TTABlog Test: Is "UNRIVALED LUXURY" Merely Descriptive of Cruise Ship Services?

The USPTO refused to register the proposed mark UNRIVALED LUXURY for, inter alia, cruise ship services, finding the mark to be merely descriptive under Section 2(e)(1). On appeal, Applicant Seven Seas argued that the mark is at most suggestive because it is "an inventive composite mark that requires some imagination to arrive at a conclusion about the mark's significance in connection with the identified cruise ship and travel tour services for cruise ship passengers." How do you think this came out? In re Seven Seas Cruises S. de R.L., Serial No. 97219378 (January 29, 2024) [Not precedential] (Opinion by Judge Angela Lykos).

The USPTO has the burden to establish a prima facie case of mere descriptiveness. If such a showing is made, the burden of rebuttal shifts to the applicant, but the ultimate burden remains with the Office and any doubt must be resolved in applicant's favor. 

Examining Attorney Lourdes Ayala provided dictionary evidence that the phrase UNRIVALED LUXURY is laudatory, nor merely suggestive.

The word "unrivaled," when used as an adjective, is defined as "having no rival, incomparable, supreme." The noun "luxury" is defined as "a condition of abundance or great ease;" "something adding to the pleasure or comfort but not absolutely necessary;" or "an indulgence in something that provides pleasure, satisfaction or ease." The combination of the two words as "unrivaled luxury" has no unique or incongruous meaning in relation to cruise ship services other than as a superlative.

The Board concluded that "no mental leap or multi-stage reasoning is required to understand that Applicant intends to market high-end cruise services." The dictionary definitions alone established the mere descriptiveness of the mark.

The Board's finding of mere descriptiveness was bolstered by evidence "showing that it is not uncommon for competitors in the cruise ship industry to use the phrase 'unrivaled luxury' to tout lavish features and amenities."

Th[e] evidence not only shows "unrivaled luxury" as a superlative used by third parties to describe upscale cruise ship services but also demonstrates that consumers shopping for cruises specifically look for superior amenities when making purchasing decisions. Competitors in the cruise ship field should be free to continue to use this merely descriptive language when describing their own cruise ship services to the public in advertising and marketing materials.

Seven Seas pointed to more than 35 registered marks that include the word "unrivaled" or "luxury" either alone or in conjunction with another merely descriptive or generic term, and to its own prior registrations for the marks AN UNRIVALED EXPERIENCE, UNRIVALED SPACE AT SEA, LUXURY PERFECTED, and LUXURY GOES EXPLORING, for the same services as in the application at issue. The Board was unimpressed:

[N]one of the third-party registrations or prior registrations consist of marks containing both UNRIVALED and LUXURY. We hasten to add that the USPTO is not bound by a decision of a Trademark Examining Attorney who examined and allowed the application for a previously registered similar mark, based on a different record.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA? BTW: Who had a hit song entitled "Sea Cruise?"

Text Copyright John L. Welch 2024.

TTABlog Test: Is CHILL for Hard Seltzer Confusable with CHILL for Beer?

The USPTO refused to register the proposed mark CHILL for "hard seltzer," finding confusion likely with the identical mark registered for "beer." On appeal, Applicant MetaBev argued that "something more" is required than merely showing that the goods are alcoholic beverages, and that the involved goods are marketed to different consumers in different areas of the stores in which they are sold. How do you think this came out? In re MetaBev LLC, Serial No. 90897101 (January 22, 2024) [Not precedential] (Opinion by Judge Melanye K. Johnson).

The first DuPont factor "weighed heavily" in favor of affirmance of the refusal. Examining Attorney Kelly Wells established the relatedness of the goods through websites excerpts for Bottle Republic, Whole Foods Market, Walmart, Target, Drizly, Hazel’s Boulder, Bailey’s Boulder, Corona, Bud Light, Michelob Ultra, and CNBC, showing that "beer and hard seltzer often originate from the same source and are often advertised and sold under the same mark."  The evidence also indicated that hard seltzer is categorized as a subset of beer.

The Board agreed with MetaBev that there is no per se rule that all alcoholic beverages are related, but it rejected the assertion that "something more" — often a requirement in cases involving food and restaurant services — is necessary here: "no services are identified in the application or the cited registration and relatedness of the identified goods is evident."

The Board gave the cold shoulder to MetaBev's assertion that its hard seltzer and registrant’s beer are marketed to different consumers, in different areas of stores. Looking to the same website evidence that proved relatedness, the Board found that "the trade channels for Applicant’s hard seltzer and Registrant’s beer would include breweries, liquor stores, grocery markets, and other retail establishments which sell both beer and hard seltzer online and in brick-and-mortar stores." The relevant class of consumers for the identified goods would be identical: "adult members of the general public who consume alcohol."

Moreover, we find that consumers who are familiar with Registrant’s Mark for beer, and who then encounter Applicant’s Mark (i.e., the identical mark) for hard seltzer, may think Applicant’s hard seltzer is a product line extension of Registrant’s beer.

There was no evidence of third-party use of CHILL or CHILL-formative marks for beer. MetaBev pointed to several third-party registrations for CHILL-formative marks for various alcoholic beverages, but again none were for beer and so they had no impact on the strength of the cited mark: "the third-party registration evidence of record is not probative of commercial, or marketplace, weakness, inasmuch as it tells us nothing about the extent to which the third-party marks may have been used, or the amount of exposure relevant customers may have had to those marks."

As to conceptual strength of the cited mark, the record evidence was too scanty to show any weakness of the mark, and so the Board accorded registrant's mark the normal scope of protection to which an inherently distinctive mark is entitled."

And so, finding the marks, trade channels, and classes of purchasers to be identical and the goods highly related, the Board affirmed the refusal under Section 2(d) of the Trademark Act.

Read comments and post your comment here.

TTABlogger comment: Note the differing treatment of the third-party registration evidence. Extent of use must be shown for purposes of attacking the commercial strength of the cited mark, but not for showing the relatedness of the goods.

Text Copyright John L. Welch 2024.

TTAB Posts February 2024 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled two oral hearings for the month of February 2024. [It is a short month]. Both hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

February 13, 2024 - 1 PM: Iron Balls International Ltd. v. Bull Creek Brewing, LLC, Cancellation No. 92079099 [Petition for restriction of a registration for the mark IRON BALLS for "beer," to "“micro-brewed craft beer," to avoid any likely confusion with petitioner's mark, shown below, for "gin."]

