TTAB Posts December 2022 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled five (5) oral hearings for the month of December 2022. Only the fifth one will be in person, the first four being held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

December 1, 2022 - 1 PM: Eden Foods, Inc. v. The Ethnic Group LLC dba Edenic Blends, Opposition No. 91267822  [Section 2(d) opposition to EDENIC BLENDS & Design for "Vitamin and mineral supplements; none of the foregoing containing CBD" in view of the registered mark EDEN and an alleged family of EDEN-formative marks, for natural and organic food and beverage products, including dietary food supplements.]

December 6, 2022 - 10 AM: In re Disciplina Excellentiae, LLC, Serial Nos. 90426395 and 90426435 [Section 2(d) refusals to register HIPE FIT and HIPE FITNESS for health club services [FIT and FITNESS disclaimed] in view of the registered marks HIP in standard character form for "Arranging and conducting youth sports programs in the field of football; Educational services, namely, providing classes, seminars, and workshops in the fields of sports; Entertainment in the nature of football games," and HIP in standard character and stylized from for "Education services, namely, training high school students to provide health education and health information resources to their peers, and providing curricula and course materials in connection therewith."]

December 7, 2022 - 11 AM: In re International Fruit Genetics, LLC, Serial No. 88710987 [Refusal to register COTTON CANDY for various food products on the ground of mere descriptiveness and, as to some of the identified goods, likelihood of confusion with the  identical mark registered for bubble gum and ice cream.]

December 8, 2022 - 10 AM: In re Panini America, Inc., Serial No. 90004362 [Section 2(d) refusal of KABOOM! for "Collectible trading cards; Sports trading cards," in view of the registered marks KABOOM COMICS & COLLECTIBLES & Design for "Retail store services featuring comic books," and KABOOM! for "Comic books; magazines featuring printed stories in illustrated form and comic book stories and artwork, namely, comic magazines; printed periodicals in the nature of magazines in the field of comic book stories and artwork; series of comic book style novels; series of non-fiction books in the field of comic books."]

December 13, 2022 - 10 AM (In Person): Hyde Park Storage Suites Daytona, LLC v. Man Cave, LLC, Cancellations Nos. 92076317 and 92076375 [Petitions for cancellation of registrations for the marks MAN CAVE and MAN CAVE GARAGES for "Providing self-storage facilities for others; Provision of car parking facilities" and for "Social club services, namely, arranging, organizing, and hosting social events, get-togethers, and parties for club member" [GARAGES disclaimed], on the grounds of mere descriptiveness and likelihood of confusion with petitioner's common law mark ULTIMATE MAN CAVE for the same or highly related services.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

Precedential No. 35: In a Real Snoozer, TTAB Rules on Several Discovery-Related Issues

In a precedential Order, the Board ruled on several discovery-related motions in this opposition to registration of the mark GROMEO for "Planters for flowers and plants; Self-watering planters for flowers and plants." Opposer OMS claimed likelihood of confusion with, and likely dilution of, its registered marks MIRACLE GRO and GRO-formatives for fertilized, soil, pots, and containers. OMS Investments, Inc. v. Habit Horticulture LLC, 2012 USPQ2d 1074 (TTAB 2022) [precedential] (Intelocutory Attorney Mary B. Miles).

Applicant Habit [actually, applicant's name is Habitat Horticulture, but Opposer OMS misspelled it in the notice of opposition - ed.] moved to compel a deposition and to extend its time to respond to OMS's discovery requests. When Habit filed it reply brief, OMS claimed the reply should be stricken as untimely. OMS served its opposition to the motion to compel on December 10, 2021 and argued that, under Trademark Rule 2.127(a), the reply filed on December 31 was one day too late. Not so, said the Board. The opposition was not filed until December 11, so the reply was due twenty days after that date and was therefore timely.

Trademark Rule 2.195(a) does not contemplate that a submission filed with the Board may have different service dates and filing dates for purposes of calculating briefing deadlines under Trademark Rule 2.127(a). Rather, “[f]or administrative purposes, a firm and single receipt-by date is necessary for submissions transmitted to the Board.” Island, LLC v. JBX Pty. Ltd., 2021 U.S.P.Q.2d 779, at *4 n.9 (TTAB 2021) (emphasis added). Thus, in the event that a party serves a copy of its motion prior to filing the submission with the Board, the submission nonetheless is assigned a single receipt-by date, based on Eastern Time, for purposes of calculating the deadline for filing a response or reply brief under Trademark Rule 2.127(a).

The Board then denied Habit's motion to compel because it was filed prematurely (OMS had not "clearly or unequivocally stated that it would not designate or produce a witness for the noticed deposition") and because Habit failed to make the required good faith effort to resolve the dispute prior to filing its motion. The parties were ordered to meet and confer forthwith in a good faith effort to resolve any disputes regarding the topics for examination (under FRCP 30(b)(6)), the designated witnesses, and/or the date and location of the deposition.

Finally the Board denied Habit's motion to extend the time for responding to OMS's discovery requests. Habit contended that is should not have to response to the requests until after the Rule 30(b)(6) deposition of Habit in order to "maintain the status quo," i.e., Habit noticed its deposition first. The Board rejected that argument, since discovery is not governed by the concept of priority and one party's discovery obligations are independent of the actions of the other party. [As a general proposition, okay, but that should not be an ironclad rule - ed.]

The Board then issued a new scheduling order.

Read comments and post your comment here.

TTABlogger comment: I don't understand how an order issued by a single interlocutory attorney, with no statement that it is issued "By the Board," can be precedential.

Text Copyright John L. Welch 2022.

Precedential No. 34: "IFG" Fails to Function as a Trademark For Live Plants Because It's a Varietal Name

In a decision of importance to trademark practitioners who labor in the varietal plant field, the Board held that "proposed marks that constitute the prominent portion of a varietal denomination are unregistrable under Trademark Act Sections 1, 2, and 45 because they are generic for the varietals they identify" and therefore "incapable of functioning as a trademark." And so, the Board refused to register the proposed mark IFG for "Fresh fruits and vegetables; live plants; live trees; live grape vines; live plant material, namely, live grape vine material, live plant material and live tree material." In re International Fruit Genetics, LLC, 2022 USPQ2d 1119 (TTAB 2022) [precedential] (Opinion by Judge Angela Lykos).

