TTAB Posts June 2023 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled nine (9) oral hearings for the month of June 2023. All of the hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

June 14, 2023 - 11 AM: Mi-Box Moving and Mobile Storage Inc. v. Mybox Inc., Opposition No. 91265197 [Opposition to registration of MYBOX for "Modular metallic buildings; transportable metal buildings; prefabricated metal buildings; relocatable metal buildings, "Custom manufacture of modular components of modular buildings, transportable buildings, prefabricated buildings, and relocatable buildings," and "Rental of portable buildings, namely, portable modular buildings, transportable buildings, prefabricated buildings, and relocatable buildings," on the ground of likelihood of confusion with the registered mark MI-BOX for "Moving and storage services, namely, rental, storage, delivery and pick up of portable storage units."]

June 15, 2023 - 1 PM: Robyn Roche-Paull v. Mom2Mom Global, DBA, Breastfeeding in Combat Boots, Cancellation No. 92071516 [Petition to cancel a registration for the mark BREASTFEEDING IN COMBAT BOOTS for "Providing breastfeeding information," on the grounds of nonownership, fraud, and likelihood of confusion with the identical mark allegedly used first by the petitioner for the same services.]

June 21, 2023 - 11 AM: Perfectionately Yours, LLC v. Charles F. Coleman, Jr. , Opposition No. 91241854 and Cancellation No. 92075733 [Opposition to registration of BLACK BRILLIANCE (Stylized), and petition to cancel a registration for BLACK BRILLIANCE in standard form, for clothing and for various educational and entertainment services, on the grounds of nonownership, nonuse, fraud, and and likelihood of confusion with the identical mark allegedly used first by the plaintiff for the same goods and related services.]

 

June 21, 2023 - 2 PM: JetBlue Airways Corporation v. Airblue Limited, Opposition No. 91239609 [Opposition to registration of AIRBLUE for credit card services and air transportation services, on the grounds of likelihood of confusion with, and/or likely dilution of, the mark JETBLUE, and various BLUE-formative marks, for identical services.]

June 27, 2023 - 11 AM: LogMeIn, Inc. and GoTo Technologies USA, Inc. v. Telus Corporation and GoCo Technology Limited Partnership , Opposition No. 91265230 [Opposition to registration of GOCO for various unified communication services in view of the registered mark GOTO for overlapping and/or related services.] 

June 27, 2023 - 2 PM: Billy Stott v. Split Decision Music, LLC, Opposition No. 91249613 [Opposition to registration of SPLIT DECISION for "Entertainment services in the nature of live visual and audio performances, namely, musical rock band" on the grounds of nonownership, fraud, and and likelihood of confusion with the identical mark allegedly used first by the opposer for the same services.]

June 28, 2023 - 11 AM: In re Qx World Kft., Serial No. 79280195 [Section 2(d) refusal to register the mark OMNIS for downloadable computer software for data collection for use of medical, veterinary and cosmetic devices in International Class 9, medical imaging and rehabilitative devices, including biofeedback devices, in International Class 10, and retail and wholesale store and new product commercialization services featuring computer software and devices for medical, veterinary and cosmetic use in International Class 35, in view of the registered mark DAKO OMNIS for, inter alia, recorded and downloadable software for identifying and diagnosing immunodeficiency diseases and cancer and processing digital images in International Class 9, medical diagnostic instruments and apparatuses in International Class 10, and medical research and installation, integration, maintenance, and updating of software for use in medical analysis, diagnosis and research in International Class 42, .and OMNIS HEALTH for, inter alia, blood glucose meters in International Class 10, retail store services featuring the sale of diabetic supplies and devices in International Class 35, and providing information in the field of health, healthcare and wellness in International Class 44.]

June 28, 2023 - 1 PM: Servi-Tek, Inc. v. Jimmy's Contractor Services, Inc. , Cancellation No. 92071703 [Petition for cancellation of a registration for the mark SERV-TECH for "Roofing services; Roofing consultation; Roofing contracting; Roofing installation; Roofing repair; Roofing services, namely, waterproofing" on the ground of likelihood of confusion with the common law mark SERVI-TEC for "janitorial services; building maintenance services."  

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June 29, 2023 - 1 PM: Rockport IP Holdings, LLC, The Rockport Company, LLC v. Joshua George Savoy, Oppositions Nos. 91252440 and 91255819 [Opposition to registration of the mark shown below left for various clothing items, including footwear, in view of the registered mark shown below center, and the common law mark shown below right, for footwear., and "counter-opposition" to registration of the third mark.]

Read comments and post your comment here.

TTABlog comment: See anything interesting? Any WYHO?s

Text Copyright John L. Welch 2023.

Precedential No. 16: TTAB Finds Guitar Shape for Hotel to be Inherently Distinctive

The Board reversed a refusal to register "trade dress consisting of a three-dimensional building in the shape of a guitar" (shown below), for "casinos" and "hotel, restaurant and bar services," finding the proposed mark to be inherently distinctive. The examining attorney had accepted the Seminole Tribe's alternative claim of acquired distinctiveness under Section 2(f), but the Tribe chose to pursue its claim that the building shape is an inherently distinctive source indicator. In re Seminole Tribe of Florida, 2023 U.S.P.Q.2d 631 (TTAB 2023) [precedential] (Opinion by Judge Melanye K. Johnson).

In Two Pesos, the Supreme Court held that proof of secondary meaning is not required for trade dress that is inherently distinctive, and it upheld the finding that the décor of Taco Cabana's Mexican restaurants was inherently distinctive. In Wal-Mart, the Court distinguished "product design" trade dress from "product packaging," ruling that the former is protectable "only upon a showing of secondary meaning." The Court ruled that the clothing designs at issue there constituted product design. As to the trade dress in Two Pesos, the Court observed:

Two Pesos is inapposite to our holding here because the trade dress at issue [in Two Pesos], the décor of a restaurant, seems to us not to constitute product design. It was either product packaging — which, as we have discussed, normally is taken by the consumer to indicate origin — or else some tertium quid that is akin to product packaging and has no bearing on the present case. (Emphasis by the Board).

The Board then turned to decisions that analyzed the inherent distinctiveness of trade dress used with a variety of services, not just building designs. In Chippendales, the CAFC affirmed the Board's finding that the "Cuffs & Collar" trade dress for erotic dancers was not inherently distinctive because it was "inspired by the ubiquitous Playboy bunny suit," but it also ruled that the Board erred in suggesting that any costume in the adult entertainment industry would lack inherent distinctiveness.

