The TTABlog<sup>®</sup>: October 2022

TTAB Reverses Section 2(d) Refusal of EPIGENE Due to Failure to Prove Relatedness of Gene Databases to Diagnostic Preparations and Apparatus

In the twelfth Section 2(d) reversal of 2022 (versus 156 affirmances), the Board overturned a Section 2(d) refusal to register the mark EPIGENE for "electronic database in the field of genes recorded on computer media," finding confusion not likely with the identical mark registered for "Diagnostic preparations for medical purposes" and for "Apparatus for medical diagnostic testing in the fields of cancer or other tissue-based diagnostic testing, cytology and cell-based testing." The Board found the USPTO's evidence insufficient to prove the similarity or relatedness of the goods or the degree of overlap of trade channels. In re Genebook LLC, Serial No. 90269018 (October 26, 2022) [not precedential] (Opinion by Judge Jonathan Hudis).

Since the marks are identical, a lesser degree of similarity between the involved goods is necessary to support a finding of likely confusion. "[T]here need only be a viable relationship between the goods to find that there is a likelihood of confusion."

The evidence showed that DNA testing companies provide their customers with "reports" of their DNA test results, but there was no evidence that these companies offer the databases identified in the subject application.

The USPTO relied on screen captures from two dozen websites, but the Board found this evidence inadequate to show that the involved goods "are related enough to cause confusion about their source or origin, even if they were promoted and sold under identical marks." The websites offering genetic testing services did not offer gene databases or provide information from gene databases. Some companies mentioned performing their services using what could be considered gene databases, but there was no offering of the goods in the cited registrations for sale in connection with those services. The sellers of genetic testing equipment did not offer gene databases or information from gene databases in connection with their products.

The USPTO provided no evidence that applicant's goods and registrant's goods are marketed in relative proximity, either on genetic testing websites or on websites offering genetic testing materials and equipment. Moreover, the buyers of the involved goods would be healthcare professionals or genomic researchers who are astute and careful in their purchasing decisions.

Balancing the relevant DuPont factors, the Board found that confusion is not likely, and so it reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: So the Section 2(d) affirmance rate is about 93% so far this year.

Text Copyright John L. Welch 2022.

TTAB Affirms Refusal to Register the Color Orange for Tool Accessory Trays Due to Lack of Acquired Distinctiveness

The Board upheld the USPTO's refusal to register the color orange as a trademark for "tool and tool accessory trays not made of metal sold empty and parts and fittings therefor," on the ground that the proposed mark "is not inherently distinctive, has not acquired distinctiveness, and thus fails to function as a trademark." In re Grypmat, Inc., Serial No. 90181331 (October 25, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington).

Applicant Grypmat did not claim inherent distinctiveness, probably because it recognized that a single color cannot be an inherently distinctive trademark. (Wal-Mart, Qualitex). Grypmat claimed acquired distinctiveness. The Board observed that "[t]o show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself." (quoting Steelbuilding.com).

The Board considered the six factors set forth in the CAFC's Converse decision in its analysis of the Section 2(f) issue:

Association with a particular source by actual purchasers (usually demonstrated by customer surveys);
Length, degree, and exclusivity of use;
Amount and manner of advertising;
Amount of sales and number of customers;
Intentional copying; and
Unsolicited media coverage of the product embodying the mark.

Grypmat claimed that the consumers of the goods are "mechanics, which amounts to a small sector of the consuming public." The Board, however, noted that there is no such limitation as to customers in the application at issue. The evidence submitted by Examining Attorney William Verhosek showed that non-metal tool trays are advertised and sold to homeowners and DIYers.

Grypmat claimed there were no other "comparative products" when it began selling its orange trays in 2016, but it conceded in light of the evidence that there are tool trays available in many colors. Moreover, the Board noted that an orange tray is sold at Home Depot under the brand name GEARWRENCH. The Board found that "Applicant's use of the color orange as applied to tool trays is not substantially exclusive." [Isn't that the end of the story? - ed.].

Grypmat claimed that at least three companies that were selling orange trays were intentional copiers "who found it to their pecuniary advantage to use the proprietary color orange for their look-alike trays, that serve the exact function" of the Grypmat trays. However, there was no evidence of intentional copying, nor was there any evidence of any attempt by Grypmat to enforce its alleged rights.

Because of the evidence showing the common use of different colors for tool trays, Grypmat faced a "more difficult task in demonstrating distinctiveness of its claimed color."

