TTAB Dismisses Opposition to "CREEL" for Legal Services: Acquired Distinctiveness Overcomes Section 2(e)(4) Surname Claim

In a 55-page opinion, the Board dismissed this eight-year-old TTABattle between two sets of Mexican lawyers over registration of the marks CREEL and CREEL, GARCÍA-CUÉLLAR, AIZA Y ENRÍQUEZ for "legal services." Opposer alleged that both marks are deceptive or deceptively misdescriptive under Sections 2(a) and 2(e)(1) of the Lanham Act, falsely suggest a connection under Section 2(a), and comprise the name of a living individual in violation of Section 2(c), and further that the CREEL mark is primarily merely a surname under Section 2(e)(4). The Board found that opposer failed to make out a prima facie case as to its claims, except for the surname claim. Opposer proved that CREEL is primarily merely a surname, but applicant overcame that refusal via proof of acquired distinctiveness. This summary will try to hit the high points. Creel Abogados, S.C. and Carlos Creel Carrera v. Creel, García-Cuéllar, Aiza y Enríquez, S.C., Opposition No. 91217047 (May 27, 2022) [not precedential] (Opinion by Judge Christopher Larkin).

Opposer Carlos Creel is a former partner of the applicant law firm, which was founded in 1936 by his father. Carlos Creel left the firm in 2013, but the firm continued to operate under the name Creel, García-Cuéllar, Aiza, y Enríquez and to use logos that emphasize the word CREEL.

Section 2(a) Deceptiveness and Section 2(e)(1) Deceptive Misdescriptiveness: Opposers argued that the opposed marks falsely indicate that a lawyer named "Creel" is a partner in applicant's firm and consumers will likely believe that the applicant law firm is affiliated with opposers. Alternatively, opposers argued that the term CREEL is misdescriptive as to a character, feature, and quality of applicant's legal services. The Board noted two "fundamental problems" with these arguments: first, the absence of legal authority that a surname may be merely descriptive of goods and services; and second, the absence of evidence to prove that CREEL is merely descriptive of legal service, as well as other elements of these claims.

Opposers' claims regarding public perception of the mark CREEL were based solely on legal argument. "The record simply lacks 'facts and evidence' showing what consumers are likely to think when they see" the opposed mark in connection with legal services. Opposers' "utter failure" to establish a prima facie case doomed both claims.

Carlos Creel

Section 2(a) False Connection and Section 2(c) Lack of Consent: Opposers argued that Carlos Creel is sufficiently well-known that consumers will think that he is in some way associated with applicant. However, there was no evidence regarding his prominence as a lawyer. In short, opposers "completely failed to establish a prima facie case in their case in chief."

Section 2(e)(4) Primarily Merely a Surname: The Board found that, although "Creel" is not a common surname, it is not so rare as to be not likely to be perceived as a surname in connection with legal services. The fact that several of the individuals involved in this saga are named "Creel" supports that finding, as do census listings and news articles about people named "Creel."

Applicant argued that "creel" has non-surname meanings, particularly in the contexts of fishing and weaving, but the Board pointed out that the term must be considered in the context of the goods and services at issue. The Board agreed with opposers that "Applicant did not name its law firm after a fishing rod . . . or a weaving loom." Applicant followed the common practice of keeping the name of a retired or departed partner (Carlos Creel's father) in the law firm name.

Acquired Distinctiveness: The Board exercised its discretion in allowing Applicant to add a claim of acquired distinctiveness at final decision, since the issue was joined in the pleadings and was briefed by the parties. The Board observed that, generally, five years' use alone is not enough to establish acquired distinctiveness of a surname. Applicant's testimony established that it registered the domain name creel.mx in 2009, that the mark CREEL has appeared on its masthead for many years, that it has served many U.S.-based clients and has close associations with a number of top U.S. law firms. It maintains an English language website to market its services to prospective U.S. clients. Moreover, there was no evidence of third-party use of a CREEL-formative mark in connection with legal services in the U.S.

The record shows that the CREEL mark has been used by Applicant substantially exclusively and continuously in commerce with the United States in connection with legal services for at least 10 years, and there is additional evidence discussed above that Applicant has achieved recognition by United States law firms and clients under the mark CREEL.

The Board found that applicant's CREEL mark has acquired distinctiveness for legal services and is entitled to registration on the Principal Register under Section 2(f).

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TTABlogger comment: What about the prominent firms, Wolf and Fish?

Text Copyright John L. Welch 2022.

Precedential No. 14: TTAB Allows Amendment to Applicant's Goods, Dismisses 2(d) Opposition to LUX ENHANCER

The Board has re-designated as precedential its March 22, 2022 decision denying Opposer Conopco's motion to re-open its discovery and trial periods, granting applicant's motion to narrow its identification of goods, and dismissing this Section 2(d) opposition to registration of LUX ENHANCER for certain hair care products in view of Conopco's registered mark LUX (Stylized) for "soap and body cleansing wash." Conopco, Inc. v. Transom Symphony OpCo, LLC DBA Beauty Quest Group, 2022 USPQ2d 504 (TTAB 2022) [precedential].

Motion to Re-open: When Opposer Conopco failed to file its main brief in the case, the Board issued a show cause order under Rule 2.128(a)(3), asking why this failure should not be treated as a concession of the case. Opposer response indicated that it had not lost interest in the case, and so the Board discharged the show cause order.

The Board then turned to opposer's motion to re-open its discovery and testimony periods. The Board observed that one must show "excusable neglect" in order to justify the requested re-opening. Conopco failed to do so. The Board, applying the Supreme Court's Pioneer factors, noted that Conopco waited nineteen months before seeking to re-open the discovery period. It offered no reason why it was not diligent in prosecuting the case. The Board concluded that "the reason for the delay was completely within Conopco’s control and this weighs strongly against finding excusable neglect."

And so the Board denied the motion to re-open.

Likelihood of Confusion: Conopco did manage to get its registration into evidence by way of its original pleading; of course, the opposed application was automatically of record.

The Board unsurprisingly found the involved marks to be "very similar in overall appearance, sound, connotation and commercial impression." As to the goods, the Board found the "non-medicated cosmetic soap" in applicant's original identification of goods to be broad enough to encompass Conopco's "soap and body cleansing wash." These overlapping goods are presumed to travel through the same trade channels to the same classes of consumers.

And so, the Board found confusion likely as to the goods in applicant's original identification of goods.

Applicant's Amended Goods: The Board next turned to applicant's proposed amendment to its identification of goods: namely, "hair care preparations excluding soap and body cleaning wash, and distributed through and used by hair stylists and other hair care professionals." The Board found no evidence that hair care preparations are related to Conopco's soap and body cleansing wash, nor evidence that the normal channels of trade for Conopco's goods would include distribution through hair stylists and other hair care professionals. "Accordingly, although the parties' marks are quite similar, we find that the proposed amendment would obviate a likelihood of confusion between the marks."

