Precedential No. 23: As Used on Applicant's Specimen, Depiction of Computer Game Character Fails to Function as a Trademark

The Board upheld a refusal to register the mark shown below, for video and computer game software, finding that the proposed mark fails to function as a source indicator for the identified goods. Reviewing Applicant Stallard's webpage specimen of use, the Board concluded that "prospective consumers viewing the proposed mark on the webpage would have no reason to think that the cropped image of Maria’s head identifies the source of the goods." In re Joseph A. Stallard, 2023 USPQ2d 1009 (TTAB 2023) [precedential] (Opinion by Judge Thomas V. Shaw).

According to Stallard's application, "[t]he mark consists of a woman video game character named Maria, with a tilted head, dark messy hair, dark eyes, thin rimmed glasses and a large toothy smile, with her eyes looking to the side and strands of her hair in front of her eyes." Color was not claimed as a feature of the mark.

The Board observed that "designations that merely identify a character in a creative work are not registrable, whether the character appears in a series or in a single work." (emphasis added). See, e.g., In re Caserta, 46 USPQ2d 1088, 1090-91 (TTAB 1998) (holding FURR-BALL FURCANIA, used as the principal character in a single children’s book, does not function as a mark even though the character’s name appeared on the cover and every page of the story). The issue here was whether the proposed mark merely depicts a character in the game, or whether consumers would perceive the proposed mark, as it appears on the specimen of use, as a source indicator.

“The Board looks to ‘the [Applicant’s] specimens and other evidence of record showing how the designation is actually used in the marketplace’ to determine ‘how the designation would be perceived by the relevant public.’” Vox Populi, 2022 USPQ2d 115, at *2-3 (quoting Eagle Crest, 96 USPQ2d at 1229).

Applicant Stallard's specimen of use comprised an excerpt from a third-party webpage for an electronic retail store offering video games. The proposed mark is an image of the cropped head of a character named  “Maria” in the game “Target of Desire: Episode 1.” On the webpage, she is briefly described as follows: "Maria is a cryptic character. The only thing that she reveals about herself is that she ‘works at the University.’ She blogs (and is on social media) under the username of ‘IamNamedMaria’, where she speculates about the nature of reality."

The Board observed that there is no "bright line rule against registration of characters." The subject refusal was based on a finding that “[t]he proposed character mark, as used on the specimen of record, identifies only a particular character in a creative work." [emphasis by the Board].

We agree with the Examining Attorney that the record does not show that the public would perceive the mark as an indication of the source of the game such that it functions as a trademark. The evidence shows that the proposed mark is merely associated with one character in the game, and it is not used in a way to identify and distinguish the source of the game itself—for example, on the game’s launch screen or more prominently on the webpage, such as in the header of the page.

In Stallard's specimen of use, the proposed mark appears "mid-way down the page, below four images of the game’s other character, Maia, and below a three-sentence description of Maria." The position of the mark, "buried below text in the middle of the webpage, suggests that the image merely serves an informational function to familiarize prospective consumers with one of the two main characters of the game." Thus, consumers "would have no reason to think that the cropped image of Maria’s head identifies the source of the goods."

The Board therefore affirmed the refusal under Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127.

Read comments and post your comment here.

TTABlogger comment: Doesn't seems worthy of the precedential label.

Text Copyright John L. Welch 2023.

USPTO Issues Examination Guide 3-23: "Examination Procedures for Reviewing Domicile Addresses"

The USPTO has issued Examination Guide 3-23 (pdf here) to provide further guidance regarding domicile addresses in trademark applications.

The United States Patent and Trademark Office (USPTO) has issued an examination guide that clarifies the steps examining attorneys and post-registration examiners will follow to evaluate trademark applicants’ and owners’ domicile information. 

The USPTO is required by the Lanham Act to collect applicants’ domicile information, which serves as confirmation that the applicant is a real or juristic person (such as a corporation) domiciled in the U.S. or with authorized, U.S.-licensed representation (as required under “the U.S. Counsel Rule”). Trademark counsel can change multiple times over the lifetime of a trademark, and a domicile address helps us determine if trademark owners need a new U.S.-licensed attorney after they change or drop their current representation. 

Moreover, the domicile address requirement is crucial to our efforts to fight the unprecedented increase in trademark filing scams we’ve experienced over the last few years, primarily originating overseas. Our trademark enforcement teams have discovered thousands of examples of foreign applicants using fake U.S. addresses in applications or hijacking the credentials of U.S. attorneys and using their address without the attorney’s knowledge or permission. Since 2019, we’ve issued 258 final Orders for Sanctions for violations of the U.S. Counsel Rule that terminated 18,789 invalidly filed applications and sanctioned 3,297 registrations.

The exam guide explains this requirement in more detail and outlines ways applicants and owners can respond to the requirement.

Read comments and post your comment here.

Text Copyright John L. Welch 2023.

"ICE MONSTER" for Electronic Cigarette Liquid Not Confusable With MONSTER ENERGY, Says TTAB

The Board dismissed another opposition brought by frequent TTAB litigant Monster Energy Company, finding Applicant SS Vape's mark ICE MONSTER and Design for "electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges," not confusingly similar to various "MONSTER" marks owned by Opposer for, inter alia, nutritional supplements in liquid form, energy drinks, and collateral merchandise. The findings that the goods are not related and are offered in different channels of trade, coupled with the lack of proof of actual confusion, carried "great weight" in the Board's Section 2(d) analysis. Monster Energy Company v. SS Vape Brands, Inc., Opposition No. 91255786 (August 28, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman).

Opposer claimed to own a family of MONSTER-formative marks, but it failed to prove the existence of a family of MONSTER marks prior to SS Vape’s July 2016 date of first use. The Board therefore gave the family of marks arguments no further consideration and instead analyzed opposer’s likelihood of confusion claim based on its individual MONSTER and MONSTER ENERGY marks.

The Board found that opposer’s marks "are inherently or conceptually strong, as well as commercially very strong, if not famous, in connection with beverages, and, therefore, entitled to a broad scope of protection in connection with these goods." The Board noted, however, that "the strength of Opposer’s marks alone is not sufficient to establish likelihood of confusion. If that were the case, having a famous mark would entitle the owner to a right in gross, and that is against the principles of trademark law." On the other hand, "[f]amous marks are accorded more protection precisely because they are more likely to be remembered and associated in the public mind than a weaker mark."

