TTAB Posts March 2023 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled eight oral hearings for the month of March 2023. Five of the hearings will be held via video conference; three will be held "in-person" in Alexandria, VA. Briefs and other papers for each case may be found at TTABVUE via the links provided.

March 7, 2023 - 10 AM [Virtual]: Alaskan Brewing & Bottling Co. v. Northern Hospitality Group, Inc. dba 49th State Brewing Company, Opposition No. 91264066 [Section 2(d) opposition to registration of ALASKA TRAILS PALE ALE. ALASKA 8 STAR LAGER, and ALASKA EIGHT STAR LAGER for "beer, ale and lager" [ALASKA, PALE ALE, and LAGER disclaimed], in view of the registered marks ALASKAN, ALASKAN WINTER ALE, ALASKAN AMBER ALT STYLE, ALASKAN ICY BAY, ALASKAN SUMMER KOLSCH STYLE ALE, ALASKAN HARD SELTZER, ALASKAN DISTILLING CO., and the word-and-design mark shown below, for beer and ale [WINTER ALE, ICY BAY and SUMMER KOLSCH STYLE ALE disclaimed; all but the first registration including a distinctiveness limitation "as to 'ALASKAN'"].

March 8, 2023 - 11 AM [Virtual]: In re Garan Services Corp., Serial No. 90433715 [Section 2(e)(1) mere descriptiveness refusal of WOOLY for "Footwear; Headwear; Hosiery; Sleepwear; Bottoms as clothing; Tops as clothing."]

March 14, 2023 - 10:30 AM [In-person]: Audemars Piquet Holding S.A. v. Haas Outdoors, Inc., Consolidated Oppositions Nos. 91242213 and 91242238 [Oppositions 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.]

March 16, 2023 - 10 AM [Virtual]: In re SLC Hauppauge Development, LLC, Serial No. 90562295 [Section 2(e)(4) surname refusal of the mark CARLOW for various business and real estate services.]

March 21, 2023 - 10 AM [In-person]: In re Fredericia Furniture A/S, Serial Nos. 79310559 and 79318824 [Section 2(e)(2) refusal of FREDERICIA in standard form, for lighting fixtures, furniture, and business services, on the ground that the proposed mark is primarily geographically descriptive of Applicant’s goods and services, namely, Fredericia, Denmark, and refusal of FF FREDERICIA & Design absent a disclaimer of FREDERICIA on the same ground.]

March 21, 2023 - 1 PM [Virtual]: In re Laxamentum Technologies, LLC, Serial No. 90441532 [Section 2(d) refusal of GAMEGUARDIAN for "Providing website featuring a forum on video game cheats, video game information, news, game play strategies, frequently asked questions about video games, journals, previews, reviews and commentary on video games," in view of the registered mark GUARDIAN GAMES for "retail game stores; retail store services featuring games" [GAMES disclaimed].

March 22, 2023 - 2 PM [Virtual]: In re Exhart Environmental Systems, Inc., Serial No. 90006864 [Refusal to register the design shown below for "non-metal garden stakes sold wholesale; Decorative garden accessories, namely, figurines of plastic sold wholesale" on the ground that the mark consists of a nondistinctive product design that lacks acquired distinctiveness.]

March 27, 2023 - 11 AM [In-person]: In re Lindsay Hoopes, Serial Nos. 90498749 and 90498755 [Section 2(d) refusals to register NAPANAC for "Brandy; Fortified wines; Spirits" in view of the registered certification mark NAPA GREEN for wine derived from grapes grown in Napa Valley, California, and for promoting sustainable winery practices in Napa Valley, and in view of the registered certification mark NAPA VALLEY for wine.]

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TTABlog comment: See anything interesting? Any WYHA?s

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 David Shokrian M.D., Serial No. 88417120 (February 13, 2023) [not precedential] (Opinion by Cindy B. Greenbaum). [Mere descriptiveness refusal of MILLENNIAL AESTHETIC SURGERY for "Surgery; Cosmetic surgery services; Cosmetic and plastic surgery; Plastic surgery; Plastic surgery services" (AESTHETIC SURGERY disclaimed). Applicant argued that the proposed mark is suggestive because 'millennial' has meanings other than as a reference to people born in the 1980s and early 1990s.]

In re Wave Neuroscience, Inc., Serial No. 88796139 (February 16, 2023) [not precedential] (Opinion by Judge Jonathan Hudis) [Mere descriptiveness refusal of WAVE NEURO for medical products and services relating to the analysis and treatment of neurological disorders. Applicant argued that the term WAVE is suggestive because it has multiple meanings, connotations or commercial impressions, noting that several businesses in Southern California have the word WAVE in their names.]

In re Le Manoir Sainte-Catherine Inc., Serial No. 88265092 (February 23, 2023) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Mere descriptiveness refusal of GELCARE for, inter alia, nail gel, gel nail polish, and preparations for removing gel nails. Applicant contended that the term CARE "is nebulous and is arguably suggestive," and even if descriptive, "the combination of the terms GEL and CARE is not merely descriptive."]

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

Text Copyright John L. Welch 2022.

TTABlog Flotsam and Jetsam, Issue No. 16: COHIBA Appeal (Again); TM Guide for 2(c) Refusals; LeBron Deposition

Here's a new edition of "Flotsam and Jetsam," wherein I provide, on an irregular basis, timely tidbits to the TTABar. The last edition was a mere nine years ago.

COHIBA Appeal: General Cigar has filed a complaint [.pdf here] in the U.S. District Court for the Eastern District of Virginia, seeking Section 1071 review of the TTAB's recent decision [TTABlogged here] ordering cancellation of two registrations for the mark COHIBA for cigars, based on violation of Article 8 of the Pan American Convention. We can surely expect a few more chapters to be written in this 25-year-old brouhaha.

