TTABlog Test: Is "NOJOKE" for E-Cigarette Products Confusable with "JOKER" for Cigarette Paper?

Republic Technologies opposed an application to register the mark NOJOKE for "Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges; Electronic cigarettes and oral vaporizers for smokers," claiming a likelihood of confusion with the two registered marks shown below, for "cigarette paper." Opposer argued that the shared element JOKE in all the marks makes them similar in appearance and sound, and is central to their meanings and commercial impressions. It contended that the goods are related because they all fall under the category of "tobacco products." How do you think this came out? Republic Technologies (NA), LLC v. Vapewear, Inc., Opposition No. 91253787 (April 26, 2022) [not precedential] (Opinion by Judge Angela Lykos).

The Goods: The Board found that the involved goods are related because they are sold by the same retailers. In addition, 18 third-party registrations covering both types of goods demonstrated that the involved goods are of a type that may emanate from a single source under one mark. Moreover, the channels of trade overlap - convenience stores and gas stations - and are sold to the same classes of consumers who are likely to exercise only ordinary care in their purchases.

Strength of Opposer's Marks: The Board noted that, as with all tobacco products, federal law limits the advertising of cigarette papers. With that in mind, the Board considered opposer's evidence of use of the JOKER marks since 1975, the many retail outlets for its cigarette papers, trade show promotions, and point-of-sale materials. The Board, however, was unable to find that the JOKER marks "fall on the high end of the spectrum of fame or strength." There was no evidence regarding opposer's sales and advertising expenditures in the U.S., and to the Board concluded that the marks fall "on the lower end of the spectrum, and have "relatively modest" strength.  

The Board also found that the JOKER marks are inherently distinctive, and it accorded them the "normal scope of protection" of distinctive marks.

The Marks: Opposer contended that the marks "approach the theme of a joke from different directions - JOKER in the affirmative and NO JOKE in the negative - but both call to mind the same concept," rendering the marks "associative terms." Thus, consumers will perceive applicant's mark as a product line extension from opposer.

The Board was unimpressed. "Opposer's arguments amount to an improper dissection of the marks." Comparing the marks as a whole, the Board found them dissimilar. The marks have "markedly different connotations and commercial impressions."

NOJOKE is a recognized expression that emphasizes the truthfulness of something potentially unbelievable, and communicates an air of seriousness. By contrast, Opposer’s stylized and composite JOKER marks convey the impression of a court jester, a comic foolish clown. Thus, despite their common associative term, the meanings of these marks and the impressions they give share no similarity.

The Board found that "[t]he whimsical distinct design features of Opposer's composite mark are dominant and further avoid a likelihood of confusion." The Board therefore ruled that that the first DuPont factor weighed against a finding of likelihood of confusion.

Conclusion: Deeming the first DuPont factor was dispositive, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: WYHO?

Text Copyright John L. Welch 2022.

Despite Strength of Kate Spade Marks, TTAB Dismisses Opposition to "WOLV & Spade Logo" for Watches

The Board dismissed Kate Spade LLC's opposition to registration of the mark WOLV & Design (shown below left) for watches, finding the mark to be too dissimilar to the KATE SPADE word mark and the "spade logo" mark (below right) to support opposer's Section 2(d) likelihood-of-confusion and its Section 43(c) dilution-by-blurring claims. Despite identical goods, presumably identical channels of trade and classes of consumers, and the high level of strength of opposer's marks, the Board deemed the first DuPont factor to be dispositive. Kate Spade LLC v. Wolv, Inc., Opposition No. 91241442 (April 27, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman).

Kate Spade stumbled out of the gate by failing to get its dozens of pleaded registrations into evidence. The Board explained the several avenues by which an opposer may proffer its registrations, including by attaching status-and-title copies or current TSDR information to the original pleading or to a notice of reliance, or by appropriate identification and introduction during the taking of testimony. Kate Spade did not take advantage of any of those methods, and it therefore had to rely on its pleaded common law rights in the KATE SPADE and "spade design" marks.

Likelihood of Confusion: Applicant Wolv, Inc. did not submit testimony or evidence, nor did it file a brief. Kate Spade submitted a pile of evidence regarding use of its marks. The Board found those marks to be arbitrary and inherently strong, and commercially "very strong . . . along the spectrum of from very weak to very strong." Therefore, the marks were entitled to a broad scope of protection.

Considering the marks in their entireties, the Board found them to be more dissimilar than similar. It not surprisingly deemed the word WOLV to be the dominant element of applicant's mark.

We would run afoul of the principle that we compare the marks in their entireties were we to ignore the word “Wolv.” Even though the design elements of both marks are spade designs, the visual distinctions between the designs along with Applicant’s addition of the word “Wolv” create visually dissimilar marks that engender different commercial impressions.

The Board concluded that the marks are so dissimilar in their entireties that confusion is not likely, and so it dismissed Kate Spade's Section 2(d) claim.

Dilution-By-Blurring: With respect to the dilution-by-blurring claim, the Board found the mark KATE SPADE to be famous, but "the renown of the spade logo is not so clear," because there was no basis in the evidence for disassociating the spade design from the KATE SPADE word mark. "We find Opposer failed to establish that its use of the spade design is as a symbol the public primarily associates as Opposer's famous mark such that it eclipses the common use of the spade design. *** In other words, Opposer has not proven its spade design is a "household symbol" such that when the public encounters Opposer's spade design in almost any context, the public associates the spade design, at least initially, with Opposer."

In any case, as to the involved marks, the same reasoning the Board used in the Section 2(d) context applied to the Section 43(c) analysis, and the Board concluded that "the dominance of the word 'WOLV' in Applicant's mark and the ornate spade design featuring a highly stylized letter 'W' are so different than Opposer's KATE SPADE mark that consumers viewing Applicant's mark will not call to mind or conjure up Opposer's KATE SPADE mark."

Bona Fide Intent: Kate Spade argued that Applicant Wolv lacked "firm and demonstrable plans to use the the SPADE Wolv Mark at the time it filed the application" four years earlier. However, the Board found that applicant's testimony "tells another story." Applicant's principal decided to start a watch company because he is a "watch enthusiast." He took various steps to bring his company to fruition, having a design make sketches for various watch parts, using the mark at issue as a "thumbnail" on social media, making a sample box, straps, business cards, and the like, and preparing a basic breakdown of the money he would need. He also created a prototype specimen and various renderings of watches and parts. 

Applicant created these documents between November 2016 and November 2017. He ceased his preparations when Kate Spade filed its opposition, "a sufficient reason to overcome any inference that Applicant did not have a bona fide intent to use the mark at the time it filed its application."
 

