TTAB Posts January 2024 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled seven (7) oral hearings for the month of January 2024. The first three will be held "In Person" at USPTO Headquarters in Alexandria, Virginia; the last four will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

January 4, 2024 - 11 AM: In re Kattina V. Barsik, Linda D. Barsik, Sean E. Barsik and Tamara A. Barsik, Serial No. 90691470 [Section 2(d) refusal of THE BOOKSTORE SPEAKEASY for restaurant and bar services [SPEAKEASY disclaimed] in view of the registered mark LIBRARY BISTRO & BOOKSTORE BAR (Stylized) for "bar and restaurant services." [BISTRO and BAR disclaimed.]

January 11, 2024 - 11:30 AM: In re Loops, LLC, Serial No. 97069982 [Refusal to register the three-dimensional design mark shown below, comprising "the presentation and 3-Dimentional appearance of a dental floss product, specifically comprising an arbitrary bundle of blue looped dental floss," on the grounds that the mark in the drawing does not match the specimen of use, the proposed mark fails to function as a source indicator, and applicant's claim of acquired distinctiveness for this product design is insufficient.]

January 16, 2024- 1 PM: In re YMF Carpets, Inc., Serial No. 90822795 [Section 2(d) refusal to register CREATIVE HOME IDEAS for shower curtains, placemats, and other household goods [HOME disclaimed] in view of the registered marks CREATIVE HOME [HOME disclaimed] and HOMEIDEAS for overlapping and/or related goods.]

January 18, 2024 - 2 PM: In re Korn Ferry, Serial No. 90890949 [Refusal to register KORN FERRY ARCHITECT absent a disclaimer of the word ARCHITECT, for, inter alia, "Executive search, recruitment and placement services; business consultation services in the field of human resources management and development" and for "Providing temporary use of online non-downloadable software in the field of human resources."]

January 23, 2024 - 1 PM: Sage Therapeutics, Inc. v. SageForth Psychological Services, LLC,, Opposition No. 91270181 [Section 2(d) opposition to registration of SAGEFORTH for psychological consultation and testing, psychotherapy, and related informational services, in view of the registered mark SAGE THERAPEUTICS for pharmaceutical preparations and informational services regarding postpartum depression, with counterclaim to restrict opposer's goods to postpartum related pharmaceuticals.]

January 25, 2024 - 1 PM: Instagram LLC v. Instasize, Inc., Opposition No. 91253078 [Sectio 2(d) opposition to INSTASIZE for "Downloadable mobile applications for photo editing"  in view of the registered mark INSTAGRAM for downloadable computer software for modifying the appearance of photographs.].

January 31, 2024 - 1 PM: In re Kirill's Big Brain, LLC, Serial No. 97359799 [Failure-to-function refusal of ASSHOLES LIVE FOREVER (Stylized) for "Online retail store services featuring clothing, jewelry, bags, gifts, home goods, hats, blankets, mugs, belts, branded gift bags, floor mats, keychains, novelty toys for playing jokes, and pillows."]

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TTABlog comment:  Any predictions? See any WYHAs? any WYHOs?

Text Copyright John L. Welch 2023.

REALITY COMPOSER and REALITY CONVERTER Merely Descriptive of Augmented Reality Software, Says TTAB

Oppositions based on Section 2(e)(1) mere descriptiveness are somewhat rare. Here's a consolidated opposition in which the Board found the proposed marks REALITY COMPOSER and REALITY CONVERTER to be merely descriptive of Apple's downloadable software that converts files and assists in composing scenes in augmented reality. The Board relied on "the plain meaning of the words in connection with Applicant’s software products that have the functions and purposes of converting and composing" as sufficient to establish mere descriptiveness. ZeroDensity Yazilim Anonim Sirketi v. Apple Inc., Opposition Nos. 91266285 and 91266754 (December 22, 2023) [not precedential] (Opinion by Judge Karen S. Kuhlke).

Apple acknowledged the descriptive significance of the word REALITY in connection with its goods, and in fact disclaimed the word REALITY in the REALITY COMPOSER mark. Apple’s evidence and testimony "clearly shows that REALITY CONVERTER software is “an augmented reality-based content viewer tool for macOS for use by augmented reality (‘AR’) developers of all skill levels and experience and available for free via Apple’s developer website.”

Applicant argues that Opposer improperly dissected the proposed marks and the terms together are incongruous because they do not actually compose reality or convert reality. Well, that’s a relief, but not a persuasive argument. It is appropriate and often necessary to analyze each portion separately in considering the designation in its entirety.

The Board concluded that, in the context of the identified software, "the combination holds no distinct meaning of its own independent of the meaning of its constituent elements." Moreover, "[i]n the case of REALITY COMPOSER, REALITY is disclaimed, confirming it is not a unitary phrase, as Applicant essentially concedes."

And so, the Board sustained the oppositions.

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TTABlogger comment: Is this a WYHA? (Would you have applied for registration?)

Text Copyright John L. Welch 2023.

TTAB Affirms Refusal of CONCRETE PORN for Advertising Services Due to Inadequate Specimen of Use

The Board upheld a refusal to register the proposed mark CONCRETE PORN for "Advertising services, namely, providing a website for the promotion of concrete services and designs of others," finding that applicant's specimen of use failed to show a direct association between the mark and the recited services. In re SlurryMonster, LLC, Serial No. 90513717 (December 20, 2023) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Applicant described its seven-page specimen as a "website showing use of the services." The first page displays the proposed mark CONCRETE PORN and describes the website as a Facebook "community." It states that the website is a place for posting "pictures of your finished art with your company information so we can all support each others [sic] work … if you post pictures, post the contractor." Other pages display photographs about third-party concrete projects, with contract information about the creator. Applicant argued that "community members . . . post pictures of their or others’ work as advertisements."

The Board was not impressed:

Applicant is hosting a sub forum that allows third parties to post photographs and contact information relating to completed concrete projects. By Applicant’s own explanation of its services, it is merely hosting, moderating, and administering a community. It is not posting or creating the posts on the forum on behalf of others but is allowing the posting by third parties who are providing the information. While it may be that third parties can post pictures and contact information, that is tantamount to those third parties advertising their own services and does not amount to Applicant providing advertising services for them. Again, Applicant is merely the moderator and administrator of a community group. Thus, Applicant is not providing the advertising service on behalf of third parties but is simply providing a means for third parties to post their own photographs and contact information.

The Board concluded that CONCRETE PORN is not used in direct association with "advertising services, namely, providing a website for the promotion of concrete services and designs of others," and so it affirmed the refusal to register under Sections 1 and 45 of the Trademark Act.

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TTABlogger comment: I'm not convinced. Applicant is providing the services that the application recited: providing a website . . . .

Text Copyright John L. Welch 2023.

Lack of Bona Fide Intent Sinks Application to Register JUICY FRUIT & Design for T-shirts

The Board sustained this opposition to registration of JUICY FRUIT & Design (shown below) for" t-shirt for adults," finding that pro se Applicant David Neal Seller's lacked a bona fide intent to use the mark for t-shirts at the time he filed his application. His lack of documentation provided Opposer Fruit of the Loom with a a prima facie case. Sellers failed to overcome that presumption. Fruit of the Loom, Inc. v. David Neal Sellers, Opposition No. 91268870 (December 21, 2023) [not precedential] (Opinion by Judge Christen M. English).

