TTABlog Test: Which of These Three Genericness Refusals Was/Were Reversed on Appeal?

A genericness refusal is the USPTO's nuclear option and should be employed with caution. Here are three recent appeals from genericness refusals. At least one of them was reversed. How do you think they came out? Answers will be found in the first comment. 

In re Big River Steel LLC, Serial No. 90887436 (September 22, 2023) [not precedential] (Opinion by Judge Martha B. Allard). [Requirement for disclaimer of the word STEEL in the mark shown below, for "Steel products, namely, steel sheets and coils. The Examining Attorney accepted applicant's claim of acquired distinctiveness for "U.S. STEEL."]

In re RokFit, Inc., Serial No. 90507392 (September 27, 2023) [not precedential] (Opinion by Judge Mark A. Thurmon) [Refusal to register ATHLETIC STREETWEAR for “Leggings; Shoes; Shorts; Socks; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Athletic shoes; Beanies; Board shorts; Graphic T-shirts; Hoodies; Short-sleeved or long-sleeved t-shirts; Sports bras; Tank tops; Athletic shorts; Gym shorts" on the ground of genericness. "Applicant submitted the absence of results from a dictionary search for'“streetwear' as evidence this term is not generic."]

In re Benjamin & Brothers, LLC d/b/a Reservations.com, Serial Nos. 88396223 (September 26, 2023) [not precedential] (Opinion by Judge Christen M. English) [Refusal to register RESERVATIONS.COM as a trademark for travel agency and motel reservation services. Applicant submitted the results of a survey modeled after the survey in the Booking.com case.]

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TTABlog comment: How did you do? BTW: I did not see any mention of the burden of proof standard for genericness. Preponderance? Clear and convincing?

Text Copyright John L. Welch 2023.

Not Precedential: TTABlog Test - Is WEALE Primarily Merely a Surname for Body Care Products?

[The Board mistakenly labeled this opinion PRECEDENTIAL, but corrected the mistake]. The USPTO refused to register the proposed mark WEALE for various body care products, deeming the mark to be primarily merely a surname under Section 2(e)(4). Database and website evidence identified fewer than 150 individuals with the surname WEALE, leading the Board to find WEALE to be a "rare surname." No one associated with the applicant has that surname. There was no probative evidence that the word has a non-surname meaning. The Board found that WEALE has the structure and pronunciation of a surname. So, how did this appeal come out? In re Weale Care, LLC, Serial No. 90756950 (September 26, 2023, amended opinion September 28, 2023) [not precedential] (Opinion by Judge Wendy B. Cohen).

In assessing a Section 2(d) refusal, the Board considers the so-called Benthin factors (In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995)): 

• Whether the surname is rare;
• Whether anyone connected with the applicant has that surname;
• Whether the term has any recognized meaning other than as a surname e.g., an “ordinary language” meaning; and 
• Whether the term has the structure and pronunciation of a surname.

Examining Attorney Christina Sobral relied on data from the LexisNexis surname database and on several webpages referencing individuals with the surname WEALE. The Board, after weeding out duplicates and individuals outside this country, found fewer than 150 relevant references and it therefore dubbed WEALE a rare surname. 

While the fact that WEALE appears to be a rare surname weighs somewhat in Applicant’s favor, it does not end the inquiry. The statutory provision makes no distinction between rare and commonplace surnames.

The USPTO did not dispute the applicant's assertion that no one associated with applicant has the surname WEALE.

As to non-surname meanings, the applicant pointed to as dictionary entry stating that “weal” is the phonetic equivalent of “weale” and has a recognized meaning of a “happy or prosperous state that is aligned with [Applicant’s] branding.” The Board was unimpressed. "There is no evidence of record that indicates these meanings are readily recognized by the average consumer. It is not enough for Applicant to uncover a dictionary reference for the term in question."

Finally, Applicant argued that WEALE does not have the "structure and sound of a surname," but it offered no evidence on this point. [What would the evidence look like? - ed.]. The Examining Attorney likewise offered no evidence or argument on this point.

Nonetheless, we find that WEALE has the structure and pronunciation of a surname as it “would not be perceived as an initialism or acronym . . . and does not have the appearance of having been coined by combining a root element that has a readily understood meaning in its own right with either a prefix or a suffix.” In re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004). In short, WEALE sounds like a surname with the structure or format of a surname.

Seemingly placing the burden of proof on the applicant, the Board concluded:

While WEALE may be rarely encountered as a surname it possesses the structure and pronunciation of one, and there is insufficient evidence on this record of a recognized non-surname significance of the term. Thus, we cannot find, based on this record, that its rarity removes WEALE from being primarily merely a surname.

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TTABlogger comment: A strange decision, yet precedential. [Not any more. See corrected opinion]. Shouldn't the applicant be given the benefit of the doubt, given the lack of evidence provided by the Office?

Text Copyright John L. Welch 2023.

TTABlog Test: Are Mugs, Pastries, and Coffee Shops Related to Tote Bags and Shirts for Section 2(d) Purposes?

The USPTO refused to register the mark FRANKIE ROSE for "Cups and mugs" in International Class 21, "Pastries; Sandwiches; Coffee beans; Ground coffee beans," in International Class 30, "Online retail store services featuring coffee featuring in-store order pickup, in International Class 35; and"Catering services; Coffee shops, in International Class 43, finding confusion likely with the identical mark registered for "tote bags" in International Class 18 and "shirts" in International Class 25. Applicant argued that its goods and services “are all related to food and beverage items” while Registrant’s goods are “ancillary goods to [Registrant’s] cosmetics products.” How do you think this came out? In re AVR Realty Company, LLC, Serial No. 90699970 (September 25, 2023) [not precedential] (Opinion by Judge Robert H. Coggins).

Applicant feebly argued that the connotation and commercial impression of the marks differ because when the ROSE portion of its mark is "considered in the context of coffee, [it] suggests that someone has ‘risen’ after having their coffee, i.e., from the effects of caffeine." However, there was no evidence or reason why the mark FRANKIE ROSE would have different meanings for coffee, tote bags, and shirts. Moreover, the Board noted, applicant's mark would have no such meaning when used with its non-coffee goods and services, or with decaffeinated coffee.

The Board found that the identity of the marks "weighed heavily" in favor of affirmance of the refusal.

To show the relatedness of the involved goods and services, Examining Attorney Uloma Ukaoma relied on third-party webpages - including those of Pete's coffee, Starbucks, and Dunkin' Donuts - showing use of the same mark for tote bags, mugs, coffee beans, shirts, etc.  

As to applicant's arguments about its food items versus registrant's allegedly ancillary goods for cosmetics, the Board observed that it is "not concerned with 'extrinsic evidence regarding Applicant and Registrant themselves'" and "it is not dispositive that Applicant itself might not sell shirts or tote bags, or that Registrant itself might not offer any of Applicant’s goods or services." 