When we consider Hsu’s testimony and all the documents introduced in his discovery deposition in its entirety, we find Applicant had a bona fide intent to use the mark in commerce as of the filing date of the application. We assume arguendo that Applicant’s business plan standing alone lacks sufficient detail to demonstrate a bona fide intent to introduce watches into the market. The business plan, however, is not the only document going to the question of Applicant’s bona fide intent. 

And so, the Board dismissed the lack-of-bona-fide intent claim.

Read comments and post your comment here.

TTABlogger comment: As I've said before, you can learn a lot from a Judge Bergsman opinion. This case reminds me of the recent defeat suffered by Monster Energy [TTABlogged here].

Text Copyright John L. Welch 2022.

TTABlog Test: Are Flavored Ices and Cupcakes Related for Section 2(d) Purposes? Are These Marks Confusingly Similar?

The USPTO refused to register the proposed mark THE COOL CAT for "Flavored ices; Frozen confections; Shaved ice confections," finding confusion likely with the registered word-and-design mark shown below, for "cupcakes" [CUPCAKES and NO DAIRY. NO EGGS. NO NUTS disclaimed]. How do you think this came out, keeping in mind that this year the Board has affirmed about 96% of appealed Section (2)(d) refusals? In re NKKK LLC, Serial No. 90100250 (April 25, 2022) [not precedential] (Opinion by Judge Linda A. Kuczma).

Examining Attorney Tarah Hardy Ludlow submitted 21 third-party registrations covering both frozen confections and cupcakes. Evidence of seven websites where both products are offered also supported the refusal. Applicant argued that there was no evidence that the particular type of cupcake offered by registrant - dairy-, egg-, and nut-free - are offered by entities that market frozen confections, but the Board found that to be irrelevant, since the cited registration is not limited to any particular type of cupcake.

The involved goods, the Board found, travel in the same trade channels to the same classes of consumers. Moreover, the goods are subject to "impulse" purchases, and are not necessarily purchased with a great deal of deliberation.

As for the marks, the Board found that the distinctive term "COOL CAT" is the dominant element of the cited mark. COOL CAT is the first element of the mark and is followed by generic or highly descriptive terms. The Board rejected the argument that "NO DAIRY. NO EGGS. NO NUTS." limits the perceived connotation of the cited mark, since the phrase is depicted in noticeably smaller font. Although there is some difference in the overall sound and appearance of the two marks due to the wording "CUPCAKES" and "NO DAIRY. NO EGGS. NO NUTS.", that difference "does not significantly differentiate the meaning of the marks for related food products." The depiction of a cat merely reinforces the consumer's attention to the term "COOL CAT."

Thus, potential customers may very well believe that Applicant’s mark is a version of Registrant’s mark, or that it represents an extension of Registrant’s goods, or vice versa. “Even those purchasers who are fully aware of the specific differences between the marks may well believe, because of the similarities between them, that the two marks are simply variants of one another, used by a single producer to identify and distinguish companion lines of products.”

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2022.

TTAB Dismisses "PAWTY PACK" Opposition Due to Failure to Establish Entitlement to a Statutory Cause of Action (f/k/a "Standing")

In this opposition to registration of the mark PAWTY PACK for "beverages for pets; edible pet treats," Opposer Snowcats LLC alleged and pursued a claim of mere descriptiveness under Section 2(e)(1). It also pleaded its entitlement to a statutory cause of action. Unfortunately for Snowcats, it failed to prove facts to support the allegation of "standing." And so, the Board dismissed the opposition. Snowcats LLC v. Trendsetters Direct, LLC, Opposition No. 91256075 (April 22, 20220 [not precedential] (Opinion by Judge David K. Heasley).

In every inter partes proceeding, the plaintiff must plead and prove its entitlement to a statutory cause of action. This is true even if the defendant doesn't not contest the issue. A party pleading mere descriptiveness may prove "standing" by means of evidence that it is engaged in the manufacture or sale of the same or related goods as those covered by the challenged mark, and thus has the right to use the wording in a merely descriptive manner.

Opposer Snowcats pleaded its entitlement to a cause of action, and alleged that it used the identical mark for pet beverages. "That sort of evidence can prove that the plaintiff, like other competitors, has the right to use the wording in a merely descriptive manner, and may bring a proceeding to prevent its exclusive registration by the applicant."

Allegations of standing are not enough. Snowcast failed to adduce any evidence to support its claim of entitlement to a statutory cause of action. "As the Board has noted before, decisions to forego testimony and rely instead on notices of reliance alone often prove fateful. That proves to be the case here."

Snowcats submitted a single notice of reliance containing printouts from 18 third-party websites showing various uses of "party pack" and "pawty pack," but it failed to provide any testimony authenticating those printouts or linking any of them to Snowcats. An internet printout is admissible only to show what has been printed, not the truth of what has been printed. Snowcats asserted that it was not offering this evidence for the truth of what was printed, but only to show that third parties are using these terms to describe their goods.

The problem was that none of the evidence proved anything about Opposer Snowcats or its business, and nothing established that Snowcats presently or prospectively makes or sells goods that are the same as or related to those of applicant.

Consequently, Opposer, bearing the burden of proof, fails to demonstrate an interest falling within the zone of interests protected by the Trademark Act or a reasonable belief of damage proximately caused by registration of Applicant’s proposed trademark. For these reasons, Opposer has not shown its entitlement to the statutory cause of action it asserts here.

 

Read comments and post your comment here.

TTABlogger comment: Ouch! Can Snowcats file a civil action for review under Section 1071, and add the proofs of its standing?

Text Copyright John L. Welch 2022.

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

So far this calendar year, the Board has affirmed 73 of the first 76 Section 2(d) refusals it has considered on appeal. Here are the latest three appeals for your consideration. [Results in first comment].

In re Versatrans, Inc., Serial No. 88909675 (April 22, 2022) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusals of VERSA AGENCY for "Advertising, marketing and promotion services, namely creating advertising content and promotional materials for others; production of advertising materials" [AGENCY disclaimed], in view of the registered mark VERSAFEED for “Promoting the goods and services of others by means of distributing advertising on the Internet."]

In re Spectrum Image, Inc., Serial No. 88733158 (April 22, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson) [Section 2(d) refusal of IBODY AESTHETICS, in standard characters, for "Cosmetic and plastic surgery; Plastic surgery” [AESTHETICS disclaimed], in view of the registerd mark THE IBODY & Design for, inter alia, "medical aesthetic procedures, including, laser hair removal, laser peels, botulinum toxin treatments, microdermabrasion, liposuction, vein treatments, vein therapy, cellulite treatments, body contouring treatments, injectable filler treatments, facials, and skin care."]