Examination Guide 1-23: On February 22nd, the USPTO issued a Guide for "Examination for Compliance with Section 2(c) While Constitutionality of Section 2(c) as Applied to Marks That Are Critical of Government Officials or Public Figures Remains in Question." [pdf here]. In short, pending the outcome of In re Elster (the TRUMP TOO SMALL case) at the Supreme Court, the Office will suspend action on pending applications involving marks subject to refusal under section 2(c). You will recall that in Elster, the CAFC "held that the application of section 2(c) to marks that are critical of government officials or public figures is unconstitutional, absent a showing of actual malice, because it impermissibly restricts free speech." [TTABlogged here]. On January 27, 2023, the USPTO filed a petition to the U.S. Supreme Court for a writ of certiorari to review the CAFC's decision.

LeBron James deposition: On February 1, 2023, the Board issued an order requiring LeBron James to appear for deposition in Opposition No. 91249886, involving the mark KING JAMES for various clothing items. [pdf here]. The parties are ordered to attend a telephone conference with the Board before March 3rd, to set a date for the deposition within 60 days of the telephone conference. Although the NBA playoffs begin in mid-April, this will likely not present a problem, since the Lakers, even if they do make the playoffs, probably won't stay long.

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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 Bioclinical Sciences, LLC, Serial No. 90094476 (February 14, 2023) [not precedential] (Opinion by Judge Elizabeth A. Dunn) [Section 2(d) refusal of BIOCLINICAL SCIENCE for "vitamin supplements," in view of the registered mark BIOCLINIC NATURALS for "dietary and nutritional supplements; dietary food supplements; food supplements; health food supplements; herbal supplements; nutraceuticals for use as a dietary supplement; vitamin and mineral supplements; all of the aforegoing derived primarily from natural ingredients" (NATURALS disclaimed).]

In re THX Ltd., Serial No. 90272320 (February 21, 2023) [not precedential] (Opinion by Judge Jonathan Hudis). [Section 2(d) refusal of THX ONYX for "dongles being portable digital to analog audio converters and audio power amplifiers for use with headphones," in view of the registered mark ONYX for "audio mixers; analog audio mixers with digital interfaces; audio amplifiers; audio signal amplifiers; audio signal mixers; audio processing and recording equipment in the nature of computer software, computer hardware, and software contained on flash drives for audio mixing and amplification."]

In re Baldwin Risk Partners, LLC, Serial No. 90335197 (February 21, 2023) [not precedential] (Opinion by Judge Christen M. English) [Section 2(d) refusal of the mark BRP for, inter alia, "insurance carrier services; insurance agency and brokerage services, in view of the registered mark shown below, for "“insurance services, namely, providing underwriting services and insurance brokerage services in the area[] of professional liability insurance" (BUSINESS RISK PARTNERS disclaimed).

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TTABlog comment: How did you do? See any WYHA?s

Text Copyright John L. Welch 2023.

TTAB Summarily Sustains BITVISION Opposition Due to Offensive Claim Preclusion

On summary judgment, the Board sustained this opposition to registration of the mark BITVISION, in the form shown first below, for closed circuit TV security systems, concluding that the application must be denied on the ground of claim preclusion. Applicant Creative Security had defaulted in two prior oppositions brought by this same opposer, for identical goods and substantially the same mark. Hangzhou Hikvision Digital Technology Co., Ltd. v. Creative Security Technology, Opposition No. 91277548 (February 16, 2023) [not precedential].

In each of the three oppositions, Opposer Hangzhou Hikvision claimed likelihood of confusion with its registered mark HIKVISION for video surveillance installations. In each of the two prior oppositions, Creative Security failed to serve and file an Answer, and so judgment was entered by default and the opposition was sustained. One opposition concerned the mark BITVISION in standard form, and the other the mark BITVISION in the form shown immediately below.
 

Under the doctrine of claim preclusi on, "a judgment on the merits in a prior suit bars a second suit involving the same parties . . . based on the same cause of action." This case involved the doctrine of "merger," or offensive claim preclusion. The parties involved are the same, and the earlier default judgments constitute final judgments on the merits for purposes of claim preclusion.

The question, then, was whether the likelihood of confusion claim in this case is based on the same set of transactional facts as in the two prior proceedings. In making that determination, the Board considers:

1) Whether the mark involved in the first proceeding is the same mark, in terms of commercial impression, as the mark involved in the second proceeding; and
2) whether the evidence of likelihood of confusion between the opposer’s mark and the applicant’s first mark would be identical to the evidence of likelihood of confusion between the opposer’s mark and the applicant's second mark.

The test for deciding whether two marks have the same commercial impression is the same as for "tacking:" i.e., whether the marks are "legal equivalents." "The previous mark must be indistinguishable from the mark in question; the consumer should consider both as the same mark; and they must create 'the same, continuing commercial impression.' Hana Fin., Inc. v. Hana Bank, 113 USPQ2d 1365, 1367 (2015)."

The Board found that the variations in applicant's marks "are insignificant and they create substantially the same commercial impression." "All of Applicant’s marks include a single term, BITVISION, and to the extent stylization is incorporated, the stylizations include the color red with no additional significant design elements."

The font of the Current Application is not so stylized as to evoke a different commercial impression from the prior marks. As is evident from review of the marks, any variations in the marks are minor and do not rise to the level of a new mark sufficient, under the circumstances, to allow Applicant to seek registration herein.

The Board noted that it does not want to "encourage losing parties to insignificantly modify their marks after an adverse decision and thereby avoid the preclusive effect of the prior adjudication."