Comparing the marks at issue, the Board found the word “Monster” to be the dominant part of both opposer’s marks and applicant’s mark, since ENERGY is disclaimed and ICE is a descriptive adjective modifying “Monster” and suggesting a menthol-cool or icy flavor. The design element in applicant's mark "is not so distinctive as to form a commercial impression separate and apart from the term 'Ice Monster.'" "Given the shared word “Monster” in the parties’ marks, consumers familiar with Opposer’s JUICE MONSTER, PUNCH MONSTER, JAVA MONSTER, and MUSCLE MONSTER marks, may perceive Applicant’s ICE MONSTER mark as a variant mark denoting a product line extension." [Is this an end-run around the family-of-marks issue? - ed.].

As to the goods, opposer's attempt to show relatedness was unsuccessful. There was no evidence of third-party use or registration by any company using the same mark to identify energy drinks or other beverages and e-liquids, and no evidence of any third party manufacturing both energy drinks and e-liquids with different marks. Nor did opposer prove an overlap in trade channels. "That both parties market and sell their products through the Internet is unpersuasive. The Board has long recognized that the 'Internet is such a pervasive medium that virtually everything is advertised and sold through the Internet.'"

Moreover, evidence that opposer's energy drinks are sold in vape shops was unpersuasive. "The vape/smoke shops offer Opposer’s MONSTER and MONSTER ENERGY beverages in coolers displaying third-party brand names (e.g., Pepsi, Coca-Cola, and RockStar Energy Drink) indicating that the beverages sold in the vape/smoke shops are merely one of many varied products these companies sell."

Applicant Vape SS has been using its mark since 2016 and selling nationwide since 2019, and is "No. 1, if not top three, in the entire US in e-liquid sales." Opposer launched its MONSTER ENERGY drinks in 2002 and has enjoyed enormous sales (approximately 2.5 billion cans of MONSTER ENERGY and MONSTER beverages per year). It has also sold a wide range of ancillary products bearing the marks. The Board concluded that there has been a "reasonable opportunity" for actual confusion to have occurred. The Board therefore found that "the lack of any reported instances of actual confusion weighs against finding there is a likelihood of confusion."

The fact that the products involved are relatively inexpensive and are sold in vape/smoke shops akin to convenience stores, weighed slightly in favor of finding a likelihood of confusion. However, the fact that applicant was aware of opposer's marks when it choose its mark did not amount to bad faith.

Balancing the relevant DuPont factors, the Board found that SS Vape's mark is not likely to cause confusion, and so it dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: Earlier this year, Monster Energy successfully opposed the mark ICE MONSTER & Design for restaurant services. TTABlogged here.

Text Copyright John L. Welch 2023.

"DARK DECEPTION: MONSTERS & MORTALS" for Game Software Not Confusable with MONSTER ENERGY, Says TTAB

Frequent TTAB litigant Monster Energy was quickly shown the exit in this opposition to registration of DARK DECEPTION: MONSTERS & MORTALS for downloadable game software. Granting applicant's motion for summary judgment, the Board found that "Applicant’s mark is so dissimilar to Opposer’s pleaded marks that no likelihood of confusion can exist as a matter of law." Monster Energy Company v. Glowstick Entertainment, Inc., Opposition No. 91282624 (August 25, 2023) [not precedential].

The Board focused on opposer's mark MONSTER ENERGY, in standard character and design form (shown below), for video, electronic, computer, and interactive games. Applicant Glowstick conceded that the involved goods are identical or closely related and could be sold in the same trade channels to the same classes of consumers, who would exercise ordinary care in their purchasing decisions. For purposes of the summary judgment motion, the Board assumed that Opposer owns a family of MONSTER-formative marks; that Opposer’s marks, including the wording “MONSTER” therein, are conceptually and commercially strong; and that Opposer’s marks are famous, including for video, electronic, computer, and interactive games.

Turning to the marks, the Board noted that “DARK” and “DECEPTION,” as the first words in applicant’s mark, are “'most likely to be impressed upon the mind of a purchaser and remembered,' such that they are the most dominant elements of the mark." Furthermore  the letters "MO" that begin “MONSTERS & MORTALS” have an" alliterative, lilting cadence."

Accordingly, consumers are likely to view “MONSTERS & MORTALS” as a whole, and take from Applicant’s mark a different meaning and commercial impression than Opposer’s MONSTER ENERGY marks and its family of MONSTER-formative marks. Specifically, Applicant’s mark conveys a duality between “creature[s] having … strange or frightening appearance[s]” and “human[s],” i.e., “MONSTERS & MORTALS,” and, separately, “[a] ruse” or “trick” that is “[e]vil in nature or effect” or “sinister,” i.e., “DARK DECEPTION.” These connotations are completely absent from Opposer’s family of MONSTER-formative marks, which at a minimum convey only “[a] creature having a strange or frightening appearance” (to the extent “MONSTER” is perceived as a noun).

The wording “MONSTER ENERGY” in Opposer's marks connotes "a large amount of energy or a creature with a strange or frightening appearance and a high level of energy," further distinguishing the connotations of the marks.

The Board acknowledged that applicant Glowstick's mark could be displayed in a manner that emphasizes the word MONSTER, but "'DARK' and 'DECEPTION' still precede 'MONSTERS,' and 'MORTALS' still follows 'MONSTERS,' and the marks in their entireties remain different in how they look and sound, in the meaning they convey, and the commercial impression they create."

And so, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: Do you expect Monster Energy to bring a civil action for review?

Text Copyright John L. Welch 2023.

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

Here are three recent appeals from Section 2(d) refusals. At least one of the refusals was reversed. How do you think these came out? Answers will be found in the first comment.

In re Neptune Eyewear Pty. Ltd., Serial No. 90544913 (August 22, 2023) [not precedential] (Opinion by Judge Christopher C. Larkin). [Section 2(d) refusal of the mark AVANTI for "Frames for spectacles and sunglasses, excluding frames for protective eyeglasses," in view of the registered mark AVANTÉ for "protective eyeglasses."]

In re Riverside Natural Foods Pet Products Inc., Serial No. 90732664 (August 23, 2023) [not precedential] (Opinion by Judge Wendy B. Cohen) [Section 2(d) refusal of MADE BETTER (Stylized) for "Pet Food, edible pet treats," in view of the registered mark PET DINE MADE BETTER & Design for "Pet treats being dietary pet supplements; dietary supplements for pets."]