February 22, 2024 - 1 PM: Jockey International, Inc. v. Lamont D. Cooper, Opposition No. 91248336 [Opposition to registration of the design mark shown first below, for various clothing items, on the grounds of likelihood of confusion with, and likelihood of dilution of, the registered marks shown second below, with counterclaims for cancellation of opposer's registrations on the grounds of abandonment, likelihood of confusion, and/or fraud.]

Read comments and post your comment here.

TTABlog comment:  Any predictions? 

Text Copyright John L. Welch 2024.

TTAB Orders Cancellation of FREEDOM PARTY Registration: Application Was Void Ab Initio Due to Nonownership

The Board granted a petition for cancellation of a registration for the mark FREEDOM PARTY for "organizing and conducting dance parties" on the ground that Respondent Hyman was not the sole owner of the mark when he filed his underlying use-based application. Therefore, his application was void ab initio and deemed invalid. Edward Levy and Marc Padro v. Kenneth Harris Hyman, Cancellation No. 92068029 (January 12, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington).

Petitioners alleged that from 2003 to October 2016, Petitioners and Respondent operated as a partnership and shared equally the profits derived from arranging and organizing dance parties in New York City under the Freedom Party brand. Until late 2017, the “Freedom Party” was advertised to the public as the joint creation of the parties. Nonetheless, in 2013, Respondent Hyman filed the underlying application, representing to the USPTO that he was the sole owner of the mark for the services listed in the application

Hyman argued that "any possible claims" Petitioners may have based on ownership of the registered mark FREEDOM PARTY "are barred by Petitioners’ laches." The Board pointed out, however, that "laches is not available as a defense in an action to remove a registration which was clearly void ab initio."

The law is clear that only the owner of the mark may file a use-based application for registration; if the entity filing the application is not the owner of the mark as of the filing date, the application is void ab initio. See Great Seats, 84 USPQ2d at 1239 9TTAB 2007).

In terms of deciding competing ownership claims of the same mark when the parties are known to each other and base their ownership on some of the same transactional facts, the Board has identified three relevant factors for making such a determination: (1) the parties’ objective intentions or expectations; (2) who the public associates with the mark; and (3) to whom the public looks to stand behind the quality of goods or services offered under the mark. Wonderbread 5 v. Gilles, 115 USPQ2d 1296 (TTAB 2015).

Petitioners bore the ultimate burden of proving by a preponderance of the evidence that Respondent Hyman was not the owner of the FREEDOM PARTY mark on June 6, 2013, when he filed the underlying use-based application. Based on the evidence and evaluating the record under the Wonderbread 5 factors, the Board found that Petitioners carried their burden of proof.

As to the first factor, the Board had no doubt that that at the time of the filing of the underlying application, it was the parties’ objective intention and expectation that they were all owners of the mark. "[T]he parties’ communications with each other and other evidence make clear that all three individuals were under the belief that no one single individual had exclusive ownership of the mark."

As to the second and third Wonderbread 5 factors, the evidence showed that the relevant public associated the FREEDOM PARTY mark and the parties’ deejaying services only with all three deejays together: "the quality and character of the services rendered under the FREEDOM PARTY mark were attributed to all three deejays, collectively."

In sum, the evidentiary record makes it abundantly clear that Respondent was not the sole owner of the FREEDOM PARTY mark on June 6, 2013, when he filed the underlying use-based application in his name as the sole owner. * * *  Accordingly, the use-based application Respondent filed was void ab initio and, consequently, the resulting registration is invalid.

Read comments and post your comment here.

TTABlogger comment: This TTABattle went on for nearly six years, even though the outcome seems inevitable.

Text Copyright John L. Welch 2024.

CUESZ Is Deceptively Misdescriptive of Cue-less Fitness Training Services, Says TTAB

The Board upheld a Section 2(e)(1) refusal to register the proposed mark CUESZ, finding it to be deceptively misdescriptive of "Real time personal fitness training services including performance, nutritional, medical restorative and mindfulness personal fitness training and further including conditioning and recovery strategies therefor to individual clients." In response to an initial mere descriptiveness refusal, the applicant stated that he had "no intention to provide prompting or reminders from the instructor/trainer, now or in the future." After that, things went south. In re Mark Beveridge, Serial No. 90647376 (January 17, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin).

As the first part of the deceptive misdescriptiveness test, a mark is misdescriptive "when it is merely descriptive, rather than suggestive, of a significant aspect of the [services] . . . which the [services] . . . plausibly possess but in fact do not." The Board observed that "[a] novel or misspelling of a word will not turn a descriptive word into a non-descriptive mark."

Examining Attorney Nelson Snyder pointed to a promotional video made of record by Applicant Beveridge which uses the subject mark in advertising, pronounces the mark as the word “cues,” and shows individuals participating in various fitness activities. Based on a number of Internet references, the examining attorney argued that "the mark’s sole term (properly spelled as CUES) identifies a characteristic or feature of the identified services, namely, that they involve ‘reminder[s], prompting, hint[s], or suggestion[s]’ from the trainer/instructor."

The Board found that the Office had established a prima facie case that "cues" is merely descriptive of an aspect of Applicant’s physical fitness training services.

In view of the evidence of record as a whole, we find it plausible that that physical fitness training services could feature cues, rendering the mark CUESZ merely descriptive for Applicant’s “real time personal fitness training services including . . . conditioning . . . strategies therefor to individual clients.” Because Applicant represents that his training services do not involve cues, the misspelled term CUESZ misdescribes Applicant’s services under the first factor of the test.

The second element of the deceptive misdescriptiveness test asks whether a reasonably prudent consumer would be likely to believe the misrepresentation. The Board found that "[t]he uncontroverted evidence of record demonstrates that consumers are accustomed to encountering cues in personal fitness training and conditioning."

It is likely, therefore, that the reasonably prudent consumer (i.e., someone who receives personal fitness training services) would believe that Applicant’s services, promoted under the proposed CUESZ mark, would feature corrective exercise cues.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I'm not convinced that "cues" isn't merely suggestive.

Text Copyright John L. Welch 2024.

