TTAB Posts January 2023 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled nine (IX) oral hearings for the month of January 2023. Eight of the hearings will be held via video conference; the last one will be in person. Briefs and other papers for each case may be found at TTABVUE via the links provided.

January 10, 2023 - 1 PM: In re OptConnect Management, LLC, Serial Nos. 88458653 and 88458583 [Section 2(d) refusals to register OPTCONNECT and OPTCONNECT EMA for modems, network routers, and other networking devices designed to facilitate machine-to-machine communications, and for related software and services, in view of the registered mark OPCONNECT for "Interactive computer kiosks comprising computers, computer hardware, computer peripherals, and computer operating software, for use in digital advertising and electric vehicle charging."]

January 12, 2023 - 2 PM: Ultrasun AG v. Sun Precautions, Inc., Cancellation No. 92072352 [Petitioner for cancellation of a registration for the mark ULTRA SUN for "cosmetic sunscreen preparations; sunscreen creams; water resistant sunscreen, sunscreen preparations," on the grounds of nonuse and likelihood of confusion with petitioners common law mark ULTRASUN for identical products.]

January 17, 2023- 1 PM: In re Nature Cravings Pet Treats LLC, Serial Nos. 90139331 and 90145352 [Refusals to register BARKING BUDDHA, in standard form and in the logo form shown below, for "Consumable pet chews; Edible pet treats; Pet beverages; Pet food; Pet treats in the nature of bully stick" in view of the registered mark BUDDHA BISCUITS for "Edible organic pet treats for dogs" [BISCUITS disclaimed].

January 18, 2023 - 1 PM: Old Elk Distilleries, LLC v. Tribal Minds, LLC, Opposition No. 91269117 [Opposition to registration of WHISKEYSMITH for "distilled spirits" on the ground of likelihood of confusion with the allegedly previously used, identical common law mark for whiskey.] 

January 19, 2023 - 1 PM: In re SP Plus Corporation, Serial No. 87906630 [Refusal to register PARKING.COM on the Supplemental Register, for "Website providing information regarding parking availability" on the grounds of genericness, or alternatively, mere descriptiveness and lack of acquired distinctiveness].

January 24, 2023 - 1 PM: DP Derm, LLC v. Derma Pen IP Holdings LLC, Cancellation No. 92073045 [Petition for cancellation of a registration of the mark DERMAPEN for "skin treatment devices using multiple needles in a vibrating method for performing skin treatment procedures" on the ground of abandonment].

January 25, 2023 - 1 PM: In re Nature Cravings Pet Treats LLC, Serial No. 90136851 [Refusal to register the mark shown below for "Consumable pet chews; Edible pet treats; Pet beverages; Pet food; Pet treats in the nature of bully sticks" in view of the registered mark TWO CRAZY CAT LADIES for "dietary supplements for pets."]

January 26, 2023 - 1 PM: In re Nicholas Shane Kouns, Serial No. 88390117 [Section 2(e)(1) mere descriptiveness refusal of ADVANCED ILLNESS MANAGEMENT SERVICES for "Downloadable computer application software for mobile phones, namely, software for authorising access to data bases; Downloadable computer software for authorising access to data bases" [ADVANCED ILLNESS MANAGEMENT disclaimed] .]

January 31, 2023 - 1 PM: Starbucks Corporation v. Mountains and Mermaids, LLC, Oppositions Nos. 91250027 and 91250160 [Opposition to registration of the mark SIREN'S BREW for "Shirts; Sweat shirts" and for "Coffee beans; Ground coffee beans," on the grounds of likely confusion with, and likely dilution of, petitioner's "SIREN" word and logos marks for coffee, restaurant services, and apparel items.]

Read comments and post your comment here.

TTABlog comment: One of the most boring set of cases I've seen in a while," says David Perlsack. Any predictions? See any WYHAs? any WYHOs?

Text Copyright John L. Welch 2022.

TTAB Affirms Trifusal of POSITIVE ONLINE PRESENCE for Marketing Consulting Services

The TTAB upheld three refusal to register the proposed mark POSITIVE ONLINE PRESENCE for "Providing marketing consulting in the field of social media." Affirming the first two refusals, genericness and failure-to-function, was a snap, because the applicant presented no argument regarding them on appeal. As to the third ground, the Board agreed with Examining Attorney Darryl M. Spruill's rejection of a proposed amendment to the recitation of services as exceeding the scope of the original identification. In re Media Minefield, Inc., Serial No. 88395484 (December 14, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo).

The filing of a notice of appeal has the effect of appealing all refusals or requirements made final. However, if an applicant does not make an argument made during prosecution, it may be deemed waived by the Board. In other word, "[a]n applicant’s failure to address the refusals or requirements in its appeal brief is a basis for affirming an examining attorney’s refusal of registration on those grounds." And so, the Board affirmed these two refusals.

Although the refusal based on the recitation of services was rendered moot, the Board, for the purpose of completeness, exercised its discretion to determine the merits of the proposed amendment to the recitation of services.

Trademark Rule 2.71(a), 37 C.F.R. § 2.71(a), provides that: “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services . . . .” Applicant sought to amend its recitation of services to "providing marketing consulting in the field of social media, namely, providing and managing social media content for business executives." The Examining Attorney issued a final Office action refusing the amended identification of services as being beyond the scope as originally filed.

The Board took judicial notice of definitions of the words "marketing," "consulting," and "managing." It pointed out that the the added term "managing" encompasses administrative control or authority that exceed the scope of "marketing consulting," which consists of providing professional advice in the field of advertising, shipping, storing and selling goods by producers or sellers to consumers.

We agree with Applicant that specifying its services are rendered to “business executives” limits the scope of the original identification. However, the addition of “managing” social media content expands the original inasmuch as having administrative control or authority – or managing – falls outside the scope of “marketing consulting.” Therefore, the proposed amendment is broadening, and the refusal is affirmed.

And so, all three refusals were affirmed.

Read comments and post your comment here.

TTABlogger comment: Is a trifusal an automatic WYHA?

Text Copyright John L. Welch 2022.

TTABlog Test: Is CALIHEMP Geographically Descriptive of Skin Care Products?

The USPTO refused to register the proposed mark CALIHEMP for “skin and body topical lotions, creams, oils, balms and salves for cosmetic use, all of the foregoing containing hemp oil extract containing hemp ingredients solely derived from hemp with a delta-9 tetrahyrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis,” deeming the mark primarily geographically descriptive of the goods under Section 2(e)(2). Applicant Smith & Vandiver argued that, because Cali is the name of a city in Colombia, the proposed mark does not solely signify the State of California. How do you think this came out? In re Smith & Vandiver, Corp., Serial No. 88477576 (December 20, 2022) [not precedential] (Opinion by Judge Martha B. Allard).