However, the Board found that applicant's proposed language “excluding soap and body cleaning wash” fell outside the scope of "hair care preparations." And so it amended applicant’s identification of goods to read: "Hair care preparations distributed through and used by hair stylists and other hair care professionals."

The Board then dismissed the opposition.

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TTABlogger comment: Do you get the feeling that the Board really didn't want opposer to win after its feeble performance? Why was this case deemed precedential? For the lesson that you can't sit on your hands for nineteen months and expect the Board to be sympathetic?

Text Copyright John L. Welch 2022.

TTABlog Test: Are Table Lamps and Lighting Fixtures Related for Section 2(d) Purposes?

The USPTO refused registration of the mark AJ LAMPS for "Lighting apparatus, namely, table lamps" [LAMPS disclaimed], on the ground of likelihood of confusion with the registered mark AJ for "Lighting fixtures; HID lighting fixtures." The Board unsurprisingly found the marks to be similar, but what about the goods? Applicant argued that the Board cannot presume that goods are related solely because they perform the same function of providing artificial light. How do you think the appeal came out? In re Louis Poulsen A/S, Serial No. 88933093 (May 18, 2022) [not precedential] (Opinion by Judge Angela Lykos).

Applicant relied on In re Princeton Tectonics, Inc., 95 USPQ2d 1509 (TTAB 2010) wherein the Board reversed a Section 2(d) refusal based on a determination that “personal headlamps” were unrelated to “lighting fixtures.” [TTABlogged here]. The Board, however, pointed out that the evidence of record here supports a finding of relatedness, whereas the evidence in Princeton Tectonics did not.

Even assuming that registrant's "lighting fixtures" does not encompass "table lamps," Examining Attorney Mariam Aziz Mahmoudi submitted ample evidence from third-party websites to show the goods are related (e.g., Pottery Barn, Ethan Allen, Bed Bath & Beyond).

[I]t is not uncommon for such entities to manufacture and offer for sale table lamps and lighting fixtures (e.g. chandeliers, flush mount and semi-flush mount fixtures) either via their self-branded direct-to-consumer websites or in their own self-branded brick-and-mortar retail stores.

The Board noted that, although some of the marks were house marks, they did not identify a broad range of goods, but were limited to home furnishings and decor. Moreover, the evidence showed that table lamps and lighting fixtures are complementary products: some manufacturers offer sub-brands in co-ordinating designs and styles.

Applicant argued that its goods are designed by a world-renowned architect (Danish designer Arne Jacobsen), noting that "[t]he base of the table lamp was originally intended to accommodate an ashtray but now contributes solely to the design." Consequently they are sold in different channels of trade to different classes of consumers than applicant's mundane lighting fixtures. The Board, however, pointed out that there are no such limitations or restrictions in the application or cited registration, and so these real-world facts were irrelevant.

Likewise, applicant's argument regarding the sophistication and care of its customers was irrelevant, since the identified goods encompass inexpensive products, and the Board must consider purchases by the least sophisticated consumer.

And so, the Board affirmed the refusal.

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TTABlogger comment: How close is this to being a WYHA?

Text Copyright John L. Welch 2022.

USPTO Examination Guide 1-22: "Clarification of Examination Evidentiary Standard for Marks Refused as Generic"

The USPTO has issued Examination Guide 1-22, "Clarification of Examination Evidentiary Standard for Marks Refused as Generic." [pdf here]. This guide "clarifies that the standard for an examining attorney to establish a prima facie case of genericness is the same as for other refusals, namely, there must be sufficient evidence to support a reasonable predicate for the refusal under the applicable legal standard."

Prior USPTO examination guidance suggested a heightened, “clear evidence” standard for an examining attorney to establish a prima facie case of genericness. Any heightened standard would be inconsistent with both (1) the standard for third parties to challenge the registration of marks as generic and (2) the “reasonable predicate” meaning of “prima facie case” in the context of other refusals in examination.

This examination guide clarifies that an examining attorney does not bear a greater burden in supporting a position that an applied-for mark is generic beyond the evidentiary showing required by the relevant legal test.

***

To resolve the confusion, the USPTO will no longer use the terminology “clear evidence” in the TMEP to refer to the examining attorney’s burden to support genericness refusals.

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TTABlogger comment: How can an examination guide, which is not the law, change the standard set down by the CAFC in Cordua and other cases: i.e., clear evidence.?

If you consider genericness as a subset of failure-to-function refusals, then this may be another step in the enlargement of the failure-to-function net.

Text Copyright John L. Welch 2022.

TTAB Affirms Section 2(e)(4) Surname Refusal of VESS for Educational Services

Although the Examining Attorney accepted applicant's claim of acquired distinctiveness under Section 2(f), the applicant maintained its right to contest the Section 2(e)(4) refusal of its mark VESS for various educational services. The Board, however, agreed with Examining Attorney Maureen J. Reed that VESS is primarily merely a surname, and so it affirmed the refusal. In re Education First, Inc., Serial No. 87875275 (May 18, 2022) [not precedential] (Opinion by Judge Christopher Larkin).

The Board spent the first 12 pages of the decision explaining the history of the prosecution of this application. Turning to the substance of the surname, the Board applied the standard Benthin test, focusing first on what has become the most important factor, the "frequency of, and public exposure to" the proposed mark as a surname.

Census bureau data showed that 2300 people have the surname VESS, and online articles, webpages, and pages from Wikipedia and Linkedin referred to persons with the surname VESS. Applicant argued that the online evidence is hearsay, but the Board pointed out that the Federal Rules of Evidence (which define hearsay and govern when it is and is not admissible at a hearing or trial) “do not apply in ex parte appeals." Even if they did, the evidence submitted by the Examining Attorney was not offered for the truth of the matter stated (i.e., so-and-so did such-and-such), but only to show that the public was exposed to use of VESS as a surname.

The Board also rejected the argument that the USPTO must show that persons named VESS are famous or prominent. See In re tapio GmbH [TTABlogged here]. The Board noted that "[i]n the final analysis, however, whether or not 'Vess' is a 'rare' surname is of little importance because ''[e]ven a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname.'"

Applicant claimed that "vess" has other meanings, pointing to the Urban Dictionary. However, because the Urban Dictionary is a collaborative website, the Board requires corroboration of the entries (as it does with Wikipedia). The Board agreed with the Examining Attorney that "vess" does not have an "ordinary language" meaning "of the sort that would be found in a standard dictionary of American English."

Applicant also claimed that "vess" is a fanciful term that it coined as an acronym for the Spanish phrase “Vida Equilibrada Sentido y Sabiduría.” However, there was no evidence that consumers are familiar with the Spanish-language phrase, much less with the claimed abbreviation "V.E.S.S."