In re DRiV Automotive, Inc., Serial No. 87720124 (August 24, 2023) [not precedential] (Opinion by Judge Cheryl S. Goodman) [Section 2(d) refusal of X-LANDER for "Aftermarket shock absorbers for vehicles," in view of the registered mark LANDER for, inter alia, engines, structural parts for land vehicles, wheels for vehicles, alloy wheels, wheel covers, arm rests for vehicle seats, fitted car seat covers, covers for vehicle steering wheels, and fitted covers for vehicles.]

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2023.

TTABlog Test: Which of These Three Section 2(e)(1) Mere Descriptiveness Refusals Was/Were Reversed?

By my count, the Board has affirmed 40 of the first 44 Section 2(e)(1) refusals that it reviewed this year. Here are three more. At least one was reversed. How do you think these three cases came out? [Results in first comment].

In re Riverence Holdings LLC, Serial No. 90674544 (August 14, 2023) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Mere descriptiveness refusal of BREEDING FOR VIGOR for “Fish, live” and “Agricultural services, namely, the cultivation and breeding of plants or animals in a water environment." Applicant argued that the terms “breeding” and “vigor” each have multiple meanings, and therefore Applicant’s mark “cannot as a composite be merely descriptive."]

In re Molina Healthcare, Inc., Serial Nos. 90887104 and 90887134 (August 18, 2023) [not precedential] (Opinion by Judge Robert H. Coggins) [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." Applicant maintained that the evidence of record - a dictionary definition of “perk” and an excerpt from Applicant’s website - was insufficient to support the disclaimer requirement.]

In re Randy Wayne White, Serial No. 90758882 (August 22, 2023) [not precedential] (Opinion by Judge Frances S. Wolfson) [Mere descriptiveness refusal of YUCATAN SHRIMP for "prepared food, namely, shrimp, not live." Applicant contended that its YUCATAN SHRIMP recipe is uniquely identified as “originating with the Applicant."] 

 
Read comments and post your comment here.

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

Text Copyright John L. Welch 2023.

TTAB Sinks Nautica's Confusion and Dilution Claims Against NAUTICA for Motor Homes

In a 63-page opinion, the Board dismissed Nautica Apparel's Section 2(d) and Section 43(c) claims in this opposition to registration of the mark NAUTICA for "[r]ecreational vehicles, namely, motor homes." The Board found no likelihood of confusion primarily due to the differences in the involved goods. As to dilution-by-blurring, Nautica failed to prove that is mark NAUTICA is "widely recognized by the general consuming public of the United States as a designation of source, " as required by the dilution statute. Nautica Apparel, Inc. v. REV Recreation Group, Inc., Opposition No. 91263603 (August 16, 2023) [Opinion by Judge Jonathan Hudis).

Opposer Nautica relied on more than a dozen registrations for the mark NAUTICA for a variety of goods and services, including clothing, furniture, perfume, paint, pool floats, retail store services, and sponsorship of sporting events.

Strength of Opposer's Mark: As to the conceptual strength of opposer's mark, of the three third-party registrations submitted by Applicant REV, two involved marks with additional wording and all three were for vastly different goods and services from those of opposer's registrations. However, the Board found that NAUTICA "is suggestive of nautical-influenced products (at the very least apparel)," and therefore "does not have as a great a scope of protection as an arbitrary mark."

As to commercial strength, the Board considered "whatever relevant evidence is made of record up to and including the time of trial." The "vast majority of Opposer’s documented evidence ... demonstrates that the chief or core products with which Opposer promotes its NAUTICA mark are apparel goods and accessories."

Opposer's goods are sold in many stores nationwide, have been promoted in periodicals of wide circulation, and have been seen in a number of television shows. Although opposer's sales and advertising figures were "impressive," they were not broken down by product category. The Board therefore could not assess opposer’s revenues: "e.g., if 90% of Opposer’s sales are for apparel, the revenues would support consumer renown for NAUTICA for apparel but not much else."

The Board concluded that opposer’s NAUTICA mark is famous in connection with apparel and apparel accessories, but as to its remaining goods and services, the mark has "average commercial strength."

The Goods and Services: Turning to the goods, opposer did not claim any trademark rights for mobile homes or any other motorized vehicles. Opposer's evidence that a single motor home company - AIRSTREAM - has collaborated with fashion designers "does not show generally that consumers would tend to think the parties’ very disparate goods come from the same source." The Board found Applicant REV's goods and opposer's goods and services to be unrelated. The Board similarly found that opposer failed to proved an overlap in trade channels.

Purchaser Sophistication: Turning to purchaser care, "the inherently expensive nature of Applicant’s goods, motor homes, as well as the careful, lengthy and detailed circumstances surrounding their purchase, to consumers who are sophisticated in their buying decisions, as shown by the evidence of record, weighs against a finding" of likely confusion.

Conclusion on Likelihood of Confusion: Balancing the relevant DuPont factors, the Board concluded that opposer had failed to prove a likelihood of confusion.

On their face, there is no similarity between Opposer’s goods and services and Applicant’s goods as identified in the asserted Registrations and opposed Application. Opposer proffered insufficient evidence of relatedness or that the respective goods and/or services of the parties travel in overlapping trade channels. Applicant’s goods are expensive, purchasing Applicant’s goods is a lengthy and detailed process, and Applicant’s consumers are sophisticated in their purchase of Applicant’s goods. Opposer’s consumers, who are knowledgeable of NAUTICA branded products, also exercise a heightened degree of care in their purchases of Opposer’s goods. On this record, the extent of potential confusion is de minimis. The presence or absence of actual confusion, the market interface between the parties, and Applicant’s right to exclude others are neutral considerations.

Dilution by Blurring: Opposer failed to show that its mark NAUTICA is a "household name."

Taken together, this record evidence tends to show that Opposer’s NAUTICA mark has achieved some level of fame for Trademark Act Section 2(d) purposes, mostly in connection with apparel and apparel accessories. However, this evidence fails to establish that Opposer’s mark is “widely recognized by the general consuming public of the United States as a designation of source,” which is the standard set by the dilution statute.

And so the Board made short work of the dilution claim.

Read comments and post your comment here.

TTABlogger comment: Do you agree that "nautica" is suggestive of apparel?

Text Copyright John L. Welch 2023.

Current Roster of TTAB Administrative Trademark Judges (Corrected)

With the recent departure of Judge Linda A. Kuczma and the addition of Judges Thomas L. Casagrande, Wendy Boldt Cohen, and Jennifer E. Elgin, the Board’s membership now stands at twenty-eight (28) Administrative Trademark Judges. The current roster is set forth below, beginning with Chief Judge Gerard F. Rogers and then proceeding alphabetically.

