The Top Ten TTAB Decisions of 2023 (Part I)

The TTABlogger has once again chosen the ten (10) TTAB (Tee-Tee-Ā-Bee) decisions that he considers to be the most important and/or interesting from the previous calendar year (2023). This is the first of two (2) posts; the first five (5) selections are set out below. The second five 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).

In re Seminole Tribe of Florida, 2023 USPQ2d 631 (TTAB 2023) [precedential] (Opinion by Judge Melanye K. Johnson). [TTABlogged here]. The Board reversed a refusal to register “trade dress consisting of a three-dimensional building in the shape of a guitar” (shown below) for “casinos” and “hotel, restaurant and bar services.” It found the mark to be “tertium quid” akin to product packaging and thus eligible for registration without proof of acquired distinctiveness. The Board looked to decisions that analyzed the inherent distinctiveness of trade dress used with a variety of services, not just building designs: the “Cuffs and Collars” costume in Chippendales and the monster truck design in Frankish. Focusing on the uniqueness of the Tribe’s building design in the relevant industry, it concluded that the subject building design is inherently distinctive for the Tribe’s services. The Board’s conclusion was “further supported” by the Seabrook test for inherent distinctiveness. “We find that Applicant’s Mark is not a common design; rather, it is unique, and not a mere refinement of a commonly-adopted and well-known form of ornamentation for Applicant’s Services. Given the uniqueness of Applicant’s three-dimensional Guitar Design trade dress as applied to Applicant’s Services, we find Applicant’s Mark is of a type that consumers would immediately rely on to differentiate Applicant’s Services from casinos or hotel, restaurant, and bar services offered by others, and that it therefore constitutes inherently distinctive trade dress.”

Curtin v, United Trademark Holdings, Inc., 2023 USPQ2d 535 (TTAB 2023) [precedential] (Opinion by Judge Michael B. Adlin) [TTABlogged here]. Unsurprisingly, the Board dismissed Professor Rebecca Curtin’s opposition to registration of the mark RAPUNZEL for dolls and toy figures, finding that Curtin, as a mere consumer of fairytale-themed products, failed to prove her entitlement to a statutory cause of action. “A plaintiff may oppose registration of a mark when doing so is within the zone of interests protected by the statute and she has a reasonable belief in damage that would be proximately caused by registration of the mark.” In Lexmark, the Supreme Court pointed out that “[i]dentifying the interests protected by” the Trademark Act “requires no guesswork.” Section 45 of the Act identifies those interests: in short, the Trademark Act “regulates commerce and protects plaintiffs with commercial interests.” “In addition to satisfying the 'zone of interests' requirement, Curtin had to show “economic or reputational injury flowing directly from” the applicant’s registration of RAPUNZEL. Here, Curtin’s evidence of the damage she would allegedly suffer was “too remote from registration and is entirely speculative.” Furthermore, the Board pointed out, “registration would at most preclude others from using RAPUNZEL as their own source indicator for such products, subject to defenses such as 15 U.S.C. § 1115(b)(4) (creating a defense to infringement where the ‘term or device … is descriptive of and used fairly and in good faith only to describe the goods and services of such party’).

Advance Magazine Publishers, Inc. v. Fashion Electronics, Inc., 2023 USPQ2d 753 (T.T.A.B. 2023) [precedential] (Opinion by Judge Karen Kuhlke). [TTABlogged here]. The Board rendered a complicated, split decision in this opposition to registration of the mark EVOGUE for consumer electronic devices and accessories, tossing out Opposer Advance Magazine’s Section 2(d) claim but partly upholding its dilution claim, based on the registered mark VOGUE for, inter alia, magazines and mobile phone software. Laches barred both claims as to certain of Fashion Electronics’ goods in light of its ownership of an expired, unchallenged registration for EVOGUE for substantially the same goods. As to the goods not covered by the prior registration, the Board found confusion unlikely but dilution-by-blurring likely. Advanced took no action against the prior registration for more than ten years, a delay the Board deemed unreasonable. Although a laches defense may be overcome (as to likelihood of confusion but not dilution), by a showing of inevitable confusion, the marks and particularly the goods were too dissimilar to meet the heightened standard applicable to a determination of inevitability. As to the goods not subject to the laches defense (battery chargers, speaker and stereo stands, and wireless speakers), the Board dismissed the likelihood of confusion claim due to the differences in the goods, but as to dilution it found the VOGUE mark to be famous and its distinctiveness impaired by Fashion’s mark EVOGUE.

In re Lizzo LLC, 2023 USPQ2d 139 (TTAB 2023) [precedential] (Opinion by Judge Peter W. Cataldo). [TTABlogged here]. Attempts to register common slogans, internet memes, and informational material regularly hit the failure-to-function wall at the USPTO. But the Office has the burden of proof, and here its evidence fell short with regard to two refusals of the mark 100% THAT BITCH for certain clothing items, including t-shirts and baseball hats. The Board concluded that the evidence failed to show the proposed mark to be a common expression in such widespread use that it fails to function as a mark for the identified goods. Lizzo LLC is the trademark holding company of the popular singer and performer known as Lizzo. The proposed mark was inspired by a lyric in Lizzo’s song, “Truth Hurts.” The examining attorney maintained that 100% THAT BITCH “is a commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well-recognized sentiment.” Lizzo and the examining attorney agreed that 100% THAT BITCH conveys a feeling of female strength, empowerment and independence. “But more importantly, considering the entirety of the record, we find that most consumers would perceive 100% THAT BITCH used on the goods in the application as associated with Lizzo rather than as a commonplace expression.”

Phat Scooters, Inc. v. Fatbear Scooters, LLC, Isaac Ashkenazie and Isaac D. Ashkenazie d/b/a Fatbear Scooters, 2023 USPQ2d 486 (TTAB 2023) [precedential]. [TTABlogged here]. The underlying application for the registered mark FAT BEAR for motor scooters was filed in the name of Fatbear Scooters, LLC on December 19, 2019, but that entity did not exist as of the filing date. Petitioner Phat Scooters moved for partial summary judgment on its claim that the registration is void ab initio because the application was not filed by the rightful owner of the mark. In response, one of the co-owners confirmed that the belated incorporation was due to an “oversight,” but they intended to create the entity at the same time the application was filed. He further averred that he and his cousin started the business in about November 2019, that it has continued to the present under the same ownership, and that no other entity has owned or used the FAT BEAR mark. The Board construed the response to the summary judgment motion as a “cross-motion to amend the registrations due to a correctable owner’s mistake.” The Board found that chain of title in the same, single commercial enterprise existed between the LLC and the co-owners (d/b/a Fatbear Scooters), and it allowed the respondent to correct the misidentification because the error was “inadvertent, made in good faith, and has been formalized through the filing of and issuance of the limited liability certificate.”

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Text Copyright John L. Welch 2023-2024.