Grypmat complained that the Examining Attorney failed to consider its evidence of sales revenues and advertising revenues, but the Board agree with the Examining Attorney when he pointed out that none of the advertising or media attention acknowledged the color orange as an indicator of source. The lack of "look-for" advertising is not fatal to a claim of acquired distinctiveness, but it is a factor to be considered. Grypmat's sales figures and advertising data were "impressive," but that does not always equate to acquired distinctiveness. Moreover, there was no evidence putting those numbers into context within the relevant marketplace.

Based on the entire record, the Board concluded that Grypmat's evidence fell short of carrying its high burden to show acquired distinctiveness of the color orange for its tool trays. And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA? If not, it's awfully close.

Text Copyright John L. Welch 2022.

TTABlog Test: Is "LICKMAT" Merely Descriptive of Pet Feeding Receptacles and Pet Amusement Mats?

Okay, all you pet lovers, sink your teeth into this one. The USPTO refused to register the marks LICKMAT and LICK MAT, in standard character form, for "Feeding receptacles for pets, namely, bowls, dishes, and troughs, all for feeding" and for "Pet amusement mats being pet toys; pet toys; chewable pet toys," finding the marks to be merely descriptive of the goods under Section 2(e)(1). Applicant Innovative argued that there are no dictionary definitions for these terms, and further that both "lick" and "mat" have a wide variety of possible meanings. How you do think this came out? In re Innovative Pet Products Pty Ltd., Application Serial Nos. 90093231 and 90093238 (October 24, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Board first observed that the space between LICK and MAT in applicant's compound mark is inconsequential and "even if noticed or remembered by consumers does not distinguish these marks." Based on dictionary definitions of the two words, the Board concluded that "a LICKMAT or LICK MAT is a mat for licking." Examining Attorney Natalie M. Polzer submitted webpage evidence showing use of the term in connection with "lick mats" for dogs and cats, one webpage describing the mats as an "enrichment toy for dogs and cats, like puzzle toys," that encourage the animal to up the food from the mat.

The fact that the term LICK MAT does not appear in any dictionary is not dispositive if the USPTO can show that the term has a well understood and recognized meaning. Applicant Innovative contended that because the websites define what a lick mat is, the term does not immediately describe the products. The Board was unmoved.

There are two problems with Applicant’s contention. First, as a matter of good writing form, the authors define the term lick mat to introduce the reader to the subject of the article. Second, the definitions of lick mat by the authors of the articles uniformly define a lick mat as a mat that pets lick for feeding or amusement.

Finally, Innovative argued that "lick" and "mat" both have various possible meanings. However, the Board noted, descriptiveness is not analyzed in a vacuum but in the context of the goods in question. "Specifically, '[w]e ask ‘whether someone who knows what the goods and services are will understand the mark to convey information about them.''"

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WHYA? Perhaps the applicant should be more innovative in selecting its trademarks.

Text Copyright John L. Welch 2022.

Updated TTABlog Collection of Section 2(a) False Connection Cases

Here is an updated TTABlog collection of Section 2(a) false connection cases. There appears to be a fairly even split between cases in which a false connection is found, and those not. Of course, most of these decisions are not precedential, but we know that even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.

Section 2(a) provides, in pertinent part, that "[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it (a) consists of or comprises . . . matter which may . . . falsely suggest a connection with persons living or dead, institutions, beliefs, or national symbols."

Note that, for a Section 2(a) claim of false connection, a party need not allege proprietary rights in its name for purposes of standing. "[A] petitioner may have standing by virtue of who petitioner is, that is, its identity." Petróleos Mexicanos v. Intermix S.A., 97 USPQ2d 1403 (TTAB 2010). [TTABlogged here].

The Board basically follows the CAFC's decision in University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.1983), aff’g 213 USPQ 594 (TTAB 1982) [most recently followed in NPG Records, LLC and Paisley Park Enterprises, LLC v. JHO Intellectual Property Holdings LLC, 2022 USPQ2d 770 (TTAB 2022) [TTABlogged here]], by applying a four-part test in determining a "false connection" claim under Section 2(a):

1. The mark is the same as, or a close approximation of, the name of or identity previously used by another person;

2. The mark would be recognized as such because it points uniquely and unmistakably to that person;

3. The person named by the mark is not connected with the activities performed by the applicant under the mark; and,

4. The prior user’s name or identity is of sufficient fame or reputation that a connection with such person would be presumed when applicant’s mark is used on applicant’s goods.

Section 2(a) claims are not barred by the five-year statute of limitations of Section 14 of the Act, and therefore a cancellation petitioner will sometimes resort to a Section 2(a) claim when a Section 2(d) claim is already time-barred.

