TTAB Posts July 2023 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled four (IV) oral hearings for the month of July 2023. The first and third hearings will be held in-person, the second and third via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

July 13, 2023 - 11 AM: In re Molina Healthcare, Inc., Serial Nos. 90887104 and 90887134 [Refusals to register MY HEALTH PERKS and MOLINA MY HEALTH PERKS for "Providing information in the fields of health and wellness," absent a disclaimer of "HEALTH PERKS."]

July 18, 2023 - 2 PM: In re Locals Technology Inc., Serial No. 90632969 [Section 2(d) refusal of LOCALS & Design for ""broadcasting, webcasting, streaming, and transmission of audio, video, subscription television programs, and video-on-demand content via the internet and electronic communications networks; telecommunication services, namely, transmission of voice, data, images, graphics, audio, video, and multimedia by means of wired and wireless networks," and for "providing a website that gives users the ability to publish their own text-based reading content, audio content, and audio-visual content; hosting an online website featuring artists and digital content creators; providing a website featuring technology that enables users to raise and transfer money to pay for media content; providing a website featuring technology that enables users to offer rewards to their customers; providing an interactive website featuring technology that enables users to share user-created media content, comment on media content, and exchange commentary concerning the same with one another," in view of the registered mark LOCALZ for "computer software for use in posting, transmitting, retrieving, receiving, reviewing, organizing, searching and managing text, audio, visual and multimedia data and content via computers, mobile phones, wired and wireless communication devices, and optical and electronic communications networks; ...computer software for the purpose of scheduling, managing, and tracking order, payment and delivery services; ...computer software that enables users to view and manage a productivity dashboard for the purpose of task management," and for "providing temporary use of non-downloadable computer software for use in posting, transmitting, retrieving, receiving, reviewing, organizing, searching and managing text, audio, visual and multimedia data and content via computers, mobile phones, wired and wireless communication devices, and optical and electronic communications networks: ...providing temporary use of non-downloadable computer software for the purpose of scheduling, managing, and tracking order, payment and delivery services; . . . providing a web-based service featuring technology that enables users to view and manage a productivity dashboard for the purpose of task management."]

July 19, 2023 - 1 PM: TF Intellectual Property Pty Ltd v. Kenneth Thomas, Opposition No. 91270193 [Section 2(d) opposition to registration of KULTURE KINGS & QUEENS for "Entertainment services in the nature of development, creation, production, distribution, and post-production of documentaries about the history and ongoing impact of urban and hip hop culture; Entertainment services in the nature of production of documentaries about the history and ongoing impact of urban and hip hop culture; Entertainment media production services for motion pictures, television and Internet; Film and video film production; Film distribution; Entertainment services, namely, displaying a series of films; Multimedia entertainment services in the nature of development, production and post-production services in the fields of video and films," in view of the registered marks CULTURE KINGS and CULTURE C KINGS & Design for apparel, streetwear, and accessories, and related retail services.]

July 27, 2023 - 1 PM: In re Metro Commercial Real Estate, Inc., Serial No. 9082167 [Section 2(d) refusal of METRO CENTRAL for "Real estate brokerage; real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space," in view of the registered marks CENTRAL METRO REALTY and C M CENTRAL METRO REALTY & DESIGN for real estate agency services and real estate brokerage [REALTY disclaimed].]

Read comments and post your comment here.

TTABlog comment: See anything interesting? Any WYHA?s

Text Copyright John L. Welch 2023.

TTABlog Test: Is CARLOW Primarily Merely a Surname for Real Estate Services?

The USPTO refused registration of the mark CARLOW for, inter alia, real estate and business center services, finding that the mark is primarily merely a surname under Section 2(e)(4). Have you ever heard of someone named Carlow? How do you think this appeal came out? In re SLC Hauppauge Development, LLC, Serial No. 90562295 (June 27, 2023) [not precedential] (Opinion by Judge Jonathan Hudis).

The Board first found CARLOW to be a "rare" surname. "Out of a country of over 330 million people, the incidence of CARLOW as a surname hovers only around 1,000; and there is evidence of record that the incidence of CARLOW as a first or given name is above that."

The fact that no one associated with applicant has the surname CARLOW "weighs in [A]pplicant's favor," according to the examining attorney. [Seems neutral to me - ed.]

As to non-surname meanings of CARLOW, in addition to the "not-insignificant incidence" of CARLOW as a first or given name, CARLOW is a “geographical name;” that is, a “county of southeastern Ireland in the province of Leinster” and a “town, [which is the] capital of the Irish county of Carlow.”

As to whether CARLOW has the structure and pronunciation of a surname, the examining attorney's evidence related almost exclusively to names in England and Wales. "These references thus tell us nothing about consumer perceptions in the United States." The Board was thus not persuaded that CARLOW has the structure and pronunciation of a surname.

On balance, we find that while the Examining Attorney originally made a prima facie case that CARLOW is primarily merely a surname, Applicant sufficiently rebutted the Examining Attorney’s evidence such that “we … resolve doubts in favor of … [A]pplicant and pass the mark to publication with the knowledge that others who have the same surname and use it or wish to use it for the same or similar … services can file a notice of opposition.”

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2023.

CAFC Reverses TTAB's "FL FLEX" Decision Due To Errors In Assessing the Strength of the Opposer's Marks

The CAFC vacated and remanded the Board's decision in Flex Ltd. v. Spireon, Inc., Opposition No. 91252138 (Feb. 10, 2022) [pdf here], wherein the Board found confusion likely between Spireon's mark FL FLEX for electronic devices for tracking the location of mobile assets, and Flex's registered marks FLEX, FLEX (Stylized), and FLEX PULSE for supply chain and logistics management services. The court concluded that the Board erred in its assessment of the strength of Flex's marks, both as to conceptual and commercial strength, by failing to consider all relevant evidence. The Board also erred when, in comparing the marks at issue, it mistakenly analyzed Spireon's mark against the mark FLEX PLUS instead of the correct mark FLEX PULSE. Spireon, Inc. v. Flex Ltd., 2023 USPQ2d 737 (Fed. Cir. 2023) [precedential].

Conceptual Strength: In concluding that Flex 's marks are not conceptually weak, the Board improperly discounted the probative value of 15 registered marks comprising compound terms that included "another word or letters in addition to 'FLEX.'" After excluding those marks, the Board concluded that the record evidence of third-party uses and registrations was "far less than the amount of evidence found convincing in Jack Wolfskin and Juice Generation wherein ‘extensive evidence of third-party uses’ of similar marks was shown." That exclusion of evidence was an error:

At least where the registrations and application [at issue] are for non-identical marks, as they are here, it is error for the Board to effectively disregard third-party composite marks. The composite third-party registrations are relevant to the question of whether the shared segment—in this case, “flex”—has a commonly understood descriptive or suggestive meaning in the field and whether there is a crowded field of marks in use. The composite marks have probative value and should have been included in the Board’s analysis.

