The TTABlog<sup>®</sup>: January 2023

TTAB Posts February 2023 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled six (6) oral hearings for the month of February 2023. Five of the hearings will be held via video conference; the third one listed below will be in person at Arizona State University. Briefs and other papers for each case may be found at TTABVUE via the links provided.

February 7, 2023 - 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.]

February 9, 2023 - 1 PM: National Academy of Television Arts and Sciences and Academy of Television Arts and Sciences v. Kraferd, Opposition No. 91231183 [Opposition to registration of the mark EMMY for various health, disability, and life insurance services, on the grounds of lack of bona fide intent, and likelihood of confusion with and likely dilution of the registered marks EMMY and EMMYS for television awards and related programming and print materials.]

February 16, 2023 - 10:30 AM: Audemas Piquet Holding S.A. v. Haas Outdoors, Inc., Consolidated Oppositions Nos. 91242213 and 91242238 [Opposition to registration of MOSSY OAK and MOSSY OAK & Design for "Jewelry; Watches" on the grounds of likely confusion with and likely dilution of the registered mark ROYAL OAK, in standard character and stylized form, for watches and jewelry.]

February 23, 2023 - 4:10 PM (Live at Arizona State University): El Burro, Inc. v. Knuckle Sandwich LLC, Cancellation No. 92075933 [Opposition to registration of EL BURRO BURRACHO, on the ground of likelihood of confusion with the registered marks EL BURRO and EL BURRO TACOS & BEER & Design, all for restaurant services.]

February 28, 2023 - 12 PM: ZeroDensity Yazilim Anonim Sirketi v. Apple Inc., Consolidated Oppositions Nos. 91266285 and 91266754 [Opposition to registration of REALITY COMPOSER [REALITY disclaimed] and REALITY CONVERTER for "Downloadable application development software" on the grounds of mere descriptiveness and likelihood of confusion with an alleged family of REALITY-formative registered marks for downloadable application development software.]

February 28, 2023 - 2 PM: Great Knives Manufacture Co., Ltd. v. Universal Sewing Supply, Inc., Cancellation No. 92073334 [Petition for cancellation of a registration of GOLDEN EAGLE for "arts and crafts notions, namely, nippers, and scissors" on the ground of fraud, nonownership, and likelihood of confusion with the identical common law mark for "thread-cutting nippers."]

Read comments and post your comment here.

TTABlog comment: See anything interesting?

Text Copyright John L. Welch 2022.

Precedential No. 5: TTAB Finds ICE MONSTER & Design Confusable With MONSTER ENERGY for Restaurant Services

Frequent TTAB litigant Monster Energy prevailed in this opposition to registration of the mark ICE MONSTER & Design for "restaurants, coffee shops, ices parlors, snack bars with take-out for flavored and fruit ice products, and specifically excluding frozen yogurt" [ICE disclaimed]. The Board found the mark likely to cause confusion with the registered mark MONSTER ENERGY for restaurant services. Although the MONSTER ENERGY mark is famous for energy drinks, not so for restaurant services. Nonetheless, the Board found the marks to be "very similar," the services legally identical in part, and the trade channels and classes of consumers presumably the same. Monster Energy Company v. Chun Hua Lo, 2023 USPQ2d 87 (TTAB 2023) [precedential] (Opinion by Judge Elizabeth A. Dunn).

The Board observed that Monster's broad recitation of "restaurant services" encompasses the applicant's restaurants with take-out for flavored and fruit ice products. Applicant argued that Monster "uses its cafeteria mostly to feed its employees," but the Board pointed out once again that the issue of likelihood of confusion must be decided on the basis of the recitation of services in the cited registration, regardless of actual marketplace usage. Because the services are legally identical in part, the Board must presume that they travel in the same trade channels to the same classes of consumers.

Turning to the strength of the mark MONSTER ENERGY, the Board found that MONSTER is the more dominant term because of its "hyberbolic quality." "MONSTER ENERGY as applied to restaurant services suggests either a monster of energy or an energetic monster ...." In addition, the first word in a mark "generally creates the strongest commercial impression.". [I think neither term is dominant - ed.]. In either case, the mark is arbitrary and conceptually strong.

With regard to commercial strength, the Board found the mark MONSTER ENERGY to be famous for energy drinks for purposes of likelihood of confusion. But Monster's evidence of fame related to energy drinks, not restaurant services. Its use for restaurant services "has not resulted in any notable commercial strength ...." Monster operates one restaurant, Monster Bistro Café, in its headquarters building, for employees and visitors to the building. The Board found no evidentiary basis for finding MONSTER ENERGY to be commercially strong for restaurant services. [Is the mark MONSTER ENERGY used for the restaurant? - ed.].

The Board also considered whether the strength of the MONSTER ENERGY mark for energy drinks "would impart strength to its mark when used for restaurant services." Monster argued that consumers would perceive energy drinks as closely related to the flavored and fruit ice products offered at applicant's restaurants. The Board acknowledged Monster's "limited" evidence that some takeout restaurants that offer ice products may also offer MONSTER ENERGY drinks, but it concluded that the fame of MONSTER ENERGY drinks does not extend to applicant's recited services.

Comparing the marks at issue, the Board found the "hyperbolic term" MONSTER to be dominant in both marks. Moreover, the term ICE is not only disclaimed, but as presented in the opposed mark may indicate the specialty of the restaurant, "while the term MONSTER alone indicates the mark." [Really? ed.]. The Board also accorded the literal element ICE MONSTER greater weight than the design element because "[t]he blue rectangle suggests an ice cube and so reinforces the term ICE." Monster's mark, on the other hand, is registered in standard character form, and could be employed in the same color and stylization as the applicant's mark.

Considering the marks as a whole, we find the common term MONSTER, especially when applied to legally identical restaurant services, creates the same commercial impression, and this impression does not alter with the addition of the terms ENERGY, ICE, and the background design or stylization of Applicant’s mark.

