Recommended Reading: The Trademark Reporter's Annual Review of European Trademark Law

The Trademark Reporter has issued its Annual Review of European Trademark Law, presented by Tom Scourfield of the UK, with contributions by an impressive roster of authors from across Europe. The volume may be downloaded here. 

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TTABlog comment: Once again, I thank The Trademark Reporter for allowing me to provide this issue to you all. This issue of the TMR is Copyright © 2023, the International Trademark Association, and is made available with the permission of The Trademark Reporter®.

Text Copyright John L. Welch 2023.

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

So far this year, the percentage of Section 2(d) affirmances is lower than the historical average of about 90%. Here are three more refusals on appeal. At least one was reversed. How do you think these three cases came out? [Results in first comment].

In re Valhalla Spirits, LLC, Serial No. 90729792 (April 12, 2023) [not precedential] (Opinion by Judge Robert H. Coggins) [Section 2(d) refusal of VALHALLA VOKDA for “alcoholic beverages, namely, vodka and beverages containing vodkas" [VODKA disclaimed], in view of the registered mark VALHALLA for "alcoholic beverages, namely, wines."]

In re Laxamentum Technologies, LLC, Serial No. 90441532 (April 25, 2023) [not precedential] (Opinion by Judge Christopher Larkin) [Section 2(d) refusal of GAMEGUARDIAN for "Providing website featuring a forum on video game cheats, video game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].

In re Galhuma Trading, Inc., Serial No. 90211174 (April 25, 2023) [not precedential] (Opinion by Judge Angela Lykos) [Section 2(d) refusal of YESMODERN for on-line retail store services featuring furniture, in view of the registered mark YES! YES! MODERNS for retail store and wholesale store services featuring outdoor and external blinds.]

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

Text Copyright John L. Welch 2023.

TTABLOG Test: Is "JIGUANI" Primarily Geographically Deceptively Misdescriptive of Coffee?

The USPTO refused to register the proposed mark JIGUANI for coffee, finding the term to be primarily geographically deceptively misdescriptive under Section 2(e)(3). Do you know where Jiguani is? How do you think this appeal came out? In re Ruta Maya Royalty, Ltd, Serial No. 90453034 (April 14, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington).

Section 2(e)(3) of the Trademark Act prohibits registration of marks that are primarily geographically deceptively misdescriptive of the identified goods or services. A mark is primarily geographically deceptively misdescriptive if all of the following conditions (“elements”) are met: 

• 1. the primary significance of the mark is a generally known geographic location; 
• 2. the goods do not come from the place named in the mark, but the relevant public would be likely to believe that the goods originate there; and 
• 3. the misrepresentation is a material factor in the purchaser’s decision to buy the goods in question.

There was no dispute that Jiguani is a geographic location (a town in Cuba), and the applicant's coffee does not come from that location (it comes from Mexico). Applicant, however, strongly disputed whether Jiguani is a "generally known" location, as required by the first element of the test.

Applicant argues that the “vast majority of Americans have no idea where or what Jiguani is [and c]onsequently, it is almost impossible that purchasers would make a goods/place association.”5 Applicant argues that without a goods/place association, its use of JIGUANI on coffee “could not be ‘a material factor in a significant portion of the relevant consumer’s decision to buy the [coffee].”

In addition to references on applicant's packaging and at its website, the Examining Attorney submitted an excerpt from the THE COLUMBIA GAZETTEER OF THE WORLD, which states that Jiguani has a population of 21,130 and is a dairying center that also produces sugarcane, fruit, coffee, and cacao.

The CAFC in In re Societe Generale des Eaux Minerales de Vittel S.A., held that "it is necessary that the purchasers perceive the mark as a place name and this is where the question of obscurity or remoteness comes to the fore." The question for the Board, then, was "how many coffee consumers in the U.S. know that Jiguani is a town in Cuba?"

the CAFC also has advised, in In re Newbridge Cutlery Co., that "the mere entry in a gazetteer or the fact that a location is described on the internet does not necessarily evidence that a place is known generally to the relevant public."

Although the Examining Attorney submitted materials showing that Cuba has a coffee industry and a particular coffee-growing region, there is no mention of Jiguani in any of these submissions. The fact that Jiguani is located within a coffee-growing region in Cuba does not necessarily translate to the town being generally known to the relevant American public.

The Board concluded that there was no evidentiary basis for a finding that "there has been a significant amount of American coffee consumer exposure to Applicant’s packaging or the website. Thus, without further context or evidence, we cannot determine the extent of such exposure, if any, and whether it has had a measurable effect on consumers’ knowledge and perception of Jiguani. We also cannot assume that Applicant’s website will always have this information."

Upon review of the record, there is "not substantial evidence for the proposition that, to the relevant public, [Jiguani], is generally known." Newbridge, 113 USPQ2d 1451. Rather, Jiguani appears to be only a remote and obscure town in Cuba whose existence is generally unknown to the American consumers of coffee.

And so, the Board reversed the refusal to register.

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TTABlogger comment: Never heard of it. When the packaging and website refers to Cuba, should that be more significant than the Board allows?

Text Copyright John L. Welch 2023.

TTAB Finds "VETEMENTS" Generic for .... Guess What?

The Board affirmed the USPTO's refusals to register VETEMENTS, in standard character and slightly stylized form, for various clothing items, including shirts, skirts, and sweaters, and for related retail store services, finding the proposed marks to be generic and, in the alternative, merely descriptive of the goods and services and lacking in acquired distinctiveness. In re Vetements Group AG, Serial Nos. 88944198 and 88946135 (April 21, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo).

Genericness: There was no dispute that that the identifications in the applications defined the genus of goods and services at issue. The relevant consumers are the general public. In cases involving a foreign language mark, the "ordinary American purchaser includes purchasers knowledgeable in English as well as the pertinent foreign languages." The question, then, was whether VETEMENTS "is understood by the relevant public primarily to refer to" the identified goods and services.

There was no question that VETEMENTS is a French language term that literally and directly translates into English as "clothing." Applicant provided that translation in its applications and did not dispute the meaning. It was also undisputed that consumers, as well as media outlets and commentators in the clothing and fashion industries, recognize that meaning.

Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine, inter alia, genericness. As a general principle, the doctrine is applied in situations in which an American consumer is likely to “stop and translate” foreign words into their English equivalent.

Applicant argued that its proposed marks are not likely to be translated into English but would be would be perceived as trademarks, since the marks are displayed as such on labels and in advertising. However, these "rather speculative assertions" were not persuasive and were "largely" unsupported by evidence. "Nor does Applicant cite to any authority for its position that based on its manner of use and also its trade name use, consumers are more likely to perceive them as trademarks and not a generic term."

Applicant argued that the French language is neither commonly nor widely spoken in the United States, since significantly less that one percent of the population speak French. The Board was unmoved.

[T]he evidence of record indicates approximately 1.3 million such speakers live in the United States. While that may represent a small percentage of US citizens and residents, it nonetheless is a large number of speakers of a modern, living language that is the fifth most commonly spoken non-English language in this country.

The Board found it appropriate to apply the doctrine of foreign equivalents. 