Section 2(a) False Connection Found:

Section 2(a) False Connection Not Found:

Text Copyright John L. Welch 2022.

WYHA? TTAB Affirms Section 2(d) Refusal of "B & Design" in View of Identical Mark, Both for Headphones

When an opinion in an ex parte appeal is only seven pages long, it's usually bad news for the applicant. Here, Applicant Solo Beats applied to register the mark shown below left, for "audio speakers; batteries and battery chargers; earphones; headphones; virtual reality headsets; game headphones," but the Board, not surprisingly, ”found applicant's mark likely to cause confusion with the registered mark shown below right, for "headphones." In re Soho Beats, LLC, Serial No. 88454219 (October 18, 2022) [not precedential] (Opinion by Judge Albert Zervas).

The Board perceptively found the marks to be identical and the goods overlapping (headphones). Soho Beats, appearing pro se, did not address the DuPont factors but instead argued that the owner of the cited registration no long exists as an operating business, that the owner procured the registration by impersonating the true owner, and that the registration was obtained via "fraud by impersonation."

Soho Beats asked the Board to investigate the "criminal activity of Apple's officers, directors, attorneys, and other employees . . . [and] the offenders be prosecuted and punished to the maximum extent of law;" and further that the registrations and applications owned by registrant "be annulled and revoked as the products of crime."

The Board, however, refused to hear this collateral attack on the cited registration, which enjoys a presumption of validity under Section 7(b). End of story.

Read comments and post your comment here

TTABlogger comment: If there can be "Super Lawyers," can there be "Super WYHAs?" Why not? This is one of them.

Text Copyright John L. Welch 2022.

TTAB Reverses Another Specimen Refusal: On Fourth Try, Webpage Specimen Suffices for CAPSIMOPS for Downloadable Software

The Board reversed a refusal to register the mark CAPSIMOPS for "Downloadable computer software for application and database integration in the educational field," finding that Applicant Capsim's fourth specimen of use displayed the mark with a description of the goods at a point of purchase where the consumer is given sufficient information and the means to consummate a purchase. In re Capsim Management Simulations, Inc., Serial No. 88410843 (October 19, 2022) [not precedential] (Opinion by Judge David K. Heasley).

Webpages displaying goods and their trademark, and providing for on-line ordering, constitute electronic displays associated with the goods, and are acceptable specimens of trademark use. TMEP Section 904.03(i) sets forth three criteria that must be satisfied; the webpage must (1) contain a picture or textual description of the identified goods; (2) show the mark in association with the goods; and (3) provide a means for ordering the identified goods.

Applicant's first set of specimens comprised webpages displaying the mark and describing the software, but did not provide a way to download the software. In short, the webpages merely advertised the goods. The second set of webpages offered pricing information, but did not allow downloading of the software. They were not actual screen shots of the software when being utilized. Screen shots displaying the mark may be accepted as trademark specimens of use. The third specimen likewise failed to provide for downloading of the software.

On its fourth try, Applicant hit paydirt. The specimens comprised pages from applicant's website describing the sottware, stating its price, and offering a "shopping cart" for purchasing it. Most pertinent was a webpage stating that upon payment, a user may download the software and a related manual.

The Examining Attorney raised a new objection: that the description of the software did not exactly match the identification of goods. The webpages describe software used in connection with educational software for business simulation, not "application and date integration." The Board noted that this objection could have been made earlier, but in any case it rejected the Examining Attorney's argument. The specimens were accepted for applicant's SAAS services that have the same description. Moreover, "the application and data integration are marketed to the relevant consumers: instructors and students, and are the very purpose for purchasing its goods."

Finding the the fourth set of specimens satisfied all three elements of the TMEP test, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Seems like the Office's acceptance of the specimens for the class 42 services dictated the result.

Text Copyright John L. Welch 2022.

APEX 3D for Ankle Implant Materials and Instruments Confusable With APEX for Bone Pins and Screws, Says TTAB

The Board issued its 155th (CLV) Section 2(d) affirmance this year (against 11 (XI) reversals), finding the mark APEX 3D for "Medical devices, namely, ankle joint implants comprised of artificial materials and associated surgical instruments used exclusively with total ankle implants," to be confusingly similar to the registered mark APEX for "bone pins and screws." Applicant Paragon 28 (XXVIII) argued that "[e]ven if the goods may potentially be used during the same surgery (which they are not)," the goods "themselves are significantly different and serve entirely different purposes." The Board was not impressed. In re Paragon 28, Inc., Serial No. 88692159 (October 18, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Rejecting applicant's feeble assertion that the addition of the term 3D distinguishes the marks, the Board found the marks to be similar in sound and appearance and very similar in connotation and commercial impression.