Finally, the Examining Attorney furnished evidence that VESS has the structure and pronunciation of a surname, namely, inclusion of the surnames “Hess,” “Ness,” “Bess,” “Gess,” and “Ress” in the LEXISNEXIS Public Records database, all of which surnames have the same four-letter, one-syllable structure as “Vess,” and when pronounced are quite similar in sound to “Vess.”

The Board therefore affirmed the Section 2(e)(4) refusal, but in light of the accepted Section 2(f) claim, the application will now be published for opposition.

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TTABlogger comment: FWIW: I've never met anyone named Vess, Hess, Ness, Bess, Gess, or Ress.

Text Copyright John L. Welch 2022

TTAB Upholds Rejection of Specimens for "IT'S ABOUT THE FABRICS" for Performance Fabrics

The Board affirmed the USPTO's refusal to register the proposed mark IT'S ABOUT THE FABRICS for performance fabrics, finding that on applicant's specimens of use the phrase refers to a component of clothing rather than to fabric offered by itself. Moreover, applicant's website specimens of use were not acceptable because they provided only a means of getting information about applicant’s clothing items and not a means for ordering its fabrics. In re Striker Brands LLC, Serial No. 88519404 (May 19, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

All three of applicant's specimens of use included the phrase IT’S ABOUT THE FABRICS, the TM designation, and an identification of fabrics of specific types. Applicant argued that the specimens constituted point-of-sale displays, and further that the third specimen did not refer to the end products, but rather "merely gives details as to what the fabrics are made of, how the fabrics are made, the benefits of the fabrics, and the differences between the fabrics associated with the Applied-For Mark and other fabrics."A link labeled "Click here to inquire about our fabrics" led to information about applicant's fabrics.

Reviewing the submitted specimens, the Board agreed with Examining Attorney Jared M. Mason that the specimens identify a component of clothing, rather than raw fabric goods.

As used on Applicant’s first, second and third specimens, IT’S ABOUT THE FABRICS creates a direct association between integral features built into the finished clothing items, namely performance fabric and their features. The specimens indicate that Applicant’s clothing uses high performance fabrics in its finished clothing goods that contain, for example, Hydrapore laminate for protection from extreme elements, ultraviolet protection factor for protection from ultraviolet rays, and Permanent Cooling Technology with an automatic cooling function to make the wearer feel cooler.

In sum, "applicant’s use of ITS ABOUT THE FABRICS supports a finding that consumers who encounter the mark will perceive it as referring to an integral component of the finished clothing items, namely specialized performance fabrics built into the clothing, and not a reference to the raw materials--fabric--used for the manufacture of clothing."

As to applicant's (third) website specimen, "[i]nformation that we would consider essential to a purchasing decision is absent." See In re Siny Corp. [TTABlogged here].

There is no information at all regarding the price, or even a range of prices, for fabric goods. There is no information regarding the weight or thickness of the fabric or the dimensions in which a bolt of the fabric would be available. There is no information about the minimum quantities one may order, how one might pay for the products, or how the goods would be shipped. We find that customers would need a great deal more information about the Permanent Cooling Technology fabric before they would be prepared to purchase it.

And so, the Board affirmed a refusal to register.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2022.

TTAB Reverses Section 2(a) False Association Refusal of "WILL AND KATE PHOTOGRAPHY" for Photography Services

The Board reversed a Section 2(a) refusal of the mark WILL AND KATE PHOTOGRAPHY for "photograph services" [PHOTOGRAPHY disclaimed], rejecting the USPTO's position that the mark may falsely suggest a connection with William Windsor, aka Prince William, Duke of Cambridge, and Kate Middleton, aka Catherine, Duchess of Cambridge. The evidence failed to establish that "WILL AND KATE" points uniquely and unmistakably to William Windsor and Kate Middleton. In re Will and Kate Photography LLC, Serial No. 90568132 (May 18, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo).

Section 2(a), in pertinent part, bars registration of "matter which may . . . falsely suggest a connection with persons, living or dead . . . ." Here, the USPTO had to show that:
 

(1) Applicant’s mark is the same as, or a close approximation of, the name or identity previously used by another person(s) or institution, in this case William Windsor and Kate Middleton;
(2) Applicant’s mark would be recognized as such, in that it points uniquely and unmistakably to William Windsor and Kate Middleton;
(3) William Windsor and Kate Middleton are not connected with the services offered by Applicant under the mark; and
(4) the fame or reputation of William Windsor and Kate Middleton is such that, when Applicant’s mark is used with Applicant’s services, a connection with them would be presumed. 

Under the first factor, based on various webpage references to "Will and Kate," the Board found that "Will and Kate" is a name or identity of William Windsor and Kate Middleton." Noting that the word "photography" is generic, the Board then found that applicant's mark is a close approximation of William Windsor's and Kat Middleton's names or identities.

The next question was whether the proposed mark will be recognized by purchasers of applicant's photography services as pointing uniquely and unmistakably to William Windsor and Kate Middleton. Applicant submitted twelve webpages evidencing that other businesses use the name "Will and Kate" because (like applicant) they are owned by people who happen to be named Will and Kate.

The Board pointed out that the evidence does not point to "widespread" use of "Will and Kate" to refer to William Windsor and Kate Middleton. In fact the evidence suggests that the two are commonly referred to as "William and Kate."

 
The Examining Attorney pointed out that applicant displays a crown and the phrase "We Treat You Like Royalty" in promoting its services. Applicant responded that this slogan is commonly used by event service providers. The Board sided with Applicant, concluding that applicant's mark does not point uniquely to William Windsor and Kate Middleton.

Given the number of third-party uses of “Will and Kate” formatives for a variety of goods and services, relevant consumers will perceive the designation as identifying couples or pairs of individuals named “Will and Kate.” Applicant’s use of its mark is similar to the use prevalent among these third parties. Accordingly, the requirement that the name or identity serve to point uniquely to a single entity has not been satisfied.

As to the third element of the Section 2(a) test, applicant conceded that William Windsor and Kate Middleton are not connected with its services. As to the fourth, the Examining Attorney asserted that Kate Middleton is known for her photography, and therefore a connection with applicant would be presumed. The Board, however, found the evidence insufficient to prove that William Windsor and Kate Middleton "will be associated with Applicant's photography services, despite their fame and Kate Middleton's interest in photography."

And so, the Board reversed the refusal.

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TTABlogger comment: Suppose that a sub-set of Americans, namely British-Americans, would make the association. Would that be enough to sustain the refusal?

Text Copyright John L. Welch 2022.

TTAB Affirms "EVERLAST" Refusal on Res Judicata and Section 2(d) Grounds

The Board affirmed the USPTO's refusal to register the mark EVERLAST & Design for "wet well mounted pumping stations; wastewater pumping stations; sewage pumping stations" on two grounds: res judicata, since the Board had already affirmed the same refusal of the same mark for the same goods; and likelihood of confusion (again) with the same registered mark EVERLASTING for "valves for controlling the flow of fluids." In re Smith & Loveless, Inc., Serial No. 88497482 (May 16, 2022) [not precedential] (Opinion by Judge Christopher Larkin).