Rather, . . . the evidence need only establish that the goods and services [as identified] are related in some manner, or the conditions surrounding their marketing are such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source.

The evidence showed that the involved goods and services "may be encountered by the same classes of consumers under the same marks in at least two common trade channels – the websites and physical locations of the coffee shops." Moreover, there were no restrictions as to channels of trade in the application or cited registration.

As to purchaser sophistication, applicant again barked up the wrong tree, attempting to narrow registrant's identified goods to the cosmetics field and insisting that cosmetics are "highly relevant to the sophistication question." Moreover, the application and registration have no limitation on price points for the goods and services at issue, "we must treat the goods as including inexpensive shirts, tote bags, mugs, coffee beans, and pasties [sic], and the services as including inexpensive coffee beverages, and therefore presume that purchasers for these goods and services include ordinary consumers who may buy inexpensive items on impulse."

The Board concluded that confusion is likely as to all of applicant's goods, and so it affirmed the refusal.

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TTABlogger comment: So, coffee is related to everything sold in Starbucks? How do you like them apples?

Text Copyright John L. Welch 2023.

Rejecting Urban Dictionary Definition, TTAB Affirms 2(e)(4) Surname Refusal of LAFOND for Jellies and Jams

Affirming a Section 2(e)(4) refusal, the Board found the proposed mark LAFOND for 'Fruit conserves; Fruit preserves; Fruit spreads; Jellies, jams; Nut butters" and for "Tea; Fruit sauces" to be primarily merely a surname. The Board agreed with Examining Attorney Claudia A. Kopenski that LAFOND is not an uncommon surname, that it has no other recognized meaning, and that the term has the look and sound of a surname. In re St. Dalfour International Incorporated, Serial No. 90527587 (September 21, 2013) [Opinion by Judge Thomas L. Casagrande].

The LexisNexis database of phone numbers included 8000 entries for the surname LAFOND. The 2010 U.S. Census data included 4112 occurrences. And so the Board concluded that "the surname LAFOND is not uncommon in the sense implicated by the Section 2(e)(4) inquiry."

Applicant argued that "[t]here are no famous, or infamous, people with the name of Lafond," but the Board pointed out that "celebrity status," "national notoriety," or "significant media attention" are not required when, as here, there are thousands of people in the Unites States with that surname.

Although if someone associated with applicant had the surname LAFOND, that would tend to show that the public is familiar with the name, the fact that no one associated with applicant has the surname LAFOND is a neutral factor.

Applicant acknowledged that there was no dictionary definition of LAFOND in the record, but it pointed to an urbandictionary.com entry defining “Lafond” as “the sweetest most loving person you will ever meet.” Although the examining attorney did not refute this evidence, the Board "tend[s] to be cautious, due to its nature, about giving it too much weight in the absence of evidence corroborating the definition at issue.

[T]he problem is that there is no corroborating evidence that gives us even a minimal degree of confidence that any significant portion of the consuming public has been exposed to or recognizes this definition. In fact, the only actual dictionaries in the record (Merriam-Webster Dictionary and Collins Dictionary) contained no definition of “lafond.” We therefore decline to give any weight to the Urban Dictionary definition cited by Applicant.

Applicant pointed to "Lafond" as a place name in Alberta, Canada, but there was no evidence that "the place name significance to the U.S. consumer is the same or greater than the surname significance, particularly in light of the fact that places are commonly named after people."

Applicant also contended that "the word ‘Lafond’ translates from French to English as ‘the bottom.'" However, applicant's proffered Google translation was for the two-word term "la fond," not "lafond." The Board noted the Collins dictionaries, which had no entry for "lafond." [Why would it matter that French speakers might translate the term when the vast majority of Americans do not speak French and would not translate the term anyway? -ed.-].

Finally, the Board found that LAFOND has the look an pronunciation of a surname, comparing it to 2,025 occurrences of the surname LAFON and 1,079 occurrences of the surname LAFONT in the LexisNexis database. [What about the 8000 entries for LAFOND? -ed.].

And so, the Board affirmed the refusal.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2023.

A NEW KIND OF SODA Fails to Function as a Trademark for Beverages, Says TTAB

The Board upheld a refusal to register the proposed mark A NEW KIND OF SODA on the Supplemental Register, for "Non-alcoholic sparkling fruit juice beverages; non-alcoholic water-based beverages," finding that the phrase fails to function as a trademark under Sections 1, 2 and 45 of the Trademark Act. Evidence of third-party use of the phrase "a new kind of soda," mixed in with applicant's own usage, took the fizz out of applicant's arguments. In re Olipop Inc., Serial No. 90381174 (September 21, 2023) [not precedential] (Opinion by Judge Thomas V. Shaw).

Based on the Internet evidence submitted by Examining Attorney Edward Fennessy, the Board found that "the phrase 'a new kind of soda' is commonly used in the beverage industry to identify sodas that differ from previous types or 'generations' of soda products. For example, Wave, Maine Root, Shrub, Booch Pop, No-Cal, GINSENG UP, Holy Cross, and even Dr Pepper [in 1904] have been described as 'a new kind of soda.'"

Because consumers are accustomed to seeing “a new kind of soda” commonly used in beverage advertising—much less the phrase “a new kind of ___” used in advertising in general—they would not perceive it as a mark identifying the source of Applicant’s goods but rather as merely conveying an informational message. Eagle Crest, 96 USPQ2d at 1229.

Applicant argued that “none of the goods in these references are even remotely similar to Applicant’s healthy tonic goods, and none use A NEW KIND OF SODA, which provides a wholly different commercial impression in Applicant’s specific context.” According to Applicant, it "does not use A NEW KIND OF SODA to mean ‘recent,’ but rather ‘unique,’ comparing its healthy qualities to the traditionally unhealthy qualities of soda, which is apparent given Applicant’s marketplace context." The Board was unimpressed: "consumers likely will view OLIPOP soda as one soda in a long line of 'new' sodas that have evolved to suit changing consumer tastes."

Applicant introduced copies of fifteen third-party registrations for marks comprised of the phrase “A NEW KIND OF ___, but only two of the registrations, A NEW KIND OF DEODORANT and A NEW KIND OF DEALERSHIP, have "the same simple declaratory structure" as Applicant’s mark. "These two registrations do not outweigh the Examining Attorney’s evidence." Moreover, as we practitioners have been repeatedly informed, prior actions by examining attorneys in other cases "have little evidentiary value and are not binding upon the USPTO or the Board."

And so, the Board affirmed the refusal.

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TTABlogger comment: What about A NEWER KIND OF SODA?

Text Copyright John L. Welch 2023.

TTABlog Test: Is "DEATH FROM ABOVE" Confusable With "HUNT FROM ABOVE" for Hunting Stands?