As to the goods, applicant contended that "the descriptions [in the identifications] alone are sufficient to establish that the medical devices are different, and thus the targeted consumers are different." However, the Board noted, the cited registration is broad enough to include "bone pins and screws" used in ankle surgery. Moreover, Examining Attorney Anthony Rinker submitted eleven (XI) third-party registrations showing that the same entity has registered a single mark identifying goods in both the subject application and the cited registration. The Board concluded that we "the goods are related in such a manner that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source."

The Board found lacking any evidence of any overlap of channels of trade, and so this DuPont factor favored applicant. Also favoring applicant was the evidence that medical goods may be purchased by a hospital purchasing committee, who make the decision of which goods to purchase after considerable time and deliberation. The Board therefore found that applicant’s and registrant’s goods "are purchased by medical personnel and the purchasing process requires some deliberation and care."

Nonetheless, these two factors favoring applicant did not outweigh the similarity of the marks and the relatedness of the goods, and so the Board affirmed the refusal.Read comments and post your comment here.

TTABlogger comment: Does it often happen that the consumers overlap, but not the channels of trade?

Text Copyright John L. Welch 2022.

TTAB Reverses "10HUNDRED" Specimen Refusal, Finding that Legal Services Include Providing Legal Information

The TTAB reversed a refusal to register the mark 10HUNDRED for "legal services; legal advisory and consultancy services," overruling the Examining Attorney's rejection of applicant's specimen of use. The Examining Attorney maintained that the specimens showed use of the mark with the provision of legal information, not with legal services. In re Mayer Brown LLP, Serial No. 90044407 (September 30, 2022) [not precedential] (Opinion by Judge Thomas Shaw).

Applicant's specimens of use mostly comprised webpages where it uses the mark 10HUNDRED to identify a program presenting "global legal and business guidance on the top 10 key issues and pivotal developments that could affect businesses during a rolling 100-day period." According to applicant, the program will feature "thought leadership, legal updates, videos, podcasts, webcasts and live newsfeeds on global legal and business issues."

The Examining Attorney contended that supplying legal information is not the provision of legal services or advice. He maintained that the information provided by Applicant under its 10HUNDRED mark "cannot be 'legal services' or 'legal advice' because if it were, it would mean that applicant violated its duty of confidentiality by publicly disclosing confidential information provided to a client."

The Board found the Examining Attorney's position to be "overly narrow and restrictive, elevating form over substance."

The practice of law encompasses many different aspects of client counseling, and not all of them require attorney-client privilege. Put another way, while it is true that non-attorneys may not practice law, licensed attorneys may work on matters that do not, strictly speaking, comprise the practice of law.

The Board found that that Applicant offers its 10HUNDRED service "in order to provide clients and prospective clients with useful legal information which they can use in their businesses. Providing clients with such information before problems arise is the hallmark of good counsel."

The Board further observed that the provision of legal information to clients or prospective clients "clearly fall[s]within the meaning of legal services, i.e., 'work performed by a lawyer for a client.'" Moreover, applicant "clearly use[s] the mark in association with services that fall within the common meaning of 'consulancy' and 'advisory.'"

And so, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: As the Board acknowledged, the line providing legal services or legal advice versus merely educating clients on legal issues is rarely clear."

Text Copyright John L. Welch 2022.

TTAB Finds "VIVA MAUDE" for Television Comedy Production Services Confusable with "MAUDE" for a Continuing Comedy Television Series

"Maude" was a television sitcom that ran in the 1970s, starring Bea Arthur. I never saw it so I can't comment on its quality, and if I could, no one would care anyway. Here, the Board upheld a refusal to register the mark VIVA MAUDE for, inter alia, production of television programs featuring comedy, in view of the registered mark MAUDE for "entertainment services, namely, a continuing comedy television series." In re Viva Maude, Inc., Serial No. 90269302 (October 13, 2022) [not precedential] (Opinion by Judge Christen M. English).

The Marks: Applicant argued that the word VIVA dominates its mark and makes the marks different in sound and appearance. The Board, keeping in mind the fallibility of human memory [tell me about it! - ed.] found the marks more similar than dissimilar. As to meaning and connotation, the word VIVA is subordinate to the word MAUDE. VIVA conveys "acclamation, approval, applause, or support for a person named Maude. In this way, the term VIVA draws attention to and emphasizes the name MAUDE in Applicant’s mark."