In re Vermont Juvenile Furniture Manufacturing, Inc., Serial No. 88400594 (April 22, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of PAWTY, in standard characters, for an "enclosure made of fabric for house-training pets, specifically designed to cover animal litter boxes, disposable pet pads and artificial or real grass patches," in view of the registered mark LUCKY’S PAWTY & Design for "plastic bags for disposing of pet waste."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

"EVERYBODY VS RACISM" Fails to Function as a Source Indicator for Bags, Clothing, and Public Interest Services, Says TTAB

The Board upheld a refusal to register the proposed mark EVERYBODY VS RACISM for tote bags and various clothing items, and for the services of "promoting public interest and awareness of the need for racial reconciliation and encouraging people to know their neighbor and then affect change in their own sphere of influence," finding that the phrase fails to function as a mark under Sections 1, 2, 3, and 45 of the Trademark Act. The Board ruled that the proposed mark "would be perceived by consumers as a widely used social and political message and therefore merely informational in nature, as opposed to a source indicator of Applicant's goods and services." In re GO & Associates, LLC, Serial No. 88944728 (April 20, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Board considered applicant's specimens of use (one of which is shown above), third-party uses of the phrase on website and social media, in editorials, YouTube videos, and media stories, and in song titles and podcasts. This "anti-racism sentiment is reflected in some of the information provided in connection with [those] items or in the opinion pieces."

Applicant argued that there was no evidence that EVERYBODY VS RACISM is a "widely spread and popularly used informational phrase," and that Examining Attorney Andrea Hack's evidence was "mixed." It asserted that due to its extensive policing efforts, the public never saw the phrase as a common slogan, and to the extent that it did, it no longer does.

The Examining Attorney contended that the phrase is in widespread use as a political or social justice informational message, that "fits well on tshirts and protest signs." "[A]s shown by the evidence of record . . . consumers will gravitate toward the message as an informational battle cry."

The Board agreed with the Examining Attorney that the phrase "is commonly used in an ornamental manner on clothing items, tote bags, and other retail items sold by third-parties to convey an anti-racist sentiment. It has also been used for the same purpose in opinion pieces, music, podcasts and YouTube videos, and by organizations (websites) that support efforts to eradicate racism."

As to the mixed record argument, the Board noted that applicant did not identify any trademark uses by third parties. The entirety of the evidence showed non-trademark use to consistently convey an informational, non-racist message. Indeed, the applicant's manner of use of the phrase reinforces its meaning as an informational statement or message.
 

Applicant’s specimens of use for Classes 18 and 25 consist of photographs of t-shirts and sweatshirts and a tote bag, each displaying Applicant’s proposed mark in large, prominent lettering across the front or center of each item. The placement, size, and dominance of the wording emblazoned on Applicant’s goods are consistent with informational (or ornamental), non-trademark use and more consistent with the conveying of an informational message than with signifying a brand or source indicator.

As to applicant's services, again the Board found that the phrase conveys the information that applicant supports anti-racism efforts, as confirmed by applicant's "mission statement:"
 

Everybody vs. Racism is a movement to Eradicate Racism. In partnership with everybody including communities, organizations, the private and public sector; we want to create, support and collaborate to provide services and programs that eliminate systemic racism for all regardless of their race, creed or color.

Applicant's use of the "TM" symbol adjacent the phrase was of no significance, and as to it policing and search engine optimization efforts, the Board noted that "[a]nalytic results as to the popularity of a particular search term is not proof of consumer perception that EVERYBODY VS RACISM functions as a trademark or service mark," and policing efforts "have little bearing upon the analysis of the understanding by the public of the term sought to be registered."

Finally, applicant asserted that the failure-to-function ground for refusal must be “strictly construed” and should no longer be a complete bar to registration, just as the Office no longer refuses scandalous and immoral marks. The Board responded that "[t]o the extent Applicant is making a constitutional argument, we have no authority to consider it."

As to any suggestion that the frequency of use of the phrase has diminished, the Board found the examining attorney's remarks to be apt:

Just as the sentiment that “thoughts and prayers” should be sent to victims of gun violence are cyclical, with the sentiment being expressed in the wake of mass shootings, the phrase “EVERYBODY VS RACISM” is cyclical. It has, and will continue, to be used in the wake of widely publicized racist incidents. Sadly, it is unlikely that the George Floyd killing will be the last racially inspired killing of a black man in this country. Sadly, there will likely be another incident before too long that will re-ignite the public’s passion and inspire people to again express their desire for a unified attack against racism. Sadly, the need to be able to express that one believes everyone should be against racism will arise again. Those who wish to be able to express that sentiment should be free to do so without paying a licensing fee to someone who sees an opportunity to co-opt a political message by filing for a registration for that message.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I also think everybody should be able to use TRUMP TOO SMALL as an informational message. 

Text Copyright John L. Welch 2022.

TTAB Deems "DIRECT DIVINE LIGHT HEALING" Generic for and Merely Descriptive of Educational Services in the Field of Spiritual Healing

The Board granted a petition for cancellation of a registration for the mark DIRECT DIVINE LIGHT HEALING for educational services in the fields of metaphysics, spiritual healing, the aura and spiritual growth [DIRECT and HEALING disclaimed], finding it to be generic for and merely descriptive of the services. The Board ruled that the each of the constituent words is generic for respondent's services, and further that the meaning of each term is unchanged in the compound mark. Implicit in the genericness holding was a finding that the registered mark is highly descriptive of those services. Divine Light Healing Ministries, Inc. v. Spiritual Arts Institute, Cancellation No. 92074236 (April 19, 2022) [not precedential] (Opinion by Judge Mark Lebow).

The Board observed that "any term that the relevant public uses or understands to refer to the genus of goods, or a key aspect of a sub-group of the genus, is generic." As usual, it found the relevant genus to be "commensurate with the identification of services in the Registration." The relevant consumers are doctors and the like, as well as consumers (ordinary and professional) who seek training in the identified fields.

Dictionary and website evidence shed some direct light on the meaning of the component terms. Additional Internet evidence included references to "Divine Light," "Divine Light Healing," and "Direct Divine Light Healing" used by the relevant public to identify "said healing technique or modality." Moreover, petitioner provided several examples of Respondent's use of its mark generically.

The Board found that "healing" is "clearly a key aspect" of respondent's services and therefore "generic of them." When combined into "divine light healing," the terms retain their generic significance. The word "direct" also identifies a key aspect of the services because "it implies that the healing is provided directly by or through the healer via the healer's connection with the Divine," and when "direct" is combined with "divine light healing," the terms retain their generic significance.