Under Chippendales it is appropriate for the Board to consider "whether a consumer would immediately rely on Applicant's Guitar Design mark to differentiate Applicant's Services from the services of others who offer casinos or hotel, restaurant and bar services." This "set the stage" for the Board's finding in Frankish that the "fanciful, prehistoric animal design" of the cab of a monster truck is "akin to product packaging for an applicant's monster truck services, and therefore, inherently distinctive." The Board found the design to be "unique" and "unusual" in the monster truck field, and the evidence scant, at best, that the design is "a 'mere refinement' of anything, let alone a 'commonly-adopted' and 'well-known form' in the monster truck field."

The Board found the proposed mark be "tertium quid" akin to product packaging. Focusing on the uniqueness of the Tribe's building design in the relevant industry, it concluded that applicant’s building design is inherently distinctive for the Tribe's services.

The Board's conclusion was "further supported" by the Seabrook test for inherent distinctiveness: "whether the trade dress is a “common” basic shape or design; whether it is unique or unusual in a particular field; or whether it is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods."

We find that Applicant’s Mark is not a common design; rather, it is unique, and not a mere refinement of a commonly-adopted and well-known form of ornamentation for Applicant’s Services. Given the uniqueness of Applicant’s three-dimensional Guitar Design trade dress as applied to Applicant’s Services, we find Applicant’s Mark is of a type that consumers would immediately rely on to differentiate Applicant’s Services from casinos or hotel, restaurant, and bar services offered by others, and that it therefore constitutes inherently distinctive trade dress.

Read comments and post your comment here.

TTABlogger comment: Since the examining attorney had already accepted the Tribe's Section 2(f) claim, why did it bother to pursue the claim of inherent distinctiveness? Steve Feingold explained why he did that in the Chippendales matter: "Why You Should Think Twice Before Accepting a 2(f) Registration"

P.S. Hat tip to FOB Miriam Richter.

Text Copyright John L. Welch 2023.

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

By my count, the TTAB has affirmed about 83% of the Section 2(d) refusals it has reviewed on appeal this year. How do you think these latest three appeals came out? Results will be found in the first comment.

In re ZF Friedrichshafen AG, Serial No. 79322731 (May 18, 2023) [not precedential] (Opinion by Judge Angela Lykos). [Refusal to register KING OF THE ROAD for "Batteries; rechargeable batteries; electric batteries; vehicle batteries; car batteries; batteries for electronic cigarettes; battery boxes; battery jars; battery chargers" and for "Lighting apparatus for vehicles; lights for vehicles; lights for automobiles; lighting installations for air vehicles; lamps; electric lamps; light bulbs; light bulbs for directional signals for vehicles; light diffusers; LED light bulbs; lighting apparatus and installations, namely, lighting apparatus for vehicles and lighting installations" in view of the identical mark registered for "mirrors for land vehicles."

In re Falicie E. Dirosier, Serial No. 90074262 (May 18, 2023) [not precedential] (Opinion by Judge Christopher Larkin) [Refusal to register the mark shown below, for "Bar soap," in view of the registered mark MOOD SWING for "hair styling preparations."]In re Nature Cravings Pet Treats LLC, Serial Nos. 90139331 (May 19, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo) [Refusal to register BARKING BUDDHA for "Consumable pet chews; Edible pet treats; Pet beverages; Pet food; Pet treats in the nature of bully stick" in view of the registered mark BUDDHA BISCUITS (in standard form) for "Edible organic pet treats for dogs" [BISCUITS disclaimed].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2023.

TTAB Reverses Functionality Refusal of Rocking Chair Design But Finds Acquired Distinctiveness Lacking

The Board reversed a Section 2(e)(5) functionality refusal of a product configuration mark (shown below) comprising the side of a rocking chair (not including the high back and curved base). Applying the Morton-Norwich factors, and giving some weight to applicant's design patents, the Board concluded that the USPTO failed to make a prima facie case of functionality. However, Applicant JBL failed to prove that this design has acquired distinctiveness, and so registration was refused on the Principal Register, but the Board accepted JBL's alternative amendment to the Supplemental Register. In re JBL International, Inc., Serial No. 88941388 (May 22, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington).

There were no utility patents of record, nor any evidence showing that JBL touted any utilitarian advantages of this product design. Nor was there any evidence that JBL’s product design serves to minimize the cost or simplify the manufacture of its rocking chairs.

JBL pointed to its ownership of seven design patents for rocking chairs of the same or a very similar configuration. The Board noted that "[o]ur law recognizes that the existence of a design patent for the very design for which trademark protection is sought 'presumptively . . . indicates that the design is not de jure functional.'" And so, the design patents constituted evidence weighing against a finding of functionality, but the Board pointed out that they are not dispositive of the issue.

The examining attorney contended that evidence of third-party rocking chairs “shows that [applicant's design] is one of a few superior designs available." The Board was not impressed: "while the Examining Attorney points out that some of the third-party rocking chairs have 'an arm-rest connected to the chair’s back and front legs with an angled rear leg' or 'an armrest and front leg that meet at an approximate 90-degree angle,' there is no explanation how these design traits are 'superior' or how they are utilitarian because they are 'essential to the use or purpose' of the rocking chairs." Instead, the evidence showed that "there are several alternative functionally equivalent designs available to Applicant's competitors. Indeed, some of the third-parties' rocking chairs bear little resemblance in product design to Applicant's." [see example below]

And so, the Board found that the USPTO had failed to make a prima facie case of functionality.

Turning to the issue of acquired distinctiveness, the Board applied the Converse factors, with JBL relying on its length of use (since 2010), sales figures (very little meaningful evidence), and advertising and promotion (ditto). It did not offer any evidence of "look for" advertising, but pointed to its registered logo (below) depicting a rocking chair.The Board noted, however, that the logo does not feature the elements of the design at issue, nor was there any evidence regarding the extent of consumer exposure to this mark.

Finally, there was no direct evidence of consumer perception of the proposed mark, nor any evidence of copying or of unsolicited media attention.

And so, the Board concluded that JBL fell short of meeting its high burden to prove acquired distinctiveness for its product design. The Board did, however, accept JBL's amendment to the Supplemental Register, which amendment was made in the alternative during prosecution of the subject application.

Read comments and post your comment here.

TTABlogger comment: In my view, the existence of a design patent should have no bearing on the issue of whether the proposed mark is functional in a trademark sense because the respective standards for functionality are different. See Sarah Burstein, Faux Amis in Design Law, 105 TMR 1455 (2015). [pdf here].

Text Copyright John L. Welch 2023.