Rogers, Gerard F. (Chief Judge): Appointed to TTAB in 1999. Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D. magna cum laude, New England School of Law.

Adlin, Michael B.: Appointed to TTAB in 2012. Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University; J.D., Boston University School of Law.

Allard, Martha B.: Appointed to TTAB in 2021. Prior Professional Experience: Private Practice (Nashville); Education: B.S. University of Kentucky; J.D., Western New England University School of Law.

Bergsman, Marc A.: Appointed to TTAB in 2006. Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.

Casagrande, Thomas L.: Appointed to TTAB in 2023. Prior Professional Experience: Private Practice 1991-2012, USPTO Associate Solicitor 2012-2023; Education: B.A., University of Pennsylvania; J.D., University of Connecticut School of Law.

Cataldo, Peter W.: Appointed to TTAB in 2006. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Coggins, Robert H.: Appointed to TTAB in 2017. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Davidson College; J.D., Wake Forest School of Law.

Cohen, Wendy B.: Appointed to TTAB in 2023. Prior Professional 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.

Dunn, Elizabeth A.: Appointed to TTAB in 2019. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Boston University; J.D., American University Washington College of Law.

Elgin, Jennifer L.: Appointed to TTAB in 2023. Prior Professional Experience: Private Practice, 1993-2020, TTAB Interlocutory Attorney, 2020-2023; Education: B.S., Cornell University; J.D., Emory University School of Law.

English, Christen M.: Appointed to TTAB in 2019. Prior Professional Experience: Private Practice; TTAB Interlocutory Attorney; Education: B.A., Boston College; J.D. Catholic University Columbus School of Law.

Goodman, Cheryl S.: Appointed to TTAB in 2014. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State College of Law.

Greenbaum, Cindy B.: Appointed to TTAB in 2012. Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Heasley, David K.: Appointed to TTAB in 2015. Prior Professional Experience: Private Practice (Washington, D.C.); Education: B.A., The Johns Hopkins University; J.D., University of Maryland School of Law.

Hudis, Jonathan: Appointed to TTAB in 2019. Prior Professional Experience: Private Practice (Washington, D.C. and Alexandria, Virginia); Education: B.A., State University of New York at Albany: J.D., Brooklyn Law School.

Johnson, Melayne K.: Appointed to TTAB in 2020. Prior Professional Experience: Corporate Counsel; Senior Counsel, Office of General Counsel at the U.S. Department of Health and Human Services (HHS); Education: B.A., University of Michigan; J.D., Ohio State University Moritz College of Law.

Kuhlke, Karen S.: Appointed to TTAB in 2005. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Larkin, Christopher C.: Appointed to TTAB in 2016. Prior Professional Experience: Private Practice (Los Angeles, CA; New York, N.Y.); Education: B.A., Stanford University; J.D., Columbia Law School.

Lebow, Mark: Appointed to TTAB in 2020. Prior Professional Experience: Private Practice (Alexandria, Virginia); Education: B.A., Florida Atlantic University; J.D., Hofstra University School of Law; L.L.M., John Marshall Law School.

Lykos, Angela: Appointed to TTAB in 2010. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., The Johns Hopkins University; J.D., Duke University Law School.

Lynch, Cynthia C.: Appointed to TTAB in 2015. Prior Professional Experience: Private Practice; Attorney-Advisor at the International Trade Commission; USPTO Assistant Solicitor: USPTO Administrator for Trademark Policy and Procedure; Education: B.A., University of North Carolina; J.D., University of Virginia School of Law.

Pologeorgis, George C.: Appointed to TTAB in 2015. Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Attorney in the Office of Trademark Quality Review and Training; Trademark Examining Attorney; Private Practice; Education: B.A., University of Pennsylvania; J.D., George Washington University National Law Center.

Shaw, Thomas V.: Appointed to TTAB in 2011. Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.

Taylor, Jyll S,: Appointed to TTAB in 2006. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of North Carolina at Chapel Hill; J.D., Howard University School of Law.

Thurmon, Marc A.: Appointed to TTAB in 2019. Prior Professional Experience: Private Practice; Adjunct Professor of Law, University of Texas School of Law; Assistant Professor of Law, Levin College of Law, University of Florida; Professor of Law at the Southern University Law Center, Southern University; Education: B.S, Louisiana State University; J.D. with high honors, Duke University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007. Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Wolfson, Frances S.: Appointed to TTAB in 2010. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., U.C. Santa Barbara; J.D., U.C.L.A.

Zervas, Albert J.: Appointed to TTAB in 2005. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.

Read comments and post your comment here.

Text Copyright John L. Welch 2023.

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

Here are three recent appeals from Section 2(d) refusals. At least one of the refusals was reversed. How do you think these came out? Answers will be found in the first comment.

In re Brand3, Inc., Serial No. 90483463 (August 16, 2023) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of the mark shown below [BRANDS disclaimed], for "Brand concept and brand development services for corporate and individual clients; Providing advertising and marketing consulting services to corporate and individual clients; Website traffic optimization for the websites of corporate and individual clients," in view of the mark HOMEPRO MATCH, registered on the Supplemental Register, for "Business and consumer services, namely, providing a website promoting, advertising and marketing, via the website, third party vendors and suppliers, and services and goods of third party vendors and suppliers in the field of contracting and home improvement, namely, home and commercial property construction, maintenance, renovation and repair; providing via the website a searchable online directory to consumers searching third party vendors and suppliers and goods and services of third party vendors and suppliers."]

In re Garan Services Corp., Serial No. 90433386 (August 18, 2023) [not precedential] (Opinion by Jonathan Hudis) [Section 2(d) refusal of STRIPES for "[e]ntertainment services, namely, providing on-line interactive children’s stories," in view of the identical, registered mark STRIPES "[p]ublication of books, of magazines, of journals, of newspapers, of periodicals, of catalogs, of brochures; [p]ublication of electronic newspapers accessible via a global computer network."]

In re Genomma Lab Internacional, S.A.B. de C.V., Serial Nos. 90820054 (August 14, 2023) [not precedential] (Opinion by Judge Cindy B. Greenbaum) [Section 2(d) refusal of SHOT B12+ for "Dietary supplements containing vitamin B12; Multivitamin preparations containing vitamin B12" in view of the registered mark SHOT-O-B12, for “dietary supplements, namely, vitamins."].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2023.