The CAFC in In re Pennington Seed Co., 466 F.3d 1053, 80 USPQ2d 1758, 1761-62 (Fed. Cir. 2006), upheld the USPTO’s long-standing precedent and practice of treating varietal names as generic, affirming the Board’s ruling that the term “Rebel,” as a varietal name for a type of grass seed failed to function as a mark. The CAFC explained that an entity that is the source of a varietal may use a particular term as a trademark for its specific varietal, but it must be clear that there is also a generic name for the varietal. "This notion reflects the Board’s earlier decisions that if the term is used as a designation of source (i.e., a trademark) and there is a different varietal designation, the term may be registrable."

The Board agreed with the applicant that IFG, by itself, is not the entire varietal name for applicant's identified goods. However, the USPTO's evidence established that the initialism IFG is the first component of numerous varietal names for grapes, grapevines, grapevine plants, sweet cherry trees and cherries, goods that are encompassed within the scope of Applicant’s identified goods.

Thus, the questions before us are: (1) is the prominent portion of a varietal name barred from registration under Trademark Act Sections 1, 2, and 45 because varietal names are the equivalent of generic designations; (2) if so, does the record show that IFG is a prominent portion of the varietal names of record for the identified goods; and (3) does this constitute an absolute bar to registration given Applicant’s prior valid and subsisting trademark registration of the same mark for “Live plants, namely, table grape vines, cherry trees” where such registration issued prior to the application filing dates of any of the plant patents or plant breeder’s rights (i.e. PVP certificates under U.S. law) and purported prior trademark use?

As to the first question, the Board followed Pennington Seed in concluding that "[g]ranting an applicant a trademark registration for the prominent portion of a varietal name would be anticompetitive since it would be allowing one entity to have exclusive trademark rights in a generic term." Moreover, "[t]o hold otherwise would be breach U.S. obligations under the UPOV Convention."

As to the second question, the Board followed In re Delta & Pine Land Co., 26 USPQ2d 1157 (TTAB 1993) (upholding a refusal to register DELTAPINE, which was a portion of the varietal names Deltapine 50, Deltapine 20, Deltapine 105 and Deltapine 506 for cotton and soybean plants) in finding that IFG is the prominent portion of each of applicant's varietal names (for example, "IFG Cher-seven"). "Consumers are likely to focus on the initial letter string 'I-F-G' and pronounce it as such in calling for the goods."

As to the third question, the Board concluded that applicant's ownership of a registration for IFG for partly identical goods ("live plants, namely, table grape vines, cherry trees") did not alter the result here. After filing the underlying application for that prior registration, applicant selected IFG as the initial term in subsequently filed applications for plant patents with the USPTO, and for PVP protection with the Plant Variety Protection Office of the Department of Agriculture.

Thus, when a purchaser asks for any of Applicant’s patented or PVP protected goods, it “has no other name to use but its designated name.” Pennington Seed, 80 USPQ2d at 1762. Applicant could have chosen a designation other than IFG to associate as a brand name and file for trademark protection. Instead, cognizant that such varietal denominations would eventually become the generic designations upon the expiration of plant patent and PVP certificate protection, Applicant risked the integrity of its IFG trademark by using IFG to name new varietals. Applicant cannot now inhibit current and future public use of these varietal denominations because of its decision-making.

The Board brushed aside applicant's patently erroneous assertion that because its prior registration is "incontestable" [i.e., more than five years old - ed.], the subject application is immune from a genericness attack. Under Section 14(3), genericness claims are not time-barred and can be brought "any time if the mark becomes the generic name for the goods." 

The Board showed no sympathy for the applicant: "By making a deliberate decision to select IFG as the prominent portion of the varietal names of the identified goods, Applicant self-abrogated its own trademark rights, exposing its prior trademark registration to potential cancellation in an inter partes proceeding."

Read comments and post your comment here.

TTABlogger comment: Why doesn't the same logic apply to expired design patents when a trademark registration is obtained for the design?

Text Copyright John L. Welch 2022.

BPLA Set to Vote (Dec. 7th) on Name Change to BOSTON INTELLECTUAL PROPERTY LAW ASSOCIATION

The annual meeting of the Boston Patent Law Association will be held on December 7th from 11:30 to 1PM at The State Room, 60 State Street, Boston. (register here). A key item on the agenda will be a vote to amend the By-Laws to change the name of the Association to the BOSTON INTELLECTUAL PROPERTY LAW ASSOCIATION. (Amendment here). If you cannot attend the meeting, you may vote by proxy via the form found at the first link above.

This name change is long overdue. I joined the BPLA nearly 50 years ago, and watched the enormous growth of the trademark and copyright community in Boston. I also witnessed the refusal to change the name of the organization because of "tradition." It's time to step into the 21st century, folks.

Read comments and post your comment here.

Text Copyright John L. Welch 2022.

USPTO Refuses to Institute Reexamination of Registration, But Allows Petitioner to Re-file

One doesn't hear much about the outcome of reexamination petitions. I came across this denial of a petition involving alleged nonuse of the mark shown below, for pet accessories (Reg. No. 5,795,3480) [pdf here]. The literal portion of the mark reads ""OPPOSITION TO TYRANNY BEGINS WITH CONTEMPT FOR DICTATORS" at the top, and "BUNS WILL CERTAINLY REVEAL THEIR FILLINGS." on the bottom. Petitioner failed to provide evidence that established a "reasonable predicate to support a conclusion that the mark was not in use as of the relevant date on or in connection with the identified goods." [pdf here]

The petition for reexamination was filed by Zhejiang Import & Export Pet Food and Product Industry Association (a Chinese trade association), who has petitioned to cancel the registration (Cancellation No. 92076309) on various grounds. The cancellation proceeding has been suspended pending the outcome of the reexamination petition. After reexamination was denied, Petitioner was allowed to re-file its petition for reexamination with additional evidence, which it did yesterday. The relevant documents regarding the petition for reexamination can be found on TSDR.

Read comments and post your comment here.

TTABlogger comment: The mark allegedly "features a depiction Xi Jin Ping, President of the People’s Republic of China with a popular nickname for Xi Jin Ping: “xi da da” written on the cartoon’s head and cheeks."

Text Copyright John L. Welch 2022.

TTABlog Test: Is THREEGUN Confusable With THERAGUN For Massage Apparatus?

Therabody, Inc. opposed an application to register the mark THREEGUN (in slightly stylized form) for various medical devices and products, including massage apparatus, on the ground of likelihood of confusion with its registered mark THERAGUN for various medical devices, including massage apparatus. So, the goods overlap, but what about the marks? How do you think this came out? Therabody, Inc., by change of name from Theragun, Inc. v. Shanghai Three Gun (Group) Co., Ltd., Opposition No. 91264121 (November 17, 2022) [not precedential] (Opinion by Judge Jyll Taylor).

