TTAB Posts August 2023 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled nine oral hearings for the month of August 2023. All hearings will be held via video conference except for the third hearing, which will be "In Person." Briefs and other papers for each case may be found at TTABVUE via the links provided.

August 3, 2023 - 11 AM: 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, consulting, advertising, business management, commercial design, and barber shop services.]

August 3, 2023 - 1 PM: Mealpass, Inc. v. Mealpal, Inc., Cancellation No. 92077915 [Petition for cancellation of a registration of the mark MEALPASS for "online marketplace that offers a membership plan to select and purchase lunch from participating restaurants," on the ground of abandonment.] 

August 8, 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."]

August 9, 2023 - 11 AM: 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 likelihood of confusion with the identical mark allegedly used first by the opposer for the same services.]

August 9, 2023 - 1 PM: In re First Automotive Service Corporation, Serial No. 90328106 [Section 2(d) refusal of KEEPING YOU ON THE ROAD for "Third-party extended warranty services, namely, vehicle service contracts on vehicles manufactured by others for mechanical breakdown and servicing; insurance services, namely, underwriting and administration of extended warranty contracts in the field of automobiles," in view of the registered mark NVP WARRANTY KEEPING YOU ON THE ROAD! & design for "extended warranty services, namely, service contracts; Providing extended warranties on motor vehicles, namely, extended service contracts covering mechanical breakdown or failure in which a vehicle dealer will provide repairs.]

August 10, 2023 - 1 PM: K2 Sports, LLC v. Joyride Snowboards LLC, Opposition No. 91263939 [Opposition to registration of JOYRIDE SNOWBOARDS for "snowboards" [SNOWBOARDS disclaimed] on the ground of likelihood of confusion with the registered mark RIDE for snowboards and accessories.]

August 17, 2023 - 2 PM: Graco Minnesota Inc. v. Zhejiang Rongpeng Air Tools Co., Ltd., Opposition No. 91247343 [Opposition to registration of AEROPRO for "Coffee grinders, other than hand-operated; Compressed air machines; Electric hand-held drills; Electric nail extractors; Fertilizer distributing machines, other than hand-operated implements; Glue guns, electric; Lifting jacks other than hand-operated; Machine tools for forming, riveting, swaging, and flaring of metal and plastics; Mufflers for motors and engines; Painting machines; Pumps for machines; Rivet guns; Vacuum pumps," in view of the registered mark AIRPRO for paint spray guns, air spray guns, manual air spray guns, and automatic air spray guns.]

August 29, 2023 - 1 PM: In re ProSys Information Systems, Inc., Serial Nos. 88962334 [ refusal of PROSYS & globe design for, inter alia, "Online retail store services in the field of bundled information technology products in the nature of hardware and software" and for "consulting services in the fields of selection, implementation, integration and use of computer hardware and software systems for others," in view of the registered mark PROSYS & design for “Software as a service (SAAS) services featuring software for assessing risk and compliance in supply chains; Design and development of software for assessing risk and compliance in supply chains; Consulting services in the field of vendor management solutions software as a service (SAAS); Planning, design and management of information technology systems comprised of computer software for vendor management solutions; Providing temporary use of online, non-downloadable enterprise software for vendor and supply chain management.”]

August 30, 2023 - 1 PM: Four Seasons Brands, LLC v. Kirstie L. Crivello, Opposition No. 91233211 [Opposition to registration of FOUR SEASONS OUTDOOR LIVING CO. & design for "Construction consultation," on the ground of likelihood of confusion with the mark FOUR SEASONS and formatives thereof for patio covers, liferooms, pergolas, pool enclosures, carports, screens, awnings, windows, decking, patio rooms, greenhouses and solariums and for the sale, manufacture, design, construction (including construction related services such as provision of and/or assistance with engineering drawings, engineering consultation and technical support), and installation thereof.]

 

Read comments and post your comment here.

TTABlog comment: See anything interesting? Any WYHA?s, WYHO?s, etc.

Text Copyright John L. Welch 2023.

LEGO Attacker Hits Brick Wall: TTAB Denies Genericness Petitioner's Motion for Judgment or Other Sanctions

In a 46-page Order, the Board denied Petitioner Zuru LLC's motion for sanctions and for further discovery in this cancellation proceeding based on the alleged genericness of the mark LEGO for toy building blocks. Zuru argued that the requested relief was warranted in view of Respondent Lego’s purported misconduct related to its responses to Zuru’s discovery requests. The Board found neither spoliation nor "discovery fraud," but it pointed out that Lego "was nonetheless not as cooperative as it could have been during the discovery period, which contributed to the delay in this proceeding." Zuru LLC and Zuru Inc. v. Lego Juris A/S, Cancellation No. 92075254 July 24, 2023) [not precedential] (Order by Interlocutory Attorney Elizabeth J. Winter).

Zuru claimed that Lego “made threats [to dictionary publishers] to induce changes to relevant evidence” and sought to “scrub the world of evidence proving that [‘lego’ had become generic]." Furthermore, Lego allegedly failed to timely inform Zuru of its letter-writing campaign, even though the existence of the campaign was “directly responsive to [Petitioners’] discovery requests." Zuru also asserted that Lego had a duty to preserve the dictionary definitions as they existed previously.

Zuru sought entry of judgment against Lego, but the Board found that request premature since Lego had not defied a Board Order relating to discovery, nor had it filed numerous frivolous motions, failed to meet and confer with Petitioners, taxed Board resources, or submitted fabricated evidence.

As an alternative, Zuru requested sanctions in the nature of the entry of certain evidentiary presumptions against Lego and the striking of any expert opinion offered by Lego‘s expert witness. It based this request primarily on the claim that Lego engaged in spoliation of evidence, and in "discovery fraud" by hiding the dictionary letters from Zuru and from Lego’s own expert witness.

The Board, however, found nothing wrong in Lego writing to dictionaries asking them to alter their on-line definitions of the term “Lego.”

As a general matter, a trademark owner is not only entitled to police others’ use of its registered mark, but its failure to prevent widespread improper, generic use of its mark may subject the trademark owner to a determination that it has abandoned its mark.

As for alleged spoliation based on Lego's failure to preserve copies of the dictionaries’ previous definitions of “Lego," the Board was equally unimpressed. It noted that "as a threshold matter, to sanction a party for destroying or altering evidence held and altered by a third party, the party alleging spoliation must show that its adverse party had a duty, i.e., the ability, to preserve or alter the evidence." The Board concluded that Lego had no duty to preserve the dictionary definitions.