The Board "compounded this error by apparently giving no weight" to Spireon’s evidence and argument that "flex"is highly suggestive because it is a shortened form of "flexible."

It seems apparent that the term “flex” “hint[s] at some attribute of the goods or services,” 2 McCarthy, supra, § 11:64 (capitalization altered), in this industry and is thus suggestive. On remand, the Board must consider all relevant evidence to determine whether Flex’s marks are conceptually weak.

Commercial Strength: The Board erred again in declining to consider third-party use of composite marks. In addition, Spireon argued that the Board should have considered two third-party registrations for the mark FLEX for supply chain and logistics management software, and a third registration for a transportation controller, even though there was no record evidence of use of the marks. This led the CAFC to a consideration of the burden of proof regarding third-party registrations.

The court observed that it is well-established that the opposer has the burden of proof in opposition proceedings, which would suggest that, once an applicant has introduced a third-party registration, opposer has the burden to show the mark is not in use. "In other words, absent proof of non-use, use could be assumed." However, "in prior cases, we and our predecessor court appear to have assumed, without explicitly stating, that in connection with the analysis of commercial strength, the burden rested on the applicant to establish that prior marks were actually in use."

The CAFC declined to address "the broader question of which party bears the burden of establishing non-use as a general matter."

This case presents the far narrower question of whether the burden of showing non-use of identical marks for identical goods rests with the opposer. We think it necessarily does. Otherwise, the opposer would be able to dismiss the commercial significance of previously registered identical marks for identical goods where the opposer’s own mark should perhaps have not been granted registration in the first place.

On remand, Flex "should be given the opportunity" to show that these identical marks are not in use. "If Flex fails to establish non-use, the commercial strength of the Flex marks must be considered weak as to Spireon’s non-identical mark."

FLEX PLUS?: Flex argued that the Board's error in considering the mark FLEX PLUS rather than FLEX PULSE was harmless error because the Board's overall analysis was supported by substantial evidence. The CAFC disagreed:

We note that FLEX PULSE is quite different from FL FLEX in appearance and sound. “Flex” appears as the first word in the FLEX PULSE mark, while it is the last word in the FL FLEX mark. On remand, the Board should analyze the correct mark, taking into account all the differences between FL FLEX and FLEX PULSE.

Read comments and post your comment here.

TTABlogger comment: Is this the beginning of a sea-change in the treatment of third-party uses and registrations?

Text Copyright John L. Welch 2023.

TTAB Affirms Section 2(e)(5) Functionality Refusal of Pen Holder Configuration

The Board upheld a refusal to register the product configuration shown below, for pen and pencil holders, concluding that the design is de jure functional under Section 2(e)(5). Examining Attorney Tarah Hardy Ludlow had (provisionally) accepted Applicant Pen Pal's Section 2(f) claim, but maintained the functionality refusal. In re Pen Pal, LLC, Serial No. 90730679 (June 22, 2023) [not precedential] (Opinion by Judge Melanye K. Johnson).

Pen Pal described the proposed mark as follows: "the three-dimensional configuration of specific design features of a pen or pencil holder; The applied-for mark comprises the exterior surface of an upper portion of the holder; The applied-for mark further comprises the rectangular base of the holder; The applied-for mark does not comprise the interior surface of the upper portion of the holder or the end portions of the slot where a pen or pencil may be inserted into the holder."

Applying the ever-popular Morton-Norwich factors, the Board began with a detailed review of Pen Pal's abandoned utility patent application. It found that "'the exterior surface of an upper portion of the holder' and 'the rectangular base of the holder' constitute essential or integral parts of the invention and offer a utilitarian advantage": the rectangular base functions to keep the holder upright, and the exterior surfaces of the upper portions of the holder serve to secure the  writing instrument in the holder so that it does not roll away from, or fall out of, the holder. "Furthermore, Applicant’s overall design is dictated by the function it performs — holding a pen, pencil, or other cylindrical writing instrument."

As to the second Morton-Norwich factor, Pen Pal's advertising touts the utilitarian advantage of its design: "Pen Pal’s design was perfected to hold a pen securely while at the same time allowing the pen to be easily inserted and removed from the holder." (emphasis by the Board).

Because the rectangular base and exterior upper surfaces of Applicant’s holder make the holder’s design functional, there was no need for the Board to consider alternative designs. And the Board considered the fourth Morton-Norwich factor to be neutral, because there was no evidence that Pen Pal's design is comparatively simple or inexpensive to manufacture.

Observing that the Morton-Norwich factors are not exclusive, the Board considered as probative a third-party website that touted the utilitarian advantages of Pen Pal's product.

Finally, Pen Pal pointed to its four design patents as presumptive proof that the proposed mark is not de jure functional. The Board, however, observed that "ownership of a design patent does not, in itself, establish that a product feature is non-functional; such ownership can be outweighed by other evidence supporting a functionality determination." Moreover, it found the patents to be non-probative because they did not disclose the same design.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Another proposed product configuration mark bites the dust. Remember that just because a feature has utility (i.e., it is de facto functional) doesn't mean that it's functional in a trademark sense (de jure functional). Did the Board apply that distinction?

Text Copyright John L. Welch 2023.

TTABlog Test: Is BILT Confusable With BUILT TO INSPIRE for Non-metal Mailboxes?

The USPTO refused to register the mark BILT for "non-metal mailboxes, excluding office products," finding confusion likely with the registered mark BUILT TO INSPIRE for, inter alia, "non-metal mailboxes." Because the goods overlap, a lesser degree of similarity between the marks is necessary to support a Section 2(d) refusal. But what about the marks? Applicant argued that the term "built" is a weak formative, and further that the marks differ in appearance, sound, connotation, and commercial impression. How do you think this came out? In re Architectural Mailboxes, LLC, Serial No. 90581763 (June 23, 2023) [not precedential] (Opinion by Judge Jonathan Hudis).

The Board considers the conceptual strength of the cited mark based on the nature of the mark itself, and its commercial strength based on its marketplace recognition. Because BUILT TO INSPIRE is registered on the Principal Register without a claim of acquired distinctiveness, it is presumed to be inherently distinctive.

Applicant argued that the term "built" is weak because many third-parties use the term in marks for furniture, citing 45 registrations in Class 20. However, six of the registrations were cancelled and the remaining 39 had little or no probative value in showing the conceptual weakness of the term "built" because they cover goods "other than, and unrelated to" non-metal mailboxes.

