TTABlog Test: Are Jewelry and Clothing Related to Drinking Vessels and Tableware for Section 2(d) Purposes?

The USPTO refused to register the mark ZTA for jewelry and clothing, finding confusion likely with the identical mark, registered for, inter alia, mugs, cups, bottles, drinkware, and tableware. The fact that the marks are identical weighed "heavily" in favor of affirmance of the refusal. But what about the goods? How do you think this came out? In re Zeta Tau Alpha Sorority, Serial No. 90090117 (August 29, 2022) [not precedential] (Opinion by Judge Linda A. Kuczma). [On May 8 2024, the CAFC affirmed this decision in a per curiam order].

Of course, when the involved marks are identical, a lesser degree of similarity between the goods is necessary to support a Section 2(d) refusal. Moreover, the goods "do not have to be similar or competitive, or even offered through the same channels of trade, in order to find that there is a likelihood of confusion."

[E]ven if the goods in question are different from one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods. It is this sense of relatedness that matters in the likelihood of confusion analysis. Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000).

Examining Attorney Alberto I. Manca submitted website evidence showing that "fashion labels" (LILLY PULITZER, LIFE IS GOOD, KATE SPADE, SIMPLY SOUTHERN, VERA BRADLEY) and sororities (PI BET PHI, ALPHA DELTA PI) offer jewelry, clothing, drinking vessels, cups, and the like under their respective trademarks. "Therefore, customers familiar with Registrant’s goods may well expect that Applicant’s goods offered under an identical mark are related and would be provided by Registrant or vice versa i.e., that Registrant’s goods are provided by Applicant."

The Examining Attorney also submitted fifteen active, use-based third-party registrations for marks registered for use in connection with those same or similar goods. 

The Board therefore found that the involved goods are related for Section 2(d) purposes.

While the goods offered under Applicant’s and Registrant’s identical marks are not identical or competitive, as noted, the record demonstrates more than enough of a relationship between them that they would be likely to be seen by the same consumers under circumstances that would lead them to believe that they originate from the same source.

Applicant argued that ZTA is an "affinity mark" like those commonly licensed by sororities, fraternities, and colleges "to multiple manufacturers to sponsor or endorse the production of official merchandise for members, alumni, supporters and so forth to acquire for the purpose of displaying the member, alumnus, or supporter’s ‘affinity’ for their respective fraternity, sorority, college or university." The Board agreed that "The licensing of commercial trademarks for use on “collateral” products, such as Applicant’s goods, which are unrelated in nature to the services on which its mark is normally used has become a common practice." However, it was unimpressed by the applicant's argument.

Aside from the fact that there is no evidence supporting different consumers for Applicant’s and Registrant’s goods, and given their relationship, and in the absence of any limitations as to classes of consumers in Applicant’s application, at least some of Applicant’s customers are part of the general consuming public for Registrant’s goods. As stated, to the extent that Applicant’s and Registrant’s goods are offered to the general consuming public, the channels of trade and classes of purchasers overlap.

And so, the Board affirmed the refusal.

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TTABlogger comment: It appears that, by citing a number of "fashion labels," one can show most any consumer product to be related to clothing and jewelry.

Text Copyright John L. Welch 2022.

Precedential No. 24: "PURPLE RAIN" for Dietary Supplements Falsely Suggests a Connection with Prince, Says TTAB

Finding that the proposed mark PURPLE RAIN for dietary and nutritional supplements falsely suggests a connection with the famous musician and performer Prince, the Board granted Opposers' motion for summary judgment under Section 2(a) of the Trademark Act. The record contained "copious, unrebutted evidence of Prince’s fame among the general consuming public and his unique association with the words PURPLE RAIN." The Board agreed with Opposers that “[b]ecause purchasers are accustomed to celebrity licensing, they may presume a connection with a celebrity even though the goods have no relation to the reason for the celebrity’s fame." NPG Records, LLC and Paisley Park Enterprises, LLC v. JHO Intellectual Property Holdings LLC, 2022 USPQ2d 770 (TTAB 2022) [precedential].

Section 2(a), in relevant part, prohibits registration of “matter which may . . . falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols . . . .” In this case, Opposers had to establish there was no genuine dispute that:

1. Applicant’s mark PURPLE RAIN is the same or a close approximation of Prince’s name or identity
2. The mark would be recognized as such, in that it points uniquely and unmistakably to Prince;
3. Opposers are not connected with the goods sold by Applicant or Applicant’s other activities under the PURPLE RAIN mark; and
4. PURPLE RAIN is of sufficient fame or reputation that, when Applicant’s mark is used in connection with its goods, a connection with Prince would be presumed.

As to the first element, the evidence of use of the term PURPLE RAIN by Prince included his album, a movie, and sales of associated merchandise using the term, as well as survey results showing that the public commonly associates the term PURPLE RAIN with Prince. The Board therefore found that PURPLE RAIN is widely recognized as synonymous with Prince.

As to the second element, there was "plentiful evidence of the notoriety of Prince’s PURPLE RAIN song and PURPLE RAIN movie," as well as evidence of substantial merchandising efforts "dovetailing the song and movie and the connection to Prince." Opposers' survey results showed that a significant percentage of the general public (66.3%) recognizes PURPLE RAIN as a reference to Prince. And so, the Board found that PURPLE RAIN points uniquely and unmistakably to Prince.

As to the third element, the evidence was uncontroverted that Prince is not connected with Applicant’s activities or the goods provided, or intended to be provided, under PURPLE RAIN.

As to the fourth element, the Board observed that “[t]here is no prerequisite that the institution or person actually provide the goods in order to find that an applicant’s mark creates a false suggestion of a connection. Nor does it ‘require proof that a prior user’s reputation ‘is closely related to an applicant’s goods.’” Int’l Watchman, Inc., 2021 USPQ2d 1171, at *25 (citing Piano Factory Grp., 2021 USPQ2d 913, at *14 (internal citation omitted))."

If the applicant’s goods are of a type that consumers would associate . . . in some fashion with a sufficiently famous person or institution, then we may infer that purchasers of the goods or services would be misled into making a false connection with the named party. Int’l Watchman, Inc., 2021 USPQ2d 1171, at *25 (citing cases).

The Board agreed with Opposers that “[b]ecause purchasers are accustomed to celebrity licensing, they may presume a connection with a celebrity even though the goods have no relation to the celebrity's fame." Opposers also showed that they use and license PURPLE RAIN for a variety of consumer products. The Board found that "consumers encountering Applicant’s mark, when used in connection with Applicant’s goods, will presume a connection between PURPLE RAIN and Prince under the fourth factor of Trademark Act Section 2(a)."

In conclusion, the Board found no genuine dispute of material fact as to the false suggestion of a connection claim under Trademark Act Section 2(a), and so it entered judgment in favor of Opposers, sustaining the opposition.