Opposer Fruit of the Loom bore the “burden of demonstrating by a preponderance of the evidence that [A]pplicant lacked a bona fide intent to use the mark on [‘t-shirts for adults’]” when he filed the involved application on August 19, 2020. An opposer may establish a prima facie case "by proving that an applicant has no documentary evidence to support the allegation in its application of a bona fide intent to use the mark in commerce as of the application filing date." Once an opposer establishes a prima facie case, "the burden shifts to the applicant to rebut that prima facie case by producing evidence which would establish that it had the requisite bona fide intent to use the mark when it filed its application."

Applicant admitted (by failing to timely respond to opposer's admission requests) that he had no sales of identified goods, did not disseminate any advertising of the goods, had no business or marketing plan, had not customer or manufacturer contacts, etc. He also stated in his initial disclosures that he had no such documents. The Board found that opposer had established a prima facie case of lack of bona fide intent. The ball was then in Applicant Sellers' court to rebut that prima facie case. The Board considered the entire record for "evidence that may support or undercut a finding of a bona fide intent to use."

Opposer had submit certain documents and had made statement that the Board review took into account. Applicant Sellers had submitted on the same day he filed the subject application, and application to register the mark DOUBLE STUFF in the same design for clothing, including t-shirts for adults. That application issued to registration in December 2021. Opposer acknowledged that Sellers offers these t-shirts on his website.

The Board noted that "evidence that an “applicant has the capacity to market and manufacture the goods identified in its application” may support a finding that the applicant had the requisite bona fide intent to use required under Section 1(b) . . . ." However, the Board distinguished this case from Rolex and Wet Seal, where it found that an applicant’s "capacity to market the goods in the application supported that the applicant had a bona fide intent to use its mark when it filed the intent-to-use application."

In Rolex, the applicant filed an intent to use application for the mark ROLL-X for “x-ray tables for medical and dental use.” 101 USPQ2d at 1191. The record showed that the applicant registered the mark DENT-X for goods including “x-ray machines” more than a decade before filing its application for the ROLL-X mark. Id. at 1197. *** Based on this evidence, we concluded that “the filing of the application for the ROLL-X mark” was “consistent with an extension of [the applicant’s] current product line” and rebutted the absence of documentary evidence supporting applicant’s intent to use the ROLL-X mark.

Here there was no such evidence of an existing product line and" no testimony or other evidence to show that [the Board] should infer that his intention was to go to market with the mark involved in this proceeding.

In Wet Seal, there was no evidence that the applicant lacked documentary evidence to support its claim of a bona fide intent to use the mark. Instead, the opposer relied solely on the testimony of applicant’s executive vice president and chief marketing officer. *** The opposer failed to ask the witness questions “which fully explored the applicant’s actual intent” and some of the witness’s testimony was “ambiguous.”  We found the evidence that applicant had the capacity to manufacture or market the goods outweighed the ambiguous testimony of the sole witness testifying to applicant’s bona fide intent to use.

Although opposer acknowledged that Sellers had the capacity to sell various t-shirts in 2023 (as evidenced by screenshots of Sellers' website), that was too far removed in time from Sellers's filing date "to demonstrate that Applicant actually had the intent to use the involved mark in connection with “t-shirts for adults” when he filed the involved application."

The Board concluded that due to Sellers' lack of evidence "to rebut Opposer’s prima facie case to show that he had a 'firm' and 'demonstrable' intent to use the mark for 't-shirts for adult' when he filed his application, as required under Section 1(b) of the Trademark Act" the Board sustained the opposition.

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TTABlogger comment: One wonders whether the result might have been different if Sellers were represented by counsel.

Text Copyright John L. Welch 2023.

TTABlog Test: Do You Recognize Trademark Mutilation When You See It?

The USPTO refused to register the mark shown below left, for baby- and child-related products (such as cribs, basinettes, etc.) in eight classes, finding that the mark in the application drawing is not a "substantially exact representation of the mark as used on or in connection with the goods," as required by Trademark Rule 2.51(a). On the right is a depiction of the proposed mark as it appears on applicant's specimens of use. How do you think this appeal came out? In re Thorley Industries, LLC, Serial No. 90703606 (December 20, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington).

The word "substantially" in Rule 2.51(a) allows for "some inconsequential variation from the 'exact representation' standard.'" The sole issue here was whether "the mark as it appears in the drawing in the application is a substantially exact representation of the mark on the specimen or if it is a 'mutilation' thereof." The term "mutiliation" means that "essential and integral subject matter is missing from the drawing." In applicant's specimens of use, the proposed mark is always followed immediately by the term "moms" (in all lower-case, stylized lettering).

Examining Attorney Brian Pino argued that because the proposed mark is immediately followed by the word “moms,” it is “physically joined,” as well as being “conceptually connected." According to the Examining Attorney, "the 4 in the proposed mark functions as the word 'for' on the specimens" thus creating a single suggestive message that Applicant's goods are 'for moms.' As illustrated in the specimen materials, Applicant’s goods are intended to 'make parents' lives easier' and provide 'parents the option to customize their 4moms product experience.'"

The Board noted that it must determine whether the proposed mark comprises "a separate and distinct 'trademark' in and of itself." It found guidance in two prior Board decisions. In one, the proposed mark KRAZY for food seasoning was refused registration because it appeared on the specimen of use directly followed by the wording MIXED-UP, all on the same line and in the same script. In the other, the Board affirmed a refusal of the proposed mark UPPER 90 as not being substantially exact to the designation depicted in the specimens where a degree symbol immediately followed the proposed mark. The Board found the current case to be very similar.

That is, the proposed mark is depicted in the specimens as part of a unitary phrase and cannot be regarded as a separable element creating a separate and distinct commercial impression. Consumers will not view the proposed mark , by itself, as a separable mark. We agree with the Examining Attorney that because is immediately followed by the word “moms,” consumers will immediately understand the combination as one suggestive expression, i.e., “for moms.” This is especially so given the context – the goods are directed to parents of children and the term 4MOMS, without design or stylization, frequently appears throughout Applicant’s specimen materials. Consumers of Applicant’s goods are thus conditioned to encounter the proposed mark immediately followed by “moms” and that is used in combination with “moms” to convey the suggestive expression “for moms.”

And so, the Board deemed the specimens of use unacceptable "because Applicant’s drawing of the mark is not a substantially exact representation of the mark as used in commerce," and it affirmed the refusal to register. 

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TTABlogger comment: Any thoughts?

Text Copyright John L. Welch 2023.

Recommended Reading: The Trademark Reporter, November-December 2023 Issue

The November-December 2023 (Vol. 113 No. 6) issue of the Trademark Reporter has been published. [pdf here]. Willard Knox, Editor-in-Chief, summarizes the contents as follows (and below): "This issue offers our readers an article proposing an innovative, neuroscience-based approach to establishing likelihood of confusion, an article detailing the astonishing reconstruction of an historical trademark registry and sharing what lessons can be learned from the registry’s new (and old) data, and a commentary challenging how leading survey formats assess consumer uncertainty and offering modifications to these formats that could yield valuable data."