There is no evidence of record suggesting that that the translation in the involved applications is inaccurate, that “vetements” is so obscure that it would not be easily recognized and translated by French speakers in the U.S. marketplace, or that it is an idiom which is not equivalent to its direct English translation. As noted, Applicant is a Paris-based fashion house using the French term for “clothing” to identify itself. And there can be no doubt that French is a common, modern language. Consumers familiar with French are thus likely to “stop and translate” VETEMENTS or when encountering it used in connection with Applicant’s identified clothing and clothing-related retail services.

Concluding that the proposed marks "primarily refer[] to a genus of clothing items and online retail store services featuring clothing items," the Board affirmed the genericness refusal.

Acquired Distinctiveness:Alternatively, the Board found VETEMENTS to be highly descriptive of applicant's goods and services. In determining the merits of applicant's Section 2(f) claim, the Board applied the factors set forth in the CAFC's Converse decision.

There was no direct evidence, such as survey results, that would allow the Board to assess the association of the proposed marks with a particular source by actual purchasers. Applicant's evidence of recognition from fashion magazines was not such direct evidence. Evidence regarding substantially exclusive use since 2014 was not particularly persuasive in view of the high degree of descriptiveness of the proposed marks.

There was no evidence regarding applicant's advertising expenditures or the scope of its promotional efforts. Its sales figures were impressive, but were not placed in marketplace context. There was no evidence of copying, and unsolicited media coverage was not significant.

Consequently, the Board concluded that applicant had failed to carry its heavy burden of proving acquired distinctiveness.

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TTABlogger comment: Seems like survey evidence might have turned the tide here. Maybe we'll see an appeal by way of civil action, where additional evidence can be submitted.

Text Copyright John L. Welch 2023.

Precedential No. 13: TTAB Allows Cancellation Respondent to Correct Registration Ownership

The underlying application for the registered mark FAT BEAR for motor scooters was filed in the name of Fatbear Scooters, LLC on December 19, 2019, but that entity did not exist as of the filing date. Petitioner Phat Scooters moved for partial summary judgment on its claim that the registration is void ab initio because the application was not filed by the rightful owner of the mark. The Board, however, allowed the respondent to correct the misidentification because the error was "inadvertent, made in good faith, and has been formalized through the filing of and issuance of the limited liability certificate." Phat Scooters, Inc. v. Fatbear Scooters, LLC, Isaac Ashkenazie and Isaac D. Ashkenazie d/b/a Fatbear Scooters, 2023 USPQ2d 486 (TTAB 2023) [precedential].

There was no dispute that the corrective action was taken after this proceeding commenced, and the certificate of formation for Fatbear Scooters,LLC was issued one day after the answer was filed. Respondent submitted the affidavit of one of the two co-owners of the entity, Isaac Ashkenazie, stating that the belated incorporation was due to an "oversight," but they intended to create the entity at the same time the application was filed. He further averred that he and his cousin (of the same name) started the business in about November 2019, that it has continued to the present under the same ownership, and that no other entity has owned or used the FAT BEAR mark.

The Board construed the response to the summary judgment as a "cross-motion to amend the registrations due to a correctable owner's mistake." The Board noted that under Rule 2.133, a registration that is the subject of a Board proceeding may be amended upon motion granted by the Board, without the consent of the other party. 

A use-based application filed in the name of an entity that is not the owner of the mark is void. Rule 2.71(d). However, when a use-based application is filed by the owner of the mark, the Trademark Act and Rules allow for correction of certain mistakes in the manner or form in which the owner’s name is set out in the application or resulting registration. Trademark Act § 7(h), 15 U.S.C. § 1057(h); Trademark Rule 2.71(d).

For example, if the named applicant did not exist as of the application filing date, the name may be corrected. See Accu Personnel, Inc. v. Accustaff, Inc., 38 USPQ2d 1443, 1446 (TTAB 1996) (holding application filed in name of non-existent entity not void ab initio so long as application filed by correct person).

Such a correction requires a showing that the applicant be the same, single commercial enterprise that filed and owned the mark at the time of filing the application. Argo & Co. v. Springer, 198 USPQ 626, 635 (TTAB 1978) (holding that application may be amended to name three individuals as joint applicants in place of originally named corporate applicant which was never legally incorporated, because individuals and non-existent corporation were found to be same, single commercial enterprise); U.S. Pioneer Elec. Corp. v. Evans Mktg., Inc., 183 USPQ 613, 614 (Comm’r Pats. 1974) (finding applicant’s name may be corrected where application was mistakenly filed in name of fictitious and non-existent party).

The Board found this case similar to Accu Personnel. In both cases, the entity named as owner of the mark did not exist as of the filing date.

Fatbear Scooters, LLC is “merely a later manifestation of the same, single commercial enterprise which filed the application.” Id. The same single commercial enterprise operated by the Ashkenazie cousins has owned the mark, the application, and the resulting registration the entire time, and the misidentification of the commercial business as a New Jersey limited liability company is a correctable mistake. See id. at 1446. Compare Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, 1244 (TTAB 2007) (application void ab initio where two separate commercial entities were in existence on application filing date and application was filed in name of wrong existing entity).

The Board found that chain of title in the same, single commercial enterprise did exist between the LLC and the Ashkenazie cousins (d/b/a Fatbear Scooters). The evidence was sufficient to allow correction of the misidentification of Respondent, and to demonstrate that "the error was inadvertent, made in good faith, and has been formalized through the filing and issuance of the limited liability certificate." The Board further found the evidence sufficient to allow joinder of Messrs. Ashkenazie d/b/a Fatbear Scooters as party defendants.

And so, the Board denied the petitioner's motion for partial summary judgment.

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TTABlogger comment: Nice to see that substance prevailed over form.

Text Copyright John L. Welch 2023.

TTAB Grants Cancellation for Nonuse: ULTRA SUN Sunscreen Was Offered For Sale But Not Sold or Transported Before Critical Date

The Board granted a petition for cancellation of a registration for the mark ULTRA SUN for "[c]osmetic sunscreen preparations; sunscreen creams; water resistant sunscreen, sunscreen preparations," finding that the mark was not in use as of the deadline for filing Respondent Sun Precautions' statement of use in the underlying application. The parties invoked the Board's Accelerated Case Resolution procedure but, the Board observed, they "wasted the efficiencies of ACR, their own resources, and the Board’s resources" by, inter alia, filing multiple copies of documents and other cumulative evidence, and by litigating irrelevant facts and issues. Ultrasun AG v. Sun Precautions, Inc., Cancellation No. 92072352 (April 18, 2023) [not precedential] (Opinion by Judge Jonathan Hudis).

Respondent filed its statement of use on October 4, 2018, claiming a first use date of October 3, 2018. The deadline date for filing the statement of use was October 6, 2018 (the "Critical Date"). 

The Board observed that Section 45 of the Trademark Act defines "use in commerce" for goods as follows:

the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. … [A] mark shall be deemed to be in use in commerce …on goods when — (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce[.]

Thus, in order to qualify for registration of a mark, "one must sell or transport goods bearing the mark such that the sale or transport would be subject to Congress’s power under the Commerce Clause, which includes its power to regulate interstate commerce.” (Emphasis by the Board).