Excerpts from Respondent’s course materials . . . are most persuasive on this point. For example, Respondent clearly explains therein that "Direct healing is where the healing is done through the hands and the palm chakras in the hands. This is the simplest and safest way to be the channel of healing and can be used in all facets of consciousness: spiritual, physical, mental and emotional . . . ."

In sum, "consumers will perceive the [mark] in its ordinary dictionary sense as educational training in the direct application of Divine Light for healing."

Respondent argued that its use of the "TM" symbol, and use of that symbol by its students, shows the the term is a trademark. The Board was unmoved: "use of the 'TM" symbol . . . cannot by itself convert a term that does not function as a trademark into one that does." Nor does use of initial caps compel a different result. And even if respondent were the first to use the term, the Board is "not limited to determining the status of a term as of the date it was first adopted."

As Judge Rich explained in In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219, (CCPA 1978) (Rich, J., concurring), a term that immediately and unequivocally describes the purpose and function of Respondent’s services is a name for those services, for “[t]hat is what names do. They tell you what the thing is.” Respondent uses the terms DIRECT DIVINE LIGHT and DIRECT DIVINE LIGHT HEALING as the names of things, not as source-identifiers.

Turning to the mere descriptiveness issue, the Board pointed out that "[i]mplicit in [the] holding that DIRECT DIVINE LIGHT HEALING is generic . . . is [a] finding that it is also not only merely descriptive of Respondent's identified services, but highly descriptive of them under Section 2(e)(1).

And so, the Board granted the petition for cancellation on two grounds.

I reproduce Professor McCarthy's comment here:  

The Board says the rule to determine if a designation is a generic name is: “[A] term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole…. Thus, any term that the relevant public uses or understands to refer to the genus of goods, or a key aspect of a sub-group of the genus, is generic.” Am I the only one that is annoyed by the CAFC and the T.T.A.B. constantly using the “refer to” test? What does “refer to” mean? I think “refers to” is a misleading and incorrect way of asking the crucial question because it smears the critical line between a generic name and a descriptive word. “Refers to” is such a vague phrase that it could easily include both product names and product descriptions. The Lanham Act in three places requires that the primary significance of the word be as a “generic name for the goods or services.”

Read comments and post your comment here.

TTABlogger comment: How did this get past the examining attorney in the first place, at least on the mere descriptiveness issue?

Text Copyright John L. Welch 2022.

TTABlog Test: Are Distilled Spirits and Lottery Services Related for Section 2(d) Purposes?

The Texas State Lottery Commission opposed an application to register the mark TEXAS TWO STEP for "distilled spirits," claiming a likelihood of confusion with, and likelihood of dilution by tarnishment of, its registered marks TEXAS TWO STEP in standard character form and TEXAS TWO STEP TEXAS LOTTERY and design. The Board found the proposed mark to be identical to registrant's word mark and highly similar to its word-plus-design mark. The Lottery contended that lottery tickets and distilled spirits are both sold in grocery stores, convenience stores, and gas stations, leading to confused customers. Moreover, it claimed that its marks are famous. Applicant Ansari did not submit any testimony or evidence. How do you think this came out? Texas Lottery Commission v. Ali Ansari, Opposition No. 91264107 (April 18, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson).

Unfortunately for the Lottery, its proofs amounted to a no-step rather than a two-step. It submitted only a handful of documents and no testimony. It did not provide any evidence for its claim that distilled spirits are sold where lottery services are offered, nor did it provide any third party evidence showing that spirits and lottery services are offered at the same retail location. Nor did the Lottery submit any third-party registrations covering both.

Without supporting evidence, we cannot find on this record, and are loath to presume, that any of the retailers listed in the search results of the Texas Lottery webpage printout offer "distilled spirits." "Attorney argument is no substitute for evidence."

The Board concluded that the second and third DuPont factors weighed against a finding of likely confusion, and so it dismissed the Section 2(d) claim, noting that on a more fully developed record, the result might have been different,

As to the dilution claim, the Lottery failed to provide any supporting evidence.

[T]here is no evidence in the record showing that Applicant has begun to use his mark. On this record, we decline to presume that Opposer has made a sufficient showing of any of the factors necessary for it to prevail on its dilution claim, for “[a]ttorney argument is no substitute for evidence.” 

And so, the Board dismissed the dilution claim.

Read comments and post your comment here.

TTABlogger comment: What a fiasco! I guess one could say, Don't Mess with Ali Ansari.

Text Copyright John L. Welch 2022.

Third-Party Use Evidence Falls Short: TTAB Affirms Section 2(d) Refusal of PROOF for "Restaurant services namely Pizza"

The Board affirmed a Section 2(d) refusal of the proposed mark PROOF & Design (shown below) for "Restaurant services namely Pizza," finding confusion likeliy with the registered mark PROOF, in standard characters, for “Restaurant and bar services and catering services.” The applicant feebly argued that its restaurant serves only pizza and not alcohol, whereas registrant “is a bar restaurant serving alcoholic beverages at a sit down restaurant." Applicant spiced thing up, however, with its contention that PROOF is a weak mark for restaurant services, both conceptually and commercially. In re Princeton Pi Holdings, LLC, Serial No. 88962401 (April 15, 2022) [not precedential] (Opinion by Judge Martha B. Allard).

Applicant's comparison of actual services went nowhere: "Applicant’s arguments based on 'real world' conditions, such as whether alcohol is served or catering services are rendered, has no impact on our decision ... we must decide this case relying on the identifications of the services in the involved application and the cited registration." Because the services are legally identical, the Board must presume that they travel in the same trade channels to the same classes of consumers.

Turning to the strength of the cited mark, beginning with conceptual strength the applicant submitted a dictionary definition of the word "proof" ("of standard strength or quality or alcoholic content”), as well as four third-party registrations for marks incorporating the term PROOF [PROOF A BAR + INCUBATOR, NAVY PROOF FOOD & SPIRITS, PROOFREAD and THE PROOF OF GOOD COFFEE] in arguing that PROOF is a weak mark. The Board agreed with Examining Attorney John Mitchell that the cited marks "are different in sight, sound, and meaning and make a different commercial impression from the cited mark," and are therefore not probative. However, based on the dictionary definition of "proof," the Board found that "PROOF is slightly suggestive of restaurant and bar services because it evokes the alcohol content of alcoholic drinks."

As to commercial strength, applicant argued that the registered mark exists in a crowded field and is therefore entitled to a limited scope of protection. The Board found nine of thethird-party uses (six for PROOF, one for PROOF PIZZA, one for 4C 80 PROOF, and one for PROOF & PROVISION) to be probative. Applicant did not provide evidence of the extent and impact of these uses, but the Board noted that this third-party evidence may be relevant on the issue of commercial strength under Jack Wolfskin and Juice Generation. However, the Board was not impressed by the quantity of the evidence: "we believe that the record of third-party use in this case reflects a more modest amount of evidence than that found convincing in Jack Wolfskin and Juice Generation wherein ‘a considerable number of third parties’ use [of] similar marks was shown.'"

