Former Red Sox Nemesis Bucky Dent Applies to Register "BUCKY F'ING DENT" for Entertainment Services

Russell Earl "Bucky" Dent was a light-hitting shortstop for the New York Yankess when, in 1978, he hit a three-run homer that gave the Yankees a 3–2 lead in the AL East division tie-breaker game against the Boston Red Sox. The Yankees went on to win that game, and then the World Series over the Los Angeles Dodgers. Boston Red Sox fans still refer to him ruefully as "Bucky Fucking Dent." Apparently seeking to cash in on that celebrity, Mr. Dent has filed applications to register both BUCKY DENT and BUCKY F'ING DENT for, inter alia, entertainment services in the nature of live appearances by a former professional baseball player, and for clothing (Serial Nos. 97462500, 97462515, 97462865, and 97462897, filed June 16, 2022).

The TTABlogger, being a White Sox fan, fondly remembers Mr. Dent as a rookie shortstop for the Pale Hose. He was traded to the Bronx Bombers in 1977. Not only did he win the World Series with the Yankees in 1978, but he hit .417 and was named the World Series MVP!

Read comments and post your comment here.

TTABlogger comment: I wonder whether some Red Sox fan will oppose just for spite? Note that Mr. Dent is planning a road trip to Fenway Park. Good luck with that!

Text Copyright John L. Welch 2022.

TTAB Posts July 2022 (Video) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled five (5) oral hearings for the month of July 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.

July 7, 2022 - 1 PM: In re Di-Namic Records, Serial No. 87399929 [Refusal to register the mark THIS IS FOR MY GIRLS for "entertainment information; musical composition for others; production of musical sound recording," on the ground that the specimens of use do not evidence an association between the mark and the recited services.]

 

July 12, 2022 - 1 PM: In re Responsiveads, Inc., Serial No. 88453313 [Refusal to register ResponsiveAds for advertising, marketing and promotional services and for marketing software, on the ground of mere descriptiveness and lack of acquired distinctiveness.]

 

July 13, 2022 - 10 AM: New Enchantment, LLC v. MedSpa S.R.L., Cancellations Nos. 92067467 and 92071795 [Petitions for cancellation of two registrations for the mark MIAMO for cosmetics, dietetic foods, and related products, and for medical, human hygiene, and beauty services, in view of the registered mark MII AMO for, inter alia, cosmetics and spa services.]

July 14, 2022 - 11 AM: In re C.E. Shepherd Company, LLC, Serial No. 88636382 [Refusal to register MODULAR GABION SYSTEMS for "Gabions of steel wire"on the grounds of genericness or, alternatively, mere descriptiveness and lack of acquired distinctiveness.]

July 26, 2022 - 1 PM: Mystery Ranch, Ltd. v. Terminal Moraine Inc. dba Moraine Sales, Opposition No. 91250565 Opposition to registration of the mark DANA DESIGN in the form shown below, for backpacks, shoulder bags, and similar gear, on the grounds that the mark falsely suggests a connection with Dana Gleason, the owner of opposer, under Section 2(a), and the mark comprises the name of a living individual without his consent, under Section 2(c).]

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TTABlog comment: Any predictions? See any WYHAs or WYHOs or WYHPs?

Text Copyright John L. Welch 2022.

TTAB Finds Two KR Design Marks For Cosmetics Confusingly Similar

The Board affirmed a Section 2(d) refusal of the mark shown below left, for "non-medicated skin serums; facial concealer; pre-moistened cosmetic wipes; and skin moisturizer," finding confusion likely with the registered mark shown below right for, inter alia, cosmetics. Applicant Krete LLC argued that the marks are "clearly distinguishable," but the Board pointed out that "it is not necessary for the marks to be indistinguishable to be found similar." Krete also pointed to its ownership of a registration for a similar mark for non-medicated skin serums, but the Board was unimpressed. In re Krete LLC, Serial No. 90369855 (June 24, 2002) [not precedential] (Opinion by Judge Peter W. Cataldo).

Examining Attorney Julie Choe submitted dictionary definitions of "cosmetics" as well as a definition provided by the U.S. Food and Drug Administration (FDA). The Board concluded that Krete's goods fell within those definitions. "Simply put, Registrant’s goods include cosmetics and sub-types of cosmetic and cosmetic components, and Applicant’s goods are types of cosmetics." Seven third-party websites offered, under the same trademark or trade name, goods identified in both the involved application and cited registration.

Krete maintained that its goods are specialty, high end products available in exclusive trade channels, but there were no such limitations in its application. Nor were there any limitations on channels of trade or classes of consumers in the cited registration.

With respect to the marks, the Board found that the "relatively modest geometric designs in the applied-for mark and cited mark do not significantly contribute to the mark’s commercial impression, but rather are subordinate to the letters 'KR' in both marks." The Board observed once again that when a mark is comprised of both literal elements and a design, the literal elements is usually accorded greater weight, in part because consumers are likely to remember and use the letters to request the goods.

Krete pointed to the numeral "7" in the cited mark as a distinguishing element, but the Board found no evidence the consumers would view that design element as the number "7." [Looks like a "7" to me - ed]. Nor was there evidence to support Krete's assertion that its mark is a play on the periodic table of elements, signifying that its goods are "scientific, pure, and clinical."

Turning to Krete's prior registration, Krete invoked the Strategic Partners precedent, but that case applies only in very narrow circumstances. The Board noted that "[i]n this case, Applicant’s prior registration issued in 2021 and thus is not contestable, for a mark with similar elements identifying some of the goods at issue herein." [Huh? "not contestable"? not incontestable? Something is wrong here, not the least of which is using the term "contestable" or "incontestable" to describe a registration - ed.]. While the Board was sympathetic to Krete's position, it concluded that the existence of the prior registration did not outweigh the other DuPont factors.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: There is no such thing as an "incontestable" registration. Nowhere in the Lanham Act is the word "incontestable" used in connection with a registration. It is the right to use a registered mark that may become incontestable. See Sections 15 and 33 for proper usage of the term.