Applicant pointed to the eleevnth DuPont factor, which considers "the extent to which applicant has a right to exclude others from use of its mark on its goods," arguing that use of his mark in Taiwan since 1996 and its recent arrival in Hawaii, and his aggressive action in policing the mark in this country, demonstrates his right to exclude others. The Board, however, was unmoved.

DuPont factor eleven does not consider the strength or fame of the applicant’s mark in the same way the scope of protection is determined for the prior user under DuPont factor five. The factor may be useful to determine how marketplace realities and consumer perception defined by applicant’s common law use and consequent right to exclude other users affects the likelihood of confusion. While the factor may consider any successful trademark enforcement activity in which the applicant has engaged, the purpose is not to assess the scope of protection of the applicant’s mark (as in the fame analysis for the prior user’s mark), but to discern the marketplace reality and consumer perception of Applicant’s use. In this way, when relevant evidence of an applicant’s right to exclude is offered under DuPont factor eleven, it may impact the weight given to other DuPont factors in our ultimate weighing of the factors.

Here, the involved services are identical, and so prior decisions involving merely related goods are not applicable. Moreover, the testimony regarding applicant's use of his mark was withdrawn, leaving no probative evidence on the issue.

Finally, under the 13th DuPont factor, Monster maintained that the applicant adopted his mark in bad faith, but its only evidence was an admission that "he was familiar with Monster before he selected and began using Applicant's mark in the U.S." However, the CAFC and the Board have repeatedly held that "mere knowledge of a prior similar mark is insufficient to demonstrate bad faith adoption."

Balancing the relevant DuPont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: I think the two marks are unitary and not confusingly similar.

Text Copyright John L. Welch 2023.

Precedential No. 4: Foreign Cancellation Petitioner Fails to Meet Lexmark Test for "Standing" But TTAB Allows Time to Amend Petition

The requirement that a plaintiff in a TTAB proceeding plead and prove its entitlement to a statutory cause of action (formerly called "standing") is a low threshhold, but a critical one. Petitioner Ahal Al-Sara Group sought cancellation of a registration for the mark shown below for various cleaning products, claiming abandonment and fraud, but it failed to identify an interest that falls within the "zone of interests of the Trademark Act" and thus failed to sufficiently plead its entitlement to a statutory cause of action. The Board, however, gave the petitioner twenty days within which to serve and file an amended petition for cancellation. Ahal Al-Sara Group for Trading v. American Flash, Inc., 2023 USPQ2d 79 (TTAB 2023) [precedential].

Petitioner alleged that Respondent American Flash relied on the subject registration in a cancellation proceeding in Saudi Arabia involving petitioner's FIGHTER FLASH mark. American Flash moved for dismissal for lack of "standing," pointing out that petitioner is a Saudi Arabian company that has no sales in the United States, does not compete with American Flash in this country, does not manufacture goods here, and has not filed a U.S. trademark application for its mark or any variation thereof.

The Board looked to Section 45 of the Trademark Act, which (according to the Supreme Court in Lexmark) includes an "unusual, and extraordinarily helpful detailed statement of the statute's purpose" and which identifies the interests protected through the regulation of "commerce within the control of Congress." Accordingly, a plaintiff must plead facts that, if proved, demonstrate a "real interest" that affects U.S. commerce, including interstate commerce and commerce with foreign nations. Here, the petition relied only on challenges to petitioner's foreign marks in foreign proceedings.

Petitioner has not pleaded a presence in the United States. Petitioner does not contend that its interests involve selling or manufacturing goods within the United States, and Petitioner has not filed any U.S. trademark applications to register FIGHTER FLASH or AMERICAN FLASH or any variations thereof. Nor does Petitioner plead an intent to enter the U.S. market in the future, or any other facts that if proved, would demonstrate an interest related to or affecting U.S. commerce falling within the scope of protection under the Trademark Act.

The Board therefore concluded that petitioner failed to plead its entitlement to a statutory cause of action. However, consistent with its general practice, the Board allowed petitioner twenty days to cure its defective pleading.

For the sake of completeness, the Board took a look at petitioner's two pleaded claims: fraud and abandonment. It found the abandonment claim to be adequately pled, but it dismissed the fraud claim. Petitioner alleged that American Flash committed fraud by stating a false first date of use. The Board pointed out, however, that the dates of use stated in an application are not material to the Office's decision to approve an application for publication. As long as the mark at issue was in use prior to the filing date, the erroneous statement of first use dates cannot be fraudulent. Here, petitioner itself alleged that respondent used its mark before the filing date of its underlying application. End of story.

Read comments and post your comment here.

TTABlogger comment: So, will the petitioner now plead an intention to enter the U.S. market?

Text Copyright John L. Welch 2023.

Bob Cumbow: "The Most Important Trademark Fact You Probably Don’t Know"

A recent article by my friend, Bob Cumbow of Miller Nash in Seattle, Washington, caught my eye, and I'm delighted that he allowed me to re-publish it here. I often cringe at use of the word "trademark" as a verb, and Bob's article explains what the problem is.

The Most Important Trademark Fact You Probably Don’t Know

Client: “I’ve been in business for a couple of years now, and I want to trademark my company’s name.”

Trademark Lawyer: “What do you mean you want to ‘trademark’ it?”

Client: “I want to get a trademark on it.”

Lawyer: “Do you mean you want your company’s name to be a trademark?”

Client: “Yes, how do I get that?”

Lawyer: “Congratulations. You already did.”

This kind of conversation occurs almost every time a client or prospective client calls a trademark lawyer for the first time. Most businesspeople do not know that by choosing a business or product name and using it in connection with providing goods or services to customers, they become trademark owners and acquire enforceable trademark rights. They think that they must “get” a trademark by filing an application with the U.S. Patent and Trademark Office (USPTO), and if the trademark they want is “available” some nice person at the USPTO will “grant” it to them.