The Board observed that a term is primarily geographically descriptive under Section 2(e)(2) if “(1) the primary significance of the term in the mark sought to be registered is the name of a place that is generally known to the public; (2) the goods originate in the place identified in the mark; and (3) the public would make an association between the goods and the place named in the mark by believing that the goods originate in that place.”

Examining Attorney Diana Zarick made of record a variety of evidence, including evidence that the term CALI is the nickname for the state of California, that the term CALI is used by persons in the hemp industry to refer to the state of California, and that hemp-based goods commonly originate from there. She also made of record several third-party registrations for marks incorporating the term CALI for use with goods similar to those identified in the involved application, which registrations include disclaimers of “CALI” or reside on the Supplemental Register.

Noting that it is “well-settled that a geographic nickname, such as ‘Big Apple’ or ‘Motown’, is treated the same as the actual name of the geographic location” if it is likely to be perceived as such by the purchasing public. Here, the evidence showed that “the term CALI is a well-known nickname for the state of California and that it will be perceived as such by the purchasing public.”

Applicant argued that the primary significance of its proposed mark is not a reference to California because other locations also have the name CALI. It pointed to evidence that Cali is the capital of the Valle del Cauca department and the most populous city in southwest Colombia. As a result, applicant contended, there is insufficient evidence to establish that the term CALI will be perceived by the public “solely” as signifying the state of California, particularly since the record does not show that the Colombian population in the United States is de minimis.

The Board was unimpressed: “U.S. consumers will perceive CALI as referring to California given that CALI is well-known as the state’s nickname and given Applicant’s location in California.”

The Board further found that inclusion of the term HEMP in the mark is not sufficient to establish a non-geographically descriptive significance: i.e., "the addition of descriptive wording to a geographically descriptive term does not detract from the primary geographic significance of the mark.” In sum,  the Board found that “the geographical significance of the term CALI in the CALIHEMP mark is its primary significance.” Therefore, the first element of the Section 2(e)(2) test was satisfied.

As to the second element, the evidence established that Applicant Smith and Vandiver is located in California and that it intends to manufacture its goods therel. Thus, applicant’s goods originate in California. A goods/place association may ordinarily be presumed from the fact that “applicant’s goods originate in or near the place named in the mark.”

Having found that the first two elements are met, the Board may presume that the third element is also met: i.e, that the consuming public would believe that the goods originate in California.

[Applicant’s] arguments do not overcome the evidence of record that the primary significance of the term CALI to US consumers would be California. Applicant’s arguments also ignore the fact that Applicant itself is located in California and intends to produce its goods there; and (2) that the above evidence of third-party websites, such as Cali Cannabis Marketplace, Cali CBD, Cali Garden CBD and others, show a reasonable basis for concluding that the public is likely to believe that the CALI portion of the mark identifies the place, i.e., California, from which the goods will originate. Consequently, Applicant has failed to rebut the presumption that arises from having found that the first two elements of the test for geographical descriptiveness have been met.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA? Before you answer that questions, did you know that CALIFLOWER is registered on the Principal Register, without a Section 2(f) claim, for "pre-packaged dried hemp flower cigarettes for smoking, and containing no more than 0.3% THC on a dry-weight basis." Double entendre?

Text Copyright John L. Welch 2022.

TTABlog Test: Is CHIPPEWA VALLEY FARMS Geographically Descriptive of Canned Vegetables?

Menard’s application to register CHIPPEWA VALLEY FARMS for “canned vegetables” was accepted for the Supplemental Register, but Menard appealed the Section 2(e)(2) refusal, seeking a Principal Registration. Menard argued that Chippewa Valley is not a generally known geographic place but rather is “obscure outside of the local area.” Did you ever hear of Chippewa Valley? What state is it in? How do you think this came out? In re Menard, Inc., Serial No. 90111538 (December 21, 2022) [not precedential] (Opinion by Judge Karen S. Kuhlke).

The Board observed that “[a] mark is primarily geographically descriptive if: (1) the primary significance of the mark is the name of a place that is generally known; (2) the goods or services originate in the place identified in the mark; and (3) the relevant purchasers would associate the identified services with the place named, i.e., the public would believe that the services come from the place named.”

According to Wikipedia, Chippewa Valley, Wisconsin, is “the drainage basin of the Chippewa River and its tributaries, the name is more often applied to the Eau Claire-Chippewa Falls metropolitan area and the surrounding area, including communities not located within the Chippewa River’s watershed.” Menard is a company based in Eau Claire, Wisconsin, with stores in 15 states.

As to the first element of the Section 2(e)(2) test, Menard contended that the primary significance of CHIPPEWA relates to the Native American tribe, and therefore there is no particular geographic connection because the Chippewa or Ojibwa people span across the United States and Canada. The Board, however, pointed out that the term CHIPPEWA VALLEY is under consideration, not CHIPPEWA. Menard acknowledged that Chippewa Valley is “an obscure valley in Wisconsin.”

Citing the Board's Broken Arrow decision, Menard argued that because the geographical distribution of its products is not limited, the relevant issue is not whether “locals” will recognize the geographic term, but whether consumers through the country will do so. The Board distinguished Broken Arrow because there the proposed mark “BA” was a local abbreviation for the area in question, there were multiple meanings of “BA,” and there was no evidence indicating nationwide exposure to the geographic term. Here, however, “many of the websites in evidence feature services such as tourism, travel, education and relocation, which would attract and even target non-local residents.”

As to the second element, the record established that Menard is located in Eau Claire, Wisconsin, in the Chippewa Valley. Moreover, the specimen of use “shows the can of beans is available for pick up at the store in Eau Claire West. Menard did not contest this point.

As to the third element, a goods/place association may be presumed when the geographic significance of the term at issue is its primary significance and the geographic placed is neither obscure nor remote. Again, Menard did not challenge this point, other than to contend that Chippewa Valley is obscure.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I thought "Eau Claire" was a song by Gilbert O'Sullivan:

Text Copyright John L. Welch 2022.

Recommended Reading: The Trademark Reporter, November-December 2022 Issue

INTA has published the November-December, 2022 (Vol. 112 No. 6) issue of The Trademark Reporter (TMR). [pdf here]. Willard Knox, Editor-in-Chief, summarizes the contents as follows (and below): "This issue offers our readers two firsts for the TMR: two data-rich articles analyzing trademark applications to the United States Patent and Trademark Office and the European Union Intellectual Property Office, respectively, and offering data-informed insights to brand owners and thought leaders alike. The issue also features a book review on ambush marketing. "

A Tale of Four Decades: Lessons from USPTO Trademark Prosecution Data, Deborah R. Gerhardt and Jon J. Lee. In this first-ever TMR article based on the Trademark Case Files Dataset released by the Office of the Chief Economist of the United States Patent and Trademark Office, the authors analyze forty years of trademark application data (beginning in 1981) and offer data-informed insights that every brand owner should know.

