TTAB Posts March 2024 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled three oral hearings for the month of March 2024. The hearings will be held in person, the first two at TTAB headquarters and the third at Southern University Law Center, Baton Rouge, Louisiana. Briefs and other papers for each case may be found at TTABVUE via the links provided.

March 18, 2024 - 3 PM: A.E. Tribe, LLC v. Dave Dean, Opposition No. 91256518 [Section 2(d) opposition to MAHALA for various clothing items and for online retail store services featuring clothing, on the ground of likelihood of confusion with opposer's allegedly previously used common law mark shown below, for overlapping goods and services.]

March 20, 2024 - 1 PM: Thomas W. Marks v. Fiveable Inc., Opposition No. 91271815 [Opposition to registration of FIVEABLE for educational services in the fields of history, science, social sciences, math, language, culture, and the arts for the purpose of academic study, on the grounds of fraud and likelihood of confusion with opposer's identical mark registered for "Providing a website featuring non-downloadable videos in the fields of home, automobile, and electronics repairs, and entertainment; providing online videos in the fields of home, automobile, and electronics repairs, and entertainment, not downloadable; providing a website featuring general interest entertainment information."]

March 28, 2024 - 11:15 AM (CDT) (Southern University Law Center, Baton Rouge, Louisiana.): Ideal Sciences, Inc. v. Nimbler Wireless Inc., Opposition No. 91273845 [Opposition to registration of TEMPCUBE for various monitoring devices, including wireless and smart thermometers, electronic monitors to collect operational data and settings, including temperature data and settings, from HVAC equipment to ensure proper functioning, and wireless remote temperature and humidity monitors for building maintenance," in view of the registered mark TEMP STICK for, inter alia, temperature sensors; electric humidity sensors; temperature sensors that transmit measurement data wirelessly; and  electric humidity sensors that transmit measurement data wirelessly.]

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TTABlog comment:  Any predictions

Text Copyright John L. Welch 2024.

First DuPont Factor Brings TTAB Dismissal of Monster Energy's Opposition to LAIKABEAST & Design for Mugs and Plates

Frequent TTAB litigant Monster Energy Company got mugged in this opposition to registration of the mark shown immediately below, for mugs and plates. Monster claimed a likelihood of confusion with various BEAST-formative marks for beverages, as well as a lack of bona fide intent. The Board concluded that the involved marks are "too dissimilar overall to warrant a finding of likelihood of confusion," and it found that Applicant Rodriguez had the capacity to market his products and had taken steps to create a small Internet business, thus defeating the lack-of-bona-fide-intent claim. This post will attempt to hit the highlights of the 53-page opinion. Monster Energy Company v. Victor Rodriguez, Opposition No. 91271109 (February 26, 2024) [not precedential] (Opinion by Judge Mark Lebow).

The Goods: Monster argued that the goods are "highly related," since mugs are "beverageware," and so consumers will believe that applicant's plates and mugs are distributed by or co-branded with Monster. However, Monster provided no evidence to support its argument.

Trade Channels and Classes of Consumers: There was no evidence that the trade channels for the involved goods overlap. "Even if we assume that mugs and plates are carried by mass merchandisers, that does not constitute a common channel of trade." As to consumers, "[t]he fact that some portion of Applicant’s target audience – gamers and anime fans of all ages – may from time to time also consume energy drinks of the type listed in Opposer’s Beast mark registration, is not a sufficient basis to conclude that the classes of customers are the same."

The Marks: Monster asserted its rights in the marks UNLEASH THE BEAST!, UNLEASH THE NITRO BEAST!, UNLEASH THE ULTRA BEAST!, UNLEASH THE SALTY BEAST!, REHAB THE BEAST, HYDRATE THE BEAST! and PUMP UP THE BEAST! Monster claimed that applicant's mark is "highly similar" because the word "beast" is dominant in all the marks. The Board disagreed.

Like Applicant’s composite mark, whose wording LAIKABEAST is unitary and thus has no dominant portion, each of Opposer’s Beast marks are also unitary, and each has a structure that is similar to one another, yet quite different from Applicant’s mark.

The Board concluded that the marks are much more dissimilar than similar, and that the first DuPont factor "weighs strongly against a finding of likelihood of confusion."

Strength of the Pleaded Marks: The Board agreed that Monster's Beast marks "are somewhat suggestive of Opposer’s energy drink beverages" (the marks "suggest an intended result or effect to a consumer of Opposer’s caffeine and energy drinks (i.e., consumers will be pumped up, hydrated, unleashed, or rehabbed.")

As for commercial strength, the Board found that UNLEASH THE BEAST, which appears on Monster's beverage containers, has "moderate commercial strength," but as to the other marks, there was "little evidence" regarding their strength.

Section 2(d) Conclusion: "Simply put, the parties’ marks are too dissimilar overall to warrant a finding of likelihood of confusion and the first DuPont factor, accordingly, is dispositive in this case."

Bona Fide Intent: The Board observed that starting a small business to make and sell plates and mugs printed with designs "is not rocket science." Applicant Rodriguez purchased equipment to produce the goods, including a professional heat press machine that is capable of printing images on mugs and plates, took other steps geared toward creating a small business on the Internet. The Board noted that "[e]vidence that a party has the capacity to market or manufacture a product can rebut a lack of bona fide intent to use claim."

The Board found that "Applicant’s evidence and testimony as a whole, including his deposition testimony, has been credible and straightforward," and that Monster failed to demonstrate that Rodriguez lacked the requisite bona fide intent to use his LAIKABEAST and Design mark in commerce in connection with mugs and plates.

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TTABlogger comment: The bigger they are, the harder they fall.

Text Copyright John L. Welch 2024.

TTABlog Test: Is TABLEAU for Wine Confusable with TABLEAU for Bar Services?

The USPTO refused registration of the mark TABLEAU for wine, finding confusion likely with the identical mark registered for "restaurant and bar services; cocktail lounges." Applicant Caymus Vineyards argued that the Office failed to prove the "something more" required to establish relatedness between these goods and services, and further argued that, of the 600,000 restaurants in the U.S., the Office's evidence of third-party overlapping use constituted only “25 ten-thousands of one percent, or fewer than one in 10,000." How do you think this came out? In re Caymus Vineyards, Serial No. 97040804 (February 22, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen).

The Board ruled that there was no need to show "something more" to support the relatedness of the goods and services here because there is "an inherent relationship between Registrant’s bar services and cocktail lounges and Applicant’s wine." The Board noted that "inherent relatedness often exists when the services in question include or center on the sale of the particular goods in question."

Moreover, even if "something more" were required, that standard is met here. The cited mark TABLEAU is arbitrary and inherently distinctive. In addition, the evidence established that restaurant services and wine may be advertised by the same source under the same mark and offered at the same location, and that the customer bases for wine and restaurant services overlap.

Examining Attorney Scott Bibb established that wine and bar services are often offered by the same entity under the same mark by submitting eleven third-party registrations, more than thirty webpages, and eight internet articles. Caymus asserted that this was not a robust collection of evidence, but the Board was unmoved.