Sustaining Tumblr's Opposition, TTAB Finds "TUMBLOG" Generic for .... Guess What?

In a rare opposition based on genericness, the Board sustained Tumblr's challenge to an application to register TUMBLOG for "[p]roviding customized on-line web pages and data feeds featuring user-defined information, which includes blog posts, new media content, other on-line content, and on-line web links to other websites," deeming the proposed mark to be generic for the recited services. The Board, without explanation, applied a "preponderance of the evidence" standard, ignoring CAFC case law requiring "clear evidence" of genericness. Tumblr, Inc. v. Mark David-Dale Kindy, Opposition No. 91252639 (May 19, 2023) [not precedential] (Opinion by Judge Jonathan Hudis).

There was no dispute that Applicant Kindy's recitation of services adequately defined the genus at issue. The Board found the relevant consumers to be "members of the general public who do or may take advantage of the services provided by blogging websites, including customized web pages and data feeds provided by such websites." "The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question."

Kindy, appearing pro se, admitted that "the term 'tumblelog' and its contraction 'tumblog' are generic, or at best highly descriptive, for a microblog or a short-form blog," and that use of those terms in connection with blogging platforms has been "prevalent" for many years. Dictionary materials and news articles, in addition to Kindy's admissions, led the Board to the inescapable conclusion that TUMBLOG is a generic term for Kindy’s services.

Opposer Tumblr submitted the expert testimony of a linguistics expert with regard to the derivation of the term "tumblog." "Generally, the testimony of a linguistics expert has been accepted on questions such as to how a term or mark will be perceived or pronounced." Her testimony corroborated the other evidence on this point.

The Board, however, did not accept her testimony on the ultimate factual issue of genericness. "The Board is the ultimate arbiter of whether TUMBLOG is generic based on our assessment of the record as a whole, and we will not substitute the opinion of a witness, even an expert witness, for our evaluation of the facts."

Ultimately, the evidence pointed to one conclusion:

The relevant public also understands a “tumblog”, a contraction from “tumblelog” whose etymology is from the terms “tumble” and “log,” to be an alternative generic term for a microblog, that is, a specific form of a blog whose content is typically shorter, allowing users to exchange smaller elements of textual content (paragraphs or short sentences), images, video links, or links to other websites.

And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: On the issue of the appropriate standard for proof of genericness, see Michael Hall's TTABlog article here.

Text Copyright John L. Welch 2023.

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

Here are three recent decisions in Section 2(d) oppositions. At least one of the oppositions was dismissed. See if you can guess how they came out just based on looking at the marks and the involved goods and services. Answer(s) in the first comment.

Agile Sports Technologies, Inc. v. Lashion Robinson, Opposition No. 91265207 (May 18, 2023) [not precedential] (Opinion by Judge Martha B. Allard). [Opposition to registration of HUDL for "Downloadable music files" (Class 09); "Music production services" (Class 41) and "Online social networking services; licensing services, namely, licensing of music and the provision of information, advice and consultancy relating to the licensing of music" (Class 45), in view of various registered HUDL and HUDL-formative marks for, inter alia, "providing access to information, audio, and video via websites."]

LeetCode, LLC v. MeetCode Technology (Hong Kong) Co., Limited, Opposition No. 91270134 (May 18, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington) [Opposition to registration of MEETCODE for, inter alia, "Career advancement consulting services in the field of information technology,""Business education and training services," and "Computer programming services," in view of the registered mark LEETCODE for overlapping services.]

Sferra Fine Linens, LLC v. Sfera Joven S.A., Opposition No. 91267498 (May 18, 2023) [not precedential] (Opinion by Judge Michael B. Adlin) [Opposition to registration of the mark SFERA in the form shown below, for perfumery and cosmetics (Class 3), leather handbags and wallets (Class 18), and clothing (Class 25), in view of the registered mark SFERRA for table linen, bed sheets, lap robes, bath towels, and the like (Class 24).]

Read comments and post your comment here.

Text Copyright John L. Welch 2023.

Ted Davis Outline: "Recent Developments in United States Trademark and Unfair Competition Law"

Thank you, Ted Davis, for permitting me to post a link (here) to your article, "Recent Developments in United States Trademark and Unfair Competition Law." This article is a companion to the Ted's presentation at the 2023 Annual Meeting of INTA in Singapore.

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TTABlog Test: Is CLAIM WATCHER Confusable With CLAIM WATCH & Design for Certain Insurance Claim Services?

So far this year, the Board has affirmed a mere 83% of the Section 2(d) refusal it has reviewed - a drop from its 89% average over the past decade. Here's the latest decision. The USPTO refused to register CLAIM WATCHER for “Health benefit plan services, namely, insurance administration services, namely, assisting others with adjusting insurance claims in the nature of repricing health insurance claims” (Class 36) and for “Legal services, namely, legal consulting and defense relating to health insurance claims" (Class 45) (CLAIM disclaimed), finding confusion likely with the registered mark shown below, for "Tracking and monitoring the status of insurance claims for business purposes." How do you think this appeal came out? In re Homestead Strategic Holdings, Inc., Serial No. 90263580 (May 17, 2023) [not precedential] (Opinion by Judge Christopher Larkin).

The Board found the term CLAIM WATCH to be the dominant element in the cited mark. Applicant feebly argued that the highly stylized letter “P” dominates the cited mark “because it represents ‘Parker,’ the last name associated with the Cited Registration’s owner, ‘James G. Parker Insurance Associates.’” Of course, that argument was useless, since the Board must consider the mark as depicted in the application drawing, without any reference to external materials.

Considering the marks in their entireties, the Board found them to be similar in appearance, sound, connotation, and commercial impression.

As to applicant's Class 36 services, the Board found the recitation to be vague and so it relied on external materials in construing the services to include "any form of negotiation by a third-party insurance administrator (on behalf of a health benefit plan) with a health care provider to adjust the provider’s health insurance claim to the plan." The Class 45 services are limited to the defense of health insurance claims, "including the sort of consulting and defense provided by applicant in the context of claims asserted by a health care provider against a health care plan or its members." The Board concluded that applicant's identification cannot reasonably be construed to cover the prosecution of “health insurance claims” against a health insurer by an insured because the recitation specifically relates to consulting and defense, not prosecution.

As to registrant's services, there is no restriction on the nature of the “insurance claims” that are the subject of the tracking and monitoring services, and so they must be construed to include the tracking and monitoring of the status of health insurance claims.