District Court Refuses to Enforce Subpoena for TTAB Case: Must Be Issued by the Court, Contrary to TBMP

Cancellation Petitioner Waterdrop Microdrink GmbH relied on the Trademark Board Manual of Procedure when its attorney signed and served a subpoena on third-party Ecolife Technologies, Inc. in order to take the latter's deposition under FRCP 30(b)(6). Respondent's counsel refused to accept service, and also stated that the subpoena was improperly issued. When Waterdrop moved to compel compliance, the U.S. District Court for the Central District of California sided with Ecolife. Waterdrop Microdrink GmbH v. Qingdao Ecopure Filter Co., Cancellation No. 92079118.

Ecolife contended that, under 35 USC Section 24, a subpoena in connection with a USPTO proceeding must be issued by the court. Waterdrop pointed to TBMP Section 404.03(a)(2), which states that a subpoena may be issued by the clerk of judge of the court in the district where the deponent resides, or by "an attorney authorized to practice in that jurisdiction." [emphasis added]. Waterdrop also pointed to FRCP 45(a)(3), which states that an attorney may authorize and issue a subpoena if authorized to practice in the issuing court.

35 USC Section 24 states that "the clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within the district." [emphasis added]. Section 24 does not say that an attorney may issue a subpoena.

Ecolife argued that the TBMP and the Federal Rules of Civil Procedure cannot supersede the "plain language" of 35 USC Section 24.

The district court gave short shrift to the TBMP provision, citing Justice Gorsuch's observation (while sitting on the 10th Circuit) that the TBMP is only a "sort of rough-and-ready handbook," that "not only doesn't demand deference but actually disclaims it." The court found the TBMP statement to be inconsistent with Section 24. "[T]he TBMP is not binding and Plaintiff does not point to any caselaw or administrative history addressing how this language reconciles with that of Section 24."

Waterdrop argued that requiring the clerk of the court to issue the subpoena is "merely form over substance." The court was unmoved: "Regardless of whether the requirement elevates form over substance, however, Section 24 sets for the procedure by which a party can obtain issuance of a subpoena, and Plaintiff did not follow that procedure."

Read comments and post your comment here.

TTABlogger comment: Time to amend the TBMP. Haven't I been saying repeatedly that "the TBMP is not the law"? Hat tip to Joshua Friedman for this one.

Text Copyright John L. Welch 2024.

At USPTO's Request, CAFC Re-designates as Precedential Its EVERYBODY VS RACISM Failure-to-Function Affirmance

At the request of the USPTO under Fed. Cir. R. 32.1(e), the CAFC has re-designated as precedential its opinion in In re GO & Associates, LLC, 90 F4th 1354 (Fed. Cir. 2024) (re-designated as precedential, January 22, 2024). The CAFC upheld the Board's decision [TTABlogged here] affirming a refusal to register the proposed mark EVERBODY VS RACISM for tote bags and various clothing items, and for the services of "promoting public interest and awareness of the need for racial reconciliation and encouraging people to know their neighbor and then affect change in their own sphere of influence," finding that the phrase fails to function as a source indicator. The appellate court concluded that the Board's determination was supported by substantial evidence. 

The CAFC observed that "[i]f the nature of a proposed mark would not be perceived by consumers as identifying the source of a good or service, it is not registrable," citing TMEP § 1202.04(b) (precluding from trademark protection “informational matter,” such as slogans, terms, and phrases used by the public to convey familiar sentiments, because consumers are unlikely to “perceive the matter as a trademark or service mark for any goods and services.”). [Hmmm! The TMEP is not the law - ed.].

The court found GO’s challenge to be a mere disagreement with the weight the Board assigned to the conflicting evidence. But the Board "properly considered both GO’s uses and third-party uses when assessing how the public would likely perceive the mark."

GO contested this conclusion by asserting that "[p]er se refusals based on the Informational Matter Doctrine are unconstitutional" because they "involve[] content-based discrimination that is not justified by either a compelling or substantial government interest." GO Br. at 8–9 (quoting In re Elster, 26 F.4th 1328, 1331 (Fed. Cir. 2022), cert. granted sub nom. Vidal v. Elster, 143 S. Ct. 2579 (2023)). The court found this argument meritless. It pointed out that in Elster there was no issue as to whether the proposed mark TRUMP TOO SMALL functioned as a source identifier.

What is more, however, is that GO’s constitutional argument is based on a faulty premise: that the Patent and Trademark Office’s (“PTO”) application of the so-called “Informational Matter Doctrine” results in the per se refusal of any mark that contains informational matter, regardless whether or not consumers perceive the mark as source identifying. That is not true. Indeed, one can immediately envision many marks, such as GO’s own example, MAKE AMERICA GREAT AGAIN, that contain informational matter (e.g., widely used slogans), but nevertheless function as source-identifiers.

The court agreed with the TTAB that "[i] If the PTO were to allow the registration of marks that are used by the public in such a way that they cannot be attributed to a single source, the purpose of trademark law would be undermined to the detriment of the public who would be no longer free to express common sentiments without the threat of 'paying a licensing fee to someone who sees an opportunity to co-opt a political message.'"

In sum, "nothing in the Lanham Act prohibits registration of a mark containing informational matter, so long as the mark also functions to identify a single commercial source. "Because EVERYBODY VS RACISM fails to meet that requirement," the court rejected GO's constitutional challenge."

Read comments and post your comment here.

TTABlogger comment: The Board's opinion is worth reading.

Text Copyright John L. Welch 2023-24.

Precedential No. 3: TTAB Rules that a Cancellation Petition Filed During Grace Period is Mooted If Section 8 Declaration Is Not Filed

In a slight variation of the recent precedential ruling in Taylor v. Motor Trend [TTABlogged here], the Board ruled that a cancellation proceeding commenced during the Section 8 grace period for the target registration is mooted if the registrant does not timely file its Section 8 Declaration of Use. The Men’s Wearhouse, LLC v. WKND NYC LLC, 2024 USPQ2d 86 (TTAB 2024) [precedential].

Taylor v. Motor Trend concerned the failure to file a renewal application before the expiration of the six-month grace period. Here, the Board dealt with the non-filing of a Section 8 Declaration of Use before the end of the six-month grace period following the sixth anniversary of a registration.