The Board found nothing in the record demonstrating that, by the critical date, Respondent had sold or transported its goods bearing the ULTRA SUN mark. "[A]ll Respondent had done was to display one tube of ULTRA SUN sunscreen to make the item available for sale on its website, and make that same tube available for sale at its retail store. Neither of these activities constituted a sale or transport of the identified goods bearing the mark in commerce as of the Critical Date. Clorox Co. v. Salazar, 108 USPQ2d at 1086."

Respondent also argued that, because the supplier shipped (from out-of-state) the single tube of sunscreen to Respondent, which Respondent received on October 1, 2018, this constituted Respondent’s use in commerce of the ULTRA SUN mark before the critical date. Not so, said the Board.

“[A] shipment of goods from the manufacturer to the trademark owner … [does] not satisfy the use or transportation in commerce requirement [for the mark to have been used in commerce], as … [this constitutes] a [mere] shipment of the goods in preparation for offering the goods for sale.” Tao Licensing, 125 USPQ2d at 1052 (citing Avakoff v. Southern Pac. Co., 765 F.2d 1097, 226 USPQ 435, 436 (Fed. Cir. 1985)).

Finally, the Board observed that "[t]The parties spent an inordinate and unnecessary amount of discovery, trial and briefing time on events that transpired long after the Critical Date of October 6, 2018. All of this was wasted effort that focused on irrelevant facts and issues. Once it was established that Respondent had not used its ULTRA SUN mark in commerce by the Critical Date, all of its activities directed to the ULTRA SUN mark and product(s) after that date were of no consequence. Clorox Co. v. Salazar, 108 USPQ2d at 1086." 

And so, the Board granted the petition for cancellation on the ground that Respondent did not make use of the ULTRA SUN mark in commerce as of the deadline for filing its Statement of Use pursuant to Trademark Act Section 1(d).

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TTABlogger comment: What if the Respondent had given the single tube of sunscreen to an out-of-state resident?

Text Copyright John L. Welch 2023.

TTABlog Test: Is "FREEDOM X" Confusable With "OXLIFE FREEDOM" For Related Medical Products?

The USPTO refused to register the mark FREEDOM X, in standard character and stylized forms, for "cannulas for oxygen concentrators for medical applications," finding confusion likely with the registered mark OXLIFE FREEDOM for “oxygen concentrators for medical applications." The Board found the goods to be related and complementary, since "cannulas for oxygen concentrators for medical applications are necessarily used with oxygen concentrators for medical applications – at the same time, by the same consumers." But what about the marks? How do you think this came out? In re 3B Medical, Inc., Serial Nos. 88948110 and 88953956 (April 17, 2023) [not precedential] (Opinion by Judge Robert H. Coggins).

The examining attorney maintained that the shared word FREEDOM "stimulates the same mental reaction and creates the same commercial impression in each mark, suggesting 'the condition of being free.'" Applicant argued that the marks sound different and present substantially different connotations and commercial impressions.

Specifically, Applicant contends that the letter X in Registrant’s mark produces a harsh sound, while in Applicant’s mark it is much softer; the word FREEDOM in Registrant’s mark connotes freedom from something, while in Applicant’s mark it means freedom to do something; and, in Applicant’s words, the overall commercial impression of Registrant’s mark "calls to mind the life of oxen (i.e., castrated male cattle) or perhaps life insurance," while Applicant’s marks call to mind "excitement, adventure, and/or cutting edge goods/services . . . ."

The Board found that the word FREEDOM is the dominant element in applicant's marks. In the cited mark, the word FREEDOM is "of slightly more import in Registrant’s mark because . . . FREEDOM is significant in creating the overall commercial impression of this mark."

The Board acknowledged that the additional term OXLIFE in the cited mark lends an overall additional sound and appearance to that mark which is not present in Applicant’s mark. However, the similarity in appearance of the marks as a whole "is enhanced due to the shared word FREEDOM and the appearance of the letter X in each mark – as the second element of Applicant’s marks and as part of the first element of Registrant’s mark."

[T]he additional term OXLIFE in Registrant’s mark does not change the connotation of FREEDOM. Instead, it further enhances the meaning by suggesting the very nature of the goods. As mentioned above, in the context of oxygen concentrators it is likely that the OX portion of OXLIFE will be perceived as “oxygen” instead of, as Applicant contends without evidence, a castrated male bovine animal – an ox. We find that the marks have highly similar commercial impressions due to the shared word FREEDOM.

The Board concluded that confusion is likely, and so it affirmed the refusals to register.

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TTABlogger comment: Do you agree with the Board? In the cited mark, I don't think either word is dominant.

Text Copyright John L. Welch 2023.

TTAB Reverses Two Refusals of BEAUTY POPS for Cosmetic Kits: Likelihood of Confusion and Mere Descriptiveness

In an extremely rare ex parte double reversal, the Board tossed out two refusals to register the mark BEAUTY POPS for a "cosmetic kit for applying superfoods that function as a facial mask for nourishing and revitalizing the skin, the kit comprising face mask powder, tray, spatula and spoon, the foregoing used, when the powder is mixed with water and frozen, to create an applicator that has the appearance of a lollipop." The Board found the mark not likely to cause confusion with the registered mark POPBEAUTY for "cosmetics and non-medicated skin care preparations" under Section 2(d) and not merely descriptive of the goods, under Section 2(e)(1). However, Applicant Lynda Truong was required to disclaim the word BEAUTY. In re Lynda Truong, Serial No. 90612249 (April 13, 2023) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

Likelihood of Confusion: The Board found the involved goods to be legally identical because the broadly worded "cosmetics and non-medicated skin care preparations" of the cited registration encompasses the applicant's cosmetic kits. As a result, the Board must presume that these overlapping goods travel in the same trade channels to the same classes of consumers.

Turning to a comparison of the marks, the Board found "crucial differences" between them. Although the marks look and sound similar, "they are more than simple transpositions of essentially the same terms."

The plural “pops” in Applicant’s mark BEAUTY POPS, and the use of the mark on goods that are identified as having “the appearance of lollipops” when mixed and frozen in the enclosed tray, convey the commercial impression of “lollipops.” Registrant’s mark POPBEAUTY, on the other hand, shares the same grammatical structure as common adjectival phrases such as “pop culture,” “pop music” and “pop art,” and therefore is more akin to those terms.

The Board found that the marks have "very different connotations, which engender very different overall commercial impressions when they are considered in their entireties." Deeming this factor to be dispositive, the Board reversed the Section 2(d) refusal.

Mere Descriptiveness: The examining attorney maintained that BEAUTY POPS is descriptive of the applicant's goods "because it immediately identifies a generic wording, BEAUTY, and a feature, POPS, in that it tells purchasers that the goods are beauty products that feature a lollipop-shaped applicator for applying facial masks or 'lollipop-shaped beauty products.'" She relied on excerpts from three websites referring to lollipops as "pops," applicant's identification of goods, which states that the “applicator … has the appearance of a lollipop,” applicant’s specimens of use, in which the goods resemble a lollipop [see photo above], and applicant's website, where the term "pops" is used at least descriptively.

The examining attorney also relied on two third-party websites, showing that foods, including “superfoods” of the type identified in the application, may be “frozen into ice pops,” as well as on Applicant’s website, which states that the “face mask is made with natural, skin loving superfoods such as papaya, bananas, turmeric and aloe vera."