Text Copyright John L. Welch 2022.

TTAB Affirms FLIPPABLE FIRMNESS Refusal: Specimens Do Not Show Use With Retail Store Services

The Board affirmed a refusal to register the proposed mark FLIPPABLE FIRMNESS for "Online retail store services featuring bed frames, foundations, mattresses, pillows, toppers, and bed sheets" on the ground that the specimens of use do not show use of the mark in connection with the services identified in the application. Examining Attorney Monica R. Reid agreed that Applicant Layla offers retail store services, but the term FLIPPABLE FIRMNESS refers only to a "touted feature" of a mattress product. In re Layla Sleep, Inc., Serial No.88359361 (June 24, 2002) [not precedential] (Opinion by Judge Robert H. Coggins).

The Board agreed with the Examining Attorney, finding that "[t]here is nothing on any specimen that refers to, or even suggests, that there is such a thing as a FLIPPABLE FIRMNESS online retail store service." The text surrounding the term supported that finding. "The web pages advertise the advantages of a FLIPPABLE FIRMNESS mattress – that is, a mattress a consumer can flip to obtain different levels of firmness or support – and the Google Display Ads list it as a feature. In each of the substitute specimens, the mark is preceded by “with” (or its abbreviation)."

We recognize that the first substitute specimen includes an interactive link leading to Applicant’s website, the second substitute specimen contains a “visit site” button, and the third substitute specimen contains an add-to-cart button (presumably as does the original specimen based on Applicant’s explanation of what happens when a consumer scrolls the webpage). However, none of the specimens creates the required direct association between FLIPPABLE FIRMNESS and online retail store services. Instead, the mark simply promotes Applicant’s goods by describing a feature thereof.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.

IMAGINELABORATORIES.COM Confusable With IMAGINATION LABS For Telecommunication Consulting Services, Says TTAB

The Board affirmed Section 2(d) refusals to register the proposed marks IMAGINELABORATORIES.COM, IMAGINELABORATORY.COM and IMAGINELABS.NET for telecommunications technology consulting services, finding confusion likely with the registered mark IMAGINATION LABS for, inter alia, "telecommunications consultation and advice." Applicant, appearing pro se, pointed to its existing registration for IMAGINATION ARTS LAB, over which the cited registration issued, but the Board once again observed that it is not bound by the decision of an examining attorney in a prior application with a different records. In re Imagine Labs LLC, Serial Nos. 88931892, 88931930, and 88931972 (June 21, 2022) [not precedential] (Opinion by Judge Karen Kuhlke).

Applicant argued that the difference between the words IMAGINATION and IMAGINE distinguished the marks": "Having imagination and not actively imagining is equal to not having any imagination. Therefore the act of imagining something is vastly different than the inherent ability of imagination in every human mind." [Huh? - ed.]. Applicant also contended that because its marks are domain names and the cited mark is a "Brand Service name" there is no cause for confusion. [Huh? - ed.]. The Board, not surprisingly, found that the similarities in the marks outweighed their differences.

With regard to applicant's prior registration, the Board noted that in "unusual circumstances" an applicant's prior registration may deserve weight in the confusion analysis. See In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012). However, invocation of that precedent requires that the marks and the services be identical or nearly so. That was not the case here.

Applicant argued that the registrant does not actually offer all of the services listed in the cited registration, but the Board pointed out once again that it must make its decision based on the services as recited in the registration, not on the actual use of the registered mark. In light of third-party registration and usage evidence, the Board found the services to be related and offered in the same channels of trade.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA? Or should we give this pro se applicant a pass?

Text Copyright John L. Welch 2022.

TTAB Denies RESET Cancellation Petition Due to Failure to Show Relatedness of Opiod Treatment Software and Medical Sensors

The Board denied a petition for cancellation of registrations for the mark RESET for "Software for the treatment of substance use disorder" and RESET-O for "Software for the treatment of opioid use disorder, namely, software for collecting information and data from and for delivering information and therapy to patients with opioid use disorder," finding that Opposer Masimo failed to prove likelihood of confusion with its registered marks SET, RAINBOW SET, and RD RAINBOW SET for patient sensors and monitors. The Board found the marks to be "marginally more similar than dissimilar," but the evidence did not establish that the involved goods are related. Masimo Corporation v. Pear Therapeutics, Inc., Cancellation No. 92073785 (June 17, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington).

Petitioner’s SET-formative marks were found to be inherently strong in connection with the sensors and monitors used in the medical field. As to commercial strength, the respondent's third-party registration evidence failed to demonstrate commercial weakness of the term SET, and so the Board deemed the the sixth DuPont factor to be neutral.

The Board found the involved marks to be "marginally more similar than dissimilar in appearance, sound, meaning and commercial impression, and so this factor slightly favored Masimo.

Masimo contended that the goods are "highly related" because "Respondent's software allows doctors and clinicians to 'monitor the patient’s progress in a substance abuse program through a mobile app and clinician-facing dashboard,' and Petitioner’s monitors and sensors 'are used in connection with monitoring those using prescribed opioids, and are in development for use monitoring persons in treatment for opioid addiction." The Board, however, found Masimo's evidence to be "tangential at best." "Petitioner’s evidence shows that its sensors and monitors can be used by medical personnel to monitor patients who have been prescribed opioids in order to prevent respiratory issues. Respondent’s software, on the other hand, is used for the treatment of substance and opioid abuse disorders."

As Respondent points out in its argument, there is only a vague “generalized opioid user ‘connection’” between these goods. The evidence does not show, for example, that these are the types of goods that consumers would expect to emanate from a common source or that those purchasing software for treating opioid and substance abuse would also be consumers of Petitioner’s monitors and sensors, even if the latter goods are used to prevent adverse medical conditions that may result from opioids. Again, we are mindful that the mere fact that the involved goods can be classified as within the medical field does not mean the goods are related.