On June 26, 2019,  the Board affirmed a Section 2(d) refusal to register applicant's mark, finding confusion likely with the EVERLASTING mark. (Opinion here). In that appeal, the Board refused to consider evidence of third-party registrations and website evidence that was not made of record during prosecution of the application. Undaunted, on July 2, 2019, the applicant applied to register the same mark for the same goods (asserting in this appeal that the second application was filed "so that full consideration to Applicant's arguments could be had."

Examining Attorney David A. Brookshire issued the same Section 2(d) refusal, and applicant filed this appeal. The Board remanded the case to the Office for consideration of the applicability of res judicata (a/k/a claim preclusion) based on the prior appeal. The Examining Attorney then added the ground of res judicata to the final refusal.

The primary additions to the record on this second appeal were the third-party evidence of applicant and some additional third-party webpages made of record by the Examining Attorney.

Res judicata: Under the doctrine of res judicata, "a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies on the same cause of action." The Board found last year's SolarWindows decision [TTABlogged here] to be procedurally on point. There, two years after a Board decision upholding a mere descriptiveness refusal of POWERCOATINGS for certain chemicals, the applicant filed a new application for the same mark and goods. The Board affirmed the second refusal on the ground of res judicata, ruling that certain new arguments made by the applicant did not "demonstrate the required material change of circumstances or conditions" that would avoid res judicata, since those arguments could have been made in the first appeal.

Similarly, here the additional evidence was admittedly available when the prior application was pending, and so it did not constitute a material change of circumstances that would justify not applying res judicata. "A losing party does not get a second bite of the apple simply because they can find [] new and arguably more persuasive evidence to present in the second proceeding." Here, the evidence was not even "new."

Likelihood of Confusion: The Board went on to consider the Section 2(d) issue, including the additional evidence, since the CAFC has warned that "particular caution is warranted" when applying claim preclusion. The Board came to the same conclusion as previously.

Applicant relied primarily on two third-party registered marks: Teksan, everlasting company (stylized) and EVERLAST SPAS. However the impact of third-party registrations on the commercial strength of a mark depends on the usage of the mark, and the evidence submitted by applicant did not show use of these marks.

As to the inherent strength of the cited mark EVERLASTING, the "handful" of third-party registrations had little probative value: they were a "far cry from the large quantum of evidence" held to be "significant" in the Jack Wolfskin and Juice Generation cases.

In sum, the third-party evidence was insufficient to show that the cited mark is either commercially or conceptually weak or is entitled to only a narrow scope of protection. As to the remaining DuPont issues, the Board saw no reason to change its findings from those in the first decision.

And so, the Board affirmed the Section 2(d) refusal.

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TTABlogger comment: Let's hope this second affirmance will be everlasting.

Text Copyright John L. Welch 2022.

Twitter Poll Results: "After attending the INTA Annual Meeting in DC, did you test positive for Covid?"

I ran a Twitter poll for the last several days, asking this question: After attending the INTA Annual Meeting in DC, did you test positive for Covid? The results are set out below. I take no position regarding the statistical significance of these results, but look forward to comments regarding same.

If these poll results hold true for the entire 6,800 people in attendance, that would mean more than 1,750 attendees tested positive for Covid. The ramifications of that number of infections are troublesome, to say the least.

A few side notes: Several people have told me that, based on conversations with others, they think the positive rate was even higher: closer to 50%. One of the surprising things I heard is that the opening speaker, at the end of his speech, told his listeners that each of them should hug eight other people in the room. Not a good idea, I think.

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Text Copyright John L. Welch 2022.

TTABlog Test: Is "DIGITAL VISUAL OBSERVER" Merely Descriptive of Drone Managing and Tracking Software?

The USPTO refused registration of the proposed mark DIGITAL VISUAL OBSERVER for software and hardware for managing, controlling, and tracking drones, including collision avoidance and object detection, finding the mark merely descriptive of the goods and services. Examining Attorney Megan Mischler contended that the mark describes features of the goods and services that perform the functions of a person who is a member of a drone crew tasked with visually monitoring a drone in flight. Applicant Skydio argued that because its drones monitor themselves, there is no "observer," and furthermore that the mark is incongruous and/or a double entendre. How do you think this came out? In re Skydio, Inc., Serial No. 88928113 (May 10, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo).

Dictionary definitions and third-party webpages submitted by the Examining Attorney established that a "Visual Observer" is "a member of a drone crew tasked with maintaining visual line of sight with the drone during operation. The VISUAL OBSERVER serves as a second set of eyes, monitoring the drone in flight during operation by the remote pilot in command (PIC)." The Board found that DIGITAL VISUAL OBSERVER describes "an electronic, computer readable and controllable, or DIGITAL, version of an individual tasked with determining a drone’s location and air traffic hazards, or VISUAL OBSERVER. with determining a drone’s location and air traffic hazards, or VISUAL OBSERVER."

Applicant’s computer hardware, software, drones and its services of providing software for observation, detection and collision avoidance perform, inter alia, the functions of a computer readable or DIGITAL version of a human VISUAL OBSERVER. The proposed mark DIGITAL VISUAL OBSERVER merely describes a feature or characteristic of, at least, Applicant’s computer hardware, software, drones and the services of providing use of non-downloadable software, all used for maintaining the position of drones and avoiding collisions and other air traffic hazards.

Applicant Skydio argued that its goods and services use cameras and software that "allow the drone itself to monitor its own surroundings in order to automatically avoid collisions and detect objects." The Board was not impressed. "Applicant acknowledges that its goods and services allow drones to detect objects and avoid collisions. These are some of the functions performed by a human VISUAL OBSERVER."

The Board saw no incongruity in Skydio's proposed mark, nor did it perceive a double entendre: the mark "immediately describes computer hardware and software, either downloadable or available as a service, as well as drones, that feature the ability to monitor a drone in flight to fix its position and avoid collisions and other air traffic hazards."

And so, the Board affirmed the refusal.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.

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

The Board continues to run at an affirmance rate of about 95% for Section 2(d) appeals. Here are three more for your consideration. How do you think they came out? [Results in first comment].

In re Daniel Novela, Serial No. 90134566 (May 10, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson) [Section 2(d) refusal of CASA DE NOVELAS for "eyewear retainers; Eyewear, namely, sunglasses, eyeglasses and ophthalmic frames and cases therefor" [CASA disclaimed], in view of the registered mark NOVELLA for "Ophthalmic lenses for eyeglasses."]