Finding no genuine dispute of material fact regarding the applicability of claim preclusion, the Board sustained the opposition.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2023.

Precedential No. 9: Business Card Specimen Does Not Prove Use of Collective Membership Mark, Says TTAB

Section 4 of the Trademark Act provides for registration of a collective membership mark, defined as a trademark or service mark adopted by a collective and used by members to indicate membership in the collective. Mission American Coalition sought to register the mark THE TABLE COALITION "to indicate membership in a group of church leaders, senior church members, ministers, independent evangelical preachers, and other evangelical principals to promote and support evangelistic activities." However, its specimen of use failed to show use by members to indicate membership in the collective organization. And so, the Board affirmed a refusal to register under Sections 1, 4, and 45 of the Act. In re Mission America Coalition, Serial No. 90019480 (February 17, 2023) [precedential] (Opinion by Judge Peter W. Cataldo).

Applicant's specimen of use comprised a business card of its Director of Ministry, Deena Kvasnik (shown above). Examining Attorney Jaime Batt maintained that the business card is used by the organization itself, not by a member to indicate membership in the coalition.

Applicant argued that her business card is presented to potential members to solicit their membership in Applicant. However, in her declaration, Ms. Kvasnik did not aver that she is a member of the organization, and the business card states that she holds the position of Director of Ministry. It does not identify her as a member.

Thus, Applicant’s specimen – the business card of one of Applicant’s officers – shows use of THE TABLE COALITION by Applicant, not as a collective membership mark by members of Applicant’s organization, “to inform relevant persons of the members’ association with the organization.” In re Code Consultants Inc., 60 USPQ2d at 1700. [Emphasis by the Board].

The record as a whole, including Ms. Dvasnik's declaration "suggests Applicant's use of the TABLE COALITION as a service mark," but it does not show use of the mark as a collective membership mark in connection with the identified services. [Emphasis by the Board].

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TTABlogger comment: Precedential?

Text Copyright John L. Welch 2023.

TTAB Affirms Genericness Refusal of the Color Dark Green for Medical Examination Gloves

The Board affirmed a refusal to register the color dark green (Pantone No. 3285 c) for “chloroprene medical examination gloves sold only to authorized resellers,” on the ground of genericness, or on the alternative ground that the proposed mark is not inherently distinctive and lacks acquired distinctiveness. The Board found that relevant consumers are exposed to medical gloves of the same color or very similar shades of dark green under a wide variety of marks, and from manufacturers other than Applicant, such that Applicant's proposed mark cannot serve as a source-indicator. In re PT Medisafe Technologies, Serial No. 88083209 (February 15, 2023) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The applicable test for genericness of a color mark is slightly different than that for a word mark, but it is still a two-step inquiry: "we first consider the genus of goods or services at issue, and second consider whether the color sought to be registered or retained on the register is understood by the relevant public primarily as a category or type of trade dress for that genus of goods or services." [Emphasis supplied].

Examining Attorney Christopher M. Law maintained that the proper genus at issue is "medical examination gloves." Applicant contended that the proper genus must be what is stated in its identification of goods. The Board decided, however, that the genus is "chloroprene medical examination gloves," noting that the material composition of examination gloves "appears to have significance in the industry." As to the additional limitation in the identification, "sold only to authorized retailers," the Board refused to so limit the genus.

Limiting the genus to goods sold to Applicant’s authorized resellers would foreclose relevant evidence to prove that chloroprene medical gloves in the color in question are common in the industry and come from numerous sources. *** This limitation, particularly when the nature of Applicant’s so-called “authorized resellers” is completely open-ended and subject to change, cannot be relied on to restrict the genus only to Applicant’s goods.

As to the relevant public, the Board found that consumers include "a broad range of the general public and industry," such as "caregivers, food handlers, dentists and other professionals, healthcare personnel and institutions, research laboratories, food processing facilities, and people who want gloves for 'general cleaning tasks.'"

Applicant conceded that the color green is in common use for medical gloves, but it maintained that its specified shade of green serves as a source indicator. However, the examining attorney submitted "voluminous evidence under third-party marks of chloroprene/neoprene medical examination gloves in the same of nearly the same color as in Applicant's proposed mark." Some of the examples were gloves manufactured by applicant but sold under third-party marks.

“Generally, when a company sells a product to third parties for re-sale under the third parties’ marks rather than under the manufacturer’s mark, that circumstance cripples any attempt to show that consumers uniquely associate the product’s trade dress with one source, i.e., the manufacturer.”

Applicant submitted two customer declarations, identical in form but of little substance. Applicant also submitted the results of a "survey" conducted by its counsel, but it was "so flawed as to be entitled to no probative weight."

We find that the evidence as a whole, including material not specifically excerpted or discussed herein, shows that dark green, in a shade identical or similar to Applicant’s, is so common in the chloroprene medical examination glove industry that it cannot identify a single source. The proposed color mark is generic, and cannot serve as a source-indicator.

For purposes of completeness, the Board also considered Applicant's claim of acquired distinctiveness, The Board found that its use of the proposed mark was "far from 'substantially exclusive' within the meaning of Section 2(f)," and its other evidence missed the mark.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: I have trouble calling a proposed color mark "generic." I think a "failure-to-function" refusal would have fit like a ....

Text Copyright John L. Welch 2023.