"WHEN THERE ARE NINE" Fails to Function as a Source Indicator for Scholarship Services, Says TTAB

The Board affirmed a failure-to-function refusal to register WHEN THERE ARE NINE, in standard character form, as a service mark for "providing educational scholarships." The Board found that the proposed mark "would be perceived by consumers as a widely used phrase showing support of Justice Ginsburg and women in the legal profession and thus, merely informational in nature rather than a source-indicator of Applicant’s service." In re Federal Bar Foundation, Serial No. 90525583 (August 16, 2023) [not precedential] (Opinion by Judge Wendy Boldt Cohen).

The issue for the Board was whether the relevant public - potential consumers of the identified scholarship services - would perceive WHEN THERE ARE NINE as indicating the source or origin of the services. [In an interview in 2015, Justice Ruth Bader Ginsberg was asked "when will there be enough women on the Court," and she replied "When there are nine."]. 

Examining Attorney Matthew Howell submitted evidence showing use of the phrase in a variety of contexts to convey support for Justice Ginsburg and her message - on websites, in media articles, as the title of a play about her, and with various items of merchandise, including framed art, clothing, key chains, coffee mugs, drinkware, pillows, pins, cups, stickers, posters, bags, luggage wraps and tags, yard signs, face masks, jewelry, greeting cards, and mouse pads.

As noted in D.C. One Wholesaler, “[t]he widespread ornamental use of the phrase [I ♥ DC] by third parties ‘is part of the environment in which the [mark] is perceived by the public and . . . may influence how the [mark] is perceived.’” 120 USPQ2d at 1716 (citations omitted).

The Board noted that the applicant used the phrase in the manner of a service mark, but that begs the question. D.C. One Wholesaler, 120 USPQ2d at 1716 (“The fact that Respondent has sometimes displayed I ♥ DC on hangtags and labels, in a non-ornamental manner that is conventional for the display of trademarks, does not require a different result.”). 

Based on the record evidence, the Board found that consumers would not perceive WHEN THERE ARE NINE as the indicator of a single source. "Rather, the record indicates that consumers would recognize the wording as conveying a message through use of a quote that is widely known to the public."

Applicant's website and press release referencing Justice Ginsberg "reinforces WHEN THERE ARE NINE as a recognized quote by Justice Ginsburg conveying her message and Applicant’s support for it."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Would a survey have helped?

Text Copyright John L. Welch 2023.

Precedential No. 22: TTAB Affirms "Single Work" Refusal of Book Title, Finding Translation Not a Separate Work

The Board upheld a refusal to register CHURCH BOY TO MILLIONAIRE for “Books in the field of faith-based coaching, personal development, motivational and inspirational topics; books in the nature of memoirs; books about personal development; printed matter in the field of personal development, namely, books, booklets, curricula, newsletters, magazines, printed periodicals," on the ground that the proposed mark is the title of a single creative work and thus fails to function as a trademark for the identified goods. Applicant Douglas Wood contended that the book and its Spanish translation are different works, but he failed to show that the two books have significantly different contents. In re Douglas Wood, 2023 USPQ2d 975 (TTAB 2023) [precedential] (Opinion by Judge Christopher Larkin).

(click on photo for larger picture)

“The title of a single creative work, such as a book, is not considered to be a trademark, and is therefore unregistrable.” In re MCDM Prods., LLC, 2022 USPQ2d 227, at *2 (TTAB 2022). "Unlike a copyright that has a limited term, a trademark can endure for as long as the trademark is used. Therefore, once copyright protection ends, and the work falls in the public domain, others must have the right to call the work by its name.” Id. at *3 n.2.

Applicant Wood argued that his specimen of use (above) shows two books of different titles, CHURCH BOY TO MILLIONAIRE and DE CHICO DE IGLESIA A MILLONARIO, marketed under the same mark. Wood contended that translation of a book "is not the type of inconsequential change such as a font change or file type where the content is unchanged." "[T]he choice of translator ... will have a large impact on the version [of a work] that is created."

The Board stated the issue as whether the Spanish-language version of Wood's book is a "second or subsequent edition of the English version "in which the content "[has] change[d] significantly." TMEP Sec. 1202.8(b). Examining Attorney Brian J. Pino pointed out that Applicant Wood did not argue, or provide any evidence, that the Spanish version of the English book has content that significantly differs from that of the English version. The Board agreed.

The Board acknowledged that a good translation requires that the translator have both linguistic and cultural skills, but even assuming the translator of Wood's book applied such skills, that doesn't establish that the Spanish translation of Wood's book contains significantly different content from the English version.

Moreover, Wood's specimen of use displays the two versions with links that allow a visitor to "GET THE BOOK TODAY" and "GET THE BOOK IN SPANISH," "effectively confirming that the English- and Spanish-language versions of 'THE BOOK' are one and the same in content."

We hasten to add that in rejecting Applicant’s categorical position, we are not holding that a translation could never result in a work that is significantly different in content from the translated work. We do not rule out the possibility that creating a translation could yield a “second or subsequent edition” of a book “in which the content [has] change[d] significantly.” TMEP § 1202.08(b). There is simply no evidence in the record here that the Spanish-language version of CHURCH BOY TO MILLIONAIRE is such a work.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: What about the booklets, curricula, newsletters, magazines, printed periodicals? Should they have survived this refusal?

Text Copyright John L. Welch 2023.

CAFC Sends Another "FLEX" Decision Back to the Board to Re-Consider Strength-of-Mark Analysis

In a non-precedential opinion, the CAFC affirmed-in-part, reversed-in-part, and remanded the Board's decision [here] sustaining an opposition to registration of Applicant Bad Elf's mark FLEX for "Global positioning system (GPS) apparatus; Global positioning system (GPS) receivers," on the ground of likely confusion with the registered marks FLEX, FLEX (Stylized), and FLEX PULSE for custom manufacture of electronics, engineering services and new product development services. The court found that the Board erred in its analysis of the strength of opposer's FLEX mark. Bad Elf, LLC v. Flex Ltd., Appeal No. 2022-1839 (Fed Cir. August 14, 2023) [not precedential].

This case was argued on the same day as Spireon, Inc. v. Flex Ltd., a precedential opinion in which the CAFC held that the Board erred in considering the strength of the same Flex's marks, and so it vacated and remanded. [TTABlogged here]. The parties in the instant case were ordered by the CAFC to submit supplemental briefing as to what bearing the Spireon decision had on this case.