Applicant claimed that the USPTO has taken a "stance" on VIVA marks by allowing the following pairs of marks to exist on the Register: VIVA DELICIOUS and DELICIOUS TV; VIVA SPRITZ and SPRITZ; and VIVA LA REVOLUTION! and REVOLUTION. The Board was unimpressed. Two of the three pairs involved irrelevant goods and services. In any case, a mere three pairs of registrations "hardly supports" applicant's claim. Finally, the Board noted once again that each case must be decided on its own record.

Applicant next argued that the cited mark MAUDE “is somewhat diluted,” not by third-party use of the term as a mark or descriptor in the field of television entertainment, but by "multiple Wikipedia entries of famous Maudes." [five in all, none of whom I ever heard of - ed.]. Again, the Board was unmoved. Only one Maude was related to entertainment services (a Simpsons character), and there was no evidence regarding public recognition of these individuals.

In sum, the Board concluded that "the marks in their entireties are similar overall in appearance, sound, connotation and commercial impression."

The Services: The Board found that the recitations of services in the application and registration reflect an inherent relationship between the involved services. Moreover, the Examining Attorney submitted 19 third-party use-based registrations for marks covering both ongoing television series generally, including those in the comedy field, and television and film production services. That was enough for the Board to find the services related for Section 2(d) purposes.

Channels of Trade/Classes of Consumers: Applicant argued that the involved services are marketed to different audiences - members of the entertainment industry versus television viewers - but the Board was not persuaded, noting that there were no limitations in the recitations of services.

Consumers of an ongoing television comedy show include “media providers” that purchase or license the program to broadcast or stream, including large television networks and streaming providers as well as small independent media companies. These are the same prospective purchasers of Applicant’s identified services.

Furthermore, the services ultimately reach the same "end user," the television viewer. "Likelihood of confusion under Section 2(d) encompasses situations when relevant no-purchasers are confused, mistaken or deceived." Although the mark VIVA MAUDE is not the title of a televivion program, Applicant acknowledged that television viewers may be exposed to the VIVA MAUDE mark in the credits at the end of a production.

Purchaser Sophistication: The Board found that purchasers of the services are "relatively sophisticated" and will likely exercise some degree of care in their puRchasing decisions. However, the Board observed, even sophisticated purchasers are not immune from source confusion.

Conclusion: The Board found confusion likely, and so it affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2022.

Screen Shot Suffices as Specimen of Use for Downloadable Software, Says TTAB

In an unsurprising decision, the Board reversed a refusal to register the mark PERMWARE for "downloadable software for managing permeation laboratory master data," finding Applicant Mocon's screenshot to be an acceptable specimen of use. In re Mocon, Inc., Serial No. 90673935 (October 13, 2022) [not precedential] (Opinion by Judge Jyll Taylor).

(Click on picture for larger image)

The Examining Attorney maintained that the screen shot was an improper specimen because it did not "mention what the software is used for," nor did it provide a means for ordering the software. Thus, the specimen failed to create an association between the mark and the goods.

Applicant Mocon cited In re Settec [TTABlogged here] and TMEP Section 904.03(e) in arguing that its specimen "is exactly what has long been accepted as a suitable specimen, a screen shot of a computer display screen projecting a page of the software bearing the trademark." The Board agreed.

In Settec, the Board found "[i]t is not uncommon for a software provider to display its product marks or relevant corporate logos on computerized images created by distributed software, or on the website page where licensed users are given authorized access to the software product. In either of these cases, an applicant would simply submit to the Office a screen-print from the appropriate access screen."

TMEP § 904.03(e) explains that "[i]t is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce."

The Board observed that the Examining Attorney's objection appeared to arise from her misunderstanding of the nature of Mocon's specimen. The specimen is not a webpage excerpt advertising the software. If it were, then it must include sufficient information to allow the user to download or purchase the software. Here, however, the specimen is a "screen shot of a computer display screen projecting an image created by the running of [Applicant's downloadable] PERMWARE software."

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I thought PERMWARE would be some kind of beauty parlor software.

Text Copyright John L. Welch 2022.