The USPTO refused to register the mark DEATH FROM ABOVE for hunting stands, finding confusion likely with the registered mark HUNT FROM ABOVE for "hunting stands for use in trees; seats especially adapted for hunting stands for use in trees." The goods overlap, but what about the marks? Applicant argued that consumers are more likely to focus on the distinctions between the words DEATH and HUNT because they appear as the first portions of the two marks. How do you think this came out? In re Heartland Climbers, LLC, Serial No. 90885309 (September 15, 2023) [not precedential] (Opinion by Judge Angela Lykos).

The overlap in goods and the presumption that those overlapping goods travel in the same trade channels to the same classes of consumer really put applicant under the gun, so to speak.

As to the marks, the Board disagreed that consumers are likely to focus on the words “Death” and “Hunt.” "There is no mechanical test to select the dominant element of a mark."

DEATH FROM ABOVE and HUNT FROM ABOVE are both unitary marks because the words “Death” and “Hunt” do not create a commercial impression separate and apart from the marks as a whole; that is, “Death” and “Hunt” are so integrated into the marks that they cannot be regarded as separable.

Furthermore, the marks convey the same idea, meaning or commercial impression: consumers are likely to recognize both phrases as referring to goods that facilitate hunting from an elevated vantage point.

Given the similarities between the marks and identity of the goods, consumers familiar with the mark HUNT FROM ABOVE are likely to perceive Applicant’s mark DEATH FROM ABOVE as a variant mark denoting a product line extension into a specific type of hunting stand.

And so the Board affirmed the refusal to register.

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TTABlogger comment: That was easy, wasn't it? Like shooting fish in a barrel (from above). The Board's argument about applicant's mark being seen as a "variation" of registrant's product line seems to me to be an end-run around the strict requirements for proving a family of marks.

Text Copyright John L. Welch 2023.

Precedential No. 27: TTAB Renders Split Decision in Appeal From Section 2(d) Refusal of IMPACT for Various Healthcare Services

In a dubiously precedential decision, the Board affirmed-in-part and reversed-in-part a refusal to register the mark IMPACT for various healthcare-related services in Classes 35, 44, and 45. The USPTO had refused registration in view of the mark IMPACT in the Stylized form shown below (without color), registered for "Consulting services in the field of patient relationship management for healthcare workers” in Class 35 and “Training in patient-centered, evidence-based community health worker-centered healthcare” in Class 41. In re OSF Healthcare System, 2023 USPQ2d 1089 (TTAB 2023) [precedential] (Opinion by Judge Christopher C. Larkin).

The Board first set forth a few standard ground rules for its decision. It observed that "[b]ecause each class in Applicant’s multi-class application is, in effect, a separate application, we consider each class separately, and determine whether [the Examining Attorney] has shown a likelihood of confusion with respect to each." It also noted that "'it is sufficient for finding a likelihood of confusion if relatedness is established for any [service] encompassed by the identification of [services] within a particular class in the application.'"

Applicant's Class 35 Services: Applicant's services include business consulting services that are encompassed by registrant's "consulting services in the field of patient relationship management." Finding the services to be legally identical, and presuming that they travel in the same trade channels to the same classes of purchasers, the Board found confusion likely and it affirmed the refusal.

Applicant's Class 44 Services: These services include "Healthcare and medical coordination with individuals and organizations related to improving community healthcare services." There was no match in the cited registration but the Examining Attorney contended that, based on third-party registrations and websites, these services are related to the services of "Training in patient-centered, evidence-based community health worker-centered healthcare" in the cited registration.

The Board found that only one of the websites appeared to offer both services, and none of the third-party registrations were on point. Thus the evidence was insufficient to support the Section 2(d) refusal, and so the Board reversed as to applicant's Class 44 services.

Applicant's Class 45 Services: Again, the Examining Attorney relied on third-party websites and registrations in maintaining that Registrant's training services are related to applicant's "Charitable services, namely, providing case management services in the nature of coordinating preventative healthcare and wellness program services for vulnerable populations to improve access to healthcare, quality of care, and health outcomes related thereto." For completeness, the Board also considered registrant's consulting services.

The Board found that at most two of the websites and none of the registrations supported the Section 2(d) refusal. Although the Board recognized that, in cases involving identical marks, "the services need not be shown to be closely related for there to be a likelihood of confusion," it found this evidence insufficient to establish relatedness. And so the Board reversed this refusal.

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TTABlogger comment: This decision is so completely fact-bound that, in my opinion, it is useless as citable precedent and does not merit the precedential label. Honk if you agree.

Text Copyright John L. Welch 2023.

Applying Contractual Estoppel, TTAB Grants Motion for Partial Summary Judgment in BYLT Oppositions

In one of two oppositions consolidated by the Board, opposer sought to block registration of the marks BYLT BASICS and BYLT PREMIUM BASICS, each for “hoodies, jackets, pants, shirts, briefs as underwear, jogging pants, men’s underwear, short-sleeve shirts, underwear; all of the foregoing excluding motorcycle related clothing and apparel.” Opposer claimed likely confusion with its registered mark B.Y.L.T. for various clothing items and sports drinks. Applicant successfully moved for partial summary judgment as to this opposition on the ground of contractual estoppel based on a litigation settlement agreement. BYLT Performance LLC v. BYLT, LLC, Oppositions Nos. 91274047 and 91276608 (September 14, 2023) [not precedential].

While opposing the motion for partial summary judgment, opposer also asked for time to take discovery, under FRCP 56(d). However, it's motion was untimely. Moreover, when such a request accompanies an opposition to a summary judgment motion, the Board will deem the request as moot.

As to the subject of the summary judgment motion, applicant maintained that that the parties entered into an agreement that prohibits Opposer from opposing the two trademark applications identified above.

Specifically, Applicant explains by way of background that to resolve a prior trademark infringement action between the parties in the United States District Court for the Central District of California, Case No. 8:18-cv-02194 (JVS-KES), the parties entered into a Settlement Agreement, which explicitly states that so long as Applicant abandoned its earlier-filed trademark application Serial No. 87912445, Opposer would not oppose Applicant’s other pending applications for BYLT BASICS and BYLT PREMIUM BASICS.

Opposer contended that this was essentially a coexistence agreement, which is unenforceable because numerous instances of actual confusion occurred since the agreement was executed. Opposer further claimed that Applicant did not comply with certain packaging requirements set forth in the agreement. Therefore, opposer argued, the Board should not enforce the agreement as a matter of public policy because the agreement was purportedly "not accomplishing what it was intended to do." Opposer argued that the Board should declare the agreement “rescinded, voided, or cancelled."

The Board observed that the equitable doctrine of contractual estoppel applies in Board proceedings when one party has agreed not to challenge registration of another’s mark. "While it does not lie within the jurisdiction of the Board to enforce a contract between parties, Vaughn Russell Candy Co. v. Cookies in Bloom, Inc., 47 USPQ2d 1635, 1638 n.6 (TTAB 1998), whether Opposer is contractually barred from opposing registration of Applicant’s involved applications clearly falls within the jurisdiction of the Board."