TTAB Sustains Section 2(d) Opposition to RAMEN HOOD & Design for Asian-Themed Restaurant Services

[Caveat: the TTABlogger served as co-counsel to the opposer in this consolidated proceeding]. The Board  sustained Section 2(d) oppositions to the word-and-design marks shown immediately below, for Asian-themed cuisine and for restaurant services featuring same, finding confusion likely with opposer's common law mark RAMEN HOOD & Design (shown to the right) for Asian-themed restaurant services. Applicant submitted no evidence or testimony, leaving it up to opposer to prove its case. Ramen Hood, LLC v. Ramenhood LLC, Oppositions Nos. 91254894 and 91256310 (January 24, 2023) [not precedential] (Opinion by Judge Robert H. Coggins).

Applicant was entitled to rely on the application filing dates as its constructive first use dates: December 12, 2017 and April 10, 2018. Opposer proved through the testimony of its sole and managing member that it first used the mark RAMEN HOOD for Asian-themed restaurant services - featuring ramen, noodles, rice bowls, broths, etc. - since opening its restaurant on November 16, 2015 in the historic Grand Central Market in Los Angeles. Thus, opposer established priority of use.

As to likelihood of confusion, opposer's restaurant services are identical to those recited in the opposed applications. With regard to applicant's goods (Asian-themed cuisine), those goods are inherently related to opposer's restaurant services featuring Asian-themed food. In addition, opposer introduced copies of eight use-based third-party registrations that cover both restaurant services and various Asian foods.

With respect to channels of trade, the opposed applications do not contain any relevant limitations, and so applicant's goods and services are assumed to travel in the normal channels of trade and are available to all the usual consumers, including through restaurants. For the services, the trade channels overlap. For the goods, the third-party registrations are evidence that the likely trade channels overlap.

Opposer's witness testified that opposer "chose the name RAMEN HOOD as a whimsical play on the name of the famous literary character, Robin Hood,' and the mark on its 'signage . . . menus and other printed items . . . include[s] a design of an arrow to subtly remind the public of that reference." The Board found that opposer's mark is inherently and conceptually strong "because it incongruously associates the legendary English outlaw Robin Hood with a 'Japanese dish of noodles in broth.'"

As to commercial strength, the Board found that while opposer's restaurant is "obviously successful," there was little evidence to prove its renown beyond Los Angeles. And so the Board accorded opposer's mark "the normal scope of protection to which inherently distinctive marks are entitled."

Finally, turning to the marks, the Board unsurprisingly found the word RAMEN HOOD to be the dominant feature of each of the involved marks. In fact, the term RAMEN HOOD is used by both parties in textual references to their goods and services. Opposer's mark and applicant's marks "incongruously associate[] the highly skilled archer Robin Hood with the Japanese ramen dish of noodles in broth." The differing characters and design elements of applicant's mark "reinforce the connotation and commercial impression of the RAMEN HOOD element, just as Opposer's squiggly arrow design does in Opposer's mark."

And so, the Board sustained the oppositions.

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TTABlogger comment: No comment from me.

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 Enel S.p.A., Serial No. 79283272 (February 13, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman) [Section 2(d) refusal of JUICEPASS for "remote payment services; issuance of prepaid cards and tokens of value," in view of the registered mark JUICE for, inter alia, issuing prepaid debit cards and credit cards.]

In re Mushroom Revival LLC, Serial No. 88419682 (February 8, 2023) [not precedential] (Opinion by Judge Christopher Larkin). [Section 2(d) refusal of MUSHROOM REVIVAL for "mushroom based dietary supplements in the form of capsules, liquid, powder" [MUSHROOM disclaimed] in view of the registered mark REVIVAL. "nutritional and dietary supplements which contain vitamins, minerals and herbs; vitamin and mineral preparations for use as ingredients in the food industry."]

In re GFactor Enterprises, LLC d/b/a Gfactor Films, Serial No. 90159334 (February 2, 2023) [not precedential] (Opinion by Judge Jonathan Hudis) [Section 2(d) refusal of the mark MAKE YOUR PASSION YOUR PAYCHECK for books and educational services "in the field of passion, self-awareness, EQ-emotional intelligence, student, adolescent, adult and career success," in view of the registered mark MAKE YOUR PASSION YOUR PROFESSION for "[e]ducational services, namely, providing courses of instruction at the undergraduate and professional level."]

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2023.

Weakness of "LAGUNA" for Clothing Leads to Dismissal of Opposition to LB LAGUNA BEACH FOOTBALL CLUB & Design

The Board dismissed a Section 2(d) opposition to registration of the mark LB LAGUNA BEACH FOOTBALL CLUB & Design for "hats; sweatshirts; t-shirts; track pants; athletic uniforms; track jackets" [LAGUNA BEACH disclaimed], concluding that the opposer failed to prove a likelihood of confusion with its registered mark LAGUNA for overlapping and related clothing items. The Board found that the term "Laguna" merited a limited scope of protection for clothing, swimwear and beachwear, and, in view of "the comparatively smaller size and subordinate nature of 'LAGUNA BEACH' in Applicant’s mark," that confusion is not likely. R. Josephs Licensing Inc. v. Laguna Beach Football Club, Opposition No. 91264741 (February 9, 2023) [not precedential] (Opinion by Judge Jonathan Hudis).

The Board first considered a procedural issue regarding opposer's rebuttal testimony. Applicant did not object to that testimony until its trial brief, but since the Board considered the objection to be one that could not have been cured during applicant's rebuttal period, it was timely made. The Board then found that the rebuttal testimony - concerning opposer's sales figures, promotional efforts, and policing - was improper because it comprised testimony that should have been offered in opposer's case-in-chief.

As to the strength of opposer's mark, evidence of third-party registration and use of various LAGUNA-formative marks for clothing led the Board to find that "within the clothing, swimwear and beachwear market, on a spectrum from very strong to very weak, the conceptual and commercial strength of Opposer’s LAGUNA marks falls toward the weaker end of the spectrum."