On Second Remand from CAFC, TTAB Denies Fraud Claim in GALPERTI Cancellation Proceeding

In the long-running Galperti case (9 and 1/2 years), after two appeals to the CAFC resulted in remands, the TTAB has dismissed Galperti-USA's petition for cancellation of a registration for the mark GALPERTI for "ironmongery." The CAFC had affirmed the denial of Galpteri-USA's likelihood of confusion claim but twice concluded that the Board had erred in its approach to the evidence on petitioner's fraud claim. On this second remand, the Board dismissed the fraud claim, finding that Galperti-USA failed to prove that Galperti-Italy’s Section 2(f) averment of “substantially exclusive and continuous” use was false, and in any case, Galperti-USA failed to prove that Galperti-Italy had an intention to deceive the USPTO. Galperti, Inc. v. Galperti S.r.l., Cancellation No. 92057016 (September 29, 2022) [not precedential] (Opinion by Judge Angela Lykos).

Respondent Galperti-Italy, in seeking registration based on acquired distinctiveness under Section 2(f), averred that its use of the mark GALPERTI had been "substantially exclusive" for the five preceding years. Galperti-USA alleged that this averment was false and fraudulent. On the first appeal [TTABlogged here], the court held that the Board erred in failing to consider, on the question of falsity, whether use of GALPERTI by others was substantial or inconsequential. On remand, the Board again dismissed the fraud claim, but the CAFC found that the Board had again committed legal error when it ruled that (1) in order for Galperti-USA's own use of the mark to count, it had to show that it had acquired rights in the GALPERTI mark via secondary meaning, and (2) Galperti-USA could not rely on third-party use of GALPERTI because there was no proof of privity between Galperti-USA and the third-party users. [TTABlogged here].

Fraud on the USPTO occurs when an applicant or registrant makes a knowingly false and material representation with an intent to deceive the Office. One who alleges fraud must prove its claim "to the hilt" by clear and convincing evidence.

Respondent's mark GALPERTI was initially refused registration under Section 2(e)(4) as being primarily merely a surname. Galperti-Italy then claimed acquired distinctiveness under Section 2(f), averring that the mark had become "distinctive of the goods listed in the application through the Applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement." The relevant time period was September 2012 to September 2017.

Falsity: The Board first considered whether Galperti-Italy's statement was false. The evidence showed that at least three entities used GALPERTI during the relevant period: petitioner, respondent, and a third entity. The question, then, was whether the use by petitioner or the third party was "significant" or "inconsequential." However, petitioner's provided no evidence as to the extent of its or the third party's use of GALPERTI in this country, and so the Board was unable to gauge whether those uses were "significant" or "inconsequential" as compared to Respondent Galperti-Italy's sales for that same time period.

In sum, Petitioner Galperti-USA failed to prove the falsity of respondent's statement regarding "substantially exclusive and continuous use."

Intent to Deceive: The Board also found that Galperti-USA failed to prove the third element of fraud: intent to deceive the USPTO. Ms. Dina Galperti, President of the Board of Directors of respondent, signed the declaration supporting the statement in question. Based on her deposition testimony, the Board found that she believed the statement to be true. The Board noted that intent to deceive can be inferred from indirect and circumstantial evidence, but such evidence must be clear and convincing. "Simply put, the record is devoid of evidence that either Respondent’s amendment of its application to rely on Section 2(f) or Ms. Galperti’s supporting declaration were made with the intent to deceive the Office."

Conclusion: And so, the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: It seems there are three ways to prove the intent element of fraud: (1) a smoking gun document (never happens), (2) evasive, contradictory, incredible testimony (Nationstar, Fuji), or (3) reckless disregard for the truth of the statement in question (Chutter).

Text Copyright John L. Welch 2022.

Although "WIRED" Magazine Lacks Dilution Fame, TTAB Sustains Section 2(d) Claim Against WIRED for Clothing, but Not For Fitness Services

Citing Professor McCarthy's view that that a threshold response in the range of 75% of the general consuming public is necessary to prove fame for purposes of dilution, while Opposer Advance Magazine's survey showed at most 45% aided awareness of the mark WIRED, the Board dismissed opposer's dilution-by-blurring claims. As to opposer's Section 2(d) claims, the Board rendered a split decision, sustaining the oppositions to WIRED for clothing, but dismissing the claims as to WIRED, WIRED.FIT, and WIRED & Design for fitness boot camps, fitness instruction services, and the like. This blog post will attempt to hit the high points of the 47-page decision. Advance Magazine Publishers Inc. v. Anna Goncharova, Oppositions Nos. 91245771, 91253089, and 91254140 (October 11, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman).

Likelihood of Confusion: Opposer relied on 17 registrations for WIRED and WIRED-formative marks, for magazines, information services, and retail store services featuring a wide variety of consumer goods, including apparel. Applicant Goncharova conceded that the mark WIRED is at most suggestive regarding a technology-related magazine, and the Board pointed out that suggestive marks are inherently distinctive and are entitled to a commensurate scope of protection.