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TTABlogger comment: Opposer Paisley Park owns rights in the name, image and likeness of Prince Rogers Nelson (the musical artist commonly known as “Prince”), Opposer NPG owns a registrations for the mark PURPLE RAIN, and the two opposers jointly use PURPLE RAIN in licensing and merchandising,

Text Copyright John L. Welch 2022.

Precedential No. 23: FUCK Fails to Function As a Source Indicator for Jewelry, Bags, and Retail Services, Says TTAB

Erik Brunetti, famous in the trademark world for knocking the scandalous and immoral provision of Section 2(a) out of the Lanham Act [TTABlogged here], returned to the TTAB in this battle over the proposed mark FUCK for phone cases, jewelry, bags, and retail store services, in four separate applications. The Board affirmed each of the refusals to register on the ground that FUCK fails to function as a trademark, concluding that the word "fuck" is in such widespread use that it does not create the commercial impression of a source indicator, but rather expresses well-recognized, familiar sentiments. The Board rejected Brunetti's argument that the Supreme Court decision in the FUCT case requires reversal here, and it also rejected his claim of biased treatment by the Board. In re Erik Brunetti, 2022 USPQ2d 764 (TTAB 2022) [precedential] (Opinion by Judge Mark Lebow) (reconsideration denied, December 15, 2022).

The failure-to-function refusal was rather straightforward. The Board pointed out that Sections 1, 2, 3, and 45 of the Trademark Act serve as the statutory basis for the refusal. Sections 1 and 2 provide for registration of "trademark[s] by which goods of the applicant may be distinguished from the goods of others." Section 3 states that service marks are registrable "in the same manner and with the same effect as trademarks." Section 45 defines a "trademark" and a "service mark" as something that identifies and distinguishes goods and services from those of others.

If the evidence shows that consumers would not perceive the proposed mark as performing the Congressionally-defined functions of a trademark under Section 45, then, under Sections 1 and 2 – which all require 'trademarks' – such proposed marks may not be registered.

The Board and its reviewing courts have for decades held that "[s]logans and other terms that are considered to be merely informational in nature . . . are not registrable." Merely informational matter includes common terms that consumers are "accustomed to seeing used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments."

Examining Attorney Curtis W. French submitted evidence in two categories: evidence showing the ubiquity of the word FUCK in general, and evidence showing widespread use of the word FUCK for various consumer goods.

Applicant suggests that he intends to use FUCK . . . to critique capitalism, government, religion and pop culture. Applicant thus concedes that he intends to use FUCK as the word is commonly understood, to convey the sentiment he hopes prospective consumers of his goods and services will take away from its display. 

Applicant Brunetti offered several feeble and unsuccessful arguments seeking to undermine the evidence, and he also erroneously claimed that the Office found only that the word FUCK was "widely-used," but not that it failed to function as a trademark. He provided no evidence that rebutted the Examining Attorneys' showing regarding consumer perception of the word FUCK.

The record before us establishes that the word FUCK expresses well-recognized familiar sentiments and the relevant consumers are accustomed to seeing it in widespread use, by many different sources, on the kind of goods identified in the FUCK Applications. Consequently, we find that it does not create the commercial impression of a source indicator, and does not function as a trademark to distinguish Applicant’s goods and services in commerce and indicate their source. Team Jesus, 2020 USPQ2d 11489, at *18-19. Consequently, Applicant cannot appropriate the term exclusively to itself, denying others the ability to use it freely. “‘[I]t is the type of expression that should remain free for all to use.’” Univ. of Kentucky v. 40-0, LLC, 2021 USPQ2d 253, at *36 (quoting Eagle Crest, 96 USPQ2d at 1230).

The Board rejected Brunetti's contention that the Supreme Court's decision in Iancu v. Brunetti controls here. That case concerned only Section 2(a)'s prohibition of registration of marks containing scandalous matter.

Nothing in Iancu v. Brunetti requires the USPTO to register a term that would have been refused under Section 2(a) if it is otherwise unregistrable under other provisions of the statute. The First Amendment does not require the USPTO, through federal registration, to confer on any applicant the exclusive right to use an expressive term that fails to function as a mark and thereby deny others the ability to use it freely.

Brunetti claimed that the USPTO is biased against him: "[T]he PTO has granted dozens of registrations for FUCK. It just refuses to approve [Applicant's] application because he is [Applicant]." The Board was unmoved. All of the registered marks include other wording in addition to FUCK. In any event, the Office makes registrability determinations based on the particular mark, goods, and services in each case. Furthermore, the refusal at hand was issued not because Brunetti's uses the word FUCK, but on the word's failure to function as a trademark.

Applicant has not provided any evidence that plausibly suggests the USPTO maintains any bias against him for prevailing in his appeal of the Office’s refusal to register a different word (FUCT) based on a different statutory basis (Section 2(a)’s now invalidated scandalous and immoral provision), or is motivated by his exercise of his first amendment rights.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Next stop, the CAFC?

Text Copyright John L. Welch 2022.

"EL CABO" Character Name in TV Show Fails to Function as a Source Indicator for Entertainment Services

Continuing our scintillating series of failure-to-function rulings, the Board affirmed a refusal to register the proposed mark EL CABO, in standard character and composite form (shown below), for entertainment services. The Board found that Applicant's specimen of use "does not reflect that consumers of Applicant's services will perceive [either mark] as trademarks indicating . . . television entertainment services." In re Caracol Televisión S.A., Serial Nos. 87916944 and 879169481 (August 24, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Board observed that “a proposed trademark is registrable only if it functions as an identifier of the source of the applicant’s goods or services.” In re DePorter, 129 USPQ2d 1298, 1299 (TTAB 2019) (citing 15 U.S.C. §§ 1051, 1052, and 1127). Sections 1, 2, 3, and 45 of the Trademark Act provide the statutory basis for a refusal to register subject matter that fails to function as a service mark. “[N]ot every designation adopted with the intention that it performs a trademark function and even labeled as a trademark necessarily accomplishes that purpose….” Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973); see also Roux Labs., Inc. v. Clairol, Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970).

The critical inquiry in determining whether a designation functions as a mark is how the designation would be perceived by the relevant public. To make this determination we look to the specimens and other evidence of record showing how the designation is actually used in the marketplace. In re Eagle Crest Inc., 96 USPQ2d at 1229.

Examining Attorney John Hwang submitted screenshots from Wikipedia, listing the characters in Applicant's television series, The Cartel (also known as "El Cartel de los Sapos" or "The Cartel of Snitches"). The character names Milton Jimenez, alias El Cabo ("The Corporal), is third on the list. In applicant's specimen of use, "El Cabo" appears at the bottom of the web screenshot, in standard small font below the actor's name and next to a caricature depicting a man, with the term EL CABO appearing below it. By clicking on an arrow button, users can find other characters in the TV show.

The Board noted that fictitious or fanciful characters may function as source identifiers: e.g., a photograph of a performer wearing a consumer was found acceptable for entertainment services in In re Red Robin Enterprises, 22 USPQ 911, 914 (TTAB 1984). However, the use of such a character "must be perceived by the purchasing public not just as a character but also as a mark which identifies and distinguished the source of the goods and services."