The fact that the Examining Attorney did not submit more does not detract from the fact that this evidence reveals that wine and restaurant services are offered by the same party under the same mark. The Court of Appeals for the Federal Circuit and Trademark Trial and Appeal Board have long recognized that "the PTO is an agency of limited resources" for obtaining evidence when examining applications for registration; the practicalities of these limited resources are routinely taken into account when reviewing a trademark examining attorney’s action.

With respect to the argument based on the number of restaurants and drinking places in the United States, Caymus relied on an Internet printout from bls.gov. The Board deemed that information of limited value because it constitutes hearsay. Moreover, that printout is not evidence of the number of restaurants "that do or do not offer wine or whether the wine is labeled with the same trademark."

And so, the Board affirmed the Section 2(d) refusal.

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TTABlogger comment: So, you shouldn't name a bar or lounge without first checking for wine trademarks, and vice versa.

Text Copyright John L. Welch 2024.

Guest Article by Michael Hall: "A Few Recommendations for the Office and Those Practicing Before the Office"

Michael Hall, a former examining attorney and now Senior Counsel at Womble Bond Dickinson, provides (pdf here) three recommendations for trademark practitioners to consider when preparing responses to Office Actions, followed by two recommendations for the USPTO with regard to improving its examination of applications.

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Text Copyright John L. Welch 2024.

TTAB Denies Request for Reconsideration of TORPEDO JUICE Cancellation Denial

Petitioner Oregon Grain requested reconsideration of the Board's denial of its petition for cancellation of a registration for the mark TORPEDO JUICE for "Alcoholic beverages, except beer; Gin; Liquor; Rum" [TTABlogged here]. The Board had found that Oregon failed to prove priority because it failed to prove that its common law, identical mark was distinctive as of the filing date of Respondent's underlying application. Oregon here claimed that the Board erred in ruling that the issue of the lack of distinctiveness of Oregon's mark was tried by implied consent. Oregon Grain Growers Brand Distillery Inc. v. Michael Pitsokos, Cancellation No. 92076817 (reconsideration denied February 9, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Implied Consent Not Necessary: The Board first pointed out that, despite its earlier ruling, "it was not necessary to find implied consent" to consider the issue of distinctiveness. First, the issue of priority was raised by respondent in its answer, and in any event the petitioner in a cancellation proceeding must prove priority. Second, "under the rule of Otto Roth, a petitioner cannot prevail unless it shows that its unregistered common law mark is distinctive of its goods or services." The Board noted that "plaintiffs relying on common law rights, in general, often overlook the element of proof of distinctiveness as part of the burden of establishing priority."

Accordingly, the Board did not err in considering, as an initial matter, the distinctiveness of Petitioner’s designation TORPEDO JUICE in connection with priority since distinctiveness of an asserted common law mark must be proven and addressed in our consideration of Petitioner’s prior rights in such mark.

Distinctiveness of Petitioner's Mark: The Board also concluded that it did not err in finding TORPEDO JUICE to be merely descriptive.

The evidence and testimony in the record fully support our finding that TORPEDO JUICE merely describes a feature of Petitioner’s pineapple vodka by informing purchasers that Petitioner’s goods are an alcoholic beverage that is high proof, and that its pineapple flavored vodka is based on a beverage that purportedly originated from naval sailors during World War II.

Amend Petition to Add Descriptiveness Claim?: Petitioner asserted that the issue of descriptiveness was also tried with regard to registrant’s identical mark. The Board, construing this argument as seeking an amendment to the pleadings to conform to the evidence under Fed. R. Civ. P. 15(b) based on implied consent, was unmoved.

After a thorough review of the record, we find that the issue of descriptiveness of Respondent’s mark was not tried by the implied consent of the parties and, in particular, that Respondent was never fairly apprised that Petitioner’s evidence was being offered in support of a descriptiveness claim. To the contrary, until its present request for reconsideration, Petitioner had not raised this issue. *** In its brief on the case, Petitioner states unequivocally that there are two issues in this proceeding, namely, likelihood of confusion and nonuse. Petitioner does not in any way address the issue of descriptiveness of Respondent’s mark in its brief.

And so, the Board denied the request for reconsideration and denied the request to amend the pleadings.

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TTABlogger comment: In a review of a Board decision by way of civil action under Section 1071, the plaintiff may raise new issues and add evidence. What new issue would you raise?

Text Copyright John L. Welch 2024.

TTABlog Test: Are Nail Polish Strengtheners Related to Dietary Supplements?

The USPTO refused to register the mark TRI-FLEX TECHNOLOGY for "nail care preparations, nail strengtheners, non-medicated nail treatment preparations for cosmetic purposes, nail polish, nail color gels, nail lacquers, none of the foregoing containing collagen" [TECHNOLOGY disclaimed], finding confusion likely with the registered mark shown below, for "dietary supplements for humans containing Types I, II, and III Collagen." Are the marks confusable? Are the goods related? How do you think the appeal came out? In re Wella Operations US, LLC, Serial No. 97401927 (February 20, 2024) [not precedential] (Opinion by Judge Albert J. Zervas).

The Marks: The Board found TRI-FLEX to be the dominant element in both marks. The design in the cited mark, having "three sections of curved, flexible arms," reinforces the term TRI-FLEX. [Flexible? - ed.]. The term COLLAGEN is "generic in the context of the goods," and so it "plays a much lesser role than TRI-FLEX in the mark’s commercial impression." The Board therefore found the marks to be similar "in sound, meaning, appearance and commercial impression." [Sound? Appearance? - ed.].

The Goods: The Board focused on "nail care preparations” not containing collagen, in applicant's identification of goods. It observed that "collagen is an important contributor to nail strength; that supplements, including collagen supplements, are taken to improve nail strength." The evidence established that "consumers will consider both Applicant’s and Registrant’s goods when wanting to strengthen fingernails."

Moreover, third-party websites showed that "the same entity provides nail care products and treatments and collagen supplements and markets these goods under the same mark." The evidence convinced the Board that the goods are related.

As to channels of trade, the Board found persuasive "the FlexiNail webpage offering the involved goods as part of a single package on one webpage, and the Beauty Pie website offering such goods on the same website under the same Beauty Pie brand."

From the identifications and from the Examining Attorney’s website evidence, we find that purchasers of Applicant’s and Registrant’s identified goods, i.e., members of the general consuming public who desire stronger nails, overlap.

Conclusion: The Board concluded that confusion is likely, and so it affirmed the refusal to register.

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TTABlogger comment: What do you think? I am unconvinced.

Text Copyright John L. Welch 2024.

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

People are saying that one can predict the outcome of a Section 2(d) appeal about 95 percent of the time just by looking at the marks and the goods and/or services. Here are the three Section 2(d) appeals recently decided by the TTAB. How do you think these three came out? [Answers in first comment.]

In re Adorama, Inc., Serial No. 97263050 (February 9, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal TURNSTILE AUDIO for “microphones, headphones, in-ear monitors not for medical purposes, audio speakers in the nature of studio monitor speakers, and other related audio equipment used in recording, live sound, post-production, and broadcasting, namely, sound recording apparatus” [AUDIO disclaimed] in view of the registered mark TURNSTYLE for "carrying cases, namely, shoulder bags, and messenger bags, all designed for carrying one or more of cameras, photographic equipment, digital audio players, cell phones, satellite telephones, personal digital assistants, electronic reading devices, tablet computers, and computer accessories.]