Respondent WKND's registration issued on March 14, 2017, and so its Section 8 declaration was due by March 14, 2023. See 15 U.S.C. §1058(a)(1); see also Trademark Rule 2.160(a)(1)(i). Warehouse's petition for cancellation was filed on March 15, 2023, one day after the Section 8 deadline but before September 14, 2023, the expiration of the six-month grace period for the declaration. See 15 U.S.C. § 1058(a)(3); see also Trademark Rule 2.160(a)(3). The USPTO's records did not yet reflect any change in the status of the registration when the petition was filed, and so the Board promptly instituted this proceeding.

Because the WKND did not file a Section 8 declaration during the grace period, the USPTO's records were updated in accordance with USPTO policy, on September 29, 2023, to reflect the cancellation of the registration for failure to file the Section 8 declaration. See TMEP § 1611.

On October 25, 2023, more than seven months after this proceeding was instituted and more than three weeks after the USPTO's records were updated to reflect the cancellation of the registration, the Board issued an order allowing WKND "to show cause why … cancellation [of its registration under Section 8] should not be deemed to be the equivalent of a cancellation by request of Respondent without the consent of the adverse party, and should not result in entry of judgment against Respondent as provided by Trademark Rule 2.134."

WKND responded by indicating that its failure to file the Section 8 Declaration was the result of "inadvertence or mistake" due to a calendaring error. It then requested that the registration "be revived and [Respondent] be permitted to file a Section 8 declaration." Fuhgeddaboudit, said the Board: "[I]t is well settled that the deadline for filing a Section 8 declaration is statutory and cannot be waived. See, e.g., Checkers Drive-In Rests., Inc. v. Comm'r of Pats. & Trademarks, 51 F.3d 1078, 34 USPQ2d 1574, 1581 (D.C. Cir. 1995).

The Board then considered the effect of WKND's failure to timely file a Section 8 declaration. It found applicable the principles set forth in Taylor v. Motor Trend and Land O'Lakes v Hugenin.

In Taylor, the Board held that:

the 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. Rather, if a [Section 8 declaration and Section 9 renewal application] are (sic) 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.

In Land O' Lakes, in the context of an affirmative defense, the Board held that a "registration expired by operation of law on [the day after the six-year anniversary] as a result of [a] failure to file" and further that "the date of expiration of [a] registration is not dependent on the date the Office undertook the ministerial function of entering the cancellation into the USPTO database."

The Board concluded that WKND's registration expired by operation of law as of March 14, 2023, and so the subject petition for cancellation filed on the following day was moot. The petition was therefore dismissed without prejudice.

Read comments and post your comment here.

TTABlogger comment: Did this ruling deserve the "precedential" tag?

Text Copyright John L. Welch 2024.

J. Michael Keyes: "TTAB Goes "Bamm-Bamm" To Fruity Pebbles' Consumer Surveys"

Mike Keyes, a consumer survey expert and IP litigator at Dorsey & Whitney LLP, has given me permission to post this recent article from his newsletter, "Lanham Act Surveys for Lawyers" (subscribe here).

TTAB Goes "Bamm-Bamm" To Fruity Pebbles' Consumer Surveys

Post Foods' application to register its "Fruity Pebbles" color trademark recently got reduced to a bit of rubble. In re Post Foods, LLC, 2024 USPQ2d 25 (TTAB 2024). [TTABlogged here]. Why is that? Because the Board found Applicant's proffered evidence failed to meet some bedrock principles. We focus here on two consumer surveys that got stone-cold rejected by the Board. But first, just a bit of pre-historic background.

Fruity Pebbles was released in the early days of the 1970s with none other than the Grand Poobah himself, Fred Flintstone, as the pitch man for the cereal. About half of a millennium later, Post Foods sought to register the color of Fruity Pebbles for "breakfast cereals." Here's the drawing submitted to the USPTO:

Ser. No. 88857834

The description of the mark (amended during prosecution) was as follows:

The mark consists of the colors of yellow, green, light blue, purple, orange, red and pink applied to the entire surface of crisp cereal pieces. The broken lines depicting the shape of the crisp cereal pieces indicate placement of the mark on the crisp cereal pieces and are not part of the mark. (Emphasis added).

In an attempt to establish secondary meaning, Applicant submitted two consumer surveys in response to Office Actions issued by the Examiner. In rejecting the application, the Board ultimately pitched both into the slagheap for similar reasons, but we discuss them separately here.

The First Survey. This survey showed respondents a photograph of the "applied-for" mark and a "control" photograph of a plain crisp cereal product. The images were as follows:

The "Applied-For" Mark

The "Control" Product

The survey structure was not a standard "test and control" experimental design. Instead, it appears as though respondents were shown both the "applied-for" and "control" images. The report also details a number of "net" calculations arrived at without subtracting the control cell results from the test results.

The Board did not address these and other issues. Instead, the Board focused on the fact that the color mark application was not limited to a single configuration. It was shape agnostic. Thus, the Board rejected the survey because it did not "provide any evidence that the claimed colors have acquired distinctiveness for the identified goods, that is, all breakfast cereals, including other non-crisp rice cereals in other shapes." Id. at 22 (emphasis supplied).

The Second Survey. Applicant's next attempt to clear the slate and cobble something together went over like Fred's stone-age vehicle with a huge side of ribs served on it. The images used in this second survey effort were as follows:

The "Applied-For" Image

"Ring-Like" Cereal Control

Much like the first survey, the second one had some unusual dimensions.

But the Board did not address those either. Instead, it concluded that the purported "control" results showed the Applicant's color mark did not enjoy secondary meaning. As the Board observed, 89% of the responses on the control image were "Fruit Loops" (or similar terms). Thus, the Board concluded that:

Given that Applicant's proposed mark encompasses all breakfast cereal shapes, including ring-like shapes, this survey does not show that consumers associate the claimed colors on breakfast cereals with a single source. Id. at 23.

The Takeaway. This decision is a good reminder that survey evidence needs to align with the exact legal issues under consideration. Here, Applicant sought to register the multi-colored combination for a breakfast cereal regardless of whether it was shaped like a pebble, a ring, or other configuration. But the secondary meaning surveys did not shed light on that precise issue.

Read comments and post your comment here.