Inspecting the specimen of use closely, the Board noted that it clearly displays the term "Cast" about the name of the actor who plays El Cabo. In short, the specimen does not use either the word mark EL CABO or the composite mark as a source indicator for the television program.

We emphasize that a proposed mark must not solely “identify” the services but must also “indicate the source of the services.” 15 U.S.C. § 1127. Applicant’s specimens identify Applicant’s television entertainment services, but do so in connection with the term El Cartel. The applied-for marks, even if they do appear on the same page, denote a character in that television series, and do not indicate the source of the services.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.

TTAB Reverses Failure-to-Function Refusal of BLACK BIRTHING BILL OF RIGHTS for Promotional Services

In a rare reversal of a failure-to-function refusal, the Board overturned the USPTO's refusal to register the mark BLACK BIRTHING BILL OF RIGHTS for "Promoting public awareness of the rights and needs of Black women and birthing persons in connection with maternal and postpartum care by means of public advocacy; Promoting the interests of Black women and birthing persons in connection with maternal and post-partum care by means of public advocacy."  The Board agreed with the applicant that the specimens show the mark in use in rendering the identified services and it identifies the applicant as the source of those services In re National Association to Advance Black Birth, Serial No. 90581377 (August 23, 2022) [not precedential] (Opinion by Judge Thomas Shaw).

Applicant is a non-profit entity promoting improvements in Black maternal and infant health care. It created the BLACK BIRTHING BILL OF RIGHTS, identifying twenty “rights” to which all expecting Black women are entitled. Applicant uses social media to further its mission of promoting and advocating for improved Black maternal and infant health care.

The Board found that applicant’s social media posts featuring the BLACK BIRTHING BILL OF RIGHTS promote Black maternal and infant health care and are directed to the public at large, including both expectant mothers and care givers. For example, one Instagram post encourages donations to support the applicant's advocacy:

It’s giving Tuesday! #The NAABB’s advocacy and programming efforts such as, the Black Birthing Bill of Rights, is imperative to ensuring that each Black birthing person knows their rights and to have the tools to confidently exercise these rights during this fearful #COVID19 season and into the future.

The Examining Attorney argued that the phrase is merely informational wording identifying the set of rights promoted by applicant's services. She took particular issue with the fact that the mark will be used by third parties. The Board disagreed.

[T]he fact that at least six other 'Bill of Rights' marks have registered for a variety of services—including one for 'public advocacy to promote awareness of credit, debit and payment card processing practices'—suggests that there is nothing inherently unregistrable about these kinds of marks.

As to third-party use, the Board noted that applicant’s “posting guidelines” for third-party use of the BLACK BIRTHING BILL OF RIGHTS seek to "ensure that the proposed mark will be associated with Applicant’s efforts to promote Black maternal and infant health care."

And so, the Board reversed the refusal to register.

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TTABlogger comment: Interesting application of the "used in the rendering of services" argument.

Text Copyright John L. Welch 2022.

Lotus-Shaped Acupressure Mat Product Design Lacks Acquired Distinctiveness and Fails to Function as a Service Mark

The Board affirmed refusals to register the product design shown below as a trademark for acupressure mats and pillows, and as a service mark for retail store services featuring those goods, finding that the product shape lacked acquired distinctiveness as a trademark and failed to function as a service mark. The mark comprises "a three-dimensional configuration comprising a stylized lotus flower." This blog post will attempt to hit the high points of the 75-page decision. In re PTM Guard, SIA, Serial No. 79248407 (August 22, 2022) [not precedential] (Opinion by Judge Christopher Larkin).

Acquired Distinctiveness: The record showed that "the lotus configuration appears in a repeating arrangement on applicant’s goods and each single lotus configuration serves as an acupressure apparatus which collectively produces a massaging effect when applicant’s goods are in use." Because a product configuration cannot be inherently distinctive, the sole issue was whether the proposed mark had acquired distinctiveness.

The Board discussed at length the applicant's evidence, applying the Converse factors. The record showed "a substantial number of mats and pillows embodying lotus designs that are nearly identical in appearance to Applicant’s design." As to the applicant's advertising, most did "little more than show the products, and they do not establish that consumers associate the features of the applied-for mark with Applicant." Some did display an individual lotus flower, but there was nothing “that directs [Applicant’s] potential consumer in no uncertain terms to look for a certain feature to know that it is from that source."

Applicant's sales figures lacked competitive contextual information. There was no evidence or testimony to support Applicant's supposed enforcement efforts. And with regard to unsolicited media coverage, what little there was made virtually no mention of the lotus shape as a source identifier.

Based on a consideration of all the evidence properly in the record, the Board found that applicant fell "far short of showing" that its design has acquired distinctiveness within the meaning of Section 2(f) of the Trademark Act.

Failure-to-Function: In determining whether the proposed mark functions as a service mark, the crucial issue is the commercial impression that the product design makes on the relevant public: would it be perceived as a source indicator?

Here, the claimed service mark appears on social media pages through which Applicant appears to provide online retail store services “featuring . . . acupressure mats, acupressure pillows” and other goods. Consumers viewing Applicant’s use of its claimed service mark on these pages, on which goods embodying the design are shown, are more likely to view the claimed service mark as a close-up depiction of a feature of the goods than as an identifier of the source of the services of selling them.

And so, the Board affirmed both refusals.

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TTABlogger comment: Can you think of a product shape that functions as a service mark for retail store services offering that product? Maybe a food item for restaurant services?

Text Copyright John L. Welch 2022.

TTABlog Test: JEWEL BOX Confusable With GEM BOX? Anti-Aging Preparations Related to Clothing? ECO-BRICKS Merely Descriptive of Toy Blocks?

Here are three mildly interesting recent TTAB decisions. How do you think they came out? [Answers in first comment].

Lego Juris A/S v. Once Kids LLC, Opposition No. 91228548 (August 18, 2022) [not precedential] (Opinion by Judge Karen Kuhlke). [Opposition to registration of ECO-BRICKS for "toy building blocks" on the ground of Section 2(e)(1) mere descriptiveness and lack of acquired distinctiveness.]

Frame La Brands, LLC v. Sveba S.r.l., Vincenzo Salamone, Ornella Sorrentino, and Florin-Dumitru Suceava, Opposition No. 91245241 (August 18, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman).[Section 2(d) opposition to registration of FRAME & Design for anti-aging preparations [shown first below], in view of the registered mark FRAME (stylized) for various clothing items [shown second below].]

Spring Meadow Nursery, Inc. v. Plant Development Services, Inc., Opposition No. 91252622 (August 15, 2022) [not precedential] (Opinion by Judge Micahel B. Adlin) [Opposition to JEWEL BOX for "live plants, namely distylium," in view of the registered mark GEM BOX for "live plants."]

 
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TTABlog comment: How did you do?

Text Copyright John L. Welch 2022.