Website evidence convinced the Board that BEAUTY is descriptive of the applicant's products. However, "the record does not support a finding that the component POPS, or the mark BEAUTY POPS, as a whole, immediately describes a significant feature or characteristic of the identified goods." [Why not? - ed.].

Applicant Troung argued that the mark BEAUTY POPS is unitary, and therefore a disclaimer of BEAUTY should not be required. The Board disagreed. It reversed the mere descriptiveness refusal, but required a disclaimer of the word BEAUTY before the mark will be registered.

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TTABlogger comment: Hat tip to FOB Gene Bolmarcich.

Text Copyright John L. Welch 2023.

CAFC Affirms TTAB: "SPARK LIVING" Confusable With "SPARK" for Related Real Estate Services

In a straightforward, but nonetheless precedential, ruling the CAFC upheld the Board's decision affirming a refusal to register the mark SPARK LIVING for "leasing of residential real estate; residential real estate listing; residential real estate service, namely, residential rental property management; specifically excludes commercial property and office space" (LIVING disclaimed). The Board found a likelihood of confusion with the registered mark SPARK for brokerage, leasing, and management of commercial property, offices, and office space. Appellant Charger challenged the Board's factual findings on five Du Pont factors, but the CAFC ruled that the Board's decision was supported by substantial evidence. In re Charger Ventures LLC, In re Charger Ventures LLC, 2023 U.S.P.Q.2d 451 (Fed. Cir. 2023). [precedential].

The Board found that, despite some commercial weakness in the cited mark and despite the sophistication of relevant consumers, the was "insufficient evidence in the record" to overcome the "close similarity" of the marks and the relatedness of the services.

Charger argued that the Board improperly dissected its mark and gave improper weight to the word SPARK in light of third-party uses of the term. The CAFC pointed out, however, that the Board compared the marks "in their entireties" and based its findings on the "overall commercial impression of the marks as a whole." The court found no error in the Board's focusing on the dominant portion of Charger's mark.

Charger claimed that the involved services are different in nature and are offered in different trade channels. The USPTO, in response, pointed to "dozens of registrations" in the record, covering both residential and commercial real estate services, and noted that the involved application and registration are not limited as to trade channels. The CAFC concluded that substantial evidence supported the Board's findings on these factors.

Charger next contended that the consumers for its services are substantially different from those of the registrant's services. The USPTO argued that the record lacked evidence to support that argument, and further that "people who seek commercial real estate services live somewhere.” The CAFC concluded that the "potential overlap of consumers," coupled with the axiom that even careful or sophisticated customers are not immune from source confusion, constituted substantial evidence supporting the Board’s determination on this factor.

The CAFC agreed with the Board that the evidence of third-party use of the term SPARK, although demonstrating "some" degree of weakness, "was not enough to render it unprotectable." The Board properly considered that the cited mark enjoyed a presumption of validity under Section 7(b) of the Trademark Act.

Finally, Charger charged the Board with failing to indicate the weight that it assigned to each DuPont factor and therefore that its analysis lacked substantial evidence. The CAFC agreed that, for purposes of appellate review, the Board "must provide a reasonable explanation for its findings, explaining the weight it assigned to the relevant factors." However, an appellate court will "uphold a decision of less than ideal clarity if the agency's path may reasonably be discerned." Motor Vehicle Mfrs. Ass’n of U.S., Inc. v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983).

Here, the agency’s path may be reasonably discerned. Based on the record as a whole, there is sufficient evidence from its assessment of the relevant DuPont factors to support the Board’s finding of a likelihood of confusion of Charger’s mark SPARK LIVING.

And so, the CAFC affirmed the Board's decision.

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TTABlogger comment: The CAFC last overturned a TTAB decision in an ex parte Section 2(d) case was In re Gould Mortg. Co., 912 F.3d 1376, 129 U.S.P.Q.2d 1160 (Fed. Cir. 2019). The appellate court concluded that the Board had failed to consider pertinent evidence and arguments under the eighth Du Pont factor (lack of actual confusion), and so it remanded the case for reconsideration in light of all the evidence.

Text Copyright John L. Welch 2023.

Precedential No. 12: TTAB Hands Win to MLBPA and Aaron Judge In Opposition to Judicial-Themed Trademarks for Clothing

Michael P. Chizena went down swinging in this consolidated opposition to his applications to register the word marks ALL RISE and HERE COMES THE JUDGE and the design mark shown below, for "clothing, namely, t-shirts, shirts, shorts, pants, sweatshirts, sweatpants, jackets, jerseys, athletic uniforms, and caps." The Board found his proposed marks to be confusingly similar to the opposers' previously used marks for overlapping goods, and so it sustained the opposition on the Section 2(d) ground, declining to reach the opposers' Section 2(a) false connection and Section 43(c) dilution claims. Major League Baseball Players Association and Aaron Judge v. Michael P. Chisena, 2023 U.S.P.Q.2d 444 (T.T.A.B. 2023) [precedential] (Opinion by Judge David K. Heasley).

Applicant Chisena, a Long Island resident purportedly oblivious to the meteoric ascent of Aaron Judge in the baseball world, filed his intent-to-use applications for the word marks on July 14, 2017, and for the design mark on October 12, 2017. By that time, Aaron Judge had established himself as a star outfielder for the New York Yankees. He was named American League Rookie of the month in April, May, and June 2017, and also American League Player of the month in June 2017. On July 10, 2017, he won the Home Run Derby at the All-Star Game. By that time, sports media, the Yankees, and Yankee fans had already adopted a "judicial theme" in promotional material, stadium signage, and various souvenir items referring to him, displaying the phrases ALL RISE and HERE COMES THE JUDGE and depictions of "judicial indicia, such as a gavel, courthouse image, or the scales of justice, accompanied by his name or likeness.

"Standing": Chisena contended that the opposers lacked "standing" to bring their claims, but the Board would not stand for it. Judge authorized his union, Opposer MBPLA, to license rights to use his name and likeness, as well as other words and designs referring to him, on apparel and other goods. (Use of his claimed marks inured to his benefit. Moreno v. Pro Boxing Supplies, Inc., 124 USPQ2d 1028, 1035 (TTAB 2017); see also Monster Energy Co. v. Lo, 2023 USPQ2d 87, at *12 (TTAB 2023)). Moreover, Mr. Judge retained the right to enter into endorsement contracts with other entities, such as adidas, Under Armour, and Rawlings, the value of which could be undermined by unauthorized use and registration of confusingly similar marks on athletic wear. Thus, Judge had a real interest in protecting against unauthorized use of confusingly similar marks on apparel.

MLBPA had a real interest based on Judge’s rights because he joined the union as a member, and authorized it to act as his licensing agent and to enforce his rights. See Mystery Ranch, Ltd. v. Terminal Moraine Inc., 2022 USPQ2d 1151, at *14, *17 (TTAB 2022) (“We also have held that corporate or institutional plaintiffs may assert a real interest even where such interest in the outcome of a proceeding is based on the asserted rights of its members.”)