Motion to Amend I.D.: After the close of Opposer's testimony period, Applicant Shanghai Three Gun moved to amend its identification of goods but the Board deemed the motion untimely. "Because Applicant failed to file its motion early enough to provide Opposer with sufficient notice of its proposed change before trial, as is apparent by Opposer’s attempt to supplement its record with the untimely submissions appended to its brief, Applicant’s motion to amend must be denied."

Likelihood of Confusion: With regard to the overlapping goods, massage apparatus, the Board presumed that they travel in the same trade channels to the same classes of consumers. The purchasers of the goods include ordinary consumers.Since there were no limitations as to classes of purchasers or price of products, the Board based its decision on the least sophisticated potential purchasers. It found the purchaser sophistication and care factor to be neutral.

As to actual confusion, since Shanghai has not exported any massage apparatus to the United States, "there has been no opportunity for actual, or potential, confusion to occur." And so, the Board found this DuPont factor to be neutral in its analysis.

The evidence showed that the term GUN is often used to describe certain types of massage apparatus, and "the THERA portion of Opposer’s THERAGUN mark may be perceived by consumers as a shortened form of the word 'therapy.'" The Board concluded that THERAGUN is "somewhat suggestive of the identified massage apparatus." As to commercial strength, in light of "Opposer’s advertising presence across multiple social media platforms and the unsolicited exposure in the written press and online, as well as the various industry accolades," the Board found that "Opposer has established that its pleaded registered THERAGUN mark has garnered some renown, which is not offset by its somewhat suggestive nature." The Board concluded that the THERAGUN mark "is entitled to a slightly broader scope of protection than that to which marks with inherently distinctive terms are entitled."

Turning to the marks, the Board found them to be more dissimilar than similar, "[p]rincipally because Applicant’s mark begins with the clearly recognizable English word 'three' and Opposer’s mark begins with what is likely to be recognized by consumers as a shorted form of the word 'therapy,' given that Applicant’s devices are touted and recognized as 'percussive therapy devices.'"

The Board found the marks to be dissimilar in appearance and sound. As to connotation and overall commercial impression, "[c]onsidering the plain meanings of the words and terms that comprise the two marks, even when viewed against the backdrop of identical massage apparatus, [the marks] would likely be perceived by consumers as conveying different connotations and commercial impressions."

Concluding that the first DuPont factor weighed heavily in Shanghai's favor, the Board dismissed the notice of opposition.

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2022.

Finding Lack of Bona Fide Intent, TTAB Sustains Opposition to NEW YORKER FINE LAGER BEER & Design for Beer-Based Cocktails

The Board sustained an opposition to registration of the mark shown below, for "Beer-based cocktails; Essences used in the preparation of liqueurs; Malt extracts for making beer; Non-alcoholic rice-based beverages not being milk substitutes; Smoothies; Soy-based beverages not being milk substitutes; Soya-based beverages, other than milk substitutes; Syrups for beverages; Syrups for making beverages," on the ground of lack of bona fide intent. Although Applicant Jose Ramon was experienced in the branding and marketing of beers, he was never in the business of producing the goods identified in his application, and the only step he took to use the mark was the formation of a company to market beers. D & P Holding S.A.. v. Jose Ramon Ortiz Monasterio DBA Jose Ramon, Opposition No. 91246728 (November 16, 2022) [not precedential] (Opinion by Judge Christopher Larkin).

Contractual Estoppel: Applicant Ramon asserted the affirmative defense of contractual estoppel. The Board considered what body of law was to be applied to the contract, "which is in English and mentions the United States (together with Canada and Mexico), but is between a Spanish individual and a Swiss corporation, and has as its subject matter the assignment of [a] CTM Registration from Applicant in Spain to Opposer in Switzerland in exchange for consideration paid in Euros." The Board noted that the parties ignored conflict-of-laws principles, and so it "deemed their arguments as manifesting their assent that we may interpret the 2015 Contract as if it were governed by United States contract law principles."

The Board then agreed with opposer that, "under the plain language of the 2015 Contract, Opposer agreed that Applicant would have rights in the United States, Canada, and Mexico to the mark shown in [Applicant's] CTM Registration but nothing more. Opposer is thus not estopped from opposing Applicant’s registration of the mark shown in the Opposed Application because that mark is not the mark shown in the CTM Registration."

Lack of Bona Fide Intent: The Board found that Opposer established a prima facie case of lack of bona fide intent based on Applicant Ramon's interrogatory responses: "Applicant's interrogatory responses establish that in the more than three years after the filing of the Opposed Application, he did nothing to bring any of the goods identified in the Opposed Application to market in the United States under the applied-for mark." The burden of production then shifted to Applicant Ramon.

Ramon’s evidence "boil[ed] down to his testimony regarding his 'extensive knowledge and experience in the branding and marketing of beers'" his assertion that he has continuously had a bona fide intention to use the mark for the identified goods, and his formation of a Delaware corporation to manufacture and market beers. Not good enough, said the Board.

And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: Of course, Ramon's mere statement that he had a bona fide intent is meaningless. Every Section 1(b) applicant could say that, and lack of bona fide intent could never be proven.

Text Copyright John L. Welch 2022.

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

So far this year, the Board has affirmed 158 of the 170 Section 2(d) refusals on appeal (just about 93%). Here are three decisions that came down recently. How do you think they came out? [Results in first comment].

In re Robert Green Hospitality, LLC, Serial No. 90065535 (November 10, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington) [Section 2(d) refusal of the mark LYDIA for "Hotel services, namely, high end boutique resort hotel services" in view of the registered mark LIDIA’S KANSAS CITY for restaurant services (KANSAS CITY disclaimed)].

 

In re Uri Charles, Serial No. 90235507 (November 10, 2022) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) refusal of FLVSH for "Downloadable mobile application software for use in text messaging, in-app messaging, location-based messaging, chatting, sharing and transmitting of photos, images, pictures, videos, audio content, multimedia content, electronic files, information and data, and storing contacts," in view of the registered mark FLASH for "Computer software, software applications and mobile applications for picture sharing"].

In re Blake Farms Hard Apple Cider, Serial No. 90567569 (November 16, 2022) [not precedential] (Opinion by Judge Mark Lebow) [Section 2(d) refusal of BLAKE’S BACK 40 for beer, in view of the registered mark BACK 40, also for beer].

 

Read comments and post your comment here.