In re LIT Hookah LLC, Serial No. 87904603 (February 14, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of the mark shown below for "On-line retail store services featuring handmade all-glass hookahs" in view of the registered mark LIT for "Electronic cigarettes and components and parts, namely, cartomisers, atomisers, and refill cartridges."]

In re CARWIZ International d.o.o., Serial Nos. 79261503, and 79261504 (February 15, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal of CARWIZ, in standard character and design form (shown below) for, inter alia, vehicle rental, in view of the registerd mark WIZZ for, inter alia, car rental.]

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

Text Copyright John L. Welch 2024.

CAFC Vacates and Remands BABIES' MAGIC TEA Cancellation Denial: TTAB Misapplied the DuPont Factors

The CAFC vacated the Board's decision [here] denying a petition for cancellation of a registration for the mark BABIES' MAGIC TEA for "medicated tea for babies that treats colic and gas and helps babies sleep better." The Board found no likelihood of confusion with the registered mark BABY MAGIC for various toiletry goods (including baby lotion). The CAFC ruled that the basis for the Board's finding as to the second DuPont factor was unclear, that the Board had ignored certain evidence bearing on the third factor, and that it erred in failing to weigh the first factor heavily in favor of Petitioner Naterra. Naterra International, Inc. v. Samah Bensalem, 2024 USPQ2d 293 (Fed. Cir. 2024) [precedential].

The Board concluded that the marks were "more similar than dissimilar," but gave "particular weight" to the lack of "probative evidence showing the relatedness of the parties’ respective goods, . . . coupled with the somewhat weak inherent nature of [Naterra’s] BABY MAGIC mark, [and] the lack of demonstrated commercial strength (let alone fame) and similar trade channels."

With regard to the second DuPont factor (the similarity and nature of the goods), the Board rejected Naterra's expert witness testimony regarding other "umbrella" baby brand companies that purportedly sell both baby skin care products and baby ingestible product, as “unsupported by underlying evidence.” The CAFC, however, deemed this testimony to be "pertinent to the relatedness of the goods." Moreover, Respondent Bensalem's counsel admitted at oral argument that third-party evidence is "absolutely very relevant."

Because the court could not discern "whether the relevant evidence was properly evaluated" it remanded to the Board "for further consideration and explanation of its analysis under this factor."

As to the third DuPont factor (the similarity of established trade channels), the Board ignored Bensalem's admission response that stated that both parties "utilize similar channels of trade in connection with the trademarks." Noting that the Board did not identify any evidence showing a lack of similarity in trade channels, the CAFC again vacated and remanded for further proceedings, directing the Board to consider "all relevant evidence related to the second and third DuPont factors."

The Board also erred in failing to weigh the first DuPont factor (the similarity of the marks) "heavily in favor of a likelihood of confusion finding." The court found instructive its holding in Detroit Athletic, in which it found that the lead words of the marks DETROIT ATHLETIC CLUB and DETROIT ATHLETIC CO. "are their dominant portion and are likely to make the greatest impression on consumers." As in Detroit Athletic, "the first DuPont factor should 'weigh[] heavily in the confusion analysis.'"

We conclude the Board erred in weighing the first DuPont factor and failed to address relevant evidence concerning the third DuPont factor. We also cannot discern whether the Board properly addressed relevant evidence concerning the second DuPont factor. Accordingly, we vacate the Board’s decision and remand for further proceedings consistent with this opinion.

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TTABlogger comment: What do you think will be the result on remand?

Text Copyright John L. Welch 2024.

Another TTAB Footnote on Legal Citations Says USPQ Still Acceptable

We reported here on an internal Board citation program concerning the possible broadening of acceptable forms of legal citations. On the same day, the Board made a different statement regarding the program in In re MYBAGSTORES.COM, Serial No. 90726300 (February 9, 2024), in a footnote quoted first below.

As part of an internal Board pilot citation program on possibly broadening acceptable forms of legal citation in Board cases, this decision varies from the citation form recommended in the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 101.03 (June 2023). This decision cites decisions of the U.S. Court of Appeals for the Federal Circuit and the U.S. Court of Customs and Patent Appeals by the page(s) on which they appear in the Federal Reporter (e.g., F.2d, F.3d, or F.4th) and/or the United States Patents Quarterly (USPQ).For decisions of the Board and the Director, this decision employs parallel citations to both the USPQ and to the WESTLAW database (WL). Until further notice, however, practitioners should continue to adhere to the practice set forth in TBMP § 101.03. (Emphasis added).

The Board took a more restrictive approach (see below) in In re Pro Eagle LLC, Serial No. 97738815 (February 9, 2024). I have highlighted what I perceive to be the differences.

As part of an internal Board pilot program exploring the possibility of broadening or altering acceptable forms of legal citations in Board cases, the citations in this opinion vary from the citation forms recommended in Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 101.03 (June 2023). This decision cites precedential decisions of the Court of Appeals for the Federal Circuit and the Court of Customs and Patent Appeals only by the page(s) on which they appear in the Federal Reporter (e.g., F.2d, F.3d, or F.4th). Precedential decisions of the Board and the Director will be cited only to WESTLAW (WL) and initial citations to Board decisions will include a parenthetical indicating the decision’s precedential status. There will be no citations to the United States Patents Quarterly (USPQ). Practitioners, however, should continue to adhere to the practice set forth in TBMP § 101.03 until further notice from the Board. (Emphasis added).

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TTABlogger comment: What about citations to TTAB and CAFC slip opinions?

Text Copyright John L. Welch 2024.

Trade Name Use is not Trademark Use, Says TTAB

The Board affirmed a refusal to register the proposed mark EXPERIMENTAL AND APPLIED SCIENCES for “Dietary and nutritional supplements” on the ground that the mark is used solely as a trade name to identify applicant's business and therefore is not registrable. In re Hi-Tech Pharmaceuticals, Inc., Serial No. 88291540 (February 14, 2024) [not precedential] (Opinion by Judge Martha B. Allard).

A “trade name” is defined in Section 45 of the Trademark Act as “any name used by a person to identify his or her business or vocation.” 15 U.S.C. § 11. "A designation used merely as a trade name cannot be registered under the provisions of the Trademark Act." See, e.g., In re Letica Corp., 226 USPQ 276, 277 (TTAB 1985).

A designation may function as both a trade name and a trademark. “The distinction between trade name use and either trademark or service mark use is often a difficult one to make and often is nebulous in character.” In re Unclaimed Salvage & Freight Co., 192 USPQ 165, 167 (TTAB 1976).

Factors to consider include whether Applicant has used its full corporate name or entity designation, capitalized its name, utilized its name in the same lettering style as other matter, used its name in a significantly bolder or larger style of type, or displayed its name in a contrasting color. In re Univar Corp.,20 USPQ2d 1865, 1869 (TTAB 1991); see also TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1202.01 (Nov. 2023) and cases cited therein.