Priority: Applicant Chisena relied on his filing dates as his first dates. Opposers' evidence established that as of July 2017 licensees of MLBPA were selling shirts bearing the marks ALL RISE and HERE COMES THE JUDGE, some with depictions of gavels and of Aaron Judge himself, some with the words THE JUDGE and JUDGE'S CHAMBERS, and some with depictions of a baseball diamond or the scales of justice. The Board particularly noted the licensees' testimony that Aaron Judge "is the only athlete they know of who has been marketed in connection with judicial phrases and symbols, as a play on his surname." [What about Johnny Bench? David Justice? - ed.].

Chisena argued that the opposers failed to prove that their alleged common law marks serve as source indicators, but the Board found that "fans perceive these judicially-themed slogans as a direct and unmistakable reference to Opposer Aaron Judge, as a play on his judicial-sounding surname." For example, in May 2017, a fan group chose ALL RISE for their theme, and a section called "The Judge's Chambers" was opened in the right-field stands. MBPLA licensees followed suit.

These are the hallmarks of trademark use. * * * The evidence of record supports a finding that the consumers who encounter these signature slogans and symbols on t-shirts and other athletic apparel would recognize, associate, and perceive them as pointing to a single source: Aaron Judge, the one sponsoring or authorizing the merchandise. The subject slogans and symbols, as used by Opposers and their authorized licensees in the context of athletic apparel, perform that classic trademark function.

For the same reasons, the Board rejected Chisena's claim that the mark are merely ornamental or informational, and therefore to function as trademarks. "[H]ere, the record shows that the consuming public recognizes the subject slogans and symbols carrying judicial connotations as pointing to only one baseball player on one major league team, similar to the record in In re Lizzo LLC, 2023 USPQ2d 139, at *34-39 (TTAB 2023)."

Considering the applicable evidence as a whole, as if each piece were part of a puzzle, W. Fla. Seafood, 31 USPQ2d at 1663, we find by a preponderance of the evidence that Opposers have established priority of use of ALL RISE and HERE COMES THE JUDGE, as well as judicial designs such as a gavel, courthouse image, or the scales of justice, as trademarks on t-shirts, baseball caps, and other athletic apparel.

Likelihood of Confusion: The Board found that Chisena's word marks ALL RISE and HERE COMES THE JUDGE, "capture the key judicial phrasing used so frequently as a play on Aaron Judge’s name." As to his design mark:

[It] confirms the reference to baseball, framing the key judicial images against a baseball diamond background. Superimposed over the baseball field are the scales of justice, tilting toward right field, Aaron Judge’s frequent defensive position. Suspended in the scales of justice are baseballs. Striking the baseball in right field is a judicial gavel—an image frequently used to replace a baseball bat in the hands of Mr. Judge.

Moreover, Chisena's marks could be displayed in navy blue and white, the Yankees' colors, and his goods could be sold "in or near stadiums or in sports apparel stores, and where the consuming public is sports fans, particularly baseball fans, the commercial impression is unmistakable: it refers to Aaron Judge."

And so, the Board found that the marks are so similar in commercial impression that "persons who encounter the marks would be likely to assume a connection between the parties,” Cai v. Diamond Hong, 127 USPQ2d at 1801, and it sustained the opposition on the Section 2(d) ground.

Read comments and post your comment here.

TTABlogger comment: As to Chisena's design mark, the Board conclusion seems a bit off base. To what mark of opposers was it confusingly similar? Perhaps the Section 2(a) claim would have been more appropriate for that one.

Text Copyright John L. Welch 2023.

TTAB Renders Split Decision in "ELECTRIC LAST MILE SOLUTIONS" Section 2(d) Appeal

The Board affirmed-in-part and reversed-in-part a Section 2(d refusal to register the mark ELECTRIC LAST MILE SOLUTIONS in five classes: batteries and chargers (class 9), vehicles and electric vehicle (12), floor mats (27), electric vehicle retail services (35) and repair of electric vehicles (37). The Board found confusion likely with the registered mark LAST MILE for electric vehicles as to applicant's class 12, 35, and 37 goods and services, but not likely as to the class 9 and 27 goods and services. In re Mullen Automotive Inc., Application Serial No. 90366095 (April 11, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman).

The cited mark, registered on the Principal Register without a claim under Section 2(f), is presumed to be inherently distinctive. The Board noted that "Last Mile," when used in connection with Registrant’s  land vehicles, "suggests that Registrant’s vehicles will get the driver the last mile or the last mile on an electric charge. That thought process is too complicated to detract from the inherent or conceptual strength of the mark."

Applicant submitted copies of 16 third-party registrations incorporating the words “Last” and “Mile” for goods and services in the five relevant classes, arguing that LAST MILE exists in a "crowded field" and therefore is weak and deserving of limited protection. The Board, however, deemed these registrations of limited probative value because they do not cover the goods in the cited registration, namely, vehicles. In sum, "[t]he third-party registrations do not detract from the inherent or conceptual strength of Registrant’s mark LAST MILE."

Turing to a comparison of the marks, the Board found the term "Last Mile" to be the dominant part of applicant's mark "in part because Applicant has disclaimed the exclusive right to use the descriptive terms 'Electric' and 'Solutions.'"

In addition, the structure of Applicant’s mark reinforces the term “Last Mile” as the dominant part of the mark ELECTRIC LAST MILE SOLUTIONS because “Electric” and “Solution” modify and describe “Last Mile.” That is, the meaning and commercial impression engendered by the mark is an electricity-based LAST MILE method or process.

Considering the marks in their entireties, the Board found them to be "similar in appearance, sound, connotation, and commercial impression because they share the term 'Last Mile.'"

Turning to the applicant's goods and services, the Office did not submit any evidence to prove the relatedness of the class 9 goods (batteries and chargers) or the class 27 goods (floormats) to registrant's vehicles, nor evidence that they travel in the same trade channels.

As to the applicant's remaining goods, however, its class 12 vehicles overlapped in part with the goods in the cited registration. Applicant's class 35 retail services for electric vehicles are offered through the same trade channels to the same customers as registrant's vehicles, and are inherently related thereto. Likewise, the class 37 repair services are offered through the same channels to the same customers as, and are clearly related to, vehicles.

Finally, applicant argued that because vehicles are expensive, purchasers will proceed with care. However, applicant did not submit any evidence to support its attorney's argument, and it failed to consider the other, less expensive products, or the services, at issue.

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TTABlogger comment: Seems like suggesting that "LAST MILE" is suggestive of electric vehicles is a bit of a stretch. BTW: do you think you could show that batteries and floor mats are related to vehicles?

Text Copyright John L. Welch 2023.

Finding Third-Party Registration Evidence Insufficient to Weaken Cited Mark, TTAB Affirms Section 2(d) Refusal of IMAGINE for Early Childhood instruction

The Board upheld a refusal to register the mark IMAGINE for educational services in the nature of early childhood instruction, finding confusion likely with the registered mark IMAGINE SCHOOLS for educational services at the K-12 grade levels. (SCHOOLS disclaimed). In an effort to weaken the cited mark, applicant submitted 13 third-party registrations for marks containing the word IMAGINE (or at least IMAGIN) for educational services, but the Board pooh-poohed them. In re Pa+hfinder, LLC, Application Serial No. 90338230 (April 11, 2023) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

The Board began by setting aside six of the DuPont factors: "Where, as here, there is no evidence of actual confusion, use by Registrant on a variety of goods, Registrant’s right to exclude other users, or any market interface between Applicant and Registrant, we find DuPont factors seven, eight, nine, ten, eleven, and thirteen to be neutral." It then turned to the issue of the strength of the cited mark.