"BUILT BY GOD" Fails to Function as a Trademark for Clothing, Says TTAB

We haven't had a failure-to-function case in a while. Here, the Board affirmed a refusal to register the proposed mark BUILT BY GOD for various clothing items, finding that the phrase fails to function as a source indicator for the identified goods. Applicant Kollins Ezekh claimed that there was little third-party use of the mark, and further that the phrase is "associated with the acclaimed fitness services offered by the Applicant on www.builtbygod.tv." Despite applicant's spirited argument, the Board found that "the phrase is commonly used to express devotion or appreciation, rather than to identify source, [and so] consumers would be unlikely to perceive it as a source identifier." In re Kollins Ezekh, Serial No. 88759272 (August 18, 2022) [not precedential] (Opinion by Judge Michael B. Adlin).

The applicant feebly objected to the evidence submitted by Examining Attorney Shana McNamara as being "cumulative" or "duplicative," but the Board was unmoved. The evidence was not duplicative, and it showed third-party uses additional to those in the Examining Attorney's first batch of evidence. Applicant primarily argued that there was little if any third-party use of BUILT BY GOD, and so the Board observed that the supposedly "cumulative" evidence was very relevant.

Of course, the key question for the Board was whether "the relevant public, i.e., purchasers or potential purchasers of Applicant’s clothing, would perceive the phrase as identifying the source or origin of Applicant’s goods." 

According to the Board, there was "no question that the phrase is religiously significant, to Christians especially." This was shown not only by the association of the phrase with Bible passages, but also from religious sermons and commentaries that focused on or were named for the phrase. 

Moreover, even putting aside the religious significance of the phrase, "its widespread and typically ornamental use by third parties for clothing and other products is by itself a sufficient basis to find that it fails to function as a trademark."

The Board was not persuaded by the applicant's argument that the Office did not show the proposed mark to be widely used because the evidence did not establish how many products bearing BUILT BY GOD have been sold, and because the web listings for BUILT BY GOD products show an insubstantial number of reviews. The Board pointed out that in prior, analogous cases there was similarly no evidence specifically quantifying consumer exposure through sales information or reviews.

Finally, the Board observed that the granting of a registration here "would achieve the absurd result of hampering others in their use of the common phrase BUILT BY GOD for clothing or related products."

In short, the evidence shows that the phrase BUILT BY GOD is religiously significant and too commonly used, in connection with clothing for it to be perceived as a trademark, and Applicant should not be able to deny competitors (who according to the record also use the phrase) the right to use it freely. The phrase fails to function as a trademark under Sections 1, 2 and 45 of the Trademark Act.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2022.

Crowded Field of Third-Party Uses Yields Reversal of Section 2(d) Refusal of EVOLVE LIFE SYSTEMS for Personal Development Counseling

In a "very close case," the Board reversed a Section 2(d) refusal of the mark EVOLVE LIFE SYSTEMS for counseling services in the field of personal development [SYSTEMS disclaimed], finding confusion unlikely with the registered mark for EVOLVED LYFE for legally identical services [LIFE disclaimed] - i.e., life coaching. The Board found the differences between the marks to be "minute," but the evidence of third-party use and registration of EVOLVE LIFE-formative marks led the Board to its ultimate conclusion. In re Craig S. Copeland, Serial No. 90042595 (August 15, 2022) [not precedential] (Opinion by Judge David K. Heasley).

Dictionary definitions and third-party evidence indicated that the formative EVOLVE LIFE is "both conceptually and commercially weak in the field of life coaching." The phrase suggests a desired result of life coaching services: "to help one evolve for the better, progressively improving the trajectory of one's life."

The suggestive meaning of "evolve life" was reinforced by 35 third-party websites referred to by Applicant Copeland during prosecution. Copeland also submitted eight use-based third-party registrations for EVOLVE-formative marks, five of which the Board found relevant. These registrations bear on the issue of conceptual weakness, not on commercial weakness. Because they were few in number, and because the marks contained significantly different wording, the Board gave them little weight standing alone, but coupled with the dictionary definitions, they helped confirm the suggestive meaning of "evolve[d]."

Along with the third-party usage, the third-party registrations "may be considered to demonstrate the meaning of a word ... [has] a well-known and commonly understood meaning ... and that the word has been chosen to convey that meaning."

The examining attorney distinguished some of the third-party uses because of additional wording or differing services, and he contended that the remaining uses fell short of the "ubiquitous" or "considerable" amount of use found to be probative in Juice Generation or Jack Wolfskin. The Board disagreed.

Applicant has demonstrated multiple third-party variations on the term EVOLVE[D] LIFE in connection with life coaching services. Admittedly, this number is less than the five hundred-plus third-party examples in Broadway Chicken, 38 USPQ2d at 1560-61. But the number is comparable to Juice Generation, 115 USPQ2d at 1674 (PEACE and LOVE weak terms when used in connection with juice and restaurant services due to 26 third-party registrations and uses of marks containing the words “peace” and “love” used for similar goods and services).

The Board concluded that the cited mark falls on the lower end of the "spectrum from very strong to very weak."

Turning to the marks, the Board noted that the "minute differences" in the marks "might not suffice to distinguish marks of average conceptual strength." But in light of the weakness of marks containing EVOLVE in combination with LIFE, the Board found that "purchasers are able to distinguish among various [similar] marks by looking at other elements of the marks." Quoting Knight Textile v. Jones Inc., 75 USPQ2d at 1316.

The Board concluded that confusion is unlikely, and so it reversed the refusal. The Board noted that this decision would not preclude it "from reaching a different result, on a different record, in an opposition or cancellation proceeding."

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TTABlogger comment: I'm not convinced.

Text Copyright John L. Welch 2022.

Precedential No. 22: TTAB Grants Petition to Cancel CHENOA FUND Registration for Mortgage Services Due to Non-Ownership

The Board granted a petition for cancellation of a registration for the mark shown below for mortgage financing services, finding that Petitioner CBC Mortgage was the first and only user of the mark for those services. Respondent TMRR created and promoted the mark but it did not use the mark in rendering mortgage services, nor was it permitted to do so by the agreement between the parties. CBC Mortgage Agency v. TMRR, LLC, 2022 USPQ2d 748 (TTAB 2022) [precedential] (Opinion by Judge Michael B. Adlin).

TMRR conceived of a mortgage financing program that would be run by a Native American Tribe, and it contracted with the Paiute Indian Tribe of Utah to implement and operate the program. TMRR created the mark CHENOA FUND and the logo. In 2013 the Tribe and TMRR signed a Management Services Agreement (MSA) to provide the program, and Petitioner CBC Mortgage was formed as a subsidiary of the Tribe, pursuant to the MSA. Under the MSA, TMRR is deemed CBC's "agent" and "contracted day-to-day operator."