The Future of Trademarks in a Global Multilingual Economy: Evidence and Lessons from the European Union, Barton Beebe and Jeanne C. Fromer. In this first-ever TMR article based on the Open Dataset released by the European Intellectual Property Office (EUIPO) (and on multiple other datasets), the authors analyze all trademark applications from 1996 through 2018, which reveal that the European Union trademark system is experiencing extreme levels of trademark depletion and crowding, and propose legal reforms that may help trademark systems around the world, including the U.S. system.

Book Review: Ambush Marketing and Brand Protection: Law and Practice, by Phillip Johnson, reviewed by Désirée Fields. The reviewer of this book finds this one-volume treatise on “ambush marketing,” where a non-sponsoring company attempts to deflect the attention to itself and away from the sponsoring company, a must-read for anyone advising clients on intellectual property rights in the sports sector.

Read comments and post your comment here.

TTABlog comment: Once again, I thank The Trademark Reporter for allowing me to provide this issue to you all. This issue of the TMR is Copyright © 2022, the International Trademark Association, and is made available with the permission of The Trademark Reporter®.

Text Copyright John L. Welch 2022.

Precedential No. 37: TTAB Rejects DC Comics Opposition: No Likely Confusion or Dilution vis-a-vis Superman "S-Shield" Marks

The Board [unsurprisingly, I think - ed.] tossed out this opposition to registration of the word-and-design mark shown immediately below, for "installation, maintenance and repair of cell phone related hardware," finding no likelihood of confusion with, and no likelihood of dilution of, several "'S' shield" marks associated with the "Superman" character. The Board found the marks, goods/services, and trade channels too different for purposes of likelihood of confusion, and as to the dilution claim it deemed the difference between the marks to be fatal. This blog post will attempt to hit the highlights of the 72-page opinion. DC Comics v. Cellular Nerd LLC, 2022 USPQ2d 1249 (TTAB 2022) [precedential] (Opinion by Judge Marc A. Bergsman).

Procedurally, DC Comics launched off on the wrong foot by citing numerous non-precedential TTAB decisions and by submitting several illegible exhibits. The Board made clear its displeasure. Substantively, the Board focused on three of DC Comics' registered marks: the two "S & Design" marks shown immediately below, for entertainment services, comics, clothing, and a few other mundane products, and the colorful design mark shown below right, for credit card services and customer loyalty rebate programs (collectively the "S" Shield marks).

Likelihood of confusion: The Board found the “S” shield marks to be inherently/conceptually strong and also commercially strong or famous, and therefore entitled to a broad scope of protection. However, although the “S” shield design marks are famous indicia of the Superman character and although licensed products bear those marks, those uses serve as collateral source identification rather than as primary source identifiers for the licensed products.

The Board was not persuaded that the applicant’s services, on the one hand, and DC Comics's entertainment-related goods and services and its array of licensed products, including cell phone cases and accessories, are similar and related. Moreover, the involved channels of trade are different: the applicant may render its services "from mobile units, brick and mortar stores, and, perhaps, through the mail, and Opposer’s goods and services are offered online and through various retail locations." DC Comics failed to show an overlap in the channels of trade.

With respect to the marks, the Board found that the term CELLULARNERD.com dominates applicant's mark because it identifies the character superimposed over the letters “CN” in the diamond shield design. "This creates the commercial impression of a tech nerd ready to solve your cell phone problems in his persona as a tech nerd, as opposed to the letter “S” shield design marks symbolizing a specific superhero."

[C]onsumers may easily distinguish Applicant’s mark from Opposer’s “S” shield and design marks. Because Applicant’s mark conveys the image of a tech-savvy, problem-solving nerd with a vastly different set of skills than Opposer’s superhero, consumers will not view the marks in their entireties as sufficiently similar to cause them to mistakenly believe there is an association with Opposer. 

The Board concluded that the differences in the marks outweigh their similarities. Because the involved goods and services are not related and are offered in different channels of trade to different classes of consumers, the Board found that applicant’s mark for “installation, maintenance and repair of cell phone related hardware” services is not likely to cause confusion with DC Comics' “S” shield and design marks for goods and services in the entertainment field and a wide variety of collateral or merchandising products.

Dilution by blurring: The evidence established that the first two “S” shield design marks are famous for dilution purposes, and achieved fame before applicant’s first use of its mark. However, the testimony and evidence did not prove the third mark to be famous for “issuance of credit cards; providing cash and other rebates for credit card use as part of a customer loyalty program” before applicant’s first use of its mark. However, as with the Section 2(d) claim, the Board found the marks too dissimilar to support the dilution claim.

Read comments and post your comment here.

TTABlogger comment: Who knew Superman was such a bully? PS: Judge Bergsman's opinions are always worth a full reading.

Text Copyright John L. Welch 2022.

TTAB Finds Two "MAGIC CITY" Logos Confusable for Overlapping Clothing Items

The Board affirmed another Section 2(d) refusal, finding the mark shown first below, for "clothing, namely, shirts, hats, sweatshirts, shorts and sweatpants," likely to cause confusion with the registered mark shown second below, for "shorts; sports caps and hats; sweat shirts; t-shirts." The goods overlap, so the Board must presume that those goods travel in the same trade channels to the same classes of consumers, who are not necessarily sophisticated purchasers. What about the marks? In re West Flagler Associates, Ltd., Serial No. 87921527 (December 16, 2022) [not precedential] (Opinion by Judge Robert H. Coggins).

In its reply brief, applicant proposed an amendment to its identification of goods to add the words "all in connection with a casino, jai alai stadium, and live concert venue in Miami, Florida." The Board observed that the request was untimely, and in any case would not avoid a likelihood of confusion.

The Board found the marks to be similar in appearance because the largest portions thereof are the words "MAGIC CITY." The Board also found that the design elements of the mark "are not nearly as significant as the marks' literal elements."

Applicant argued that the marks have different connotations: that its “palm tree design communicates a tropical place, which is suggestive of the commercial context in which Applicant[] uses its mark . . . in Miami, Florida,” while “Registrant’s [m]ark includes the design of a silhouette of a naked woman, which is suggestive of its . . . strip club in Atlanta, Georgia." [I must be getting old because I didn't see that in registered mark. - ed.]. The Board was unmoved.

We agree that the palm and silhouette elements of the marks differ, but that difference does not outweigh the larger and dominating literal MAGIC CITY element of the respective marks. As a result, and particularly because of the dominant MAGIC CITY element of each mark, the marks convey essentially identical meanings and create similar commercial impressions.