Nonetheless, dictionary definitions of "built" led the Board to conclude that the term "built" means "how or the manner in which Registrant’s identified goods were made, or alternatively . . . strength by the manner of construction. These are well-known meanings of the dictionary term “BUILT” to the average person, suggesting it is a weak term used in its literal sense or by its related meaning." But the Board observed that "even suggestive or weak marks are entitled to protection from the use of … similar mark[s] for legally identical … [goods]."

As to commercial strength, "Applicant did not provide any third-party use evidence that might lessen the commercial strength of Registrant’s BUILT TO INSPIRE mark, or the term “BUILT” within Registrant’s mark."

In sum, we find the cited BUILT TO INSPIRE mark as a whole to be inherently distinctive, with commercial strength being a neutral consideration. Applicant failed to provide sufficient probative evidence of the conceptual or commercial weakness of Registrant’s mark as a whole. On the other hand, we find the term BUILT within Registrant’s mark to be conceptually weak.

Turning to a comparison of the marks, the Board deemed the word BUILT to be the dominant portion of registrant’s mark, since it is the first term in the mark. Applicant did not deny that the terms BUILT and BILT are identical in sound, but it argued that BILT and BUILT TO INSPIRE are "notably different" in appearance, and distinguishable as to sound "because they have different stress patterns, structure, and different dominant acoustic features [; thus,] …[t]he marks do not sound similar because they have different dominant acoustic features and lengths." The Board was unimpressed:

The problem we have with these arguments is that a determination of likelihood of confusion is not made on a purely mechanical basis, counting the number of words, syllables or even letters that are similar or different.

Keeping in mind "the penchant of consumers to shorten marks," the Board found that the marks BUILT TO INSPIRE and BILT "appear and sound more similar than different."

As to connotation, applicant contended the “INSPIRE” in registrant’s mark connotes the characteristics of beauty and lightness. The Board observed, however, that registrant’s mark could be interpreted to mean "strength to spur one on or to guide," whereas applicant’s mark could be interpreted to mean "strength.” "These are reasons to buy non-metal mailboxes, whether they originate from Registrant or Applicant. The likely confusion between the marks, as associated with legally identical goods, is manifest." 

Balancing the relevant DuPont factors, the Board found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: How did you do? BTW: would you find that BUILT TO INSPIRE is a unitary mark with no dominant element?

Text Copyright John L. Welch 2023.

TTABlog Test: Are Personal Training Services Related to Clothing For Section 2(d) Purposes?

The USPTO refused to register the mark SRF & Design, shown here, for (inter alia) physical fitness training services, finding confusion likely with the standard character mark SRF for "shirts, sweatshirts, jackets, hoodies, hats, pants, sweatpants, sweaters, pullovers, headwear." Not surprisingly, the Board found the marks to be "very similar" in sound, appearance, connotation, and commercial impression. But what about the goods and services? How do you think this came out? In re Surf Ready Fitness, Serial No. 90548268 (June 21, 2023) [not precedential] (Opinion by Judge Christen M. English).

Applicant argued that the spacing in its mark would lead consumers to pronounce it as three individual letters, whereas the cited mark would likely be pronounced "surf." The Board was unimpressed, pointing out that there is no correct pronunciation of a mark and that applicant's mark might also be pronounced "surf." The circular design element in applicant's mark would likely be perceived "merely as an outline or carrier for the literal element of Applicant’s mark." Moreover, the cited standard character mark could be displayed in the same font as applicant's mark.

Turning to the involved goods and services, the Board pointed out that applicant originally included "t-shirts; hoodies; sweaters; pants" in its application, and claimed that its mark was in use for those goods. Its specimen of use showed a hoodie bearing its mark. During prosecution, applicant deleted those goods, "but the inclusion of clothing items in Applicant’s own application as originally filed strongly suggests that the “t-shirts; hoodies; sweaters; pants” identified in the cited registration are related to Applicant’s personal training services and blog posts, newsletters and videos in the fields of fitness, sports, exercise and nutrition." [What if the application had included machine guns? Would that make them related to fitness services? - ed.]

Furthermore, Examining Attorney James MacFarlane submitted website printouts showing seven third-parties using a single mark to identify the types of clothing covered by the cited mark, as well as Applicant’s services. He also introduced ten use-based registrations owned by different entities covering at least some of the clothing items identified in the cited registration and Applicant’s physical fitness-related services.

In rebuttal, Applicant submitted ten pairs of third-party registrations showing the same or a similar mark registered by one entity for clothing and another entity for personal fitness services. However, the Board gave this evidence little probative value. First, there was no evidence as to whether the registrants entered into any coexistence agreements or whether the marks themselves have actually coexisted in the marketplace without confusion. Second, these registrations do not negate the Office's evidence showing that sometimes the goods and service may emanate from the same source. Third, each case must be decided on its own merits.

In sum, the Board found the involved goods and services to be related for purposes of Section 2(d).

As to channels of trade, the Internet evidence revealed at least one common channel: the websites of physical fitness businesses offering clothing as well as online fitness instruction and related blogs, newsletters and videos.logs, newsletters and videos.

Applicant argued that consumers would take considerable time in choosing personal training services, but the Board found no evidence supporting that assertion. In any case, the Board must base its decision on the least sophisticated potential consumer.

Consumers of fitness services may include neophytes who may not be particularly educated about fitness and so may not exercise any particular degree of care in purchasing Applicant’s services. Similarly, the clothing items identified in the cited registration are not limited as to their nature or price and, therefore, include inexpensive, “off-the-shelf items” that may be purchased on impulse “by all manners of people.”

The Board concluded that the first, second and third DuPont factors supported a finding of likely confusion, with none of the factors weighing in applicant's favor. And so, it affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: How did you do? Is clothing related to everything else?

Text Copyright John L. Welch 2023.

Recommended Reading: Professors Farley and Ramsey: "Raising the Threshold for Trademark Infringement to Protect Free Expression"

Professor Christine Haight Farley of American University - Washington College of Law, and Professor Lisa P. Ramsey of the University of San Diego School of Law have just published an article on a very timely topic: "Raising the Threshold for Trademark Infringement to Protect Free Expression," 72 American University Law Review 1179 (2023). [Download pdf here]

Abstract

The First Amendment right to free speech limits the scope of rights in trademark law. Congress and the courts have devised various defenses and common law doctrines to ensure that protected speech is exempted from trademark infringement liability. These defensive trademark doctrines, however, are narrow and often vary by jurisdiction. One current example is the speech-protective test first articulated by the Second Circuit in Rogers v. Grimaldi, expanded by the Ninth Circuit, and recently restricted by the Supreme Court in Jack Daniel’s Properties v. VIP Products to uses of another’s mark within an expressive work that do not designate the source of the accused infringer’s products. The Rogers test prevents a finding of infringement if this use is artistically relevant to the underlying work and does not explicitly mislead consumers as to the source or content of the work. This categorical rule has definite advantages over the multi-factor likelihood of confusion test in trademark disputes involving expressive works, but—like other speech-protective doctrines—this test has limitations and shortcomings.