The Board observed that only the owner of a mark may file an application to register. An application filed by one who is not the owner of the mark is a "void application." In deciding the issue of ownership, the Board was guided by Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab. Rehab., 859 F.3d 1023, 123 USPQ2d 1024, 1028 (Fed. Cir. 2017), which (in a slightly different context) set forth "three main factors to be considered in ownership disputes surrounding service marks as between a departing member and the remnant group: (1) the parties’ objective intentions or expectations; (2) who the public associates with the mark; and (3) to whom the public looks to stand behind the quality of goods or services offered under the mark."

As to the first factor, the MSA unambiguously established the intent and expectation of the parties that the petitioner would solely own the CHENOA FUND mark. Those intentions and expectations are also reflected in promotional and advertising material for the program.

Petitioner CBC Mortgage, not the respondent, was first to offer mortgage services under the mark. The fact that TMRR created the mark two years earlier and "promoted the mark" in seeking an entity that would offer the services does not mean it owned the mark. "Rather, a service mark must be 'used' in commerce, meaning not only that it must be 'used or displayed in the sale or advertising of services,' but also that the services must be 'rendered in commerce.' 15 U.S.C. § 1127."

As to element (2) and (3) of the Lyons test, the Board pointed out that Respondent TMRR "operates behind the scenes, out of public view," while CBC Mortgage is "out front, engaging with the public via materials that identify Petitioner, and only Petitioner, as the source of the mortgage financing services rendered in connection with the CHENOA FUND mark." Thus, it is Petitioner CBC Mortgage that the public associates with the mark and to whom the public looks to stand behind the quality of the services.

And so, the Board found that Respondent TMRR was not the owner of the mark when the underlying application was filed, and the subject registration was therefore void ab initio.

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TTABlogger comment: Pretty straightforward, don't you think?

Text Copyright John L. Welch 2022.

TTABlog Test: Is AMERICAN STOGIES Primarily Geographically Deceptively Misdescriptive of Cigars Not from the USA?

The USPTO refused to register the proposed mark AMERICAN STOGIES for cigars [STOGIES disclaimed], deeming the mark to be primarily geographically deceptively misdescriptive under Section 2(e)(3). Applicant argued that the word "American" is not misdescriptive of its cigars because it is a legal entity in the Dominican Republic and its cigars are handmade in Nicaragua with premium Honduran and Nicaraguan long-filler tobaccos. How do you think this came out? In re Tabacalera Palma, Ltd., Serial No. 88866282 (August 15, 2022) [not precedential] (Opinion by Judge George C. Pologeorgis).

There are three elements that must be met to invoke the bar of Section 2(e)(3): (1) The primary significance of the mark is a generally known geographic location; (2) The goods do not come from the place identified in the mark, but the relevant public would be likely to believe that the goods originate there; and (3) The misrepresentation is a material factor in the purchaser's decision to buy the goods in question. In re Spirits Int’l N.V., 563 F.3d 1347, 90 U.S.P.Q.2d 1489, 1490-95 (Fed. Cir. 2009); In re California Innovations, 329 F.3d 1334, 66 U.S.P.Q.2d 1853, 1858 (Fed. Cir. 2003).

The Board noted that there was no evidence that relevant U.S. consumers would view the term "American," when used as part of a trademark, as indicating that the goods originate in countries other than the United States. Because the first and primary dictionary definition of "American" refers to the United States, the Board found that relevant consumers would reasonably believe that applicant's goods originate in the United States.

In light of the (limited) evidence that cigars are manufactured in the United States, the Board found that the relevant public is likely to believe that the goods originate in the United States.

As to materiality, however, the only evidence submitted by the USPTO comprised screenshots of a single website of a third-party cigar manufacturer in Ybor City, Florida. The Board found this evidence insufficient to meet the third prong of the Section 2(e)(3) test:

First, there is nothing in the record to indicate how often U.S. consumers have viewed this website. Second, the screenshots are merely an advertisement of a third party cigar manufacturer touting the attributes of its product. While the third party cigar manufacturer does state on its website that its cigar brand “honors America’s cigar tradition by rolling world class cigars in America using the finest American grown, aged, heirloom tobaccos," we find this language mere trade puffery and nonetheless does not demonstrate that (1) the United States is famous for producing a particular style of cigar or (2) that cigars manufactured in the United States are a principal product of the U.S or are of premium quality In sum the Examining Attorney has not submitted sufficient evidence on the critical element of materiality to support the refusal to register.

And so, the Board reversed the refusal. It noted, however, that its decision is not an "endorsement or approval" of the mark. "It is possible that we would reach a different result on a more complete record such as may be adduced in an inter partes proceeding."

Read comments and post your comment here.

TTABlogger comment: Sorry, PTO. No cigar. Seems like the Board was less than thrilled by the Office's effort in examining this application.

Text Copyright John L. Welch 2022.

TTABlog Test: Which of These Three Recent Section 2(d) Appeals Resulted in Reversal(s)?

So far this year, the Board has reversed 7 of the more than 130 Section 2(d) refusals that it has reviewed. Here are three recent Board decisions. At least one of the refusals was reversed. Which one(s)? [Results in first comment].

In re Public Joint Stock Company Acron, Serial No. 79301495 (August 4, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman) [Section 2(d) refusal of the mark ACRON in the sylized form shown below, for "Gardening; landscape gardening; horticulture services; aerial and surface spreading of fertilizers and other agricultural chemicals; plant nursery services," in view of the registered mark ACRON in standard form, for "Construction, namely construction consultancy, construction planning."]

In re Everfresh Beverages Inc., Serial No. 88900190 (August 2, 2022) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal of LA CROIX GUAVA SAO PAULO for "sparkling water" [GUAVA disclaimed], in view of the registered mark SAO PAULO STRAWBERRY LEMON for "non-alcoholic beverages containing fruit juices; fruit flavored beverages; fruit-flavored drinks; fruit based beverages; fruit based beverages enhanced with antioxidants; [and] fruit flavored beverages enhanced with antioxidants" [STRAWBERRY LEMON disclaimed].]

In re SBOX Holdings LLC, Serial No. 88886981 (August 10, 2022) [not precedential] (Opinion by Judge Cynthia C. Lynch) [Section 2(d) refusals of CAMBIO for "jewelry" and "retail store services featuring jewelry," in view of the registered mark CAMBIARE for "jewelry."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

Precedential No. 21: TTAB Orders Cancellation of OLD SCHOOL Registrations Due to Abandonment - Intent to Sell Mark Is Not Intent to Use

In an exhaustive and exhausting opinion, the Board granted petitions to cancel two registration for the mark OLD SCHOOL for various clothing items, on the ground of abandonment. The Board found that the registrant, despite claiming attempts to sell or license the mark, had discontinued use of the mark with an intent not to resume use. Vans, Inc. v. Branded, LLC, 2022 USPQ2d 742 (TTAB 2022) [precedential] (Opinion by Judge Marc A. Bergsman).

Under Section 45 of the Trademark Act, a mark shall be deemed abandoned "[w]hen its use has been discontinued with intent not to resume use. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. 'Use' of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark." [Emphasis added]. Abandonment is a question of fact; a petitioner has the burden to prove abandonment by a preponderance of the evidence.