As for "discovery fraud," the Board reviewed Lego's litigation conduct in detail, considering particularly whether Lego failed to timely disclose or supplement its discovery production with its 13 letters to dictionary publishers and whether it misled Zuru regarding whether Lego had already produced all documents relating to its efforts to prevent generic use or misuse of "Lego."

The Board found Lego's discovery responses to be proper in view of its reasonable construction of Zuru's requests. Moreover, Lego provided documentation showing that its late disclosure of the dictionary documents was "unintentional."

Although Respondent did not disclose the evidence of its letter-writing campaign for over one year, delayed disclosure, as in this case, is not equivalent to actively misleading the adverse party as to the non-existence of documents, destroying evidence, making a false representation to the Board, or submitting a false document to the Board, which are generally the types of conduct involved when the Board has made adverse inferences as a sanction.

The Board also found that Zuru was not prejudiced by Lego's actions, and so a sanction was not appropriate.

Respondent effectively cured the allegedly late disclosure by: (1) supplementing its production of documents in response to Petitioners’ Requests for Production of Documents, albeit late in the discovery period, (2) informing its expert witness, Dr. Finegan, of its dictionary letter-writing campaign, and (3) permitting Petitioners to depose Dr. Finegan again.

Finally, the Board denied Zuru's request that the testimony of Lego's expert be excluded. "It is not the Board’s practice to make prospective or hypothetical evidentiary rulings before trial."

Read comments and post your comment here.

TTABlogger comment: A rather feeble motion, I think.

Text Copyright John L. Welch 2023.

TTAB Affirms Rejection of Specimen (Slide Presentation) for Oil Drilling Equipment as "Mere Advertising"

The Board upheld the USPTO's refusal to register the mark SUBSEA 2.0 for various oil and gas drilling equipment, finding that Applicant FMC's specimen of use constituted "mere advertising" and not an acceptable "displays associated with the good." The specimen was described by FMC as "slides from a live sales presentation given to potential customers for purposes of soliciting orders for the equipment." In re FMC Technologies, Inc., Serial No. 88705569 (July 25, 2023) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).

Section 45 of the Lanham Act provides that, for goods, a mark is in use in commerce if "it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto" and "the goods are sold or transported in commerce."

To constitute a display associated with the goods, "the specimen must satisfy two requirements: (1) it must show use of the mark directly associated with the goods; and, (2) it must be a point-of-sale display or the equivalent of such a display." The Board examined only the second requirement and found that the slide presentation was not the equivalent of a point-of-sale display.

FMC argued that its slide presentation was similar to the trade show display in In re Shipley, which involved certain chemicals used to fabricate integrated circuit boards. The Board noted, however, that  the goods there could be ordered at the trade show booth. In contrast, FMC's slides lacked the detailed product information provided in Shipley.

FMC provided no evidence of its "selling the goods through the slide presentation." The evidence showed only that the slides were "for the purpose of obtaining orders."

When and how would such orders be made? Are they made immediately after the sales presentation, or is a quote submitted or discussed during the sales presentations? We don’t know. Applicant’s explanation and the specimen fail to show any direct connection between the slide presentation and a sale.

The slides did not provide any information about purchasing the goods: no order form, no prices, no way to obtain a quote. The slides are "general marketing information, not detailed product information that would enable one to make a purchase."

Moreover, the slide presentations were confidential, and there was no evidence that the slides were widely used within the relevant market. This "cuts against" FMC's arguments. 

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Seems like a label on the goods would have been a better idea. If not available, amend the basis to Section 1(b)?

Text Copyright John L. Welch 2023.

Precedential No. 20: Deeming Duracell's In-Store Sound Mark a Display Associated With the Goods, TTAB Reverses Specimen Refusal

The Board overturned a refusal to register Duracell's sound mark consisting of three musical notes for batteries, rejecting the Office's position that the specimens of use (.mp3 files, example here) constituted mere advertising material. Instead, the Board ruled that transmission of the sound mark in retail locations where the goods are sold is "equivalent to" a display associated with the goods. In re Duracell U.S. Operations, Inc., 2023 USPQ2d 861 (TTAB 2023) [precedential] (Opinion by Judge Michael B. Adlin).

Section 45 of the Lanham Act provides that, for goods, a mark is in use in commerce if "it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto" and "the goods are sold or transported in commerce."

Duracell submitted specimens in the form of .mp3 files, accompanied by a declaration stating that the specimens comprised "audio messaging" played in stores where Duracell's batteries are sold. The three-note sound, referred to as the "slamtone," typically appears near the end of each advertisement, and is broadcast "as an inducement to purchasers to buy DURACELL batteries while shopping in the store." Thus, Duracell argued, the audio messaging is analogous to a traditional "shelf talker."

The examining attorney was unimpressed, pointing out that "[t]he commercials are playing overhead in a store, and are not coming from a display at the point of purchase." and also noting the lack of evidence that the commercials played in the stores increased sales of the batteries or induced a consumer to purchase the goods.

The question, then, was whether Duracell's audio messaging constitutes a "display associated" with its batteries. The Board acknowledged that "mere advertising" does not qualify, but it found that Duracell's in-store messaging was "more than 'mere' advertising."

Specifically, unlike most television, radio, newspaper, Internet, billboard or other types of advertising that consumers might encounter at home, in their cars or in other non retail locations, Applicant’s advertising/"audio messaging” is transmitted repeatedly (often multiple times per hour) in retail locations where the identified goods are displayed and available for purchase. It can be heard in the section of the store where the goods are located. In fact, according to [Duracell's VP], the messaging/advertising is "clearly heard by shoppers at the shelves where DURACELL batteries are stocked."

The Board reviewed several court and TTAB precedents regarding "displays associated with the goods" in a visual, rather than aural, context. It found particularly pertinent the standard laid out in In re Bright of America, Inc., 205 USPQ 63, 71 (TTAB 1979), which held that to qualify as a trademark specimen, the display must be:

essentially point of sale material such as banners, shelf talkers , window displays, menus, or similar devices which are designed to catch the attention of purchaser sand prospective purchasers as an inducement to consummate a sale and which prominently display the mark in question and associate it or relate it to the goods in such a way that an association of the two is inevitable even though the goods may not be placed in close proximity to the display or, in fact, even though the goods may not physically exist at the time a purchaser views the display. (emphasis by the Board).

The Board found that the messages featuring Duracell’s sound mark have been played "in tens of thousands of stores where Applicant's batteries are sold, often multiple times per hour, and in total the ads in question, and the slamtone, aired more than 100 million times.” "Thus, Applicant’s audio messaging is analogous to a display associated with the goods."

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Hardly noticeable.

Text Copyright John L. Welch 2023.