TTABlog comment: How did you do? See any non-WYHAs?.

Text Copyright John L. Welch 2022.

TTABlog Test: Is BEST KNIGHT GAMES Merely Descriptive of Board Games?

The USPTO refused to register the proposed mark BEST KNIGHT GAMES for "board games; card games; checkers games; chess games; dice games; equipment sold as a unit for playing board games; go games; parlor games; puzzle games; strategy games; tabletop games; chess equipment and accessories; chess clocks; chess timers," finding the mark to be merely descriptive of the goods. Applicant argued that the mark is "suggestive in relation to the applied-for goods and suggests that the products can be enjoyed at night and derive from a source that prides itself as being honorary, fun, excellent, and entertaining." How do you think this came out? In re Portland Chess Shop LLC, Application Serial No. 90433730 (November 15, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman).

Examining Attorney Andrea Cornwell relied, unsurprisingly, on dictionary definitions of "best," "knight," and "games," leading the Board to conclude that "when used in connection with the products in Applicant’s description of goods listed above, consumers will perceive BEST KNIGHT GAMES as superior activities involving a medieval, mounted soldier in armor." Third-party websites using the terms "knight games" and "best night games" confirmed that meaning.

The Board pooh-poohed applicant's argument that the proposed mark is suggestive of the goods and "does not immediately convey information about the quality, feature, function, or characteristic of Applicant’s goods to the average consumer." The Board found that "when the mark BEST KNIGHT GAMES is used in connection with board games, parlor games, or strategy games, consumers immediately understand that the activity (game) involves medieval mounted solders wearing armor (i.e., knights)."

Applicant also argued that its use of "Best" makes the mark BEST KNIGHT GAMES registrable because "Best" does not specify what aspects, if any, are better than other similar goods. The Board was unmoved. "Applicant’s use of the word 'Best' is laudatory. Laudatory terms, those that attribute quality or excellence to goods or services, such as Applicant’s use of 'Best' in BEST KNIGHT GAMES, are merely descriptive under Section 2(e)(1) of the Trademark Act."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.

TTAB Sustains DUTCH BROS Section 2(d) Opposition to DUTCH4LIFE Marks for Energy Drinks and Alcoholic Beverages

In a 74-page opinion, the Board sustained oppositions to registration of the marks shown below, for "energy drinks containing caffeine; energy drinks not for medical purposes" and for "alcoholic beverages" on the ground of likelihood of confusion the registered mark DUTCH BROS for coffee and energy drinks. FWIW, the Board rejected opposer's claim of a family of "DUTCH" marks, and found that opposer's "conjoint use" claim (the mark DUTCH and a windmill design mark) was not pleaded, was not tried by implied consent, and was not proven. Dutch Bros., LLC v. Denco Horeca Beheer B.V., Oppositions Nos. 91253828 and 91264452 (November 14, 2022) [not precedential] (Opinion by Judge Martha B. Allard).

After the rejection of opposer's family of marks and conjoint use claims, the case boiled down to a likelihood of confusion analysis between the two proposed marks and the word mark DUTCH BROS.

The Board found the involved goods to be in part identical and otherwise related, as evidenced by third-party registrations and uses. The goods are sold in the same channels of trade to the same classes of consumers. The parties’ goods are both relatively inexpensive products that may be purchased on impulse rather than selected with careful consideration.

The Board found the DUTCH BROS mark, registered under Section 2(f), to be conceptually weak but commercially strong. Opposer began using the mark in 1992 and has over 400 locations, "making it the largest, privately held, drive-through coffee company in the country at the time of trial." It has spent substantial sums on promotion of the mark and has received extensive media coverage.

Finally, as to the marks, the Board found that literal element DUTCH4LIFE to be the dominant element in each of applicant's marks. The term "Anno 2018," which means "in the year 2018," is merely descriptive and is disclaimed, and therefore carries less weight than DUTCH4LIFE.

[W]e find that the parties’ marks are similar in sight and sound to the extent that they both share the DUTCH element. Although Applicant’s mark includes the “4LIFE” component, this component reinforces the element DUTCH. Because the Applicant’s marks are used with legally identical and related goods, there is no reason to conclude that the term DUTCH would have a different meaning or connotation and, indeed, neither party offers any evidence along this line. Accordingly, this factor weighs in favor of a likelihood of confusion.

And so, the Board sustained both oppositions.

Read comments and post your comment here.

TTABlogger comment: I've never been to Portland and never heard of DUTCH BROS coffee. So what?, you may ask.

Text Copyright John L. Welch 2022.

TTABlog Test: Is "BORRELLO'S" Primarily Merely a Surname for Cell Phone Accessories?

We haven't had a surname case in a while. Here, the USPTO refused to register the proposed mark BORRELLO'S for various cell phone accessories and related goods, on the ground that the mark is primarily merely a surname under Section 2(e)(4). Applicant James Lyons argued that the term does have a non-surname meaning: it is the name of a commune and town in the province of Chieti in the Abruzzo region of Italy, which is a place of historical significance, named after the iconic ruling Borrello family. How do you think this came out? In re James Lyons, Serial No. 90242811 (November 10, 2022) [not precedential] (Opinion by Judge Mark Lebow).

In determining the surname issue, the Board takes into consideration various factors, including the extent to which the term is exposed to the public as a surname; whether the term is the surname of anyone connected with the applicant; whether the term has any recognized meaning other than as a surname; and whether the term has the structure and pronunciation of a surname.

Examining Attorney Toby Bulloff provided evidence from the LEXIS/NEXIS surname database showing that BORRELLO appearing 761 times as a surname nationwide. The Board found from the evidence that BORRELLO is a surname. Its surname significance is not diminished by the fact that it is presented in its possessive form.

The Examining Attorney conceded that BORRELLO is a rare surname. Nevertheless, "[t]he relevant question is not simply how frequently a surname appears … but whether the purchasing public for Applicant’s goods is more likely to perceive Applicant’s proposed mark as a surname rather than as anything else." In re Tapio GmbH, 2020 USPQ2d 11387, at *9 (TTAB 2020).

He also provided a page from Wikipedia identifying four purportedly notable people having the surname BORRELLO, but only one was from the United States (Brian Borrello, an American artist). Applicant asserted that BORRELLO is an "extremely rare surname."

It was undisputed that “no one associated with Applicant uses or has the name Borrello.” The Examining Attorney provided negative dictionary evidence from Dictionary.net, as well as from Collins’ Italian-English dictionary, to show that BORRELLO has no meaning in English or Italian.