A New Addition to the Trademark Litigator’s Tool Kit: A Neuroscientific Index of Mark Similarity, Mark Bartholomew, Zhihao Zhang, Ming Hsu, Andrew Kayser, and Femke van Horen. With trademark law always striving to keep abreast of new developments in science and technology, the authors of this article propose an innovative, neuroscience-based approach to answering the time-honored question of whether likelihood of consumer confusion exists in a particular dispute.

Reconstructing the Trademark Registry of Mandate Palestine and What Historical Data Can Reveal, Michael Birnhack. The author of this unique piece of legal scholarship shares with readers the story of his extraordinary reconstruction of an historical trademark registry and limns how the registry’s new (and old) trademark data might aid the modern practitioner and academic in their own work.

Commentary: Incorporating Uncertainty in Trademark Surveys: Do Respondents Really Know What They Are Talking About?, Barton Beebe, Roy Germano, Christopher Jon Sprigman, and Joel H. Steckel. In this provocative and practical commentary, the authors home in on how leading survey formats currently fail to address all aspects of consumer uncertainty; the authors then propose straightforward and cost-effective modifications to those same formats that could yield more complete and useful data.

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TTABlog comment: 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.

CAFC Hears Oral Argument in In Re Chestek PLLC, the "Where Do You Sleep at Night?" Case

On December 7th, the CAFC heard oral argument in In re Chestek PLLC. As you may recall, Pamela Chestek, sometimes known as the IP Ownership Maven (blog), applied to register the mark CHESTEK LEGAL on behalf of her law firm, for "legal services." However, she declined to provide the "domicile address" of applicant, instead furnishing a post office box number in Raleigh, North Carolina. The USPTO refused registration, citing violation of Trademark Rules 2.189 and 2.32(a)(2) because a post office box is not a street address. Chestek PLLC argued that the applicable rules were unlawfully promulgated and should not be enforced. The Board disagreed. [TTABlogged here].

Carl Oppedahl, at his Ant-Like Persistence blog, has the transcript of the argument here. You may listen to the argument via the mp3 link immediately below.

In re Chestek PLLC oral argument

Read comments and post your comment xxxx">here.

TTABlogger comment: How do you think the CAFC will rule?

Text Copyright John L. Welch 2023.

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

By my count, the Board has affirmed more than 90% of the Section 2(e)(1) mere descriptiveness refusals that it reviewed so far this year. Here are three more. How do you think they came out? [Results in first comment].

In re Family Defined Benefits, LLC, Serial Nos. 97248954 and 97248972 (November 27, 2023) [not precedential] (Opinion by Judge Jonathan Hudis). [Mere descriptiveness refusals of ASK ME ABOUT RISK TAXES REGULATION INFLATION DEPRECIATION OF THE DOLLAR for, inter alia, annuity services, estate planning, business training, and for downloadable webinars in the field of tax preparation and estate planning. Applicant pointed to existing registrations for the marks ASK ME ABOUT MY WIENER, ASK ME ABOUT REALTY IN HOUSTON!, ASK ME ABOUT SURROGACY, and ASK ME MONEY THINGS to show the USPTO's history, pattern, or practice of registering marks “in the form ‘Ask Me About’ + a generic or descriptive term."]

In re MBA Media Group, LLC, Serial No. 90746611 (December 5, 2023) [not precedential] (Opinion by Judge Thomas L. Casagrande) [Refusal to register NAME IMAGE LIKENESS VALUATION for ““Promotional and marketing services; branding services, namely, consulting, development, management and marketing of brands for public persons, including athletes and entertainers, based on name, image, likeness." Applicant argued that its services do not provide any "determination” of the value of a client's NIL "but rather are associated with increasing such a value." It further argues that the proposed mark is not descriptive because it only "suggests the desired result of the services not the service itself [sic]."]

In re Clara Foods Co., Serial No. 90746431 (December 15, 2023) [not precedential] (Opinion by Judge Wendy B. Cohen) [Mere descriptiveness refusals of the proposed mark ALL PROTEIN. NO ANIMAL for "proteins for the food industry; enzymes for the food industry; enzyme preparations for the food industry; bioactives for the food industry, namely, yeast fermentation byproducts, namely, oligosaccharides in the nature of unprocessed polymers, fatty acids, carotenoids, lutein, zeaxanthin, and branch chain amino acids, all being chemicals for use in the manufacture of foods." Applicant argued that "given the syntax of the combination of these two short abrupt sentences, the terms do not directly tell consumers a characteristic or function of the goods." It further argued that there was no evidence of third-party use of the proposed mark.]

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

Text Copyright John L. Welch 2023.

TTAB Dismisses Opposition: Applicant Proved Priority Through Assignment of Common Law Mark After Proceeding Commenced

Game Plan, Inc. opposed six applications to register the marks I AM MORE THAN AN ATHLETE and MORE THAN AN ATHLETE for clothing and entertainment services, claiming likely confusion with its registered mark I AM MORE THAN AN ATHELETE & Design (shown below) for "Charitable fundraising services by means of selling t-shirts to raise funds for educational and entertainment programs" and with its common law mark MORE THAN AN ATHLETE for t-shirts. Applicant UNIP (apparently owned in part by LeBron James) counterclaimed for cancellation of that registration on the ground of likelihood of confusion. The sole issue for the Board was priority, and UNIP came in first. Game Plan, Inc. v. Uninterrupted IP, LLC, Opposition No. 91244990 (December 14, 2023) [not precedential] (Opinion by Judge Mark A. Thurmon).

Opposer Game Plan did not submit any evidence at trial, instead referring to "previously discovered evidence as referenced in filings already submitted to the Board," including the entire TTABVUE record. The Board pointed out that evidence submitted with prior motions must be properly introduced during a party's testimony period. 

UNIP had filed a motion for summary judgment based on Game Plan's lack of evidence but, by reason of UDIP's counterclaim, the file of Game Plan's registration was made part of the record under Rule 2.122(b)(1). "While this fact saved Game Plan's Opposition from dismissal for failure to prosecute under Trademark Rule 2.132, it leaves Game Plan with no other evidence to support [its] claims."

Without evidence, Game Plan's claim of common law rights was baseless and so the Board considered only its registered service mark rights. Game Plan could rely only on the filing date of its underlying application (December 28, 2016) as its constructive first use date.

UNIP claimed to have acquired by assignment, common law rights based on use of I AM MORE THAN AN ATHLETE dating back to 2013. Game Plan did not challenge the establishment of common law rights by UNIP's assignor, nor that UNIP continues to use the mark, but it disputed the validity of the assignment.

Game Plan contended that UNIP's assignor abandoned the mark prior to the 2019 assignment, but that claim failed due to the lack of supporting evidence. In any case, UNIP's evidence showed that the assignor continued to use the mark prior to the assignment.

Game Plan claimed that there was assignment in gross because the assignment was executed after this proceeding commenced, and "UNIP made the purchase after the start of this action [i.e., proceeding - ed.] in order to litigate from a changed position." The Board was unmoved.

[T]he motivation for a sale is irrelevant and senior user status may be properly achieved by assignment in anticipation or in the midst of litigation.” Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc., 841 F. Supp. 1339, 33 USPQ2d 1961, 1967 n.10 (E.D.N.Y. 1994) (citing Money Store v. Harriscorp Fin., Inc., 689 F.2d 666, 678 (7th Cir. 1982)). The question of whether the assignment is valid does not turn on the reasons the parties agreed to the deal.