As to commercial strength, opposer claimed that its WIRED marks are famous. The Board observed that "fame" under the 5th DuPont factor ["strength" would have been a better term in the DuPont decision -ed.] varies along a spectrum from very strong to very weak. Opposer provided sales figure, readership data, YouTube subscriber information, media references, and examples of other publicity. An online aided awareness survey purportedly showed that 45.3% of respondents had heard or seen the mark. The Board found that WIRED "falls on the very strong side of the spectrum ... in connection with magazines covering the digital revolution, culture, lifestyle and technology, as well as for providing information about business, politics, technology, electronics, science, celebrities, entertainment and pop culture via the Internet." Therefore, opposer's marks are entitled to "a broader scope of protection that is normally accorded an inherently distinctive suggestive mark because of their commercial strength."

As to the parties' marks, the Board not surprisingly found them all to be dominated by the word WIRED (including opposer's marks WIRED AUTOCOMPLETE INTERVIEW, WIRED MASTERMIND, WIRED BY DESIGN, WIRED SCIENCE, WIRED STORE, and several stylized versions of WIRED). Although the meanings and commercial impressions of the parties' marks differ, "they share the similarity of 'connection,' either a connection to the Internet or an electrical connection." In sum, the Board found that the similarities of the parties' marks outweigh their differences.

With respect to the involved goods and services, the Board found Goncharova's clothing to be "inherently related" to opposer's retail store services featuring apparel. The Board must assume that these goods and services travel in the same channels of trade to the same classes of consumers.

The remaining goods and services were a different story. Opposer argued, "in essence," that any subject covered by its magazine or online services are potentially related goods or services. The Board disagreed "because opposer's contention comes too close to a claim of rights in gross." There was no testimony or evidence that opposer sells WIRED branded products, nor that any third-party publishers sell products featuring the same mark as their publications. In short, opposer failed to meet its burden to prove the relatedness of Applicant Goncharova's fitness services and opposer's publications and online information services.

The Board therefore sustained the Section 2(d) claim as to Goncharova's clothing but dismissed the claims as to her fitness services.

Dilution: The Board noted that, while "fame" for Section 2(d) purposes is a matter of degree (i.e., relative strength), fame for dilution purposes is an either/or proposition. It either exists or it doesn't. To be famous, a mark must have achieved the status of a "household name." Professor McCarthy posits that "a threshold range of 75% of the general consuming public is necessary to prove fame for purposes of dilution." The Board found that the extent of recognition of the WIRED marks fell short.

Opposer's survey results showed a 45% aided awareness of the marks. "Presumably general public unaided awareness ... is less than the 45% aided awareness." The Board concluded that the WIRED marks are not famous for dilution purposes, and so it dismissed the dilution claims.

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TTABlogger comment: WIRED is not a household word in my household, except when I refer to my wired mouse and/or keyboard.

Text Copyright John L. Welch 2022.

TTABlog Test: How Did These Three Genericness Appeals Turn Out?

The TTAB recently ruled on the appeals from the three genericness refusals summarized below. Let's see how you do with them. Results will be found in the first comment.

In re Responsiveads, Inc., Serial No. 88453313 (September 30, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson). [Refusal to register RESPONSIVEADS for advertising, marketing and promotional services and for marketing software. Applicant argued, inter alia, that "a 'responsive ad' is an outcome, not the service or tool creating that outcome," and that "Applicant cannot create responsive ads for its customers without the customers’ content."]

David Alpan DDS MSD Ltd., Serial No. 90078211 (September 27, 2022) [not precedential] (Opinion by Judge Elizabeth A. Dunn) [Refusal to register AESTHETIC ORTHODONITCS for "orthodontics services." Applicant argued, inter alia, that even if the term were generic for orthodontic services for cosmetic purposes, Applicant’s services are not limited to those services and so the term is not generic as applied to its non-cosmetic orthodontic services.]

In re Natural Cravings Pet Treats LLC, Serial No. 88785786 (September 19, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo) [Refusal to register BEEF CHEEK for "Edible treats and chews for pets." Applicant argued that its BEEF CHEEK products "are not comprised entirely of the cheeks from cows and instead are made out of head skin, which is the skin from the face of a cow that does not include the cheek.”]

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

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

Recently, 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 Innova Electronics Corporation, Serial No. 90174255 (September 21, 2022) [not precedential] (Opinion by Michael B. Adlin). [Mere descriptiveness refusal of CARAI for vehicle diagnostic software and SAAS. Applicant argued that, while CARAI may mean "artificial intelligence for automobiles," it is "too broad to describe these goods with any immediacy or particularity."]