In the U.S. Supreme Court’s opinion in Matal v. Tam (2017), holding a portion of the nation’s statutory trademark law unconstitutional, Justice Alito wrote: “It is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means.” It certainly is not the way you “get” a trademark. To do that, you come up with a trademark—or brand or business name or product name or logo, call it what you will—put it on your product or use it to promote your service, and provide that product or service to your customers.

It's a fundamental principle of U.S. trademark law that trademark ownership arises from using a chosen mark in offering and providing goods or services to the public. It’s critically important for people in business to know and understand that they are already trademark owners. Yet this process is widely misunderstood by business people, by the news media who report on trademark disputes and invariably get the law wrong, and even by many lawyers who don’t practice trademark law.

Of course, it doesn’t help clear up this widespread misunderstanding when the USPTO itself includes on its website a section heading and link saying “Apply for a trademark”; or when the Trademark Trial & Appeal Board (which fastidiously insists on being call the “T-T-A-B” not the “T-TAB”) turns around and calls trademarks whose owners are seeking registration “applied-for marks.” Even the highest authorities are not immune from lazy uses of language that perpetuate and reinforce the public’s misunderstanding of what trademarks are and the difference between owning a trademark and registering it.

Client: “But wait—if I already have a trademark why do I need registration?”

Lawyer: “Actually, you don’t necessarily need registration. It’s not legally required. However, there are significant advantages to federal trademark registration.”

Among the benefits of federal registration are:

The presumption that your trademark is valid puts you in the best position to protect and enforce your trademark rights against users of the same or similar marks for similar goods or services.
You are entitled to use the “®” registered-trademark notice, discouraging would-be adopters of similar marks.
Your mark appears in the records of the USPTO and will be found by others who are searching to determine if they can adopt the same or similar mark themselves.
The USPTO will refuse registration to any later applicant seeking to register a mark too much like yours.
Registration entitles you to list your trademark with the U.S. Customs & Border Patrol, protecting you against the import and export of counterfeit and infringing goods.
Registration enables you to enroll your trademark in the Amazon Brand Registry and to better protect and enforce your trademark against online imitators.

The USPTO’s website is designed to enable trademark owners to file their own applications for trademark registration. However, it’s not a good idea to do so without first consulting a trademark attorney. The registration process is filled with traps for the unwary, such as properly identifying the owner of the mark, clearly describing the goods or services with which the mark is used, placing your goods and services in the proper class (out of 45 internationally recognized classifications), and paying the proper filing fee. In fact, businesses that do not have their headquarters or principal place of business in the United States are required to hire a U.S. attorney to apply for registration of their marks.

Read comments and post your comment here.

Text Copyright Robert C. Cumbow 2023.

TTAB Sustains PRINCESS ROYAL Opposition as a Sanction for Non-Compliance with Discovery Order

Fed up with pro se Applicant Pickin' Cotton's antics, the Board granted a motion for entry of judgment as a sanction for the applicant's "deliberate failure to comply with the Board's discovery order and to make the requisite effort to satisfy Opposer's discovery needs." The Board concluded that "any sanction less than judgment is likely to be ineffective and this futile." LT Overseas North America, Inc. v. Pickin’ Cotton Communications, LLC, Opposition No. 91267259 (January 23, 2023) [not precedential].

Opposer LT Overseas relied on its registered ROYAL marks for various food products, in opposing registration of the mark PRINCESS ROYAL for seasonings and spices, on the ground of likelihood of confusion. Applicant Pickin' Cotton did not respond to the LT's initial discovery demands, and so LT filed a motion to compel. In response to the motion, Pickin' Cotton provided responses, of sorts.

The Board exercised its discretion to review those responses and found them to be "deficient on their face." They consisted of "boilerplate" responses and objections, and failed to state whether Pickin' Cotton was withholding any documents. The Board ordered Pickin' Cotton to serve supplemental responses, warning that failure to comply could result in appropriate sanctions.

When it received the supplemental responses, LT moved for the sanction of judgment on the basis that the supplemental discovery responses contained the same type of general boilerplate objections as the original responses, claimed that some documents were "privileged" even though the Board had overruled such an objection, renewed an already-overruled objection on the ground of "proportionality," and impermissibly stated that Pickin' Cotton would produce "nonprivileged documents ... to the extent that such documents exists [sic], are within Applicant's possession, custody or control, and are located after a reasonable search." The supplemental document production consisted of a one-page document of questionable authenticity.

Trademark Rule 2.120(h)(1) states that when a party fails to comply with a discovery order, the Board may issue any appropriate order, including those provided in FRCP 37(b)(2). The Board noted that entry of judgment is a "harsh sanction," but it found Pickin' Cotton's responses to be "incomplete, truncated and non-responsive." In fact, "the supplemental responses are remarkably ambiguous to the point of providing no responsive information."

Pickin' Cotton's supplemental responses to LT's 44 production requests included another set of boilerplate objections along with the evasive and unacceptable languages set out above. The Board found the responses to be "lacking in substance" and "wholly inadequate." "More to the point, the responses reflect a distinct and obvious disregard for the Board's discovery order."

The one-page document was insufficient on its face. It is "exceedingly brief" and "merely lists enumerated phrases that lack detail and substantive context, and is not associated or correlated with any specific document requests." It is "so lacking in content and so ambiguous, evasive and cryptic as to be non-responsive." Although Pickin' Cotton repeatedly referred to its "business plan," no such document was provided.

The Board noted that this is an uncomplicated Section 2(d) opposition. Nothing in the record indicated that "the seasonings and spices business is of such a nature that would preclude timely and fully responding to straightforward, typical inquiries regarding matters such as creation of the applied-for mark, the goods, channels of trade and distribution, and marketing."

And so, the Board entered judgment against applicant, sustaining the opposition.

Read comments and post your comment here.