The Precedential Decisions of the CAFC and the TTAB on Registrability Issues: July 2022 to June 2023

The latest issue of Allen's Trademark Digest includes a compilation of my capsule summaries of the precedential "Decisions of the Federal Circuit and the Trademark Trial and Appeal Board on Registrability Issues - July 2022 to June 2023." [download pdf here]. Set out below is my brief introduction to the compilation.

The CAFC issued three precedential decisions, two of which are of particular interest. In the APPLE JAZZ case, the court seemingly narrowed the doctrine of tacking in denying Apple’s claim of priority and awarding a victory to Opposer Bertini in his Section 2(d) opposition to APPLE MUSIC. In Spireon, the court hinted at a significant change in the burden of proof regarding third-party registrations and their impact on the strength of a plaintiff’s mark. At the TTAB, several celebrities enjoyed success – Prince, Lizzo, and Aaron Judge – but superhero Superman hit a brick wall in a quixotic Section 2(d) opposition. The Board ruled that an ordinary consumer lacks “standing” to oppose because she or he cannot satisfy the Lexmark test. And two “hotel configuration” cases decided on the same day provided a useful lesson on the distinctions between product design, product packaging, and “tertium quid.”

 

Read comments and post your comment here.

Text Copyright John L. Welch 2023.

TTABlog Test: Is MOSSY OAK Confusable with ROYAL OAK for Watches?

Swiss watchmaker Audemars Piquet opposed applications to register MOSSY OAK and MOSSY OAK & Design for watches and jewelry on the grounds of likely confusion with and likely dilution of the registered mark ROYAL OAK, in standard character and stylized form, for watches. The Board dismissed the dilution claim because Piquet failed to show the requisite fame among the general consuming public. But what about likelihood of confusion? How do you think this came out? Audemars Piquet Holding S.A. v. Haas Outdoors, Inc., Consolidated Oppositions Nos. 91242213 and 91242238. July 14, 2023 [not precedential] (Opinion by Judge Thomas W. Wellington).

Because the involved goods are in-part identical and there are no restrictions in the opposed applications or pleaded registrations, the Board must presume that these goods travel in the same trade channels to the same classes of consumers. These factors weighed "strongly" in favor of Opposer Piquet.

The Board found ROYAL OAK to be a conceptually strong mark, even though "royal" has a somewhat suggestive connotation. As to commercial strength, Piquet maintained that its ROYAL OAK mark is "famous in the United States due to [its] long history of use, significant sales success, extensive advertising and promotion, numerous well-known spokespeople and endorsers, sponsorship of major public events, and frequent mentions in the media." Its experts testified that the mark not only has niche fame in the luxury watch market, but is well-known among "consumers who may not be able to afford the watch." [The "starting price" for a ROYAL OAK watch is $20,000].

The Board found particularly probative the extensive media attention that indicated that "ROYAL OAK watches are regarded by collectors and aficionados as the 'world’s first luxury steel sports watch' or as one of a few 'truly classic watches' amongst other luxury brands," leading to the conclusion that "ROYAL OAK is an extremely well-known mark in connection with luxury watches." However, the Board also found, despite the expert testimony, that the prominence of the mark does not extend to the general public: "Amongst the general purchasing public for watches, the ROYAL OAK mark is not an especially strong or weak mark, but deserves a normal scope of protection."

Turning to the marks, the Board observed once again that when the involved goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board noted the obvious similarities and differences in the involved marks, concluding that "because Opposer’s marks are strong and the goods are identical, consumers may perceive Applicant’s marks as designating a product line extension of Opposer’s watches."

The Board agreed with the applicant that Piquet had failed to prove any actual confusion, but the Board noted that there has been little opportunity for confusion, since the applicant's sales were "intermittent and insignificant."

Since the opposed applications and pleaded registrations include watches in all price ranges, the Board brushed aside the applicant's "sophisticated purchaser argument," finding that factor to be neutral. The Board also handily rejected the applicant's arguments under the ninth, tenth, eleventh, and twelfth DuPont factors.

Balancing the relevant DuPont factors, the Board found confusion likely, and it sustained Opposer Piquet's Section 2(d) claim.

Read comments and post your comment here.

TTABlogger comment: The Board's "product line extension" rationale seems to accord the opposer the benefit of the "family of marks" doctrine without opposer having to meet the stringent requirements for proving a family of marks.

Text Copyright John L. Welch 2023.

Trademark Trial and Appeal Board Manual Updated to Include New Precedents

The June 2023 update of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) is now available (here). This revision includes precedential citations to legal opinions from the TTAB, the Federal Circuit, and federal courts made between March 4, 2022 and March 3, 2023.

The primary purpose of this manual is to provide stakeholders with basic information generally useful for litigating inter partes (trial) cases before the Trademark Trial and Appeal Board. The manual does not modify, amend, or serve as a substitute for any existing statutes, rules, or decisional law and is not binding upon the Board, its reviewing tribunals, the Director, or the USPTO. Cf., In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989). Rather, the manual describes current practice and procedure under the applicable authority and incorporates amendments to the Trademark Act, Trademark Rules of Practice, Federal Rules, and updates in case law, where applicable, as of March 3, 2023.

Read comments and post your comment here.

TTABlogger comment: Reminder: The TBMP is not the law.

Text Copyright John L. Welch 2023.

TTAB Upholds Failure-to-Function Refusals of "15" and "377" for Air Intake Filters

Finding that the proposed marks 15 and 377 fail to function as trademarks for "Machine part, namely, air intake filter element as a part for air compressors or blowers," the Board affirmed the USPTO's refusals to register under Sections 1, 2, and 45 of the Lanham Act. Reviewing the specimens of use, the Board agreed with Examining Attorney Michael L. Engel that the terms serve merely as model numbers for the goods, not source indicators. In re Solberg Mfg., Inc., Serial Nos. 88456014 and 88456147 (July 14, 2023) [not precedential] (Opinions by Judge Albert Zervas)

“It is well settled that terms used merely as model, style, or grade designations are not registrable as trademarks because they do not serve to identify and distinguish one party’s goods from similar goods manufactured and/or sold by others.” In re Dana Corp., 12 USPQ2d 1748, 1749 (TTAB 1989). The central issue is consumer perception, and in resolving that issue the Board considers "the stylization of the display, the size of the proposed mark, and the physical location of the proposed mark on a specimen."

Applicant submitted three different specimens of use in each case. The numbers 15 and 377 appeared in plain font, sometimes with other text that was not part of the proposed marks. Although a shipping label may be an acceptable specimen of  use, applicant's label (i) is in plain, black, simple font; (ii) is placed on a plain brown cardboard box without any description of the contents of the box, suggesting that the term is a model number for the goods; and (iii), the Board noted, "the 'TM' symbol does not transform any designation into a trademark." Moreover, "the messaging in Applicant’s website indicates that ['15' and '377' each] designates a model designation."