The Board noted that UNIP uses the mark MORE THAN AN ATHLETE, "which is effectively the same use as Ms. Alex, the assignor] made prior to the assignment, telling the same story about athletes. "We find the similarity of the businesses facilitated transfer of the goodwill Ms. Alex had developed in connection with the sale of t-shirts. UNIP even retained Ms. Alex as a consultant, another fact that supports the transfer of the goodwill. All the evidence of record supports the validity of the assignment."

The trademark assignment "means that UNIP stand in the shoes of [the assignor] and UNIP, therefore, has established priority for purposes of its counterclaim."

Since Game Plan conceded likelihood of confusion, and UNIP established priority, the Board granted the counterclaim and ordered cancellation of Game Plan's registration. For the same reason, the Board dismissed the opposition.

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TTABlogger comment: I Am More Than A Blogger.(TM)

Text Copyright John L. Welch 2023.

Declining to Apply the Doctrine of Foreign Equivalents, TTAB Reverses Section 2(d) Refusal of "EVERYDAY HEROES" Over "HEROES COTIDIANOS"

The Board tossed out a Section 2(d) refusal of the mark EVERYDAY HEROES for musical recordings and for musical production and entertainment services," finding no likelihood of confusion with the registered mark HEROES COTIDIANOS for downloadable television programs and television entertainment services. Applicant provided the English translation of HEROES COTIDIANOS as "Everyday Heroes." The Board observed that, "perhaps not surprisingly, this case turns in part on the Doctrine of Foreign Equivalents." Stardust Music Productions, LLC, Serial No. 90804879 (December 13, 2023) [not precedential] (Opinion by Judge Michael B. Adlin).

The Goods and Services: The Examining Attorney relied on third-party websites in attempting to show a relationship between the involved goods and services. After reviewing those websites, the Board was not much impressed.

While some of the websites introduced by the Examining Attorney establish that there is a modest relationship between Applicant’s music-related goods in Class 9 and Registrant’s television series-related goods and services, that relationship is tenuous. *** As for Applicant’s Class 41 services, there is only one piece of evidence that would support finding a relationship between them and Registrant’s goods and services, and this is quantitatively and qualitatively insufficient to establish a relationship.

The Doctrine of Foreign Equivalents: There was no dispute that the Spanish word "cotidianos" translates to the English word "everyday." And, of course, Spanish is a "common language" in the United States.

Where we part with the Examining Attorney is her finding that “the ordinary American purchaser would likely stop and translate the mark. *** We do not agree that Spanish being spoken by American consumers is enough in and of itself to invoke the doctrine. Indeed, if it was, the doctrine of foreign equivalents would cease to be a mere "guideline," as Palm Bay tells us it must be, and would instead become an "absolute rule," at least with respect to marks in Spanish and other "common" languages.

The Board pointed to In re Taverna Izakaya LLC , 2021 USPQ2d 1134 (TTAB 2021), involving the reversal of a descriptiveness refusal of TAVERNA COSTERA for restaurant services that was based on the doctrine of foreign equivalents, because the words in the mark were in different languages. The Board there found that consumers would not stop and translate the mark.

Here we find similarly that consumers would not translate just one of the words in Registrant’s two word mark but would instead take it 'as it is.'" *** In fact, it is not clear from either the cited mark itself, or from the mark’s use in connection with television programs, that one or both of the mark’s constituent terms are supposed to be translated, much less to which language.

Comparing the Marks: The Board found the marks to be more dissimilar than similar in appearance and sound. As to meaning and commercial impression, applicant’s mark "conveys a musical group made up of 'everyday heroes,' perhaps a group of ordinary but admirable or courageous musicians." The cited mark "conveys a television show about heroes of some type, but would be unlikely to convey a more specific meaning or give a commercial impression beyond that, because the mark’s somewhat incongruous combination of “HEROES” with the Spanish language term “COTIDIANOS” leaves its intended meaning mysterious." The Board observed that "there is a significant difference between “heroes” that perform in a musical group and “heroes” that are the subject of a television show."

And so, the Board reversed the refusal to register.

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TTABlogger comment: Suppose an American consumer knows both English and Spanish. That individual wouldn't have to "stop and translate" either mark to realize that the words "everyday" and "cotidianos" have the same meaning. Would she?

Text Copyright John L. Welch 2023.

TTAB Finds "GIGANTOSAURUS" Descriptive of Cartoon Dissemination Services, but Registrable Under Section 2(f)

The Board overturned a Section 2(e)(1) refusal to register the mark GIGANTOSAUROS for, inter alia, "cartoon dissemination services, namely, streaming of video material on the Internet," finding the mark to be "merely descriptive of a featured character with the name of the type of dinosaur depicted as used in connection with Applicant’s ... services," but further finding that applicant proved that the mark has acquired distinctiveness under Section 2(f). In re Cyber Group Studios, Serial No. 79303731 (December 12, 2023) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Descriptiveness: The Examining Attorney provided evidence that a gigantosaurus was an enormous carnivorous dinosaur of the late Cretaceous period. Applicant’s website indicated that "Gigantosaurus" television show "is an animated preschool television series about four young dinosaurs who live during the Cretaceous period when 'Gigantosaurus, the biggest fiercest dinosaur reigns over it all.'"

The Board concluded that GIGANTOSAURUS is merely descriptive of cartoon dissemination services because the term "merely describes a featured dinosaur character in the preschool television series by using the name of the type of dinosaur depicted."

In the same way a term may be merely descriptive for printing and distributing magazines and television broadcasting services because it describes the content or subject matter being offered or featured, GIGANTOSAURUS is merely descriptive of Applicant’s “Cartoon dissemination services, namely, streaming of video material on the Internet.” GIGANTOSAURUS merely describes a featured dinosaur character in the preschool television series by using the name of the type of dinosaur depicted.

Acquired Distinctiveness: The Board found that applicant’s mark "is merely descriptive and not highly descriptive, so its burden is not commensurately high." [commensurate with what? ed.]. The Board applied the CAFC's Converse factors in considering applicant's Section 2(f) claim.

Applicant had a licensing agreement with Disney and its animated series was shown on the Disney channel (for three seasons). It spent $500,000 advertising the GIGANTOSAURUS brand and enjoyed unsolicited press coverage for the GIGANTOSAURUS television show prior to its premiere date. Forbes.com, with a reach of 30 million, published a placed story on the television series. 

Applicant had licensing arrangements for toys, bed linens, outdoor clothing, textiles, and videogames. Bloggers published party ideas based on the GIGANTOSAURUS brand through sponsored promotions from Applicant. "Influencer coverage, which included not just mommy bloggers but, among others, radio and news channels and newspaper websites, calculates total reach at 278,459,842 as of January 25, 2019."

Applicant’s evidence shows exclusive use, a large amount of advertising expenditure in a short period of time, and unsolicited media impressions with a tremendous amount of potential exposure, consumer impressions, and consumer reach prior to the premiere of the television series, in part due to “pickups” of the USA Today article, as well as a large amount of potential consumer exposure in the form of media impressions on the premiere date of the television series (January 18, 2019), also due to “pickups” of a second USA Today story. The influencer coverage, which includes solicited placements by Applicant, also show a sizeable and highly significant number of potential consumer impressions given the audience reach or followers of these sources as provided in the record. The total figures reflecting influencer coverage overall reflects widespread exposure relating to the GIGANTOSAURUS television show.