TTABlogger comment: Good to see.

Text Copyright John L. Welch 2023.

E.D. Texas Denies Motion to Stay Infringement Action in Favor of TTAB Proceeding

O&M Halyard brought a civil action against Sri Trang US, Inc., claiming trademark infringement and dilution of two registered trademarks for medical gloves, one mark consisting of the color purple and the other the color gray. Sri Trang then filed at the TTAB petitions for cancellation of the two registrations. The Board suspended the cancellation proceeding pending the outcome of the litigation. Sri Trang then moved to stay the litigation in favor of the TTAB proceeding, but the court denied the motion because the defendants "have not shown that any potential efficiencies to be gained by awaiting the TTAB decision warrant a stay." O&M Halyard, Inc. v. Sri Trang USA, Inc, et al. , Civil No. 4:22-CV-622-SDJ (E.D. Texas January 18, 2023).

The court took guidance from the Second Circuits decision in Goya Foods, Inc. v. Tropicana Products, Inc., 846 F.2d 848 (2d Cir. 1988) regarding the doctrine of "primary jurisdiction" on behalf of an administrative agency. That doctrine is "relatively narrow" in scope, applying only in lawsuits involving an issue committed by Congress in the first instance to an agency's determination - e.g., the validity of a commercial rate or practice - and involving technical questions uniquely within the agency's expertise.

The Goya court concluded that "the basic framework of federal registration differs from other statutory regimes that implicate primary jurisdiction because the Lanham Act allows a litigant disappointed with a TTAB decision to file an action in federal district court that is 'intended to be a trial de novo.'" Furthermore, courts have a long-standing familiarity in resolving suites under both the Lanham Act and the common law of trademark infringement and unfair competition.

The Second Circuit developed the following guidance regarding whether a court should stay an action pending the outcome of a TTAB "registration action."

On the one hand, if the district court action "involves only the issue of whether a mark is entitled to registration," the doctrine of primary jurisdiction “might well be applicable” because the benefits of awaiting the TTAB's decision would rarely be outweighed by the need for a prompt adjudication. *** On the other hand, if the district court action concerns infringement, "the interest in prompt adjudication far outweighs the value of having the views of the [USPTO]."

Here, the civil action "involves issues well beyond trademark registration" because it includes questions of trademark infringement and dilution. The district court therefore concluded that "the interest in prompt adjudication of this case substantially outweighs the value of having the view of the TTAB on the question of registration of O&M Halyard's marks. The doctrine of primary jurisdiction is therefore inapplicable and Sri Trang's motion must fail."

The court also denied the motion because a stay "would unnecessarily delay the resolution of this case without providing any meaningful narrowing of the issues before the Court."

Because the TTAB lacks authority to resolve all the issues raised in this case, the parties will wind up back in this Court regardless of the TTAB outcome. Under similar circumstances, courts routinely reject requests to stay proceedings pending the outcome of parallel TTAB actions.

Finally, Sri Trang neither asserted nor demonstrated any hardship or inequity if a stay is not granted. On the other hand, there is a "fair possibility" that a stay would harm O&M Halyard by preventing a prompt resolution of its claims.

Read comments and post your comment here.

TTABlogger comment: When will a civil action involve only a question of registration?

Text Copyright John L. Welch 2023.

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

Here are three recent appeals from Section 2(d) refusals. As previously mentioned, a former TTAB judge once told me that one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods/services. How do you think theses three cases came out? [Results in first comment].

In re eduConsulting Firm, Serial No. 90196048 (January 12, 2023) [not precedential] (Opinion by Judge Michael B. Adlin) [Section 2(d) refusal of EDUCRATE for, inter alia, subscription-based order fulfillment services in the field of educational items and resources for teachers, principals, instructional coaches, and other educators, in view of the registered mark MYEDUCRATE for "subscription based order fulfillment services in the field of educational items and resources."]

In re RAI Strategic Holdings, Inc., Serial Nos. 88662587 and 88822603 (January 18, 2023) [not precedential] (Opinion by Judge Karen Kuhlke) [Section 2(d) refusal of VUSE CHARGE BEYOND in view of the registered mark BEYOND for overlapping goods and services, namely, retail store services for electronic cigarettes, and electronic cigarettes.]

In re OptConnect Management, LLC, Serial Nos. 88458583, 88458653, and 88458681 (January 19, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of OPTCONNECT EMA, OPTCONNECT, and OPTCONNECT MANAGED WIRELESS SOLUTIONS and design for goods and services used to connect devices to the internet of things, 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."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2023.

TTAB Tosses Out "BURNERWATER" Opposition Due to Failure to Plead and Prove Standing

Entitlement to a statutory cause of action (f/k/a "standing") is a threshold issue in every inter partes Board proceeding. Oppose Energy Beverages failed to clear that relatively low hurdle in this opposition to registration of the mark BURNERWATER for dietary supplements and vitamin-containing water. Energy Beverages alleged that the applicant lacked a bona fide intention to use the mark in commerce but it failed to plead or prove its entitlement to a cause of action. Energy Beverages LLC v. Burner Water Beverages Ltd., Opposition No. 91253791 (January 11, 2023) [not precedential] (Opinion by Judge Michael B. Adlin).

Energy Beverages alleged that it owns several pending applications for the mark BURN for energy drinks enhanced with vitamins. It stated that it is "a manufacturer of beverages and believes that it will be damaged by registration of the Application (sic)." It also alleged that registration would "damage the integrity of the register in International Class 32." Energy did not explain how damage to the register would occur, nor how "the integrity of the register" would affect it. Energy further alleged that it is "arguably a potential competitor in the industry."

The Board found Energy's pleading insufficient. Energy "neither explains how or why Opposer, as a 'manufacturer of beverages,' believes it would be damaged by registration of Applicant’s involved mark Opposer’s allegation that it manufactures beverages is not enough, standing alone, to establish that a cause of action for lack of a bona fide intent to use is within Opposer’s 'zone of interests.'"