Masimo did not establish its sensors and monitors sold under its marks are marketed to consumers who are involved in the treatment of substance or opioid abuse disorders. Furthermore, given the inherent nature of the involved goods, "those looking to purchase these different goods constitute two distinct groups of sophisticated purchasers."

The Board concluded that, because there was "no real demonstrated relationship" between the parties' goods, and because there was no evidence demonstrating that these goods are offered in the same channels of trade to the same classes of consumers, it could not find that confusion is likely. And so it denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: I agree with this one. How about you?

Text Copyright John L. Welch 2022.

TTABlog Test: Is "GOLDN PAYDIRT" Merely Descriptive of Gold and Other Precious Metals?

The USPTO refused to register the proposed mark 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," finding the mark to be merely descriptive of the goods. Examining Attorney Jesse A. Maihos maintained that the mark describes a feature of applicant's goods, which comprise "paydirt that is golden in color and contains gold and minerals." Applicant Walrus Rodeo argued that "[t]here is no guarantee of gold. It is suggestive that there might be gold in there." How do you think this came out? In re Walrus Rodeo LLC, Serial No. 88728723 (June 13, 2022) [not precedential] (Opinion by Judge David K. Heasley).

Walrus Rodeo explained that its goods are novelty items: bags of dirt through which consumers can sift in hopes of striking gold. The mark GOLDN PAYDIRT should not be taken literally, according to applicant, but “as a figurative and thus suggestive indicator of the rewards offered to the consumer.”

The Board, however, agreed with the Examining Attorney. As indicated in the application, the goods must contain some amount of gold or other precious metal. Walrus Rodeo's advertising states: “Guaranteed Real Native Gold Inside!” and “When used correctly, all paydirt will contain randomly varied amounts of gold." The term "paydirt" is defined as "earth or ore that yields a profit to a miner." Applicant's competitors use the term in the same sense as applicant, as evidenced by ten third-party websites.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2022.

Precedential No. 16: TTAB Unsurprisingly Finds "NATURE MADE" Confusable With "MADE IN NATURE" for Fruit and Snack Products

In a 61-page opinion, the Board sustained three oppositions to registration of the mark NATURE MADE for various foods and beverages, including snack bars containing dried fruits and fruit juice, on the ground of likelihood of confusion with the registered mark MADE IN NATURE for dried fruits and vegetables, snack products, and fresh fruit. The Board took the parties to task for various procedural/evidentiary missteps, tossed out Applicant Pharmavite's Morehouse defense, and painstakingly applied the DuPont factors to find Opposer's mark NATURE MADE to be conceptually weak but commercially moderately strong, the involved marks highly similar, the goods overlapping or related, and the channels of trade and classes of consumers identical or overlapping. Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557 (TTAB 2022) [precedential] (Opinion by Judge Jonathan Hudis).

Procedural/Evidentiary Missteps: The Board chastised the parties for over-designating documents and testimony as confidential, filing duplicative evidence by different methods of introduction (e.g., via notice of reliance and again via exhibits to deposition testimony), submitting unnecessary and unrelated portions of deposition transcripts, creating an inappropriately large record ("Judges are not like pigs, hunting for truffles buried ... [in the record]"), and inadequately referencing the pages of TTAB docket entries.

Morehouse Defense: Pharmavite raised the (typically useless) Morehouse defense in its brief, but the Board found that Opposer had not been put on proper notice of the defense and further that the issue was not tried by implied consent. In any case, the defense - which holds that an opposer cannot be damaged if the applicant already owns a registration for the same mark for the same goods [in which case, why need another registration? - ed.] - did not apply here because the goods in Pharmative's exiting registrations (supplements) were not identical or substantially the same as those here involved.

Likelihood of Confusion: The Board began with a consideration of the strength of Opposer's MADE IN NATURE mark. As to inherent or conceptual strength, the Board whittled down Pharmavite's third-party registration evidence to a mere 90 registrations for marks that include MADE or NATURE for goods related to Opposer's products, but only eight of those marks included both words. Nonetheless, the Board found that MADE IN NATURE is highly suggestive. As to commercial strength, Pharmavite did not provide any evidence of use of similar marks for similar goods. Opposer's evidence established that its marks have acquired marketplace recognition, albeit not fame, and have moderate commercial strength.

The Board found the marks to be similar in appearance, sound, meaning, and commercial impression: indeed, "highly similar." Some of the goods in Pharmavite's applications are identical to or encompassed within opposer's registrations, and others are similar or related. There was no evidence supporting Pharmavite's claims that the goods would be purchased with more than ordinary care.

Purchasers of Opposer’s MADE IN NATURE products are members of the general public who do not typically spend much time making purchasing decisions for these types of products, who make their purchasing decisions for these products without the assistance of others (such as seller representatives), and often on impulse. The extent of potential confusion, should Applicant’s opposed Applications be allowed to proceed to registration, is significant.

And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: A good discussion and analysis of many DuPont factors, although nothing really new.

Text Copyright John L. Welch 2022.

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

A TTAB judge once told me that one can predict the outcome of a Section 2(d) case 95% of the time by looking just at the marks and the goods. Here are three more Section 2(d) appeals for your consideration. How do you think they came out? [Results in first comment].

In re Kenzo Ltd., Serial No. 79272212 (May 23, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo) [Section 2(d) refusal of the mark shown below left, for "wine," in view of the registered mark show below right, for "vodka."]