In re Lakshmi Distributors, Serial No. 90174273 (September 27, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington). [Mere descriptiveness refusal of CSTORE "wholesale store services featuring tobacco products." Applicant argued that CSTORE is not descriptive because "when an average consumer sees/hears CSTORE, perhaps a convenience store might come to mind, but wholesale store services featuring tobacco products do not."]

In re Celmatrix Corp., Serial No. 90244935 (September 29, 2022) [not precedential] (Opinion by Cindy B. Greenbaum). [Mere descriptiveness refusal of HAIR WATER for "hair care preparations." Applicant proposed an amendment of the identification of goods to "Hair care preparations, namely, liquid nutritional supplements for the promotion of hair health; hair care preparations, namely, powdered nutritional supplements for the promotion of hair health; dietary liquids and supplements for improving health of hair."]

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

C.D. Cal. Dismisses "GREEN GOO" Infringement Action Due to Incontestability of Defendant's Right to Use the Mark.

The U.S. District Court for the Central District of California granted Defendant Sierra Sage's motion for summary judgment in this civil action for alleged infringement of Plaintiff Garcoa's trademark BLUE GOO for pain relief products. The court found that because Sierra Sage held the "exclusive right" to use its registered mark GREEN GOO for its pain relief salve by reason of the incontestability provision of Section 15 of the Lanham Act, there could be no infringement. Garcoa, Ic. v. Sierra Sage Herbs LLC CV-21-4672 (PSG)(SPx) (C.D. Cal. October 4, 2022).

It was uncontested that Sierra Sage owns an "incontestable registration" for its mark GREEN GOO for "non-medicated herbal body care products, namely salves." [The term "incontestable registration" used by the court appears nowhere in the Lanham Act. What Sierra Sage owns is a registration for which a Section 15 declaration has been filed, making its right to use the mark "incontestable." The registration is, of course, contestable on various grounds, including abandonment, genericness, and fraud. - ed.].

The Board noted that the "defensive" aspect of incontestability is reflected in Sections 15 and 33(b) of the Lanham Act." Section 33(b) provides a safe harbor for the registrant when its mark is used on the goods and services identified in the registration, unless one of the statutory defenses listed in Section 15 is applicable. "In other words, absent some statutory exception, a defendant cannot be held liable in a trademark infringement action for use of its mark in a manner consistent with its registration if it has an incontestable right to do so." See McCarthy on Trademarks and Unfair Competition, Section 32.141.

Plaintiff Garcoa argued that Sierra Sage was using the incontestable mark on goods - i.e., a pain relief product - outside the scope of of its registration. First, Garcoa pointed out that pain relief products fall in International Class 5, whereas Sierra Sage's registration is for Class 3 goods. Second, it claimed that pain relief salve is not a non-medicated herbal salve.

The court found Garcoa's first argument to be unsupported by law or facts. The law is clear that classification is merely for administrative purposes and has no legal effect on the "descriptive properties" of a trademark registration. Moreover, Sierra Sage provided examples of Class 3 registrations covering non-medicated herbal care products for pain relief.

As to the second question - whether salves can encompass pain relief - the court looked to definitions of "salve" provided by the parties and found that they all contain the word "soothe." The definitions of "soothe" proffered by Sierra Sage all refer to the relief or ease of pain. "It logically follows then that a salve can provide, among other benefits, pain relief." And it noted that USPTO guidelines allow for the broad identification of goods. Thus, Sierra Sage's registration for "salves" does not inherently preclude pain relief salves.

Finally, Garcoa provided no evidence that any of the ingredients in the GREEN GOO product were non-herbal or medicated. Moreover, the packaging for GREEN GOO clearly describes the product as homeopathic and not FDA-approved - approval being required for a medicated product.

Thus, the Court finds that Defendant has an incontestable right to use its GREEN GOO trademark on its non-medicated herbal body care products, namely salves, including its Pain Relief Salve. As such, because Defendant’s “exclusive right” to use the GREEN GOO mark on its Pain Relief Salve cannot be disturbed, Plaintiff’s action is barred, and Defendant is entitled to judgment as a matter of law. See 15 U.S.C. § 1115.

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TTABlogger comment: The two products have been sold simultaneously nationwide for more than 14 years, through the same vendors. Perhaps Sierra Sage had a few more defenses up its sleeve?

TTABlog Quarterly Index: July - September 2022

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