Applicant pointed to its prior registration for the mark "19," but it did not make the registration of record. In any case, the Board pointed out for the umpteenth time that it must decide each case on its own evidentiary record.

Read comments and post your comment here.

TTABlogger comment: Do you think the applicant wants TM registrations so that it can try to hamper or stop competitors from using the numbers to sell parts that serve as replacements or substitutes for applicant's filters?

Text Copyright John L. Welch 2023.

TTABlog Test: Is "EL BANDIDO YANKEE" for Blue Agave Liquor (Tequila) Confusable with BANDIT for Alcoholic Beverages?

Rebel Wine, owner of the registered mark BANDIT for "[a]lcoholic beverages except beers," opposed an application to register the word mark EL BANDIDO YANKEE and the word-and-design mark shown below, for "[b]lue distilled agave liquor” on the ground of likelihood of confusion under Section 2(d). Applicant ROAR argued that the involved goods are widely disparate: it uses its mark only on tequila, while Rebel uses its mark only on wine and wine-based cocktails, the packaging is different, and the process for making tequila is not the same as that for making wine. Furthermore, ROAR contended that its marks are vastly different from the single word mark BANDIT. How do you think this came out? Rebel Wine Co., LLC v. ROAR Spirits, LLC, Opposition No. 91268314 (July 18, 2023) [not precedential] (Opinion by Judge Jonathan Hudis).

The Goods: The Board turned a deaf ear to ROAR's argument about the differences in goods, packaging, and manufacturing because it must consider the goods as identified in Rebel's registration regardless of the real world facts. Since ROAR's goods are encompassed within the broad identification in Rebel's registration, the Board must presume that the overlapping goods (tequila) travel in the same trade channels to the same classes of consumers.

Strength of Opposer's Mark: The Board found the mark BANDIT to be arbitrary and conceptually strong. As to commercial strength, Rebel offered substantial sales and advertising figures, claiming that BANDIT is a strong mark, but it failed to place these figure in industry context. Applicant ROAR attempted to show weakness of the BANDIT mark due to third-party registration and use of BANDIT-containing marks, but its evidence was rather feeble: only a single registered mark for the same goods, and 14-third party uses that lacked information as to dates of use, location of the seller (foreign or domestic), or even whether "the bottles and labels thereon are actual commercial products versus mere mock-ups." The Board concluded that BANDIT enjoys "moderate commercial success." [for what? - ed.].

The Marks: The words "EL BANDIDO" and the image of a masked man dominate ROAR's word-and-design mark because they are the first words and image in the mark and stand out in size, position, and shading. The word "YANKEE" is not so prominently placed, and furthermore functions as an adjective modifying the noun "EL BANDIDO." Also, if ROAR's mark is shortened by consumers, "they will likely use the term 'EL BANDIDO,' or simply 'BANDIDO,' dropping the adjective 'YANKEE.'"

Opposer Rebel argued that the doctrine of equivalents should apply, but the Board disagreed, since the doctrine is not applied to a mark that contains words in different languages. See In re Taverna Izakaya LLC. Moreover, "the terms 'BANDIDO,' 'YANKEE,' 'TEQUILA,' 'COMPANY' and 'BLANCO' appear in an English dictionary and would be understood without any translation by the ordinary American consumer. Thus, it is inappropriate to apply the doctrine of foreign equivalents in this case, and we find that consumers will take Applicant’s composite mark as it is." The image of a masked bandit reinforces the meaning of EL BANDIDO.

In sum, the similarities between Opposer’s BANDIT mark and Applicant’s EL BANDIDO YANKEE TEQUILA COMPANY BLANCO composite mark, under the first DuPont factor, weigh in favor of a finding that confusion is likely. The marks convey the same or a very similar meaning and have very similar commercial impressions. These similarities outweigh any differences in sound or appearance of the marks.

As to the word mark EL BANDIDO YANKEE, the Board reached the same conclusion: "the similarities between Opposer’s BANDIT mark and Applicant’s EL BANDIDO YANKEE word mark, under the first DuPont factor, weigh in favor of a finding that confusion is likely. The marks convey the same or a very similar meaning and have very similar commercial impressions. These similarities outweigh any differences in sound or appearance of the marks."

Other Factors: The lack of evidence of actual confusion was not meaningful because "[t]he record does not demonstrate appreciable and continuous use by Applicant of its word or composite marks for a significant period of time in the same markets as those served by Opposer under its BANDIT mark." As to the twelfth DuPont factor - "[t]he extent of potential confusion, i.e., whether de minimis or substantial - the Board found the factor to be neutral due to the lack of sufficient evidence (e.g., a survey).

Conclusion: Balancing the relevant DuPont factors, the Board found confusion likely as to both marks, and so it sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: The strength of Rebel's mark comes from its sale of wine, in particular, and not to alcoholic beverages generally. Shouldn't the Board take that "real world condition" into account when assessing likelihood of confusion? I.e., the mark BANDIT is not commercially strong for tequila.

Text Copyright John L. Welch 2023.

TTABlog Test: Are MERCADO LIBRE and MERCADO LIVRE Confusable With FREEMARKET for Online Marketplace Services?

The USPTO refused to register the marks MERCADO LIBRE and MERCADO LIVRE in the word-and-design forms shown below, for "Operating online marketplaces for sellers of goods and services," finding confusion likely with the registered mark FREEMARKET for "operating online marketplaces for downloadable electronic media; online trading services in which sellers post items to be auctioned and bidding is done electronically. The involved services overlap, but what about the marks? How about the translations? How do you think this came out? In re MercadoLibre, Inc., Serial Nos. 88950207 and 889504201 (July 17, 2023) [not precedential] (Opinion by Judge Robert H. Coggins).

Translation Requirement: The examining attorney contended that applicant’s proffered translations of the wording MERCADO LIBRE and MERCADO LIVRE as "independent marketplace" or "free commerce," were "not legally inaccurate." Rather, he maintained, the most accurate translation is "free market." The Board sided with the applicant.

We take judicial notice that “free market” means “[a]n economic market in which supply and demand are not regulated or are regulated with only minor restrictions.” *** There is no evidence adduced by the Examining Attorney to suggest that MERCADO LIBRE or MERCADO LIVRE means “free market” as thusly defined in English.