The mark IMAGINE SCHOOLS is registered on the Principal Register and is therefore presumed to be distinctive. However, the term IMAGINE "suggests a quality of the educational services, and so we find the mark IMAGINE SCHOOLS to be suggestive overall." Suggestive marks are inherently distinctive, and so IMAGINE SCHOOLS "must be accorded at least the normal scope of protection to which all inherently distinctive marks are entitled."

The scope of protection may be narrowed by proof of third-party uses in the relevant field, demonstrating that a term "has a normally understood and well recognized descriptive or suggestive meaning." Applicant relied on 13 third-party, use-based registrations: ten standard character marks IMAGINOOK, IMAGINGO, IMAGINE U, IMAGINE THAT!!!, IMAGINE A PLACE, IMAGINENATIONS, IMAGINE IT! THE CHILDREN'S MUSEUM OF ATLANTA, PROJECT IMAGINE! KINDERMUSIK IMAGINE THAT!, and three composite marks [IMAGINE ME ACADEMY & DESIGN, re:imagine/ATL & Design, and an illegible word-and-design mark], all for educational services for K-12, or educational services at an unspecified academic level, which are presumed to include K-12. The Board was not impressed.

Most of the third-party marks had additional elements that evoke commercial impressions different from the word IMAGINE. The remaining marks IMAGINE U and PROJECT IMAGINE "are too few in number to demonstrate a well recognized suggestive meaning in the education field." The Board concluded that "the record does not support restricting the normal scope of protection accorded the inherently distinctive registered mark IMAGINE SCHOOLS."

Turning to a comparison of the marks, the Board unsurprisingly found IMAGINE to be the dominant portion of the cited mark, leading to its conclusion that the involved marks "are similar in sound, appearance, meaning, and create the same commercial impression when applied to educational and daycare services."

As to the services, the Board found them to be closely related: "The parents and guardians who first use preschool and infant daycare services for their children may next need kindergarten and early elementary educational services for those same children." In fact, applicant itself offers both services, as do seven other third-party entities. Six third-party registrations bolstered this finding.

Applicant argued that because it operates in a different geographical area, there is no probability of confusion, but of course that geographical separation is irrelevant, since applicant is seeking a nationwide registration and the cited mark is entitled to a presumption of nationwide exclusivity.

Conclusion: "While we recognize the nature of the services may cause some of those consumers to exercise more than the usual care in choosing the services, this does not outweigh the almost identical marks and closely related services."

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TTABlogger comment: I can Imagine a future Dawn Donut situation.

Text Copyright John L. Welch 2023.

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

By my count, the TTAB has affirmed 18 of the 19 appeals from Section 2(e)(1) mere descriptiveness (or disclaimer) refusals. How do you think these latest three appeals came out? Results will be found in the first comment.

In re Mingis Capital Partners, LLC, Serial No. 88700244 (March 31, 2023) [not precedential] (Opinion by Elizabeth A. Dunn). [Mere descriptiveness refusal of CRM PROS (Stylized) for "Business management consulting in the field of managing business processes." Applicant argued that the relevant consumers will not perceive CRM as the acronym for “"customer relationship management" because the term has not been recognized by the Oxford English Dictionary, and because CRM has alternate meanings as the acronym for “cardiac rhythm management,” “certified reference material,” and “certified records manager.”]

In re Theragnostics Limited, Serial No. 88796139 (March 31, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington) [Mere descriptiveness refusal of NEPHROSCAN for "radiopharmaceuticals, namely, kidney imaging agents for medical diagnosis, monitoring and assessment." The Board found that "nephro" is a recognized prefix meaning “having to do with the kidney.” Applicant acknowledged that its goods are "ultimately injected into the body of a patient … to enhance the ability to image the renal cortices of the kidney of the patient using gamma scintigraphy or single photon emission computed tomography," but "the ultimate purpose of that procedure is to take or otherwise produce a scan of the kidneys is so attenuated or otherwise removed from the imaging agent that the use of the ‘purpose’ standard is inappropriate in determining whether or not Applicant’s Mark is descriptive."]

In re Agadia Systems Inc., Serial No. 88943465 (April 6, 2023) [not precedential] (Opinion by Judge Karen Kuhlke). [Mere descriptiveness refusal of FORMULARYHUB for the services of "customizing computer hardware." The Examining Attorney submitted dictionary definitions of "formulary," including "a collection of formulas for the compounding of medicinal preparations…” Applicant contended that in the context of computers "[a] hub is the least intelligent of the tree hardware devices. It serves as a connection point for the computers (and other divides such as printers) in a network … They are passive devices, they don’t have any software associated with it" Applicant maintained that FORMULARYHUB "means a physical piece of computer hardware (a connection point) named drug list."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2023.

TTABlog Test: Is Puma's "PROCAT" Confusable with Caterpiller's "CAT" for Footwear?

"This case is a cat fight. In one corner is Puma SE, which claims that it 'has been a cat since birth' ... and which owns Registration No. 4220096 for the stylized mark shown below. *** In the other corner is Caterpillar, Inc., which calls the CAT mark the 'cornerstone of the company’s brand portfolio.' *** The parties have swatted at one another for about five years, but neither has been able to land a knockout blow, and their bout has gone the distance." The involved products are identical: footwear. How do you think this came out? Caterpillar Inc. v. Puma SE, Cancellation No. 92067079 (April 6, 2023) [not precedential] (Opinion by Judge Christopher Larkin).

The record included some 15,000 pages of testimony and evidence, required 247 TTABVUE entries, and resulted in an 88-page opinion. This blog post will summarize the highlights.

The Board found that Puma's third-party registration evidence failed to show any conceptual weakness in the inherently distinctive standard-character CAT word mark. Sales and advertising figure established that the CAT word mark for footwear falls “on the much higher end of the commercial strength spectrum ‘from very strong to very weak.’”

The quality and quantity of probative third-party CAT-formative marks for footwear are wanting. As in Sabhnani, “one third-party use” and, at most, nine “third-party registrations of ‘varying probative value’,” are “‘a far cry from the large quantum of evidence of third-party use and third-party registrations that was held to be significant in both’ Jack Wolfskin and Juice Generation.”

As to the marks, because the CAT mark is registered in standard character form, it may be presented in any font style and size, including the same font style and size as the literal portions of Puma's mark.

Puma disagreed that its PROCAT mark would be perceived as a compound mark presenting distinct words (PRO and CAT), or that CAT could be given greater weight. Instead, it asserted that PROCAT is a “unitary” mark. The Board, however, concluded that relatively less weight should be given to the adjective [PRO] than to the noun [CAT] in determining the connotation and commercial impression of Puma's mark.

The Board found that the first DuPont weighed in favor of Caterpillar.

[T]he PROCAT mark “looks, sounds, and conveys the impression of being a line extension of” Petitioner’s mark CAT when the marks are both used for footwear. Double Coin Holdings, 2019 USPQ2d 377409, at *7. There are some differences between CAT and PROCAT in appearance, sound, and commercial impression, “but they are outweighed by the marks’ similarities, particularly taking into account that the identity of the goods with which the marks are used ‘reduces the degree of similarity between the marks necessary to find a likelihood of confusion.’”