Each of applicant's specimens showed the mark displayed as depicted above, in only one location — on one line of a four-line group, all sharing the same color, identical or at least nearly identical font size and style, and left-hand and right-hand justification.

We agree with the Examining Attorney that “[i]ndeed, applicant would be hard-put to present the term in a less prominent manner.” Because the proposed mark appears in a four-line stack, i.e., with the lines sharing the same left- and right-hand justification, these lines form a visual unit which reinforces the impression that the proposed mark EXPERIMENTAL AND APPLIED SCIENCES should be read in conjunction with the line above it (indicating that the manufacturer is being introduced) and the lines below (providing contact information).

The fact that Applicant does not include a corporate designation, such as “Inc.”, does not detract from its perception as a trade name, particularly where, as here, the designation immediately follows the introduction “Developed and exclusively manufactured by”, which explicitly informs the consumer that what follows is the name of an entity.

The Board therefore found that "Applicant’s designation EXPERIMENTAL AND APPLIED SCIENCES functions solely as a trade name," and so it affirmed the refusal to register.

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TTABlogger comment: Is this a WYHA? Refusal seems as inevitable as a Caitlin Clark three-pointer

Text Copyright John L. Welch 2024.

TTABlog Test: Is FOOTWARE Merely Descriptive of Footwear with Integrated Technology?

San Antonio Shoe, Inc. opposed Nike's application to register the proposed mark FOOTWARE for goods and service in classes 9, 38, and 42, all related to sensor and communication software, hardware, and services. Nike did not deny that "the FOOTWARE platform may be incorporated into a shoe," but it pointed out that the identification of goods and services makes no mention of shoes or footwear. How do you think this came out? San Antonio Shoe, Inc. v. Nike, Inc., Opposition No. 91263731 February 12, 2024 [not precedential] (Opinion by Judge Karen S. Kuhlke).

San Antonio argued that "[a]n ordinary consumer will understand that: (i) 'FOOT' refers to a product worn on the foot; (ii) 'WARE' refers to the advanced hardware and software technologies embedded in the product," and therefore "'footware' is merely descriptive for foot[-]worn wearable technology." Excerpts from third-party websites submitted by San Antonio included examples of consumer exposure to wearable technology in shoes and use of FOOTWARE in connection therewith.

The Board found that WARE is at least merely descriptive of computer software and hardware goods and services. The addition of FOOT "informs the consumer of a feature (or specification) of the computer software, hardware and services, that they are used in connection with footwear, the phonetic equivalent of footware."

This case presents the unusual situation where the double entendre engendered by the suffix “WARE” unambiguously informs the consumer the computer software and hardware, and computer services, the “Platform,” are for use in connection with footwear. In both meanings FOOTWARE or FOOTWEAR the term merely describes a feature of the computer goods and services.

The Board concluded that the combination of FOOT + WARE does not result in a separate distinctive meaning.

As to Nike's argument regarding the identification of goods and services, the Board observed that "[i]f the refusal of registration applies to any of the goods or services within the class, registration is refused as to the entire class." Nike admitted that its FOOTWARE platform may be incorporated in a shoe. That was enough for Section 2(e)(1) purposes:

[T]he fact that the “Platform” could be used with other networked devices and FOOTWARE may have a different meaning in a different context is not controlling. (citation omitted). Applicant’s identification of goods is broadly worded and encompasses “computer hardware modules for receiving, processing, and transmitting data in Internet of things electronic devices,” “electronic devices and downloadable computer software that allow users to remotely interact with other smart devices,” “telecommunications services, namely, transmission of data by means of telecommunications networks, wireless communications networks and the Internet,” and “cloud computing featuring software for connecting operating and managing networked devices via wireless or wired networks,” used in connection with footwear.

The Board concluded that FOOTWARE "merely describes a feature, function and purpose of the computer goods and services, namely, that they may be used with footwear or shoes." And so, the Board sustained the opposition.

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TTABlogger comment: If the shoe foots, ware it.

Text Copyright John L. Welch 2024.

CAFC Affirms TTAB: USPTO'S Domicile Address Requirement for Applicants Was Not Improperly Promulgated

The CAFC upheld the Board's affirmance [TTABlogged here] of a refusal to register the mark CHESTEK LEGAL for "legal services" based on Applicant Chestek PLLC's failure to provide its "domicile address." Chestek listed a post office address, but under Trademark Rules 2.32(a)(2) and 2.189 a post office box is not a street address. Conceding that it failed to comply with the domicile address requirement, Chestek argued on appeal that the Rules were unlawfully promulgated under the Administrative Procedure Act (APA), but the Board disagreed and the CAFC sided with the Board. In re Chestek PLLC, 2024 USPQ2d 297 (Fed. Cir. 2024) [precedential], cert. denied (October 7, 2024).

Chestek argued that the domicile address requirement was improperly promulgated for two independent reasons: (1) that the USPTO failed to comply with the requirements of notice-and-comment rulemaking under 5 U.S.C. § 553 because the proposed rule did not provide notice of the domicile address requirement adopted in the final rule; and (2) that the domicile address requirement is arbitrary and capricious because the final rule failed to offer a satisfactory explanation therefor.

As to the first argument, the court observed that Section 553(b)(A) "does not require the formalities of notice-and-comment for 'interpretative rules, general statement of policy, or rules of agency organization, procedure, or practice.'" Chestek argued that the domicile address requirement is not an "interpretative" rule but rather a "substantive" rule requiring notice-and-comment. Alternatively, Chestek argued that notice-and-comment is required even for interpretative rules. The CAFC was not persuaded.

The court concluded that the USPTO's requirement is not a substantive rule because it "does not alter the substantive standards by which the USPTO evaluates trademark applications, e.g., a mark's use in commerce or distinctiveness. "As to second argument, Chestek offered no support for displacing the procedural exceptions to notice-and-comment rulemaking contained within Section 553(b).   

Turning to Chestek's assertion that the promulgation of the domicile address requirement was arbitrary and capricious, the court concluded that the Office offered sufficient justification for the requirement. The Office adopted the requirement as part of a larger scheme to require foreign applicants, registrants, or parties to a trademark proceeding to be represented by U.S. counsel. The U.S. counsel requirement was needed "because of the influx of unauthorized practice of law by foreign parties." In order to condition the requirement of U.S. counsel on domicile, the Office would need to know the applicant's domicile address, and it was reasonable for the Office to require that information.  

Finally, Chestek contended that the domicile address requirement was arbitrary and capricious because the Office did not take into account privacy concerns, such as its impact on victims of domestic violence or homeless individuals. The court was unmoved. It noted that an agency's reasonableness must be judged based on the record before it at the time of decision. The policy concerns here raised by Chestek were not raised before the Office, nor did the Office receive comments from parties expressing the privacy and other concerns raised by Chestek.

Concluding that the USPTO properly promulgated the domicile address requirement and that Chestek failed to comply with that requirement, the CAFC affirmed the Board's decision.

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TTABlogger comment: Some call this the "Where do you sleep at night?" case.