The Board concluded that the registered mark is "slightly conceptually weak and somewhat commercially weak due to evidence of third-party use with restaurant and/or bar services. On balance, this weighs against finding likelihood of confusion."

Comparing the marks, applicant contended that its geometric design causes the mark PROOF to connote mathematical concepts of “proof” used in geometry. In contrast, registrant’s mark refers to the strength of an alcoholic spirit. The Examining Attorney argued that the marks engender the same commercial impression, including "the idea of using evidence and logic to establish the validity of a statement or principle."

The Board concluded that because the shared literal element is the same and the services are legally identical, Applicant’s and registrant’s marks could have the same connotation. Moreover, "because registrant’s mark is registered in standard character format, it may appear in any lettering style, even one such as Applicant’s. Further, we find that the shared literal element and the fact that it is pronounced the same in Applicant’s and registrant’s marks is entitled to great weight." In sum, the Board found the marks to be "highly similar." 

Despite the finding that the cited mark is slightly suggestive and somewhat commercially weak, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: To me, applicant's mark looks like ROOF next to an ice cream cone.

Text Copyright John L. Welch 2022.

TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

Last week, the TTAB ruled on the appeals from the three Section 2(e)(1) mere descriptiveness refusals, summarized below. Let's see how you do with them. Results will be found in the first comment.

Gulf Breeze Treatment Center, LLC, Serial No. 88934988 (April 15, 2022) [not precedential] (Opinion by Judge David K. Heasley). [Mere descriptiveness refusal of TELERECOVERY (in standard characters) for addiction treatment services, namely, drug and alcohol addiction counseling." Applicant argued that the Examining Attorney improperly assumed that it offers its addiction counseling services by telephone, when “[i]n fact, the services are provided via online communication."]

In re Gulf Breeze Treatment Center, LLC, Serial No. 88900074 (April 13, 2022) [not precedential] (Opinion by Judge David K. Heasley). [Mere descriptiveness refusal of TRAUMACARE (in standard characters) for "addiction treatment services; addiction treatment services, namely, alcohol addiction and chemical dependency treatment services; addiction treatment services, namely, substance abuse treatment services."Applicant asserted that "[t]he services to be provided under the mark will be limited to addiction treatment services, not to physical or psychological injuries. Therefore, the use of the term ‘trauma’ in the mark will only be suggestive."]

In re Love And Pieces LLC, Serial No. 90163005 (April 11, 2022) [not precedential] (Opinion by Cynthia C. Lynch). [Mere descriptiveness refusal of BOAT ERASERS in standard characters for a “Cleaning Sponge to remove scuffs and marks.” Applicant argued that "[l]ongstanding Board policy" provides that the term ERASER cannot be deemed descriptive.]

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

Text Copyright John L. Welch 2022.

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

A TTAB judge once told me that you can predict the outcome of a Section 2(d) case 95% of the time by just looking at the goods/services and the marks. Let's see how you do with the three cases summarized below. Answer(s) in the first comment.

Oakley, Inc. v. Eric. R. Washington et al., Oppositions No. 91239464 (April 11, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) opposition to registration of  OAKLIEN & Design for “jewelry pins for use on hats” and for “hats; shirts; jogging pants; men’s and women’s jackets, coats, trousers, vests; sweat shirts,” in view of the registered mark OAKLEY for sunglasses, clothing, and watches.]

 

Sony Pictures Television Inc. v. Damien C. Noorbakhsh and Samir Rajic, Opposition No. 91253443 (April 12, 2022) [not precedential] (Opinion by Judge George C. Pologeorgis).[Section 2(d) opposition to registration of COBRA KAI for "T-Shirts" [KAI disclaimed] in view of the registered marks COBRA KAI JIU JITSU for "Providing general fitness and mixed martial arts facilities that require memberships and are focused in the fields of general fitness, exercise, and mixed martial arts," and the word-plus-design mark shown below, for "Martial arts uniforms; Martial arts uniforms, namely, gis; Clothing for wear in wrestling games; Fight shorts for mixed martial arts or grappling; Mixed martial arts suits." [KAI and JIU JITSU disclaimed].]

 

Industria de Diseno Textil, S.A. v. Benzara Inc., Opposition No. 91242880 (April 13, 2022) [not precedential] (Opinion by Judge George C. Pologeorgis). [Section 2(d) opposition to registration of the mark BENZARA for “furniture” (Class 2), “Leather accessory boxes for jewelry; Jewelry cases not of precious metal; Wooden jewelry boxes; Statues primarily of precious metal and also including glass," (Class 14) and "Desktop statuary made of ceramics; Serving Trays; Candle Holders; Cake Stands; Napkin holders; Serving bowls; Toilet tissue holders” (Class 21), in view of the registered marks ZARA for furniture, jewelry, statures and figurines and ZARA HOME for jewelry and statuary [HOME disclaimed].]

 

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2022.

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

The Board has affirmed 67 of the first 70 Section 2(d) refusals it has considered on appeal this year. Here are the latest three appeals for your consideration. [Results in first comment].

In re Avenida Partners Development Group, LLC, Serial Nos. 88833914 and 88833933 (April 1, 2022) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusals of 5 TO THRIVE and FIVE TO THRIVE for a "continuing care enrichment wellness program that offers a host of invigorating and stimulating activities that support five key areas of healthy aging," in view of the registered mark FIVE TO THRIVE for "for “providing information in the field of healthcare and wellness via the Internet."]

In re Avenida Partners Development Group, LLC, Serial Nos 88834060 and 88833991 (April 11, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson) [Section 2(d) refusals of AVENIDA PARTNERS, in standard character and design form, for "Real estate development services including the field of active, independent senior living communities," in view of the registered mark AVENUE PARTNERS for "Real estate development; Real estate development and construction of commercial, residential and hotel property; Real estate site selection."]

In re Malaga Imports, LLC, Serial No. 90041414 (April 12, 2022) [not precedential] (Opinion by Judge Christopher Larkin). [Section 2(d) refusal of PROBASE NUTRITION for "Collagen peptides for use as a nutritional supplement" [NUTRITION disclaimed], in view of the registered mark BASE NUTRITION for numerous goods in International Class 5, including “Dietary and nutritional supplements" [NUTRITION disclaimed]].

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TTABlog comment: How did you do?  

Text Copyright John L. Welch 2022.