Puma pointed to the lack of evidence of actual confusion, but the Board found that “[t]here has been no meaningful opportunity for confusion to occur.” Double Coin Holdings, 2019 USPQ2d 377409, at *9. The Board also found that the broadly worded "footwear" in Caterpillar's registration encompasses inexpensive footwear that can be purchased "online directly from the vendor without the involvement of a salesperson." Embiid, 2021 USPQ2d 577, at *32 n.47. The Board deemed the purchaser care factor to be neutral.

The involved goods, channels of trade, and classes of consumers are identical, the CAT and PROCAT marks are similar, and Petitioner’s CAT mark for footwear has conceptual strength, and significant commercial strength for footwear on the spectrum from very strong to very weak. The absence of evidence of actual confusion is not significant under the relevant marketplace conditions

Balancing the relevant DuPont factors, the Board found confusion likely and so it granted the petition for cancellation.

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TTABlogger comment: This seems like one of those Section 2(d) cases where one can predict the outcome based just on the marks and the goods. Am I right?

Text Copyright John L. Welch 2023.

TTABlog Test: Is "K2 MOTORCARS & Design" Confusable With "K2 MOTOR & Design" For Automobile-Related Services?

By my count, we've now had 48 Section 2(d) decisions this year, 4 of which resulted in reversals. Here's the latest one. How do you think it came out? In re K2 Motorcars LLC, Serial No. 90130036 (April 7, 2023) [not precedential] (Opinion by Judge Angela Lykos).

Applicant sought to register its mark (first above) for "online dealership services featuring automobiles," but the Board found confusion likely with the registered mark shown second above, for retail and wholesale services (including online) for auto parts and accessories. Third-party website evidence convinced the Board that the services are related and offered in the same trade channels to the same classes of consumers.

As to the strength of the cited mark, there was no evidence of third-party uses that would weaken the mark. Since it is registered on the Principal Register without a Section 2(f) claim, the mark is considered inherently distinctive. And so the Board accorded the mark "the normal scope of protection to which inherently distinctive marks are entitled."

Turning to a comparison of the marks, the Board noted that, although marks must be considered in their entireties, the literal portion of a word-and-design mark is often considered the dominant part. That principle applies, however, when the literal portion can be clearly discerned by the consumer. Here, the font of "K-2" in the cited mark "is not in easy-to-read lettering."

Looking at the marks overall, the number “2” in the cited mark is so highly stylized that consumers are less likely to recognize it as such. Rather, it is more likely to be perceived as a distinctive design element. Because of this ambiguity, consumers encountering the cited mark are more likely to remember the design comprised of the orange and red griffon shield instead of the stylized letters K2. For these reasons, we find that the design in the cited registration is the dominant element.

The Board concluded that the marks are different in appearance, sound, connotation, and commercial impression.

The Board also observed that the automobiles and auto parts are not typically purchased on impulse. That factor also weighed against a finding of likely confusion.

Balancing the relevant DuPont factors, the Board found confusion unlikely and it reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: The cited mark looks like V-2 MOTOR to me.

Text Copyright John L. Welch 2023.

CAFC Reverses TTAB's APPLE JAZZ Dismissal Due to Error in Awarding Priority to Apple Inc.

The CAFC overturned the TTAB's decision [TTABlogged here] dismissing Charles Bertini's Section 2(d) opposition to registration of APPLE MUSIC for a host of services, including the production and distribution of sound recordings and presentation of live music performances. The court ruled that the Board had erred in awarding priority to Apple (via tacking) over Bertini's use of the common law mark APPLE JAZZ for live musical performances. On a question of first impression, it held that a trademark applicant cannot establish priority for every good or service in its application merely because it has priority through tacking in a single good or service listed in its application . Charles Bertini v. Apple Inc., Charles Bertini v. Apple Inc., 2023 U.S.P.Q.2d 407 (Fed. Cir. 2023). (Fed. Cir. April 4, 2023) [precedential].

Opposer Bertini's earliest date of use was in 1985, while Apple, Inc. has used the mark APPLE MUSIC since 2015, when it launched the APPLE MUSIC streaming service. Apple asserted that it acquired trademark rights in the mark APPLE from Apple Corps. in connection with sound recordings and films, with an August 1968 date of use, for gramophone records and audio compact discs featuring music, and that it therefore has priority for the services recited in its application "that are closely related to the production and distribution of sound recordings." The Board agreed.

The CAFC observed that "[t]he standard for a trademark owner to invoke tacking is strict." The party seeking to tack must show that the old mark and the new mark "create the same, continuing commercial impression, so that consumers 'consider both as the same mark.'" Hana, 574 U.S. at 422.  In other words the marks must be "legal equivalents." Id. 

Apple claimed priority for all 15 categories of services in its application by tacking on Apple Corps' 1968 use of APPLE for gramophone records. According to the Board, that was permissible, but the CAFC declared that to be legal error.

Tacking a mark for one good or service does not grant priority for every other good or service in the trademark application. Cf. Van Dyne-Crotty, 926 F.2d at 1160 (“[I]t would be clearly contrary to well-established principles of trademark law to sanction the tacking of a mark with a narrow commercial impression onto one with a broader commercial impression.”). A trademark owner must show tacking is available for each good or service for which it claims priority on that ground.

The court found that the Board had conflated the tacking standard with the standard for Section 2(d) oppositions, where [a]n opposer can block a trademark application in full by proving priority and likelihood of confusion for any of the services listed in the trademark application. Tuxedo Monopoly. Thus, Bertini only needed to show that he has priority of use of APPLE JAZZ for any service listed in Apple’s application. "The reverse is not true."

Bertini had priority as to two of the services in Apple's application: production and distribution of sound recordings; and arranging, organizing, conducting, and presenting live musical performances. Even if Apple could tack its use of APPLE MUSIC for sound recordings onto Apple Corps' 1968 use of APPLE for gramophone records, "this does not give Apple priority for live musical performances," nor for the "laundry list" of other services in its application.

The CAFC then addressed the "scope of the tacking inquiry." Prior cases dealt with the standard for tacking two different marks used for the same goods or services. The appropriate standard for tacking uses different goods or services has not been addressed.

The Board has held that tacking requires that the new and old goods or services be "substantially identical." The court observed that this requires that "the new goods or services are within the normal evolution of the previous line of goods or services," and partly depends on "whether consumers would generally expect the new goods or services to emanate from the same source as the previous goods or services."

Thus, to establish tacking, Apple had to show that live performances are substantially identical to gramophone records. Although tacking is a question of fact, the CAFC saw no need to remand to the Board for finding on the issue of tacking."

No reasonable person could conclude, based on the evidence of record, that gramophone records and live performances are substantially identical. Nothing in the record supports a finding that consumers would think Apple’s live musical performances are within the normal product evolution of Apple Corps’ gramophone records.

And so, the court reversed the Board's dismissal of Bertini's opposition.

Read comments and post your comment here.

TTABlogger comment: Seemingly makes tacking even stricter, but if you can get to a jury, anything can happen: witness the jury finding that HANA BANK could be tacked onto HANA OVERSEAS KOREAN CLUB for financial services.

Text Copyright John L. Welch 2023.