TTABlogger comment: This article broke my pun-o-meter.

Text Copyright  J. Michael Keyes 2024.

TTAB Affirms Refusal to Register Blue Bundle of Dental Floss Due to Lack of Acquired Distinctiveness

The Board upheld a refusal to register the proposed product configuration mark shown below, for "dental floss," the mark comprising "the presentation and 3-Dimentional (sic) appearance of a dental floss product, specifically comprising an arbitrary bundle of blue looped dental floss." The Board ruled that the mark could not be inherently distinctive (Wal-Mart), and found that it lacked acquired distinctiveness and therefore failed to function as a trademark. In re Loops, LLC, Serial No. 97069982 (January 16, 2024) [not precedential] (Opinion by Judge David K. Heasley).

In an attempt to avoid the impact of Wal-Mart, Applicant Loops argued that the mark comprises product packaging akin to the trade dress in Two Pesos, and therefore is registrable as inherently distinctive. The Board pointed out, however, that in the subject application, Loops describes the mark as "the presentation and 3-Dimentional [sic] appearance of a dental floss product."

In any case, Loops claimed acquired distinctiveness under Section 2(f),"thereby tacitly conceding the lack of inherent distinctiveness." [So why the discussion of inherent distinctiveness? - ed.].

The Board observed that the burden to prove acquired distinctiveness of a color mark is "substantial." So, too, with regard to a product configuration mark. [But if the proposed mark is limited to a configuration in a particular color, does that lighten the burden? ed.].

In attempting to prove acquired distinctiveness, Loops submitted unsworn, unauthenticated lists from anonymous sources that supposedly set forth its sales figures over the past 25 years. The Board noted that, although it "may generally take a somewhat permissive stance with respect to the admissibility and probative value of evidence in an ex parte proceeding, TBMP § 1208, . . . this strains the limits of permissiveness. Unsworn assertions are not evidence."

Moreover, even taking the sales figures at face value, they did not establish acquired distinctiveness of the blue loop bundle. The Board pointed out that Loops' packaging prominently displays its word marks, DENTALOOPS and FLOSS LOOPS. "Customers are more likely to associate these word marks with the source of the goods."

Loops stated that its sales were mostly to institutional or correctional facilities, since the floss loops are “designed to prevent alternate use as a ligature and sold mostly to prison systems.” The Board understood this assertion as an attempt to show that these institutional consumers have come to view the proposed mark as a source indicator.

We note, however, that Applicant provides no support for this supposedly limited channel of trade, either by limiting its identification of goods (“dental floss”) or by a verified statement. 37 C.F.R. § 2.41(a)(3). Moreover, Applicant provides no affidavits or declarations from the purported institutional purchasers or users of its goods.

Most importantly, Loops failed to establish the “substantially exclusive” use of the mark required by Section 2(f). Loops submitted a photograph of a competing blue dental floss loops product and asserted that this was evidence of copying.

However, there was no evidence regarding the competitor's intent, and in fact the competitor uses its own word and design mark on its packages. "In any event, it is more common that competitors copy product designs for desirable qualities or features."

All in all, Applicant has failed to demonstrate that the relevant purchasing public has grown to recognize the primary significance of its blue dental floss loops as identifying source rather than being a feature of the products themselves.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I'm surprised that the Board considered the proposed mark to be potentially registrable, since it seems to me that the mark, in its randomness, was too indefinite to be registrable.

Text Copyright John L. Welch 2024.

In 2023, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals?

By my count, in 2023 the Board issued final decisions in 60 appeals from Section 2(e)(1) mere descriptiveness refusals or from disclaimer requirements based on mere descriptiveness. The Board affirmed 56 of the refusals and reversed four. That's an affirmance rate of about 93%.

One of the affirmances was deemed precedential: for the mark DXPORTAL for the service of "providing an Internet website portal in the healthcare field to provide a patient and caregivers with the patient's drug prescription information." [TTABlogged here].

The four reversals were as follows: 

• ADVANCED FIBER TECHNOLOGY for “Medical catheters for use in the peripheral, coronary, and neuro vasculature; Component parts of medical catheters" [FIBER TECHNOLOGY disclaimed]. [pdf here]. 
  
  
• BEAUTY POPS for a "cosmetic kit for applying superfoods that function as a facial mask for nourishing and revitalizing the skin, the kit comprising face mask powder, tray, spatula and spoon, the foregoing used, when the powder is mixed with water and frozen, to create an applicator that has the appearance of a lollipop." [TTABlogged here].
  
  
• URBAN TOWER for, inter alia, antenna installation and repair, Internet service provider services; leasing commercial fixed wireless spectrums; wireless telephone services; and design and development of wireless communication systems. [pdf here].
  
  
• HEALTH PERKS for "Providing information in the fields of health and wellness" [Disclaimer requirement]. [pdf here].

Set out immediately below is a bar chart showing the sinusoidal history of Section 2(e)(1) mere descriptiveness appeals. Will the "curve" continue upward in 2024 or head back down?

Click on image for larger picture

Read comments and post your comment here.

TTABlogger comment: The BEAUTY POPS case featured two reversals: one under Section 2(d) and the other Section 2(e)(1).

Text Copyright John L. Welch 2024.

TTABlog Test: Is CROSSFIRST BANK & Circle Design Confusable with Banc of California's RIng Design?

Banc of California petitioned to cancel a registration for the mark shown below left, on the ground of likely confusion with its registered mark shown below right, both for, inter alia, banking services. It all boiled down to the first DuPont factor. How do you think this came out? Banc of California, National Association v. Crossfirst Bankshares, Inc., Cancellation No. 92075496 (January 14, 2024) [not precedential] (Opinion by Judge Michael B. Adlin).

Since both parties rely on issued registrations, priority was an issue in this proceeding. Crossfirst did not establish its date of first use, but both parties were entitled to rely on the filing dates of the applications underlying their registrations. Because Crossfirst's filing date was in 2019 and California's in 2017, California had priority.

Of course, since the involved services are identical in part, the Board must presume that the channels of trade and classes of consumers for the identical services overlap.

California claimed that its ring design mark is commercially strong, but its evidence did not relate solely to the ring mark. It included evidence regarding use of that mark with the bank name. "There is no way to determine the extent to which, or even if, consumers of banking services associate the Ring Design alone with Petitioner." Nor did California put its advertising expenses "in context," i.e., in comparison with the expenditures of other banks.