Nonetheless, there is a distinct difference between tracking and monitoring the status of a claim and assisting others in the repricing of health insurance claims. Moreover, the limiting language “for business purposes” further narrows the registrant’s services to encompass only those “insurance claims” submitted “for business purposes” and the registrant’s “tracking and monitoring” of the “status” of such claims.

The Board saw nothing in the USPTO's evidence indicating that the marks at issue would be exposed to the same consumers" when used with the respective services of applicant and registrant, "or that consumers have become accustomed to seeing the same marks used in connection with those sets of services." 

The finding of dissimilarity under the second DuPont factor was deemed to outweigh the similarity of the marks, and so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: What do you think?

Text Copyright John L. Welch 2023.

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

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

Herve Brin v. PSBC Limited, Opposition No. 91267498 (May 15, 2023) [not precedential] (Opinion by Judge Cindy B. Greenbaum) [Opposition to registration of POUPETTE ST BARTH for perfumery and personal care products (ST BARTH disclaimed), in view of the registered marks ST BARTH (in standard characters) and LSB LIGNE ST BARTH and Design (LIGNE disclaimed), for overlapping products.]

CC Serve Corporation v. Apex Bank, Opposition No. 91254295 (May 12, 2023) [not precedential] (Opinion by Judge Christen M. English). [Opposition to registration of ASPIRE BANK & Design for "banking and financing services" (BANK disclaimed) in view of the registered mark ASPIRE for "credit card services."]

Daniel J. Fountenberry v. Life of Ease LLC Opposition No. 91270132 (May 8, 2023) [not precedential] (Opinion by Judge Michael B. Adlin) [Opposition to registration of the mark V COTEACHER & Design for writing instruments, educational toys for teaching math principles, and for educational services, namely web-based learning instruction, in view of the registered mark COTEACHER for “licensing of software in the framework of software publishing."]

Read comments and post your comment here.

Text Copyright John L. Welch 2023.

In a Split Decision, TTAB Finds SIREN'S BLEND for Coffee Confusable With the Starbucks Logo, But Not Confusable for Clothing

In an exhaustive and exhausting 69-page decision, the Board sustained-in-part and dismissed-in-part Starbucks' opposition to registration of the mark SIREN'S BREW, finding confusion likely with the Starbucks design logo with regard to applicant's "coffee beans," but not as to applicant's "shirts; sweat shirts." Starbucks' dilution claim failed because Starbucks did not prove its logo to be famous for dilution purposes. This blog post will attempt to hit the highlights. Starbucks Corporation v. Mountains and Mermaids, LLC, Oppositions Nos. 91250027 and 91250160 (May 8, 2023) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Starbucks claimed common law rights in the mark SIREN for coffee and "associated merchandising goods," asserting five bases for priority, none of which it successfully established: (1) Current use of SIREN’S BLEND for coffee tacked onto alleged prior rights in SIREN’S NOTE BLEND for coffee; (2) Prior trade name use of Siren Retail Group, which allegedly has offered “premium coffee-related experiences” since 2016; (3) Prior alleged use of the word mark SIREN “in connection with many goods and services, including coffee-related goods and services and apparel;” (4) Prior alleged use of SIREN in “branding and promotional efforts in a manner analogous to trademark use;”and (5) alleged public association of “Siren” with Starbucks as a nickname.

Starbucks thus had to rely on its registered logo marks for its priority claim, two of the registrations covering coffee and clothing (including the mark shown in the lower right corner above). Since the involved goods overlap, the Board must presume that they travel in the same normal channels of trade to the same classes of consumers.

Starbucks claimed that its logo is famous, but it did not provide sales and advertising figures tied to that particular mark. The Board found the mark to be commercially strong for coffee-related products, but not at the farthest end of the strength spectrum. As to clothing, the Board made no such finding.

Applicant attempted to show that third-party uses of "siren" weakened the Starbucks' mark, but the Board was unimpressed: "there are only a handful of third-party uses of 'siren' in connection with coffee-related goods and services, and they appear mostly to be small, local businesses. As to clothing, however, third-party uses were entitled to some probative weight.

Turning to a comparison of the marks, the Board poured through the record and found "substantial evidence of public exposure to Opposer’s Design Logo marks associated with and characterized as a siren, and that the Design Logo often is referred to by consumers as the Siren or the Starbucks Siren."

The Board found the word SIREN'S to be dominant in applicant's mark, since it is the first word in the mark and since BREW is descriptive of coffee. The Board found the marks to be similar in connotation and commercial impression.

As to clothing, however, the meaning of BREW is "more open-ended and and subject to various interpretations, none of which are descriptive of or generic for the clothing goods." "The SIREN’S BREW mark used on clothing still gives the meaning and impression of the brew of a siren, but that brew could be a beer, tea, coffee, any other brewed beverage, or indeed any concoction of unusual ingredients." In light of the narrower scope of protection merited by the Starbucks mark for clothing, the Board found the marks dissimilar in this context.

And so, the Board found confusion likely as to applicant's coffee beans, but not as to its clothing items.

As to Starbucks' dilution claim, the evidence fell short of establishing fame by the relevant date for dilution purposes. "The record is simply too thin to establish, by a preponderance of the evidence, that Opposer’s marks were famous as of March 2018."

Read comments and post your comment here.

TTABlogger comment: When a party has multiple registered marks, it seemingly seldom can segregate its sales and advertising figures by mark. Keep that in mind when challenging the strength of your opponent's marks.

Text Copyright John L. Welch 2023.

TTAB Denies Petition for Cancellation of LITTLE NOTES Registration: Petitioner Failed to Prove Rights in the Mark Via Acquired Distinctiveness

The Board denied a petition for cancellation of a Supplemental Registration for the mark LITTLE NOTES for address books, greeting cards, calendars, note paper, and the like, rejecting Petitioner Comptime's claim of likelihood of confusion with its alleged common law rights in the same mark for overlapping goods. Comptime failed to prove that the mark LITTLE NOTES had acquired distinctiveness, and consequently it had no prior rights in the mark. Comptime, Inc. DBA Comptime Digital Printing v. E. Francis Paper, Inc., Cancellation No. 92073884 (May 10, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo).

Because the registration at issue resides on the Supplemental Register, the respondent could not rely on the filing date of its underlying application. See Section 26 of the Trademark Act. Nonetheless, as plaintiff, Petitioner Comptime bore the burden of proof to establish its claim, including its priority, by a preponderance of the evidence. It had to show that its mark is distinctive, inherently or otherwise, and had to show priority of use. See Otto Roth.