The Board found "the reach and number of commercial impressions generated in connection with the GIGANTOSAURUS brand in this brief period to be substantial." This extensive awareness campaign shows exclusive use and widespread exposure of the GIGANTOSAURUS mark to consumers in connection with the television series."

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WHYB? (Would you have blogged?)

Text Copyright John L. Welch 2023.

VOGUE VEGAN for Cosmetics Dilutes Famous VOGUE Marks, Says TTAB

The Board sustained an opposition to VOGUE VEGAN for cosmetics containing no animal products or by-products, and granted a petition for cancellation of a registration for that same mark for "personal shopping for others who want goods containing no animal products or by-products," on the ground that the mark dilutes the famous VOGUE and VOGUE-formative marks for fashion magazines and related services. Plaintiff failed to prove its claims of abandonment and fraud. The Board declined to reach plaintiff's likelihood of confusion claim. Advance Magazine Publishers Inc. v. Brenda Joan Hollifield, Opposition No. 91247611 and Cancellation No. 92072531 (November 30, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Board found the VOGUE marks to be "somewhat suggestive of the subject matter," since "vogue" is defined as "something in fashion, as at a particular time." However, the evidence demonstrated "extremely high commercial strength of the mark VOGUE for magazines and online content in the field of fashion and even more generally in the field of fashion." For example, the VOGUE mark has enjoyed "broad and sustained consumer exposure" for more than 100 years. The magazine has about 8.3 million readers and plaintiff's YouTube channel has 11 million subscribers. "By any and all measures, the evidence establishes that VOGUE is a famous mark, and entitled to protection against dilution under 15 U.S.C. § 1125(c)." [What about the VOGUE-formative marks? - ed.].

In comparing the marks, the Board observed that "[i]n the dilution context, 'the similarity between the famous mark and the allegedly blurring mark need not be substantial in order for the dilution by blurring claim to succeed.'" The Board must determine "whether Defendant’s VOGUE VEGAN mark is sufficiently similar to Plaintiff’s VOGUE mark as to 'trigger consumers to conjure up' Plaintiff’s mark." Nike, 100 USPQ2d at 1030 (quoting Nat’l Pork Bd., 96 USPQ2d at 1497).

[T]he marks are similar, with Defendant’s mark appropriating the entirety of Plaintiff's mark and adding the descriptive, disclaimed term VEGAN to distinguish them. Because Defendant’s mark includes the entirety of Plaintiff’s mark the marks look similar. *** They also sound similar. *** Although the following term VEGAN in Defendant's mark creates a difference in meaning and commercial impression, indicating an absence of animal product or by-product, this could be understood as a variation on Plaintiff's VOGUE mark.

Defendant's evidence showed third-party use and registration of VOGUE-formative marks for a variety of goods and services, but the Board observed that "[t]here is no record evidence demonstrating use of VOGUE for goods or services similar or related to Plaintiff’s goods and services." [In the dilution context, why do the third-party uses have to be for similar or related goods and services? - ed.].

With the exception of intent and evidence of actual association [no evidence - ed.], the dilution factors favor finding that there is a likelihood of dilution. Therefore, we find that Defendant's registration of VOGUE VEGAN would impair the distinctiveness of Plaintiff's VOGUE marks and is likely to dilute the distinctive quality of VOGUE.

And so, the Board sustained the opposition on the ground of dilution-by-blurring.

Read comments and post your comment here.

TTABlogger comment: The Board calls plaintiff's registrations "incontestable," but we know there is no such thing as an incontestable registration. The opinion is rather vague as to the fame of the VOGUE-formative marks. BTW, it seems that plaintiff's likelihood of confusion claim as to defendant's services was pretty weak, so maybe that's why the Board went the dilution route.

Text Copyright John L. Welch 2023.

TTABlog Test: Are These Two Bird Design Marks Confusingly Similar for Clothing?

In this battle of the birds, frequent TTAB plaintiff Abercrombie & Fitch opposed an application to register the mark shown below left, for various clothing items, claiming a likelihood of confusion with its registered design mark shown below right, for overlapping clothing items. Since there were no limitations in the application or pleaded registrations as to channels of trade and classes of consumers, the Board presumed that the goods travel in the same, normal channels to the same consumer classes. So it all boiled down to the marks. How do you think this case out? Abercrombie & Fitch Trading Co. v. Srinivasa Rao Gubbala, Opposition No. 91255288 (December 8, 2023) [not precedential] (Opinion by Judge Wendy Boldt Cohen).

Applicant Gubbala described its mark as a black and white bird with outspread wings, with an orange beak and a blue eye, holding a black fish in its mouth. A&F said its mark is a bird silhouette, without any claim to color.

Gubbala attempted to distinguish the goods by arguing that A&F does not "focus on sportswear, instead focusing on casual fashion and accessories, which differs [from A]pplicant’s future products which will focus on sportswear," and further that A&F's goods are sold in its own stores. The Board shot down those arguments, since there are no such limitations in the opposed application or the pleaded registrations.

[B]oth parties’ consumers must be deemed to encompass the general purchasing public, including teenagers who purchase Opposer’s clothing items. The Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1640 (TTAB 2007). In addition, because the identifications contain no limitations as to price points, we must presume that the parties’ goods encompass relatively inexpensive goods, which would be the subject of impulse purchases.

The Board noted once again that, since the goods overlap, a lesser degree of similarity between the marks is needed to support A&F's Section 2(d) claim. [Does this make sense? - ed.]

Turning to the strength of the cited mark, the Board concluded, based on a number of third-party marks that include a bird design, that "a bird design, in general, is not unique for clothing items." But there was no evidence of the use of, and little evidence of the registration of, a design similar to the A&F's design.

As to commercial strength, A&F's promotion of its products bearing the bird design have been "substantial." A&F also submitted evidence of the promotion of its bird mark through "partnerships with various organizations that work with high school students … reaching millions of students and educators." There was also evidence of unsolicited media coverage, including articles in Business Insider and on Yahoo Finance. The Board concluded that A&F's bird mark is "at the very least, commercially strong entitling it to a broad scope of protection against confusingly similar marks."

Turning to the marks, the Board observed that "the proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties."

Applicant Guballa argued that its mark "consists of specific design elements and coloring that are unique to the gannet bird. This is very intentional … Applicant is not trying to emulate Opposer’s seagull, nor would Opposer’s seagull mark be mistaken for a gannet. These are marks that have extreme differences."  The Board was not impressed:

Applicant’s argument ignores that the parties’ marks both show a similar bird with two outstretched wings and in flight with pointed, closed beaks facing to the left. *** Although Applicant’s bird has a fish in its beak, the fish is very small in comparison to the remainder of the bird design and despite Applicant’s arguments to the contrary, likely not readily discerned and remembered by the consumer.

Looking at the parties’ marks in their entireties, the parties’ marks have a similar appearance and commercial impression of a bird in flight and the subtle differences (such as the wingtips) are not likely to be recalled by consumers at spaced intervals, given that the average purchaser normally retains a general rather than a specific impression of trademarks.

And so, concluding that confusion is likely, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: What do you think? Hard to swallow? BTW: I don't recall ever seeing A&F's bird design mark, but then I'm not in high school.