Text Copyright John L. Welch 2024.

TTABlog Test: Is CANTU for Vehicle Tires Primarily Merely a Surname?

Invoking Section 2(e)(4), the USPTO refused registration of the proposed mark CANTU for “Tires; vehicle wheels; air chamber tire parts for vehicles, namely, inner tubes,” finding that CANTU is primarily merely a surname. The name CANTU appears 107,752 times in the search of the Lexis-Nexis Public Records database, but applicant asserted that, under the doctrine of foreign equivalents, CANTU means "sing" or "song" in English, overriding any surname significance of the term. How do you think this came out? In re CP Comerical S/A, Serial No. 90865025 (February 9, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Board considered the usual Section 2(e)(4) factors. There was no evidence that anyone associated with applicant has the surname CANTU, a neutral factor. Negative dictionary evidence showed that CANTU has no other recognized ordinary English meaning, a factor weighing against applicant.

Examining Attorney David Brundage asserted that CANTU has the structure and pronunciation of similar surnames (Canto, Canby, Banta, Cann, Santa, Canal, Canas, Canter, Gant and Sante). The Board found only one to be similar: CANTO. Applicant provided evidence that Portuguese surnames end in "es." [NB: the Board's opinion is not very clear in explaining applicant's argument on his point]. The Board concluded that "[c]oupled with the countering evidence from Applicant regarding common endings for surnames, the Examining Attorney’s evidence CANTO is a similar surname is insufficient to show how the public perceives the structure and sound of CANTU." The Board deemed this factor neutral. 

As mentioned above, the surname CANTU appears 107,752 times in the search of the Lexis-Nexis Public Records database. The ancestry.com website Ancestry website indicated there are 430,000 United States records relating to the CANTU surname.

As demonstrated by the database evidence and the Ancestry website evidence, CANTU is used as a surname across the United States, and the general public has been exposed to the surname. We find that members of the general public are likely to encounter CANTU as a surname, and this evidence supports the Examining Attorney’s refusal that the primary significance of CANTU is as a surname.

Turning to applicant's argument that the doctrine of equivalents should be applied, Applicant and the Examining Attorney submitted various conflicting translations from Google Translate. The Board rejected applicant's position.

We find there is no evidence in the record establishing that the doctrine of foreign equivalents applies in this case. There is no evidence in the record to support CANTU is the foreign equivalent of the English word “sing” in the Sicilian and Asturian languages. Attorney argument is not evidence. The record also does not clearly support a finding that the English word “sing” is translated as CANTU in the Portuguese language. Lastly, as the Examining Attorney points out, the Google Translate result submitted by Applicant does not show that the English word “sing” is translated as CANTU in the Corsican language. 

The Board therefore found the doctrine of foreign equivalents to be inapplicable, and it concluded that the primary significance of CANTU to the purchasing public is that of a surname.

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TTABlogger comment: With that many Lexis/Nexis hits, you'd better have some pretty good evidence to get out from behind the 8-ball.

Text Copyright John L. Welch 2024.

TTAB is Considering Dropping Citations to USPQ in favor of Westlaw

In a recent Board decision, In re Pro Eagle LLC, Serial No. 97738815 (February 9, 2024), the Board announced in a footnote that it is conducting an "internal Board pilot program exploring the possibility of broadening or altering acceptable forms of legal citations in Board cases." It appears that the Board may decide to drop USPQ citations in the future. The footnote from the Pro Eagle case is quoted below.

As part of an internal Board pilot program exploring the possibility of broadening or altering acceptable forms of legal citations in Board cases, the citations in this opinion vary from the citation forms recommended in Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 101.03 (June 2023). This decision cites precedential decisions of the Court of Appeals for the Federal Circuit and the Court of Customs and Patent Appeals only by the page(s) on which they appear in the Federal Reporter (e.g., F.2d, F.3d, or F.4th). Precedential decisions of the Board and the Director will be cited only to WESTLAW (WL) and initial citations to Board decisions will include a parenthetical indicating the decision’s precedential status. There will be no citations to the United States Patents Quarterly (USPQ). Practitioners, however, should continue to adhere to the practice set forth in TBMP § 101.03 until further notice from the Board.

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TTABlogger comment: What do you think? Is this bad or good for practitioners? Why is the Board considering this change?

Text Copyright John L. Welch 2024.

TTABlog Test: Is MENSTRUATION CRUSTACEON Merely Descriptive of Microwavable Heating Pads?

The USPTO refused to register the proposed mark MENSTRUATION CRUSTACEON for "Microwavable heating pads not for medical purposes," finding the mark to be primarily merely descriptive under Section 2(e)(1). Applicant argued, among other things, that "the rhyming, incongruous qualities of MENSTRUATION CRUSTACEAN" and its "humorous, rhyming cadence" . . . "captures the consumer’s attention and identifies Applicant as the source of the goods." How do you think this came out? In re What Do You Meme, LLC, Serial No. 97406016 (February 8, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Examining Attorney Alex Seong Keam relied on dictionary definitions of the constituent words, on Applicant's specimen of use (shown above), product listings for applicant's heating pad (describing the product as "a huggable, heat-up” 14-inch “plush lobster” and “cuddly crustacean” in the shape of a lobster), third-party articles about applicant's goods, and various advertisements for creature-shaped pads for use with period or menstrual pain, including crustaceans (crab and lobster). [example below].

The Board observed that "[a] term or word which merely describes the form or shape of a product falls under the proscription of Section 2(e)(1) of the Trademark Act. [See, e.g., J. Kohnstam, Ltd. v. Louis Marx & Co., 280 F.2d 437, 126 USPQ 362, 364 (CCPA 1960) (MATCHBOX SERIES merely descriptive of toys sold in boxes having the size and appearance of matchboxes)]. Here, CRUSTACEAN "merely describes the shape or form of Applicant’s heating pad product, which in this case is a lobster, a type of crustacean."

The Board found that MENSTRUATION describes the use or purpose of Applicant’s heating pads, i.e., to relieve menstruation pain. Moreover, when the two words are combined, MENSTRUATION CRUSTACEAN "does not lose its descriptive significance."

Applicant argued that MENSTRUATION CRUSTACEAN is not descriptive because it is a unitary mark that has a “rhyming cadence” and is incongruous. According to Applicant, "rhyming 'menstruation' with 'crustacean' while euphonous, is absurd and disarming, and so the perceptual incongruity resulting therefrom transforms an otherwise descriptive mark into a mark capable of trademark significance and capable of identifying the source of the goods."

The Board noted that to be considered a unitary mark, the elements of the mark must be so merged "that the mark has a distinct meaning of its own independent of the meaning of its constituent elements." "In rare cases, alliterative marks, or those with a rhyming or other sound pattern, can encourage persons encountering the mark to perceive the mark as a whole."

As to incongruity, “it must be shown that in combination the descriptiveness of the individual words has been diminished, that the combination creates a term so incongruous or unusual as to possess no definitive meaning or significance other than that of an identifying mark for the goods.”