Comptime argued that the registered mark is merely descriptive and has not acquired distinctiveness, yet it maintained that its common law mark is inherently distinctive. The Board, however, found LITTLE NOTES to be highly descriptive, and therefore Comptime's burden of proof is "commensurately high."

The Board applied the CAFC's Converse factors to assess whether Comptime's mark had achieved acquired distinctiveness. Comptime did not submit survey results or any other direct evidence of association of LITTLE NOTES with any particular source. Comptime claimed substantially exclusive use since 2013, but in light of the highly descriptive nature of the mark, the Board exercised its discretion to deem that evidence insufficient.

Comptime spent about $13,000 per year on advertising, but the Board was not impressed with these relatively modest expenditures. Its sales figures amounted to about $1,825,000, but Comptime did not disclose the number of customers, its market share, or its ranking among other providers of similar goods, and so the Board was unable "to accurately gauge" the level of its success. There was no evidence of intentional copying or of unsolicited media coverage.

And so, the Board concluded that Comptime failed to establish acquired distinctiveness in the LITTLE NOTES mark. Therefore, it failed to prove priority, and the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Shouldn't the Board be asking whether Comptime established acquired distinctiveness before respondent's first use date, which apparently was in 2014? See, for example, the case TTABlogged here.

Text Copyright John L. Welch 2023.

USPTO Proposes Increase in Trademark-Related Fees - Effective November 2024

On May 8, 2023, the Director of the USPTO notified the Trademark Public Advisory Committee (TPAC) of its intention to set or adjust trademark-related fees. The Office submitted a preliminary trademark fee proposal with supporting materials: the proposed fee schedule and associated materials may be found here. Anyone wishing to present oral testimony at the hybrid public hearing scheduled on Monday, June 5, 2023, from 1-3 p.m. ET, must submit a request in writing no later than May 26, 2023. Written comments on proposed trademark fees will be accepted until June 12, 2023.

As a fee-funded agency, the United States Patent and Trademark Office (USPTO) must periodically assess and adjust fees to ensure our fee collections finance the aggregate costs necessary to register and maintain accurate and reliable trademarks. We recently completed a comprehensive trademark fee review, with the conclusion that we should adjust fees to increase aggregate revenue and refine certain fees to efficiently finance ongoing operations. The first steps in the fee adjustment process are to deliver our trademark fee proposal to the TPAC and engage the public. Given the statutory and regulatory timeline for setting and adjusting fees, we anticipate any fee changes will be implemented on or around November 2024. [emphasis added].
******** The USPTO proposes to adjust fees paid throughout the trademark life cycle to collect sufficient aggregate revenue to recover recent increases in aggregate costs, due in part to higher-than-expected inflation and other requirements. Our proposal also increases aggregate revenue through fees designed to improve processing efficiencies and rebalance the fee structure to recover aggregate costs.

Click on image for larger picture

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TTABlogger comment: Thoughts?

Text Copyright John L. Welch 2023.

TTABlog Test: Are Restaurant Services and Live Musical Entertainment Related for Section 2(d) Purposes?

The USPTO refused to register the mark KOSA for "restaurant and bar services," finding confusion likely with the identical mark registered for "entertainment in the nature of music festivals and live musical performances; entertainment, namely, production of music festivals and live performances featuring music; entertainment, namely, live music concerts." The key issue, of course, was whether the involved services are related for Section 2(d) purposes. How do you think this appeal came out? In re Angel Asset Management LLC, Serial No. 90188208 (May 10, 2023) [not precedential] (Opinion by Judge Frances S. Wolfson).

The Board once again observed that when the involve marks are identical, a lesser degree of similarity between the services is necessary to support a finding of likely confusion. "[A]ll that is required is a 'viable relationship' between the services." Moreover, it is sufficient that relatedness is established between any of the services recited in the registration and applicant’s services.

Examining Attorney Jeffrey Look submitted evidence of third-party use of a single mark for both restaurant and bar services and entertainment services in the nature of live musical performances and live music concert, as well as more than 100 use-based, third-party registrations. The examining attorney also matched several of the registered marks with evidence of actual use for those services (e.g., HARD ROCK and FLORA-BAMA).

Applicant submitted 49 pairs of third-party registrations (31 of which the Board found to be pertinent) owned by different entities for the same or similar mark, where each entity has registered its mark for one of the services at issue, suggesting that the USPTO considers restaurant/bar services unrelated to musical entertainment services. The Board was unimpressed.

[T]he record here does not support a finding that consumers are aware that the involved services are offered by unrelated companies under the same or similar marks. Rather, the overwhelming evidence, not just of registration but of use, shows that consumers have become accustomed to restaurants and bars featuring live musical performances. We agree with the Examining Attorney that the number of registrations and Internet evidence submitted by the USPTO “tips the scale in favor of a finding that the services of Applicant and Registrant are closely related.”

The Board found that the probative effect of the pairs of third-party registrations was diminished by the lack of supporting evidence of use of any of the marks. There was also nothing to negate the possibility of licenses or coexistent agreements in place between any of the paired registrants.

The Board's finding was "bolstered" by articles from trade journals and popular magazines "showing that consumers prefer to enjoy an entertainment experience, such as live music, while eating or drinking in a bar or restaurant and that such consumers tend to linger longer, order more food and drinks."

The evidence sufficiently demonstrates a relationship between Applicant’s services and those in the cited registration, particularly given the reduced degree of similarity between the services that is necessary for confusion to be likely, arising from the fact that they are provided under identical marks. The second DuPont factor supports a finding of a likelihood of confusion.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2023.

TTAB Affirms Genericness Refusal of COOKIEBOT for ..... Guess What?

Wrong. This case has nothing to do with baked goods. The Board upheld the USPTO's refusal to register COOKIEBOT for "Software as a service (SAAS) services featuring software for monitoring and managing data collection and Internet usage tracking, for complying with privacy regulations regarding data collection and Internet usage tracking, and for user consent and permissions management regarding website access, data collection and Internet usage tracking," on the ground of genericness. The Board also upheld an alternative refusal based on mere descriptiveness and lack of secondary meaning. In re Cybot A/S, Serial No. 90044987 (May 1, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Board, as usual, found the genus at issue to be adequately defined by the recitation of services in th subject application. [Quite a mouthful! -ed.]. The Board next found the relevant consumers to be "website owners and those who visit websites." [That covers nearly everyone, doesn't it? - ed.]. The question, then, was whether the term COOKIEBOT is "understood by the relevant public primarily to refer to" the recited services.