In re Milstead Technologies, LLC, Serial No. 88933287 (May 10, 2022) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of SALEQUICK.COM & Design for "Application service provider (ASP) featuring e-commerce software for businesses for use as a payment gateway that authorizes processing of credit cards, gift cards debit cards or direct payments to merchants," in view of the registered mark QUICKSALE for "providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments."]

In re Flexa Network Inc., Serial No. 90002396 (May 13, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of FLEXA CAPACITY for "Providing electronic processing of collateralized cryptocurrency payments via a secure global computer network; collateralized cryptocurrency exchange services," in view of the registered mark CAPACITY for, inter alia, "electronic payment, namely, electronic processing and transmission of bill payment data" and "exchange services in the nature of execution, clearing, reconciling and settlement of trade and financial transactions via a global network involving . . . securities . . . and/or related financial instruments."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

In Light of Third-Party Use of "CLOVER," TTAB Reverses Two Section 2(d) Refusals of CLOVER CLUB Marks For Restaurant Services, But Affirms Two

In a 47-page opinion discussing many third-party uses of CLOVER and CLOVER-formative marks, the Board affirmed two and reversed two Section 2(d) refusals of Loew's Hotel's applications to register four marks for ""Bar and restaurant services, namely, providing cocktails and small dishes in an outdoor lounge setting attached to a high-end hotel." The Board found confusion likely between the cited mark CLOVER for restaurant and bar services, and Loew's standard character mark CLOVER CLUB and its stylized or composite mark shown first below; but not likely with regard to the marks shown second and third below. [Loew's disclaimed CLUB, EST. 2019, and MADE IN TEXAS in the marks.] In re Loew’s Hotels, Inc., Serial Nos. 88425357, 88433338, 88433342, and 88433348 (May 11, 2022) [not precedential] (Opinion by Judge Christopher Larkin).

The Board found that applicant's services were encompassed within the broad recitation of services in the cited registration. Consequently, the Board presumed that the involved services are offered in the same, normal channels of trade, to the same classes of consumers.

Turning to the sixth DuPont factor, the number and nature of similar marks in use for similar services, Loew's argued that the word "CLOVER" is in common use in connection with restaurants, food and beverages, lounges, pubs, cafes, and other drinking and dining establishments. It provided evidence of 27 such uses, and pointed to Juice Generation as the most closely analogous case. There, the CAFC held that the Board had given inadequate consideration to a similar number of third-party uses of PEACE & LOVE for restaurant services and food items as evidence of the weakness of the opposer's marks.

The Board noted that although Loew's evidence "tells us little" about the extent of exposure and use of the third-party marks, the CAFC held in Juice Generation that such evidence is still "relevant to show that a term 'may have a normally understood and well-recognized descriptive or suggestive meaning leading to the conclusion that that [term] is relatively weak'" and that "'consumers have been educated to distinguish between marks on the basis of minute distinctions.'"

"Evidence of third-party use can be 'powerful on its face' even though 'specifics' as to the extent and impact of use of the third-party marks may not have been proven."

As to the similarity of the third-party marks to the Loew's marks, the Board looked for guidance from the Juice Generation decision. There, all of the third-party marks contained "peace" and "love" followed by a third, product-identifying term, and most of them were three-word phrases. Only a portion of the collection of marks cited by Loew's had that high degree of similarity: three consisted of CLOVER alone, and two of THE CLOVER. Other marks included other words. In total, ten of the marks were identical or most similar to the CLOVER mark, but  the CLOVER-formative marks were still probative. The Board concluded that CLOVER is a weak mark for restaurant services.

With respect to the similarity of the involved marks, the Board compared the marks in their entireties, giving greater weight in that comparison to the word CLOVER in applicant's marks, since that is the dominant portion of the marks. It unsurprisingly found CLOVER CLUB to be quite similar to the cited mark CLOVER. As to the second mark, the Board found that neither the disclaimed word CLUB nor the disclaimed phrase "Estd. 2019" sufficiently distinguished the mark from the cited mark

As to the third and fourth marks, the Board found that the "tongue-in-cheek phrase MADE IN TEXAS imbues the CLOVER CLUB-based mark with a geographic connotation, and a connotation of club-type food that would be typical of Texas." And so the Board concluded that the first DuPont factor favored Loew's for these two marks.

Finally, Loew's dubiously argued that the customers for restaurant servicers are "sophisticated and savvy in selecting their food and dining choices." However, there was no evidence to support that argument. Loew's recitation of services is limited to a "high-end hotel," and the Board observed that this is "to say the least, a unique identification of services, but not one that includes "high-end" restaurant services or prices." Loew's "small plates" are priced between $8 and $24, and its beverages range in price from $6 for a beer to $28 for whiskey. "They strike us as prices that could be paid by a substantial portion of the consuming public, not just patrons of expensive restaurants." 

Loew's own description of its restaurant is directed to the general public, not simply to guests at a "high-end" hotel: for example, it solicits people who want to have "[b]eers with friends." In short, the least sophisticated purchaser of Loew's services will exercise nothing more than ordinary care in the purchasing decision. 

And so, the Board reversed two of the refusals but affirmed the other two.

Read comments and post your comment here.

TTABlogger comment: So Loew's winds up with two narrow registrations for narrowly recited services. It apparently has no rights in the term CLOVER CLUB alone. Not exactly a resounding victory, but as they say: you win some, you Loew's some.

Text Copyright John L. Welch 2022.

TTAB Affirms Refusal of "PVPW" for Delivery of Bottled Water, Due to Unacceptable Specimens of Use.

Finding that Applicant's specimens of use did not show a direct association of the proposed mark with the recited services, the Board affirmed a refusal to register PVPW for "water supplying, namely, delivery of bottled water to homes, offices and stores." The purported mark is molded into the bottom of applicant's water bottles (see photo below right) and there was no evidence that purchasers would encounter the mark and perceive it as a source indicator. In re Peak Valley Pure Water, LLC, Serial No. 87686193 (May 10, 2022) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

Examining Attorney Ingrid C. Eulin contended that the letters molded on the bottles would be visible to the consumers only "after purchase, delivery and installation of the purchased bottled water in the water dispensing unit.” She noted that the mark PEAK VALLEY and not PVPW appears on applicant's website, and also that entities in the water delivery field do not typically employ terms molded on the bottom of water bottles as source indicators.

Applicant argued that because the bottles are used to deliver the water, there is a necessary direct association between the mark and the services so that the mark on the bottles constitutes an acceptable specimen, particularly since the bottles may be “stored and transported on [their] side” and “may be inverted during use” with water dispensers.

The Board agreed with applicant that goods used in the rendering of services may display the mark and may serve as source indicators for the services. Furthermore, the record showed that water bottles used in performing the services display the mark for the delivery services. However, the Board disagreed with the contention that consumers will find that the molded term PVPW indicates the source of the water delivery services.