This Article therefore proposes an alternative test for protecting First Amendment interests in trademark law that better balances the public interest in avoiding consumer confusion against the public interest in free expression. This proposed broad trademark fair use test would apply to any informational or expressive use of words, names, or symbols claimed by another as a mark in connection with any goods or services. If this threshold requirement is satisfied, this use is not infringing unless the accused infringer’s expression is (1) a false statement about its products (including false claims of sponsorship, endorsement, or approval) or (2) is likely to mislead a reasonable person about the source of the goods, services, or message. This more holistic approach to protecting speech interests in the trademark enforcement context should increase clarity and predictability in trademark law, and will enable courts to dispose of speech-harmful claims as a matter of law early in a lawsuit.

Read comments and post your comment here.

TTABlogger comment: Also recommended: Lisa Ramsey's recent guest blog post, "Resolving Conflicts Between Trademark and Free Speech Rights After Jack Daniel’s v. VIP Products," on Professor Eric Goldmans' blog (here)

.

Text Copyright John L. Welch 2023.

TTABlog Test: Is KOKOMO for Fresh Fruits Confusable With KOKOMO for Wine?

The USPTO refused to register the mark KOKOMO for "Fresh fruits and vegetables; live plants, namely, live table grape vines; live plant material, namely, live table grape vine plant material; all of the foregoing excluding tomatoes and field corn, rye grass and perennial rye grass" in Class 31, finding confusion likely with the identical mark registered for "wine." We know that when the marks are identical, a lesser degree of similarity between the involved goods is needed to support a likelihood of confusion refusal. How do you think this one came out? In re International Fruit Genetics, LLC, Serial No. 88711163 (June 15, 2023) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The Board first observed that "[i]t is sufficient for a finding of likelihood of confusion as to a class of goods if relatedness is established for any one of the recited goods within the class." Also, applicant's identification of goods must be interpreted to include fruits used in the production of wine, such as grapes and berries.

Examining Attorney Beniam Biftu introduced two types of proof regarding the relatedness of fresh fruits and wine: marketplace evidence and third-party registrations. The former consisted of seven websites offering wine and grapes under the same mark. The latter comprised "a few use-based third-party registrations that cover both wine and fruits or vegetables under the same mark."

Moreover, wine is "[a] beverage made of the fermented juice of any of various kinds of grapes, usually containing from 10 to 15 percent alcohol by volume," and "[a] beverage made of the fermented juice of any of various other fruits or plants." "Thus, Registrant’s goods are made from 'fresh fruit' such as Applicant has identified, making them commercially related."

Applicant argued that its "table grapes" are distinguishable from "wine grapes," contending that “[t]he cited registrant would not use Applicant’s table grapes to make its wine," and further that in the website references the grapes are sold in bulk to winemakers. "However, these arguments overlook that the application lists 'fresh fruit,' and because we must 'give full sweep' to Applicant’s identification, we cannot limit it to any particular type of fruit, much less any specific type of grapes."

As to channels of trade, the record evidence showed that "vineyards and wineries sell their wines, as well as fruits, at the same establishments, to some of the same consumers." Applicant's attempt to read limitations into the cited registrations was, of course, improper.

Applicant argued that it sells “table grapes,” whereas wineries sell “wine grapes” in bulk to winemakers. However, there were no such limitations in the application or the cited registrations: “these arguments overlook that the application lists ‘fresh fruit,’ and because we must ‘give full sweep’ to Applicant’s identification, we cannot limit it to any particular type of fruit, much less any specific type of grapes.”

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: How did you do? Do you agree with the outcome?

Text Copyright John L. Welch 2023.

TTABlog Test: Is BLACK INK for Coffee Beans Confusable With BLACK INK for Alcoholic Beverages?

The USPTO refused to register the mark BLACK INK for "Coffee beans; Roasted coffee beans; Coffee-based beverages; Ground coffee beans; Green coffee; Unroasted coffee; coffee pods; coffee in pouches for brewing," finding confusion likely with the identical mark registered for "Alcoholic beverages except beers; Wines." We know that when the marks are identical, a lesser degree of similarity between the involved goods is needed to support a likelihood of confusion refusal. But wine and coffee? How do you think this one came out? In re Black Ink Coffee Company, LLC, Serial No. 88570051 (June 16, 2023) [not precedential] (Opinion by Judge Martha B. Allard)

Examining Attorney Pauline Ha made of record 15 third-party webpages demonstrating that the same entity commonly offers both alcoholic beverages (except beer) or wine and also coffee, or other coffee-based goods, under the same mark (including KAHLUA, STARBUCKS, and JACK DANIEL'S). She also submitted 15 third-party, use-based registrations that cover the goods of both applicant and registrant. Based on this evidence, the Board found that the involved goods are commercially related.

The applicant pointed to three prior Board decisions in which certain alcoholic beverages were found not to be related, arguing that if these beverages are not related, then coffee and alcoholic beverages cannot be related. The Board brushed that argument aside, observing that it must decide this appeal based on the record before it. 

Applicant also submitted a list of "500 registrations where 250 identical marks were allowed to be registered for beer/wine/alcohol to one party and coffee and coffee-based goods to another[.]” Again, the Board pointed out that it must decide this appeal based on the current record. The Board also noted that at least one pair of registrations seem to be owned by the same entity, and other supposed identical marks were not identical. Other registrations listed "tea" or "ice milk," not coffee. In any event:

Regardless, Applicant’s third-party registrations have less probative value than the Examining Attorney’s third-party registration evidence because there is no requirement that for goods to be related that all or even a majority of the sources of one good must also be sources of the other goods. Therefore, evidence showing only that the source of one good sometimes may not be the source of other goods does not aid Applicant in its attempt to rebut the Examining Attorney’s evidence.

The Board concluded that applicant’s third-party registration evidence was outweighed by the Office's third-party registration and marketplace use evidence, which established that "Applicant’s coffee-based goods are commercially related to 'alcoholic beverages except beer; wine.'"

Balancing the DuPont factors, the Board found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: How did you do? Do you agree with the outcome?

Text Copyright John L. Welch 2023.

Precedential No. 18: BOYS WORLD Functions Not Only as the Name of a Musical Group, But Also as a Trademark

The Board reversed a failure-to-function refusal of BOYS WORLD for "audio recordings featuring music," ruling that the term not only identifies the musical group but also serves as a trademark for the group's recordings. In re ZeroSix, LLC, 2023 USPQ2d 705 (TTAB 2023] (Opinion by Judge Michael B. Adlin).