The Board then found that COOKIE "may be defined as a file stored on the local computer of an Internet user containing information used by the website to, inter alia, record, track and collect data regarding the user’s browsing habits." A BOT is "a computer program that automates mundane tasks, even when the user is not logged in, acting as an agent for a user or program and may simulate human activity."

The term COOKIE BOT "may be defined as a computer program that automates various activities related to the collection, monitoring and management of data concerning Internet usage by an individual. There was no dispute that relevant consumers recognize that meaning." The absence of a space in applicant's proposed mark does not alter that meaning.

Based on the media evidence submitted by Examining Attorney Kim Teresa Moninghoff, the Board found that "consumers of Applicant’s services as well as media outlets and commentators in the field of online access and data collection recognize this meaning of Applicant’s proposed mark."

Applicant maintained that "consent management platform" or "CMP" is the generic term for its services, but the Board observed that there can be more than one generic term for a genus of goods or services.

The Board concluded that the relevant public understands the term COOKIEBOT as a common descriptive name for the genus, and therefore it affirmed the genericness refusal.

Turning to the alternative refusal, the Board found, in light of the genericness evidence, that COOKIEBOT is highly descriptive of the subject services. Consequently, applicant’s burden of establishing a prima facie case of acquired distinctiveness under Section 2(f) "is commensurately high."

Applying the CAFC's Converse factors, the Board noted the lack of survey evidence or other direct evidence regarding the association of COOKIEBOT with a particular source. Applicant averred that it has exclusively used COOKIEBOT as a mark since 2015, but the Board brushed that aside in light of the highly descriptive nature of the term. There was no evidence regarding applicant's marketing expenditures, the extent of exposure of its advertising, its sales figures, number of customers, market share, unsolicited media coverage, or intentional copying.

The Board concluded that applicant had failed to prove acquired distinctiveness, and so it affirmed the alternative refusal under Section 2(e)(1).

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2023.

TTABlog Test: Does "MAKE YOUR PASSION YOUR PAYCHECK" Function as a Source Indicator for T-Shirts?

The USPTO refused to register the proposed mark MAKE YOUR PASSION YOUR PAYCHECK for "Hats; T-shirts; Hoodies; Knit face masks being headwear" on the ground that the phrase is an expression commonly used by multiple sources and therefore is not perceived as a source indicator. Applicant argued that the Office's evidence - some 14 third-party uses of the phrase and its variants - was insufficient to show how the mark is perceived by the general public. How do you think this came out? In re GFactor Enterprises, LLC d/b/a Gfactor Films, Serial No. 90976324 (May 5, 2023) [not precedential] (Opinion by Judge Jonathan Hudis).

Matter that does not serve to indicate the source or origin of the identified goods and distinguish them from others does not meet the statutory definition of a trademark. Common terms or phrases that consumers "are accustomed to seeing used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments" fail to function as trademarks. [Think the "f" work, for example -ed.].

However, when the evidence is insufficient to show that a proposed mark has been widely used in connection with the goods at issue, it is improper to refuse registration on the ground of failure-to-function. The critical issue, of course is how the relevant public perceives the proposed mark.

During prosecution, the Examining Attorney provided a limited number of third-party uses (14 in all) of MAKE YOUR PASSION YOUR PAYCHECK, and its variants, by motivational speakers, professional coaches, career planners, and in articles and other printed materials in a variety of different contexts. As we note above, some third-party uses are service mark uses. Others are titles of books, or emblazoned in an ornamental manner on t-shirts or artwork.

The Board concluded that the record "does not uniformly demonstrate commonplace third-party use of MAKE YOUR PASSION YOUR PAYCHECK, and its variants, in relation to the common topic of self-help and motivation to convey the well understood message that one should do what they love, and make money doing so – as argued by the Examining Attorney."

Due to the mixed record presented by the Examining Attorney, we cannot say that, in view of the wide usage of the phrase, consumers of Applicant’s goods are consistently accustomed to seeing this phrase used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments such that they could not attribute the phrase to a single source.

And so, the Board reversed the refusal to register.

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TTABlogger comment: NB: The fact that the phrase appears on the sewn-in label does not by itself make it a mark. See D.C. One Wholesaler, Inc. v. Chien. But the fact that others use the phrase as a source indicator was significant.

Text Copyright John L. Welch 2023.

Precedential No. 15: Finding Essential Oil Dispensers to be Illegal Drug Paraphernalia, TTAB Affirms Refusal of Two Proposed Marks

The Board upheld the refusals to register the marks BAKKED (in standard characters) and a stylized drop design, for "essential oil dispenser, sold empty, for domestic use," finding that the goods are illegal drug paraphernalia under the Controlled Substances Act (CSA), and therefore the marks are ineligible for registration. The Board rejected applicant's arguments that because the goods are legal under Colorado state law, or are traditionally used with tobacco products, they fall within either of two exemptions set forth in the CSA. In re National Concessions Group, Inc., 2023 USPQ2d 527 (TTAB  2023) [precedential] (Opinion by Judge Cindy B. Greenbaum).

The Board has consistently held that, in order to qualify for registration, the use (or intended use) of a mark must be lawful. In re PharmaCann LLC, 123 USPQ2d 1122, 1123-24 (TTAB 2017); In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016); In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016). Section 863(a) of the CSA makes it unlawful to (1) sell or offer for sale, (2) use the mails or any other facility of interstate commerce to transport, or (3) import or export drug paraphernalia. Equipment or products primarily intended or designed for use in ingesting, inhaling, or otherwise introducing marijuana into the human body (e.g., water pipes, roach clips and bongs) constitute unlawful drug paraphernalia under Section 863(d) of the CSA, except for two exemptions set out in Section 863(f):

1. any person authorized by local, State, or Federal law to manufacture, possess, or distribute such items; or
2. any item that, in the normal lawful course of business, is imported, exported, transported, or sold through the mail or by any other means, and traditionally intended for use with tobacco products, including any pipe, paper, or accessory.

The first question for the Board was whether applicant's goods constitute "drug paraphernalia" under the CSA. Although the goods, as identified in the application, are not unlawful, "extrinsic evidence may be used to show such a violation." Brown, 119 USDPQ2d at 1351-52. Examining Attorney Jeffrey J. Look submitted several articles explaining the "dabbing" process as a means of inhaling superheated cannabis concentrates to produce a quicker "high," wherein the concentrate is applied to specialized devices.

The Examining Attorney pointed to applicant's and third-party websites that promote applicant's essential oil dispenser as a "dabbing" tool. Noting that applicant identifies itself as "The Largest Cannabis Company in the US," the Board found that the evidence "amply supports a finding" that applicant's essential oil dispenser 'primarily is intended or designed for use in connection with preparing, inhaling or introducing marijuana into the human body via 'dabbing.'" Consequently, the dispenser comprises prohibited drug paraphernalia as defined in the CSA.