Nonuse:  The Board combed through the record evidence in great detail [the opinion includes 250 footnotes citing to the record]. It noted that Branded "failed to introduce any credible documents showing use of the OLD SCHOOL mark to identify clothing or sale of clothing." Nor was there any evidence of advertising. Respondent's testimony regarding use was unpersuasive because of its inconsistencies, contradictions, and unspecific nature. Petitioner Vans thus established nonuse of the mark since 2008, a period of more than three years and thus prima facie evidence of abandonment. 

 

Petitioner’s prima facie case of abandonment eliminates its burden of establishing the intent element of abandonment as an initial part of its case and creates a rebuttable presumption that Respondent had no intent to commence or resume use of the OLD SCHOOL trademark. See Rivard v. Linville, 133 F.3d 1446, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998); Imperial Tobacco, 14 USPQ2d at 1393. The presumption shifts the burden to Respondent to introduce evidence that it intended to commence or resume use of its OLD SCHOOL trademark during the period of non-use. See Rivard v. Linvell, supra; Cerveceria India Inc. v. Cerveceria Centroamerica, S.A., 10 USPQ2d 1064, 1068 (TTAB 1989), aff’d, 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989).

Intent Not to Resume Use: A respondent, in order to prove an intent to commence or resume use, must provide evidence "with respect to either specific activities undertaken during the period of nonuse, or special circumstances which excuse nonuse." See Cerveceria, 10 USPQ2d at 1069. Here, Respondent Branded never intended to use the mark itself, but claimed that it always intended to license or sell it.

However, Branded could not prove its intent to resume use of its mark on the basis of its intent to sell the mark, "especially where the evidence that it 'used' the mark at all is so vague, inconsistent and unreliable."

[H]olding a mark with no use, with only an intent to sell the mark at some time in the future, is not proof of present use or intent to resume use. Under these circumstances, the buyer, not the seller, would be the party resuming use and such use would not relate back to the seller and establish the seller’s intent to resume use. Rather, any use commenced by the buyer of a mark not associated with a business or relevant portion thereof could, at best, establish only the buyer’s going-forward priority rights based on its own, and proper, first use of the mark.

 

The Board held that "an intent to sell a trademark separate and apart from an ongoing business supports finding an intent not to resume use (i.e., no intent to resume use) by the seller." Indeed, such an intent is evidence of "trafficking in trademarks," which the Trademark Act seeks to prevent by deeming such an assignment invalid and the involved application or registration void.

Respondent Branded also claimed that there were efforts to license the mark. The Board observed that a bona fide license of a mark "involves use of a mark by the licensee that inures to the benefit of the licensor," and constitutes "use" attributable to the trademark owner. See Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1035 (TTAB 2017) (“It is well-settled that use of a mark by a licensee inures to the benefit of the trademark owner.”); Quality Candy Shoppes/Buddy Squirrel of Wisc., Inc. v. Grande Foods, 90 USPQ2d at 1392.

However, because of the generality and vagueness of its testimony, the Board concluded that Branded failed to establish that it had an acceptable intent to resume use rather than an attempt to "reserve a right in the mark until the right deal to license [or] sell it outright came along." 

Branded contended that it had been policing its marks, which showed its intent to resume use, However, there was no evidence of the issuance of cease-and-desist letters, nor of the commencement of any litigation. Branded filed a single trademark opposition in 2009, but then filed none for the next nine years, until after this proceeding had commenced. The found this evidence of enforcement efforts "not persuasive."

Conclusion: The Board found that Petitioner Vans established by a preponderance of the evidence that Branded failed to use its OLD SCHOOL mark after acquiring the mark in 2008, and intended not to resume use. Therefore, Branded abandoned the mark in the two registrations involved in these proceedings.

Read comments and post your comment here.

TTABlogger comment: Is "intent not to resume use" (Section 45) the same thing as "no intent to resume use"?

Text Copyright John L. Welch 2022.

Precedential No. 20: TTAB Finds "SMART BEZEL" Merely Descriptive of Electronic Sensor Modules for Home Automation Systems

The Board affirmed a Section 2(e)(1) refusal to register the proposed mark SMART BEZEL, finding it to be merely descriptive of electronic sensor modules for controlling and integrating home automation systems, lighting systems, and smart heating systems [SMART disclaimed]. Applicant Zuma Array contended that its goods are not bezels and so the mark cannot describe the goods. The Board, however, found the mark to be descriptive of a use or purpose of the modules, and thus ineligible for registration without proof of acquired distinctiveness. In re Zuma Array Limited, 2020 USPQ2d 736 (TTAB 2022) [precedential] (Opinion by Judge Christopher Larkin).

Zuma acknowledged that "smart" is defined as "using a built in microprocessor" and the word "bezel" refers to "the outer frame of a computer screen, mobile phone or other electronic device." However, it asserted, "none of the applied for goods ... feature a 'bezel' at all." Examining Attorney Michael FitzSimons maintained that the proposed mark immediately conveys information about the goods because Zuma's sensors are designed to be incorporated into the bezels of various electronic appliances and lighting and heating systems, "to render the bezels ... capable of performing automatic operations for processing data or for achieving greater versatility."

The Board noted "with some surprise" that neither Zuma nor the Office discussed the nature of "electronic sensor modules." The Board took judicial notice that a "module" is "a usually packaged functional assembly of electronic components for use with other ... assemblies." It then observed that a proposed mark that describes the intended use or purpose of the goods with which it is used is merely descriptive.

Applicant Zuma's website states that "swap[ping] out a standard for a Smart Bezel (TM)" enables homeowners to access a wide range of built-in sensors to support environmental, presence and life safety applications." Thus, the word BEZEL refers to the type of device on which Zuma's sensors will be used.

The commercial context of Applicant’s use of its proposed mark on its website “demonstrates that a consumer would immediately understand the intended meaning of” SMART BEZEL for electronic sensor modules, N.C. Lottery, 123 USPQ2d at 1710, namely, that the modules are used to create a “smart bezel.”

Finally, the Board pointed out once again that even if Zuma were the first and only user of the proposed mark, the mark may still be shown to be merely descriptive of the identified goods.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: My computer monitor has a dumb bezel.

Text Copyright John L. Welch 2022.

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

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

In re Eric Fessell, Serial No. 90263552 (August 4, 2022) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Mere descriptiveness refusal of MOTHER NATURE for books featuring a fictional hero, namely, Mother Nature (class 16); clothing (Class 25); and videos and animations of the fictional character, Mother Nature (Class 41).]

In re MVN Entertainment L.P., Serial No. 90047473 (August 4, 2022) [not precedential] (Opinion by Judge Frances S. Wolfson). [Mere descriptiveness refusal of POWER PONY for "Ride on toys and accessories therefor; Rideable toy vehicles; Ride on toys having a seating portion removably attached to an electrically powered wheeled device."]