The Board found the record to be "inconclusive as to what the most accurate English translations of MERCADO LIBRE and MERCADO LIVRE would be to U.S. consumers. The Examining Attorney has not developed the record well enough to meaningfully defend the position that the most accurate translation of MERCADO LIBRE and MERCADO LIVRE is 'free market.'"

And so, the Board reversed the refusal to register based on the requirement under Trademark Rules 2.32(a)(9) and 2.61(b) that applicant to submit a more accurate, English translation of the foreign wording in the mark.

Likelihood of Confusion: The applicant did not dispute that the involved services are legally identical. The Board, therefore, must presume that they are offered through the same channels of trade to the same classes of purchasers. Thus the second and third DuPont factors weighed in favor of a finding of likely confusion.

As to the marks, the "crux" of the examining attorney's argument was that the wording in applicant's marks "translate into English as “free market” from either Spanish or Portuguese, which are each common, modern languages spoken in the United States, and as such, the ordinary American purchaser would likely stop and translate the foreign wording in Applicant’s marks into 'the same wording in the registered mark.'"

The Board, however, was persuaded that the doctrine of foreign equivalents does not apply here, observing that "where the evidence shows that the English translation is not exact, literal, or direct, the doctrine of foreign equivalents has generally not been applied to find the marks confusingly similar." Here, "[t]he record does not demonstrate that the English translation of MERCADO LIBRE and MERCADO LIVRE as 'free market' is unambiguously literal and direct, with no other relevant connotations or variations in meaning."

Viewing applicant's marks in there entireties, the Board concluded that "they are different in sound, appearance, and commercial impression. Moreover, in view of the lack of equivalency in meaning ... any possible similarity in meaning does not outweigh the strong dissimilarities. As such, the first DuPont factor favors Applicant."

Conclusion: Deeming the first factor dispositive, the Board reversed the Section 2(d) refusals.

Read comments and post your comment here.

TTABlogger comment: Maybe we should call it the doctrine of exact equivalents?

Text Copyright John L. Welch 2023.

TTABlog Test: Is "LOCH MOOSE MONSTER" Confusable With "MONSTER ENERGY" for Clothing, Bags, Beverageware?

Monster Energy opposed Tom & Martha LLC's application to register the mark LOCH MOOSE MONSTAH (in standard character form) for various gift shop-type goods and related services in four classes, claiming a likelihood of confusion with the mark MONSTER ENERGY and other MONSTER marks for energy drinks, beverageware, clothing, and bags, and related retails store services. Opposer argued that the proposed mark is “highly similar" to the MONSTER marks "in view of the respective terms MONSTER and MONSTAH which are phonetically similar" and further because "MONSTAH" is the dominant word in applicant's mark. How do you think this Section 2(d) opposition came out? Monster Energy Company v. Tom & Martha LLC, Opposition No. 91250710 (July 14, 2023) [not precedential] (Opinion by Judge Karen Kuhlke).

Section 2(d): The Board found the involved goods and services to be identical in part. Of course, when the goods and services of the parties overlap and there are no limitations as to channels of trade or classes of purchasers in either the application or opposer’s registration, the Board must presume that the overlapping goods and services will be sold in the same channels of trade to the same classes of purchasers. Moreover, the goods encompass inexpensive product purchased without any special degree of care. All of these factors weighed in favor of Monster Energy. But not the first DuPont factor:

It is obvious the stark dissimilarities between the marks [sic!]: Applicant’s begins with LOCH MOOSE, a play on LOCH NESS, utterly different in all respects from Opposer’s mark MONSTER ENERGY (or indeed even MONSTER by itself). Palm Bay Imps., 73 USPQ2d at 1692 (“VEUVE nevertheless remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label.”). Applicant uses the word MONSTAH as a play on the New England accent which further emphasizes the word MOOSE in its mark, parts of New England being known for moose. The word MONSTAH is in no way independently dominant in Applicant’s mark, at most, it has equal impact as it is simply part of the message about what type of monster and its regional location.

The Board concluded that the dissimilarity of the marks MONSTER ENERGY and LOCH MOOSE MONSTAH in appearance, sound, connotation, and overall commercial impression outweighed the other DuPont factors, and so it dismissed Opposer's Section 2(d) claim.

Lack of Bona Fide Intent: Monster Energy also alleged that Tom & Martha lacked a bona fide intent to use the LOCH MOOSE MONSTAH mark in connection with the identified goods and services. [Two years ago, Monster's summary judgment motion on this issue was denied in a precedential opinion (TTABlogged here)]. Tom & Martha has begun use of its mark on t-shirts, sweatshirts, hooded sweatshirts, hats, coffee cups, canvas bags and an online retail store, but not on any of the other goods or services listed in its application. (See website here). The testimony of one of applicant's principals was determinative as to the "other" goods and services:

[E]verything that I told you is what we’ve made. I was told – and I could be wrong here, but I was told that it’s easier to apply for it initially than to go back and reapply for it. So a lot of that stuff we weren’t even going to do anyway. But if it had taken off, or if it does take off, then we could do it. … So all we’re doing is T-shirts, sweatshirts, hats, coffee cups, and my wife did make some bags, canvas bags. So we applied for it. It’s easier to get a trademark for it than to get it for one thing, and try to add it on later. That’s just the way that we did it.

* * *

Like I told you originally, the people who were trademarking it for me said its easier to do it initially than to come back and do it a second time. Most of them things I can’t picture ever selling, like wallets and stuff like that. That’s – I just don’t picture it happening. But its easier to – I was told it’s easier to put it in initially, than to go back and do it. So I tried to cover all the bases, whether we do any things or not.

In light of that testimony and evidence, the Board dismissed Monster Energy's lack-of-bona-fide-intent claim with regard to the following: "canvas tote bags, all purposes carrying bags, cups, mugs, beverageware, headwear, t-shirts, sweat shirts, hooded sweat shirts; Online retail," and so the opposed application will proceed as to those goods.

The Board sustained that claim as to the following; “all-purpose sport bags; backpacks; wallets; handbags; travel cases; brief cases; key cases; business card cases containers for household use; sweat bands; sweat suits; sweat jackets; socks; shorts; tank tops; tube tops; halter tops; footwear; jackets; coats; gloves; belts; online retail store services featuring wallets; online wholesale store services featuring wallets," and ordered that those goods be deleted from the application."

Read comments and post your comment here.

TTABlogger comment: Is there any accent worse than a Boston accent? Answer: No. BTW, "The Loch Moose Monster" is the title of a collection of stories by Isaac Asimov, published in about 1993.

Text Copyright John L. Welch 2023.

TTABlog Test: Is BLACK BELT Confusable with KURO-OBI for Restaurant Services?