In particular, the Board may “consider the agreement, its construction or its validity if necessary to decide the issues properly before it … including the issue of estoppel.”

The Board pointed out that it is Board practice to interpret an agreement based not on the subjective intention of the parties, but on the objective words of their agreement. There was no genuine dispute that "Section 2 of the parties’ agreement clearly and unambiguously states that as long as Applicant files the express abandonment of its trademark application Serial No. 87912445 for the mark BYLT, Opposer agrees not to oppose, challenge, contest, or otherwise interfere with Applicant’s (as Plaintiff in the civil action) pending applications for BYLT BASICS or BYLT PREMIUM BASICS." Applicant complied with that requirement.

The Board noted that the agreement did not state any goal related to avoiding likely or actual confusion. "Specifically, there is no section in the agreement allowing for 'rescind[ing], void[ing], or cancel[ing]' the agreement due to actual confusion or other circumstance, as Opposer suggests."

Likewise, with respect to Opposer’s allegations that Applicant failed to comply with labelling requirements set forth in the agreement,the agreement is clear and unambiguous that only one precondition exists to invoke the consequence that Opposer may not oppose the applications identified in the agreement; that is, Applicant’s express withdrawal of application Serial No. 87912445 is the only condition for binding Opposer’s promise not to oppose.

And so, the Board dismissed Opposition No. 91274047, with prejudice.

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TTABlogger comment: You may remember the NAKED condom case, an unnecessarily complicated case involving contractual estoppel: TTABlogged here.

Text Copyright John L. Welch 2023.

TTAB Finds AUSTRALIAN BOTANICAL SOAP (Stylized) Geographically Descriptive of . . . SOAP

The Board upheld a Section 2(e)(2) refusal to register the mark AUSTRALIAN BOTANICAL SOAP in the stylized form shown below, for body soaps and various other Class 3 products [SOAP disclaimed], finding that the proposed mark is primarily geographically descriptive of the goods. Applicant claimed acquired distinctiveness based on several years of use in the United States and sales representing some 17 million bars of soap, but the Board found the evidence insufficient. In re Apperley Holdings Pty. Ltd., Serial No. 79277754 (September 11, 2023) [not precedential] (Opinion by Judge Thomas V. Shaw).

To support a Section 2(e)(2) refusal, the Office must show that: 

• (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 source of the goods or services is the geographic region named 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 that place. 

The Board first noted that Section 2(e)(2) still applies "if merely descriptive matter is included and the mark as a whole retains its primarily geographic significance." 

The Board unsurprisingly found that "the primary significance of AUSTRALIAN is geographic, i.e., the adjective form of AUSTRALIA, a place generally known to the American public." The addition of the term BOTANICAL SOAP does not detract from the geographical significance of the mark as a whole, since the disclaimed word SOAP is the generic name of the goods and the word BOTANICAL is at least descriptive of goods, like applicant's, made from plant-based ingredients.

Applicant's goods are made in Australia and its headquarters are there, so there was no dispute regarding the second element of the test. 

As to the required goods/place association, the Board observed that "[w]hen there is no question that the geographical significance of a term is its primary significance, and the geographical place is neither obscure nor remote, a public association of the goods with the place is presumed if an applicant’s goods originate in the place named in the mark."

Applicant argued that Australia "is not particularly known for cleaning products, nor is it shown that purchasers particularly care if cleaning products come from a country or continent." The Board deemed this argument "misplaced as a matter of law. Australia need not be known for Applicant’s goods if they are, as here, made there."

Applicant also argued that "Australian" could have more than one meaning: "For example, whether the product may be made in a fashion or manner first developed or used in Australia, the product includes ingredients that are 'Australian Botanical' products, the product uses ingredients favored by Australian wildlife such as the koala or kangaroo, or, as argued by the Examining Attorney, the product is made in Australia." The Board was unimpressed: "Applicant’s mark need not specify exactly which meaning of 'Australian' is intended for its goods because all of the suggested meanings have geographic significance." Furthermore, there was no evidence that AUSTRALIAN "refers to a non-geographic characteristic of the goods, i.e., that consumers would view the term AUSTRALIAN as anything but a geographic place."

Finally, the Board observed that the minimal stylization of the mark "does not creates a commercial impression separate and apart from the impression made by the wording itself."

Turning to the issue of acquired distinctiveness, the Board found that the proposed mark is "highly geographically descriptive," and therefore  a concomitantly high amount of evidence is needed to show secondary meaning. Applicant averred that it has sold some 19 million bars of soap, beginning in 2019. Again, the Board was not impressed: "Applicant’s use of the mark for only a few years—since 2019—suggests that the mark is unlikely to have acquired distinctiveness in the minds of consumers." Moreover, "although the volume of product sold is not insignificant, the numbers lack any context comparing them to soap sales generally (or even soap sales within a subcategory such as 'botanical' soaps), which would be required to show that the mark has acquired distinctiveness."

And so, the Board concluded that applicant failed to prove acquired distinctiveness, and it affirmed the refusal to register.

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TTABlogger comment: Is this a WYHA?

TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?

The rate of affirmance for Section 2(d) refusals is running at 85% or so this year. That's about 5% lower than usual. Here are three recent TTAB decisions. How do you think they came out?

In re Pour Moi Limited, Serial No. 79318691 (September 7, 2023) [not precedential] (Opinion by Judge Jennifer L. Elgin). [Section 2(d) refusal of POUR MOI for various clothing items in view of the identical mark registered for "Non-medicated skin care preparations and cosmetics for the face and body."]

In re Chick-A-Boom, LLC, Serial No. 90667527 (September 13, 2023) [not precedential] (Opinion by Judge Michael B. Adlin) [Section 2(d) refusal of CHICK-A-BOOM, for restaurant services, in view of the registered marks CHK-A BOOM for "providing of food and drink via online ordering, takeout services, and delivery services" and CHICKABOOM for "processed meat, namely, chicken."]

In re Destiladora del Valle de Tequila SA de CV, Serial No. 90269534 (September 15, 2023) [not precedential] (Opinion by Judge Robert H. Coggins) [Section 2(d) refusal to register DESPERADOS (in standard characters) for “Distilled agave liquor; Distilled blue agave liquor," in view of the registered marks shown below, for "beers."]

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2023.

TTAB Finds Polishing Disc Configuration Non-Functional but Lacking Acquired Distinctiveness

Applicant Buff and Shine cruised past a Section 2(e)(5) functionality refusal but failed to garner the Section 2(f) checkered flag in its attempt to register the product configuration shown below as a trademark for "machine parts, namely, polishing discs for rotary machines, random-orbit machines, and other surface preparation machines for vehicles." In re Buff and Shine Manufacturing, Inc., Serial No. 88737597 (September 12, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington).