Text Copyright John L. Welch 2023.

TTAB Finds "4:20" Deceptively Misdescriptive of Tobacco and Cigarette-Related Products Not Containing or Used With Cannabis

The Board upheld a Section 2(e)(1) refusal to register the proposed mark 4:20, finding it deceptively misdescriptive of "tobacco; cigarette papers; cigarette filters; cigarette tubes; cigarette rolling machines; handheld machines for injecting tobacco into cigarette tubes; machines allowing smokers to make cigarettes by themselves; none of the foregoing containing or for use with cannabis." (emphasis added). The Board found that cannabis users are familiar with the term 420 and variants, including the proposed mark 4:20, as describing cannabis, its use, and related paraphernalia, and that consumers would believe that applicant's products "could contain or could be for use with cannabis." In re Republic Technologies (NA) LLC, Serial No. 90053762 (December 7, 2023) [not precedential] (Opinion by Cindy B. Greenbaum).

A mark is deceptively misdescriptive under Section 2(e)(1) if (1) the term misdescribes a quality, feature, function, or characteristic of the goods or services with which it is used; and (2) consumers would be likely to believe the misrepresentation.

Examining Attorney Robert J. Struck submitted an entry from Dictionary.com defined 4:20 as "a slang term for marijuana/cannabis." There was no evidence that the term has any other established meaning. He also introduced Internet evidence showing that "it is plausible for tobacco and smoking paraphernalia of the type identified in the application to contain or to be used with cannabis."

On this record, we have no doubt that consumers and users of cannabis immediately will perceive the designation 4:20 to describe a feature or attribute that Applicant’s tobacco and smoking paraphernalia plausibly could have, namely, that such goods contain or are for use with cannabis. Because Applicant’s identification of goods specifies “none of the foregoing containing or for use with cannabis,” the proposed mark 4:20 misdescribes a significant characteristic or feature of the goods.

To demonstrate that consumers are likely to believe the misdescription, the Examining Attorney provided evidence that cannabis smoking paraphernalia are common and available to consumers in the marketplace. The evidence included a blog entry discussing the benefits of a "spliff," which combines ground cannabis and tobacco for smoking. "It is therefore likely that the reasonably prudent consumer (i.e., someone who consumes cannabis) would believe that Applicant’s goods, promoted under the proposed 4:20 mark, could contain or could be for use with cannabis."

Applicant Republic Technologies feebly argued that the mark is merely suggestive, but its evidence was unconvincing. Likewise, its assertion that the mark is incongruous in light of the exclusion of cannabis from the identification of goods went up in smoke, since consumers are not aware of the limitation in the application to register.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: If the misdescription is material to the purchasing decision, the mark is deceptive under Section 2(a) and barred from registration. Do you think 4:20 is deceptive?

Text Copyright John L. Welch 2023.

TTABlog Test: Are Candy and Nuts Related for Section 2(d) Purposes?

The USPTO refused to register the mark CREME DE LA CREME for raw and processed nuts, including candied nuts, "supplied to grocery chains and wholesale grocers," finding confusion likely with the mark CRÈME DE LA CRÈME registered (on the Supplemental Register) for "candy.” Applicant Hines Nut argued that the cited mark is laudatory, commonly used, and therefore weak and entitled to a narrow scope of protection. How do you think this appeal came out? In re Hines Nut Company, Ltd., Serial No. 90672644 (December 5, 2023) [not precedential] (Opinion by Judge David K. Heasley).

Hines provided no evidence to support its assertion that "crème de la crème" is widely used. The Board, however, agreed that the term is laudatory, noting that "cream of the cream" in French means "the very best." The Board also observed that "[o]n the whole, '[i]t is well-established that a mark registered on the Supplemental Register would be categorized as weak . . . .'" 

It is also well settled that a mark registered on the Supplemental Register can be cited as a basis for refusing registration of another mark under Section 2(d) of the Act. Moreover, "[i]n the ex parte context, the Office does not and cannot question the validity of a mark in a registration cited against another under Section 2(d)." And the Board pointed out that "there is no categorical rule that citation of registrations on the Supplemental Register is limited to registrations of 'substantially identical' marks for 'substantially similar goods,' or that a different test for likelihood of confusion should be applied in such cases."

The Board found under the sixth DuPont factor that "the cited mark is laudatory and conceptually weak, but is still presumed valid and enforceable under Section 2(d)."

Applicant Hines did not argue that consumers would distinguish the marks based on their slight dissimilarity. Instead, it maintained that in view of the weakness of the cited mark, confusion is unlikely due to differences in the goods and channels of trade.

Examining Attorney Shari Gadson did not cite any third-party registrations, she did provide nine third-party websites—LaurasCandy.com, NutsToYou.com, SwissColony.com, HarryandDavid.com, OliveandCocoa.com, OhNuts.com, NassauCandy.com, RoyalWholesaleCandy.com, and WeaverNut.com—showing that these entities offer candy and nuts under the same mark.

Hines asserted that this Internet evidence focused on nuts that are covered in chocolate or sold in connection with chocolate. The Board noted, however, that the subject application includes "candied nuts. "Similarity of any item identified in a Class supports a finding of confusing similarity as to that entire class." Moreover, the third-party evidence "also showed single sources offering candy on the one hand and plain, raw, uncandied nuts on the other, under a single mark."

Hines pointed to the limitation in its identification of goods that narrows its channels of trade to nuts "supplied to grocery chains and wholesale grocers." It argued that registrant sells candy under its mark solely for fundraising purposes, “and thus, a consumer searching for products in connection with the Cited Mark would not come across the applied-for mark where the goods are sold wholesale/retail." However, there were no limitations as to channels of trade in the cited registration, and so the Board must presume that registrant’s candy goods "move in all channels of trade normal for such goods and are available to all the usual prospective purchasers of goods of that type."

Applicant’s limitation in its identification of goods does not avoid an overlap with Registrant’s channels of trade or classes of customers. Registrant’s candies, like Applicant’s nuts, could be “supplied to grocery chains and wholesale grocers.”

The Board "consider[s] confusion by end purchasers, as well as intermediate wholesalers and retailers, such as grocery chains."

On consideration of all relevant arguments, evidence, and applicable law, we find the cited registered mark CRÈME DE LA CRÈME conceptually weak. Nonetheless, we find it very similar to the applied-for mark, CREME DE LA CREME, for related goods that would travel through overlapping channels of trade. On balance, we find a likelihood of confusion under Section 2(d).

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Could Hines petition to restrict the cited registration under Section 18 to avoid likely confusion?

Text Copyright John L. Welch 2023.

CAFC Upholds TTAB's Judgment on the Pleadings Based on Dissimilarity of Marks in VERITÉ Opposition

The CAFC affirmed the TTAB's decision [TTABlogged here] granting a motion for judgment on the pleadings (FRCP 12(c)) on the ground that Applicant Grands Domaines' word-and-design mark shown below, for "wines made from grapes from Côtes de Provence in accordance with adapted standards," is not confusingly similar to Opposer Jackson Family Farms' common law mark VERITÉ for wine and its registered mark VERITÉ for "alcoholic beverages except beers." Jackson Family Farms, LLC v. Grands Domaines Du Littoral, Appeal No. 2023-1675 (Fed. Cir. December 5, 2023) [not precedential].