Applicant pointed out that the marks have co-existed since 2009 without actual confusion. The Board, however, noted the lack of evidence of the extent of use of the cited mark. Moreover, since applicant is in Miami and registrant in Atlanta, there would be no geographic overlap and almost no opportunity for actual confusion to occur. Also, the registrant has no chance to submit evidence in this proceeding, the applicant's assertion of no actual confusion is entitle to little weight.

Under the 13th DuPont factor, Applicant pointed to its ownership of six registrations  for MAGIC CITY marks, invoking the Strategic Partners precedent. The Board, however, observed that the prior registered marks were not the same as the proposed mark; in fact, the proposed mark is closer to the cited mark than the prior marks.

Read comments and post your comment here.

TTABlogger comment: I actually thought the design element in the cited mark looked like a brassiere, so maybe I'm not that old.

Text Copyright John L. Welch 2022.

TTAB Affirms Mere Descriptiveness Refusal of HUMAN DATA MARKETPLACE for Online Sale of Data Assets

The Board affirmed a refusal to register HUMAN DATA MARKETPLACE as a service mark, finding it merely descriptive of "online retail services featuring data assets in the field of real time and non real-time data, namely, providing an online marketplace and platform for acquiring, buying, selling, trading, licensing, leasing, advertising, rating, standardizing, certifying, researching, distributing or brokering data assets" [DATA MARKETPLACE disclaimed]. The pro se applicant argued, without success, that the proposed mark is suggestive rather than merely descriptive because "HUMAN could refer to any number of ambiguous interpretations about the mark, especially if HUMAN is used as a noun." In re Human Data Labs, Inc., Serial No. 88526515 (December 15, 2022) [not precedential] (Opinion by Judge Michael B. Adlin).

(Click on picture for larger image)

Examining Attorney Janice L. McMorrow relied on dictionary definitions of the constituent words, on website evidence showing that one type of data is "human" data, and on several media articles using the term "human data."

Applicant argued that the proposed mark could be "interpreted" as:

(1) a “[c]onsumer ‘MARKETPLACE’ for HUMANS and their ideas & interactions instead of the automated, computerized systems that plague impersonal trading interfaces ... ;” (2) a HUMAN curated ‘DATA MARKETPLACE’ that focuses on individual, consumer preferences instead of generic, algorithmic searches …;” (3) a “‘DATA MARKETPLACE’ created by HUMAN engineers, who are focused on ‘humanizing data’ with ‘humane design … instead of an outsourced marketplace created with generic code;” or (4) “a collection of focus group feedback, online comments, handwritten letters, and phone calls.”

The Board, however, had no doubt that HUMAN DATA MARKETPLACE is merely descriptive because it "immediately conveys knowledge of a quality, feature, function, or characteristic of Applicant’s online marketplace and platform featuring data assets." "Specifically, the mark immediately conveys that Applicant’s marketplace/platform features 'human data,' a type of 'data asset' encompassed by Applicant’s identification of services."

The Board was unmoved by the applicant’s contention that the proposed mark is suggestive because it could be subject to multiple "ambiguous interpretations." First, the Board need only find that one meaning of the term is merely descriptive, and here the evidence established that HUMAN DATA MARKETPLACE is merely descriptive of a marketplace featuring human data. Second, the other potential meanings are also merely descriptive. And third, the mark must be considered not in the abstract, but in the context of the services identified in the application.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Since the applicant appeared pro se, I decided not to label this a WYHA?. BTW, is the term generic, as a subgenus?

Text Copyright John L. Welch 2022.

"ENDURE" for Fire-Resistant Fabrics Confusable WIth "ENDURE by Acend" & Design for Textile Fibers, Says TTAB

A fairly straightforward Section 2(d) case like this one usually results in an opinion of 15 or 20 pages. This one took 42 pages because it lays out each argument of the applicant and the USPTO and provides a thoughtful analysis and application of the relevant DuPont factors. Definitely worth a read. In sum, the Board found the mark ENDURE for fire-resistant fabrics for textile use, likely to cause confusion with the registered mark shown below, for "textile fibers; textile filaments." In re Precision Textiles LLC, Serial No. 88443643 (December 15, 2022) [not precedential] (Opinion by Judge Christopher Larkin).

The Board began with the sixth DuPont factor, the nature and number of similar marks in use on similar goods. Applicant pointed to three existing registrations, two for the mark ENDURA and one for ENDURALL, but it provided no evidence of use of similar marks. The Board agreed with Examining Attorney Erin Zaskoda Dyer that this wasn't enough to move the needle, and so it accorded the cited mark the normal scope of protection for distinctive marks.

Comparing the marks at issue, the Board found "ENDUR" to be the dominant part of the cited mark because it is the largest literal portion of the mark in terms of size, position, and emphasis. Its location as the first term in the mark further establishes its prominence. As to the appearance of the marks, applicant's mark could be displayed in the same bold capital letters as the word "ENDUR."

Applicant argued that the marks sound different because they contain different numbers of syllables, but the Board "has long recognized that consumers do not process this sort of minutia when forming impressions of marks in their 'mind’s ear.'" [I've never encountered the pharse "mind's ear" before - ed.]. Furthermore, this argument ignores "the penchant of consumers to shorten marks."

As to connotation and commercial impression, the Board was not persuaded that the misspelling of ENDURE as ENDUR would create a difference between the marks.

The Board concluded that "[a] consumer who separately encounters Applicant’s ENDURE mark could readily view it as a shortened version of the literal portion of the cited mark, 'ENDUR By Ascend,' 'with both marks indicating a single source for the goods,'"

As to the goods, the applicant argued that they have different functions for different purposes. The evidence, however, showed that the "textile fibers" identified in the cited registration may be used to create the "fabrics for textile use" for bedding identified in applicant’s application, and thus the goods are somewhat intrinsically related. Moreover, the involved goods are related because they are sold by the same companies, including applicant, under the same mark. The Examining Attorney also submitted 11 third-party used-based registrations of marks covering both "textile fibers" and "fabrics for textile use."

Internet evidence disclosed the sale of both textile fibers and fabrics for textile use by the same entity, establishing that both sets of goods are marketed through the websites of fabric companies and, by inference, through any corresponding brick-and-mortar stores.

Finally, the Examining Attorney acknowledged that the goods are purchased by professional buyers, but she argued that these buyers are not immune from trademark confusion. The Board found this factor to favor applicant.

The Board, concluding that the key first and second DuPont factors support a likelihood of confusion, as does the third factor, affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlogger comment: A good illustration of why more than 90 percent of Section 2(d) refusals are affirmed: it can be very difficult to clear the many hurdles presented by TTAB and CAFC precedent.

Text Copyright John L. Welch 2022.