The Board rejected applicant's "unitary mark" contention:

We disagree with Applicant that MENSTRUATION CRUSTACEAN is a unitary mark. While the rhyming pattern employed in Applicant’s mark may assist consumers’ perception of the mark as a combination of both terms rather than just focusing on one, we find no separate distinct overall commercial impression as a result. The two words rhyme, but the rhyming quality imparts no new or different meaning to the terms.

And it also rejected the "incongruity" argument:

We also find no incongruity. Combining the merely descriptive terms “menstruation” and “crustacean” into the composite MENSTRUATION CRUSTACEAN does not negate their mere descriptiveness, nor does it create a composite that is incongruous. MENSTRUATION CRUSTACEAN merely describes the shape or form of the heating pad, which is a crustacean (lobster), and it describes the function or purpose of the heating pads which is to relieve pain from cramps during menstruation. The combination does not result in an incongruous or unusual designation with no definitive meaning or significance other than as a mark.

In sum, "consumers will still immediately understand upon seeing the mark in connection with the goods that they are used to describe a heating pad in the shape of a plush lobster that is used to relieve cramps during menstruation."

And so, the Board affirmed the refusal.

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TTABlogger comment: I wonder what the lamb is called?

Text Copyright John L. Welch 2024.

Despite Respondent's Bogus Legal Citations, TTAB Denies BRONX NATIVE Cancellation Petition on Contractual Estoppel Ground

The Board tossed out this petition for cancellation of a registration for the mark BRONX NATIVE for various clothing items, finding that the petitioners were contractually estopped from challenging the registration. In reaching this decision, the Board refused to consider respondent's brief, which was filled with erroneous quotations from and citations to various precedents, and references to a number of decisions that didn't exist. Tiarra Hamlett and Michael Hamlett Jr. v. Bronx Native composed of Giancarlos Martinez, Roselyn Grullon and Amaurys Grullon, Cancellation No. 92077944 (February 7, 2024) [Not precedential] (Opinion by Judge Thomas L. Casagrande). 

Respondent's counsel admitted that he did not read the cases cited in respondent's brief, or even attempt to look them up. He did nothing to rectify the errors in his brief, even though he was on notice of same for months before oral argument. The Board was "at a loss for words that adequately express the gravity of Respondents’ citation of fictitious decisions."

Failing to read the decisions cited in a trial brief represents a dereliction of the duty to perform “an inquiry reasonable under the circumstances” sufficient to certify that the “legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law.” Attributing propositions of law to decisions that did not discuss those propositions is bad enough. Purporting to actually quote decisions where neither the quote nor anything like it appears is worse. And worst of all is citing or purporting to quote from decisions that do not exist. (emphasis by the Board).

Nonetheless, the Board did not consider this a forfeiture of respondent's defenses, and it left petitioners with the burden to prove their case.

Turning to the substantive issues, the Board observed that it has the authority "to entertain an opposition to an application based on an agreement barring registration of the opposed mark and to entertain a defense that a prior agreement might either preclude a party from opposing an application or challenging a registration."

In a coexistence agreement between the parties in 2018, the petitioners acknowledged respondent's intellectual property rights in the BRONX NATIVE mark and they agreed not to challenge or interfere with respondent's use or registration of that mark in connection with any goods covered in International Class 25 (which include those of the challenged registration).

Petitioners did not contend otherwise, but instead argued that the agreement is "null and void" because counsel for respondent purportedly made several misrepresentations that induced petitioners to enter into the agreement. "This is essentially a claim that the agreement, by virtue of having been induced by fraud, is thereby unenforceable against the party accused of misrepresentations."

The Board, however, was unable to entertain that claim:

Adjudication of this sort of claim, however, is beyond our limited statutory authority. Cf. Selva & Sons, 217 USPQ at 647 (“courts would be the proper tribunals in which to litigate a cause of action for enforcement or breach of the contract”). That being the case, we hold that Petitioners are contractually estopped from challenging Respondent’s BRONX NATIVE registration.

And so, the Board denied the petition for cancellation.

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TTABlogger comment: I wonder if there was some AI involvement in the preparation of respondent's brief.

Text Copyright John L. Welch 2024.

TTAB Sustains eBay's Section 2(d) Opposition to AFREBAY & Design for Advertising and Payment Processing Services

The Board sustained eBay's opposition to registration of the mark shown first below, for advertising and payment processing services, finding confusion likely with the registered and well-known mark EBAY in standard character form and the stylized version shown second below, for legally identical services. Applicant's evidence of third-party use and registration of marks containing the word "bay" failed to make a dent in the strength of the EBAY marks. This summary will attempt to hit the high points of the 61-page opinion. eBay Inc. v. Afrebay, Inc., Opposition No. 91266958 (January 29, 2024) [Not precedential] (Opinion by Judge Christopher C. Larkin).

Applicant submitted dozens of third-party registrations and uses of marks containing the word "bay" but none containing the term “ebay.” Moreover, because the involved services "are literally or legally identical, the universe of relevant third-party uses of BAY-formative marks here is very small."

Five relevant third-party registrations, and four relevant third-party uses of BAY-formative (not EBAY-formative) marks, have negligible, if any, probative value on either the conceptual or commercial strength of the EBAY word mark. “‘This is a far cry from the large quantum of evidence of third-party used and third-party registrations that was held to be significant in both’” of the Federal Circuit’s seminal third-party mark cases [Jack Wolfskin and Juice Generation].

The Board found that "[t]he conceptual and significant commercial strength of the EBAY word mark emerges unscathed from Applicant’s scattershot challenge." The fifth duPont factor ("[t]he fame [or strength] the prior mark) "strongly supports a conclusion of a likelihood of confusion," while the sixth factor ([t]he number and nature of similar marks in use on similar goods [or services]) is neutral.

Turning to a comparison of the marks, the Board began by observing that the identity of the involved services and the "significant commercial strength" of the EBAY mark reduced the degree of similarity between the marks needed to establish a likelihood of confusion.

The Board found that AFREBAY is the dominant portion of Applicant’s mark because it is most likely to make a greater impression upon purchasers, to be remembered by them, and to be used by them to request the services. After a lengthy and thorough analysis of the similarities and differences between the mark in terms of appearance, sound, connotation, and overall commercial, impressions, the Board concluded that the first DuPont factor supports eBay's claim of likely confusion. As to the payment processing services, the Board observed that consumers "could readily view Applicant’s mark as a variant of Opposer’s mark pertaining to credit card and debit card transactions involving buyers or sellers in Africa."

There are differences between Applicant’s mark and both the EBAY Standard-Character Word Mark and EBAY Lowercase Word Mark, particularly in appearance, but Applicant’s mark is more similar than dissimilar in appearance, sound, and meaning to Opposer’s EBAY Standard-Character Word Mark shown in the ’204 Registration, and more similar than dissimilar in sound and meaning to Opposer’s EBAY Lowercase Word Mark shown in the ’423 Registration. The first DuPont factor supports a conclusion of a likelihood of confusion in both Class 35 and Class 36.

And so, the Board sustained the opposition, declining to reach eBay's dilution claim.

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TTABlogger comment: What about TampaBay for advertising services?

Text Copyright John L. Welch 2024.