The Board concluded there was "no genuine dispute of material fact that the marks at issue are distinct in appearance," and so "a likelihood of confusion cannot exist as a matter of law," even when considering all other DuPont factors to weigh in favor of Jackson Family Farms.

On this appeal, Jackson argued that the marks are similar because the "VÉRITÉ mark appears as the first term of [a]pplicant’s three-word mark VÉRITÉ DU TERROIR" and therefore VÉRITÉ is the dominant portion of applicant’s mark. It further argued that sixteen of the twenty-two words on applicant's label were disclaimed and thus entitled to less weight in the likelihood of confusion analysis. The CAFC, however, agreed with the Board that Jackson’s focus on the word “VÉRITÉ” ignored other, more prominent portions of applicant’s mark and did not consider the mark as a whole.

The Board did not err in determining that CHATEAU LA GORDONNE, not VÉRITÉ, is the dominant part of applicant’s mark. As the Board explained, CHATEAU LA GORDONNE is displayed in a larger font and different coloring relative to other elements of the label. Therefore, the Board did not err in attributing greater weight to the dominant CHATEAU LA GORDONNE portion of applicant’s mark when analyzing the similarities of the two marks.

Jackson contended that CHATEAU LA GORDONNE is a house mark and VÉRITÉ DU TERROIR is "its own unitary composite product name," and therefore the presence of the CHATEAU LA GORDONNE portion does not avoid confusion as a matter of law because both marks contain the term VÉRITÉ. The court, however, pointed out that there was no support for the assertion that CHATEAU LA GORDONNE is a house mark that "can be stripped out for likelihood of confusion purposes." "The Board was correct to consider the presence of CHATEAU LA GORDONNE and the fact that it is the dominant portion of the mark."

Jackson cited several cases finding similarity between marks when one mark entirely encompasses the other, but the court pointed out that those cases "involved situations in which the only differences between the marks was the addition of a few words to the dominant portion of the mark." [E.g., “STONE LION CAPITAL” and “LION CAPITAL”; JOSE GASPAR GOLD and GASPAR's ALE. Here, the differences in marks "includes the addition of over twenty words, some of which are more prominently displayed than VÉRITÉ." "The Board’s conclusion that the marks are dissimilar was not erroneous."

Finally, Jackson argued that the disclaimed words in applicant's mark should be given no consideration, but the court pointed out that, although those elements may receive less weight in considering the similarity of the marks, they cannot be ignored. Moreover, the word GORDONNE was not disclaimed.

The CAFC found "nothing inherently improper about making a likelihood of confusion determination solely based on dissimilarity of the marks at the pleading stage." It agreed with the Board's conclusion that "a likelihood of confusion between the marks could not exist as a matter of law, even when taking all of the other DuPont factors to weigh in favor of opposer."

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2023.

TTAB Finds "STREAM THEATERS" Generic For .... Guess What?

The Board affirmed a refusal to register the proposed mark STREAM THEATRES on the Supplemental Register for, inter alia, the streaming of audiovisual material during in-person events at movie theaters and other venues [STREAM disclaimed], finding the term to be generic for the services. "Consumers, in the context of Applicant's services . . . would understand the term STREAM THEATRES to refer to theatres where entertainment is streamed." In re Christian J. A. O. Faloye and John C. R. Cato, Serial No. 90260733 (December 1, 2023) [not precedential] (Opinion by Judge Karen S. Kuhlke).

Examining Attorney Caroline Wood first refused registration under Section 2(e)(1) on the ground of mere descriptiveness. Applicants then filed an Amendment to Allege Use and requested registration on the Supplemental Register, leading the Examining Attorney to refuse registration under Sections 23(c) and 45 on the ground of genericness.

The Board found that that the identification of services in the application appropriately set forth the genus of services at issue. The record included definitions of the words STREAM, STREAMING, and THEATRE and excerpts from third-party websites using the terms “stream[ing]” and “theater[re].

Applicant principally relied on the limitation restricting its services to "in-person" events that take place at theaters and other venues, pointing out that the Examining Attorney's evidence showed us of the terms only in connection with streaming to private venues. The Board agreed that this evidence was "not fully on point."

However, while the evidence of usage presented by the Examining Attorney references a different streaming type of service (streaming to private venues), it does show that streaming, a key aspect of Applicants’ services, is generic for the service of streaming. These uses do serve to show how a consumer would understand the word STREAM in connection with a service that provides streaming to refer to a key aspect of the services. Similarly, the evidence shows consumers’ understanding of activity in a theater being streamed to private venues -- “stream theater” is used generically to refer to that service. Here, the service is the reverse, streaming content at the theater, but use of these words together in this context also refers to the activity (stream) and venue (theatre).

Applicant argued that none of the evidence showed use of its mark "as a whole," but the Board observed that it "may consider the understood meanings of portions of Applicants' [proposed mark] as a step in the process towards our ultimate finding of whether the proposed mark, as a whole, is generic for Applicants' services." 

The Board found that the dictionary definitions combined with applicants' specimens sufficed to establish that STREAM THEATRES "would be understood by consumers to refer to the genus of the services, providing streaming at in-person events in a theater." 

Applicants have already disclaimed the word STREAM on the Supplemental Register. What remains is the word THEATRES and the combination STREAM THEATRES. THEATRE is generic for a key aspect of the services, i.e., they are provided at in-person events at movie theatres and other venues.

The Board rejected applicants' contention that that the proposed mark presents an incongruous combination or a meaning "beyond their generic meanings that tell a consumer streaming takes place in a theater." Furthermore, even if applicants were the first or only users of the term, that does not support registration of generic wording. And the “fact that there is no evidence of third-party use of the precise term [STREAM THEATRES] is not, by itself, necessarily fatal to a finding of genericness.”

Overall, the evidence shows STREAM THEATRES names the services or at a minimum refers to the key aspects of the services, streaming in a theater.  Thus, Applicants’ proposed mark is generic for the identified services.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2023.

KEEP AMERICA GREAT! Fails to Function as a Trademark for Ornamental Novelty Pins, Says TTAB

Not surprisingly, the Board upheld a refusal to register the proposed mark KEEP AMERICA GREAT! for ornamental novelty pins, finding that the phrase is "a political and cultural message one that is too commonly used, often ornamentally, in connection with novelty pins and other products for it to be perceived as a trademark." In re America in Harms Way, Serial No. 87976064 (November 30, 2023) [not precedential] (Opinion by Judge Michael B. Adlin).

Examining Attorney Michael Furda based the refusal primarily on third-party use, including use by the media, of KEEP AMERICA GREAT!. He contended that the phrase "has been widely used by many different sources as a political informational message to convey support for ideas espoused by Donald Trump."

Applicant focused mainly on former President Trump ’s use of, and attempts to protect, the proposed mark, as well as the related Trump campaign slogan MAKE AMERICA GREAT AGAIN. "However, Applicant does not directly grapple with the evidence that (1) 'many different sources' use the proposed mark KEEP AMERICA GREAT!, or (2) the phrase is not used only by former President Trump and his campaigns, but is also, more broadly, 'associated with' him."