According to the application, "The mark consist[s] of a three-dimensional configuration of a polishing disc that includes a repeating pattern of hexagonal (or honeycomb) shapes on a front surface of the disc. The broken lines on the outer image and within the honeycomb pattern indicate placement of the mark on the goods and is not a part of the mark."

Functionality: The Board considered the ever-popular Morton-Norwich factors, deemed "helpful in determining whether a particular design is functional:" 

• (1) the existence of a utility patent disclosing the utilitarian advantages of the design; 
• (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; 
• (3) the availability to competitors of functionally equivalent designs; and 
• (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

As to the first factor, there were no pertinent utility patents of record, but there was a design patent owned by the applicant. Citing In re Becton, Dickinson, the Board found the design patent to be some evidence of non-functionality, but not dispositive of the issue. The Board noted a prior utility patent application owned by applicant, but found that the claims had no bearing on the proposed mark. [Note: Becton, Dickinson says that you should look at the specification as well as the claims - ed.]

As to the second factor, the evidence included advertising for Applicant’s product stating that the "hex pattern" is a means of keeping the polishing pad cooler when polishing surfaces. The Board found that. although the goods have "the ability to dissipate heat, this is attributed to the fact the pads are textured, and not a result of the repeating hexagonal design. In other words, the design is not 'essential to the use or purpose' of the polishing pads."

As to the third factor, the evidence showed alternative, functionally-equivalent designs that are available to applicant’s competitors,. "Although not essential to our decision, this weighs in favor of finding the proposed mark is not functional."

As to the fourth factor, the examining attorney did not refute applicant's assertion that its product design does not help minimize the cost or simplify the manufacture of polishing discs.

And so, the Board reversed the Section 2(e)(5) refusal.

Acquired Distinctiveness: Since product designs are never inherently distinctive, applicant had to prove acquired distinctiveness under Section 2(f). Buff and Shine did not submit customer survey evidence or any declarations from actual purchasers, nor any evidence regarding the amount of sales or proof of its relevant market share.

Buff and Shine claimed use of the proposed mark since at least 2009, but it offered no "look for" advertising directing consumer attention to the design. Third-party Internet references to applicant's products did not refer to the repeated hexagonal design as an indicator of source, but at best touted that "a particular design that works well in this configuration." Statements made by consumers referred to applicant's "Hex-Logic” mark but not to the repeating pattern on the product.

In sum, the totality of the evidence falls woefully short of showing that the consuming public has come to understand the hexagonal design as an indicator of source. Noticeably absent is any statement, solicited or unsolicited, from a consumer of polishing discs attesting to the belief that the repeating hexagonal design is an indicator of source with respect to Applicant’s goods.

And so, the Board concluded that applicant had failed to prove acquired distinctiveness, and it affirmed the refusal to register on the ground that the proposed mark fails to function as a trademark.

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TTABlogger comment: Not many proposed product design marks clear the functionality hurdle, but even when they do, there's still a big hill to climb.

Text Copyright John L. Welch 2023.

Precedential No. 26: Listing of Application on ESTTA Cover Sheet Suffices for Claim of Common Law Rights in Opposition to Section 66(a) Application

Opposer Sterling Computers opposed IBM's Section 66(a) applications to register the marks STERLING and IBM STERLING for various Class 42 services. In its notice of opposition, opposer claimed a likelihood of confusion with its marks STERLING, in standard character and design form, and STERLING COMPUTERS. On its ESTTA cover sheet, opposer listed pending applications for all three marks, as well as common law rights in the mark STERLING COMPUTERS. When it filed an amended notice of opposition, opposer added common law rights in its STERLING marks. IBM objected because those added common law rights were not included on the ESTTA cover sheet. The Board, however, sided with opposer, holding that identification of the applications for the STERLING marks was enough to notify WIPO's International Bureau of its common law rights that are coterminous with those of its identified applications. Sterling Computers Corporation v. International Business Machines Corporation, 2023 USPQ2d 1050 (TTAB 2023) [precedential] (Order by Judge Jennifer L. Elgin).

Under the Madrid Protocol Treaty, the USPTO is obligated to notify the International Bureau (IB) of WIPO of either (1) a refusal based on the filing of an opposition, or (2) the possibility that an opposition may be filed, within 18 months of the filing of a request for extension of protection under Section 66(a). The USPTO provides the IB with the required information regarding an opposition by forwarding a copy of the ESTTA cover sheet completed by the opposer when an opposition is filed. See CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959 (1960) (TTAB 2011).

Under the Trademark Act and applicable rules, the grounds for the opposition are limited to those stated on the ESTTA cover sheet, regardless of the claims made in the notice of opposition itself. Moreover, additional grounds may not be added under any circumstances. "Thus, an opposer is not permitted to amend its pleading to include 'common law rights not previously identified on the ESTTA cover sheet.'" Destileria Serralles, Inc. v. K.K. Donq Co., 125 USPQ2d 1463, 1466-67, n. 11 (TTAB 2017) (granting motion to strike evidence and denying construed cross-motion to amend likelihood of confusion claim to assert common law rights in a mark for “rum cakes, chocolates and bar services” as beyond the scope of IB notification where pleaded registration only for “rum”).

Opposer argued that the listing of its pending used-based applications for its STERLING marks on the ESTTA cover sheet satisfied the requirement of Trademark Rules 2.104(c) and 2.107(b) that the IB be notified of opposer's common law rights in these marks. The Board agreed, noting that, unlike in Destileria, here the added common law rights are "coterminous with the services and dates of use recited in the use-based applications identified on the ESTTA cover sheet."

The Board noted that, on the ESTTA form, if a pleaded mark is the subject of a registration, the registration number may be entered in one text box, and if a mark is the subject of a pending application, the serial number may be entered in another box. In each case, the relevant information is automatically retrieved from the USPTO database. The form states: "If the asserted mark is not the subject of a U.S. Registration or pending application," then the mark should be entered in a third box.

The Board holds that identification of a use-based application or registration under Trademark Act Section 1(a) on the ESTTA cover sheet as grounds for an opposition against a Section 66(a) application based on likelihood of confusion claim is sufficient to satisfy the requirement to notify the IB of plaintiff’s reliance on common law rights that are coterminous with that pleaded use-based application or registration under Trademark Rules 2.104(c) and 2.107(b).

Therefore, the Board denied IBM's motion to strike the added allegations regarding opposer's common law rights in the STERLING marks.

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TTABlogger comment: IBM's Section 66(a) application was based on an original filing in Mauritius. Now, why do you think it filed first in Mauritius? (Flag of Mauritius shown below).

Text Copyright John L. Welch 2023.

Precedential No. 25: TTAB Deems Grace Period Petition for Cancellation Moot When Registrant Failed to Renew

The Board dismissed a petition for cancellation (of a registration for the mark ROD & CUSTOM for "magazines about automobiles") that was filed during the six-month grace period for (second) renewal of the challenged registration. When the registrant did not file its renewal application, the registration automatically expired as of its twentieth anniversary date, and so the later-filed petition for cancellation was deemed moot. Thomas C Taylor v. Motor Trend Group, LLC, 2023 USPQ2d 1051 (TTAB 2023) [precedential].