[T]he Trademark Act does not protect against trademark registrations by competitors, unless those registrations would have harmful consequences falling within a plaintiff’s zone of interests . For example, the Trademark Act protects against a competitor’s registration of a mark which is likely to dilute a plaintiff’s mark, falsely suggest a connection with the plaintiff or be descriptive of or generic for goods or services which the plaintiff offers or desires to offer.

Energy did not state a basis for reasonably believing that it would be damaged by the mere registration of applicant's mark. Thus, it failed to sufficiently plead its entitlement to a cause of action.

Moreover, even if Energy had sufficiently pleaded its "standing," the pending applications that it submitted in support have no probative value. They evidence only that the applications were filed. They do not establish that Energy is a manufacturer of beverages or a competitor of the applicant. Nor do they show that applicant's mark will damage "the integrity of the register."

In short, Opposer has not established that its alleged but unexplained and unproven interests "have anything to do with trademark concerns (whether its own trademark concerns or concerns about how others' trademark rights might endanger its business model)."

And so, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: Another hat tip to FOB Roberto Ledesma.

Text Copyright John L. Welch 2023.

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

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

In re International Fruit Genetics, LLC, Serial No. 88710987 (January 5, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman). [Mere descriptiveness refusal of COTTON CANDY for various food products, including yoghurt in Class 29, chewy sweets in Class 30, fruit beverages in Class 32, and non-alcoholic flavorings for make alcoholic beverages in class 33. The applicant argued that "consumers will perceive the mark as being suggestive because its COTTON CANDY products are not the 'common flavor’ of the spun, sugar candy floss concoction of carnivals and state fairs."]

In re Koch-Chemie GmbH, Serial No. 79286410 (January 10, 2023) [not precedential] (Opinion by Judge Robert H. Coggins). [Mere descriptiveness refusal of THE FINISHER (in the form shown below) for various surface finishing products in classes 1, 2, 3, and 21, including wetting agents, varnish, polishing wax, and auto polish. Applicant maintained that "because its proposed mark identifies a product that 'performs an action … employing a finish,' an extra step of imagination, thought, or perception is required to reach a conclusion as to the nature of the goods, and therefore the mark does not 'immediately” tell something about the goods.'"]

In re Biomineral Systems, Serial No. 88239954 (January 12, 2023) [not precedential] (Opinion by Judge Martha B. Allard). [Mere descriptiveness refusal of BIOMINERAL for various products, including plant growth stimulants, soil conditioners, and pesticides, all for use in activating or deactivating soil biominerals. Applicant argued that its products do not contain biominerals.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

Precedential No. 3: Rejecting Motion to Expand Identification of Goods, TTAB Sustains EN-D-FENDER Opposition for Nonuse

The Board re-designated as precedential its decision (on summary judgment) sustaining guitar-maker Fender's opposition to registration of the mark EN-D-FENDER for "musical instruments," on the ground of nonuse. The Board rejected the Applicant Win-D-Fender's Hail Mary motion to amend its identification of goods to "musical instrument accessories, namely, an ambient wind foot joint guard for flute family instruments," because the amended goods exceeded the scope of the original identification. Fender Musical Instruments Corporation v. Win-D-Fender, LLC, 2023 USPQ2d 61 (TTAB 2023) [precedential] (By the Board).

Motion to Amend: Win-De-Fender argued that its application was "qualified" by a "miscellaneous statement" entered on the TEAS application form, stating: "For Musical Instrument Accessories namely a wind guard mounted to a flute." Unfortunately, that limiting language was not included in the proper field on the form and therefore it is not considered a part of the identification of goods.

Although Applicant’s listing of “musical instruments” as the identification of goods may have been a mistake on Applicant’s part, it is settled that once the extent of an identification has been established, it cannot be expanded later. *** Here, the wording “musical instruments” establishes the parameters of Applicant’s identification of goods. Applicant therefore is limited in any amendment solely to narrowing or clarifying the nature and type of the applied-for “musical instruments” with greater particularity.

Because accessories are not musical instruments, they are not encompassed within the original identification of goods, and so the Board denied the motion to amend.

Nonuse: Win-D-Fender's interrogatory answers supported Fender's claim: "Applicant states the products sold under the 'En-D-Fender' mark are not musical instruments, as such products are accessories for a flute." And so the Board wasted no time in granting Fender's partial summary judgment on the nonuse claim.

Read comments and post your comment here.

TTABlogger comment: The subject application was filed and prosecuted pro se. I wonder if the default TEAS position that leads one to file a TEAS-Plus application (therefore requiring resort to the ID Manual) threw the applicant off course. I always find it annoying that the default when filing an application is TEAS-Plus. How about you?

PS: If Win-D-Fender files a new and proper application for its wind flute joint guards, what do you think will happen with Fender's likelihood of confusion and dilution claims?

Text Copyright John L. Welch 2023.

Precedential No. 2: TTAB Upholds Refusal to Register ZHIMA Absent an English Translation ("Sesame")

Rule 2.32(a)(9) of the Trademark Rules of Practice requires that any non-English wording in a proposed mark be translated into English. Applicant Advanced New Technologies applied to register the mark ZHIMA for hundreds of goods and services in nine classes, but it refused to comply with Examining Attorney Marc Sparacino's requirement that it submit an English translation of the mark. Advanced advanced the argument that ZHIMA, although a transliteration of the Chinese characters for the word, is a coined term without any meaning. The Board sided with the USPTO. In re Advanced New Technologies Co., Ltd., 2023 USPQ2d 60 (TTAB 2023) [precedential] (Opinion by Judge Marc A. Bergsman).

The original applicant was the Chinese company, Alibaba. The Board noted that "Ali Baba" is the hero of the Arabian Nights story, "Ali Baba and the Forty Thieves." Ali Baba is a poor woodcutter who discovers the secret of a thieves' den, which he entered with the phrase "Open Sesame."