In re Weber Maschinenbau GmbH Breidenbach, Serial No. 79281976 (June 13, 2022) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of WEBER WEPACK for "Packaging machines for foodstuffs; robots for food packaging; conveyors for packaging food portions and food products; conveyor belts for food packaging machines; machines for separating and isolating packaged foodstuffs; machines for labeling and lettering food packaging; parts and fittings for the aforesaid goods," in view of the registered mark WEPACKIT for "packaging machines"]

In re Mary Louise Jones, Serial No. 88723679 (June 15, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson) [Section 2(d) refusal of MARY’S EDIBLES, for "Nutritional supplements in the form of gummies," in view of the registered mark MARY’S MEDICINALS for "transdermal patches featuring herbal supplements and neutraceuticals for nausea, insomnia, anxiety, inflammation, pain relief and an improved sense of well-being."]

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 "YOU'RE AN IDIOT" for Card Games Confusable With "YOU MUST BE AN IDIOT" for Board Games?

Each of the parties to this Section 2(d) cancellation proceeding filed a motion for summary judgment. Respondent stipulated to petitioner's priority, as well as to all of the essential DuPont factors except the first factor: the similarity or dissimilarity of the marks. The Board granted one of the motions, but which one? Are the marks YOU'RE AN IDIOT and YOU MUST BE AN IDIOT confusingly similar or not? R & R Games, Inc. v. TwoPointOh Games, Cancellation No. 92076580 (May 23, 2022) [not precedential].

The Board began by noting that the filing of cross-motions for summary judgment does not mean that there is no genuine dispute of material fact or that a trial is unnecessary. Each moving party bears the burden of proof on its own motion, and on each motion all doubts and inferences are resolved in favor of the non-movant.

Petitioner contended that the commercial impressions of the marks are identical and that any minor differences in punctuation and sentence structure are irrelevant. Both marks comprise a short declarative phrase that calls a game participant an IDIOT. Both marks are "implied conditionals" in which the "linking verbs" mean the same thing. Both marks begin with YOU and end with IDIOT, the word IDIOT being the dominant element. Petitioner further claimed that consumers are accustomed to encountering new product bearing substantially similar trademarks from the same source: e.g., game sequels and expansion packs.

Respondent perceptively pointed out that both marks do not begin with the term YOU, argued that it is irrelevant whether certain elements in each of the marks mean the same thing, and asserted that Petitioner's evidence regarding new product naming actually showed that identical marks were used.

The Board sided with the Petitioner:

Respondent’s mark YOU’RE AN IDIOT is extremely similar in appearance and sound to Petitioner’s mark YOU MUST BE AN IDIOT! as they end with the same distinctive AN IDIOT and begin with related wording. *** The term “MUST” in Petitioner’s mark merely indicates the absence of any doubt that the person on the receiving end of the message is “an idiot.”

Furthermore, noting that the focus of the Section 2(d) inquiry is on the recollection of the average purchaser who normally retains a general rather than a specific impression of marks, the Board found the marks to be "the same, or nearly so, in meaning and impression as they constitute essentially the same insult – telling a person, in this case a particular player in the game, that they are 'foolish or stupid.'"

Finding no genuine dispute on the issue of likelihood of confusion, the Board entered judgment summarily in favor of petitioner.

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TTABlogger comment: That wasn't difficult, was it?

Text Copyright John L. Welch 2022.

Rejecting Abandonment and Fraud Claims, TTAB Denies Petition for Cancellation of "POLICE GAZETTE" Logo

In a mere 13 pages, the Board denied a petition for cancellation of a registration for the word-plus-design mark shown below, for "magazines in the field of current events and sports," rejecting pro se Petitioner Steven Westlake's claims of abandonment and fraud. Steven Westlake v. Edgar Alexander Barrera and Richard K. Fox Publishing Company, Cancellation No. 92067884 (June 10, 2022) [not precedential] (Opinion by Judge Frances S. Wolfson).

Abandonment: Petitioner Westlakc claimed that Respondent Barrera abandoned his registration by failing to use the mark in commerce “since at least December 31, 2013.” As proof, Westlake submitted the results of an online search conducted on April 14, 2019, which returned a “404 Not Found” page. In response, Barrera introduced three testimonial declarations wherein each declarant stated that the specimens attached to Respondent's Section 8 Declaration of use (January 29, 2016) and to his renewal application (February 3, 2020) for the subject registration were authentic, and that the statement regarding use "were true and accurate.” The Board found this evidence adequate to show that Respondent did not abandon the mark.

Fraud: Westlake asserted that Barrera committed fraud by submitting digital renderings as his specimens of use and then falsely claimed that the mark was in use. Barrera did not address the specimen issue directly, but instead pointed to the testimony declarations regarding use.

The Board, noting that fraud must be proven "to the hilt," found that Westlake failed to provide clear and convincing evidence to prove his claim. Even if the specimens of use submitted with the underlying application were improper, that does not prove that the mark was not in actual use at the filing date. Moreover, there was no proof of an intent to deceive the USPTO. 

Conclusion: The Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: The Board ignored Respondent's supposed affirmative defenses of lack of "standing" and failure to state a claim because neither is a true affirmative defense. The former is to be proven by petitioner as part of his case, and the latter challenges the sufficiency of the pleading rather than stating a defense to a properly pleaded claim. Remember an affirmative defense is a response that says, "Yes, but . . . . ."

Not the most well-written opinion I've ever read. I think the Board should have said that a false statement was made, it was material to the allowance of the mark for registrations, the USPTO relied on the false statement, but there was no proof of an intent to deceive. We've seen cases like this before. E.g., this one.

Text Copyright John L. Welch 2022.

Attorney Argument Isn't Evidence: CAFC Affirms TTAB's "PARMA COFFEE" Decision

The CAFC gave this applicant the boot in its appeal from the TTAB's decision [TTABlogged here] affirming a Section 2(e)(2) geographical descriptiveness refusal of PARMA COFFEE for, inter alia, coffee and chocolate. Because Parma is a well-known geographic location, and because Applicant Zeta's goods were admittedly "developed" in Parma, Italy, the Board presumed "that there is a goods/place association amongst the consuming public." The CAFC found that substantial evidence supported the Board's decision. In Re A. ZETA S.R.L, 2022 USPQ2d 544 (Fed. Cir. 2022) [not precedential].