Registrant Motor Trend's Section 8 Declaration of Use and Section 9 Renewal application for its 20-year old registration were due on October 22, 2022. However, Section 8(a)(3) and Section 9(a) of the Trademark Act provide for a six-month grace period within which to file the declarations. The subject petition for cancellation was filed on March 1, 2023, within the grace period for renewal. The Board promptly instituted the cancellation proceeding, since the USPTO records indicated that the registration was still viable. Motor Trend failed to file its renewal papers by the grace period deadline of April 22, 2023. The USPTO records were updated on May 5, 2023 to indicate that the registration had expired and was cancelled. The Board, however, pointed out that:

[T]he date of expiration of a registration is not based on the expiration of the grace period or the date on which the USPTO takes the ministerial action of entering the expiration and cancellation of the registration into the USPTO trademark database. Land O’ Lakes, Inc. v. Hugunin, 88 USPQ2d 1957, 1959 (TTAB 2008).

On May 11, 2023, the Board issued an order under Rule 2.134(b), requiring Motor Trend to show cause why its failure to renew should not be deemed the equivalent of a cancellation by request without the consent of the petitioner, resulting in judgment for petitioner. Motor Trend responded by moving to dismiss the proceeding as moot. The Board agreed with Motor Trend, ruling that "if a combined Sections 8 and 9 affidavit is not filed by the end of the grace period, a registration expires by operation of law as of the last day of its ten-year term, and no rights in the registration exist after that date." Therefore, the subject registration expired on October 22, 2022.

Respondent’s registration expired prior to the filing of the petition to cancel because there was no renewal filing made within the statutory period (including the grace period), even though Office records were not updated until later to show the expiration. As a result, Petitioner’s petition to cancel for abandonment was filed after the expiration date of the registration and is therefore moot.

The Board ruled that Rule 2.134(b) was inapplicable because it applies “when a subject registration comes due for a Section 8 affidavit or Section 9 renewal during the course of the proceeding.”

The purpose of Rule 2.134(b), and the policy underlying the issuance of a show cause order, is to prevent a cancellation proceeding respondent whose subject registration comes due, during the course of the proceeding, for a Section 8 affidavit or Section 9 renewal (or in the case of a Section 66(a) registration, a Section 71 affidavit or Section 70 renewal), from being able to moot the proceeding, and avoid judgment, by deliberately failing to file the required affidavits or renewal applications.

Here the subject registration was in the grace period when the petition for cancellation was filed. Motor Trend’s registration expired by operation of law as of October 22, 2022, a date before Petitioner Taylor filed his petition to cancel.

And so, the Board dismissed the petition for cancellation without prejudice, as moot.

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TTABlogger comment: It's a good idea to avoid judgment and the res judicata effects thereof.

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 Belgravia Wood Limited, Serial No. 90640925 (September 8, 2023) [not precedential] (Opinion by Judge George C. Pologeorgis). [Section 2(d) refusal of HOLIDAZZLE for "Electric lights for Christmas trees; Christmas lighting, namely, electric holiday lights; electric holiday lights," in view of the registered mark DAZZLE for "LED (light emitting diode) lighting fixtures; LED (light emitting diodes) lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications; LED and HID light fixtures; LED light strips for decorative purposes."] 

In re My Happi Gift LLC, Serial No. 97118213 (September 8, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman) [Section 2(d) refusal of YANI L’ADORE, for “Business card holders in the nature of wallets; Card wallets; Clutch bags; Crossbody bags; Tote bags; Wallets,” in view of the registered mark YANNI for "tote bags." The English translation of L'ADORE is "love." The registrant is John Yanni Christopher, an allegedly famous musician.]

In re Lindsay Hoopes, Serial Nos. 90498749 and 90498755 (September 8, 2023) [not precedential] (Opinion by Judge Christen M. English) [Section 2(d) refusals to register NAPANAC and NAPAÑAC for "Brandy; Fortified wines; Spirits" in view of the registered geographical certification mark NAPA GREEN for wine derived from grapes grown in Napa Valley, California, and for promoting sustainable winery practices in Napa Valley, and in view of the registered certification mark NAPA VALLEY for wine.]

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2023.

MAD MONSTER PARTY for Horror and Pop Culture Conventions and Magazines Not Confusable with MONSTER ENERGY, Says TTAB

Frequent TTAB litigant Monster Energy Company lost another one. The Board dismissed its oppositions to registration of MAD MONSTER PARTY, in standard character form for "Organizing exhibitions for educational and entertainment purposes services, namely, organizing and conducting conventions in the fields of horror and popular culture," and in word-and-design form for "General feature magazine in the field of horror and pop culture." Monster claimed a likelihood of confusion with several registered MONSTER-formative marks used in connection with energy drinks, supplements, fruit juice and soft drinks; clothing, sports bags and stickers; and the services of promoting sports and music events and competitions for others. The Board, deeming the first DuPont factor to be dispositive, found that the marks differ sufficiently in their connotations and overall commercial impressions that confusion is unlikely. Monster Energy Company v. Eben McGarr, Oppositions Nos. 91239678 and 91244601 (September 8, 2023) [not precedential] (Opinion by Judge Frances S. Wolfson).

Monster failed to prove that its claimed family of marks came into existence before applicant's priority date, but the ninth DuPont factor "favors a finding of likelihood of confusion insofar as it relates to the variety of goods upon which Opposer uses its mark. Monster had to prove likelihood of confusion vis-a-vis its individual marks. The Board found MONSTER ENERGY to be "most likely to support a likelihood of confusion claim." It also considered the stylized version of MONSTER for energy drinks.

The Board found MONSTER ENERGY and MONSTER (Stylized) to be conceptually strong, and and commercially well-known for beverages. However, "[t]he use of 'monster' for activities connected to the horror-genre, however, signal the term has been weakened in that category.

Turning to the marks, the Board found that they "engender sufficiently different overall commercial impressions such that they would not be considered confusingly similar.

The wording “MAD MONSTER” personalizes the general idea of a monster and changes it, with assistance from the alliteration and, for the design marks, the portraiture, into a specific character. That is, the word “MAD” does more than simply inform the consumer of the type of monster involved, it forms a unitary phrase personifying the creature. The additional word “PARTY” suggests a gathering of such creatures. These connotations are entirely absent from Opposer’s MONSTER ENERGY or marks. Opposer’s mark MONSTER ENERGY is further attenuated from Applicant’s marks given the meaning of the term “energy,” which imbues the mark with allusion to the energy-providing nature of Opposer’s drinks and supplements; or when applied to extreme sports, competitions, and music events. As for the unusual and unique monster head design, it creates a strong impression upon the viewer by immediately drawing one’s attention, and thus further distinguishes the two marks in which it appears from each of Opposer’s marks.