Sometimes an artist’s name may simply identify the source of the performance contained on the record, which is not enough to establish that the artist’s name functions as a mark for the recording. In re Polar Music, 221 USPQ at 318. "Typically, in order to function as a mark for recordings, a performing artist’s name must be used for a series of recordings." Id. (citing In re Cooper, 254 F.2d 611, 117 USPQ 396, 400 (CCPA 1958). There must also be evidence "that the name functions as a mark."

This may be shown by providing evidence of the sort presented in Polar Music, i.e. evidence establishing that the author controls the quality of her distributed works and controls use of her name, so as to indicate the quality of those works; or it may be shown, akin to the showing in Scholastic, by submitting evidence of promotion and recognition of the author’s name so that prospective readers, when they see the name, know what they are getting. Scholastic, 23 USPQ2d at 1778. In addition, evidence of promotion and recognition of the author’s name would have to be of the type that would identify the author as the source of the series of works.

The Examining Attorney conceded that the first element - evidence of a series of works - was satisfied. The Board then reviewed the record with regard to promotion and recognition of BOYS WORLD as a source indicator for the series of recordings. 

Apple Music and Amazon Music listings, the group's YouTube page, numerous social media pages, and the group's website prominently display the BOYS WORLD mark and provide access to the group's recordings. Articles in Billboard and People Magazine contributed to the widespread recognition of BOYS WORLD and Applicant’ s identified goods that bear the BOYS WORLD mark. 

Boys World is consistently identified − by streaming services and social, print and web media as the source of BOYS WORLD audio recordings featuring music. This is not surprising because BOYS WORLD has been heavily promoted and widely recognized as the source of the group’s music. As a result, consumers “know what they are getting” when the y purchase BOYS WORLD “audio recordings featuring music." Thus, BOYS WORLD functions as a mark.

And so, the Board found that BOYS WORLD functions as a trademark for the group's recordings, and it therefore reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Why precedential? Seems to be a combination of Polar (the ABBA case) and Scholastic (THE MAGIC SCHOOL BUS).

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 84% 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 Nanjing Linkwifi Network Technology Co., Ltd., Serial No. 79223580 (June 9, 2023) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon ). [Refusal to register WIFI MASTER KEY for “computer software for searching for wireless internet connectivity, wirelessly connecting to the internet, and sharing access to wireless internet connectivity," wireless broadcasting; message sending; providing access to databases; computer aided transmission of messages and images; providing user access to global computer networks, software as a service (SaaS) services featuring software for searching for wireless internet connectivity" and "wireless broadcasting; message sending; providing access to databases; computer aided transmission of messages and images; providing user access to global computer networks" [WIFI disclaimed], in view of the registered certification marks WI-FI, in standard form, and WIFI in the design form shown below, for "Computer hardware and peripherals, namely, wireless local area networking products."

In re Automatic Equipment Manufacturing Co. d/b/a Blue Ox, Serial No. 90479241 (June 12, 2023) [not precedential] (Opinion by Judge Jonathan Hudis) [Refusal to register the mark TRACKPRO for "weight-distributing trailer hitches for towed vehicles," in view of the registered mark TRAC-PRO for "structural parts for industrial engines for land vehicles and structural parts for industrial land vehicles; structural parts for tractors and structural parts for tractor engines."]

In re Seton Hall Preparatory School, Serial Nos. 90459031 (June 13, 2023) [not precedential] (Opinion by Judge Cheryl S. Goodman) [Refusal to register SETON HALL PREP for "Educational services, namely, conducting classes, courses, seminars, workshops and conferences in the field of high school preparatory education, including sports, art, and theater, and distribution of educational materials in connection therewith" [PREP disclaimed], in view of the registered mark SETON HALL UNIVERSITY for, inter alia, "Educational services, namely, conducting lectures, courses, workshops, seminars and conferences at the university undergraduate, graduate and post-graduate levels, and conducting extension courses and community service lectures and workshops" [UNIVERSITY 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 Issues a "Final Pretrial Conference Assignment Order" in Red Bull Opposition

As discussed in a March TTABlog post [here], the TTAB has implemented a pilot program for holding a Final Pretrial Conference in selected cases. The Board will focus on cases with large or unwieldy records, "overly contentious" proceedings, and cases in which the parties or counsel are unfamiliar with TTAB practice. The parties will be required to file a detailed Final Joint Pretrial Order setting forth the issues, witnesses, exhibits, objections, etc., etc.

The goal of the program is to better manage and streamline opposition and cancellation proceedings that proceed to trial, in order to save time and resources of parties and the TTAB, and to foster the effective and efficient presentation of evidence.

As an example of a Pretrial Conference Order, see the "Final Pretrial Conference Assignment Order" [pdf here] in Opposition No. 91264945 (Red Bull GmbH v. Lenzke), a seemingly run-of-the-mill case involving several design marks, with no particular complications, and an individual defendant.

Nonetheless, the Order is nineteen pages long, including a template for the detailed Final Pretrial Order that will be the product of the conference.

As I previously stated, I am not looking forward to this program. The only time it might be helpful would be in a really complicated case (rare). Mostly, it will drive up costs and benefit the party with deep pockets.

Read comments and post your comment here.

Text Copyright John L. Welch 2023.

TTAB Finds Supplements Related to CBD Cosmetics, But Not to Candles or Vape Pens

The Board rendered a split decision in this appeal from a Section 2(d) refusal of the mark LOVA for "Non-medicated facial serum; body oil; non-medicated body balm; hemp-infused cosmetic and bath products, namely, bath bombs; any hemp and CBD in the goods being solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis" in Class 3, and for hemp-infused candles (Class 4) and vape pens (Class 34). The USPTO found confusion likely with the registered mark LOVA NATURALS for "dietary supplements; nutritional supplements" in Class 5 (NATURALS disclaimed). The Board upheld the refusal as to the Class 3 goods, but reversed as to the candles and vape pens. In re Pioneer IP Interests LLC, Serial No. 88637739 (June 7, 2023) [not precedential] (Opinion Judge David K. Heasley).

Applicant argued that its class 3 goods are limited to CBD (hemp) products, whereas the cited registration makes no reference to CBD, which "makes all the difference in distinguishing the respective goods." Moreover, if the registrant's class 5 products contained CBD they would be unlawful under the Controlled Substances Act and could not be encompassed by the cited registration. Examining Attorney Tasneem Hussain maintained that the registration contains no limitation as to ingredients and could cover CBD-containing supplements.

A key issue . . . is whether Registrant’s identified “dietary supplements” and “nutritional supplements” may be construed to contain CBD or other forms of hemp, similar to that included in Applicant’s cosmetic products, candles, and vape pens.

The Board acknowledged the principle that a registration cannot be construed to encompass illegal goods (see, for example, Satinine Societa v. P.A.B. Produits, 209 USPQ 958 (TTAB 1981)). However, it observed that it is not illegal for supplements to contain hemp.