In re Brumis Imports, Inc., Serial No. 90174988 (August 5, 2022) [not precedential] (Opinion by Peter W. Cataldo). [Mere descriptiveness refusal of KTCHN. for kitchen knives and cutlery (Class 8) and for cookware, storage containers, kitchen tools, and the like (Class 9).]

 

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

N.D. Ohio Retains Jurisdiction over Plaintiff's Cancellation Claim After Granting Summary Judgment Aganst its Infringement and Unfair Competition Claims

Plaintiff Gerlach, Inc. asserted four claims in this civil action: unfair competition under the Lanham Act, trademark infringement, deceptive trade practices, and a claim for cancellation of two of defendant's registrations under Section 1119 of the Trademark Act. After the court entered summary judgment in favor of defendant on the first three claims, defendant argued that the court was then divested of jurisdiction over the cancellation claim. The court disagreed. Gerlach, Inc. v. Gerlach Maschinenbau GmbH, Case No 5:19-cv-0601 (August 5, 2022).

The court pointed out that jurisdiction is determined at the time the complaint is filed, and it had jurisdiction over all four claims at that time. A court may lose jurisdiction if, because of post-filing events, there is no longer a case or controversy. This principle does not apply here, however, because a live case or controversy remained as to the fourth count.

Section 119 provides that "in any action" involving a registered mark, the court may determine the right to registration. Based on the word "in any action," courts recognize that Section 1119 does not provide an independent source of federal jurisdiction. Usually a claim for cancellation is made as a counterclaim, but in any case nothing in Section 1119 or the case law disturbs the principle that jurisdiction is determined at the outset of a case, or otherwise divests the court of jurisdiction after summary judgment is granted on the claim(s) that gave the court jurisdiction in the first place.

Cases cited by the defendant hold that once the other claims are dismissed, a cancellation claim cannot stand. But in those cases the other claims were dismissed at the git-go: for example, for lack of standing or failure to state a claim under FRCP 12(b)(6). Nothing in those cases alters the rule that jurisdiction is determined at the outset of a case and there is no requirement to re-determine jurisdiction following summary judgment.

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TTABlogger comment: The court also rejected defendant's assertion that the case should be dismissed in favor of the pending, suspended cancellation proceeding before the TTAB. No dice. This case involves additional registrations.

Text Copyright John L. Welch 2022.

Precedential No. 19: TTAB Affirms Section 2(b) Refusals of Orange County "Unofficial" Insignia

Every five years or so, like clockwork, the Board decides a Section 2(b) case. This time it affirmed refusals to register the two proposed marks depicted below, for various governmental services (e.g., maintaining parks and libraries), on the ground that they constitute insignia of a governmental entity, i.e., a "municipality." The Board rejected the argument that Orange County is not a municipality, and also rejected the argument that because Orange County already has an "official" seal, these desigsn cannot be insignia of the county. County of Orange, 2022 USPQ2d 733 (TTAB 2022) [precedential] (Opinion by Judge Martha B. Allard).

Section 2(b) is a complete bar to registration of a mark that "[c]onsists of or comprises the flag or coat of arms or other insignia of . . . any State or municipality ...." It is based on the idea that "official government insignia . . . should not be registered as symbols of origin for commercial goods and services." 3 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 19:78 (5th ed. 2022).

Insignia?: The Board first focused on the "Circular Mark" on the left. It observed that the term "insignia" has multiple meanings, including "a distinguishing mark or sign" and "an emblem." The Circular Mark has not gone through the two-step process set out in the California Government Code to make it an "official seal" of Orange County. In fact, Orange County has an "official" seal, shown immediately below. The Board pointed out, however, that formal adoption as an "official" seal is not a requirement of Section 2(b).

Evidence submitted by Examining Attorney Christina Calloway showed that the Circular Mark is displayed prominently on the county's website, which provides links to various services offered by the county, such as business licenses and payment of property tax bills. It is also displayed on the website for the Clerk-Recorder's office, which manages many official government documents such as marriage licenses and death certificates. The Mark appears prominently on signage for county offices, in cluding the county courthouse, appears on the wall of the meeting room of the County Board of Supervisors, and on maps depicting the location of county offices.

[W]e find that the prominent and repeated display of the proposed Circular Mark to denote traditional government records, functions, and facilities would reasonably lead members of the general public to perceive the proposed mark as an “insignia” of Applicant within the meaning of Section 2(b) of the Trademark Act. As shown above, the proposed mark serves as “a distinguishing mark or sign” and an “emblem” of Applicant’s authority.

Municipality?: The Board took judicial notice of a definition of "municipality" as "[a] city, town, or other local political entity with the powers of self-government." Applicant acknowledged that the California Constitution provides that a county may have some such powers: for example, a county may make and enforce local ordinances, may sue and be sued, and may levy and collect taxes. And a county may adopt a charter. The Board therefore concluded that Orange County is a "municipality" for purposes of Section 2(b)

Applicant argued that state law should control because applicant was created and is governed by California law. The Board disagreed: “[I]n the absence of a plain indication to the contrary, it is to be assumed when Congress enacts a statute that it does not intend to make its application dependent on state law.” Dickerson v. New Banner Inst., Inc., 460 U.S. 103, 119 (1983) (cleaned up; citation omitted)." 

The Badge Mark: Unsurprisingly, as to applicant's other mark, the "Badge Mark," the same analysis applied.

 ead comments and post your comment here.

TTABlog comment: So a county is a municipality? Who knew?

Text Copyright John L. Welch 2022.

Precedential No. 18: TTAB Denies LAGUNA CANDLES Cancellation Petition, Finding Acquired Distinctiveness and No Claim Preclusion

Petitioner Flame & Wax found itself on the short end of the candlestick when the Board denied its petition for cancellation of a registration for the mark LAGUNA CANDLES for "aromatherapy candles; candles; scented candles" (CANDLES disclaimed), finding that the mark had acquired distinctiveness and therefore was not primarily geographically descriptive of the goods. The Board rejected petitioner's invocation of the doctrine of claim preclusion based on its earlier successful opposition to respondent's prior application to register the same mark, also on the ground of geographic descriptiveness, finding that this cancellation proceeding involved a different set of transactional facts. Flame & Wax, Inc. v. Laguna Candles, LLC, 2022 USPQ2d 714 (TTAB 2022) [precedential] (Opinion by Judge Albert Zervas).

Acquired Distinctiveness: Because the challenged registration was issued under Section 2(f), inherent distinctiveness was not an issue. See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (“where an applicant seeks registration on the basis of Section 2(f), the mark’s descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during prosecution presumes that the mark is descriptive.”). A registration may be cancelled if the mark lacks distinctiveness either when registered or at the time of trial. Neapco Inc. v. Dana Corp., 12 USPQ2d 1746, 1747 (TTAB 1989). The Board construed the petition as alleging geographical descriptiveness and acquired distinctiveness at the time of trial.

A cancellation petitioner bears the initial burden to establish a prima facie case of no distinctiveness. If it does so, then the burden shifts to the respondent to submit evidence and argument in its favor. However, the ultimate burden of proof remains with the petitioner. Cold War Museum, 92 USPQ2d at 1620.