The term “Open Sesame” has come to mean, inter alia, “a marvelous or irresistible means of securing access to what would normally be inaccessible.” Thus, the use of the Chinese word for “Sesame” for the wide variety of goods and services identified in its application creates the commercial impression that Applicant is offering access to what was previously inaccessible (i.e., all of Applicant’s goods and services).

The Board also noted that, in a co-ending application for the Chinese characters (above), Advanced entered a translation of the characters as "SESAME in English."

The Examining Attorney submitted a translation of the Chinese characters (sometimes with the term "ZHIMA") from nine Chinese-English dictionaries, as "sesame" or "sesame seed." Advanced conceded that the dictionary evidence showed that the Chinese characters "transliterate or are pronounced 'zhima,'" but argued that this evidence does not show that the term ZHIMA "is translated to the English word 'sesame' nor that ZHIMA has any meaning at all."

The Examining Attorney countered with numerous news articles referring to "Zhima" as the Chinese term for "sesame," as well as with third-party website evidence discussing ZHIMA or ZHI MA sesame products. The Alibaba.com website advertised a sesame powder as "Zhima Powder."

The Board found that the evidence both established that "ZHIMA is a transliteration of a Chinese word that means 'Sesame,'" and contradicted Advanced's argument that ZHIMA is a "coined term." The term ZHIMA "is used and recognized as the Chinese word for 'Sesame' and . . . Applicant has improperly refused to comply with the requirement to enter a translation statement."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Closed sesame!

Text Copyright John L. Welch 2023.

Granting Cancellation Petition, TTAB Finds SMART WALLET Generic for ..... Guess What?

The Board granted a petition for cancellation of a registration (issued in 2010) for the purported mark SMART WALLET for "wallets," on the ground of genericness. "Significant evidence" convinced the Board that "wallets containing RFID blocking are referred to and understood by the public as 'smart wallets' —a sub-group of wallets." Ekster Holding B.V. v. LE Holdings LLC, Cancellation No. 92076013 (January 6, 2023) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Board first found that the genus of goods at issue is "wallets," but it could "by definition, encompass more-narrowly defined goods or a sub-category such as wallets with technological and/or design features." The second part of the Marvin Ginn test requires a determination as to whether the term in question is understood by the relevant public primarily to refer to that genus. The relevant consumers consist of the public at large.

The Board observed that "[t]o determine if a mark is generic, we examine the evidence up through the time of trial." Petitioner provided dictionary definitions of "smart" and "wallet," internet references to "smart wallets," third-party websites offering "smart wallets," product listings, YouTube videos, and social media excerpts using the term.

Petitioner's witness testified that Petitioner uses "the term smart wallet to inform the public, potential customers and others, that our wallet includes smart technologies in order to be able to find your wallet after loss or theft and to protect you against RFID skimming."

Respondent argued that there are other available terms: minimalist wallet, slim wallet, or alternative wallet. According to its witness, the "term SMART is not used to describe any intellectual capability of the products themselves because the products themselves do not contain computer chips or technology."

The Board, however, found that the evidence supported Petitioner’s position that the public will perceive a "smart wallet" as a "category of wallet that incorporates technology, or provides a means for incorporating technology such as GPS, and includes a wallet that prevents technology-based credit-card skimming by RFID blocking materials."

Although Respondent uses the term SMART WALLET in the manner of a trademark, that "does not overcome the wide use of 'smart wallet' in a generic sense as a sub-category of wallets by the media, bloggers, other online publications and video reviews, by consumers, and in the marketplace." Respondent asserted it has used SMART WALLET as a source identifier for its wallet for over ten years and has used SMART as a source identifier for its line of products, and as a result, consumers recognize its SMART marks on its various product lines. The Board was not impressed: "even if the relevant public associates SMART WALLET with Respondent’s licensee, this cannot rebut a finding of genericness."

It is irrelevant whether Respondent was the first user of the term. "The law does not permit 'anyone to obtain a complete monopoly on use of a descriptive [or generic] term simply by grabbing it first.'" KP Permanent Make-Up. Although there may be other names for the type of wallet at issue, "it is well settled that there can be more than one generic term to name a product."

And so, the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Hat tip to FOB Roberto Ledesma.

Text Copyright John L. Welch 2023.

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

It's a new year and a clean slate. Here are the first three decisions of the year in Section 2(d) appeals. How do you think they came out? [Results in first comment].

In re Ozy Media, Inc., Serial No. 90023072 (January 4, 2023) [not precedential] (Opinion by Judge Martha B. Allard) [Section 2(d) refusal of RESET for "mugs and cups" in view of the registered mark shown below for "tableware, cookware and containers, namely, mugs made of plastic . . . ; cups made of plastics" [PLASTIC disclaimed].]

In re Chatam International Incorporated, Serial No. 90114379 (January 6, 2023) [not precedential] (Opinion by Judge Karen Kuhlke) [Section 2(d) refusal of STRONG ISLAND for "alcoholic beverages, except beer," in view of the registered mark STRONG ISLAND ALE for "Beer, ale, lager, stout and porter" [ALE disclaimed].]

In re Vanair Manufacturing, Inc., Serial No. 90293210 (January 10, 2023) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Section 2(d) refusal of GENAIR for "Air compressors; Generators, namely, integrated electric generators for land vehicles" in view of the registered mark GENAIRATOR for "diesel powered combination electricity generators and air compressors."].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2023.

In 2022, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals?

In 2022, by my reckoning, the Board issued final decisions in 51 appeals from Section 2(e)(1) mere descriptiveness refusals or from disclaimer requirements based on descriptiveness. The Board affirmed 45 of the refusals and reversed 6 refusals. That's an affirmance rate of about 88.2%.