Applicant Lyons argued that the primary meaning and significance of Applicant’s BORRELLO’S mark is in connection with a commune and town in the province of Chieti in the Abruzzo region of Italy, which is a place of historical significance, named after the iconic ruling Borrello family, now reportedly extinct.

As to whether the term BORRELLO has another recognized significance other than as a surname, the Board observed that "[a] mere Wikipedia page hardly provides a sufficient basis for us to find that BORRELLO, the name of a tiny commune in a foreign country, would be familiar to an appreciable segment of Americans or would be perceived by them as anything but an obscure geographic place."

As to structure and pronunciation, the Board has acknowledged that “[a]ssessing whether [a term] has the structure and pronunciation of a surname is a ‘decidedly subjective' inquiry.” The Examining Attorney maintained that the suffix “-ELLO” is common in Italian surnames and connotes “smaller” or “little. Lyons contended instead that BORRELLO "has the structure and pronunciation of a geographic location, not a surname, since that is the term’s primary significant meaning and in light of the typical structure and pronunciation of other Italian towns, cities, and regions (i.e., Milano, Palermo, Abruzzo, Veneto, Moltepulciano)."

The Board agreed with the Examining Attorney that BORRELLO has the structure and pronunciation of a surname, particularly an Italian surname, and that Applicant’s use of the possessive is consistent with the use of a surname.

The Board found that "there is no persuasive evidence in the record that [BORRELLO’S] would be perceived as anything other than as a surname in the United States. Eximius Coffee, 120 USPQ2d at 1283. And so, if affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.

Precedential No. 33: #LAW Fails to Function as a Source Indicator for Legal Referral Services, Says TTAB

The Board upheld a refusal to register the proposed mark #LAW for legal referral services, finding that the term, as used on Applicant Pound Law's specimens of use, fails to function as a source indicator. Instead, the Board found that the term, a vanity phone number, would be perceived by consumers as merely informational, a means to contact the applicant or its licensee, the Morgan & Morgan law firm. In re Pound Law, LLC, 2022 USPQ2d 1062 (TTAB 2022) [precedential] (Opinion by Judge Cynthia C. Lynch). [Subsequently, Pound Law brought a civil action for review of the Board’s decision, providing additional evidence of consumer perception of the mark. The district court entered an agreed order remanding the application to the USPTO to take appropriate steps to approve the mark for publication.]

The Board observed that, as made clear by the Trademark Act, the USPTO "is statutorily constrained to register matter on the Principal Register if and only if it functions as a mark." In re Brunetti, 2022 USPQ3d 764, at *9. Section 45 defines "trademark" and "service mark" as "any word, name, symbol, or device, or any combination thereof … used by a person … to identify and distinguish" goods or services, respectively, "and to indicate the source" of the goods or services, "even if that source is unknown." The Board must determine "whether the relevant public, i.e. purchasers or potential purchasers of the identified legal and legal referral services, would perceive #LAW as identifying the source or origin of such services." See, e.g., In re Texas With Love, LLC, 2020 USPQ2d 11290, at *2 (TTAB 2020).

Considering first the nature of the proposed mark, the Board pointed out that "matter widely used to convey informational messages generally is not perceived as indicating a single source." See, for example, Vox Populi Registry, 2022 USPQ2d 115, at *3 (affirming failure-to-function refusal where .SUCKS would be viewed “as only a non-source identifying part of a domain name, rather than as a mark”). The CAFC in Vox Populi indicated that evidence of how a term is used in the marketplace is relevant to the issue of consumer perception.

Citing numerous examples from various law firm advertising materials, the Board found that #LAW is commonly used as a hashtag in the legal field, including by the applicant's licensee, Morgan & Morgan. Although the third-party uses are not in the nature of trademarks, they are probative of consumer perception. "Applicant's use of its proposed mark is not qualitatively different than the third-party uses that Applicant concedes are non-source indicating."

Applicant Pound argued that the Board has long recognized the registrability of mnemonic telephone numbers, pointing to TMEP Section 1209.02(l). [Reminder: the TMEP is not the law - ed.]. The Board, however, pointed out that the new versions of vanity phone numbers "present a somewhat different situation than traditional alphanumeric numbers." The different "formation" of these new vanity numbers "impacts perception and distinguishes them" from traditional numbers.

Turning to the applicant's own use of #LAW, its specimens of use fell into two categories: multimedia examples promoting the Morgan & Morgan law firm, and website excerpts promoting the #LAW vanity phone number to the general public and to law firms. As to the former, the Board concluded that they do not show service mark use because "they present #LAW as a mnemonic for the telephone number #529, by which prospective clients may contact a lawyer at the Morgan & Morgan law firm, not as a source indicator for legal or legal referral services."

As to applicant's website specimens (which do not refer to Morgan & Morgan), the Board found that, when each is viewed as a whole, consumers would perceive #LAW as a mnemonic for a phone number and not a source indicator. For example, the appearance of #LAW under #529 on a cellphone screen conveys that "this is the phone number to use to be connected with a lawyer who is part of of the 'nationwide network of law firms.'"

Applicant Pound maintained that the Board disregarded the CAFC's Dial-A-Mattress decision, which Pound claimed "expressly recognize[s]that mnemonic telephone numbers function as trademarks." The Board disagreed. "Just as there is no per se rule that all mnemonic telephone numbers are not registrable, there is no per se rule that they are. As in all refusals, consumer perception is determined based on the unique evidence and circumstances in each case."

Dial-A-Mattress involved the reversal of a genericness refusal of 1-800-MATTRESS for telephone shop-at-home retail services in the field of mattreses. Here, the refusal is based on "failure-to-function in view of the manner of use by Applicant on its specimens." Thus, there is no inconsistency between this case and Dial-A-Mattress.

Finally, Pound pointed to its ownership of a 15-year old registration for #LAW on the Supplemental Register. The Board was unimpressed, observing that it must make its own findings of fact regardless of the conclusions made by an examining attorney in another application, and recognizing that circumstances have changed in the 15 years since the prior registration issued (including third-party use of the proposed mark as a hashtag). "Given the nature of Applicant’s use on the specimens at issue, the prior registration does not convince us that #LAW functions as a service mark in the case before us."

The Board therefore affirmed the refusal to register under Section 1, 2, 3, and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlogger comment: Applicant feebly argued that #LAW would be perceived as "POUND LAW." Never crossed my mind. How about you?

Text Copyright John L. Welch 2022.