WYHA? TTAB Affirms Section 2(d) Refusal of "NATURES STAR HEMP" Over "NATURES-STAR & Design" for Personal Care Products

In its 180th Section 2(d) affirmance this year (against 14 reversals), the Board upheld a refusal to register the mark NATURES STAR HEMP for skin and body topical lotions, creams, balms, and salves for cosmetic use that contain hemp oil extract [HEMP disclaimed], finding confusion likely with the word-and-design mark shown below, for essential oils, oils for toiletry purposes, and fragrances. Applicant argued the design portion of the cited mark is dominant, but the Board disagreed. In re Smith & Vandiver, Corp., Serial No. 88477572 (December 13, 2022) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The Board found that [d]espite the relatively large size of the cited mark’s design, it is a simple design, and because it is a plant in a mound of dirt, the depiction reinforces the use of NATURES in the literal portion of the mark." Moreover, the standard character mark that applicant seeks to register could be displayed in the same font as the literal portion of the cited mark. And, as pointed out by Examining Attorney D. Zarick, since hemp is a plant, "consumers familiar with one mark who encounter the other might presume that the plant depicted in the cited mark is the hemp referred to in the subject application."

Because of the significant commonality between the dominant portion of each mark, the marks overall look and sound similar regardless of the cited mark’s design element and Applicant’s mark’s inclusion of the descriptive word HEMP.

Turning to the goods, the Board found them to be related because "the record reflects that consumers are accustomed to encountering these types of products from the same source." In fact, applicant itself offers essential oils and balms, as well as non-CBD products. Numerous screenshots from various third-party websites showed the promotion of goods like applicant’s and registrant’s under the same mark.

As to trade channels, the third-party website evidence shows that "goods such as Applicant’s and Registrant’s move in some of the same channels of trade to some of the same classes of consumers."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Well, would you have?

Text Copyright John L. Welch 2022.

TTAB Dismisses STATUS SYMBOL Section 2(d) Opposition: Failure to Prove Priority

Opposer Status Symbol Clothing claimed that the applicant's mark STATUS SYMBOL (Stylized) for clothing and footwear is likely to cause confusion with opposer's common law mark STATUS SYMBOL CLOTHING for various clothing items. The applicant neither submitted evidence or testimony, nor filed a brief. However, the applicant prevailed. Status Symbol Clothing Brand LLC v. Status Symbol LLC, Opposition No. 91264572 (December 12, 2022) [not precedential] (Opinion by Judge Martha B. Allard).

To prove priority, opposer had to show that it used its mark in connection with its pleaded goods prior to April 10, 2020, the applicant's filing date and constructive first use date. Opposer pointed to its pending application for its mark - which stated a first use date in 2018 - and the accompanying specimen of use. However, the Board observed, "it is well-settled that the allegation of a date of use of a mark made in an application or registration is not evidence in the proceeding on behalf of the applicant or registrant and the specimen in the application or registration, without more, is not evidence on behalf of the applicant or registrant." See Trademark Rule 2.122(b)(2).

Opposer next pointed to its Facebook posts, its website printouts, and its corporate formation documents. The Facebook documents stated that the page was created in 2017, but there was no testimony that this Facebook page is owned and controlled by Opposer, or that the creation date and posts dates are accurate. Therefore the documents cannot be used prove the truth of the statement made therein.

As to the website screenshots, there was no accompanying testimony attesting to the truth of the matters contained therein - for example, no testimony that Opposer is the owner of the website or that the mark displayed on the website was used before Applicant’s filing date.

The corporation formation documents "serve merely to identify Opposer as a business entity and do not show trademark use, much less on a date prior to Applicant’s filing date."

Opposer offered the testimony of its CEO, but his testimony and accompanying exhibits were too vague and confusing to be probative.

And so, the Board found that the opposer had failed to prove priority, and it dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: Sheesh! Should the opposer file an appeal by way of civil action, where it can add evidence?

Text Copyright John L. Welch 2022.

TTABlog Test: Which One of These Three Section 2(d) Refusals Was Reversed?

So far this year, the TTAB has affirmed 177 of the 190 Section 2(d) refusals on appeal (about 93%). Here are three decisions that came down recently. How do you think they came out? [Results in first comment].

In re Matosantos Commercial Corporation, Serial No. 88718607 (December 6, 2022) [not precedential] (Opinion by Judge Robert H. Coggins) [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" [FRESH disclaimed]].

In re Maesa LLC, Serial No. 88901053 (December 8, 2022) [not precedential] (Opinion by Judge Cynthia C. Lynch) [Section 2(d) refusal of the mark the mark GOODBATHS in stylized form (first below) for "Body cream; Body lotion; Body scrub; Body wash; Fragrances; Non-medicated soaps for the body; Non-medicated soaps for the hands; Non-medicated skin care preparation, namely, body mist," finding confusion likely with the registered mark GOODBATH in stylized form (second below) for "Bath linen, except clothing; Textile material, namely, towels, table napkins; Bed linen; Towels of textile; shower curtains of textile or plastic."

In re Cxffeeblack LLC, Serial No. 90109203 (December 12, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman) [Section 2(d) refusal of GUJI MANE for "Coffee; Coffee beans; Ground coffee beans; Roasted coffee beans; Unroasted coffee" in view of the registered mark GUJI for "coffee."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

E.D. Va. Affirms TTAB: Timberland Boot Design is Functional and Lacks Acquired Distinctiveness

In an appeal by way of civil action under Section 1071(b), the U.S. District Court for the Eastern District of Virginia upheld the TTAB's decision [TTABlogged here] affirming a refusal to register certain features of Timberland's boot design on the ground that the proposed mark for "footwear, namely, lace-up boots" lacked acquired distinctiveness. Although the Board declined to rule on the USPTO's Section 2(e)(5) functionality refusal, the district court affirmed that refusal as well. TBL Licensing, LLC v. Vidal, Civil Case No. l:21CV681 (E.D. Va. December 8, 2022).

The boot design at issue includes a "bulbous toe box," a "tube-shaped ankle collar," a "two-toned outsole," an hourglass-shaped rear heel panel, and other elements: a total of eight specific features.

The court began with the issue of functionality, finding that "[u]tility patents disclose, and some claim the features of TBL's applied-for design, and TBL's own advertising touts the functional benefits the features."

Most of the issued patents cited in this brief have expired, meaning that the disclosed features are in the public domain. To conclude that TBL can strip the public's right to copy and benefit from these features today would be antithetical to the pro-competitive objectives of both trademark and patent law.