On this appeal, Zeta argued that its goods do not "originate" in Parma, but the court concluded that because Zeta did not make this argument before the Board, it was waived. "Moreover if we were to consider this argument, the record lacks any evidence to support it; mere argument cannot suffice." [Emphasis supplied].

Finally, Zeta feebly argued that the USPTO has registered numerous other marks containing city names, and therefore to deny Zeta its registration would be inconsistent. The court noted that many of the third-party registrations were raised by Zeta for the first time on appeal. The few that were in the record had little probative value since each mark must be evaluated on the basis of the application at issue.

Read comments and post your comment here.

TTABlogger comment: The statement that attorney argument is not evidence seems to be appearing more frequently in Board decisions. It is found in three decisions by the Board so far this month: the MULLET genericness reversal (TTABlogged here), and two Section 2(d) cases: the BLACK DIAMOND ex parte decision (here), and the HEADSTRONG opposition (here).

Text Copyright John L. Welch 2022.

Precedential No. 15: TTAB Dismisses Opposition to Section 66(a) Application: Nonownership Claim Unavailable

The Board has re-designated as precedential its April 2001 decision dismissing an opposition to registration of the mark SPINTIRES for computer games and software. Opposer Saber Interactive alleged only one claim: nonownership. However, the opposed application was based on a request for extension of protection under the Madrid Protocol (Section 66(a)), and nonownership is not an available ground for opposition against an application not based on actual use. Saber Interactive Incorporated v. Oovee Ltd, 2022 U.S.P.Q.2d 514 (T.T.A.B. 2022).

Applicant Oovee moved for summary judgment on the ground that Saber was not entitled to a statutory cause of action. The Board put that motion aside, exercising its discretion to review Saber's claims to determine their sufficiency.

In opposing a Section 66(a) application, an opposer's claims must be listed on the ESTTA filing form. Trademark Rule 2.104(c), 37 C.F.R. § 2.104(c); see also CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1963 (TTAB 2011). The opposition may not be amended to add an entirely new claim. Trademark Rule 2.107(b), 37 C.F.R. § 2.107(b); see also O.C. Seacrets, Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327 (TTAB 2010).

The only claim Opposer Saber included on the ESTTA form and in its pleading was nonownership under Section 1 of the Trademark Act. However, Board precedent holds that "[o]wnership of a mark arises through use of the mark.” Therefore, a claim based on lack of ownership is not available when the application is not based on use of the mark in commerce. Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, *5 (TTAB 2020) (application based on intent to use under Section 1(b) of the Trademark Act, 15 U.S.C. § 1(b)); see also Norris v. PAVE, 2019 USPQ2d 370880 (TTAB 2019).

An application under Section 66(a) is not based on use, but rather on an international registration owned by the applicant and a bona fide intent to use. Therefore, a claim based on lack of ownership is not available against Applicant Ovee's Section 66(a) application.

And so, the opposition was dismissed with prejudice.

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TTABlogger comment: This ruling should have claim preclusion effect if Saber files a petition for cancellation.

Text Copyright John L. Welch 2022.

TTAB Reverses Genericness Refusal of "MULLET" for Bicycles Due to Mixed Evidentiary Record

The Board reversed a genericness refusal to register the mark MULLET for "bicycles," on the Supplemental Register, giving the applicant the benefit of the doubt in light of the mixed evidentiary record. "[T]he evidence of record, when viewed in its entirety, fails to establish that the primary significance of MULLET to the relevant public is a type of bicycle, rather than a bicycle provided by a particular entity." In re Mr. Bator LLC, Serial No. 88244852 (June 7, 2022) [not precedential] (Opinion by Judge George C. Pologeorgis).

"A mark proposed for registration on the Supplemental Register must be capable of distinguishing the applicant’s goods or services. 15 U.S.C. § 1091. 'Generic terms do not so qualify.'" Evidence of the relevant public’s understanding of a term may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers and other publications.

However, if the evidence of record, when viewed in its totality, constitutes a mixed use of a term as both the generic name of the goods or services and as a source indicator for such goods or services, then such evidence would not demonstrate that the primary significance of the term is the generic name of the goods or services. See Merrill Lynch, 4 USPQ2d at 1143.

Not surprisingly, the Board found the genus at issue to be "bicycles" and the relevant consuming public to be the general public - i.e., consumers who purchase bicycles. Based on numerous website reference, the Examining Attorney maintained that MULLET refers to a specific type or subcategory of bicycles, namely, a bicycle with two different sized wheels: typically a 29" diameter wheel in front and a 27.5" wheel in back.

Applicant submitted third-party online articles and blog posts referring to its new product launch as a "mixed-wheel" bike, not as a "mullet" bike. The articles also included text demonstrating trade name and trademark use of MULLET, as well as photographs of applicant’s goods bearing the term MULLET, showing valid trademark use of the term. Three purported bicycle industry experts averred that this type of bike is referred to as an MX or "mixed wheels." Finally, applicant pointed to a now-expired registration owned by Trek Bicycle for the mark MULLET for bicycles, as proof of the term's registrability.

The Board dismissed the prior Trek registration as irrelevant, since "[t]rademark rights are not static," and "[a] term that might not have been considered merely descriptive or generic in the past may now be considered so due to the frequency of its use over time." Moreover, eligibility for registration must be determined based on the record of the case at hand.

The Board concluded that the Examining Attorney "failed to establish that the designation MULLET would be perceived by consumers as the generic name for a subcategory of bicycles." Instead, the record consisted of mixed uses of MULLET, some in trademark form and some not.