MEET THE BLOGGERS XVII Set for Monday, May 2nd, 8-10 PM at The Eleanor

Widely recognized as the best non-INTA event at the INTA annual meeting, MEET THE BLOGGERS returns for its 17th edition on Monday night, May 2nd, from 8-10 PM at The Eleanor (website here), located at 100 Florida Avenue NE in Washington, DC (across from the NoMa-Gallaudet Metro Station). Beer, wine, and other beverages, and light food will be provided. All thanks to our sponsor, Wolf, Greenfield & Sacks, P.C. Stop by and meet some of the world's best trademark attorneys, and also say hello to Marty Schwimmer and me.

We plan to occupy the outdoor patio at The Eleanor, but braver souls may want to venture inside for bowling and other frivolities. I plan to stay outside, and masked. See you there!

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Text Copyright John L. Welch 2022.

"DESIGNED, SOURCED AND BUILT IN THE USA" Fails to Function as a Trademark for Industrial Chemicals, Says TTAB

In the latest in a stream of failure-to-function affirmances, the Board upheld a refusal to register the proposed mark DESIGNED, SOURCED AND BUILT IN THE USA for industrial chemicals, hand-sanitizing preparations, face mask, and sneeze guards, finding the phrase to be merely informational. Applicant NuGeneration asserted the Examining Attorney Andrew Crowder-Schaefer did not provide sufficient evidence of "uses of the exact wording" for the same or similar goods, and further argued that the phrase is incongruous when applied to chemicals and sanitizers. The Board was unimpressed. In re NuGeneration Technologies, LLC, Serial Nos. 88852858 and 88866690 (April 7, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The evidence showed use of "Designed in America," "Sourced in America," and "Built in America" separately for hand sanitizers, masks, and germ/face shields. It also included use of the entire phrase "Designed, Sourced and Built in the USA" [with and without the Oxford comma] for goods unrelated to the identified goods. [see example above]. NuGeneration charged that the Examining Attorney had mutilated its mark, and that the evidence "does not demonstrate that Appellant's mark is used in everyday parlance' or that it is 'a familiar everyday expression or slogan,' and fails to show the phrase is 'widely used in the marketplace' in relation to similar goods."

The Board, however, found that "the website evidence of the separate uses of the phrases "designed in the USA," "sourced in the USA," and "built in the USA" show how consumers are exposed to the informational terms that compose Applicant’s mark as a whole." As to the lack of evidence of use of the entire phrase "designed, sourced and built in the USA" in connection with the identified goods, "the Examining Attorney’s evidence shows that all types of businesses have adopted this slogan." And as to the argument regarding failure to show "widespread use," the Board observed that "[a]lthough the volume of evidence in this case is not as large as in other Board cases, there is no specific rule as to the exact amount or type of evidence necessary to prove informational use."

Applicant also argues that the “designed, and built in the USA” portion of its mark is incongruous in connection with chemical goods and hand sanitizing goods. The evidence reflects that “designed in the USA” has been used in connection with hand sanitizers to reference their formulation, and chemical compounds could be similarly designed. And while industrial chemicals and sanitizers may not be “built” in the sense of putting solid materials together, they are manufactured by combining their constituent elements, which is conveyed by the term “built.” Therefore, we find no incongruity in the phrase as a whole as to these particular goods.

Finally, the Board rejected NuGeneration's argument that the refusal was "premature" because the subject application is based on intent-to-use under Section 1(b). The Board, however, agreed with the Examining Attorney that a refusal may be issued "if information in the application record or other available evidence is dispositive of the failure of the relevant matter to function as a mark."

Applicant’s proposed mark DESIGNED, SOURCED, AND BUILT IN THE USA, in addition to conveying information to the consumer to support American made goods and businesses, taps into the American consumer’s desire to purchase products of higher quality and better design, that are durable and sourced locally, ensuring safety & quality at every step of the supply chain.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: I expected the Board to say something to the effect that just because one is the first and only user of a proposed mark doesn't automatically make it a source indicator.

Text Copyright John L. Welch 2022.

TTABlog Test: Are These Two "MLG" Marks Confusable for Legal Services?

The USPTO refused to register the mark MLG MACOMB LAW GROUP & Design for "legal services; providing customized legal information, counseling, and advice, and litigation services in the field of tort law" [MACOMB LAW GROUP disclaimed], in view of the registered mark MLG AUTOMOTIVE LAW for "Legal consultation services; Legal consulting services in the field of automotive related legal cases; Legal services." [AUTOMOTIVE LAW disclaimed]. The Board found the services to be overlapping and therefore legally identical. But how about the marks? How do you think this came out? In re J. Spagnuolo & Associates, P.C., Serial No. 88789748 (March 31, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Applicant, relying on third-party registrations, argued that the cited mark is weak in light of the common use of MLG. The Board noted that third-party registration evidence "goes to conceptual weakness while third-party use evidence goes to commercial weakness." Applicant did not submit any evidence of third party use. As to conceptual strength, third-party registrations may show that a portion of a mark is "descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services." [Wait a second. Registrations are not proof of use - ed.].

In any case, applicant's third-party registration evidence was not timely submitted, and even if it had been, the registrations did not cover legal services. Other registrations purporting to show that various "initial" marks for legal services - but not including the initials MLG - co-existed on the Trademark Register had no probative value.

The Board concluded that the cited mark merited the "normal scope of protection to which inherently distinctive marks are entitled."

Turning to the marks, the Board found MLG to be the dominant portion of the cited mark since it is the first term in the mark and since AUTOMOTIVE LAW is at least highly descriptive of the services. In applicant's mark, however, MACOMB LAW GROUP is dominant (even though disclaimed), the wording being "reinforced by the scales of justice design, symbolizing the law."

The MLG element, although somewhat larger, is partially obscured by the design, with the bold letters “M” and “G” being more prominent than the not bold letter “L,” which has been placed in a lower position than “M” and “G,” as it is being used as the central pivot point and base for the scales of justice, making it less likely that consumers will recall the MLG element.

As to appearance, the Board found the marks more dissimilar than similar, and as to sound and connotation, dissimilar.

The letters MLG in Applicant’s mark clearly connote MACOMB LAW GROUP due to the presence in the mark of that wording; customers viewing the mark as a whole will readily understand MLG to be an abbreviation or initialism of MACOMB LAW GROUP. In Registrant’s mark, MLG likely references the initials of an unknown attorney or attorneys, and AUTOMOTIVE LAW identifies the type of law practiced. Therefore, the marks have different connotations.

Finally, as to overall commercial impression, the Board found that applicant’s mark "gives the impression of a law group in a particular geographic location, Macomb county, Michigan. The cited registered mark, on the other hand, gives the impression of a law firm practicing automotive law."