Monster submitted some evidence of use of its marks in connection with "horror-themed events at which attendees imbibe Opposer’s beverages." However, the Board concluded that consumers "are unlikely to perceive Applicant’s conventions, restricted to the horror and popular culture fields, or its horror and pop culture-related magazines, as emanating from the same source as sporting or music events sponsored by Opposer.

The Board found several other DuPont factors to be neutral: channels of trade, purchaser care, lack of actual confusion evidence, applicant's intent. The Board did, however, find that applicant's ownership of a registration for a virtually identical mark for magazines weighed heavily in favor of applicant as to its word-and-design application.

Balancing the relevant DuPont factors, the Board found the first factor to be dispositive, "in that this factor of the dissimilarities of the marks simply outweighs the other factors."

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TTABlogger comment: That makes three losses by Monster Energy in the last two weeks.

Text Copyright John L. Welch 2023.

TTAB Deems "THE OFFICIAL WEBSITE OF JEKYLL ISLAND" Deceptive for Promoting Tourism and Recreation

The Board granted a petition for cancellation of a registration for the mark THE OFFICIAL WEBSITE OF JEKYLL ISLAND for various tourism-related services, finding the mark to be deceptive under Section 2(a). Respondent, appearing pro se, admitted that use of the word OFFICIAL in its mark "suggests to consumers that the services Respondent provides via its website are the authority on [] Jekyll Island or come from an ‘official’ source related to Jekyll Island." From there, it was all downhill. Jekyll Island-State Park Authority v. Stratatomic LLC, Cancellation No. 92074348 (September 5, 2023) [not precedential] (Opinion by Judge Mark Lebow).

Jekyll Island is a barrier island off the southeastern coast of Georgia that has been owned by the State of Georgia since 1947.” Respondent admitted that it "is not affiliated with the State of Georgia or [Petitioner]." Petitioner and Respondent operate competing websites that market to visitors of Jekyll Island.”

A mark is deceptive under Section 2(a):

• If it misdescribes the character, quality, function, composition or use of the goods or services.
• If prospective purchasers likely to believe that the misdescription actually describes the goods or services.
• And if the misdescription likely to affect the decision to purchase.

A mark need not misdescribe all of the services identified in aregistration to find it misdescriptive. It is sufficient if the term misdescribes any of the identified services. Here, the Board focused on whether the term “official” in Respondent’s mark is misdescriptive of Respondent’s identified services of promoting tourism and recreation in Jekyll Island, as well as its variously identified services of promoting tourism, business, travel, tourism, and conventions in the area.

The Board found that the term “OFFICIAL” in Respondent’s mark "misdescribes the character of its website services because it connotes that such services are provided with official permission and/or are approved by the government or by someone in authority such as by Petitioner, 'a legislatively-created state authority to oversee and manage Jekyll Island, a state park,' when in fact they are not."

Several third-party declarations convinced the Board that prospective purchasers are likely to be the believe the misdescription in Respondent’s mark.

And finally, the proposed "suggests that Respondent’s website has the seal of government approval and thus may have accurate information (whether that, in fact, is true)." The Board therefore found that the misdescription in the mark "is likely to affect the purchasing decision of consumers to use Respondent’s website services."

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: FWIW: I've never been there.

Text Copyright John L. Welch 2023.

Recommended Reading: The Trademark Reporter, July-August 2023 Issue

The July-August 2023 (Vol. 113 No. 4) issue of The Trademark Reporter (TMR) has hit the newsstands. [pdf here]. Willard Knox, Editor-in-Chief, summarizes the contents as follows (and below): This issue offers our readers a comprehensive article examining the impact of delay in seeking preliminary injunctive relief in trademark infringement actions in the United States federal courts, a commentary by J. Thomas McCarthy inspired by the fiftieth anniversary of the publication of his treatise McCarthy on Trademarks and Unfair Competition, and a review of a book exploring the both complementary and conflicting relationship between artificial intelligence and intellectual property law.

Delay in Filing Preliminary Injunction Motions: 2023 Edition, Fara Sunderji and Sandra Edelman. This practitioner-focused article is the sixth in a series in the TMR examining the impact of delay in filing a motion for a preliminary injunction in a trademark infringement suit in the various United States federal circuits.

Commentary: Fifty Years of McCarthy on Trademarks, J. Thomas McCarthy. The author of the renowned treatise McCarthy on Trademarks and Unfair Competition shares what led him to write it and reflects upon how the law has changed in the fifty years since the treatise was first published.

Book Review: Artificial Intelligence and Intellectual Property, Jyh-An Lee, Reto M. Hilty, and Kung-Chung Liu, eds., reviewed by Elisabeth Kasznar Fekete. The reviewer of this book finds it expertly explores the complementary and conflicting relationship between artificial intelligence and intellectual property law.

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

Text Copyright John L. Welch 2023.

Recommended Reading: "FIFTY YEARS OF McCARTHY ON TRADEMARKS"

The latest issue of the The Trademark Reporter includes a Commentary [pdf here]. by Professor J. Thomas McCarthy on the fiftieth anniversary of the publication of his treatise, McCarthy on Trademarks and Unfair Competition. The treatise has been relied on as an authority in over 8,000 judicial decisions, including in eighteen U.S. Supreme Court opinions.

"A number of people have asked me why and how I first came to write the book and what significant changes in trademark law I’ve seen over the past fifty years. In this Trademark Reporter
commentary, I respond . . . ."

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TTABlogger comment: A truly remarkable achievement. Congratulations!

Text Copyright John L. Welch 2023.

Precedential No. 24: Claim for Violation of Section 10 "Anti-Assignment" Provision Is Time-Barred by Section 14

In this proceeding for cancellation of a registration for the mark SUBSCRIBE & THRIVE for "online ordering" featuring skin care products, supplements, and assorted other goods, Respondent Nature's Sunshine counterclaimed for cancellation of one of Petitioner's pleaded registrations for the mark THRIVE on two grounds: fraud and violation of the "anti-assignment" provision of Section 10(a)(1) of the Lanham Act. The Board dismissed the fraud claims due to the insufficiency of the pleading, and it dismissed the Section 10 claim as barred by the time limitation of Section 14(3). Thrive Natural Care Inc. v. Nature’s Sunshine Products, Inc., 2023 USPQ2d 953 (TTAB 2023) [precedential].

Fraud: Nature's Sunshine alleged that Petitioner Thrive twice falsely stated that it was using its mark THRIVE on all of the goods in its registration, when it had used the mark only on some of the goods. The Board found these allegations to be insufficiently specific to support the fraud claims.