Applicant’s business involves not just water delivery but the sale of the same bottles used in delivery. Applicant’s bottles display prominent PEAK VALLEY labels and its website advertises “Delivery Services Peak Valley Water 5 gal. bottles.” Competitors in the water delivery industry display their marks on prominent water bottle labels and their website advertisements. There is no evidence that the mark is perceptible to the prospective consumer when the water bottles are being delivered. There is no evidence that consumers perceive, or even encounter, molded marks on the bottom of water bottles as indicators of source for water delivery services using the bottles. Based on these facts, we agree that the PWPV mark does not have a direct association with water delivery services.

The Board distinguished the Eagle Fence (alternately colored strands of wire) and Red Robin (bird costume) cases, where the marks were clearly viewable during performance of the respective services (fence rental services and entertainment services).

On this record and in the absence of any evidence that the prospective consumer would encounter the PVPW mark on the bottom of the bottle and perceive PVPW as indicating the source of the water delivery service, we find that Applicant’s bottles with a mark molded on the bottom have no direct association with Applicant’s water delivery services, and so are not acceptable specimens.

Read comments and post your comment here.

TTABlogger comment: Would you think that four letters molded into the bottom of a water bottle would be a trademark? I would likely think it's some kind of environmental code or maybe a product/model number.

Text Copyright John L. Welch 2022.

Precedential No. 13: TTAB Reverses Disclaimer Requirement of "KID" in two Lego Marks Found to be Unitary

In what may be one of the biggest wastes of time in the history of trademark jurisprudence, the Board reversed the USPTO's requirements that LEGO disclaim the word KID, in both Latin and non-Latin characters, in the two marks shown below, for various goods and services primarily aimed at children. The Board found the two marks to be unitary, and therefore disclaimer of KID was not required. Now, does anyone think that Lego, by avoiding these disclaimers, will be able to stop others from using the word KID in connection with child-related goods and services? What's the point? In re Lego Juris A/S, 2022 USPQ2d 443 (TTAB 2022) [precedential] (Opinion by Judge Cynthia C. Lynch).

The Board observed that a composite mark is unitary if the elements of the mark "are so merged together that they cannot be viewed as separable elements, . . .  rendering a disclaimer unnecessary." In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981).

Several factors inform the unitariness analysis: the physical connection of the potentially unregistrable component to other elements of the proposed mark by lines or other design features; the relative location of the respective elements of the proposed mark; and the significance of the terminology as used on or in connection with the goods or services. Dena v. Belvedere, 21 USPQ2d at 1052; see also TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1213.05 (July 2021).

The Board found that, in each mark, the elements "merge together in a way that conveys a unitary impression." It perceptively noted that the words MONKIE and KID are physically connected to the design of a monkey’s head. The Board was unmoved by the examining attorney’s argument that the monkey head "functions as a space" that separates those two words.

Connecting elements with a design feature tends to show unitariness. Dena v. Belvedere, 21 USPQ2d at 1052. This conclusion is bolstered by the curled tail over the letter I in KID, which gives the sense that the monkey’s body is hidden behind the word KID, with the tail peeking over the top. A similar tail design also appears at the bottom right, connected to the Chinese lettering joined to the edge of the D in the word KID and to the edge of the underlining beneath MONKIE KID and the monkey head design.

What about the fact that the words MONKIE and KID are in different colors? Again, the Board was unimpressed: "The monkey head design incorporates both red and yellow, and this color scheme, like the design itself and its placement, serves to bring the words MONKIE and KID together, reinforced by the underlining of both words and the design in alternating red and yellow. We find the elements of the mark as a whole are 'so merged together that they cannot be regarded as separate.' Dena v. Belvedere, 21 USPQ2d at 1052."

The Board concluded that the monkey-related design elements and the connection of the various features "give the impression of a 'monkey kid' creature." Consumers are likely to understand KID, and its foreign equivalent, to refer to that MONKIE KID creature. In short, "a registrable term and an unregistrable term are joined together [with design elements] so as to form a mark which has a distinct non-descriptive meaning of its own …." In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983).

And so, the Board reversed the refusals to register.

Read comments and post your comment here.

TTABlogger comment: Why precedential? What's new here? FWIW, I think the use of red for the word KID makes it stand out with a separate commercial impression.

Text Copyright John L. Welch 2022.

TTAB Considers Pilot Pretrial Conference Program

In another step toward making TTAB proceedings as complicated and expensive as civil litigation, the TTAB is considering a pilot program "for holding Final Pretrial Conferences in certain inter partes (trial) cases to better manage and streamline opposition and cancellation proceedings that proceed to trial. The goal of the pilot is to save time and resources of parties and the TTAB, and to foster the effective and efficient presentation of evidence." Announcement and additional discussion here.

Under the proposed program, the Board would focus on cases "identified as likely to generate unnecessarily large or disorganized and unwieldy records, or which the TTAB otherwise determines, based on the circumstances of individual cases, to be appropriate for inclusion in the pilot program."

For this pilot program to work effectively, prior to the FPC each party would provide each other party more pre-trial information than is presently required by TTAB pretrial disclosure requirements. For example, parties would provide lists of Notice of Reliance evidence and lists of all testimony/exhibits planned for trial use, which are not otherwise required. The parties also would be required to state all their objections to expected evidence of adverse parties, with limited exceptions. The TTAB, in directing the parties to prepare for the FPC also would emphasize the parties’ consideration and adoption of stipulations regarding evidence to be introduced and considered, as well as stipulations of fact.

A model format for a final pretrial conference order is provided here. If you would like to comment on this proposal, you may do so at TTABFeedback@uspto.gov. 

 Read comments and post your comment here.

TTABlogger comment: I think the Board should look to ways of streamlining cases early on, for example by holding an early conference to discuss issues, getting rid of bogus fraud claims at the git-go, and limiting discovery both in scope and in length of the discovery period.

Text Copyright John L. Welch 2022.

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

The Board is running at an affirmance rate of about 96% for Section 2(d) appeals. Here are three more for your consideration. How do you think they came out? [Results in first comment].

In re Eggtronic Engineering S.P.A., Serial No. 79290799 (April 29, 2022) [not precedential] (Opinion by Judge Cindy B. Greenbaum) [Section 2(d) refusal of ECOVOLTAS for "AC/DC power converters; Electric power converters; Integrated circuits," in view of the registered mark ECOVOLT for "Induction voltage regulators; Electric voltage transformers; Voltage stabilizers; Voltage regulators."]

In re Nextiva, Inc., Serial No. 88367632 (May 3, 2022) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of NEXT LEVEL for "entertainment services, namely, providing podcasts in the field of business, personal growth and professional growth," in view of the registered mark NEXT LEVEL DAILY for for "electronic downloadable publications in the nature of articles and video tutorials in the fields of productivity, organization, and planning" in International Class 9 and "providing a website featuring blogs and non downloadable publications in the nature of articles and video tutorials in the field of productivity, organization, and planning; On line journals, namely, blogs featuring articles and video tutorials in the field of productivity, organization, and planning."]