Under the CSA, it is unlawful to sell, offer to sell, transport, import, or export drug paraphernalia in interstate commerce. The evidence showed that applicant uses the mails or other facilities of interstate commerce to transport drug paraphernalia, in violation of the CSA.

The next question was whether applicant's goods qualify for an exemption under the CSA, and if so, whether applicant may obtain registrations for its marks. To repeat, Section 863(f)(1) exempts "any person authorized by local, State, or Federal law to manufacture, possess, or distribute such items," and Section 863(f)(2) exempts "any item that, in the normal lawful course of business is imported, exported, transported, or sold through the mail or by any other means, and traditionally intended for use with tobacco products, including any pipe, paper, or accessory."

Applicant argued that it is a person authorized by state law to manufacture, possess, or distribute its goods. The Board, however, ruled that it did not need to decide the validity of applicant's argument because, in any case, applicant is not entitled to federal registration of its marks. First, the registration applicant seeks is not limited to Colorado, and registration would give it presumptive exclusive rights to nationwide use of its mark. Second, any authorization by the State of Colorado "cannot override the laws of the other states or federal law outside Colorado."

Applicant may be correct that Colorado has authorized it to manufacture, possess or distribute the goods, such authorization does not extend beyond the borders of Colorado. The Section (f)(1) exemption argued for here is tied to a geographic area — that is, Applicant argues it is authorized by Colorado law to manufacture, possess or distribute the goods in Colorado. But that exemption is insufficient to support the federal trademark registration Applicant seeks, which would be nationwide in effect. Compare Brown, 119 USPQ2d at 1351 (“[T]he fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration.”).

The Board therefore held that "when a Section 863(f)(1) exemption is applicable based on state law, that exemption does not support federal registration."

Turning to the exemption under Section 863(f)(2), applicant contended that its identified goods could be used to dispense tobacco oil because they are "of the type traditionally intended for use with tobacco products." However, its evidence fell short of convincing the Board that such a tradition existed. The devices that applicant pointed to did not resemble the goods with which applicant uses its mark.

And so, the Board sustained the refusals to register under Section 1 and 45 of the Trademark Act.

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TTABlogger comment:Would you call applicant's arguments half-bakked?

Text Copyright John L. Welch 2023.

Precedential No. 14: TTAB Dismisses RAPUNZEL Opposition: Professor Failed to Prove Entitlement to a Cause of Action

Unsurprisingly, the Board dismissed Professor Rebecca Curtin's opposition to registration of the mark RAPUNZEL for dolls and toy figures, finding that Curtin, as a mere consumer of fairytale-themed products, failed to prove her entitlement to a statutory cause of action. The Board addressed this single, threshold question: "[I]s Opposer Rebecca Curtin, as a purchaser of goods bearing the challenged mark, entitled to oppose the mark’s registration under Section 13 of the Trademark Act, 15 U.S.C. § 1063, when she alleges the proposed mark is both invalid and the subject of a fraudulent application?" The Board said no. Rebecca Curtin v. United Trademark Holdings, Inc., 2023 USPQ2d 535 (TTAB  2023) [precedential] (Opinion by Judge Michael B. Adlin).

Opposer Curtin alleged that she is a consumer who "participates amongst other consumers in the marketplace for dolls and toy figures of fairytale characters, including Rapunzel." She "believes" that if applicant obtains a registration for the mark RAPUNZEL, she and others "will be denied access to healthy marketplace competition for products that represent the well-known fictional character,' and further that they will "also likely face increased cost of goods associated with Rapunzel merchandise, given the lack of competition." She further believes that the registration "could chill the creation of new dolls and toys by fans of the Rapunzel fairytale, crowding out the substantial social benefit of having diverse interpreters of the fairy tale's legacy."

Entitlement to a statutory cause of action is a threshold requirement of every inter partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC , 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020), cert. denied , 142 S.Ct. 82 ( (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125 26 , 109 USPQ2d 2061 (2014)).  "A plaintiff may oppose registration of a mark when doing so is within the zone of interests protected by the statute and she has a reasonable belief in damage that would be proximately caused by registration of the mark. Corcamore, LLC v. SFM, LLC , 978 F.3d 1298, 2020 USPQ2d 11277, at * 6-7 (Fed. Cir. 2020), cert. denied , 141 S.Ct. 2061 (2021) (holding that the test in Lexmark is met by demonstrating a real interest in opposing or cancelling a registration of a mark, which satisfies the zone of interests requirement, and a reasonable belief in damage by the registration of a mark, which demonstrates damage proximately caused by registration of the mark). Meenaxi Enter., Inc. v. Coca Cola Co. Co., 38 F.4th 1067, 2022 USPQ2d 602, at *3 4 (Fed. Cir. 2022) (“While the zone of interest test is not especially demanding … it nonetheless imposes a critical requirement.”) (cleaned up).

Here, "the essential problem" for Opposer Curtin is that mere consumers "are generally not statutorily entitled to oppose registration under 115 U.S.C. § 1063."

The Board observed that Section 1063 entitles "[any person who believes that [she] would be damaged by the registration of a mark" to oppose it. Although this language is quite broad, it is not to be given an expansive reading. As required by Lexmark, the Board must first look to see whether Curtin came within the "zone of interests" protected by the Trademark Act.

In Lexmark, the Supreme Court pointed out that "[i]dentifying the interests protected by" the Trademark Act "requires no guesswork." Lexmark, 109 USPQ2d at 268. Section 45 of the Act identifies those interests:

The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition trademarks, trade names, and unfair competition entered into between the United States and foreign nations. (emphasis by the Board).

In short, the Trademark Act "regulates commerce and protects plaintiffs with commercial interests."

The Court in Lexmark concluded that the "zone of interests" in a suit under Section 43(a)(1) of the Act - which, like Section 13, may be invoked by a person 'who believes that her or she is likely to be damaged' by the challenged act - "a plaintiff must allege an injury to a commercial interest in reputation or sales.” Lexmark, 109 USPQ2d at 2069 (emphasis by the Board). In Corcamore, the CAFC found “no principled reason why the analytical framework articulated by the Court in Lexmark should not apply to [15 U.S.C.] § 1064,” Corcamore, 2020 USPQ2d 11277, at *6.