For example, the counterclaims present no facts from which the Board could infer that Petitioner’s statements regarding use were false, i.e., that the products Petitioner was offering at the salient times would not also qualify as goods identified in the registration (such as a shave oil that is both a “pre-shaving preparation” and an “oil[s] for cosmetic use”). *** Additionally, Respondent fails to allege facts sufficient to support the conclusion that Petitioner’s officer, when signing the two declarations of use, acted with the requisite state of mind; that is, that he knew that the mark was not in use for certain goods and made the assertions to deceive the USPTO into issuing or maintaining a registration of the mark for those goods.

Section 10: Section 10(a)(1) prohibits the assignment of an intent-to-use application prior to the filing a statement of use, "except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing." Nature's Sunshine alleged that Thrive had violated this provision because (1) at the time of assignment of the underlying application, the THRIVE mark had not been put into use, and (2) the assignor "continued to act as the owner" of the mark "for many months afterwards." Thrive argued that this counterclaim was time-barred by Section 14(3) because the challenged registration issued in 2014 and was more than five years old when the petition for cancellation was filed, and in such a case violation of Section 10(a)(1) is not an available ground for cancellation.

The Board found "highly persuasive" the reasoning in its own nonprecedential decision in Bison Prods., LLC v. Red Bull GmbH, Cancellation No. 92076984 (TTAB Feb. 2, 2022). There, the Board observed that Section 14(3) "reflects Congress’s intent to protect registrations that are more than five years old from challenges in perpetuity, except on certain enumerated grounds." Violation of the anti-assignment provision of Section 10(a)(1) is not included in the list of permitted claims. Moreover, here the Board pointed out that "had Congress intended to include such claims in Section 14(3), it certainly could have done so."

This result also is consistent with the Board’s treatment of other types of “void ab initio” claims that have been found time-barred because they are not enumerated in Section 14(3). See, e.g., Maids to Order of Ohio Inc. v. Maid-to-Order Inc., 78 USPQ2d 1899, 1906 n.6 (TTAB 2006) (registration more than five years old may not be challenged on the basis of nonuse); Treadwell’s Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1320 (TTAB 1990) (nonownership claim is not an available ground for cancellation of a registration over five years old); Pennwalt Corp., 219 USPQ at 550 (“[T]here is nothing in Section 14(c) which admits [nonuse] as a ground for cancellation of a registration after five years have elapsed, unless the misstatement was with fraudulent intent.”)

And so, the Board dismissed the Section 10 claim.

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Text Copyright John L. Welch 2023.

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

A TTAB judge once told me that one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods/services. Here are three recent appeals from Section 2(d) refusals. How do you think these came out? Answers will be found in the first comment. [No hints this time].

In re Puma SE, Serial No. 90600590 (August 29, 2023) [not precedential] (Opinion by Judge Christopher C. Larkin). [Section 2(d) refusal of the mark PWRSHAPE for "Clothing, namely, pants, skirts” and “Clothing, namely, pullovers, jackets, shirts, T-shirts, sweaters, and coats," in view of the registered mark POWERSHAPE for "bras."

In re Tequila Cuervo, S.A. de C.V., Serial No. 90741831 (August 31, 2023) [not precedential] (Opinion by Jonathan Hudis) [Section 2(d) refusal of 100 PUNTOS for "[n]on-alcoholic cocktail mixes" and for "[a]lcoholic beverages except beer; alcoholic cocktail mixes; distilled blue agave liquor," in view of the registered mark 100 POINTS for "[d]rinking glasses, decanters."]

In re The Trustee of the Markeeta E. Maki Revocable Living Trust, Serial Nos. 907383412 (August 31, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman) [Section 2(d) refusal of ICE CREAM BANDITS & Design for "milk shakes; milk beverages, milk predominating," and for "chocolate, ice cream" [ICE CREAM disclaimed] in view of the registered mark SWEET BANDITS for "candy; sweets" [SWEETS disclaimed].

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TTABlog comment: Actually, if you guess "affirmed," you'll be right about 90% of the time.

Text Copyright John L. Welch 2023.

TTAB Posts September 2023 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled nine oral hearings for the month of September 2023. Seven of the hearings will be held via video conference; two will be "In Person," as indicated below. Briefs and other papers for each case may be found at TTABVUE via the links provided.

September 7, 2023 - 11:15 AM [In Person, North Carolina Central University School of Law, Durham, NC]: In re Vinedo de Zorra, LLC, Serial No. 90055100 [Section 2(d) refusal to register VINEDO DE ZORRO for wine in view of the registered mark BAR ZORRO for restaurant and bar services.]

September 12, 2023 - 11 AM: Montgomery Law LLC v. Jacobson & John LLC, Cancellation No. 92073600 [Petition for cancellation of a registration for the mark THE EDUCATION LAWYERS for "legal services," on the ground of genericness, or alternatively, mere descriptiveness and lacking secondary meaning.]

September 12, 2023 - 2 PM: Trevari Media, LLC v. Laurent Colasse, Cancellation No. 92078038 [Petition for cancellation of a registration for the product configuration shown below, for a "spring-loaded glass-breaking device," on the ground of de jure functionality under Section 2(e)(5).]

September 13, 2023 - 1 PM: In re Jackfrombrooklyn Incorporated, Serial No. 90884812 [Refusal to register SOREL (Stylized) as a trademark for "liquor and liqueur beverages, namely, sorrel" on the ground of genericness or, alternatively, mere descriptiveness and lack of acquired distinctiveness.]

September 14, 2023 - 11 AM: In re Total Vision Group LLC, Serial No. 90687823 and 90689458 [Refusals to register RETYZ, in standard character and design form, for "cable ties, not of metal and zip ties, not of metal," the former on the ground of mere descriptiveness and the latter on the ground of failure to disclaim "retyz."]

September 19, 2023 - 11 AM: In re Panini America, LLC, Serial No. 88927178 [Refusal to register CERTIFIED as a trademark for "Collectible trading cards; Sports trading cards" on the grounds of failure-to-function, genericness, mere descriptiveness and deceptive misdescriptiveness with a lack of acquired distinctiveness.]

September 21, 2023 - 3:30 PM [In Person, Alexandria, VA]: Kinetic Lighting, LLC v. Christopher Bauder, Opposition No. 91245640 [Opposition to registration of KINETIC LIGHTS & Design for lighting equipment and related services [KINETIC LIGHTS disclaimed, in view of opposer's alleged common law rights in the mark KINETIC LIGHTING for lighting system rental services.]

September 27, 2023 - 1 PM: In re 1511 LLC, Serial No. 88239289 [Section 2(e)(1) mere descriptiveness refusal of THE HEALTH CLINIC, in standard character form, for "Retail store services in the field of health food, dietary and nutritional supplements not containing cannabis or cannabis derivatives; Retail store services featuring hemp and hemp derived products featuring solely hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis and not containing CBD."]

September 27, 2023 - 1 PM: Baxter S.r.l. v. Wholesale Interiors, Inc., Opposition No. 91263387 [Opposition to registration of BAXTON STUDIO for furniture, on the ground of likelihood of confusion with the registered mark BAXTER for furniture.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2023.