In a Unanimous Decision, TTAB Dismisses SPLIT DECISION Opposition: Billy Stott Failed to Prove Ownership of the Band Name

The Board dismissed an opposition to registration of SPLIT DECISION for "Entertainment services in the nature of live visual and audio performances, namely, musical rock band," finding that Opposer Billy Stott failed to carry his burden to prove that Applicant Split Decision Music, LLC was not the owner of the mark. Stott began to "manage" the band SPLIT DECISION two years after it was formed, and claimed to be a "full, non-performing primary band member," but there was no agreement regarding ownership of the band's name. Applying the reasoning of its Wonderbread 5 decision, the Massachusetts district court's ruling in Bell v. Streetwise Records, and the CAFC's Lyons decision, the Board sided with the applicant. Billy Stott v. Split Decision Music, LLC, Opposition No. 91249613 (January 31, 2024) [Not precedential] (Opinion by Judge David K. Heasley).

As plaintiff in this proceeding, Opposer Stott had the burden to prove prior ownership of the subject mark by a preponderance of the evidence. Wonderbread 5. The parties submitted extensive deposition and declaration testimony in this proceeding that began in July 2019.

The band began as a part-time, two-member outfit in Philadelphia in 1990 and became a five-member, full-time band that now performs up and down the east coast. The dispute concerned the extent of Mr. Stott’s involvement in the band’s operations from 1991 until they parted ways in 2018. Stott claimed he was a "full, non-performing primary band member," while the applicant asserted that Stott was more in the nature of a manager who assisted in the development of the band. According to the applicant, Stott did not handle the band’s finances, did not select its songs, did not direct its style of play, and did not select its wardrobe.

The Board found this case to be similar to Bell v. Streetwise Records. There, a singing group began performing for nominal amounts of money in the Boston area under the name New Edition. "An ownership dispute arose between the group and Streetwise Records, the record company that produced and marketed the group’s first albums. Streetwise contended that New Edition was a "'concept group,' like The Monkees or Menudo, whose performers are cast to fill roles created by entities that conceived both the concept and name."

The district court, however, found that New Edition was never a concept group: "they were not, as defendants contend, replaceable actors in a play . . . ." "[T]hey existed and performed as New Edition long before [Streetwise released their first album]." "[T]he norm in the music industry is that an artist or group generally owns its own name." "They and no one else controlled the quality of those services. They own the mark.”

Here, as in Bell, the group SPLIT DECISION performed publicly twice a month for a nominal amount—$200 per performance—before the members ever met Mr. Stott. They retained the name they had chosen, SPLIT DECISION, and perform under it to this day. Mr. Stott made undeniably significant contributions during the group’s early years, but as it matured over the course of time it came to control its own music, clothing, performances, and publicity. The group and no one else controls the quality of its services. The group owns the service mark.

The Board also considered, for the sake of completeness, Stott's claim that he was not just the manager, but the "primary, non-performing member" of the group. According to the CAFC's Lyons case, "[g]enerally, there are three main factors to be considered in ownership disputes surrounding service marks as between a departing member and the remnant group: (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"

As to the parties' intentions or expectations, there was never an agreement with Stott regarding ownership of the band name.

The band members’ actions, undertaken in concert, establish their collective ownership of the mark. Their band leader testified, "It's owned collectively from the five of us, not individually." The five band members . . . authorized their band leader, Doug Moore, to apply to register the SPLIT DECISION mark on their behalf via the band’s limited liability company, Applicant Split Decision Music, LLC. The five band members later signed nunc pro tunc assignments memorializing their prior agreement to have the LLC apply to register the mark."

Moreover, based on the objective evidence, Stott did not hold himself out to club owners or patrons as a member of the group, "much less a 'primary, nonperforming member.'"

As a result, the relevant members of the public—club owners and patrons—will look to the band members to perform as Split Decision and stand behind the quality of their performances. They would not look to Opposer, whose participation was terminated in 2018, over five years ago, who has no further role in managing or booking the band, and who has not attempted to field another band under the mark SPLIT DECISION.

And so, the Board sustained the opposition.

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TTABlogger comment: One is tempted to call this a WYHO? but given the length of the proceeding and the number of papers filed, I hesitate to do so.

Text Copyright John L. Welch 2024.

Recommended Reading: Michael P. Goodyear, "Queer Trademarks."

In his article, "Queer Trademarks," Michael P. Goodyear, Acting Assistant Professor at New York University School of Law and Fellow at the Engelberg Center on Innovation Law Policy, provides an enlightening analysis of the impact of Matal v. Tam and Iancu v. Brunetti on the registration of trademarks that refer to LGBTQ+ persons. With the door opened to registration of slurs as trademarks, what LGBTQ+-oriented marks have been registered? Are they affirming in nature or the opposite? [The article may be downloaded here, and it appears in 2024 U. Ill. L. Rev. 163 (Vol. 2024, No. 1)].

LGBTQ+ slurs can now be registered as federal trademarks. The U.S. Supreme Court’s decisions in Matal v. Tam and Iancu v. Brunetti permitted federal registration of disparaging, immoral, or scandalous trademarks. Appellee Simon Tam cheered, hoping that these decisions would usher in a new era of minority communities reappropriating offensive terms steeped in hate and prejudice. Others were less optimistic. Advocacy organizations, scholars, and minority groups worried that these decisions opened the floodgates to the United States Patent and Trademark Office registering the vilest and most prejudicial terms in the U.S. lexicon, ossifying hatred. Only time would tell who was right.

Now, several years after Tam, this Article seeks to answer this question for LGBTQ+ slurs. A prior study found that, following Tam, affirming uses of racially-oriented marks by in-group members predominated over disparaging ones. This Article builds on that analysis and breaks ground on examining trademark law’s relationship with LGBTQ+ persons. To date, there has been practically no trademark law scholarship on the LGBTQ+ community.

This Article presents an empirical analysis of 144 LGBTQ+-oriented trademark applications filed before and after Tam. This study finds that the number of LGBTQ+-oriented trademark applications has increased over twofold since Tam. More surprisingly, LGBTQ+-oriented marks have been unanimously affirming in nature; not a single disparaging use of the slurs in trademarks was identified over the entire nine-year period. Based on these findings, I posit that Tam and Brunetti have facilitated increasing applications for and registrations of LGBTQ+-oriented trademarks by and for the LGBTQ+ community rather than symbols of hate against it.

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Text in part Copyright John L. Welch 2024.

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

Here are the three Section 2(d) appeals recently decided by the TTAB. So far this year, the affirmance rate of Section 2(d) appeals is over 90%. How do you think these three came out? [Answers in first comment.]

In re Ol Happ’s Place Restaurant, LLC, Serial No. 90738221 (January 26, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of the mark shown below left [FINE FARE, ESTD 1997, and PLACE disclaimed], in view of the registered mark shown below right [PIT BARBECUE disclaimed], both for restaurant services

In re Adrenalin Technologies, LLC, Serial No. 90303848 (January 31, 2034) [not precedential] (Opinion by Judge Cheryl S. Goodmann). [Section 2(d) refusal of NIFTY FIFTIES for "Entertainment services in the nature of an amusement park attraction, namely, a themed area," in view of the registered mark NIFTY FIFTY'S (Stylized) (shown below) for “restaurant and carry out food services."]