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

So far this year, the Board has affirmed 155 of the 167 Section 2(d) refusals on appeal (just about 93%). Here are three decisions that came down recently. How do you think they came out? [Results in first comment].

In re YASA Marketing, Inc., Serial No. 88751408 (October 22, 2022) [not precedential] (Opinion by Judge Michael B. Adlin) [Section 2(d) refusal of the mark DEL MOLCAJETE for "salsa, hot sauce" in view of the registered mark EL MOLCAJETE & Design (shown below) for "dried chilies for food consumption, and dried [sic]." [“The English translation of the word 'EL MOLCAJETE' in the mark is 'THE MORTAR'"].

In re Dorinda Medley, Inc., Serial No. 90235507 (November 3, 2022) [not precedential] (Opinion by Judge Jonathan Hudis). [Section 2(d) refusal of BLUE STONE MANOR for various clothing items, in view of the registered mark BLUE STONE for overlapping clothing items.]

In re Tiny Boxwood’s Holdings, LLC, Serial No. 90263427 (November 9, 2022) [not precedential] (Opinion by Judge Jonathan Hudis) [Section 2(d) refusal of TINYS MILK & COOKIES for, inter alia, "breads, croissants, donuts, muffins, rolls and scones" [MILK & COOKIES disclaimed] in view of the registered mark TINY'S TINY PIES for "pies" [TINY PIES disclaimed]].

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

TTAB Decides Ownership Dispute Over THE COWBOY ARMS HOTEL AND RECORDING SPA for Recording Studio Services

In an ownership dispute that "has the makings of a country song," the Board found that legendary country singer Cowboy Jack Clement and Opposer Clementvision, Inc., a company he formed, owned the mark THE COWBOY ARMS HOTEL AND RECORDING SPA for approximately 38 years before Cowboy Jack passed away in 2013. His children, Alison and Niles, inherited all of his assets, including Opposer. Applicant Robert Clement, second cousin of Cowboy Jack, bought the house in Nashville where Cowboy Jack's studio was located and began to use the mark there. He applied to register the mark for musical recordings and recording studio services. The Board found, however, that Applicant did not acquire rights in the mark, and further that Opposer had not abandoned the mark. Clementvision, Inc. v. Robert Clement, Opposition No. 91256127 (October 25, 2022) [not precedential] (Opinion by Judge Michael B. Adlin).

The Board found that "the evidence all points in one direction: Cowboy Jack bequeathed his music businesses, including Opposer (which owns the involved mark) to Alison and Niles. We presume this transfer to include all associated trademarks and service marks, and Applicant has not rebutted the presumption. Indeed, as explained above, Applicant’s theory that the involved mark was transferred to Ms. Miller and then to Applicant has no evidentiary support whatsoever."

There was no dispute that the public associated the mark with Cowboy Jack during his lifetime. There was no evidence that "in the year following Cowboy Jack’s death the public suddenly disassociated the mark from Cowboy Jack whose music continued to be popular, and in that short period of time somehow came to associate the mark with Ms. Miller or ZMG, or later Applicant." Moreover, there was evidence that despite Applicant using the mark for the recording studio, the public continued to associate the mark with Cowboy Jack and his services.

Finally, the public will look to Opposer, Cowboy Jack’s business now run by his children, to stand behind the quality of the services provided under the involved mark.

As to Applicant's abandonment defense, he failed to introduce evidence of nonuse and thus failed to meet his burden of proof. Opposer produced evidence of use of the mark: for example, "a primary aspect of Opposer’s business is to collect royalties on songs it owns or in which it has rights, and it has done so continuously since before Cowboy Jack’s death, including the periods before and after the 3405 Belmont property was sold." Moreover, even if there were a period of nonuse, Opposer had an intent to resume use. It found a new studio location and negotiated for a film about Cowboy Jack.

And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: You might say that Applicant wore the black cowboy hat in this one.

Text Copyright John L. Welch 2022.

TTABlog Test: Is "SMART TECH" Merely Descriptive of RFID-Controlled Model Trains?

The USPTO refused to register the proposed mark SMART TECH for "downloadable software for controlling RFID enabled electronic toy and model trains, toy and model train sets, and components therefor” and for "RFID enabled toy and model electronic trains and train sets, and accessories and components therefor, namely, train tracks, buildings, figures, signs, vehicles and trees" [TECH disclaimed], deeming the mark to be merely descriptive of the goods under Section 2(e)(1). Applicant Brio argued that SMART refers to the impact of the toys on children because "playing with them develops fine motor skills, promotes problem solving skills, and encourages creativity." How do you think this came out? In re Brio AB, Serial No. 90091387 (November 4, 2022) [not precedential] (Opinion by Judge Michael B. Adlin).

Examining Attorney James Earl Sensor relied on dictionary definitions of SMART, TECH, TECHNOLOGY, and RFID, as well as on third-party registrations on the Supplemental Register and registrations on the Principal Register under Section 2(f) or with disclaimers. He also pointed to Brio's website, referring to statements like "Based on smart interactive technology with action chips. BRIO Smart toys are preferably used with BRIO Smart Tech Engine to make sounds and actions possible."

In addition to its argument about making children smarter, Brio also introduced evidence that "SMART is widely used in connection with children’s toys," but, according to Brio, "most often does not indicate the toys are enabled with any kind of technology." It also argued that the proposed mark is suggestive rather than merely descriptive because the mark "has several different suggestive connotations rather than a single descriptive meaning." Furthermore, even if consumers perceived SMART TECH as a reference to RFID technology, “nothing about RFID technology immediately brings to mind toys or toy train sets."

The Board, however, had no doubt that SMART TECH "is merely descriptive because it immediately conveys knowledge of a quality, feature, function, or characteristic” of Applicant’s “RFID enabled” toy trains and toy train software. *** Applicant’s identification of goods and website make this clear." It pointed out that Brio's arguments suffer from the same flaw: "Applicant misapprehends the applicable standard. 'The question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.'"

Here, consumers who know that Applicant offers “RFID enabled” toy trains and software to control the trains will immediately understand SMART TECH to convey information about both the toy trains and the software. Specifically, they will understand that the trains will be “smart” in that they will take action (such as moving, making sounds or turning on lights) when commanded to do so through Applicant’s RFID enabled “tech."

That SMART TECH may have other meanings in other contexts is irrelevant. Likewise, "it does not matter that the proposed mark is 'vague' or broad in the abstract. What matters is how it will be perceived by consumers who know that Applicant offers RFID enabled toy trains and software to control them."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.