Considering the marks at issue, the Board found that applicant's mark is dominated by the letters LB "by sheer comparative size."

The point of similarity between the literal elements of Opposer’s marks and Applicant’s mark is the term “LAGUNA” versus the words “LAGUNA BEACH.” Given the limited scope of protection afforded to “LAGUNA” in connection with clothing, swimwear and beachwear, within the context of comparing the parties’ marks in their entireties, as well as the comparatively smaller size and subordinate nature of “LAGUNA BEACH” in Applicant’s mark, this is not a sufficient point of similarity for confusion to be likely. *** “LAGUNA” has a limited scope of protection, such that “LAGUNA” and “LAGUNA BEACH” appear and sound different, have different meanings, and differ in overall commercial impression.

The Board found the differences between the marks to be the controlling factor, and so it dismissed the opposition.

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TTABlogger comment: Is this a WYHO?

Text Copyright John L. Welch 2023.

TTABlog Test: Is "SOUL FOOD MARKET" Merely Descriptive of Grocery Store Services?

In this year's ninth appeal from of a mere descriptiveness refusal (with no reversals yet), the Board reviewed a Section 2(e)(1) refusal of SOUL FOOD MARKET for "online retail grocery store services; retail grocery stores." Applicant New Africa Ventures argued that “SOUL FOOD has no direct meaning in relation to its actual identified services, as the services make no reference to 'soul food'." It also contended that soul food is an "ethnic cuisine" – where "'[c]uisine’ is defined as a style of cooking" – and "cuisine involves cooking and restaurant services." '[T]here is no indication that there will be any cooking under Applicant’s recitation of [grocery store] services," and so the proposed mark does not disclose any information with particularity. How do you think this came out? In re New Africa Ventures, Inc., Serial No. 90330813 (February 8, 2023) [not precedential] (Opinion by Judge Robert H. Coggins).

Examining Attorney Drew Ciurpita maintained that the evidence demonstrated that SOUL FOOD “refers to traditional southern African American foods” and MARKET “refers to a retail store that sells agricultural produce.” “When combined, this wording refers to a retail store featuring traditional southern African American foods” and thus “merely describes a feature” of grocery stores.

The Examining Attorney relied on dictionary definitions and a Wikipedia entry for "soul food" and on several website excerpts that use the term SOUL FOOD to describe a category of food sold at grocery stores. The Board took judicial notice that "cuisine" is not only a style of cooking, but is also "food" and "fare."

The multiple dictionary definitions alone establish that SOUL FOOD is merely descriptive of traditional southern African American food. The record further demonstrates that soul food items are sold in grocery stores, and as such SOUL FOOD is merely descriptive of a feature and characteristic of grocery store services.

Of course, the word "market" is merely descriptive of a feature and characteristic of grocery store services. "In the context of the services identified in the application, the phrase 'soul food market' on its face refers to a retail establishment that sells soul food."

Applicant insisted that "the meaning of 'soul food' in connection with grocery stores is different than it is for actual cuisine, in that the first impression refers to [Black] culture and ownership." The Board was unmoved.

Accepting Applicant’s reasoning of culture and ownership, arguendo, the possibility that SOUL FOOD could have multiple connotations when used in the proposed mark SOUL FOOD MARKET is not controlling on the issue of whether Applicant’s mark is merely descriptive of Applicant’s identified services. *** "It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.”

Finally, applicant asserted that any doubt as to registrability should be resolved in its favor. The Board, however, had no doubt as to the proposed mark's mere descriptiveness. Concluding that "the combination SOUL FOOD MARKET does not "convey[] any distinctive source-identifying impression contrary to the descriptiveness of the individual parts,'" the Board affirmed the refusal.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2023.

Super Bowl Special: Is TOUCHDOWN TIMEOUT for Sports Programming Confusable With TIME OUT for Event Production Services?

With the Big Game just three days away, the TTAB released its decision in an appeal from the USPTO's refusal to register TOUCHDOWN TIMEOUT for "entertainment services, namely, ongoing digital television show dealing with sports." The Office found confusion likely with the registered mark TIME OUT for "organising, producing and conducting events, music events, comedy events, entertainment, competitions, contests, festivals, carnivals, pageants, displays, shows, fashion shows, exhibitions, film screenings, programmes and performances and radio and TV broadcasts and programmes and performances; production of films, recordings . . . " Applicant Deborah Whitcas argued that "TOUCHDOWN" is the dominant element in her mark, since it appears as the first word in the mark. How do you think this came out? In re Deborah J. Whitcas, Serial No. 90117114 (February 9, 2023) [not precedential] (Opinion by Judge Jonathan Hudis).

The Board found the involved services to be legally identical. Registrant's broad recitation of services "presumably encompasses all services of the type described in the TOUCHDOWN TIMEOUT Application, including, “ongoing digital television show dealing with sports." Whitcas did not contest that finding. Nor did she contest the Board's presumptive finding that the overlapping services are offered in the same trade channels to the same classes of consumers.

The real line of scrimmage was the issue of the similarity of the marks. The Board observed once again that "[w]hen trademarks would appear on substantially identical . . . [services], 'the degree of similarity necessary to support a conclusion of likely confusion declines.'"

The Board found the word TIMEOUT to be the dominant portion of Whitcas’s mark. She maintained that TOUCHDOWN is dominant because it appears as the first word in the mark. The Board was unmoved.

While the first term in a mark generally may be considered as the feature that will be called for, and so remembered, by consumers, this is not invariably the case. For example, as we have here, in situations where the first term in a mark functions as an adjective, descriptor or modifier of the second term, it is the subsequent term that is dominant, not the primary term.