In Spireon, the court held that "where the third party marks are identical marks for identical goods or services as the opposer, absent evidence of non-use for the commercial strength analysis, the marks must be given substantial weight in both the conceptual strength and commercial strength analyses." Furthermore, when the applicant's mark and opposer's mark are not identical and the opposer does not prove non-use of the third-party registered marks, “the commercial strength of the [opposer’s] marks must be considered weak as to [the applicant’s] non-identical mark."

Here, the opposer's mark and the third-party marks are identical, but Bad Elf's goods and opposer's services are not identical. "Therefore, we come to the same conclusion as we did in Spireon, that is, that the conceptual and commercial strength of the opposer's mark is substantially diluted."

The court also noted an inconsistency in the Board's analysis of the conceptual strength of opposer's FLEX mark. The Board found that several third party registrations had "some probative value" but then said that they were "insufficient in number to be probative."

As to opposer's FLEX PLUS mark, the Board made the same error in assessing its strength. The Board was ordered to reconsider the strength of that mark as well.

And so, the CAFC vacated the Board's decision "with respect to the Board’s analysis as to the strength of Flex’s marks" and it remanded to the Board "to reconsider this DuPont factor (and then to reweigh the DuPont factors) in light of this opinion and Spireon." The court affirmed all other aspects of the Board's Section 2(d) analysis.

Read comments and post your comment here.

TTABlogger comment: I'll bet the Board comes out with the same conclusion as the first time.

Text Copyright John L. Welch 2023.

TTAB Rules That PARKING.COM Is Generic and Ineligible for Both the Principal and the Supplemental Register

In a whopping 82-page opinion, the Board affirmed the USPTO's refusal to register PARKING.COM, on either the Principal Register or the Supplemental Register, as a service mark for “website providing information regarding parking availability." The Board first found the term to be generic for the services, and then, in the alternative, found it to be merely descriptive and lacking in secondary meaning. In re SP Plus Corporation, Serial No. 87906630 (August 11, 2023) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

Genericness:The first 79 pages of the opinion deal with the issue of genericness. Applicant SP Plus acknowledged that the term "parking" is generic for its services, and the evidence of record corroborated that conclusion: namely, "examples of websites or webpages that are devoted to providing information about available spaces in which to park vehicles (sometimes also to reserve a parking space), and that use the term 'parking' as the generic name for the information."

The evidence also established, not surprisingly, that.COM identifies a top level domain used in designating an Internet web address, and also a short hand reference to a company doing business online.

SP Plus submitted more than 100 third-party registration certificates for .COM marks, including DIAPER.COM, HOMES.COM, TENNIS.COM, and HOTELS.COM. The Board was not impressed.

Applicant’s argument ignores the vital fact that the registrability determination in a generic case depends entirely on the evidence of consumer perception of the mark as a whole available to the USPTO at the time the registrability determination is made, a matter which cannot be determined from the face of the registration.

The Board rejected the argument that the third-party registrations outweigh the evidence of dictionary definitions, Wikipedia, the domain registrar Verisign, and relevant industry use showing that .COM is generic as applied to Applicant’s website services.

The Board observed that use of a term as a domain name does not preclude it serving as registrable source indicator. It depends on consumer perception. The Board found that the use of the term "parking.com" as part of a number of domain names for parking websites demonstrates that "'parking.com' names the genus of parking availability information website to the relevant consumer of the services."

The Board disagreed with SP Plus’s argument that the refusal must fail absent "evidence of the public referring to multiple websites as 'parking.coms.'" "Being the first to use a term does not preclude the term being found to be generic."

The Board pooh-poohed SP Plus's evidence purporting to show "that consumers use Applicant’s Mark to specifically identify Applicant as the source of Applicant’s parking availability information services." A handful of customer reviews were "greatly outweighed by the widespread third-party generic use to designate parking availability information websites." A declaration from an officer of ST Plus lacked detail and was unpersuasive.

In view of the evidence of record, we find that the Examining Attorney [David Tooley] has carried his burden of demonstrating that the relevant consumer understands “parking.com” to refer to the identified “website providing information regarding parking availability,” and Applicant has failed to rebut the evidence.

And so, the Board affirmed the genericness refusal.

Acquired Distinctiveness; Assuming arguendo that PARKING.COM is not generic, the Board considered SP Plus's claim of acquired distinctiveness. The Board found that PARKING.COM is highly descriptive of the recited services and therefore SP Plus faces an “elevated burden to establish acquired distinctiveness.” Applying the CAFC's Converse factors, the Board found that SP Plus failed to prove acquired distinctiveness.

Applicant has been successful in promoting its services and attracting consumers, but we do not see evidence that this success is tied to consumer recognition of its mark. Indeed, the success could be wholly tied to the popularity of the parking availability information service. While the online reviews and Applicant’s uses include sparse use as a service mark, the record overwhelmingly shows a proliferation of parking websites, and use of parking.com to identify the genus of the websites or their Internet address.

Conclusion: And so, the Board rejected SP Plus's alternative Section 2(f) claim, and it also denied registration on the Supplemental Register.

Read comments and post your comment here.

TTABlogger comment: If one assumes arguendo that PARKING.COM is not generic, shouldn't it be eligible for the Supplemental Register? Just because applicant failed to prove acquired distinctiveness today doesn't mean it might not acquire it some time later.

Text Copyright John L. Welch 2023.

Precedential No. 21: TTAB Rules That Sur-Sur-Rebuttal Expert Reports Are Never Permitted

In this consolidated opposition proceeding involving, inter alia, Applicant Coulter Venture's mark MONSTER LITE for weight lifting equipment, the parties served four expert reports: an initial report by Monster ("MEC"), a rebuttal report by Coulter, a sur-rebuttal report by MEC, and then a sur-sur-rebuttal report by Coulter. The Board granted MEC leave to serve its sur-rebuttal report, but limited it to a critique of Coulter's report. The Board then nixed Coulter's sur-sur-rebuttal report, ruling that sur-sur-rebuttal reports are never permitted. Monster Energy Company v. Coulter Ventures, LLC, 2023 USPQ2d 916 (TTAB 2023) (Order by Katie Bukrinsky, Interlocutory Attorney).

MEC's initial expert report included the results of a survey purportedly showing an overlap of consumers for the respective goods of the parties. Coulter countered with an expert report critiquing the survey and offered its own survey results.