The Board noted that "circles, like other basic shapes featured in trademarks or service marks, are not generally considered particularly distinctive." However, it must presume that California's ring design is inherently distinctive because it is registered on the Principal Register without a claim of acquired distinctiveness.

Ultimately, given Petitioner’s failure to show that the Ring Design is commercially strong , and Respondent’s failure to overcome the presumption that the mark is inherently, distinctive, we accord the mark in Petitioner’s pleaded ’261 Registration the typical scope of protection afforded marks registered on the Principal Register. 

Turning to the marks, the Board found them to be similar in their entireties as to appearance (because both marks include circles), connotation, and commercial impression. "While they do not sound alike, '[w]here, as here, we are dealing with a mark consisting of a design only,' specifically the mark in the '261 Registration, 'our deliberations are limited primarily to appearance.'"

To be sure, there are also differences between the marks. Specifically, Respondent's mark includes the words CROSSFIRST BANK, while the mark in Petitioner’s ’261 Registration consists solely of the “two stylized half circles forming a ring," and the half circles are shaded and have other minor features absent from Respondent’s mark. The parties’ ring/circle designs do not look exactly the same, even though they feature the same shapes and are constructed similarly.

However, "we must also keep in mind: (1) 'the fallibility of memory over a period of time;' and (2) that the 'average' purchaser 'normally retains a general rather than a specific impression of trademarks.'" Furthermore, "the literal element of Respondent’s mark CROSSFIRST BANK is only partially distinctive and minimally distinguishing. In fact, the descriptive or generic and disclaimed term 'BANK' is entitled to less weight in our analysis because it merely names the services the parties offer."

Here, where Petitioner is entitled to use the Ring Design nationwide, unaccompanied by the name "BANC OF CALIFORNIA," the likelihood of confusion increases because consumers will not have Petitioner’s name to go by. In other words, the absence of Petitioner’s trade name from the mark in the ’261 Registration will leave consumers encountering both parties’ marks to differentiate the sources of identical banking services based solely on the minor differences between the parties’ ring/circle designs.

Crossfirst argued that the involved consumers are sophisticated, but the Board wasn't buying. "[B]anking services are consumed by not just the largest and most sophisticated Wall Street firms, but also by ordinary workers, senior citizens and students, for example."

Finally, the lack of evidence of actual confusion was not significant, since Crossfirst did not provide evidence of the extent of its use of its mark for a significant period of time in the same markets that California serves (primarily or exclusively California). The Board therefore could not determine whether there has been a meaningful opportunity for confusion to occur. 

The Board concluded that, although California's mark is conceptually somewhat weak,"that is not enough to ameliorate the likelihood of confusion. In fact, likelihood of confusion 'is to be avoided as much between weak marks as between strong marks." 

And so, the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2024.

In 2023, What Was The Rate of TTAB Affirmance of Section 2(d) Refusals to Register?

Yours truly, the TTABlogger, has once again taken on the unenviable task of estimating the percentage of Section 2(d) likelihood-of-confusion refusals that were affirmed by the Board in the past calendar year. I counted 219 decisions, of which 188 were affirmances and 31 were reversals. That's an affirmance rate of just under 85%.

Only one of the opinions was designated precedential: the split decision regarding the mark IMPACT for various healthcare-related services. [TTABlogged here]. The reversal was based on the inadequacy of the USPTO's proof that certain of the involved services were related.

Here is a list of the 31 reversals [pdf]. Of the 31 reversals, 15 were primarily based on the differences in the marks, and 16 on the lack of relatedness between the involved goods and/or services. 

Set out immediately below is a bar chart showing the sinusoidal history of Section 2(d) appeals. The question is, will the "curve" continue downward or head back up?

Click on image for larger picture

Read comments and post your comment here.

Text Copyright John L. Welch 2024.

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

Here are the first three Section 2(d) appeals decided by the TTAB in 2024. How do you think they came out? [Answers in first comment.]

In re Structure Financial, Inc., Serial No. 90690591 (January 3, 2024) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Section 2(d) refusal of STRUCTURE for "securities brokerage services, namely, trading tokenized securities utilizing block-chain technology, smart-contracts, and decentralized financial protocols; brokerage services for cryptocurrency trading, namely, trading tokenized assets utilizing block-chain technology, smart-contracts, and decentralized financial protocols," in view of the registered mark STRUCTURE & Design (shown below) for "financial services and investment services, namely, funds management, investment and portfolio management services; advisory, consultancy and information services in relation to the aforementioned services" [STRUCTURE disclaimed].]

In re James Lindsay, Serial No. 90793706 (January 8, 2034) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of BOSSCOIN for, inter alia, various cryptocurrency-related services, in view of the registered mark BOSCOIN for various virtual currency-related services.]

In re Master Brands, Serial No. 88892357 (January 9, 2024) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Section 2(d) refusal of GUARDIAN for "reflective clothing for the prevention of industrial accidents, namely, shirts, hooded sweatshirts, pants, coveralls and outerwear in the nature of jackets and coats," in view of the registered mark shown below, for "Shirts; Shirts and short-sleeved shirts; Shirts for men, women, children; Golf shirts; Golf pants, shirts and skirts; Knit shirts; Open-necked shirts; Polo shirts; Short-sleeved shirts; Sports shirts; T-shirts; Wearable garments and clothing, namely, shirts; Women’s clothing, namely, shirts, dresses, skirts, blouses."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2024.

CAFC Slightly Modifies Chutter Fraud Opinion Per USPTO Request

The CAFC granted Intervenor USPTO's petition for panel rehearing, seeking a slight modification of the CAFC's opinion in Great Concepts, LLC v. Chutter, Inc. The court then entered judgment in favor of Great Concepts, reversing the TTAB's finding of fraud and holding that "a Section 14 cancellation proceeding is not available as a remedy for a fraudulent Section 15 incontestability declaration." The Board's decision may be found here, and the CAFC's original opinion here. Great Concepts, LLC v. Chutter, Inc., Appeal No. 2022-1212 (modified January 10, 2024) [precedential].