And so the Board, finding the first DuPont factor to be dispositive, reversed the refusal.

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TTABlogger comment: This is only the third reversal this year in 68 Section 2(d) appeals, which amounts to a little more than a 95% affirmance rate. 

Text Copyright John L. Welch 2022.

Precedential No. 12: TTAB Delivers Up a Nothingburger to Applicant Seeking to Strike Testimony and Evidence

In a precedential interlocutory order, the Board delivered up a nothingburger to Applicant Eifit LLC on its motion to strike certain of Opposer Icon Health's testimony and evidence. The Board deferred until trial any ruling as to a number of objections that raised substantive issues. With respect to Eifit's procedural objections, the Board either overruled them or accepted Icon's amended notices of reliance. Icon Health & Fitness, Inc. v. Eifit LLC, 2022 USPQ2d 315 (TTAB 2022) [precedential].

Eifit moved to strike three of Icon Health's seven notices of reliance, as well as all three of Icon's testimony declarations. Eifit's motion was timely as to the alleged procedural deficiencies. As to substantive grounds that Eifit raised, the Board pointed out that it does not read trial evidence or testimony or review other trial evidence prior to final decision. See Genesco Inc. v. Martz, 66 UPSQ2d 1260, 1263 (TTAB 2003).

As to the three challenged notices of reliance, Eifit contended that they failed to indicate the relevance of the proffered evidence with sufficient particularity. See Rule 2.122(g). The Board noted that this is a procedural defect that can be cured by the offering party. See STX Fin., LLC v. Terrazas, 2020 USPQ2d 10988 at *2 (TTAB 2020). The parties resolved their disagreement as to one of the notices of reliance; the Board found that a second notice of reliance complied with the Rule; and as to the third, the Board accepted Icon's appropriately amended notice of reliance.

With regard to the testimony declarations, Eifit raised mostly substantive objections (for example, hearsay, lack of authentication), as to which the Board deferred decision until trial. The Board did rule on one procedural objection: Eifit claimed that Icon improperly submitted its own interrogatory answers as an exhibit to one of the declarations. The Board overruled that objection, pointing to Rule 2.120(k)(6) and observing that a party may offer its own interrogatory answers during the examination of a witness, including as an exhibit to a testimony declaration. See W. End Brewing Co. v. S. Australian Brewing Co., 2 USPQ2d 1306, 1308 n.3 (TTAB 1987).

Finally the Board noted that Eifit should renew its substantive objections either in its brief on the case, or in an appendix thereto, or in a separate statement of objections filed with its brief. Otherwise they will be considered waived. See, e.g., Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1632 (TTAB 2007) (objection to testimony waived when not renewed in brief). See also TBMP § 707.04.

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TTABlogger comment: This motion resulted in a six-month delay in the proceeding and some bloggable content, but little else.

Text Copyright John L. Welch 2022.

TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

The TTAB recently ruled on the appeals from the three Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them. Answer will be found in the first comment.

In re ProBody Scandinavia, Serial No. 87771075 (April 1, 2022) [not precedential] (Opinion by Judge Angela Lykos). [Mere descriptiveness refusal of FASHIONSUPPORT for, inter alia, compression garments, and compression socks for medical or therapeutic use. Applicant contended that the proposed mark "is suggestive in relation to the identified goods because the juxtaposition of the two words requires the consumer to engage in multi-step reasoning since 'some degree of thought or imagination is required to understand that Applicant’s goods involve compression bandages or compression socks.'"]

In re Headspace Meditation Limited, Serial No. 79281613 (March 30, 2022) [not precedential] (Opinion by Judge Thomas Shaw). [Mere descriptiveness refusal of SLEEPCAST for "Audio recordings featuring fictional stories to be used for purposes of meditation, relaxation and sleep-induction." Applicant asserted that the proposed mark is not merely descriptive because “[t]he SLEEPCAST mark does not describe the recordings offered under the mark with any degree of particularity,” pointing out that the Examining Attorney’s sleep podcast evidence includes genres such as bedtime stories, meditation, sleep science, relaxing sounds, hypnosis, and Bible stories.]

In re Biogena GmbH & Co., Serial No. 79285012 (March 7, 2022) [not precedential] (Opinion by Marc A. Bergsman). [Mere descriptiveness refusal of 3-SALT ZINC for dietary supplements. Applicant argued that the purchasing public is unaware of the technical meaning of the term "salt," and will perceive "salt" as being "sodium chloride," "even though there is no sodium chloride in the zinc supplements. Therefore, the purchasing public will have to exercise a multiple step reasoning process to decipher the meaning of 3-SALT ZINC."]

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

Text Copyright John L. Welch 2022.

Precedential No. 11: TTAB Dismisses SKËNDERBEU Brandy Opposition for Failure to Prove Priority and Fraud

This consolidated opposition proceeding featured two companies battling over rights to the same marks for Albanian brandy. Applicant ADOL sought registration of the marks SKËNDERBEU and GJERGJ KASTRIOTI SKËNDERBEU (Stylized) for "beverages from wine distillates, namely, brandy and grape brandy." Illyrian Import opposed on the grounds of fraud and likelihood of confusion with the previously used mark GJERGJ KASTRIOTI SKËNDERBEU for liquor, including brandy. The Board dismissed both claims. Illyrian Import, Inc. v. ADOL Sh.p.k., 2022 USPQ2d 292 (TTAB 2022) [precedential] (Opinion by Judge Marc A. Bergsman).

Priority: Applicant ADOL proved that it first used the subject marks in the United States in April 2004. Illyrian Import claimed to be the exclusive authorized distributor and brand agent of a company ("GKS") that continuously sold GJERGJ KASTRIOTI SKËNDERBEU and SKËNDERBEU brandy in the United States since 2002. Illyrian began distributing the products in 2016 and established a first use date of July 31, 2016  .

The Board, however, ruled that Illyrian cannot rely on the GKS's use of the marks to prove priority. See Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1033-34 (TTAB 2017). In Moreno, the Board held that, although exclusive licensee Julie Moreno could establish entitlement to a statutory cause of action, she could not prove priority based on use of the mark at issue by her licensor because that would "improperly recognize trademark ownership rights in a licensee." See also Chem. N.Y. Corp. v. Conmar Form Sys., Inc., 1 USPQ2d 1139, 1142 (TTAB 1986).

As in Moreno, the written agreement between Illyrian and GKS did not give Illyrian any ownership interest in the marks, but only a license permitting it to use the marks as the distributor of the brandy. The Board also pointed out that "as between a manufacturer and distributor, the manufacturer is presumed to own a trademark applied to the goods." Fuji Med. Instruments Mfg. Co. v. Am. Crocodile Int’l Grp., Inc., 2021 USPQ2d 831, at *18 (TTAB 2021).