More specifically, while the Examining Attorney submitted evidence demonstrating that the term MULLET is the generic name of a type of bicycle, Applicant offset such evidence by submitting approximately the same amount of evidence, i.e., third party websites in the biking industry and declarations from persons familiar with the mountain bike industry, showing the term as Applicant’s trade name or trademark used in connection with bicycles.

The mixed record made it unclear whether MULLET is generic for a subcategory of bicycles. Although the Board had "concerns about the genericness of Applicant’s designation, it is the record evidence bearing on purchasers perceptions that controls the determination, not general legal rules or our own subjective opinions."

Recognizing that any doubts raised by the lack of evidence must be resolved in applicant's favor, the Board reversed the refusal, but it noted that "on a different and more complete record, such as might be adduced by a competitor in an opposition proceeding, we might arrive at a different result on the issue of genericness, but we must base our determination herein on the record now before us."

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TTABlogger comment: I should ask my friend, Ian Mullet, what he thinks about this.

Text Copyright John L. Welch 2022.

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

The Board has affirmed 96 of the first 100 Section 2(d) refusals that came before it on appeal this year. Here are three more for your consideration. How do you think they came out? [Results in first comment].

In re Jeanette Conrad-Ellis, Serial No. 90002764 (June 2, 2022) [not precedential] (Opinion by Judge Mark Lebow) [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."]

In re Sunny Days Entertainment LLC, Serial No. 88949521 (June 7, 2022) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Section 2(d) refusal of POP N PLAY for "play tents" in view of the registered mark POP ‘N PLAY for "play yards."]

In re Boot Royalty Company, L.P., Serial No. 90002396 (June 7, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of RESISTOR for "boots," in view of two registered marks (depicted below) owned by different owners: the mark on the left for "Hoodies; T-shirts; Tank-tops” and the mark on the rights for"“Clothing, namely t-shirts, sweaters, sweat-shirts, shirts, pants, jeans, skirts, vests, jackets, belts, hats."]

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

Text Copyright John L. Welch 2022.

Recommended Reading: INTA's Amicus Brief to the Ninth Circuit in the Jack Daniel's "BAD SPANIELS" Case

In April 2022, INTA filed an amicus brief (pdf here) supporting Jack Daniel's petition for en banc rehearing of the BAD SPANIELS decision in VIP Products LLC v. Jack Daniel's Properties, Inc. INTA argued that the Ninth Circuit, by allowing minimal "expression" to qualify for a Rogers analysis, has significantly and erroneously expanded what constitutes an "expressive work." According to INTA, the Rogers test is more properly limited to inherently expressive works, not those ordinary consumer products that have some expression on the face of the product. The petition was denied, but the brief is worth reading.

Authors Vijay Toke, Martin Schwimmer, and Jennifer Gregor summarized the argument as follows:

In granting summary judgment of non-infringement to VIP Products, LLC . . . , the District Court observed that this Circuit’s decisions applying Rogers have led to a place where virtually no trademark holder can prevail on trademark infringement claims against an ordinary consumer product that has even a modicum of expression in it. This Circuit’s significant expansion of what constitutes an “expressive work” under Rogers also departs from the law of all other Circuits. Only in the Ninth Circuit does a commercial or consumer product with minimal “expression” receive a Rogers analysis, a test that was specifically designed to address—and only makes sense in the context of—truly artistic and creative works (e.g., films). In fact, when confronted with products that defendants have claimed are expressive, this Circuit has never declined to apply Rogers, bolstering the District Court’s conclusion that this Circuit’s Rogers precedents preclude trademark enforcement except perhaps in the most egregious of circumstances.

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TTABlogger comment: Will Jack Daniel's petition for a writ of certiorari again? What are the chances the Supreme Court would take it on this time?

Text Copyright John L. Welch 2022.

TTABlog Test: Is "EZ INSTALL SLEEVE" Merely Descriptive of Pipe Fittings?

The USPTO refused to register the proposed mark EZ INSTALL SLEEVE for "metal venting parts, namely, metal connector pipes for venting; metal pipes and fittings of metal for pipes; alignment pipes, namely alignment pipes of metal for venting" on the ground of mere descriptiveness under Section 2(e)(1). Applicant Duravent pointed to the lack of a dictionary definition of "EZ," asserted that its goods are alignment pipes, not "sleeves," and argued that the term "EZ" is ambiguous in meaning. How do you think this came out? In re DuraVent, Inc., Serial No. 90192019 (June 2, 2022) [not precedential] (Opinion by Judge Michael B. Adlin).

Examining Attorney April Roach submitted dictionary definitions of "easy," "install," and "sleeve," as well as a number of third-party uses of "EASY-INSTALL," or close variations thereof, for venting parts, pipes, and related products. She also provided evidence that "sleeve" is commonly used to describe goods that fall with applicant's identification of goods. And finally, she proffered six third-party registrations for marks including the term EASY INSTALL, in which registrations the term was disclaimed or the marks were registered on the Supplemental Register or on the Principal Register under Section 2(f).

Applicant contended that the proposed mark is merely suggestive because it has an ambiguous meaning open to various interpretations: "Does it mean 'as install'? Does it mean 'install an e and z'? Does it mean a type of 'install' such as an 'e and z' shape?'" [LOL - ed.].

The Board wisely found that EZ INSTALL SLEEVE immediately conveys information regarding a quality, feature, characteristic, or function of applicant's goods. The evidence showed that some metal pipe fittings and venting parts are known as "sleeves." Since EZ is merely the phonetic equivalent of "easy," and thus is essentially a synonym of "easy," the proposed mark informs consumers that the goods are not difficult to install. Several of applicant's competitors tout their pipe fittings as easy to install, and they should not be denied the opportunity to continue to do so. The proposed meanings of the mark offered by applicant "make no sense in the context of applicant's identified goods."