TTABlog Reaches Its 18th (XVIII) Anniversary !

"When I was 17, it was a very good year." At least for the TTABlog. Let's hope this coming year is better for everyone. The blog debuted on November 8, 2004, with a post entitled "Leo Stoller Loses Again." (here). Remember him? Here we are, just over 5,000 blog posts later and approaching 15,000 tweets.  Thank you all for reading!

Read comments and post your comment here.

Text Copyright John L. Welch 2022.

Precedential No. 32: In an "Unusual Situation," TTAB Opts to Consider Summary Judgment Motion on Unpleaded Claim

In seeking cancellation of a registration for the mark KIMBERLEY KAMPERS for campers, Petitioner moved for summary judgment on the grounds of non-ownership and abandonment, but it failed to meet its initial burden to make a prima facie case. The Board therefore denied the motion as to those grounds, but in light of Petitioner's evidence regarding nonuse during the three-year statutory abandonment period, the Board chose to consider nonuse (though unpleaded) as a separate ground for summary judgment, and it set a schedule for briefing that issue. Kimberley Kampers IP Pty Ltd v. Safiery Pty Ltd, 2022 USPQ2d 1036 (TTAB 2022) [precedential].

Petitioner claimed that it could meet its initial burden to prove a prima facie case "by showing that there is an absence of evidence supporting the nonmoving party's case." Wrong, said the Board. "[W]here, as here, 'the moving party will bear the burden of persuasion at trial, that party must support its motion with credible evidence—using any of the materials specified in [Fed. R. Civ. P.] 56(c)—that would entitle it to a directed verdict if not controverted at trial.'" (Emphasis by the Board). Here, Petitioner failed to meet its burden of production on either claim.

Non-ownership: Section 7(b) provides Respondent with a presumption that it owns the registered mark. Therefore, Petitioner cannot meet its initial burden merely by showing that Respondent lacks evidence to support its claim or by otherwise shifting the burden onto Respondent to prove ownership. The submissions by Petitioner purporting to show that it owns the mark were "inconclusive and insufficient to demonstrate the absence of a genuine dispute on the issue." [The Board doesn't say what the submissions were - ed.]

Abandonment: Petitioner relied on the three-year presumption of abandonment in Section 45 in asserting that Respondent's interrogatory responses established a three-year period of nonuse, and thus a prima facie case of abandonment. Respondent's underlying application was filed on March 2, 2018, and it was entitled to the presumption of validity as of that date under Section 7(b). The critical three-year period for the presumption of abandonment began on that date. ShutEmDown Sports, Inc. v. Lacy, 102 USPQ2d 1036, 1042 (TTAB 2012). However, Respondents interrogatory responses were dated January 12, 2021, and so the three-year requirement was not met and Petitioner failed to meet its initial burden.

Nonuse: Nonetheless, the Board found that the parties' briefs and submissions "raise a question of Respondent's nonuse of its mark at the time of filing the underlying application that would render the registration void ab initio." Since the underlying application was filed under Section 1(a), Petitioner's allegation that the registered mark has never been used in commerce "necessarily included an allegation that the mark was not in use on the filing date of the application."

A claim of nonuse thus appeared to be supported by Petitioner's allegations as well as by certain of Respondent's interrogatory answers, which stated that it was "currently in the process of developing a product," and "has not yet commenced sales."

The Board observed that it is not its practice to consider an unpleaded claim on summary judgment. However, in this "unusual situation," it chose to do so.

[W]e find that the allegations within Petitioner’s pleading of abandonment were sufficient to put Respondent on notice that Petitioner had alleged nonuse and that Respondent’s use of its mark at the time the underlying application was filed was at issue. *** We therefore read the petition for cancellation as asserting a separate claim that the registration is void ab initio for nonuse.

The Board directed the parties to file briefs and submit evidence on the issue of nonuse.

Read comments and post your comment here.

TTABlogger comment: Seems like a good decision to me: just cut to the chase.

Text Copyright John L. Welch 2022.

TTAB Posts November 2022 Hearing Schedule

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

November 2, 2022 - 10 AM: In re Benjamin & Brothers, LLC DBA Reservations.com, Serial No. 88396223 [Refusal to register RESERVATIONS.COM for, inter alia, making hotel reservations for others, on the grounds of genericness and, alternatively, mere descriptiveness and lack of acquired distinctiveness.]

November 2, 2022 - 1 PM (In Person): In re Bowery Farming, Inc., Serial No. 88873491 [Section 2(d) refusal of THE MODERN FARMING COMPANY for "[f]resh produce, namely, fresh vegetables, fruits, and unprocessed grains (FARMING and COMPANY disclaimed), in view of the registered mark MODERN FARMS for processed mushrooms, and for fresh, raw, and unprocessed mushrooms.]

November 8, 2022 - 10 AM:  In re Fox's Pizza Den, Inc., Serial No. 88880667 [Refusal to register WEDGIE for "sandwiches" on the grounds of genericness and, alternatively, mere descriptiveness and lack of acquired distinctiveness.]

November 8, 2022 - 1 PM: In re Apple Inc., Serial Nos. 90177338 and 90177282 [Refusals to register APPLE MUSIC 1 in standard character form and MUSIC 1 & design, for "broadcasting and transmission of voice, data, images, music, audio, video, multimedia, podcasts, and radio by means of telecommunications networks; broadcast and transmission of streamed music, audio, video, podcasts, and multimedia content by means of telecommunications networks; providing access to websites, databases, music, audio and video content programs on the Internet by means of telecommunications networks; streaming audio material on the internet; radio broadcasting," on the ground of likelihood of confusion with the registered mark MUSIC 1.]

November 10, 2022 - 1 PM: Stuart Weitzman IP, LLC v. Eastland Music Group, Cancellation No. 92066847 [Petition for cancellation of a registration for the mark 50/50 for various clothing items, on the ground of nonuse and abandonment.]

November 15, 2022 - 1 PM (In Person): Rebecca Curtin v. United Trademark Holdings, Inc., Cancellation No. 92073884 [Hearing on the issue of whether opposer, a consumer, is entitled to a statutory cause of action in this opposition to registration of RAPUNZEL for dolls and toy figures on the grounds of genericness, mere descriptiveness, failure to function, and fraud.]