MEC then served its sur-rebuttal report, without seeking leave of the Board. However, MEC then sought leave to serve the sur-rebuttal report, which the Board granted, relying on NewEgg Inc. v. Schoolhouse Outfitters, LLC, 118 USPQ2d 1242, 1244 (TTAB 2016).

In NewEgg, the Board held that “under appropriate circumstances, a sur-rebuttal expert report would be proper as long as a party that wishes to provide a sur-rebuttal expert report promptly seeks leave to do so” and if consideration of the sur-rebuttal report would “serve the interest of fairness [and] benefit the Board in its ability to make a just determination of the merits of this case.” 118 USPQ2d at 1244.

As to MEC's sur-rebuttal report, the Board observed that, as in NewEgg, the report includes "new evidence in the form of a different survey performed according to a different methodology on the issue of likelihood of confusion." NewEgg, 118 USPQ2d at 1244. The Board found that "it would serve the interest of fairness, and allow the Board to make a just determination of the merits of the case, to allow MEC to submit expert testimony opining on the survey in the [Coulter] Rebuttal."

Specifically, the only portion of [MEC's] Sur-Rebuttal that the Board allows is a critique of [Coulter's] Rebuttal, with no presentation of new evidence. Any portion that constitutes bolstering of the [original MEC] Report will not be considered.

As to Coulter's sur-sur-rebuttal expert report, neither the Federal Rules of Civil Procedure nor the Trademark Rules of Practice expressly prohibits such reports. Whether to allow any expert reports other than those expressly provided for in Fed. R. Civ. P. 26(a) and (e) is left to the discretion of the tribunal. And, or course, the Board has the inherent authority to manage its docket. Coffee Studio LLC v. Reign LLC, 129 USPQ2d 1480, 1482 n.7 (TTAB 2019); Carrini, Inc. v. Carla Carini, S.R.L., 57 USPQ2d 1067, 1071 (TTAB 2000).

The Board drew a line in the sand, holding that "sur-sur-rebuttal expert reports will not be permitted under any circumstances."

Continuously allowing expert rebuttal would create a situation “where there would be no finality to expert reports.... Such a system would eviscerate the expert report requirements of Rule 26, would wreak havoc in docket control, and would amount to unlimited expert opinion presentation.”  *** A bright-line rule that sur-sur-rebuttal expert reports will not be permitted under any circumstances provides clarity for parties preparing expert testimony that there will be finality to the exchange of expert opinions. Any further challenges to the opposing party’s expert testimony may be addressed through deposition and cross-examination of that expert.

Read comments and post your comment here.

TTABlogger comment: So, sir, sur-rebuttal expert reports may be allowed. But as to sur-sur-rebuttal reports, no sir.

Text Copyright John L. Welch 2023.

TTABlog Test: Is "S!MPLY" for EVA FOOTWEAR Confusable With "SIMPLY" for Dresses, Jumpsuits, and Rompers?

The USPTO refused to register the proposed mark S!MPLY for "Footwear, primarily made of ethylene-vinyl acetate; Slip-on shoes, primarily made of ethylene-vinyl acetate," finding confusion likely with the registered mark SIMPLY for "Dresses; Jumpsuits; Rompers." Applicant Simply Southern argued that its mark, when said aloud,"is literally: ‘s, exclamation point, m, ply (or p-l-y)." As to the goods, it asserted that there was no evidence that dresses, jumpsuits, or rompers are made with ethylene-vinyl acetate. How do you think this appeal came out? In re Simply Southern Holdings, LLC, Serial No. 90728560 (August 3, 2023) [not precedential] [not precedential] (Opinion by Judge Thomas Shaw).

The Board was not impressed with Simply Southern's pronuciation argument. "Rather, we find it likely that consumers would pronounce Applicant’s mark as 'simply,' the same as Registrant’s mark." Simply Southern’s own specimen includes the S!MPLY mark with tag line stating: "be you and live simply." Moreover, the Board noted, "an exclamation point is similar to an inverted lowercase letter 'i.'"

The Board also found that substitution of an exclamation point for the letter “I” "does little to change the commercial impression of Applicant’s mark so as to distinguish it from the registered mark."

As to the goods, Examining Attorney April Roach submitted webpage excerpts showing that footwear and dresses, jumpsuits, and rompers are commonly made and sold under a single mark: for example, Kate Spade, Boden, Roxy, Olukai, Ugg, Fila, Hoka, Merrell, and Puma. "Notably, the footwear on these websites are made from a variety of materials, including, leather, fabric, rubber, and EVA foam." And so, the Board found the involved goods to be related.

Simply Southern's argument that the registration does not cover EVA goods was simply off the mark. "It is not necessary that Applicant’s goods be encompassed by Registrant’s goods or made from the same material. The goods need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [they] emanate from the same source."

The Office's website evidence demonstrated that the goods are sold through the same types of online retail stores to some of the same consumers.

And so, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2023.

Affirming Refusal to Register, TTAB Finds "WindyWings" Product Configuration Lacking in Acquired Distinctiveness

Applicant Exhart Environmental's application to register the product configuration shown below as a trademark for "non-metal garden stakes sold wholesale; Decorative garden accessories, namely, figurines of plastic sold wholesale" failed to achieve lift-off. The Board agreed with Examining Attorney Bridget Watson that Exhart's proof of acquired distinctiveness was insufficient to justify registration. In re Exhart Environmental Systems, Inc., Serial No. 90006864 (August 8, 2023) [not precedential] (Opinion by Judge Michael B. Adlin).

As we know, a product configuration is registrable as a trademark only upon a showing of acquired distinctiveness under Section 2(f). Walmart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000). An applicant’s burden in establishing the requisite acquired distinctiveness is "heavier" when a product configurations is involved.

Much of Exhart's evidence focused on the "flexible wings" of the product, but Exhart was not seeking protection for its flexible wings. Furthermore, its advertising showing pictures of the product did not inform consumers that the product design is a source indicator.

Because Applicant does not seek a registration covering “flexible wings,” Applicant’s advertising instructing consumers to “look for the flexible wings” does not show that the mark Applicant seeks to register has acquired distinctiveness. Furthermore, “the record contains no evidence regarding how widely this ‘look for’ advertising was disseminated, how many consumers may have been exposed to it, or its effectiveness in indoctrinating consumers to view the design as an indicator of source.”