And so, the Board affirmed the refusal.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.

CAFC Affirms TTAB' s LEHMAN BROTHERS Ruling of No Abandonment and Likelihood of Confusion

The CAFC affirmed the TTAB's decision [TTABlogged here], sustaining an opposition to registration of the mark LEHMAN BROTHERS for beer, spirits, and bar and restaurant services, on the ground of likelihood of confusion with the identical mark used for various financial services. The appellate court also upheld the dismissal of Appellant Tiger Lily's counterclaims challenging Barclays' application to register the mark for financial services on the grounds of lack of bona fide intent, likelihood of confusion, and fraud. Tiger Lily Ventures Ltd. v. Barclays Capital Inc. and Barclays PLC, 2022 USPQ2d 513 (Fed. Cir. 2022) [precedential].

Barclays purchased the LEHMAN BROTHERS mark in 2008, after Lehman Brothers declared bankruptcy. Barclay then licensed the mark back to Lehman Brothers in connection with certain of the latter's retained operations. Tiger Lily filed its application to register on March 6, 2013, and Barclays applied to register the same mark for financial services on June 2, 2014.

Barclays had let the registrations for the mark lapse, and so Tiger Lily alleged that Barclays abandoned its mark, thereby making the mark available for Tiger Lily’s adoption and use and negating Barclays’ claim of priority. The Board found, however, that Barclays still possessed prior common law rights in the mark.

The CAFC first considered the Board's findings on abandonment and priority, ruling that substantial evidence supported the Board's conclusion that the LEHMAN BROTHERS mark had not been abandoned. The "decisive factor" was Tiger Lily's acknowledgement that the mark has been continuously used in the winding up of the affairs of at least one Lehman Brothers' affiliated company. Thus, Tiger Lily "essentially concedes that it cannot prove the 'nonuse' element" of its abandonment claim. Tiger Lily asserted that the bankruptcy proceedings will eventually end and Lehman Brothers will not emerge as a continuing enterprise, but the CAFC found this irrelevant, since use has not yet been discontinued. As to priority, since Barclays has not abandoned the mark, it enjoys priority.

Tiger Lily also challenged the Board's finding of likelihood of confusion, claiming that the Board committed a number of errors. The CAFC observed that the identity of the marks weighs heavily in the Section 2(d) analysis. As to the similarity of the involved goods and services, Barclays introduced extensive evidence of companies that have promoted financial services through use of their trademarks for alcohol, food, and beverages. Moreover, Lehman Brothers used its mark in connection with whisky and alcoholic beverages.

As a highly famous mark, LEHMAN BROTHERS merits a broad scope of protection. Although Tiger Lily may not be "actively 'confusing' consumers" it is seeking to take advantage of the fame of the LEHMAN BROTHERS mark.

Tiger Lily attempts to draw a distinction between "consumer recognition" as compared with "goodwill," and argues that it is actually trying to trade on the "bad will" associated with the LEHMAN BROTHERS mark. *** But we find no legal support for these subtle distinctions, and we thus find that Tiger Lily's attempts to capitalize on the fame of the LEHMAN BROTHERS mark weighs in favor of finding a likelihood of confusion.

In sum, substantial evidence supported the Board's DuPont findings regarding likelihood of confusion. "Moreover, Tiger Lily's attempt to benefit from the fame of the LEHMAN BROTHERS mark 'plays a dominant role in the process of balancing the DuPont factors."

With respect to Tiger Lily's lack-of-bona-fide intent claim, in light of the continuous use of the LEHMAN BROTHERS mark since 2008 and Barclays' capacity to offer financial services, the Board's finding that Tiger Lily failed to prove a lack of bona fide intent was supported by substantial evidence. Since Tiger Lily's fraud claim was predicated on Barclays' alleged lack of bona fide intent, it too failed.

And so, the CAFC affirmed the Board's decision with respect to Tiger Lily's appeal. Barclay's cross-appeal on the issues of Section 2(a) false association, dilution, and lack of bona fide intent was dismissed because Barclays cannot appeal from a judgment in which it prevailed. See Rule 2.81 of the Rules of Practice of the U.S. Court of Appeals for the Federal Circuit.

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TTABlogger comment: Why should Tiger Lily's intent play any role in the likelihood of confusion analysis?

Text Copyright John L. Welch 2022.

TTABlog Test: Are Entertainment Services and Clothing Related for Section 2(d) Purposes?

[Here is the 100th TTAB decision this year in a Section 2(d) appeal. So far the Board has reversed four of the refusals.] The USPTO refused to register the mark THE NOMADIC MOVEMENT for entertainment services featuring travel and sustainable living, finding confusion likely with the registered mark NOMADIC MOVEMENT for "Headwear; Headwear, namely, hats and caps; Hoodies; Shorts; T-shirts; Tank tops; Hooded sweat shirts." How do you think this appeal came out? In re Jordan Saglio, Serial No. 88593965 (May 31, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Marks: The word THE is "generally not significant in distinguishing one mark from another." Applicant Saglio argued that NOMADIC MOVEMENT connotes roaming from place to place, whereas THE NOMADIC MOVEMENT connotes the advancement of a shared idea of abandoning traditional home and work like for mobile, technology-based life anywhere. The Board noted, however, that there was no evidence of record to support a finding that addition of the word THE has such an impact on the connotations of applicant's mark. Moreover, even if the marks have different connotations, the similarity in appearance and sound would still strongly support a finding of likely confusion.

The Goods and Services: Examining Attorney Marlene Bell submitted evidence of third-party use of the same mark and trade name to identify the source of entertainment services and clothing: NINJA KIDZ!, THE PACK, DOCTOR WHO, GAME OF THRONES, SQUID GAME, NATIONAL GEOGRAPHIC, and SMITHSONIAN. She also submitted thirty use-based registrations covering both clothing and entertainment services.