Because Cannabis-derived products meeting the “stalks and seeds” exception were lawful both before and after the Farm Bill became law, the cited Registration can be construed to contain those non-CBD “hemp” ingredients lawfully, without changing its application filing date or adding the “not less than 0.3% THC” language.

Comparing the involved goods (as so construed), the Board found that registrant offers its supplements for “beauty repair” and claims that its product diminishes wrinkles and reduces cellulite, among other skincare benefits. Thus, the goods have "shared cosmetic purposes."

The Board also found "some overlap in channels of trade: two of the third-party websites offer both CBD-based cosmetics and non-CBD based supplements, as does one of the third-party registrations."

Consequently, when we compare Applicant’s cosmetics with Registrant’s supplements, we find that “the respective products are related … and … the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.

It was a different story as to applicant's candles and vape pens. "Overall, neither the rationales nor the third-party evidence advanced by the Examining Attorney establish that Applicant’s candles and vape pens are related to Registrant’s dietary and nutritional supplements in the mind of the purchasing public, or that the same purchasing public would shop for them and encounter them in the same channels of trade."

And so, the Board affirmed-in-part and reversed-in-part.

Read comments and post your comment here.

TTABlogger comment: Note the Board's reliance on extrinsic evidence regarding the use of registrant's products for cosmetic purposes.

Text Copyright John L. Welch 2023.

USPTO Issues Notice of "Data Security Incident" Involving Applicant Domicile Information

The USPTO recently announced that a data security incident has impacted domicile information "in certain trademark filings between February 2020 and March 2023." Notice of the incident (set out below) was sent to the listed contact in these affected applications.

Notice of Data Security Incident

Dear valued customer,

The United States Patent and Trademark Office (USPTO) recently identified a data security incident that impacted domicile information in certain trademark filings between February 2020 and March 2023. You are receiving this notice because your email address is listed as the contact for the trademark owner in at least one of these applications.

There is no action you need to take with the USPTO, but in the interest of full transparency, we are bringing this matter to your attention.

What happened and what information was involved?

U.S. trademark law requires applicants to include their domicile addresses in trademark applications. This helps us determine if applicants are required to hire a U.S.-licensed attorney to represent them before the USPTO. The U.S. counsel requirement is an important tool in combatting fraudulent trademark filing activity.

On February 24, 2023, we discovered that domicile addresses that should have been hidden from public view appeared in records retrieved through some application programming interfaces (APIs) of the Trademark Status and Document Review system (TSDR). These APIs allow different software applications in and outside the USPTO to programmatically retrieve data.

Further investigation showed that the same domicile addresses also appeared in bulk data products found on https://bulkdata.uspto.gov. These data files are typically used in academic and economic research.

At no point did the impacted domicile addresses turn up in regular TSDR searches on the USPTO website.

Importantly, this incident was not the result of malicious activity, and we have no reason to believe that your domicile information has been misused. Nevertheless, we take all data security concerns seriously, and we apologize for our mistake.

How we addressed the issue

When we discovered the issue, we blocked access to all USPTO non-critical APIs and took down the impacted bulk data products until a permanent fix could be implemented.

By March 31, 2023, we had fully fixed the issue by: • Replacing the affected bulk data files with new versions that omit domicile addresses • Identifying the data masking deficiency that caused the exposures, correcting it, and successfully testing the fix Since April 1, 2023, domicile addresses are properly masked, and all vulnerabilities have been corrected.

What you should be aware of

We will not send additional notices or communications regarding this incident. If you’re contacted about the incident by anyone you believe is impersonating the USPTO or is otherwise trying to scam you, please report it to TMdomicile@uspto.gov.

For more information

If you have any questions or concerns, please email TMdomicile@uspto.gov.

Sincerely,

Jamie Holcombe USPTO Chief Information Officer and Chief Privacy Officer

Read comments and post your comment here.

Text Copyright John L. Welch 2023.

Parody at the TTAB: Does the Supreme Court's "Bad Spaniels" Ruling Change the Game?

You may have heard that the Supreme Court issued its decision in the "Bad Spaniels" case yesterday [pdf here], vacating the Ninth Circuit's decision that, inter alia, had immunized VPI from trademark infringement under Rogers v. Grimaldi. The Court ruled that, since VPI was (concededly) using its comedic design as a source indicator, Rogers did not apply. Therefore, the Ninth Circuit was wrong in reversing the district court's finding of likelihood of confusion.

However, the Court also said that the comedic nature of the dog toy should be taken into account in the likelihood-of-confusion analysis:

Yet to succeed, the parody must also create contrasts, so that its message of ridicule or pointed humor comes clear. And once that is done (if that is done), a parody is not often likely to create confusion. Self-deprecation is one thing; self-mockery far less ordinary. So although VIP’s effort to ridicule Jack Daniel’s does not justify use of the Rogers test, it may make a difference in the standard trademark analysis.

Consider, now, the TTAB's treatment of the parody defense. The Board has long held that parody is a viable defense in a likelihood of confusion analysis only if the involved marks are otherwise not found confusingly similar. See Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1592 (TTAB 2008) (“In finding that the marks are not similar, we have given no weight to applicant's argument that his mark is a parody. Parody is not a defense if the marks would otherwise be considered confusingly similar.”); Nike, Inc. v. Maher, 100 U.S.P.Q.2d 1018, 1023 (TTAB 2011) (“[P]arody is not a defense if the marks would otherwise be considered confusingly similar.”)

So now what will the Board do? Will it continue to give "no weight" to parody? Will it follow the Court's lead? Does it have to?

Read comments and post your comment here.

Text Copyright John L. Welch 2023.

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

So far this year, by my count, the TTAB has affirmed 31 of 33 Section 2(e)(1) mere descriptiveness (or disclaimer) refusals. How do you think the three appeals summarized below came out? Results will be found in the first comment.

In re Sensory Path Inc., Serial No. 88667617 (May 31, 2023) [not precedential] (Opinion by Judge David K. Heasley) [Requirement to disclaim the words THE SENSORY PATH in the mark shown below, for "interactive decals with permanent adhesive backing, designed for use by children to improve cognition and other skills."]

In re Skiposters.com, Serial No. 90239860 (June 2, 2023) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon). [Section 2(e)(1) mere descriptiveness refusal of SKIPOSTERS.COM, in slightly stylized form, for "On-line retail store services featuring photographs and artwork" and "Printing; Printing services."]