One of the affirmances was deemed precedential: namely, the SMART BEZEL case [TTABlogged here], in which the Board found the proposed mark to be merely descriptive of "electronic sensor modules for controlling and integrating home automation systems, lighting systems, and smart heating systems" [SMART disclaimed].

One of the reversals was labeled precedential: namely, the Lego case [TTABlogged here], in which the Board overturned a requirement that Lego disclaim the word KID in both Latin and non-Latin characters, in the two marks shown below for various goods and services primarily aimed at children. The Board found each mark to be unitary, and therefore disclaimers were not required.

Here is a list of the marks (with application serial numbers) involved in the six reversals:

THE STEVIE WONDER SONG PARTY (88388322) [disclaimer of SONG PARTY]
HOME OF THE HYBRID TIRE (88675139) [disclaimer of HYBRID TIRE]
MONKIE KID & Design (88698784) [disclaimer of KID in both Latin and non-latin characters]
THE FARMHOUSE BY RACHEL ASHWELL (88737743) [disclaimer of FARMHOUSE]
LUKUMADES (Stylized) (88844592) [mere descriptiveness refusal]
PLM TRUSTLINK (90136321) [disclaimer of PLM]

Most of these reversals found their way into a TTABlog post. You may find a particular post by putting the mark into the search engine box.

How does this compare with past years? Here's a bar chart (again prepared by the one-and-only Francesca ("Frankie") Householder), covering the last eleven years:

Read comments and post your comment here.

TTABlogger comment: So as a rule of thumb, one could say that nine out of ten are affirmed.

In 2022, What Was The Rate of TTAB Affirmance of Section 2(d) Refusals to Register?

Yours truly, the TTABlogger, has once again taken on the unenviable task of estimating the percentage of Section 2(d) likelihood-of-confusion refusals that were affirmed by the Board in the past calendar year. I counted 200 decisions, of which 185 were affirmances and 15 were reversals. That's an affirmance rate of 92.5%.

Only one of the opinions in the lot was deemed precedential: the RAINCOAST DIP case. There, despite the fact that the DuPont factors pointed in favor of affirmance of the Section 2(d) refusal, the Board overturned the refusal because of a consent agreement between the applicant and the cited registrant, which agreement the Office had pooh-poohed. [TTABlogged here].

Set out below is a list of the 15 marks (with application serial numbers) involved in the Section 2(d) reversals. In the vast majority of cases, the differences in the marks (MACOMB LAW GROUP, ELEPHANT LEARNING MATH ACADEMY, EVOLVED LIFE) or the differences in the goods/services (STREAMLINE BOATS, MBBM, ACRON, EPIGENE, FINALE) proved to be dispositive. In several cases, the weakness of a particular term (typically, a "crowded field") was a key factor (CLOVER CLUB, ELEPHANT LEARNING MATH ACADEMY, EVOLVED LIFE, MOXIE SCRUBS, CUSHION COMPFORT, GUJI MANE). The applicant's prior registrations (under the 13th DuPont factor) were determinative in the GAIA KIDS case. And consumer sophistication played a role in the EPIGENE decision.

TRITAN (79272512)
RAINCOAST DIP (88758625)
MACOMB LAW GROUP (88789548)
CLOVER CLUB (88425357)
ELEPHANT LEARNING MATH ACADEMY (90556090)
STREAMLINE BOATS (88621502)
MBBM (88877168)
ACRON (79301495)
EVOLVED LIFE (90042595)
GAIA KIDS (90052133)
MOXIE SCRUBS (90100833)
EPIGENET (90269018)
CUSHION COMPFORT (88787993)
GUJI MANE (90109203)
FINALE (88842118)

Nearly all of these reversals found their way into a TTABlog post. You may find a particular post by putting the mark into the search engine box.

How does this compare with past years? Here's a bar chart (prepared by Francesca ("Frankie") Householder of Wolf Greenfield), covering the last eleven years:

Click on picture for larger, clearer image..

Read comments and post your comment here.

TTABlog comment: The number of decisions was way down from last year's total of 274. Why was that?

"ASSHOLES LIVE FOREVER" Fails to Function as a Trademark, Says TTAB

Despite the Supreme Court's ruling in Iancu v. Brunetti, deeming the "scandalous and immoral" provision of Section 2(a) unconstitutional, your run-of-the mill obscenities are going to face a difficult hurdle to registration: failure-to-function. Mr. Brunetti himself found that out last year when his attempt to register "FUCK" failed to clear that hurdle. [TTABlogged here]. Kirill's Big Brain, LLC met the same fate in its attempt to register ASSHOLES LIVE FOREVER for a potpourri of goods in 14 classes, including air fragrance preparations, jewelry, clothing, and bath mats. The evidence submitted by Examining Attorney Jacob Vigil showed "wide-spread third-party use of the proposed mark generally as an expression and in an ornamental manner on goods the same as and similar to those identified in the involved application." In re Kirill’s Big Brain, LLC, Serial No. 90033810 (January 6, 2023) [not precedential] (Opinion by Judge Christen M. English).

Relying on a string of TTAB precedents, the Board observed that informational matter fails to function as a trademark if it comprises a common term or phrase that consumers are accustomed to see in use by various sources to convey ordinary, familiar, or generally understood concepts or sentiments, rather than serving as a source indicator. The key question is, of course, how the consumer perceives the proposed mark.

The Examining Attorney provided more than 30 examples of third-party use of the phrase ASSHOLES LIVE FOREVER on such items as clothing, home décor, stickers, cell phone cases, drinking glasses, bottles, and mugs. The record also included use of the phrase other than in connection with goods included in the subject application: for example, media articles, social media posts, and podcasts.