The Board noted that the word "TOUCHDOWN" is clearly associated with American football, and it describes the type of television programing Applicant Whitcas provides. The words TIME OUT and TIMEOUT have common meanings.

In fact, viewers of Registrant’s TIME OUT television programming are likely to assume that Applicant’s television programming, offered under the TOUCHDOWN TIMEOUT mark, are merely a line extension of the services emanating from Registrant.

Finding that the marks "are more similar than they are different by the elements of appearance, sound, meaning and overall commercial impression," and considering the overlapping services, channels of trade, and classes of consumers, the Board found confusion likely and it affirmed the refusal.

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TTABlogger comment: I think TOUCHDOWN TIMEOUT is a unitary mark having a unique connotation. TIME OUT connotes a much more nebulous hiatus. And the "line extension" theory seems to be a convenient way to manufacture support for almost any weak Section 2(d) refusal. What do you think?

Text Copyright John L. Welch 2023.

TTABlog Test: Is AGI2 for Lighting Fixtures Confusable With AGI & Design for Architectural Signage Lighting?

The USPTO refused to register the proposed mark AGI2 for "lighting fixtures," finding confusion likely with the registered mark AGI & Design for lights, lighting assemblies, and light fixtures for architectural signage. Applicant argued that the goods travel in different channels of trade to different customers (consumers and contractors versus businesses), and further that the purchasers are sophisticated and careful. How do you think this came out? In re B-K Lighting, Inc., Serial No. 88769422 (January 27, 2023) [not precedential] (Opinion by Judge Thomas Shaw).

The Board found the goods to be in part legally identical, since applicant’s broadly worded ""lighting fixtures" encompasses all types of lighting fixtures, including registrant’s more narrowly identified lights, lighting assemblies, and light fixtures for architectural signage. Applicant maintained the goods are different because they have different purposes: "Applicant’s goods are directed exclusively to consumers and contractors who are looking for light fixtures for residential and commercial properties. By comparison, Registrant’s goods are sold to businesses that need signs[.]" The Board was unimpressed.

The Board observed that it must consider applicant’s goods as described in its application, where there are no limitations as to purpose, targeted consumer, or channel of trade. Moreover, the Board must assume that the overlapping goods travel in the same channels of trade to the same classes of consumers.

Turning to the marks, the Board unsurprisingly found AGI to be the dominant element in the cited mark, since it is the part that "likely will appear alone when used in text and will be spoken when requested by consumers." The design element is "not nearly as significant as literal element AGI." In applicant's mark, AGI also is the dominant element, since it appears at the beginning of the mark. The numeral "2" suggests that applicant's products will be a newer or second version of earlier products.

Moreover, applicant's mark incorporates the whole of the literal element of the cited mark, and could be displayed in the type style and font. The Board concluded that the marks are similar in appearance, sound, connotation, and commercial impression.

As to the sophistication of consumers, the Board rejected applicant's contention as to the purchasers of "lighting fixtures." Applicant provided no evidence in support, and there are no restrictions in the application as to classes of consumers. "[T]hey are deemed to include both lighting professionals as well as ordinary members of the public, including unsophisticated do-it-yourself homeowners seeking to install new lights." The Board pointed out once again that determinations of likely confusion must be made based on "the least sophisticated potential purchasers."

We note that Registrant’s goods, by their nature, may be directed to more sophisticated consumers. But this alone does not ensure that Registrant’s consumers also will exercise greater than ordinary care and avoid being confused upon encountering Applicant’s goods which are not specialized or directed to a sophisticated consumer. Rather, on the record before us, we think it likely that consumers of Registrant’s goods, upon encountering Applicant’s goods, will think they are a more general line of lighting fixtures directed to a broader market.

And so, the Board affirmed the refusal.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2023.

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

A TTAB judge once told me that you can predict the outcome of a Section 2(d) case 95% of the time by just looking at the goods/services and the marks. Maybe he or she was referring to ex parte cases only, but let's see how you do with the three oppositions summarized below. Answer(s) in the first comment.

Atomic Austria GmbH and Amer Sports Winter & Outdoor Company v. Zave US, Opposition No. 91266670 (January 27, 2023) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Section 2(d) opposition to registration of the design mark shown below right for, inter alia, t-shirts, tee-shirts, and tee shirts, in view of the registered mark shown below left for, inter alia, t-shirts.].

Ilsa, LLC v. Molly Ray Fragrance, Opposition No. 91267802 (January 25, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo). [Section 2(d) opposition to registration of PERFUME WITH A PURPOSE for fragrances and perfumery, in view of the common law mark PERFUME WITH A PURPOSE for fragrances and perfumery.]

Honest Tea, Inc. v. La Brisa Ice Cream Company, Opposition No. 91252873 (January 19, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington) [Section 2(d) opposition to HONEST POP for "frozen confections, namely, frozen fruit confections and frozen plant based confections, all excluding frozen yogurt" [POP disclaimed] in view of the common law mark HONEST & Design for freezable fruit juice slushy goods.]

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TTABlog comment: How did you do? You surely got the second one right!

Text Copyright John L. Welch 2022.

TTAB Grants Motion for Judgment on the Pleadings Due to Vast Dissimilarity Between Marks

Rarely does the Board grant a motion for judgment on the pleadings (FRCP 12(c)), but that's what happened in this opposition proceeding. Opposer Jackson Family Farms claimed that the word-and-design mark shown below, for "wines made from grapes from Côtes de Provence in accordance with adapted standards" is likely to cause confusion with its common law mark VERITÉ for wine and with its registered mark VERITÉ for "alcoholic beverages except beers." Jackson alleged that the marks are "virtually identical" but the Board saw things quite differently. Jackson Family Farms, LLC v. Grands Domaines Du Littoral, Opposition No. 91274194 (January 24, 2023) [not precedential].