With regard to acquired distinctiveness, the court noted the lack of "look for" advertising vis-a-vis the subject features, and it further observed:

TBL identifies itself as the source of its boots through use of a comprehensive range of traditional word marks, stylized word marks, logos, and slogans. These marks allow consumers to see that a boot is a TBL product before they get close enough to examine a pair of boots to tick off a check-list of eight specific product features. *** [T]he source-identifying significance of TBL's comprehensive use of traditional trademarks cannot be overstated.

Moreover, "the saturation of the market with look-alike boots using many of the same functional features is fatal to TBL's claim that consumers look for these features to identify TBL's boots and distinguish them from competing boots."

Although TBL's sales and advertising figures were large, "it failed to link-up its large sales and advertising numbers with the one thing it needs to prove: that amidst a sea of similar-looking boots, consumers nevertheless can identify TBL's product just by the eight specified product features irrespective of any other marks used on or with the product."

TBL's secondary meaning survey evidence was seriously flawed: first, the stimuli used in the survey were photographs of the TBL boot, not the drawings from the trademark application; second, the survey did not use "the tried-and-true accepted questions and progression deemed key to determining acquired distinctiveness;" and third, the control looked nothing like TBL's boot.

TBL has failed to carry its burden to prove that these eight features are nonfunctional and that consumers recognize these eight features as a unique indicator of the source of the boots.

And so, the court granted defendant's motion for summary judgment.

Read comments and post your comment here.

TTABlogger comment: This appeal reminds me of the old Henny Yougman joke. Doctor to patient: You're overweight. Patient: I want a second opinion. Doctor: Okay, you're ugly, too.

Text Copyright John L. Welch 2022.

TTAB Sustains Wrangler's Section 2(d) Opposition to "W DENIM" Logo Mark for Denim Goods and Marketing Services

The Board sustained a Section 2(d) opposition to registration of the mark W DENIM, shown first below, for various goods and services in classes 24, 25, and 35, including denim fabric, clothing made of denim, and marketing of denim fabrics [DENIM disclaimed], finding confusion likely with Opposer Wrangler's W stylized marks, shown next below, for clothing, including jeans and dungarees. Applicant sought registration under Section 66(a). It did not submit evidence or file a brief. Wrangler Apparel Corp. v. Denimci Dis Ticaret Pazarlama Anonim Sirketi, Opposition No. 91264198 (December 6, 2022) [not precedential] (Opinion by Judge C. Lynch).

Strength of Opposer's Marks: The Board began with a consideration of the strength of Wrangler's marks. It found the marks, registered on the Principal Register without a Section 2(f) claim, to be conceptually strong, noting that there was no indication that they have a recognized meaning in the industry. As to commercial strength, Wrangler provided worldwide sales and advertising figures, not limited to the marks at issue here, and so the Board "cannot accord the evidence much weight." 

Wrangler's witness testified that its "W" mark was introduced on western jeans in 1947. [What are eastern jeans? - ed.]. The product line has consistently included denim. There was some "look-for" advertising involving the "W" mark. Wrangler's promotional material featured the WRANGLER mark more, and generally more prominently, than the "W" mark - except on social media.

The Board concluded that Wrangler's marks are not entitled to the highest degree of commercial strength, but should be accorded "somewhat more than" the normal scope of protection for inherently distinctive marks.

The Marks: Comparing the marks, the Board found them to be visually and phonetically similar, even taking into account the disclaimed and subordinate term DENIM. "[A]lthough the particular stylization of the W's differs among the marks and Applicant's stylization may be somewhat suggestive of jeans, the 'verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed." Moreover, the first Wrangler mark shown above has a stylization quite similar to the opposed mark, and might be displayed in the same shade of blue. 

The marks also convey similar connotations and commercial impressions: the letter "W." The word DENIM in the opposed mark only minimally contributes to the mark's meaning and connotation. The Board therefore found that the first DuPont factor weighed in Wrangler's favor.

The Goods/Services: As to applicant's class 25 clothing items, some are legally identical to some of the goods in Wrangler's registrations, which encompass goods made of denim. With regard to the class 24 fabrics, one of Wrangler's registrations covers dungarees, which are usually made of blue denim, as are other goods sold by Wrangler under the marks. In fact, much of the commercial strength of Wrangler's clothing line is associated with denim. Therefore, the Board found applicant's denim fabric to be related to Wrangler's clothing.

With regard to applicant's class 35 marketing services, they include the marketing of goods made wholly or in significant part of denim. Thus, some of Wrangler's goods are legally identical to the goods featured in applicant's marketing services, and so the Board found Wrangler's goods to be related to at least this retail service of applicant.

Trade Channels:  There was no evidence regarding the trade channels for applicant's class 24 goods. As to class 25, since the goods overlap, the Board must presume that those overlapping goods travel in the same trade channels to the same classes of consumers. As to class 35, Wrangler established that it sells its good on its website, as well as in some 900 retail outlets around the world. Applicant's "online marketplace for buyers and sellers of goods" would include the same channels of trade as Wrangler's goods.

Conclusion: Weighing the relevant DuPont factors, the Board found confusion likely and it therefore sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: A "W" for Wrangler's, but not much to see here.

Text Copyright John L. Welch 2022.

TTABlog Test: Is "SMALL WINS" Confusable with "BIG WIN" for Candy?

The USPTO refused to register the mark SMALL WINS for "sweets and candies, namely, gummies and soft candies," finding confusion likely with the registered mark BIG WIN for "candy." The goods are legally identical, and so the Board presumed that they travel in the same trade channels to the same classes of consumers. But what about the marks? How do you think this came out? In re Sugar Free Specialties, LLC, Serial No. 90706411 (December 7, 2022) [not precedential] (Opinion by Judge Jonathan Hudis).

There was no evidence to suggest that the cited mark is conceptually or commercially weak, and so it merited "the typical scope of protection afforded a mark registered on the Principal Register pursuant to Trademark Act Section 7(b), 15 U.S.C. § 1057(b)."

Comparing the marks, the Board observed that "while the terms WINS and WIN are highly similar, the terms SMALL and BIG appear and sound different." It noted, however, that the marks have "the same format, structure, and syntax." Moreover, the marks "have similar cadences and intonation," and so the Board found them to be "more similar than they are different in appearance and sound."

As to meaning and commercial impression, the Board found that WINS and WIN are the dominant elements in the respective marks, despite the fact that SMALL and BIG are the first words in the marks, because those words are "more common and less distinctive terms."

Applicant Sugar Free argued, inter alia, that "BIG WIN could mean large victory, but it could also mean pretentious victories, chief victories or magnanimous victories. . . . SMALL WINS could mean little victories, or it could mean petty victories, weak victories or inconsequential victories." The Board was unmoved, agreeing with Examining Attorney William Verhosek that consumers are more likely to attribute to the marks positive meanings and commercial attributes rather than "the negative connotations and marketing traits ascribed to them by Applicant." Moreover, applicant’s SMALL WINS candies "could be thought of by consumers as a line extension of Registrant’s BIG WIN candies, offered by the same company."