The Board first was required to determine the degree of geographical descriptiveness of the mark LAGUNA CANDLES. See, for example, In re Boston Beer Co., 198 F.3d 1370, 1373 (Fed. Cir. 1999) (“[T]he greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning” (quoting In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1727 n.4 (Fed. Cir. 1990)). Relevant inquiries include evidence that the place named in the mark is very well known, and that third parties in the same industry use the geographic place name in connection with their goods. Spiritline Cruises, 2020 USPQ2d 48324, at *6.

There was no evidence of third-party uses, or newspaper or magazine articles referring to third-party use, of "Laguna." "Even the Orange County Wikipedia pages do not contain much information about Laguna Beach." Respondent's website states that it is located in Laguna Beach, while the petitioner presented testimony that Laguna Beach is often referred to as "Laguna." The Board concluded that the degree of geographic descriptiveness of LAGUNA CANDLES is "modest."

Because petitioner relied on outdated evidence (evidence submitted in the earlier opposition some nine years previously), the Board found that petitioner failed to make a prima facie case that overcame Respondent's claim of five years of continuous and substantially exclusive use. Moreover, even had petitioner made out a prima facie case, it did not overcome respondent's evidence that its sales and gross income figures have incresaed from 2011; from then until the trial, respondent sold 324,318 "units" and has received press coverage in several national magazines.

The Board concluded that petitioner had failed to carry its burden of proof.

Claim preclusion: In 2013, the TTAB sustained Flame & Wax's opposition to the same mark for candles on the ground of geographical descriptiveness [TTABlogged here]. Four months later, respondent filed a new application, claiming acquired distinctiveness under Section 2(f) based on continuous and substantially exclusive use of the mark for five years. Flame & Wax asserted that the prior TTAB decision established that the proposed mark is primarily geographically descriptive of petitioner's goods.

Claim preclusion requires (1) an identify of parties (or their privies), (2) an earlier final judgment of a claim on the merits, and (3) a second claim based on the same set of transactional facts as the first. Jet Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000).

The decision in the opposition named Candrice Hendricks as the defendant, but she is not a principal of the respondent LLC. Not to worry. Because of the family nature of the business and because respondent did not dispute privity, the Board deemed the first Jet factor to be satisfied. As to the second factor, the decision in the opposition was on the merits.

As to the third factor, the Board observed that after an adverse final decision, an applicant may make a second attempt to register a mark if circumstances have changed. In re Honeywell Inc., 8 USPQ2d 1600, 1601-02 (TTAB 1988); In re Oscar Mayer & Co., 171 USPQ 571 (TTAB 1971). The Board found no case, however, in which an applicant claims acquired distinctiveness in a second application filed only four months after a successful opposition.

The Board noted the additional evidence in this proceeding that was not present in the first proceeding: the challenged registration enjoys a presumption of validity under Section 7; a five-year declaration under Section 2(f) was included in the new application; the mark had been in use for seven more years; respondent's sales increased; and respondent had received additional press coverage.

The Board found that these facts "establish a recognizable change of circumstances from the time of trial in the Prior Opposition and the time of trial in the cancellation." And so, it concluded that the third Jet factor was not satisfied.

Fraud: Petitioner also claimed that respondent committed fraud on the USPTO when it represented in its second application that it was entitled to register the mark when it knew that the Board had already ruled that the mark was not registrable. The Board pointed out, however, that the examining attorney knew of the prior application and knew, or should have known, of the prior Board decision, and so respondent's statement "was not material to the registrability of the mark."

Moreover, petitioner failed to prove that respondent had a deceptive intent in making its representation. Respondent disclosed the prior application to the examining attorney, which suggests there was no deliberate concealment. Also, respondent may have believed that the change of circumstances permitted a second application.

PS: the cancellation petition was filed two days before the fifth anniversary of the registration, and five years and two months after the underlying application was published for opposition. So laches seems like a pretty good defense here.

And so, petitioner's fraud claim was denied.

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TTABlogger comment: The Board declined to reach respondent's affirmative defense of laches, but perhaps petitioner's delay may account for the Board seemingly leaning heavily in Respondent's favor.

PS: The petition for cancellation was filed two days before the 5th anniversary of the registration, and 5 years and two months after the underlying application was published for opposition.

Text Copyright John L. Welch 2022.

E.D. Pa. Dismisses PELOTON Complaint for Review of TTAB Decision Due to Lack of Personal Jurisdiction

Peloton Cold Brew filed a civil action for review of an adverse TTAB decision, under Section 1071(b) of the Trademark Act. [Complaint here]. The Board had entered judgment against Cold Brew as a discovery sanction [here], ordering cancellation of Cold Brew's registration for the mark PELOTON for "beverages made of coffee." The district court concluded that personal jurisdiction over Defendant Peloton Interactive was lacking, and so it dismissed the complaint. Peloton Cold Brew, Inc. v. Peloton Interactive, Inc., Civil Action No. 21-3579 (E.D. Pa. August 2, 2022).

As the Supreme Court has stated, “Federal courts ordinarily follow state law in determining the bounds of their jurisdiction over persons.” Daimler AG v. Bauman, 571 U.S. 117, 125 (2014). The Pennsylvania long-arm statute authorizes its courts to exercise personal jurisdiction to "the fullest extent allowed under the Constitution of the United States."

The court observed that there are two types of personal jurisdiction - general and specific. Plaintiff Cold Brew relied on general jurisdiction, which requires that a corporation's "affiliations with the state are so 'continuous and systematic' as to render [it] essentially at home in the forum state." The district court agreed with that defendant that the court lacked general jurisdiction over it.

The Supreme Court ... has determined that general jurisdiction over a corporate defendant under the Constitution is limited except in exceptional cases to the places where it is “fairly regarded as at home.” Daimler, 571 U.S. at 137 and 139 n.19. The two places, the paradigm fora, are the state of defendant’s incorporation and the state where defendant has its principal place of business.

Defendant Peloton Interactive, Inc. is a Delaware corporation with a principal place of business in New York. The court observed that, even if defendant has stores and warehouse, as plaintiff claimed, that is not enough to establish an exceptional case.

The court went on to consider specific jurisdiction, which requires that (1) defendant has purposely directed specific activities into the forum, (2) plaintiff's claim arises out of or is related to one of those activities, and (3) the assertion of jurisdiction comports with fair play and substantial justice.

Plaintiffs seeks review of the decision of the Trademark Trial and Appeal Board which cancelled Plaintiff's [registration]. The Trademark Trial and Appeal Board is located and acted in Virginia. That is the state where specific jurisdiction lies. Nothing concerning the adjudication in Virginia arose out of or related to defendant’s activities in Pennsylvania. Consequently, plaintiff cannot establish specific jurisdiction in this court.

And so the court dismissed the complaint.

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TTABlogger comment: Now what?

Text Copyright John L. Welch 2022.