November 22, 2022 - 2 PM: In re Matosantos Commercial Corporation, Serial No. 88718607 [Section 2(d) refusal of FRUIT & VEGGIE BLENDERS, in the stylized form shown below, for "Frozen fruits; Frozen vegetables," in view of the registered mark FRESH BLENDERS for “Fresh fruit and vegetables."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

Precedential No. 31: "SMOKES & Design" for Cannabis Cigarettes Not Confusable with "SMOK" for Electronic Cigarettes, Says TTAB

You might say that Applicant Fancy Pants relied on the old rope-a-dope strategy in this opposition to its application to register SMOKES & Design for "Cigarettes containing tobacco substitutes not for medical purposes containing only cannabis with a delta-9 THC concentration of not more than 0.3% on a dry weight basis." Opposer Shenzhen claimed likely confusion with its registered mark SMOK and several SMOK-formative marks for electronic cigarettes, parts and components thereof, and related services. Fancy Pants neither submitted testimony and evidence nor filed a brief, but the Board ruled in its favor, finding "SMOK" to be a weak mark, Fancy Pants's mark not confusingly similar to SMOK, and no overlap in trade channels. Shenzhen IVPS Technology Co. Ltd. v. Fancy Pants Products, LLC, 2022 USPQ2d 1035 (TTAB 2022) [precedential] (Opinion by Judge Cheryl S. Goodman).

Family of Marks: In addition to its registration of SMOK and its common law rights, Shenzhen claimed to own a family of "SMOK" marks, including SMOK FASHION, SMOK MODS, SMOK ECIG, SMOK MINI, SMOK PIPE, AND SMOKE TECH. The Board first considered whether Shenzhen established priority of use with regard to its alleged family of marks. Although priority was not an issue as to Shenzen's pleaded registration, priority of the family of marks is a separate issue.

The Board found that "SMOK," the "family feature" of Shenzhen's alleged family of marks, is descriptive of the goods, and therefore Shenzhen must make a "strong showing" of acquired distinctiveness for "SMOK" to quality as a family feature. Considering the evidence as a whole, the Board found that Shenzhen failed to prove that the asserted family feature had acquired distinctiveness prior to Fancy Pants's effective filing date. Therefore, Shenzhen could not prevail on its Section 2(d) claim based on its alleged family of marks.

Individual Common Law Marks: The Board then turned to whether Shenzhen proved priority based on its common law rights in the individual marks. It found that Shenzhen's testimony was "too vague and nonspecific to associate use of any of the SMOK or SMOK-formative marks identified by Opposer’s witness with any particular goods or services or with any date of use."

Registered Mark SMOK: Shenzhen properly submitted only one registration: for the mark SMOK in standard form, for which priority was not an issue. The Board, not surprisingly, found that SMOK, the phonetic equivalent of "smoke," is an inherently weak mark for Shenzhen's products and services. Moreover, the Board found that the design elements in Fancy Pants's mark sufficed to distinguish its mark from the SMOK mark.

As to the goods, the Board focused on Shenzhen's "electronic cigarettes" and found them to be related to Fancy Pants's "cigarettes containing tobacco substitutes," since they both could be used for the same purpose: "vaping or smoking (inhaling) a particular smokable substance."

As to channels of trade, Shenzhen's products are sold online, through smoking shops, vaping shops, and convenience stores, but Shenzhen did not prove that those venues are normal channels of trade for Fancy Pants's products. The fact that both Fancy Pants and Shenzhen promote and offer their products on the Internet is not a sufficient basis for a finding that they are sold through the same trade channels.

Conclusion: Considering the evidence and the argument, the Board found that the dissimilarity of the marks and the weakness of the common element SMOK, together with the lack of proof that the trade channels overlap, required a finding of no likelihood of confusion. And so, it dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: The mark "SMOK" was registered under Section 2(f). Should a disclaim of "smoke" have been required? Would it be possible?

Text Copyright John L. Welch 2022.

Precedential No. 30: Finding No Error, TTAB Rejects Reconsideration Request Re "DEEP OPTO PROFILING" Descriptiveness Affirmance

The TTAB rejected Applicant Berkeley Lights' quixotic request for reconsideration of the Board's January 2022 decision [pdf here] affirming a Section 2(e)(1) mere descriptiveness refusal of DEEP OPTO PROFILING for various chemicals and for biochemical services. Berkeley unsuccessfully claimed that the Board both violated Berkeley's Constitutional due process rights and the requirements of the Administrative Procedure Act, and failed to follow Board precedent by not affording Berkeley the benefit of the doubt on the issue at hand. In re Berkeley Lights, Inc., 2022 USPQ2d 1000 (TTAB 2022) [precedential] (Opinion by Judge Christopher Larkin).

In a detailed review of the record and the decision, the Board found no substantive or procedural error. It rejected Berkeley's principal contention that the Board may not rely on "new arguments that the Examining Attorney never made" in reaching its decision. According to the TBMP, the Board "need not find that the examining attorney's rationale was correct in order to affirm the refusal to register, but may rely on a different rationale."

Although the Board may not rely on an "additional" or "new ground" for refusal - i.e., a different statutory ground than in the final action under appeal - the Board did not adopt a new ground for refusal.

[T]he mere descriptiveness refusal has remained the same since the first Office Action. Throughout prosecution and on appeal, the mere descriptiveness refusal was based on the meaning of the individual terms and their continued descriptive significance when used in combination in connection with Applicant’s goods and services. Applicant was provided with the evidence supporting the refusal as attachments to the Office Actions, and had the opportunity to address the Examining Attorney’s evidence and to provide evidence of its own in response, and Applicant did so.

The Board pointed out that, in any case, Berkeley could have addressed the "new arguments" in this request for reconsideration, but did not. Accordingly, the Board found no lack of notice of lack of due process here.

Finally, Berkeley's reliance on the so-called "rule of doubt" argument was misplaced, since the Board did not expressed any doubt in its decision.

To the contrary, based on our review of the record as a whole, including Applicant’s own materials, we had “no doubt that consumers of Applicant’s goods and services for testing cells on a microfluidic chip would immediately understand that DEEP OPTO PROFILING describes a key function and purpose of Applicant’s chemicals and assays, namely, a self-described ‘process’ involving the use of optofluidic technology that depends on microfluidics,” id. at 30-31, because the Examining Attorney had made of record sufficient evidence to establish a prima facie case for mere descriptiveness, and Applicant neither rebutted that evidence nor showed on this request for reconsideration why the Board’s decision relying on that evidence was wrong.

And so, the Board denied the request for reconsideration.

Read comments and post your comment here.

TTABlogger comment: The Board repeatedly cites to the TBMP, which of course is not the law. The TBMP even says so in its own Introduction.

Text Copyright John L. Welch 2022.