A motion for judgment on the pleadings tests only the undisputed facts in the pleading, supplemented by any facts of which the Board takes judicial notice. All well-pleaded facts set forth by the non-moving party must be taken as true. Conclusions of law are not deemed admitted. All reasonable inference must be drawn in favor of the non-movant. If there are no genuine issues of material fact, judgment may be entered.

On this motion, the applicant conceded priority, as well as the relatedness of the goods and the classes of purchasers. It asked for judgment based on the single factor of the dissimilarity of the marks. Opposer Jackson argued that the marks are similar because applicant’s mark completely encompasses Jackson's mark, and because VÉRITÉ is the dominant portion of Applicant’s "tag line."

The Board found no genuine dispute that the marks at issue are distinct in appearance: twenty-two words versus one word. Moreover, the words CHATEAU LA GORDONNE in applicant’s mark are displayed in a much larger and different color font when compared to the other wording in the mark, making CHATEAU LA GORDONNE the dominant element. That larger wording, combined with the design elements, results in a mark that is "visually readily distinguishable from” Jackson's mark.

Finding the first DuPont factor to be dispositive, the Board granted the motion and dismissed the opposition.

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TTABlogger comment: Faster than summary judgment.

Text Copyright John L. Welch 2023.

Precedential No. 7: TTAB Reverses Failure-to-Function Refusal of Lizzo's "100% THAT BITCH" for Clothing Items

Attempts to register common slogans, internet memes, and informational material regularly hit the failure-to-function wall at the USPTO. But the Office has the burden of proof, and here its evidence fell short with regard to two refusals of the mark 100% THAT BITCH for certain clothing items, including t-shirts and baseball hats. The Board concluded that the evidence failed to show that the proposed mark is a common expression in such widespread use that it fails to function as a mark for the identified goods. In re Lizzo LLC, 23 USPQ2d 139 (TTAB 2023) [precedential] (Opinion by Judge Peter W. Cataldo).

Applicant Lizzo LLC is the trademark holding company of the popular singer and performer known as Lizzo. The proposed mark was inspired by a lyric in Lizzo’s song, “Truth Hurts.” The examining attorney maintained that 100% THAT BITCH "is a commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well-recognized sentiment."

In analyzing whether a proposed mark functions as a source identifier, the critical issue is consumer perception. The Board and its reviewing courts have held that slogans, phrases or terms that consumers perceive as “merely informational in nature . . . are not registrable.” A widely used message will be understood as conveying an ordinary concept or sentiment, rather than serving as a source indicator.

“Where the evidence suggests that the ordinary consumer would take the words at their ordinary meaning rather than read into them some special meaning distinguishing the goods and services from similar goods and services of others, then the words fail to function as a mark.” In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *3 (TTAB 2019) (internal punctuation omitted) ["100% REAL CALLINECTES CRAB FROM NORTH AMERICA & Design"].

The examining attorney relied on an Urban Dictionary definition of 100% That Bitch ("Slang. A woman whom EVERYONE wants to be. Everyone is extremely jealous of her."); lyrics from Lizzo's song, which includes the line "I just took a DNA test, turns out I’m 100% that bitch;" internet articles in which Lizzo admitted that she did not coin the term, but rather adopted it from an internet meme; and screenshots from websites offering various shirts and hats featuring the wording 100% THAT BITCH. Some of the evidence was from applicant's own website, and some evidence made reference to Lizzo's song.

Applicant argued that 100% THAT BITCH "functions precisely the way a trademark is supposed to function, namely, it identifies Lizzo as the source of goods," and that others use the term to trade off of Lizzo’s fame, notoriety, and goodwill in order to sell unauthorized merchandise, often making express reference to Lizzo and her song. 

The Board acknowledged that "[p]rominent ornamental use of a proposed mark, as shown in the examples of record, is probative in determining whether a term or phrase would be perceived in the marketplace as a trademark or as a widely used message.” However, that was not the end of the story.

Significantly, much of this evidence references Lizzo, her music and song lyrics from the single “Truth Hurts.” The remainder of the evidence displays 100% THAT BITCH used in context in internet articles discussing Lizzo, her song “Truth Hurts,” and the origin of the song lyric comprising the mark at issue. This lessens the weight we otherwise may have accorded the ornamental nature of those uses in showing that the phrase fails to function as a trademark.

Applicant and the examining attorney agreed that 100% THAT BITCH conveys a feeling of female strength, empowerment and independence. "But more importantly, considering the entirety of the record, we find that most consumers would perceive 100% THAT BITCH used on the goods in the application as associated with Lizzo rather than as a commonplace expression."

Although Lizzo did not originate the phrase, and in fact gave a writing credit to the person who did create it, "lyrics from songs are more likely to be attributed to the artists who sing, rap or otherwise utter them, rather than the songwriters, who may be different individuals receiving varying degrees of writing credit." The evidence showed use of the phrase beginning in 2017, the year of her song. Thus the USPTO did not establish that the mark was "'widely used, over a long period of time and by a large number of merchandisers' before Lizzo popularized it." See D.C. One Wholesaler, Inc., 120 USPQ2d at 1716.

We acknowledge that to some degree consumers and potential consumers have been exposed to use of the proposed mark 100% THAT BITCH in a non-source-identifying (i.e., ornamental) manner on the same and similar goods to those of Applicant. We find, however, that that circumstance is outweighed by references in most of those uses to Lizzo and/or her music.

And so, the Board reversed the refusal to register.