The Board concluded that "SMALL and BIG, when combined to form a part of each of the marks SMALL WINS and BIG WIN, even though are antonyms, are insufficient to differentiate the marks in meaning and overall commercial impression."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I dissent. BTW, I find the "line extension" argument to be pretty meaningless. It seems like one could nearly always say that when the marks have a word in common.

Text Copyright John L. Welch 2022.

Breaking News: BPLA Approves Name Change to BOSTON INTELLECTUAL PROPERTY LAW ASSOCIATION

Stepping into the 21st Century, the Boston Patent Law Association yesterday approved by an overwhelming vote, an amendment to its By-Laws to change the name of the Association to the BOSTON INTELLECTUAL PROPERTY LAW ASSOCIATION. Congratulations to President Keith Toms for making this a priority.

Read comments and post your comment here.

TTABlogger comment: Now, will the Association adopt an updated logo, like the New England Patriots did when they dropped the squatting colonial soldier in favor of the current Flying Elvis logo?

Text Copyright John L. Welch 2022.

TTAB Grants Petitions for Cancellation of Registrations for the Color Pink for Hip Joint Implants on the Ground of Functionality

In an exhaustive 107-page opinion, the Board granted petitions for cancellation of two registrations on the Supplemental Register for the color pink applied to the entire surface of hip joint implants, on the ground of Section 2(e)(5) functionality. This blog post will make no similarly exhaustive attempt to summarize the decision, but instead will repeat the conclusions along with some of the reasoning. C5 Medical Werks, LLC v. CeramTec GmbH, Cancellations Nos. 92058781 and 92058796 (December 6, 2022) [not precedential] (Opinion by Judge Jonathan Hudis).

The challenged registrations cover only the color pink, not the product configurations shown in the drawings above. Respondent’s expired patent, as well others of its patents, disclose the utilitarian advantages of adding Cr3+ ions to ZTA ceramic hip replacement component materials with respect to the toughness, hardness, stability and suppression of brittleness of the ZTA ceramic. As a natural byproduct, this addition of chromium oxide (chromia) in its ionic form turns the chemical compound pink

The advertising and public statements made by Respondent and its OEM customers on its behalf touted the utilitarian advantages of adding chromium oxide to Respondent’s ZTA ceramic compounds; some statements were made in conjunction with the comment that the addition turns the material pink.

As to the availability of alternative "designs" (i.e., colors), there was a dearth of relevant evidence, and so that factor was neutral. In view of the parties’ testimony that the use of chromium oxide either does not affect the cost of a ZTA ceramic or makes the product more expensive, "whether the addition of chromia (turning the product pink) results from a comparatively simple or inexpensive method of manufacture is also a neutral factor."

The Board concluded that the registered marks are de jure functional:

In sum, we find that the color pink (caused by the addition of chromia) of the compound used to make ceramic hip implant components, as shown in Respondent’s trademark registrations, is functional based on utilitarian considerations.

Read comments and post your comment here.

TTABlogger comment: Lots of technical discussion and expert testimony.

Text Copyright John L. Welch 2022.

TTABlog Test: Is CUSHION COMFORT for Footwear Confusable With DIAMOND CUSHION COMFORT for Socks?

The USPTO refused to register the mark CUSHION COMFORT, on the Supplemental Register, for footwear and various clothing items, but excluding socks, in view of the registered mark DIAMOND CUSHION COMFORT for socks [CUSHION COMFORT disclaimed]. Despite the exclusion, the goods are closely related, but what about the marks? Surely, CUSHION COMFORT is a descriptive and weak element in the cited mark, but it's the entirety of the proposed mark. How do you think this came out? In re Boot Royalty Company, L.P., Serial No. 88787993 (December 5, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman).

Analyzing the strength of the cited mark, the Board noted the lack of evidence regarding commercial strength. As to inherent strength, the Board unsurprisingly found the term CUSHION COMFORT to be descriptive of the goods. It then observed that "[w]here a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights."

The cited mark, as a whole, "suggests that Registrant’s socks provide high quality cushioning and comfort and, therefore, it is inherently distinctive and entitled to the breadth of protection normally accorded an inherently distinctive mark." 

Turning to the first DuPont factor, the Board deemed the word DIAMOND to be the dominant element of the cited mark. Both registrant's disclaimer of the term CUSHION COMFORT and the appearance of DIAMOND as the first word in the cited mark supported that finding.

Since CUSHION COMFORT is descriptive, "the scope of protection to which that portion of the mark in the cited registration is entitled is quite limited." As a result, the Board found that the addition of the word "Diamond" in the cited  mark "is sufficient to render Applicant’s mark CUSHION COMFORT distinguishable from DIAMOND CUSHION COMFORT. In other words, the strength or weakness of the mark in the cited registration is the most important factor." 

The Examining Attorney argued that purchasers and prospective purchasers will perceive applicant's mark as a shortened form of the cited mark. The Board pointed out that "there is no express rule that we must find marks similar where the Registrant’s mark encompasses Applicant’s entire mark although, under such circumstances, we often have found marks to be similar." However, here the common portion of the marks is a descriptive term that is entitled to only a narrow scope of protection. "Because of the descriptive nature of the term “Cushion Comfort,” customers and prospective customers will perceive DIAMOND as the source indicating part of Registrant’s mark and, therefore, distinguish it from Applicant’s CUSHION COMFORT mark."

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: This is the 13th Section 2(d) reversal of this year. By my count, there have been 175 affirmances.

Text Copyright John L. Welch 2022.

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

So far this year, the TTAB has affirmed 172 of the 184 Section 2(d) refusals on appeal (about 93.5%). Here are three decisions that came down recently. How do you think they came out? [Results in first comment].

In re Derrick Coleman, Serial No. 90231251 (December 2, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington) [Section 2(d) refusal of the mark GREAT LAKES DISTRIBUTION in slightly stylized form for "distribution services, namely, delivery of third party goods" [DISTRIBUTION disclaimed], in view of the registered marks (separately owned) GREAT LAKES FABRICS for "distributorship in the field of upholstery fabrics and textiles; distributorship in the field of upholstery supplies" [FABRICS disclaimed], GREAT LAKES PETROLEUM for “fuel delivery services; storage, distribution, and transportation of liquefied petroleum gas" [PETROLEUM disclaimed], GREAT LAKES TIRE for "distribution services, namely, delivery of new and retread tires" [TIRE disclaimed], and GREAT LAKES PIPE AND SUPPLY COMPANY & Design for "distribution services, namely, delivery of pipe, fittings, and valves used for the conveyance of liquid, gas, and electricity" [GREAT LAKES PIPE AND SUPPLY COMPANY disclaimed].