Applicant Kirill's challenged the very nature of the failure-to-function refusal, contending that it is "paying the price for an unintended but arguably unfair overzealous application of flawed analysis." The Board, however, rejected the argument that the failure-to-function refusal is arbitrary or unfair. As it recently explained in the "FUCK" case:

[T]he Trademark Act does not specifically articulate “failure to function” in haec verba as a ground for refusal of a proposed mark. However, . . . the starting point for registration is the statutory definition of a trademark. A word that fails to distinguish goods or services does not meet the statutory definition of a trademark, and thus cannot be registered. 15 U.S.C. §§ 1051, 1127. . . . Like genericness, “failure to function” finds its statutory basis in Section 45’s definition of a trademark. And, an entire body of law — starting over 60 years ago with the Court of Customs and Patent Appeals decision in Standard Oil — has developed that provides guidance on how Trademark Act Section 45’s definition of “trademark” applies to merely informational matter, including widely-used commonplace terms and expressions. That body of law recognizes that such terms and expressions are usually taken by consumers at their ordinary meaning and are not perceived as identifying and distinguishing one party’s goods from those of others or indicating their source.

Turning to the substance of the refusal, the Board observed that Kirill's prominently displays the proposed mark as an "adornment on many of the identified goods. "The placement, size, and dominance of the expression ASSHOLES LIVE FOREVER on Applicant’s goods is consistent with conveying a common sentiment rather than signifying a brand or indicating a source." The Board acknowledged that Kirill's uses the phrase in a trademark manner on some of its specimens of use, but that alone does not negate the failure-to-function refusal.

The Board concluded that the Examining Attorney established "a reasonable predicate, i.e., a prima facie case, that ASSHOLES LIVE FOREVER is a widely used message that consumers are accustomed to seeing displayed in a non-source identifying manner on a number of different goods such that the proposed mark fails to serve a source-identifying function for Applicant’s goods."

Skirill's argued that the refusal is improper because ASSHOLES LIVE FOREVER does not convey information, but the Board pointed out that "merely informational matter" includes 'widely-used common place terms and expressions' regardless of the specific nature of the message conveyed." "[W]idespread use of a term or phrase may be enough to render it incapable of functioning as a trademark, regardless of the type of message."

Skirill's further argued that the third-party uses are irrelevant because they post-date its first use of the mark, and thus those uses constitute infringement of Skirill's mark. The Board, however, found Skirill's evidence to be insufficient: "we find that Applicant has not proven that it made prominent use of its mark before the third-party uses arose such that we can conclude the third-parties are infringers and did not independently adopt the use of 'assholes live forever' or adopted the phrase to tread on any trademark rights of Applicant." Moreover, there was no evidence that Skirill's made any effort to police its purported mark. "Without such evidence, we must presume that the third party uses are still in the marketplace and are part of the environment in which relevant consumers will encounter Applicant’s mark."

Finally, the Board observed that third-party registrations for such marks as HEROES LIVE FOREVER or LOVE LIVES FOREVER were not probative. They may show that "LIVE FOREVER" marks are not inherently unregistrable, but there was no evidence that "consumers regularly encounter these [third-party marks] used in the same way as the mark in question, namely, as an expression that is commonly used as such on a wide variety of goods." Furthermore, each case must be decided on its own evidentiary record.

And so, the Board affirmed the refusal

Read comments and post your commenthere.

TTABlogger comment: If one considers ASSHOLES LIVE FOREVER as inherently distinctive, why would Skirill's have to show that it made "prominent" use of the mark to prove priority? Wouldn't any non-de miminis use of the mark suffice? And why does Skirill's have to prove that the third-parties copied its mark? Wouldn't it be better to say that the third-party evidence is relevant because the issue at hand is decided as of the time of the USPTO final refusal, not at the time of application?

Precedential No. 1: TTAB Affirms Mere Descriptiveness Refusal of "DXPORTAL" for an Internet Portal Providing Drug Prescription Information

In a less that scintillating case, the Board affirmed a Section 2(e)(1) refusal to register the proposed mark DXPORTAL, finding the mark to be merely descriptive of "providing an Internet website portal in the healthcare field to provide a patient and caregivers with the patient's drug prescription information." Dictionary definitions of DX (a common abbreviation for "diagnostic") and of "portal," information on applicant's and third-party websites, and its acknowledged intention to offer diagnostic services in connection with the mark, led the Board to conclude that consumers would immediately understand that the mark "identifies a portal that will also link them with diagnostic information, specifically the diagnosis relied upon by the healthcare provider who wrote the drug prescription." In re NextGen Management, LLC, 203 USPQ2d 14 (TTAB 2023) [precedential] (Opinion by Judge Frances S. Wolfson).

Applicant argued that, although it "does intend (in the future) to include limited diagnostic information on the portal, the storing of diagnostic information ... is not the focus of the portal, nor is it recited in the description of services of the mark." The Board confirmed that it was proper for the Examining Attorney to look at applicant's website for possible evidence of descriptive use. The website demonstrated that providing diagnostic information is an "integral part of Applicant's website relating to drug prescriptions, even if such diagnostic information is not the paramount aspect." In short, [d]iagnostic information necessarily is tied to prescriptions, which treat the conditions that are diagnosed."

Moreover, third-party webpages "illustrate how diagnostic information and therapeutic solutions, such as prescription drugs, are integral to each other." These webpages showed "an inherent relationship between diagnostic services and treatment, which could include prescribing drugs to address a condition." Furthermore, the term "drug prescription information" is broad enough to encompass diagnostic information on which a prescription is based.

The Board concluded that the mark DXPORTAL "as a whole conveys no more than the sum of its individually descriptive parts." And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: I invite suggestions as to why this opinion is precedential. I can't think of a reason.

TTAB Issued 38 Precedential Opinions in 2022

The Board issued 38 precedential opinions in calendar 2022, a number that is consistent with recent yearly totals. Some practitioners clamor for more precedential opinions, but given the fact that many decisions are based on established principles applied to the particular facts of the case (especially in Section 2(d) cases), I don't see the value in more precedential opinions. In fact, I wonder whether making more decisions precedential would only confuse things.