In re Wellory, Inc., Serial No. 88789909 (May 4, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of WELLORY for "Downloadable mobile applications for connecting users and experts via messaging in the field of nutrition; none of the aforesaid relating to fitness, fashion, cosmetics or skincare" and "Nutrition counseling; none of the aforesaid relating to fitness, fashion, cosmetics or skincare," in view of three registered marks:  

• WELLORIA for "providing online publications, namely newsletters and articles, in the fields of health, fitness, and lifestyle;”  
• WELLERY for "retail department store services; on-line retail department store services; retail store services in the nature of pop-up shops in the fields of fashion, beauty, wellness and skin care" and "health spa services for health and wellness of the body and spirit; cosmetic skin care services and salon services, namely, manicures, pedicures, facials, brow shaping, makeup services, massages, eye lash extensions and skin care treatments, tissue contouring and cellulite improvement;" and  
• WELLTORY for "downloadable software in the fields of healthcare, benefits programs, employee productivity and risk management, namely, software featuring tools and resources for users to monitor and manage stress, fitness, health, wellness and energy; downloadable software featuring tools and resources for users to monitor and manage stress, fitness, health, wellness and energy."] 

 

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

TTABlog Test: Is AUBURN Deceptively Misdescriptive of Faucets?

The USPTO refused to register the proposed mark AUBURN for "Plumbing products, namely, faucets," finding the mark to be deceptively misdescriptive of the goods under Section 2(e)(1). The examining attorney contended that third parties use the auburn color on their plumbing faucets and so consumers would falsely believe that applicant’s faucets are in the color auburn. The applicant argued that "auburn" has other meanings, and that consumers would not believe its faucets were auburn colored.  How do you think this appeal came out? In re Delta Faucet Company, Serial No. 88814907 (May 4, 2022) [not precedential] (Opinoin by Judge George C. Pologeorgis).

The test for deceptive misdescriptiveness under Section 2(e)(1) has two parts: (1) the matter sought to be registered must misdescribe the goods or services; and (2) consumers must be likely to believe the misrepresentation.

Applicant argued that, although "auburn" is the name of a color, it is also the name of a well known university and city in Alabama, and no one would believe that an arbitrary faucet collection would be associated with those meanings. Nor would a consumer seek out an "auburn" colored faucet.

The Board found that the term "auburn" is "plausibly merely descriptive" of applicant’s goods, namely, the color or finish of the faucets. However, nothing in the Internet evidence described the color or finish of any faucets as "auburn." "Instead, the faucets appear in 'oil rubbed bronze,' 'copper reddish brown ,' or 'reddish brown.'" Therefore, the evidence did not show "that the consuming public has been accustomed or exposed to seeing faucets for sale."

[T]he evidence submitted by the Examining Attorney does not establish that the term auburn indicates any particular characteristic of this nature. On this record, we do not believe reasonably prudent purchasers are apt to be deceived.

And so, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: I think the other meanings of "auburn" were more significant than the lack of evidence of auburn-colored faucets.

Text Copyright John L. Welch 2022.

Infringement Plaintiff May Rely on Priority Date of Madrid Protocol Extension of Protection to Establish Priority

In what appears to be a case of first impression, the Ninth Circuit ruled (perhaps unsurprisingly) that under the Madrid Protocol, a foreign applicant who obtains a registration without showing actual use in the United States has a right of priority, as of the relevant constructive use date, over another who first used the mark in the United States. Once that registrant begins using the mark, it may bring an infringement application based on its superior right of priority. Lodestar Anstalt v. Bacardi & Co., No. 19-55864, 2022 WL 1180767 (9th Cir. Apr. 21, 2022).

In 2011, Plaintiff Lodestar obtained its extension of protection for the mark UNTAMED for whiskey, rum, and other distilled spirits. In 2013, Barcardi began a marketing campaign using the slogan "Bacardi Untameable." Lodestar then began use its mark in the United States in 2014.

Lodestar won the priority battle but lost the trademark infringement war. The court carefully parsed the relevant sections of the Trademark Act as well as court precedents involving Section 44 of the Act (for example, the "Lemon Tree" (SCM v. Langis) and "Fina" (American Petrofina v. Brown) cases). It found the Section 44 cases to be "persuasive in the analogous context of the Madrid Protocol." The court found additional support in Professor McCarthy's "persuasive analogy" between the "Dawn Donut" rule and the "Fina" case. In sum, to repeat:

[O]nce a registrant under the Madrid Protocol actually begins using the registered mark within the U.S., it is then entitled to assert an infringement claim, based on its statutory priority of right, against those who may have used the mark after the registrant’s constructive use date but before the registrant’s actual use in the U.S.

As to the issue of likelihood of confusion, the court ruled that Lodestar's use of the UNTAMED mark on its "Untamed Revolutionary Rum" product was not a bona fide use of its mark, but rather an attempt, in light of Bacard's new campaign, to reserve the UNTAMED mark for future use. As to Lodestar's use of the UNTAMED mark on the back of bottles of its "The Wild Geese Soldiers & Heroes" rum (in 2014), Lodestar failed to prove a likelihood of confusion.

 

Affirming the district court's entry of summary judgment, the court agreed that the manner in which the marks are used weighed against a finding of likely confusion, noting that Lodestar's mark appeared on the back of the bottle "below a considerable amount of writing," and that both parties used the involved marks as tag lines subordinate to their house marks.

Although the district court erred on several of the likelihood of confusion factors, the court concluded that no reasonable trier of fact could find that confusion is "probable" and not merely "possible."

Although the commercial strength of Bacardi’s campaign weighs in favor of a likelihood of confusion with respect to Lodestar’s competing rum, which bore a similar suggestive mark of which Bacardi was culpably aware, these factors are overwhelmingly offset by the fact that consumers would “encounter the trademarks differently in the marketplace,” the companies’ “marketing efforts [were] concentrated in different media,” and Lodestar “presented no evidence of actual confusion” among consumers of its products.

Read comments and post your comment here.

TTABlogger comment: What is surprising is that the Madrid Protocol priority issue never came up before.

Text Copyright John L. Welch 2022.

Is "Make Shift Happen" (Stylized) Confusable With "Shift Happens!" (Stylized) for T-Shirts?

The USPTO refused to register the mark MAKE SHIFT HAPPEN in stylized form (shown first below) for "Hats; Hoodies; Shirts and short-sleeved shirts; T-shirts; Graphic T-shirts," finding confusion likely with the registered mark SHIFT HAPPENS! in stylized form (second below) for "Clothing; namely, bathrobes, hats, and t-shirts." The goods are legally identical in part, but what about the marks? Applicant Marissa Paine argued that the cited mark is weak in light of six existing registrations for SHIFT-formative marks. The Board found that both marks "are a play on the common and informal colloquial expression 'SHIT HAPPENS, and it took judicial notice of the definition of the phrase 'shit happens,'" which is "defined as used to say that bad things happen as part of life and cannot be prevented.” How do you think this came out? In re Marissa Paine, Serial No. 90039694 (May 1, 2022) [not precedential] (Opinion by Judge George C. Pologeorgis).