Illyrian argued that its agreement with GKS gave it the power and authority to assert the trademark rights of GKS. The Board, however, ruled that this authorization provided only an additional basis for Illyrian to establish its entitlement to file an opposition. However, Moreno forecloses the argument that Illyrian may rely on this provision to prove priority.

Opposer argues, in essence, that as the distributor/licensee, it is entitled to rely on its supplier/licensor’s use to prove priority (i.e., that the licensor’s use inures to the benefit of the licensee) but that would be akin to claiming a transfer of ownership and there has been no such transfer between Opposer and GKS. GKS and Opposer cannot contract around the legal principle that a licensor’s use does not inure to the benefit of the licensee.

Opposer Illyrian was thus unable to prove priority, and so the Board dismissed its Section 2(d) claim.

Fraud: Illyrian alleged that ADOL committed fraud by falsely claiming ownership of the subject marks. Although the claims were not pled with the requisite particularity, ADOL did not move to dismiss the claims nor seek a more definite statement. Instead, it argued in its brief that Illyrian "failed to plead any intent to deceive on the part of Applicant, an element required to be pled with specificity."  The Board concluded that since ADOL "was on notice that a fraud claim was asserted, did not request more particularity, defended against it, and argued, in its brief, that Opposer failed to prove Applicant knowingly made a false misrepresentation of fact," the fraud claim was tried by consent, and so the Board construed the pleadings to be appropriately amended.

The Board understood Illyrian's fraud claim to be that ADOL, when it filed the subject applications on August 9, 2016, knew of GKS's ownership and registration of the GJERGJ KASTRIOTI SKËNDERBEU mark in design form (cancelled in 2013) and knew that GKS had the right to use the subject marks. Thus, according to Illyrian, ADOL knew that GKS had the superior right.

The Board set forth once again the elements of a fraud claim:

Fraud in procuring or maintaining a trademark registration occurs when an applicant for registration or a registrant in a declaration of use or a renewal application knowingly makes specific false, material representations of fact with the intent of obtaining or maintaining a registration to which it is otherwise not entitled. See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009).

A party claiming fraud faces a heavy burden of proof: "[T]he very nature of the charge of fraud requires that it be proven ‘to the hilt’ with clear and convincing evidence. There is no room for speculation, inference or surmise and, obviously, any doubt must be resolved against the charging party.' In re Bose Corp., 91 USPQ2d at 1939 (quoting Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981))."

The Board concluded that Illyrian had failed to prove by clear and convincing evidence that ADOL knew that GKS had superior right in the subject marks when ADOL filed and prosecuted its applications. ADOL owns a U.S. registration for GJERGJ KASTRIOTI SKËNDERBEU in standard character form, which it secured without objection from GKS. In addition, the Albanian state regime authorized both ADOL and GKS to produce and market brandy using the mark or sign "Gjergj Kastrioti Skenderbeu." Thus ADOL could reasonably believe that it had the exclusive right to use the marks in the United States.

Even assuming that the relevant statements were false, the record evidence did not establish that ADOL believed or knew they were false. Therefore, the Board could not find that ADOL intended to deceive the USPTO.

[T]he legal right to use the SKËNDERBEU marks emanating from Applicant’s prior U.S. registration, as well as from the rights granted by the Albanian government, is both complex and confusing, potentially leaving Mr. Hatellari with an unclear understanding of his company’s trademark rights.

Accordingly, the Board dismissed Illyrian's fraud claim.

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TTABlogger comment: Judge Bergsman deserves a snifter of cognac after sorting out the facts in this one.

Text Copyright John L. Welch 2022.

Precedential No. 9: TTAB Overturns RAINCOAST DIP Section 2(d) Refusal in Light of Coexistence Agreement Pooh-poohed by USPTO

Finding that the USPTO failed to give sufficient probative weight to a consent and coexistence agreement between the applicant and the cited registrant, the Board reversed a Section 2(d) refusal of the mark RAINCOAST DIP for "snack food dips" [DIP disclaimed], finding confusion unlikely with the registered mark RAINCOAST TRADING for seafood products [TRADING disclaimed]. The Board observed that the DuPont decision and its progeny have guided it to "consistently show great deference to consent agreements that detail the arrangements undertaken to avoid confusion." In re Dare Foods Inc., 2022 USPQ2d 291 (TTAB 2022) [precedential] (Opinion by Judge Peter W. Cataldo).

Based on website evidence, the Board found that the involved goods are related because "it is not uncommon for snack food dips as well as seafood and seafood snacks to emanate from the same source" under the same mark. This same evidence showed that the involved goods are offered in common channels of trade to overlapping customers. And the Board found the marks to be more similar than dissimilar in appearance, sound, and "particularly connotation and commercial impression."

Turning to the 10th DuPont factor, which concerns the market interface between applicant and registrant, the Board reviewed a 2013 agreement between the parties' predecessors [a copy of which is appended to the opinion]. In weighing the value of a consent agreement, the Board's assessment includes the following:

1. Whether the consent shows an agreement between both parties; 
2. Whether the agreement includes a clear indication that the goods or services travel in separate trade channels; 
3. Whether the parties agree to restrict their fields of use; 
4. Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and 
5. Whether the marks have been used for a period of time without evidence of actual confusion.

In DuPont, the "seminal case on consent agreements, the CCPA cautioned that while 'a naked "consent" may carry little weight,' 'substantial' weight should be accorded to 'more detailed agreements.'" The details are what "lend substance and probative value to a consent agreement." The CCPA further observed:

[W]hen those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.

Here, applicant and registrant entered into a detailed coexistence agreement to use and register. The basis for the agreement as to lack of confusion was (not surprisingly) the differences between the marks and the goods. The parties stated that they were unaware of any incidents of actual confusion, and they agreed to cooperate in steps to avoid confusion. Moreover, the same consent agreement was found persuasive by the USPTO in several of applicant's prior applications for RAINCOAST-formative marks.

 

The consent agreement in this appeal constitutes more than a mere naked consent and, therefore, plays a more dominant role in the likelihood of confusion analysis. Four Seasons Hotels, 26 USPQ2d at 1073; DuPont, 177 USPQ at 568. The Agreement does not discuss all of the factors relevant to consent agreements discussed in Four Seasons Hotels and other decisions. However, we are aware of no authority requiring a consent agreement to discuss all of these factors in order to be probative.

And so, the Board reversed the refusal to register.

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TTABlogger comment: It is said that naked consents are probative only in nudist colonies.

Text Copyright John L. Welch 2022.