The Court specifically stated that while consumers “may well have an injury in fact” caused by violations of the Trademark Act, they “cannot invoke the protection” of the statute based solely on injuries suffered as consumers , “a conclusion reached by every Circuit to consider the question.” Id. (“Even a business misled by a supplier into purchasing an inferior product is, like consumers generally, not under the Act’s aegis.”)

If, according to Lexmark, a business that buys goods or services does not fall within the Act, then "[a] fortiori, a mere consumer that buys goods or services is not under the Trademark Act’s aegis."

Put simply, the Trademark Act does not provide “consumer standing.” That is, it does not entitle mere consumers to a statutory cause of action ; a statutory cause of action is reserved for those with commercial interests. Id. at 2071

In addition, Curtin "must show economic or reputational injury flowing directly from” Applicant’s registration of RAPUNZEL. Lexmark, 109 USPQ2d at 2069.

However, “[t]hat showing is generally not made when” a defendant’s conduct “produces injuries to a fellow commercial actor that in turn affect the plaintiff. For example, while a competitor who is forced out of business by a defendant’s false advertising generally will be able to sue for its losses, the same is not true of the competitor’s landlord, its electric company, and other commercial parties ….” Id. at 2069 70.

Here, Curtin's evidence of the damage she would allegedly suffer is "too remote from registration and is entirely speculative." She assumes, without evidence, that applicant will be "so successful in enforcing its asserted rights that it will reduce 'marketplace competition,' 'chill the creation of new dolls and toys' and prevent 'access to classic, already existing, Rapunzel merchandise.'" 

Furthermore, the Board pointed out, "registration would at most preclude others from using RAPUNZEL as their own source indicator for such products, subject to defenses such as 15 U.S.C. § 1115(b)(4) (creating a defense to infringement where the 'term or device … is descriptive of and used fairly and in good faith only to describe the goods and services of such party').

And so, the Board concluded that Opposer Curtin had failed to prove her entitlement to a statutory cause of action, and it dismissed the opposition.

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TTABlogger comment: The Lexmark decision was at the heart of this ruling. Too bad the Board ignored it in its original ruling in favor of Curtin.

Text Copyright John L. Welch 2023.

TTABlog Test: Are Beer and Restaurant Services Related for Section 2(d) Purposes?

The USPTO refused to register the mark CHICKEN SCRATCH for "beer" on the ground of likely confusion with the identical mark registered for "restaurant services." Applicant R.S. Lipman argued that the cited mark is weak because it describes registrant's services, which provide "chicken dishes made from scratch." The Board pooh-poohed that argument, but what about the "something more" requirement? Did the USPTO clear that hurdle? In re R.S. Lipman Brewing Company, LLC, Serial No. 88209633 (May 3, 2023) [not precedential] (Opinion by Judge Michael B. Adlin).

As to the marks, the Board noted that the cited mark is presumably inherently distinctive, since it was registered without a Section 2(f) claim. Applicant, relying on the registrant's webpage ("Chicken made from scratch with a nostalgic flavor  profile"), argued that the cited mark is descriptive and conceptually weak. The Board disagreed: "'CHICKEN SCRATCH' (bad handwriting) has a different connotation and commercial impression than chicken 'made from scratch' (meaning 'to use only the most basic ingredients, with nothing premade')." Moreover, the cited mark is presumed to be at least suggestive of the services.

It takes a long stretch of a consumer’s imagination to say that CHICKEN SCRATCH calls to mind or suggests chicken entrees made from scratch. Thus as a whole CHICKEN SCRATCH has some suggestion of “chicken” because this term is contained within the mark, but inclusion of the term “scratch” in the mark makes it less suggestive of restaurant services. “A mark that is only somewhat suggestive is entitled to greater protection than a more highly suggestive mark.”

Applicant did not offer any proof of third-party use of the mark CHICKEN SCRATCH. The Board concluded that the cited mark is not a conceptually weak when used in connection with Registrant’s identified restaurant services, and so it accorded the mark "the normal scope of protection afforded a registered mark."

Applicant argued that the marks, although identical, have different connotations, since the cited mark "conveys a strong commercial impression of a restaurant focused primarily on ‘chicken’ entrees made from ‘scratch.’" The Board noted the lack of evidence to support that assertion, but in any case,

we are left with (according to Applicant) Registrant’s CHICKEN SCRATCH mark being associated with chicken dishes and Applicant’s CHICKEN SCRATCH mark being associated with the commonality of the ingredients of Applicant’s beer and chicken feed. Thus, even according to Applicant, the respective marks have similar (or at least related) commercial impressions given their connection to “chicken.”

Turning to the goods and services, both applicant and the examining attorney placed heavy reliance on the CAFC's decision in In re Coors (wherein the CAFC reversed a Section 2(d) refusal to register the mark BLUE MOON & Design for beer in light of a registration for another BLUE MOON Design for restaurant services.). The Board closely compared the record in that case with the record in this case. It noted the "additional wording in the applicant’s mark as well as significant differences in the design and coloring elements between the two marks." and the evidence of numerous third-party uses of "Blue Moon” for restaurant services and its appearance in many registered marks for food and beverages.

Furthermore, in Coors, the applicant submitted evidence regarding the relatively small number of breweries in the United States selling beer and rendering restaurant services under the same mark, as compared to the number of United States restaurants as a whole. Here, there was no such comparative evidence. Examining Attorney Sharon A. Meier made of record 21 registrations covering beer and restaurant services, as well as excerpts from 18 active website of third-party restaurants that serve their own beer under the same mark as their restaurant establishment; either by way of on-premise brewing or under private label production.

The Board concluded that "the evidence provided in the present appeal shows a much closer relationship between beer and restaurant services as compared to the record described by the Federal Circuit 20 years ago in In re Coors," and it found the evidence sufficient to show the relatedness of applicant’s goods and registrant’s services.

Finally, the Board found that beer and restaurant services "travel in overlapping trade channels, and are promoted for sale to the same general class of consumers."

The Examining Attorney’s evidence shows “something more” than that beer is sold in restaurants, and thus Applicant’s goods and Registrant’s services are related, travel in overlapping trade channels, and are offered to overlapping target consumers. With the relatively recent growth of the “brewpub” market segment, consumers would expect that beer and restaurant services marketed and sold under the same mark would originate from the same source.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Seems like the applicant put its eggs in the wrong basket in this appeal. Do you think the USPTO should have to prove that it is "common" for an entity to offer restaurants services and beer under the same mark? Should the USPTO have the burden to submit the "comparative evidence" that the applicant submitted in Coors?

Text Copyright John L. Welch 2023.