The USPTO refused to register the proposed mark BLACK BELT for, inter alia, "restaurant," finding confusion likely with the registered marks KURO-OBI and the Japanese characters for KURO-OBI for, inter alia, "restaurants." The second and third DuPont factors - similarity of the services and overlap of the channels of trade/classes of consumers - weighed heavily in favor of affirmance of the refusal. Applicant Samjen argued that the doctrine of foreign equivalents should not apply because "it is unlikely that a consumer would translate the mark due to the marketplace circumstances or the commercial setting in which the mark is used." How do you think this came out? In re Samjen of Tampa, Inc., Serial No. 90501155 (July 11, 2023) [not precedential] (Opinion by Judge Christen M. English).

The Board acknowledged that Samjen’s mark and the cited marks are distinct in appearance and sound. Examining Attorney Andrew Janson argued that, when the doctrine of foreign equivalents is applied, confusion is likely because the marks have the same meaning and commercial impression. The Board observed:

“The doctrine of foreign equivalents is not an absolute rule and should be viewed merely as a guideline,” applied “only when it is likely that the ordinary American purchaser would ‘stop and translate [the word] into its English equivalent.”’ Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). The "ordinary American purchaser" includes purchasers “knowledgeable in the foreign language,” here, Japanese.

Samjen did not dispute that Japanese is a common modern language. Nor did it dispute that BLACK BELT "is a direct translation of the Japanese word KURO-OBI (or the phonetic equivalents KUROOBI and KURO OBI) and the [Japanese] characters [] , of which the transliteration is KURO-OBI."

Samjen argued that this case is analogous to In re Tia Maria, Inc., 188 USPQ 524 (TTAB 1975), in which the Board reversed a refusal to register TIA MARIA for restaurant services based on a likelihood of confusion with the mark AUNT MARY’S registered to one entity for canned fruit and another entity for canned vegetables and canned fruit. The Board took into consideration the context in which consumers would encounter the respective marks: "it is unlikely to expect that a person encountering “AUNT MARY’S” canned fruits and vegetables in a supermarket or other establishment where goods of this type are customarily sold would translate “AUNT MARY’S” into “TIA MARIA”, and then go one step further and associate these food products with applicant’s restaurant." Likewise, a restaurant customer would not translate "TIA MARIA" into "AUNT MARY" and then associate the services with food products.

Here, in contrast to Tia Maria, Samjen's and registrant’s services are legally identical, and the Board "must presume that they will be encountered by some of the same purchasers in the same trade channels such that consumers are likely to view the in-part legally identical services as emanating from a common source, marketed under marks that are foreign language equivalents."

Moreover, consumers are likely to make the translation because registrant, on its menus, translates KURO OBI as BLACK BELT. Many of registrant's dishes are named after the various colors of martial arts belts. Registrant’s storefront depicts a black belt next to the mark KURO-OBI, and the store counter bears the words BLACK BELT underneath the design of a belt in black font or etching. These translations increase the likelihood that consumers will translate KURO OBI and the Japanese characters to BLACK BELT.

Even if Samjen's mark and the cited marks were used for non-Japanese restaurants, "it is likely that both marks would carry [the same] connotation because it suggests 'expert' or high quality restaurant services and food." The Board therefore found that the subject marks have the same meaning and create the same commercial impression

As to Samjen's argument that the differences between the marks in appearance and sound are sufficient to distinguish the marks, the Board disagreed: "Because BLACK BELT is a direct and unambiguous translation of the cited marks and the services are identical, in part, we find that the equivalency in meaning outweighs those differences.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2023.

TTABlog Test: Is QONSENT Merely Descriptive of Consent Management Services?

The USPTO refused to register the proposed mark QONSENT (in standard character form) for consent management services, deeming the mark to be merely descriptive under Section 2(e)(1). Examining Attorney Gabrielle Rennie maintained that the mark is a slight misspelling of "consent," which merely describes a feature or function of applicant's services. Applicant Redniss argued that the mark combines the words "quality" and "consent," and could be pronounced as “kwahn-sent,” with a soft “Q”. How do you think this appeal came out? In re Jesse Redniss, Serial No. 90622279 (July 12, 2024) [not precedential] (Opinion by Judge David K. Heasley).

The Examining Attorney explained that the purpose of Applicant's SAAS is "to obtain consumers’ consent to collect their private data on websites, to store that private data securely, and to manage third-party access to that private data in accordance with the consumers’ consent." Applicant responded that the word "consent" could be given four different interpretations, and therefore it does not immediately describe his services:

(i) The consent being given by users to Applicant;
(ii) The collection of users’ consent as to how their personal data should be handled by those collecting and storing it;
(iii) The secure “consent repository” database where users’ consent preferences are stored and managed; and
(iv) The “consent” given by Applicant to companies he permits to use the collected data.

The Board first observed that "slight variations in spelling of marks from their traditional spelling does not change the meaning of the term if the underlying term is itself descriptive." As to pronunciation, the Office's evidence showed that "Q" not followed by "U" is often pronounced like a hard "K" or "C" - e.g., NASDAQ, QATAR, IRAQ. Furthermore, consumers would likely pronounce QONSENT as “CONSENT” because of the nature of applicant’s services, known in the field as a "Consent Management Platform," and applicant's company website  advertises "[t]he consumer-first approach to consent enablement and engagement."

Applicant’s company’s own use of the word QONSENT on its website and in its press release, echoed in press coverage, indicates that not only Applicant, but a significant portion of relevant consumers, will pronounce and understand the proposed mark as “CONSENT,” describing its consent management platform services.

As to the alternative meanings of "consent" proposed by applicant, the Board found that "all four meanings are descriptive" of his service, and "corroborate its descriptiveness."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2023.

TTABlog Test: Is PLAYBOOK for Sports Trading Cards Confusable With PLAYBOOK for Sports Magazines?

Well, sports fans, how would you bet on the outcome of this Section 2(d) appeal? The USPTO refused to register the mark PLAYBOOK for "Collectible trading cards; Sports trading cards," on the ground of likely confusion with the identical mark registered for "Magazines featuring sports information." The marks are identical, but how strong is the registered mark? And are the goods sufficiently related? What say you? In re Panini America, Inc., Serial No. 88960212 (July 12, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo).

Strength of the Cited Mark: Applicant Panini submitted a definition of PLAYBOOK ("one or more plays in book form; a notebook containing diagrammed football plays; a stock of useful tactics or methods"), which led the Board to conclude that PLAYBOOK is "highly suggestive of the subject matter of the magazines featuring sports information identified in the cited registration, particularly with regard to football." Panini also submitted five third-party registrations for the mark PLAYBOOK, but for unrelated goods. [The Board noted that "Because the goods listed in the third-party registrations are not identical or even closely related to the goods identified in the cited registration, these circumstances do not implicate Spireon, Inc. v. Flex Ltd., 2023 USPQ2d 737, at *4-8 (Fed. Cir. 2023)."]