In re OEC, LLC, Serial Nos. 90274429 and 90350840 (December 2, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson) [Section 2(d) refusal of the mark HOLIDAY ROAD, in standard and in logo form (below), for "Online retail store services featuring bags, backpacks, blankets, holiday and seasonal decorations and ornaments, holiday lights, toys, baskets, cups" [HOLIDAY disclaimed], in view of the registered mark HOLIDAY LANE for "musical figures and figurines made of plastic,' "musical figures and figurines made of glass," "Christmas figures and figurines made of plastic," and "Christmas tree ornaments and decorations; Christmas garlands," and "electric Christmas tree lights," [HOLIDAY disclaimed].]

In re Knitpro International, Serial No. 90064151 (November 30, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of THE MANDALA COLLECTION for "Buttons; Needles; Hooks and eyes; Sewing pins; all the foregoing not for use in making craft jewelry, and excluding knitting and crocheting yarns, cords, cordage, ropes, twines and hemp thread" [COLLECTION disclaimed], in view of the registered mark MANDALA for "“knitting and crocheting yarn, not for use in making craft jewelry."].

 

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

Precedential No. 36: TTAB Sustains Section 2(c) Opposition to DANA DESIGN Due to Lack of Consent

The Board sustained an opposition to registration of the mark DANA DESIGN in the form shown below, for backpacks, hiking equipment, tents, and related goods, on the ground that the mark comprises the name of a living individual, Dana Gleason, without his consent and is therefore barred from registration by Section 2(c) of the Trademark Act. However, the Board rejected Opposer Mystery Ranch, Ltd.'s Section 2(a) false connection claim because the opposed mark js not a close approximation of Opposer's name or identity, nor does it point uniquely or unmistakably to Opposer. Mystery Ranch, Ltd. v. Terminal Moraine Inc. dba Moraine Sales, 2022 USPQ2d 1151 (TTAB 2022) [precedential] (Opinion by Judge Frances S. Wolfson).

Entitlement to a Statutory Cause of Action: In 1985, Dana Gleason founded Dana Design Ltd. to manufacture backpacks. In 1992, the company registered the mark DANA DESIGN and in 1997 it registered the silhouette design shown above. In 2000, the marks were assigned to another company, and the registrations were cancelled in 2016 and 2018, respectively. However, the evidence showed that DANA DESIGN-branded backpacks are currently being offered for sale on the secondary market. Opposer Mystery Ranch, co-owned by Dana Gleason. has been making and selling backpacks since 2000, but apparently not under the DANA DESIGN mark.

Applicant Terminal Moraine Inc. was formed in 2015 for the specific purpose of selling backpacks and tents under the (allegedly abandoned) DANA DESIGN word mark. In 2018, it applied to register the word-plus-design mark here opposed.

The Board observed that Mystery Ranch need not have a proprietary interest in a term for purposes of its Section 2(a) claim; "rather, a Section 2(a) plaintiff has standing by virtue of who the plaintiff is, that is, the plaintiff's personality or persona." Rejecting the argument that the company's interest coincided with that of Dana Gleason, the Board found that Mystery's Ranch's interest "is in protecting Dana Gleason's persona in order to preserve Opposer's right, as a direct competitor of Applicant, to use the DANA name in promoting backpacks, tents and related goods."

The Board concluded that Mystery Ranch "demonstrated its personal stake in preventing registration of a mark in the backpack field that allegedly appropriates the persona of one of its owners promoted in connection with the business, and a reasonable belief in resultant damage." Moreover, having established its entitlement under Section 2(a), Mystery Ranch may rely on any other ground set forth in Section 2 of the Lanham Act that negates the applicant's right to registration.

Section 2(a) - False Suggestion of a Connection: Mystery Ranch is not the legal successor to Dana Design, Ltd. or its successors. However, despite the transfer of the goodwill of the DANA DESIGN trademark, the Board found that Dana Gleason did not abandon "whatever rights he may have in his 'persona.'" Moreover, the evidence showed that, in the field of backpacks and hiking gear, "the name 'Dana' is recognized as a nickname for Dana Gleason."

However, the Board found that "although consumers associate Dana Gleason and Mystery Ranch ... they are not perceived as each other's alter ego. There is no merger of the two such that the 'Dana' in DANA DESIGN refers interchangeably to either entity." The Board therefore concluded that the opposed mark is not a "close approximation" of Mystery Ranch's name or identity, and this failure to meet the first element of the Section 2(a) test was alone enough to sink its Section 2(a) claim.

Furthermore, the opposed mark does not point "uniquely and unmistakably" to Mystery Ranch, another requirement of the Section 2(a) test. The DANA DESIGN mark may point to Mystery Ranch, Dana Gleason, the defunct Dana Design Ltd., or the assignees of that company's marks.

Section 2(c) - Lack of Consent: Applicant Terminal Moraine contended that Mystery Ranch has no right to invoke Section 2(c) on behalf of Dana Gleason. The Board observed that, in order to rely on Section 2(c), an entity "must assert that it has a 'cognizable or proprietary right' in the name, image, likeness or signature, such as through a 'linkage or relationship' with that particular individual sufficient to assert the third party’s rights." (Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1195 (TTAB 1994).  

In Nike, Inc. v. Palm Beach Crossfit, 116 USPQ2d 1025 (TTAB 2015), the Board held that an entity must prove a "privity relationship with the particular individual in order to demonstrate a cognizable right through its 'linkage or relationship' with the person."

The evidence established that Dana Gleason "is publicly connected with the business in which Applicant’s mark is intended for use; consumers would make an association between Gleason and Applicant’s mark." The Board therefore found that Dana Gleason "was in privity with Dana Design Ltd and is currently in privity with Mystery Ranch." Consequently, Mystery Ranch "has a cognizable right to assert Gleason’s rights under Section 2(c) to prevent the use of his first name DANA without his written consent.

Applicant Terminal Moraine argued that Dana Gleason sold his interest in the DANA DESIGN marks decades ago and the marks were abandoned. The Board pointed out, however, that "[i]t is one thing to permit another to use one's name as a mark, quite another to 'relinquish all ownership rights in one's name and agree to allow another to register one's name." Gleason's actions in setting up Mystery Ranch in 1999, honoring Dana Design Ltd.'s warranties, continuing to interface with the public as the designer of backpacks, and promoting himself as the owner and designer, demonstrated his intent to keep using his name.

And so, the Board sustained the Section 2(c) claim.

Read comments and post your comment here.

TTABlogger comment: Seems reasonable: just because you stop using your name as a trademark doesn't mean other are free to adopt is as a mark.

Text Copyright John L. Welch 2022.