Applicant Saglio argued that the Examining Attorney's rationale would prevent use of any mark similar to a clothing brand, for any goods, because mark holders typically use their marks on apparel for promotional purposes. The Board pointed out that here the evidence showed the current licensing and marketing practices of providing ancillary goods as tie-ins to entertainment services).

Channels of Trade: Applicant Saglio attempted to distinguish the actual channels of trade, but there were no limitations in the application or cited registration as to trade channels, and so the Board must presume that the involved services and goods travel in all normal channels. Moreover, the evidence established at least on common trade channel: websites of entertainment outlets and content producers who also market promotional clothing items.

Conclusion: Finding confusion likely, the Board affirmed the refusal to register.

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TTABlogger comment: Did anyone ever make a movie as a tie-in to a t-shirt or hoodie?

Text Copyright John L. Welch 2022.

TTAB Posts June 2022 (Video) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled six oral hearings for the month of June 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.

June 7, 2022 - 11 AM: Spring Meadow Nursery, Inc. v. Plant Development Services, Inc., Opposition No. 91252622 [Section 2(d) opposition to registration of JEWEL BOX for "live plants, namely, distylium," in view of the registered marks GEM BOX and JUKE BOX for "live plants."]

 

June 16, 2022 - 1 PM: DC Comics v. Cellular Nerd LLC dba Cellular Nerd, Opposition No. 91246950 [Opposition to registration of the mark shown below, for "Installation, maintenance and repair of cell phone related hardware" on the grounds of likelihood of confusion with, and likely dilution of, the S-shield design mark of the Superman character].

June 21, 2022 - 10 AM: In re Panini America, Inc., Serial No. 90013399 [Refusal to register THE ROOKIES on the Supplemental Register, for "Collectible trading cards; Sports trading cards"[ROOKIES Disclaimed] on the ground of genericness].

June 23, 2022 - 2 PM: Guess?IP Holder L.P. and Guess?, Inc. v. JHO Intellectual Property Holding, LLC, Serial No. 90002764 [Section 2(d) opposition to registration of GUESS for dietary and nutritional supplements, energy drinks, and sports drinks, in view of opposer's alleged common law rights in the mark GUESS for spring water and bottled water.]

June 29, 2022 - 1 PM: Shawn Hayden v. WorkSuites - IP Holdings LLC, Opposition No. 91249435 [Section 2(d) opposition to registration of WORKSUITES for providing virtual office services and leasing of office space, in view of the registered mark SUITEWORK for rental of office space and management services regarding same.]

 
June 30, 2022 - 11 AM: Major League Baseball Players Association v. Michael P. Chizena, Oppositions Nos. 91240180, 91242556, and 91243244  [Opposition to registration of HERE COMES THE JUDGE, ALL RISE, and the design mark shown below, for various clothing items, on the ground of likelihood of confusion with, and likelihood of dilution-by-blurring of, the marks ALL RISE, HERE COMES THE JUDGE, JUDGE, and marks containing a combination of baseball and judicial indicia, owned by New York Yankee Aaron Judge, and also on the ground of false association under Section 2(a).]

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TTABlog comment: Any predictions? See any WYHAs or WYHOs?

Text Copyright John L. Welch 2022.

TTABlog Test: Are Drinking Game Equipment and Sports Balls Related for Section 2(d) Purposes?

The USPTO refused registration of the mark BREWSKI (in standard characters) for "Equipment sold as a unit for playing drinking games comprised of an apparatus for holding multiple cups," finding confusion likely with the registered mark BREWSKI BROTHERS for "sports balls" [BROTHERS disclaimed]. On appeal, applicant maintained that the marks engender different commercial impressions because BROTHERS is the dominant term in the cited mark, and further that the goods are significantly dissimilar, since sports balls are used "for sports where a ball is essential" but not for drinking games. How do you think this appeal came out? In re P&P Imports LLC, Serial No. 88915014 (May 26, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Marks: The Board found BREWSKI to be the dominant element in the cited mark; the disclaimed term BROTHERS acts as a familial designation having no source identifying significance. Moreover, the first word in the mark is more likely to be impressed upon the minds of consumers. There was no evidence that consumers would focus on the cadence or alliteration of the cited mark. The Board concluded that the marks are "overall very similar."

The Goods: Applicant described its goods as a connected drinking apparatus with cups, for use in a drinking games that allow users to drink in unison. It insisted that "no ball of any kind is used with applicant's goods." Examining Attorney Pauline Ha provided third-party website evidence showing that various entities make, produce, or provide both drinking game equipment and sports balls under the same mark.

The Board observed that "sports balls" would include "ping pong balls" [ed. note: I believe PING-PONG is a registered trademark; should the term "table tennis" be used instead?], and the evidence showed that"ping pong balls" can be used for a variety of games, including drinking "pong" games. According to Wikipedia, beer pong requires a table, plastic cups, and "ping pong balls." Moreover, consumers could purchase applicant's goods and registrant's balls at the same time in order to offer a variety of games at a party.

Channels of Trade: Applicant argued that the channels of trade do not overlap, since sports balls are sold in sporting goods stores, while applicant's goods would be sold by drinkware distributors or novelty party supply stores and alcohol and beverage markets. The Board disagreed. The evidence showed that sports balls may be sold in stores and on websites that offer games, including drinking games.

Conditions of Sale: The Board rejected applicant's argument that the purchasers of its goods would be highly sophisticated and can readily differential between sports balls and a drinking apparatus [Depends on how much brewski had been consumed, I think - ed,]. The Board noted the lack of evidence for that assertion, and also pointed out that it must make its determination on this issued based on the least sophisticated consumer.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: I don't agree with this decision. I think the differences in the marks and the goods leads to a conclusion of no likelihood of confusion. The Board's mechanical approach to the analysis is unconvincing.

Text Copyright John L. Welch 2022.