In re Kattina V. Barsik, Linda D. Barsik, Sean E. Barsik and Tamara A. Barsik, Serial Nos. 90691080 and 90691470 (February 1, 2024) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Section 2(d) refusals of THE BOOKSTORE and THE BOOKSTORE SPEAKEASY [SPEAKEASY disclaimed] in view of the mark shown below, all for restaurant and bar services [Section 2(f) claim for BOOKSTORE BAR and BISTRO and BAR disclaimed].

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

Text Copyright John L. Welch 2024.

TTABlog Test: Is UNFORGETTABLE TRIPS Confusable With UNFORGETTABLE HONEYMOONS for Travel Agency Services?

The USPTO refused to register the proposed mark UNFORGETTABLE TRIPS for "travel agency services, namely, making reservations and bookings for transportation" [TRIPS disclaimed], finding confusion likely with the registered mark shown below, for the identical services [HONEYMOONS disclaimed]. Obviously, it all boiled down to the similarity of the marks. Applicant argued that the cited mark is weak in view of third-party uses and registrations in the travel field, and so confusion is not likely. How do you think this came out? In re Brunvoll and Associates LLC, Serial No. 90526989 (January 31, 2024) [Not precedential] (Opinion by Judge Robert H. Coggins).

Of course, because applicant's services and those of the cited registration are identical, the Board must presume that they travel in the same, normal channels of trade to the same, usual classes of consumers. 

The Board first considered the strength of the cited mark. Since the mark is registered on the Principal Register without a Section 2(f) claim, it must be considered inherently distinctive. Under the sixth DuPont factor, the Board considered whether the strength "may be attenuated by '[t]he number and nature of similar marks in use on similar goods [and services].'"

First, evidence that a mark, or a segment of a mark, is commonly adopted by many different registrants may indicate that the common element has some significance that undermines its conceptual strength as an indicator of a single source. * * * Second, evidence that a mark, or a segment of a mark, is used extensively in commerce by a number of third parties may undermine its commercial strength, as the consuming public may have become familiar with a multiplicity of the same or similar marks, and may have learned to distinguish them based on minor differences.

Dictionary definitions of "unforgettable" indicated that the word is suggestive for travel agency services, and therefore has "at least some conceptual weakness." In addition, applicant submitted six third-party, use-based registrations for marks containing that word, for travel-related services, printouts from 11 internet web pages for travel agencies using the term UNFORGETTABLE in their names or products, and a Dun & Bradstreet search report revealing 23 business entries whose names contain the term "unforgettable" in the "travel and reservation services" industry.

Evidence in the form of listings and advertisements, such as in yellow and white page phone book listings, triggers a presumption that a third-party service mark is in fact in use by third-parties, possibly making a registrant’s mark weak.

Based on this evidence, the Board found that "UNFORGETTABLE-formative marks are both conceptually and commercially weak for travel agency services and, therefore, are entitled to a narrow scope of protection." And so the sixth DuPont factor favored applicant.

The Board then turned to a comparison of the marks. It found that, in light of the weakness of the term UNFORGETTABLE - despite its placement at the beginning of the respective marks - the addition of the differing terms TRIPS and HONEYMOONS was sufficient to distinguish the marks. Although the words HONEYMOONS and TRIPS are merely descriptive and disclaimed, they cannot be ignored in the analysis.

Finally, the Board considered the fourth DuPont factor: "[t]he conditions under which and buyers to whom sales are made, i.e., 'impulse vs. careful, sophisticated purchasing.'" However, there was no evidence regarding the cost of the involved services, and no evidence that the services "will only be available to sophisticated and discerning consumers."

While some purchasers may be discriminating and exercise care in their selection, others may include ordinary consumers exercising an ordinary degree of care. The standard of care is that of the least sophisticated potential purchaser. Stone Lion, 110 USPQ2d at 1163.

The Board concluded that "[t]he ubiquity of UNFORGETTABLE in the travel industry and the additional different wording present in Applicant’s mark outweigh the similarities between the services, trade channels, and consumers. The purchasing conditions and alleged consumer sophistication are neutral." And so, the Board reversed the refusal to register.

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TTABlogger comment: What's the difference between a trip and a vacation? For a vacation, the kids are left at home.

Text Copyright John L. Welch 2024.

Three Recent TTAB Oppositions Sustained on the Ground of Non-use

Here are three recent TTAB rulings, each sustaining an opposition based upon non-use of the opposed service mark. Remember, if a mark that is the subject of a Section 1(a) application is not in use in commerce as of the filing date, or not in use as of the filing date of an Amendment to Allege Use or a Statement of Use in a Section 2(b) application, the application is void ab initio. For a service mark, the services must be rendered in order to qualify as "use in commerce" as defined in Section 45 of the Lanham Act.

PayNearMe, Inc. v. Substring, LLC, Opposition No. 91277497 (January 18, 2024) [not precedential] (By the Board). [Opposition to registration of PAYFORME for various financial transaction services. The Board entered judgment summarily because there was "no evidence, documentary or otherwise, showing that Applicant used the mark in commerce in connection with any of the services identified in its application prior to December 1, 2021," the date applicant filed its Amendment to Allege Use. "None of the activities described by Applicant in its discovery responses, including meeting with potential merchants, partnering with a third-party payment processing entity, and testing its services, constitute rendering of the services specified in the application, and consequently do not show use in commerce." "Applicant at best used the mark for promotional and corporate organizational activities only."]

Cavalier Rescue of Alabama, Inc. v. Christine Bruce Meager, Opposition No. 91248564 (January 26, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen) [Opposition to registration of THE CAVALIER RESCUE for "Animal rescue services, namely, arranging for the adoption of rescued animals." Applicant "[did] not clearly testify that she actually did [arrange for an adoption] as of the Application filing date [June 29, 2018] or otherwise, nor does the record show corroborating evidence of such activities in 2018." Her testimony "reflected a mere willingness to provide the recited services, or preparation to offer the services, which does not suffice."]

BlackBerry Limited v. Hotberry LLC, Opposition No. 91272712 (January 30, 2024) [not precedential] (By the Board) [Opposition to registration of HOTBERRY for "planning, design and management of information technology systems." The Board entered judgment summarily because "[t]he only actual use of the HOTBERRY mark that Applicant contends was made before the filing date of the involved application [July 19, 2020] is use of the mark in connection with 'a technology platform to distribute residential financing to new homebuyers.'" "The evidence of such use, however, is limited to Applicant securing a residential property to sell through an investor in an effort to begin its A/B testing of the new financing plan,” Applicant gauging interest in the residential financing concept via a Craigslist ad in 2014, Applicant’s participation in a start-up competition in 2015 and 2016, and Applicant’s publication of a website in 2016 promoting the residential financing services. This evidence does not support that Applicant ever provided such services."

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TTABlogger comment: Take-away. Don't try to register a use-less mark?

Text Copyright John L. Welch 2024.