Moreover, Mr. Trump is not the only user of the proposed mark. The Biden camp acquired the domain name "keepamericagreat.com" for a web site that "features what it says are promises made by Mr. Trump that were broken." And many other candidates used the slogan in the 2018 mid-term elections,

Numerous vendors also use the proposed mark on goods, often ornamentally, with no evidence of any affiliation with Mr. Trump and no indication that KEEP AMERICA GREAT is a proprietary term. At the same time, many third parties use the phrase to express specific support for Trump campaigns,

The diverse collection of buttons and pins (and other products), offered in inconsistent forms and styles, by apparently unrelated sellers/competitors, indicates that the proposed mark is widely used by many, without direction from former President Trump or his campaigns. Some third-party users appear to have primarily commercial motives, while others transmit political or cultural messages in connection with their offers for sale.

The Board observed that the question at hand is whether consumers would perceive the phrase as identifying the source or origin of applicant’s novelty pins. To make this determination, the Board looked to the specimens of use to see how the designation is used in the marketplace.

[T]he back of Applicant’s pins indicate that they are a “PRODUCT OF KEEP AMERICA GREAT!,” and the involved application indicates that “KEEP AMERICA GREAT! is Applicant’s DBA. Thus, Applicant’s ornamental novelty pins purport to identify Applicant as their source. However, “[m]ere intent that a phrase function as a trademark is not enough in and of itself to make it a trademark.” 

The Board was unimpressed by applicant's evidence. 

Put simply, when consumers are exposed to so many different sources of  'KEEP AMERICA GREAT!' hats, stickers, pins, buttons, songs, flags, clothes, signs and other products, the phrase cannot identify any particular source of these goods. The phrase is instead a political and cultural message, used by people who share political and cultural views to affiliate themselves with, and promote, former President Trump and his beliefs.

Applicant argued that it was the first user of KEEP AMERICA GREAT! in commerce, but the Board pointed out that, even if true, that would be irrelevant. "The problem is that the phrase does not function as a mark, and therefore it cannot be protected as such, no matter when it was first used, or by whom."

Finally, the Board proclaimed that "Applicant should not be able to deny competitors (who according to the record also use the phrase) the right to use it freely.

Read comments and post your comment here.

TTABlogger comment: Another one bites the dust. Surely, this is a WYHA?

Text Copyright John L. Welch 2023.

Lack of Actual Actual Confusion Leads to Dismissal of FICO Challenge to FIDO for Fraud Prevention Software and Services

In a 79-page opinion in this nearly eight-year-old proceeding, the Board dismissed Fair Issac's challenges to registration of the mark FIDO, finding confusion unlikely with the registered mark FICO, both marks for goods and services in the field of fraud prevention. The Board found that the differences in the marks outweighed their similarities, but most significant was the lack of actual confusion despite nine years of co-existence in the marketplace. Judge Bergsman's opinion (paper no. 172 in TTABVUE, the first 15 pages of which set out the parties' respective goods and services) runs smoothly through the DuPont factors and is well worth a read. This blog post will attempt to hit the highlights. Fair Isaac Corporation v. FIDO Alliance, Inc., Consolidated Oppositions Nos. 91225634 and 91249276 and Cancellation No. 92071706 (December 1, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman).

The parties stipulated that Fair Isaac had standing to bring its claims, but the Board ruled early on that the "parties may not stipulate to a plaintiff's standing [i.e., entitlement to bring an opposition and/or cancellation proceeding] in the absence of supporting facts." The Board then found that Fair Isaac had established its "standing." Fair Isaac also proved its priority.

The Board began by noting that "[i]f confusion is likely even between just one good or service at issue in an affected International Class in an asserted registration and one good or service in an application, that is enough to sustain an opposition as to the goods or services in the affected class in the application."

However, the Board found the differences between FICO and FIDO to be "significant enough to outweigh the similarities and that the difference in the resulting commercial impression weighs against a finding that confusion is likely."

In sum, while the marks are similar in some parameters examined in the abstract, FIDO has a connotation that FICO does not and has a different second consonant sound (and may also be pronounced by some with a different first vowel sound). While each trademark case is unique and must be decided on its own facts, the evidence here calls to mind our decision in In re Reach Electronics, Inc., 175 USPQ 734 (TTAB 1972) ("'REAC' and 'REACH' are literally words apart from each other. The one letter difference referred to by the examiner is quite significant herein because 'REACH' is a commonly used dictionary word which possesses a meaning unlike 'REAC' which is and would be recognized as a play on ‘react’ or ‘reactor’. And by reason thereof, 'REACH' would be readily distinguishable from 'REAC' in appearance, and it does not sound like 'REAC' when spoken.")

As to the goods and services, the Board concluded that, although they are "related in the general sense in that they both play a role in combatting fraud, Opposer’s directly and Applicant’s indirectly," they differ in nature. Fair Isaac’s goods and services examine transactions after the fact based on data; applicant’s services "simply restrict[] access to computer systems to people in possession of particular objects or credentials (irrespective of whether the access is for the purpose of engaging in a commercial transaction or some other purpose)."

The Board applied the Mason factors in rejecting Fair Isaac's zone-of-natural expansion claim, observing that that "the claimed expansion would require technology that is different from the data-driven predictive technology that is explained in Opposer’s promotional material and referenced in the identifications of services in its registrations." 

The Board further found that, although the trade channels and classes of customers overlap, the customers for the goods and services are "quite sophisticated, careful purchasers" who are therefore "less prone to casual purchasing behavior, which in turn decreases the potential for source confusion."

[W]hile the evidence under the DuPont factor that assesses both the “buyers to whom sales are made” and also “[t]he conditions under which” those sales are made (“i.e., ‘impulse’ vs. careful, sophisticated purchasing”) pull in opposing directions, the evidence here convinces us that sophisticated purchasing is the overriding consideration. This factor, on balance, supports a finding that confusion is not likely.

Fair Isaac contended that the FICO mark is famous, but its evidence did not address the fraud prevention market, and so the Board accorded the mark "no more and no less than the normal strength accorded any inherently-distinctive registered mark."

The lack of actual confusion evidence weighed heavily against Fair Isaac. The Board deemed it "significant that two such sophisticated, large, national companies have been out in the marketplace dealing with the same types of corporate customers and, in some instances, the same companies, and yet neither is aware of any evidence that, at any time over the last nine years, any of their actual or potential customers has been confused as to the source of the parties’ respective goods and services."

The Board found DuPont factors 9-12 to be neutral. Under the 13th factor, Fair Isaac argued that applicant's adoption of the FIDO mark was in bad faith because applicant was aware that the FICO mark was well known in connection with credit scores. The Board, however, pointed out that "adoption of a mark with knowledge of a senior user’s mark, even if the senior user’s mark was listed in a trademark search, does not amount to bad faith (i.e., an intent to confuse)." 

The factor we think is most significant on the evidence and in the circumstances of this case is that there are no known instances of confusion. Also significant is the difference in the marks’ connotations and the sophistication of the corporate consumers and care that the highly-placed individuals who purchase (or, in Applicant’s case, license) the business-oriented products and services here. The fact that there is only a modest relationship between the goods and services also supports our conclusion. These factors outweigh the overlap in trade channels and customers and the modest relationship between the goods and services.

Read comments and post your comment here.

TTABlogger comment: Looking at just the goods and services, one might have guessed that Fair Issacs would win.

Text Copyright John L. Welch 2023.