to March 2018.

The Board concluded that petitioner failed to meet its burden of proof because it did not establish nonuse or an intent not to resume use. The evidence of record simply did not support the inferences that petitioner wanted the Board to draw. 

And so, the Board denied the petition for cancellation. 

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TTABlogger comment: Note that there is no opportunity to take testimony in connection with a petition for expungement under the new rules. Perhaps one should not be to quick to forego a cancellation proceeding (and the opportunity to take depositions) in favor of the purportedly faster expungement route.

Text Copyright John L. Welch 2022.

"MADE FOR YOU LAB-GROWN DIAMONDS" Fails to Function as a Trademark For Diamonds, Says TTAB

The Board upheld a refusal to register the proposed mark MADE FOR YOU LAB-GROWN DIAMONDS, in standard character and design form, for 'diamonds; jewelry" [LAB-GROWN DIAMONDS disclaimed], finding that the phrase fails to function as a trademark. Dictionary definitions, media references, third-party uses, and applicant's own specimen of use convinced the Board that MADE FOR YOU LAB-GROWN DIAMONDS "is a merely informational phrase it would not be perceived as an indicator of source in the context of Applicant's identified goods." In re Renaissance Jewelry New York, Inc., Serial Nos. 88304005 and 88584338 (February 24, 2022) [not precedential] (Opinion by Judge Michael B. Adlin).

"The Trade Mark [sic] Act is not an act to register words but to register trademarks. Before there can be registrability, there must be a trademark (or a service mark) and, unless words have been so used, they cannot qualify for registration." In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227, 229 (CCPA 1960). "Whether the composite phrase MADE FOR YOU LAB GROWN DIAMONDS falls within this definition and functions as a mark depends on whether the relevant public, i.e., purchasers or potential purchasers of Applicant’s diamonds and jewelry, would perceive the phrase as identifying the source or origin of Applicant’s goods." Applicant's "mark" failed that test.

 

Applicant’s proposed standard character mark is a merely informational combination of two widely used phrases , and Applicant’s proposed design mark merely adds a common geometric shape as a background carrier . Applicant’s competitors and other third parties should be able to freely use MADE FOR YOU and LAB GROWN DIAMONDS, either together or separately.

In applicant's specimen of use, the term THE BRILLIANT JEWERLY SHOP is displayed in a stylized manner in the upper right corner, while MADE FOR YOU LAB-GROWN DIAMONDS design mark appears with no indicia of source indication. "To the contrary, it appears immediately above and summarizes the other descriptive matter appearing below it." Although arguably displayed in the manner of a trademark, applicant’s proposed design mark "is merely part of the informational material appearing on the lower left side of the specimen." In short, "applicant’s proposed mark merely informs consumers that Applicant’s goods are lab created and custom made."

 

Applicant pointed to several third-party registrations for mark that include the phrase "MADE FOR YOU," but the marks and goods were distinguishable and, in any event, each case must be decided on its own record. 

And so the Board affirmed the refusal under Section 1, 2, and 45 of the Lanham Act. The Board declined to reach the issue of genericness.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.