TTABlog Test: Which of These Three USPTO Refusals Was/Were Reversed?

Here are three recent Board decisions in three disparate case. At least one of the refusals was reversed. How do you think these three cases came out? [Results in first comment].

In re The PSYCH Group, LLC, Serial No. 88017204 (March 29, 2023) [not precedential] (Opinion by Judge Robert H. Coggins) [Refusal to register THE PSYCH GROUP for psychological services, on the ground of genericness.]

In re Cameron Sexton for State Representative, Serial No. 90211624 (March 31, 2023) [not precedential] (Opinion by Cindy B. Greenbaum). [Refusal to register PEOPLE BEFORE POLITICS for poster, t-shirts, political information services, political fundraising services, and on-line journals featuring politics, on the ground that the proposed mark fails to function as a trademark.]

In re Fredericia Furniture A/S, Serial Nos. 79310559 and 79318824 (April 3, 2023) [not precedential] (Opinion by Judge Melanye K. Johnson) [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.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2023.

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

The Board has affirmed 41 of the first 44 Section 2(d) refusals that it reviewed this year. That's an affirmance rate of 93%. Here are three more decision. At least one was a reversal. How do you think these three cases came out? [Results in first comment].

In re Bulletproof Property Management, LLC, Serial No. 90625153 (March 31, 2023) [not precedential] (Opinion by Judge Jyll Taylor) [Section 2(d) refusal of VECTOR for "Firearms; Component parts for guns" in view of the identical mark registered for "knives; knives, namely, pocket knives, sport knives, utility knives, tactical knives, and survival knives."]

In re Bulletproof Property Management, LLC, Serial No. 90545574 (March 31, 2023) [not precedential] (Opinion by Jyll Taylor). [Section 2(d) refusal of SERGEANT for "Ammunition; Firearms; Holsters; Component parts for guns," in view of the identical mark registered for "All purpose sporting bags, backpacks [and] duffel bags, all for use in the fields of hunting, fishing, camping and outdoor gear."]

In re Disciplina Excellentiae, LLC, Serial Nos. 90426395 and 90426435 (March 31, 2023) [not precedential] (Opinion by Judge Cheryl S. Goodman) [Section 2(d) refusals of the marks HIPE FITE and HIPE FITNESS for health club services and physical fitness training [FIT and FITNESS disclaimed] in view of the registered marks HIP in standard character form for "Arranging and conducting youth sports programs in the field of football; Educational services, namely, providing classes, seminars, and workshops in the fields of sports; Entertainment in the nature of football games," and HIP (stylized) for "Education services, namely, training high school students to provide health education and health information resources to their peers, and providing curricula and course materials in connection therewith."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2023.

Precedential No. 11: TTAB Reverses Six "Goods In Trade" Refusals for NY Times Non-Syndicated Column Titles

In six consolidated appeals, the Board reversed refusals to register the marks THE NEW OLD AGE, GOOD APPETITE, HUNGRY CITY, WORK FRIEND, LIKE A BOSS, and OFF THE SHELF for "columns" on the subjects of business, office, money, careers, and worklife balance, rejecting the USPTO's position that each mark identifies only "individual portions of [A]pplicant's publications" and does not identify "separate goods in trade." The Board concluded that, in light of changes in the marketplace for the delivery of news, a new test is required for the registrability of non-syndicated columns or sections in printed publications or recorded media, and under that new test the columns qualified as good in trade. In re The New York Times Company, In re The New York Times Company, 2023 U.S.P.Q.2d 392 (T.T.A.B. 2023). [precedential] (Opinion by Judge Angela Lykos).

The Board observed that a "goods in trade" refusal is founded on Section 1, 2, and 45 of the Trademark Act. See, e.g., In re S’holders Data Corp., 495 F.2d 1360, 181 USPQ 722, 723 (CCPA 1974) ("Although the Act does not define 'goods,' the definition of a 'trademark' in section 45 declares that it is used 'to identify goods' and section 2 refers to 'goods in commerce.'").

Proposed marks that are not used for "goods in trade" cannot be registered on the Principal or the Supplemental Register. TMEP Sec. 1202.06. Incidental items such as invoices, reports, packaging, and business forms used in conducting a business - as opposed to items that are sold or transported in commerce - are not goods in trade

According to TMEP Sec. 1202.07, non-syndicated columns are not considered goods in trade, but "[t]he USPTO has carved out an exception" making them eligible for registration either on the Principal Register with a showing of acquired distinctiveness under Section 2(f), or on the Supplemental Register. "The USPTO's practice of refusing marks identifying non-syndicated columns in print format is based on decisions issued at a time when new or opinion columns were only available to consumers as part of the overall purchase of a particular newspaper, magazine, or other type of publication in print format."

The NY Times did not dispute that its columns are not syndicated. Nor did invoke the exception by claiming acquired distinctiveness or seeking registration on the Supplemental Register. It did, however, challenge the contention that its columns are not "goods in trade." The question for the Board, then, was whether the NY Times columns "are independent 'goods in trade'—that is, items sold or transported in commerce for use by others—or merely ancillary or incidental to its goods or services."

After reviewing the state of the law, the Board decided that changes in the marketplace for the delivery of news "have impacted consumer perceptions of what titles of non-syndicated columns represent," and so "the correct legal standard for determining whether a non-syndicated column is a good in trade should no longer depend on the format in which it is offered."

Whether a non-syndicated column that is, for example, “printed, downloadable, or recorded on electronic media,” TMEP Section 1202.07(a), is a good in trade should be analyzed using the same standard we use to assess goods in trade issues in other contexts.

The Board therefore adopted a new test, based on Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 103 USPQ2d 1672, 1676 (Fed. Cir. 2012), for non-syndicated columns that considers the following factors in determining whether an applicant's goods are "goods in trade":

• (1) whether the goods are simply the conduit or necessary tool useful only in connection with the applicant’s primary goods or services?;
• (2) whether they are so inextricably tied to and associated with the primary goods or services as to have no viable existence apart from them; and
• (3) whether they are neither sold separately nor of any independent value apart from the primary goods or services.

The Board found that the NY Times columns are not merely a "conduit or necessary tool" to obtain its primary goods, nor is each individual print column so inextricably tied to or associated with The New York Times print edition as to have no viable existence apart from the print edition as a whole.

Finally, the Board found that the columns possess independent value separate and apart from the newspaper as a whole, noting that consumers may look for and search for the name of the column and then separately read that column.

Prior to the widespread availability of the Internet to consumers, the only way a printed newspaper column could reach a wide geographic area was through syndication. The search engine results show the “independent value” of the print columns to consumers insofar as readers recognize the columns as separate goods to such a degree that they may be searchable by name and retrieve multiple results. This has a similar impact on the consumer’s experience as traditional syndication.

The Board concluded that the proposed marks identify individual columns of the newspaper, "distinguishing them from columns of other publishers' newspapers and may be perceived as such by the public."

Read comments and post your comment here.

TTABlogger comment: Note that the applications were not rejected as to the NY Times on-line columns (Class 41) but only as to its Class 9 goods. The bottom line is that, in light of the arrival of the Internet, column titles in newspapers and magazines may now be considered goods in trade (under the right circumstances). Big deal?

Text Copyright John L. Welch 2023.