Next, Panini submitted screenshots from seven websites using the mark PLAYBOOK and formatives for goods and services in the field of sports. "Thus, while Applicant’s evidence of seven third-party uses is more modest than that found to be determinative in other cases, Cf., e.g., Juice Generation, 115 USPQ2d at 1674-75; Wolfskin, 116 USPQ2d at 1135-36, they remain relevant to show the relative weakness of Registrant’s PLAYBOOK mark." [Do all seven websites offer goods and services close enough to registrant's goods to be probative under Omaha Steaks? - ed.].

Viewing the record as a whole, we find that the registered PLAYBOOK mark is entitled to a narrower than usual scope of protection to which highly suggestive but nonetheless distinctive marks are entitled, primarily due to the definition of PLAYBOOK and evidence of third-party use and registration of PLAYBOOK formatives for related goods and services.

The Goods: The examining attorney submitted five website pages showing third-parties offering magazines and trading card under the same trademark. Other website pages showed "collaborations between magazines and trading card companies, including Applicant, to provide magazines featuring trading cards." The Board agreed with Panini that "such collaborations are co-branded and indicate the separate sources of the goods, not a single source." The other websites "appear to offer sports magazines and sports or collectible trading cards under different trademarks, house marks and brand names."

The Office also submitted six live, use-based, third-party registrations for marks identifying trading cards and sports magazines. The Board noted that, even without proof of use, these registrations have some probative value on the issue of relatedness of the goods. However, the Board concluded that the record evidence "falls rather short of demonstrating that consumers would expect sports trading cards and magazines featuring sports information could emanate from the same source."

Channels of Trade: The Board found the evidence of "a mere five third-party websites of entities providing trading cards and sports magazines under the same mark, and six third-party registrations for marks identifying, inter alia, trading cards and sports magazines . . . insufficient to show consumers are likely to encounter these goods in the same channels of trade."

Conclusion: "While the marks are identical, the relative weakness of the cited mark and insufficient evidence that the goods are related or will be offered in common trade channels mitigate against a finding of likely confusion."

And so, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: Hat tip to my Wolf Greenfield colleagues, Norm Zivin and Kira-Khanh McCarthy, for this victory.

Text Copyright John L. Welch 2023.

TTAB Adds Three New Administrative Trademark Judges, One Departs

While we were being distracted by the smoke coming down from Canada, the Board added three new Administrative Trademark Judges, while one judge retired. To be specific, Judge Linda A. Kuczma returned to private practice in Chicago after 12 years on the Board. The three new judges (see below) bring the total Board membership to 28, including Chief Judge Rogers and Deputy Chief Judge Thurmon. The complete judicial roster may be found here.

Thomas L. Casagrande. Experience: private practice 1991-2012, USPTO Associate Solicitor 2012-2023. Education: B.A., University of Pennsylvania; J.D., University of Connecticut School of Law.

Wendy Boldt Cohen. Experience: private practice, 1998-2012, TTAB Interlocutory Attorney, 2012-2023. Education: B.A, University of Missouri - Columbia; J.D., University of Missouri - Columbia School of Law.

Jennifer L. Elgin. Experience: private practice, 1993-2020, TTAB Interlocutory Attorney, 2020-2023. Education: B.S., Cornell University; J.D., Emory University School of Law.

Read comments and post your comment here.

Text Copyright John L. Welch 2023.

Professor McCarthy: "Some Thoughts on the Supreme Court Jack Daniel's Case"

Professor J. Thomas McCarthy shares his thoughts (below) on the Supreme Court's "Bad Spaniels" decision (pdf here), in the hope of stimulating discussion (in the comments) as to what readers think will be the impact of the case on the use of marks in "expressive" works. As you will recall, the Court vacated the decision of the U.S. Court of Appeals for the Ninth Circuit that had deemed the "Bad Spaniels" dog toy immune to claims of infringement and dilution of various Jack Daniel’s trademarks. The Supreme Court, however, ruled that the Ninth Circuit was wrong in concluding that the toy was entitled to First Amendment protection under Rogers v. Grimaldi because of the humorous messaging on the toy. The Court held that (1) the Rogers test does not apply when the defendant uses the challenged matter as a mark, and (2) the Ninth Circuit’s interpretation of the noncommercial exemption to dilution claims was overbroad.

SOME THOUGHTS ON THE SUPREME COURT JACK DANIEL'S CASE

© Tom McCarthy 2023

The Rogers Test for Infringement. On June 8 the Supreme Court decided the Jack Daniel’s case and restricted the scope of what is known as the “Rogers” test.  Under the Rogers two-part balancing test, a trademark used in an accused “expressive” work (such as a novel, movie or TV series) will not be a trademark infringement if the accused mark has  any possible “artistic relevance” to the message expressed and so long as the accused mark does not “explicitly mislead”  as to the source of the defendant’s work. The Rogers test  is a judge-created assessment to determine if there is trademark infringement, used instead of the statutory test of likelihood of confusion. It is a judge-made substitute for the Lanham Act test of infringement.

A Dog Toy is an “Expressive” Work? The Rogers test is intended to be a method for  balancing First Amendment free speech policies with trademark law’s policy of preventing the likelihood of confusion. The Ninth Circuit had held that JACK DANIEL’S whisky trademarks and trade dress were not infringed by VIP, which added to its product line of humorous chewable rubber dog toys a “Bad Spaniel’s” toy,  made to closely resemble the Jack Daniel’s trade dress. The Ninth Circuit said that the VIP dog toy was entitled to the special Rogers free speech analysis because it was an “expressive” work: the toy “communicates a humorous message.” I had thought that the Ninth Circuit was wrong because stretching “expressive works” to include ordinary consumer products potentially encompasses just about all commercial goods. If a jokey dog toy qualifies as an “expressive” work, then why not a box of breakfast cereal containing “expressive” images of a brand mascot, color graphics and  slogans? In the Ninth Circuit’s view, the Rogers test would replace the traditional test of likelihood of confusion in a huge number of trademark infringement cases.

 I’d thought that the Supreme Court would reverse and then redefine what qualifies as an “expressive” work suitable for application of the Roger’s rule. But the Supreme Court didn’t do this. Instead, it narrowed use of the Rogers rule in a different way. The Court in a unanimous decision held that the Rogers test does not apply when the accused use is itself a trademark use. In such cases, free speech policies are adequately accommodated by the traditional trademark infringement test of  likelihood of confusion.