The Board had ordered cancellation of Great Concepts' registration for the mark DANTANNA'S for restaurant services, finding that Great Concepts' counsel had signed the Section 15 Declaration with reckless disregard for the truth, and ruling for the first time that "reckless disregard is equivalent to intent to deceive and satisfies the intent to deceive requirement" for a fraud claim.

The CAFC ordered a revision of one sentence on page 13 of its original opinion. The sentence originally read as follows:

Section 14 lists numerous bases on which a third party may seek Board cancellation of a registered mark, including likelihood of confusion, abandonment, dilution, deceptiveness, and if the mark is merely descriptive or has become generic or functional. See 15 U.S.C. § 1064.

In the modified opinion, that sentence now focuses on Section 14(3), since the registration at issue was more than five years old, and the available grounds for cancellation were therefore limited:

Section 14(3) lists numerous bases on which a third party may seek Board cancellation of a registered mark at any time, including that the mark has become generic for the goods or services, is functional, has been abandoned, the registration was fraudulently obtained, or the mark is being used to misrepresent the source of the goods. See 15 U.S.C. § 1064(3).

Read comments and post your comment here.

TTABlogger comment: Keep moving. Not much to see here.

Text Copyright John L. Welch 2024.

The Top Ten TTAB Decisions of 2023 (Part II)

The TTABlogger has once again chosen the ten (10) TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year (2023). This is the second of two posts; the first five (5) selections are posted here. Additional commentary on each case may be found at the linked TTABlog post. The cases are not necessarily listed in order of importance (whatever that means).

Adamson Systems Engineering, Inc. v. Peavey Electronics Corp., 2023 USPQ2d 1293 (TTAB 2023 [precedential] (Opinion by Judge David K. Heasley). [TTABlogged here]. The Board granted a petition for cancellation of a registration for the mark CS for "amplifiers," finding that Respondent Peavey had discontinued use of the CS mark with intent not to resume use. Peavey’s de minimis domestic sales of amplifiers under the CS mark between 2016 and 2021 were "insufficient to constitute bona fide use of that mark in the ordinary course of trade," and there was no evidence "showing any intention to resume use of the mark, much less evidence excusing Respondent’s extended period of nonuse." "[L]ooking at the evidence as a whole, as if each piece were part of a puzzle to be fitted together," the Board found that Peavey’s use of the CS mark was "sporadic, casual, and nominal" from 2016 through 2021, and "would not even meet the lower, pre-TLRA standard of use in commerce, much less the current higher standard of bona fide use made in the ordinary course of trade." Although there was bona fide use of the CS mark on amplifiers from 2012 through 2015, sales then plummeted, "dwindling to single digits and then zero at some points in the critical 2016-2021 time frame."

Software Freedom Law Center v. Software Freedom Conservancy, Cancellation No. 92066968 (TTAB November 8, 2023) [not precedential]. [TTABlogged here]. [NB: The TTABlogger represents the respondent in this proceeding.]. In what appears to be a case of first impression at the TTAB, the Board granted a motion for a protective order under FRCP 26(c)(1)(E), excluding Professor Eben Moglen (Columbia Law School), petitioner's executive director, from taking or attending the discovery depositions of two witnesses, due to past harassment. "Respondent's evidence indicates the likely harm to Mr. Kuhn and Ms. Sandler should Mr. Moglen be present at their depositions, let alone take their depositions. This would present significant prejudice to Respondent’s ability to defend the cancellation." Respondent submitted declarations from the two witnesses relating the incidents of harassment, and another from Mr. Kuhn’s therapist regarding the likely harm to Mr. Kuhn that would result from Moglen’s attendance and participation at the depositions. Petitioner asserted that Mr. Moglen should be allowed to take part in the depositions because he has "a good knowledge of the background and the record" and as an employee of petitioner, is "inexpensive." The Board found these assertions to be entitled to little weight, concluding that respondent had established "good cause" for barring Mr. Moglen from attending the depositions in order to prevent intimidation of the witnesses.

Instagram, LLC v. Instagoods Pty Ltd and Instagoods Pty Ltd v. Instagram, LLC, 2023 USPQ2d 1185 (TTAB 2023) [precedential]. [TTABlogged here]. The Board granted Instagram’s motion for leave to take the discovery depositions of two Australia-based officers of Instagoods by oral examination via videoconference. Instagoods refused to consent to the request, but the Board found that Instagram established “good cause” under Trademark Rule 2.120(c)(1). It noted that the witnesses are the only individuals with knowledge regarding issues pertinent to the pleaded claims. Moreover, oral depositions “are likely to aid in the furtherance of discovery in this proceeding, particularly where Instagram has had difficulty obtaining information regarding [former Instagoods employee] Ms. Willis’ role with Instagoods and her prior-filed applications through written discovery.” The fact that the depositions may be conducted without the need for translations and Instagram’s willingness to coordinate the depositions according to the schedules of the witnesses further supported a finding of good cause. The Board also found that videoconference was an appropriate method for taking the deposition since it “will promote flexibility and reduce costs to the parties, particularly where the parties may elect to break up the depositions into segments to accommodate the witnesses’ schedules.”

In re Black Card LLC, 2023 USPQ2d 1376 (TTAB 2023) [precedential] (Opinion by Judge Jonathan Hudis). [TTABlogged here]. In a somewhat rare reversal of a failure-to-function refusal, the Board found the USPTO’s evidence insufficient to establish that the phrase FOLLOW THE LEADER is incapable of serving as a source indicator for credit card incentive program, credit card financial, travel information, ticket reservation, travel advisory, salon and spa reservation, and concierge services. The Board observed that “[t]he record need not necessarily include evidence of third-party use in connection with the specific services at issue for the evidence to support the failure to function refusal.” However, the evidence must demonstrate that the proposed mark “would convey a generally understood sentiment or meaning to the consumers of [Black Card’s] services such that they would not perceive it as signifying the source of the services.” The Board found that the phrase FOLLOW THE LEADER, though in common use, may convey different meanings depending on context. Based on the record evidence, the Board was unable to “reasonably infer” that FOLLOW THE LEADER “has a commonly understood meaning applicable to Applicant’s services" that would prevent the phrase from identifying the applicant as the source of the services. that would render it incapable of being perceived as a source indicator for those services.”