In re Radical Marketing LLC, Serial No. 90381196 (June 6, 2023) [not precedential] (Opinion by Thomas W. Wellington). [Mere descriptiveness refusal of the proposed certification mark shown below, for "foods, beverages, and food products" (IRRITABLE BOWEL SYNDROME 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 Grants ARTNCRAFT Cancellation Petition: Respondent's Amazon Take-Down Notice Excused Petitioner's Subsequent Nonuse

The Board granted a petition to cancel a registration for the mark ARTNCRAFT for, inter alia, ceramic knobs and pulls, finding confusion likely with petitioner's identical, prior-used common law mark for overlapping goods. Respondent claimed that petitioner abandoned his mark through nonuse for a period of three years, beginning in 2019. But the Board found the nonuse excusable because it resulted from respondent's Amazon take-down notice. Vardhman Sancheti v. Bhupendra Tekwani DBA Artncraft, Cancellation No. 92077340 (June 5, 2023) [not precedential] (Opinion by Judge Cynthia C. Lynch).

In April 2019, respondent sent a Take-Down Notice to Amazon.com stating that petitioner's use of the mark ARTNCRAFT was an infringement of its registered trademark rights, and demanding removal of petitioner's goods from Amazon.com. Amazon complied, and the petitioner has been barred from posting his goods on Amazon. 

The Board sided with petitioner:

Even though Petitioner discontinued his use in the U.S. in 2019, where discontinued use is “occasioned by” enforcement activity such as Respondent’s takedown, the discontinuation of use does not reflect an “intent to abandon the mark,” particularly where the aggrieved party engages in “vigorous efforts” to defend itself, as Petitioner has done here by instituting this cancellation proceeding. *** Petitioner’s testimony and Respondent’s admission regarding Respondent’s enforcement activity against Petitioner suggest that Petitioner was justified in postponing his use of the mark pending the outcome of this proceeding.

The Board concluded that petitioner’s use "has been sufficiently ongoing and consistent to satisfy his burden of proof of priority." From there it was a hop, skip, and jump to a finding of likelihood of confusion.

And so, the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Perhaps the respondent should have done some investigation before sending that take-down notice.

Text Copyright John L. Welch 2023.

TTABlog Test: Is EL BURRO BORRACHO Confusable WIth EL BURRO for Restaurant Services?

El Burro, Inc. petitioned to cancel a registration for the mark EL BURRO BORRACHO, claiming priority and likelihood of confusion with its registered mark EL BURRO, both for restaurant services. Well, the marks are awfully close and the services identical, so this looks like a no-brainer, right? What do you think? El Burro, Inc. v. Knuckle Sandwich LLC, Cancellation No. 92075933 (May 26, 2023) [not precedential] (Opinion by Judge Frances S. Wolfson).

The filing date of the application that matured into Petitioner’s EL BURRO registration (February 11, 2011) preceded the September 9, 2014 filing date of the application that matured into Respondent’s registration as well as Respondent’s first use date, and so Petitioner had priority of use.

Although the services of the parties are identical, Respondent argued that the trade channels are different because each party would  offer its services only within its own establishment, and never “side-by-side.” The Board pointed out, however, that "[w]hether services would be offered “side-by-side” is not the test, but even if it were, there is no evidence to support this contention. Because Petitioner and Respondent offer identical services, we must presume that the services move through the same channels of trade and are sold to the same classes of purchasers."

Regarding classes of consumers, the evidence showed that each party’s restaurant is intended to appeal to the same classes of purchasers, namely members of the general public who enjoy Mexican-style cuisine. 

As to the marks, the Board concluded that, even though EL BURRO is the lead element in Respondent’s mark, it is not the dominant portion of the mark. "Consumers are as likely to recall the alliteration of BURRO BORRACHO and may equally remember these two words as they would the term EL BURRO."

As to connotation, the word “burracho” means “drunken” in Spanish. Petitioner’s mark connotes an ordinary donkey, while Respondent’s mark connotes "a whimsical, that is, a drunken donkey." "Nonetheless, both marks bring to mind the idea of this specific pack animal. The marks are thus similar in meaning. And because BORRACHO simply serves to modify the type of BURRO involved, the marks create a similar overall commercial impression." And so, the first DuPont factor favored the petitioner.

Turning to the strength of petitioner's mark, respondent contended that EL BURRO is “intrinsically weak” because it identifies a Mexican-style restaurant, and commercially weak because of the existence of eleven third-party vendors who use EL BURRO, alone or with other words, for Mexican-style restaurants: EL BURRO TACO SHOP, EL BURRO PICANTE, EL BURRO, EL BURRO VELOZ, EL BURRO LOCO (four times), EL BURRO POLLO, EL BURRO MEXICAN GRILL, and LOCO BURRO.

The Board found EL BURRO to be inherently strong. There was no evidence that the term suggests a Mexican restaurant, or any cuisine from a Spanish-speaking country. As to commercial strength, however, that was a different story.

After careful consideration of the evidence, we find that Petitioner has not shown its mark to be commercially strong. To the contrary, we find under DuPont factor six that Respondent has shown Petitioner’s EL BURRO mark to be commercially on the weaker side of the spectrum. We find the prevalence of these similar marks weighs strongly against a finding of likelihood of confusion.

The Board deemed the sixth DuPont factor to be dispositive: "The sixth DuPont factor thus outweighs the other factors that favor likelihood of confusion. In other words, the mark EL BURRO BURRACO [sic!] does not so resemble EL BURRO that when used in association with restaurant services within such a crowded field confusion, mistake, or deception is likely."

And so the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Is the evidence of eleven third-party uses sufficient when there was apparently no proof of the extent of use of the third-party marks?

Text Copyright John L. Welch 2023.

TTAB Sustains Opposition to "PET C COLA" for Animal Supplements, Finding Likely Diluton of . . . . Guess What Famous Mark?

This quixotic attempt to register PET C COLA, in standard form, as a trademark for animal supplements was swept aside by Opposer PepsiCo, owner of the "exceedingly famous" mark PEPSI-COLA for soft drinks. Applicant's "test mode"  website indicated that it would be marketing itself as “the pet drink specialist” and it asserted that "Pet C Cola is the nutritional and super tasty drink for dogs and cats." "Applicant’s adoption of a color, font, and stylization with virtually identical elements to those used by Opposer for its PEPSI-COLA script mark is 'eyebrow raising,' ... and is strong evidence of Applicant’s intent to copy and create an association with Opposer’s mark." And so, the Board sustained Pepsico's Section 43(c) dilution-by-blurring claim.  PepsiCo, Inc. v. Pet C Cola Corporation, Opposition No. 91255530 (June 1, 2023) [not precedential] (Opinion by Judge Robert H. Coggins).

Opposer has continuously advertised and sold beverages under the mark PEPSI-COLA since 1898. It has frequently partnered with celebrities to market its PEPSI-COLA brand beverages, and has advertised during the Super Bowl, Academy Awards, Golden Globes, and Grammy Awards. Its Facebook page has more than 37 million followers, its Twitter account more than 3 million followers, and its Instagram page almost 2 million followers. Between the years 2017-2021 the PEPSI-COLA brand has fluctuated between being the 22nd and 28th best global brand. In sum, the evidence demonstrated that Opposer "has been an incredibly successfully business, and has for decades been a part of mainstream popular culture in the United States."