The Rogers Test as an Off-Ramp to Dismissal of the Infringement Claim. As applied by the courts over a thirty year period, use of the Rogers test almost always resulted in dismissal of the infringement claim, often on a pre-trial Rule 12(b)(6) dismissal or on summary judgment. Some courts interpreted the Rogers test not as a balancing of rights, but as a slippery slope leading to a prompt dismissal. As government attorney Matthew Guarnieri described it in oral argument to the Supreme Court , the Rogers analysis provides “a special off-ramp at the beginning of the litigation.” Writing for the unanimous court, Justice Kagan agreed that the Rogers analysis is an extra-statutory diversion away from the traditional likelihood of confusion test for infringement: “[T]he Rogers test … offers an escape from the likelihood-of-confusion inquiry and a shortcut to dismissal….” 

The New Rule of the Jack Daniel’s Case. The government as amicus argued that the Rogers analysis is an extra-statutory test that is unnecessary to accommodate the First Amendment and should be eliminated by the Supreme Court. The government argued that the traditional likelihood of confusion standard can already factor in free speech policies: no judge-made extra-statutory test like Rogers is appropriate. But the Supreme Court took a narrower approach and limited the Rogers test to cases where the accused use is not itself a trademark use. Under this new bright line rule, attorneys and courts will be arguing over whether the accused use qualifies as a “trademark use.”

Is the Accused Use a “Trademark Use?” The Supreme Court said that VIP’s dog toy was a trademark use and not appropriate for the Rogers test. The court looked at the entire context in which the accused mark appeared to determine if the accused use was use as a trademark. The Court said that the first thing to consider is “the way the product is marketed.” In my view, there is a large body of precedent defining whether a designation has been used as a trademark. Both the U.S.P.T.O. and the Trademark Board use the terminology “failure to function” when referring to a use of a designation in a non-trademark manner.

What’s the Future of the Rogers Test? The future of the Rogers test is clouded and uncertain not only because of the cautious approach of the majority opinion but  because three Justices filed a concurring opinion that puts in doubt the future  of the Rogers test. Those Justices commented that “it is not obvious that Rogers is correct in all its particulars – certainly, the Solicitor General raises serious questions about the decision.” Remarking that the validity of the Rogers test “remains for resolution another day,” the three Justices  issued the ominous warning that “lower courts should be attuned to that fact.” I think this warning from the three concurring Justices should be interpreted by the lower courts as a clear caveat to apply the Rogers test with caution and to strictly interpret the bright line drawn by the unanimous Court.

Read comments and post your comment here.

Some 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 88% 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.

Samjen of Tampa, Inc., Serial No. 90501168 (June 29, 2023) [not precedential] (Opinion by Judge Christen M. English). [Refusal to register BLACK BELT for “advisory services relating to building construction” and “construction project management services,” in view of the registered mark BLACKBELT for real estate management, real estate brokerage services and investment advisory services].

In re Mighty Buildings, Inc., Serial Nos. 90384068, 90384173, 90384232 and 903842721 (June 30, 2023) [not precedential] (Opinion by Judge Thomas Shaw) [Refusal to register the marks MIGHTY STUDIO, MIGHTY DUPLEX, MIGHTY HOUSE and MIGHTY DUO for "3D printing of building components and structures for others" and for "Custom 3D printing of residential buildings [for others]" (STUDIO, DUPLEX, and HOUSE disclaimed), in view of the registered mark MIGHTY SMALL HOMES for “Planning and custom construction services limited to diminutive residential homes, custom construction of small-footprint residential structures."]

In re SA Consumer Products, Inc., Serial Nos. 90544627 (June 30, 2023) [not precedential] (Opinion by Judge Christoper Larkin) [Refusal to register SANCTUARY PLATINUM & Design for "safes" in view of the registered mark PLATINUM for "metal safes for the storage of firearms and other valuables."]

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 Geographical Descriptiveness Refusal of CASINOLA for Game Software and Related Retail Services

The Board reversed a Section 2(e)(2) refusal to register the mark CASINOLA for downloadable game software and related online retail store services featuring gaming goods. The Board found that the primary significance of CASINOLA is "the geographical place known as LA, i.e., the City of Los Angeles, California and the highly descriptive term CASINO." However, the USPTO failed to prove that applicant's goods will originate there or that consumers will associate applicant's goods or services with that geographic location. In re Casinola LLC, Serial Nos. 90115759 and 90115777 (July 5, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo).

"The test for determining whether a term is primarily geographically descriptive is whether (1) the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public, (2) the goods or services originate in the place identified in the mark; and (3) the public would make an association between the goods or services and the place named in the mark, that is, believe that the goods or services for which the mark is sought to be registered originate in geographic place identified in the mark." In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448-9 (Fed. Cir. 2015). [emphasis added].

As to the first element, the Examining Attorney submitted the Wikipedia entry for "Los Angeles," dictionary definitions of "LA," a Wikipedia entry for "Casino games," and screenshots from third-party websites displaying the word CASINOLA and variations thereof in connection with casinos and casino gaming in Los Angeles. 

Applicant argued that consumers would more readily associate CASINOLA with New Orleans (Nola) or Louisiana (LA), if they made any geographical association However, there was little or no evidence that consumers would make such associations. "Rather, the consuming public commonly uses and recognizes LA to refer to LA to refer to Los Angeles as its primary significance." The Board agreed with the Examining Attorney that the word CASINO is highly descriptive of applicant's gaming-related goods and services, and does not detract from the geographic significance of the mark as a whole.

As to the second element of the test, applicant has a business address in Los Angeles. It indicated that its goods will be available online by means of an app store with no physical location, and its services will be available online. There was little evidence that Applicant’s goods or services will be developed or produced in Los Angeles. In fact, there was no evidence, for instance, that a main component of the goods will be produced there.

As to the third element, there was "insufficient evidence that Los Angeles is known for the identified goods or services.

Aside from a single webpage discussing one casino assertedly located in Los Angeles, the record does not support a finding that consumers generally associate LA with computer and video gaming goods and online retail store services of the type intended to be offered by Applicant. Absent from the record is evidence from Applicant’s website or marketing materials, third-party webpages, an electronic database, gazetteers, encyclopedias or geographic dictionaries establishing an association between Los Angeles and the identified goods and services. See TMEP §1210.04 and authorities cited therein.

And so, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: Can a mark for online services ever be primarily geographically descriptive? Suppose the software  includes scenes of Los Angeles, or depicted a casino in LA? Would that make the mark merely descriptive under Section 2(e)(1)? 

Text Copyright John L. Welch 2023.