Since the goods overlap and there are no restrictions in the identifications of goods, the Board must presume that the overlapping goods travel in the same trade channels to the same classes of consumers. Moreover, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Applicant provided no evidence of third-party use of SHIFT HAPPEN(S) or SHIFT-formative marks. The six third-party registrations are "a relatively small number compared to the number of such marks in cases that have found weakness based on those marks."

The third party registrations submitted by Applicant have little, if any, probative value because (1) they are for marks that have differing connotations and overall commercial impressions w hen compared to the cited mark, i.e., SHIFT, SHIFT TEAM and SHIFT SHOP, or (2) they list goods or services that are sufficiently unrelated to the goods identified in the cited registration, i.e., SHIFT HAPPENS for "providing online newsletters in the field of advertising, marketing and public relations" and "motivational and empowerment seminars."

The Board concluded that Applicant Paine failed to show that the cited mark "has been so extensively adopted by third-party registrants to allow Applicant’s proposed mark to register."

As to the marks, the Board found them to be "similar in connotation and commercial impression not only because both marks are a play on the common and informal colloquial expression 'SHIT HAPPENS,' but also because the marks are visually and aurally similar in that they both include the terms SHIFT and HAPPEN(S)." Neither the use of the plural "happens" nor the exclamation point in the cited mark altered the similarity of the marks. Although the stylizationd of the marks diffes, "it is the literal portion of a mark, rather than any design or stylization feature, which is more likely to be remembered and relied upon by customers in calling for the goods."

Further, even if potential purchasers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in sound, appearance, connotation, and commercial impression in the respective marks, that Applicant’s goods sold under the proposed mark constitute a new or additional product line from the same source as the goods sold under the registered mark with which they are acquainted or familiar, and that Applicant’s mark is merely a variation of, or derivative of, Registrant’s mark.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Should the different stylizations carry more weight in the 2(d) analysis?

Text Copyright John L. Welch 2022.

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

Thus far in 2002, the Board has affirmed 77 of the first 80 Section 2(d) refusals it has considered on appeal. Here are the latest three appeals for your consideration. [Results in first comment].

In re Aubrac Holdings, Inc., Serial No. 88586817 (April 29, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson). [Section 2(d) refusal of ULTIMATE AMMUNITION for, inter alia, "Ammunition; Ammunition for firearms; Rifle ammunition; Shells for large size ammunition; Shotshell ammunition; Small arms ammunition," in view of the registered mark ULTIMATE for "ammunition; shotgun shells; shotgun shell shot."]

In re Nano Magic, LLC, Serial No. 88879556 (April 29, 2022) [not precedential] (Opinion by Judge Mark Lebow) [Section 2(d) refusal of POWERED BY SCIENCE. WORKS LIKE MAGIC. for "cleaning preparations, namely, cleaning solutions and disposable wipes impregnated with cleaning solutions for the cleaning of surfaces, glass, porcelain, ceramic, mirrors, doors, vehicles, household items and devices, and electronic devices; all-purpose cleaning preparations," in view of the registered mark WORKS LIKE MAGIC POWERED BY SCIENCE for "deodorants for refrigerators; deodorizing products, namely, all purpose deodorizer preparations for household, commercial and industrial use."]

In re Hella Gutmann Solutions GmbH, Serial No. 79135477 (April 29, 2022) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Section 2(d) refusal of HGS DATA for "Updating, systematization, collection and maintenance of technical and diagnostic data for motor vehicles for the purpose of assisting motor vehicle mechanics to maintain and repair motor vehicles" [DATA disclaimed], in view of the registered marks HGS and the word-plus-design mark shown below, for, inter alia, "compilation of information into computer databases" and "systemization of information into computer databases" [GLOBAL SOLUTIONS] disclaimed.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

TTAB Posts May 2022 (Video) Hearing Schedule

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

May 12, 2022 - 12 PM: In re Flexa Network Inc., Serial No. 90002396 [Section 2(d) refusal of FLEXA CAPACITY for "Providing electronic processing of collateralized cryptocurrency payments via a secure global computer network; collateralized cryptocurrency exchange services," in view of the registered mark CAPACITY for, inter alia, "electronic payment, namely, electronic processing and transmission of bill payment data" and "exchange services in the nature of execution, clearing, reconciling and settlement of trade and financial transactions via a global network involving . . . securities . . . and/or related financial instruments."]

May 17, 2022 - 11AM: In re Layla Sleep, Inc., Serial No.88359361 [Refusal to register FLIPPABLE FIRMNESS for "Online retail store services featuring bed frames, foundations, mattresses, pillows, toppers, and bed sheets" on the ground that the specimen of use does not show use of the mark in connection with the services identified in the application.]

May 18, 2022 - 1 PM: Evolutionary Guidance Media R&D Inc. v. Cyberman Security, LLC AKA The CyberHero Adventures: Defenders of the Digital Universe, Oppositions Nos. 91249427 and 91253845 [Section 2(d) oppositions to registration of CYBERHERO for video game software and accessories and THE CYBERHERO ADVENTURES DEFENDERS OF THE DIGITAL for "comic books," in view of the registered mark CYBERHERO LEAGUE and the common law mark CYBERHERO for educational gaming services and toys, games, and gaming materials and devices.]

May 19, 2022 - 12 PM: In re Jeanette Conrad-Ellis, Serial No. 90002764 [Section 2(d) refusal of THE BLACK DIAMOND SERIES for "a series of fiction books for teen girls, excluding cartoon science fiction books and comic books" [SERIES disclaimed] in view of the registered mark THE BLACK DIAMOND EFFECT for a "cartoon science fiction books and comic books."]

May 25, 2022 - 1 PM: In re Walrus Rodeo LLC, Serial No. 88728723 [Section 2(e)(1) mere descriptiveness refusal of GOLDN PAYDIRT for "Gold; Gold bullion; Gold ore; Gold and its alloys; Gold, unworked or semi-worked; Gold, unwrought or beaten; Palladium; Palladium and its alloys; Precious metals; Precious metals and their alloys; Precious metals, unwrought or semi-wrought; Silver; Silver bullion; Silver ore; Alloys of precious metal; Platinum; Unworked or semi-worked gold" and "Mining exploration and mineral exploration services in the field of metals; Geological prospecting."]

Read comments and post your comment here.

TTABlog comment: Any predictions? See any WYHAs?

Text Copyright John L. Welch 2022.