In order to prevail on its claim of dilution by blurring, Opposer had to prove that:

• (1) Opposer owns a famous mark that is distinctive,
• (2) Applicant is using a mark in commerce that allegedly dilutes Opposer’s famous mark,
• (3) Applicant’s use of its mark began after Opposer’s mark became famous, and
• (4) Applicant’s use of its mark is likely to cause dilution by blurring.

As to the Factor 1, there was no question that the PEPSI-COLA mark is distinctive. In determining whether the PEPSI-COLA mark is "famous" for dilution purposes, the Board found the evidence regarding advertising and publicity to be "overwhelming" and there was no doubt that PEPSI-COLA "is among the most widely recognized brands in the United States." In short, "by any and all measures" the mark is "exceedingly famous."

As to Factor 2, the fact that applicant has not used its mark in commerce "is of no moment." "[A]n application based on intent to use a mark in commerce under Trademark Act Section 1(b) satisfie[s] the commerce requirement." And as to Factor 3, there was no question that the  PEPSI-COLA mark became famous long before Applicant’s constructive use date of August 14, 2019.

As to Factor 4, the Board looked to Section 43(c)(2)(B)(i-vi) in considering:

• (i) the degree of similarity between Applicant’s mark and Opposer’s famous mark;
• (ii) the degree of inherent or acquired distinctiveness of Opposer’s mark;
• (iii) the extent to which Opposer’s is engaging in substantially exclusive use of its mark;
• (iv) the degree of recognition of Opposer’s mark;
• (v) whether Applicant’s intended to create an association with Opposer’s PEPSI-COLA mark; and
• (vi) any actual association between Applicant’s mark and Opposer’s mark.

Comparing the involved marks, the Board found that "the appearance of the marks overall is sufficiently similar that Applicant’s mark will 'trigger consumers to conjure up’ Opposer's famous mark. That is, consumers encountering Applicant's mark will immediately be reminded of Opposer’s famous [PEPSI-COLA] mark and associate the two."

The Board also found the PEPSI-COLA mark to be highly distinctive, and its use by Opposer "substantially exclusive." In fact, there was no evidence of "any third-party use of marks that would reduce the degree of Opposer's exclusivity of use." Moreover, the PEPSI-COLA mark is "extremely famous and widely recognized by the consumer public," a factor weighing heavily in Opposer's favor.

 

As to applicant's intent, there was no direct evidence that applicant intended to associate its mark with the PEPSI-COLA mark, but its intent may be "inferred from its slavish copying of Opposer's PEPSI-COLA script mark." "Applicant’s adoption of a color, font, and stylization with virtually identical elements to those used by Opposer for its PEPSI-COLA script mark is 'eyebrow raising,'"

There are countless ways in which Applicant could display its mark on its website, including other ways to wrap the mark around a dog to incorporate the dog within the lettering,65 but its choice to display the mark in a script that immediately conjures up the famous PEPSI-COLA script mark supports an inference that Applicant’s desire was to have its mark stand out because of its striking similarity to Opposer’s famous mark. Equally notable is the striking similarity in the sound of Applicant’s mark to Opposer’s PEPSI-COLA mark when pronounced.

The Board therefore found that applicant was attempting to trade on the goodwill and fame of the PEPSI-COLA script mark.

Finally, since the opposed application was filed on an intent-to-use basis and applicant stated that it has not yet offered for sale any products bearing the mark. "there has been a limited opportunity for the public to make any actual association between the parties’ . . . marks." The Board deemed this factor neutral.

And so, the Board sustained Opposer's dilution-by-blurring claim.

Read comments and post your comment here.

TTABlogger comment: The take-away: don't dilute Pepsi.

Text Copyright John L. Welch 2023.

Free Webinar June 7th: Strand and Welch "Trademark Year in Review" (New York CLE Credit)

On June 7th from 12:00 - 1:00PM, Wolf Greenfield will host a webinar entitled “Trademark Year in Review: Key Developments in the Courts and at the TTAB.” John Strand and John Welch will provide a summary and analysis of the past year’s most important trademark cases in the courts and at the TTAB. CLE Credit is available in New York. Register here.

Mr. Strand will focus on recent and upcoming court rulings, while yours truly will discuss .... wait for it .... TTAB developments!

Read comments and post your comment here.

TTABlog Test: Is RAILROAD RUM for Distilled Spirits Confusable with RAILROAD RED for Wine?

The USPTO refused to register the proposed mark RAILROAD RUM for "distilled spirits" (RUM disclaimed), finding confusion likely with the registered mark RAILROAD RED for "wines" (RED disclaimed). The Board found the marks to be confusingly similar, since they both are dominated by the word RAILROAD, the first and only distinctive word in each mark. But what about the goods? How do you think this came out? In re Wild West Spirits, LLC, Serial No. 90540784 (May 30, 2023) [not precedential] (Opinion by Judge Christen M. English).

Examining Attorney Olivia Lee submitted third-party website evidence showing that "some third-parties use the same mark to identify distilled spirits and wine." Applicant Wild West feebly criticized this evidence as “extrinsic," but the Board pointed out that evidence of third-party use of a single mark to identify both an applicant’s and registrant’s goods is commonly used to establish relatedness.

Wild West further asserted that the Examining Attorney introduced “a handful of cherry-picked” and “obscure” examples of relatedness, but the Board found that the evidence provided "a reasonable predicate supporting the Examining Attorney’s position on relatedness and shift[s] the burden to Applicant to rebut the evidence with competent evidence of its own."

Wild West also attacked the evidence as failing to demonstrate that “rye whiskey” and “red wine” are “regularly or predominantly sold” under the same marks. According to Wild West, "it is common knowledge that the vast majority of wine brands do not also sell rye whiskey or distilled spirits -- and vice versa, well known rye whiskey brands do not also sell red wines." However, as the Board pointed out, the application at issue is not limited to rye whiskey.

Lastly, Wild West asserted that the identified goods themselves are different, but the Board was not impressed. The issue at hand “is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of these goods"

Because neither the application nor the cited registration includes limitations as to trade channels or classes of purchasers, the Board must presume "that the involved goods move in all the normal channels of trade for such goods – liquor stores, bars, restaurants and online retailers – and flow to the same classes of purchasers. Moreover, the same third-party Internet evidence referenced above demonstrates that wine and distilled spirits may be encountered by the same classes of consumers under the same marks in at least one common trade channel – the websites and physical locations of wineries and distilleries, i.e., producers and sellers of wine and distilled spirits."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA? Note that there is no per se rule that all alcoholic beverages are related. It just turns out that way.

Text Copyright John L. Welch 2023.