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TTABlogger comment: Last night, Lizzo won a Grammy for Song of the Year for the song "About Damn Time." Will that phrase be registrable?

Text Copyright John L. Welch 2023.

Precedential No. 6: TTAB Requires Explanation of Cancellation Respondent's Deletion of Goods

After the commencement of this proceeding for cancellation of a registration for the mark DISO for various electronic devices, on the grounds of fraud and abandonment, the registration was subject to a USPTO audit regarding respondent's Section 8 Declaration of Use The audit resulted in deletion of many of the identified goods, leaving only "earphones and headphones; portable media players, namely MP3 players." Observing that a registrant may not, by deleting goods from a registration, moot a proceeding to avoid a judgment as to the deleted goods, the Board allowed respondent twenty days to explain the reason for its deletions. Ruifei (Shenzhen) Smart Technology Co., Ltd. v. Shenzhen Chengyan Science and Technology Co., Ltd., 2023 USPQ2d 59 (TTAB 2023) [precedential].

Trademark Rule 2.134(b) applies when a respondent permits its registration to be cancelled under Section 8 during the pendency of a cancellation proceeding. Under that rule, "an order may be issued allowing respondent a set time ... in which to show cause why such cancellation .... should not result in entry of a judgment against respondent ...." If respondent shows that the cancellation was the result of an inadvertence or a mistake, judgment will not be entered against it. If the reason was abandonment of the mark, and such abandonment was not made for purposes of avoiding the proceeding, judgment will be entered only on the ground of abandonment.

Here, only certain goods were deleted from the registration. In Orange Bang (116 USPQ2d 1102 (TTAB 2015)), the Board found that the deletion of the specific goods that were subject to the cancellation petition was an attempt to moot the proceeding, and so the Board granted the petitions to cancel the involved registrations. 

Respondent's deletion of goods resulted from a post-registration audit, but applied to only some of the goods subject to the cancellation petition.
 

Nonetheless, Petitioner’s claims of abandonment and fraud related to nonuse rely in part on nonuse of the mark on the now-deleted goods, and therefore the same concerns raised in Orange Bang and the policies underlying Trademark Rule 2.134(b) apply. Namely, by deleting certain goods subject to this cancellation, Respondent may not moot this proceeding and avoid judgment as to the deleted goods. As set forth in TBMP § 602.02(b), we require Respondent’s response regarding the deletion of goods as it relates to abandonment.

Therefore, the Board ordered respondent to show cause "why its deletion of certain goods in the subject registration should not be deemed the equivalent of a partial cancellation of the registration by request of Respondent without Petitioner’s consent, and should not therefore result in judgment against Respondent on Petitioner’s abandonment claim as to the deleted goods."

If respondent shows that it allowed partial cancellation of goods because the mark had been abandoned as to those goods, and not to avoid judgment here, judgment will be entered only and specifically on the ground of abandonment as to the deleted goods.

If respondent shows that the deletion was not made to avoid judgment and shows "good and sufficient cause" why judgment should not be entered against it on abandonment, petitioner will be allowed time to choose whether to proceed with its abandonment claim and its fraud claim, including as to the deleted goods, or whether this proceeding as to the deleted goods should be dismissed without prejudice.

Update: Respondent subsequently stated that it “permitted the partial cancellation of those goods under Trademark Act Section 8 because its registered mark had been abandoned as to those goods, and that the abandonment was not made for purposes of avoiding the proceeding." The Board then granted Petitioner’s Amended Petition for Cancellation and entered judgment against Respondent only on the ground of abandonment and only as to the deleted goods. The proceeding continued on the ground of abandonment as to "earphones and headphones; portable media players, namely MP3 players," and on the ground of fraud as to all the goods. Petitioner did not pursue the abandonment claim, but did pursue the fraud claim as to the narrow list of goods.

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TTABlogger comment: Got that? So you can't avoid judgment in a cancellation proceeding by deleting goods from the registration, unless it was an accident, which seems rather unlikely.

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 Garden Artisans LLC, Serial No. 88705122 (January 24, 2023) [not precedential] (Opinion by Christopher Larkin). [Mere descriptiveness refusal of GARDEN ARTISANS for, inter alia, bird baths, metal arbors, ceramic figures, and works of art made of glass. The applicant argued that the mark, considered as a whole, creates a different commercial impression than the words considered on their own, resulting in a suggestive mark: "the GARDEN ARTISANS mark conjures the idea that a person's garden is like a canvas and the person is like an artist painting on that canvas,"and so “consumers of the goods sold under the mark are to purchase Applicant’s goods so that they can create their own canvas (i.e. garden)."]

In re Nicholas Shane Kouns, dba, Advanced Illness Management Services, Serial No. 88390117 (January 30, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman) [Mere descriptiveness refusal of ADVANCED ILLNESS MANAGEMENT SERVICES for "Downloadable computer application software for mobile phones, namely, software for authorising [sic] access to data bases; Downloadable computer software for authorising [sic] access to data bases" [ADVANCED ILLNESS MANAGEMENT disclaimed]. The applicant maintained that the mark is not merely descriptive because applicant’s database access authorization software does not provide medical services such as advanced illness management services.]

In re Rows GmbH, Serial No. 79299493 (January 31, 2023) [not precedential] (Opinion by Judge Christen M. English). [Mere descriptiveness refusal of ROWS for, inter alia, downloadable software for creating and sharing spreadsheets. Applicant argued that ROWS does not describe a function of the software, which is to create and share spreadsheets and that "[r]egistration … would not (1) inhibit competition in the sale of particular goods or services; or (2) deny freedom of the public to use the word ROWS, creating the possibility of harassing infringement suits."]

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

Text Copyright John L. Welch 2022.