Exhart's advertising refers to the product as "WindyWings," and the surrounding context indicates that the product’s name/mark is “WindyWings.” The Board found, based on the specimen and other promotional material, that "consumers would focus on other matter for source indication and would not perceive the product design as a source indicator. This weighs against Applicant’s claim of acquired distinctiveness."

Exhart's long use of the proposed mark (since 1999) did not establish acquired distinctiveness, nor did its sales figures. "The years of use and sales reflect the popularity of the product, but, given the record as a whole, do not persuade us that consumers view the product configuration as a mark." Exhart's evidence regarding its enforcement efforts and the alleged copying of the product configuration lacked sufficient detail to be probative. And two declarations from retailers referred to consumer recognition of the "flexible wings" but not the product shape at issue.

The Board concluded that Exhart "has not met its heavy burden to establish that its product configuration has acquired distinctiveness" and it therefore affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Seems to me that the flapping wings would chase birds away. Is that what these things are supposed to do? I can see squirrels destroying them pretty quickly. At least Cape Cod squirrels.

Text Copyright John L. Welch 2023.

BRAINY ACTS Not Confusable With BRAINY BABY for Children's Activity Books, Says TTAB

The Board dismissed this Section 2(d) opposition to registration of BRAINY ACTS for educational publications in the field of early childhood development, finding confusion unlikely with the registered mark BRAINY BABIES for children's interactive educational books. The goods overlap, and as to those goods the Board must presume that they travel in the same ordinary trade channels and will be marketed to the same classes of consumers. The first DuPont factor proved to be the hurdle that tripped up Opposer Small Fry. Small Fry Beginnings, LLC v. Evelyn Williams English, Opposition No. 91269989 (August 7, 2023) [not precedential] (Opinion by Judge Martha B. Allard).

Small Fry claimed to own a family of BRAINY marks, but its proofs fell short. In order to establish ownership of a family of marks, Small Fry had to first establish priority vis-a-vis the claimed "family" feature by showing that the marks allegedly in the family "were used and promoted together in such a manner as to create public recognition coupled with an association of common origin predicated on the 'family' feature." "Simply using [and/or registering] a series of similar marks does not of itself establish the existence of a family." The Board concluded that Small Fry failed to demonstrate that a family of marks "has been consistently promoted or advertised together in such a manner to cause consumers to recognize the common feature."

The Board then turned to Small Fry's individual marks, the closest being the registered mark BRAINY BABY for "Children’s activity books; Children’s books; Children’s interactive educational books."

The Board noted that the marks BRAINY ACTS and BRAINY BABY sound different: "Applicant’s mark, when pronounced, sounds like one word, “brainiacs.” In contrast, Opposer's mark sounds like two distinct words; moreover, its use of alliteration causes the mark to have a lilting cadence, which consists not only of the initial “b” sound, but also the repetition of the long “a” sound, overall giving it a pleasing−but very different− sound when pronounced."

Considering the marks in their entireties, we find that the marks are dissimilar. Applicant’s and Opposer’s marks are similar only to the extent that they each contain the term BRAINY and connote that using their respective identified goods will result in a smart child. Overall, however, the marks are dissimilar due to their significant differences in pronunciation and commercial impression due to Applicant’s use of a play on words compared to Opposer’s use of alliteration.

Small Fry claimed that its BRAINY BABY mark is famous, pointing to long use, strong sales, robust advertising and promotional efforts, unsolicited media recognition, and industry awards. The Board found that the evidence and testimony "supports the conclusion that Opposer runs a commercially successful business, but given the unclear, imprecise nature of Opposer’s testimony, the evidence does not support a finding that Opposer’s mark falls on the higher end of the spectrum of fame." The Board concluded that Small Fry failed to show that its BRAINY BABY mark merits an expanded scope of protection.

As to conceptual strength, since the BRAINY BABY mark is registered on the Principal Register without a claim of acquired distinctiveness, it is presumed to be inherently distinctive and at least suggestive. However, third-party registration evidence of marks containing the word BRAINY for educational services (which the Board found to be closely related to the goods at issue) led the Board to conclude that "Opposer’s BRAINY BABY mark is highly suggestive because it connotes the purpose of Opposer’s children’s books, i.e., to stimulate brain development in babies to promote intelligence."

In sum, Small Fry failed to prove that its mark is famous or commercially strong, but applicant was unsuccessful in demonstrating that the BRAINY BABY mark is commercially weak. And so, the Board found find that the BRAINY BABY mark "falls in the middle of the commercial strength spectrum from very strong to very weak." However, the BRAINY BABY mark is "highly suggestive" for Small Fry's goods. Therefore, the Board found that the mark is entitled to "a relatively narrow scope of protection."

Although the parties’ goods are legally identical in part, the channels of trade and classes of consumers are presumed to be the same, and the parties’ goods may be subject to impulse purchasing, overall, we find the marks sufficiently dissimilar to avoid a likelihood of confusion.

Read comments and post your comment here.

TTABlogger comment: The "family of marks" argument is a consistent failure.

Text Copyright John L. Welch 2023.

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

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

Eden Food, Inc v. Smooth Lounge, Opposition No. 91265174 (August 3, 2023) [not precedential] (Opinion by Judge George C. Pologeorgis) [Section 2(d) opposition to registration of ADAM & EDEN FORMULATIONS (FORMULATIONS disclaimed) for "Dietary supplements; Herbal supplements; Mineral supplements; Nutritional supplements; Vitamin supplements" in view of the registered mark EDEN for, inter alia, dietary food supplements.]

TF Intellectual Property Pty Ltd v. Kenneth Thomas, Opposition No. 91270193 (August 4, 2023) [not precedential (Opinion by Judge Marc A. Bergsman) [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," in view of the marks CULTURE KINGS, in standard character form, for streetwear style jewelry, bags, including luggage, purses and wallets, clothing, sports equipment, and retail sales services featuring streetwear clothing and accessories.]

OTG Experience, LLC v. Andy Moeckel, Opposition No. 91270860 (August 4, 2023) [not precedential] (Opinion by Judge Cheryl S. Goodman) [Opposition to registration of the mark THE FLIP FLOP GUY (in standard characters) for "Marinades; Sauces" (Class 30) and for "Food preparation; Personal chef services" (Class 43), in view of the registered mark FLIP FLOP PANCAKE SHOP (in standard characters) [PANCAKE SHOP disclaimed], for "Retail store services featuring publications, prepackaged food, candy and beverages" (Class 35) and "Restaurant services; Take-out restaurant services" (Class 43).]

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2023.