In re Duracell U.S. Operations, Inc., 2023 USPQ2d 861 (TTAB 2023) [precedential] (Opinion by Judge Michael B. Adlin). [TTABlogged here]. Overturning a refusal to register Duracell’s sound mark consisting of three musical notes for batteries, the Board rejected the Office’s position that the specimens of use (.mp3 files, example here) constituted mere advertising material. The Board ruled that transmission of the sound mark in retail locations where the goods are sold is “equivalent to” a display associated with the goods. Section 45 of the Trademark Act provides that, for goods, a mark is in use in commerce if “it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto” and “the goods are sold or transported in commerce.” Duracell's specimens of use were accompanied by a declaration stating that the sound mark was included as part of “audio messaging” played in stores where Duracell’s batteries are sold. The three-note sound, referred to as the “slamtone,” typically appears near the end of each advertisement and is broadcast “as an inducement to purchasers to buy DURACELL batteries while shopping in the store.” The Board agreed with Duracell that the audio messaging is analogous to a traditional “shelf talker,” since the messages featuring Duracell’s sound mark have been played “in tens of thousands of stores where Applicant’s batteries are sold, often multiple times per hour, and in total the ads in question, and the slamtone, aired more than 100 million times.”

Read comments and post your comment here.

Text Copyright John L. Welch 2023-2024.

Precedential No. 2: TTAB Affirms Refusal to Register Proposed Multi-Color Mark for Breakfast Cereals

Color me unsurprised. The Board upheld a refusal to register the proposed color mark shown below, consisting of the colors "yellow, green, light blue, purple, orange, red and pink" for "breakfast cereals," under Trademark Act Sections 1, 2, and 45, on the ground that the color mark is not inherently distinctive, lacks acquired distinctiveness, and therefore fails to function as a source indicator. Evidence of third-party multi-colored cereals and Internet references to "rainbow-colored" cereals undermined Post's claim of acquired distinctiveness. In re Post Foods, LLC, 2024 USPQ2d 25 (TTAB 2024) [precedential] (Opinion by Judge Thomas V. Shaw).

Defining the Mark at Issue: Post stated in its application that "[t]he mark consists of the colors of yellow, green, light blue, purple, orange, red and pink applied to the entire surface of crisp cereal pieces. The broken lines depicting the shape of the crisp cereal pieces indicate placement of the mark on the crisp cereal pieces and are not part of the mark."

Post nonetheless argued that its mark comprises the color combination applied to "crisp rice cereal pieces," as depicted in the application drawing (shown above). The Board pointed out that the application drawing "depicts the mark to be registered." Trademark Rule 2.52. Here, the goods are identified as "breakfast cereals," not "crisp rice breakfast cereals."

The description of the mark makes no mention of “crisp rice cereal pieces,” but even if it did, we look to the identification of the goods, not the mark description, to define the scope of the goods for which registration is sought. When we consider the identification of goods, i.e., “breakfast cereals” generally, and the mark, which does not include the shape of the cereal pieces because they are shown in broken lines, we find that the proposed mark is a color-only mark applied to any breakfast cereal—not, as Applicant claims, a combination of the listed colors as applied solely to crisp rice cereal pieces.

The Board noted that "[i]f Applicant wanted to limit its mark to use on 'crisp rice breakfast cereals,' it should have amended its identification of goods."

Distinctiveness: Color marks are never inherently distinctive when applied to product configurations. Wal-Mart Stores, 54 USPQ2d 1068. Since there was no evidence that the subject color mark is functional, it may be registered if acquired distinctiveness is established. However, the burden of proof in that regard is "substantial" for a color mark. See In re Owens-Corning, 227 USPQ 417, 424 (Fed. Cir.1985).

Examining Attorney Tasneem Hussain introduced examples of 15 third-party multi-colored cereals in the form of puffed rice, ball, ring shapes, etc., and seven articles discussing rainbow-colored cereals. Post submitted two declarations regarding product history (Fruity Pebbles), long use of the mark (since 1973), pictures of the product and its packaging, advertising samples, sales volume and revenues figures, advertising expenditures, unsolicited third-party references, and the results of two consumer surveys.

The Board found that the USPTO's evidence "establishes that consumers encounter numerous examples of multicolored breakfast cereals in a variety of shapes, including crisp rice cereal pieces such as Applicant’s." This evidence, contradicting Post's assertion that its use of the claimed colors was substantially exclusive, "increases Applicant’s burden to establish that the claimed colors have acquired distinctiveness and identify a single source of breakfast cereals."

With regard to Post's evidence, the Board found a "mismatch" with Post's claim of acquired distinctiveness because the evidence related only to Fruity Pebbles crisp rice cereal, whereas the application at issue identified the goods broadly as "breakfast cereals."

Simply put, Applicant’s extensive evidentiary showing relating to consumer recognition of its cereal’s color, shape, and texture misses the mark. We agree with the Examining Attorney that "[m]uch of applicant’s arguments rely upon evidence that hinges on both configuration and color but this application is only for a color mark. Applicant cannot rely upon evidence that conflates color and configuration to support its Section 2(f) claim."

Post's two surveys measured "a much narrower mark - the colors in Applicant's mark as applied to only one type of breakfast cereal—than the actual mark, which is a color mark applied to all types of breakfast cereals." The survey evidence was also flawed because it "does not focus on the color alone." 

The first survey "was limited to consumer perception of the color mark applied to the configuration of crisp rice cereal pieces." That survey did not provide proof that "the claimed colors have acquired distinctiveness for the identified goods, that is, all breakfast cereals, including other non-crisp rice cereals in other shapes." The second survey included an improper control - multicolored toroidal or ring-like cereal pieces that were encompassed within applicant's identified "breakfast cereals." Moreover, nearly 90% of respondents correctly identified the multicolored, ring-like cereal as being one of the third-party cereals relied upon by the USPTO.

The Board therefore affirmed the refusal to register on the ground that the proposed color mark is not inherently distinctive, has not acquired distinctiveness under Section 2(f), and, therefore, does not function as a trademark.

Read comments and post your comment here.

TTABlogger comment: "I hate summer, winter, fall and spring. Red and yellow, purple, blue and green. I hate everything." George Strait. 

So, will Post file a new application with a narrower identification of goods?

Text Copyright John L. Welch 2024.