TTAB Posts April 2024 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled five oral hearings for the month of April 2024. The hearings will be held virtually except for the third one, which will take place at Bethesda North Marriott and Conference Center in Rockville, Maryland. Briefs and other papers for each case may be found at TTABVUE via the links provided.

April 2, 2024 - 1 PM: In re LendingOne, LLC, Serial No. 97627670 [Section 2(d) refusal to register LendingOne & Design (shown below) for various types of mortgage loans, in view of the registered mark LENDERS ONE for "Cooperative mortgage lending services."]

April 4, 2024 - 10 AM: RipRight, LLC v. Jamin K. Caldwell, Oppositions No. 91269694 and 91270237 [Oppositions to registration of RipRight (standard characters) for "Clothing, namely, t-shirts, hoodies, face mask, athletic wear, sneakers, socks, hats, beanies, pants, Thobes, belts" and for "Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms," on the grounds of fraud and likelihood of confusion with opposer's identical mark RIPRIGHT for clothing and exercise equipment.]

April 18, 2024 - 1:45 PM (In Person, Rockville, Maryland): Flowerchild Holding, LLC v. Flour Power LLC, Opposition No. 91276874 [Section 2(d) opposition to registration of FLOURCHILD (Stylized) for "Pizza; Frozen pizza" in view of the registered mark FLOWER CHILD for restaurant services and various food items.]

April 23, 2024 - 1 PM: Monster Energy Company v. Country Innovation & Supply LLC., Opposition No. 91270179 [Section 2(d) opposition to registration of the mark BEAST HACK (standard characters) and the two word-and-design marks shown below, for hats, clothing, baseball and softball training aids, and hand grips, in view of the mark UNLEASH THE BEAST! and several other BEAST-FORMATIVE mark for apparel and accessories.]

April 24, 2024 - 1 PM: In re Flor Rios, Serial No. 97307753 [Refusal to register the proposed mark LEARNNAHUATL for "On-line retail store services featuring animal totems" and for "Education services, namely, mentoring in the field of mesoamerican history; Language instruction," on the grounds of mere descriptiveness and failure-to-function as a trademark.]

Read comments and post your comment here.

TTABlog comment:  Any predictions?

Text Copyright John L. Welch 2024.

TTABlog Test: Is OTTO'S for Soda Pops Confusable With OTTO'S OATMEAL STOUT for Beer?

The USPTO refused to register the mark OTTO'S for "soda pops," finding confusion likely with the registered mark OTTO’S OATMEAL STOUT for “beer” [OATMEAL STOUT disclaimed]. Applicant C&D Brewing argued that the marks differ in sound, appearance, and connotation, and C&D pointed to "83 pairs of registrations that contain identical or nearly identical marks where one in the pair is registered for beer and the other for soda pop/soft drinks (from distinct owners)." How do you think this appeal came out? In re C&D Brewing Ventures, Inc., Serial No. 88935220 (March 26, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen).

The Marks: The Board found the word OTTO’S to be the dominant portion of the cited mark both because it appears first in the mark and because it has a stronger source-identifying significance than the other elements of the mark. "Consumers familiar with Registrant’s mark, OTTO’S OATMEAL STOUT, who encounter Applicant’s mark, OTTO’S, could perceive OTTO’S as indicating that the brewers of OTTO’S OATMEAL STOUT have added a non-alcoholic beverage to their product line."

C&D argued that "in the context of the marketing environment in which the mark of the Cited Registration is found, OTTO’S OATMEAL STOUT indicates that OTTO’S may be the name of a dog rather than a person”; and that Registrant’s beer is “sold under the house mark III Dachshunds Brewing … which has a picture of a dachshund” leading a consumer to assume that OTTO’S is the name of the dog." Irrelevant, said the Board, pointing out once again that "Contrary to Applicant’s arguments, 'the likelihood of confusion issue before us involves the marks as shown in [the] registration certificate and Applicant’s application.'"

The Goods: Examining Attorney Rebecca Ruiz submitted website evidence of nine third-parties that offer both beer and soda under the same or very similar marks, along with an Internet article discussing multiple entities that offer both beer and soda. She also provided ten third-party use-based registrations for both beer and soda under the same mark.

[T]he Examining Attorney’s third-party evidence demonstrates that several third-party entities offer beer and soda under the same or very similar marks suggesting that consumers are accustomed to seeing a single mark associated with a source that sells both beer and soda.

Pointing to its 83 third-party registrations, C&D argued that the evidence "suggests that soda pops are instead the types of goods that are typically sold under the same mark … by distinct owners" and "overwhelmingly suggests that the respective industries have agreed that soda pop/soft drinks and beer are not related."

The Board noted that more than 50 of the pairs include marks that differ by additional wording, design or stylization features that distinguish the marks. Furthermore, there was no supporting evidence of any use of any of the marks that comprise the pairs. "There is also an absence of proof, such as by declaration or submission of copies of the relevant file histories, that no licenses or coexistence agreements are in place between any of the paired registrants; or that they do not coexist because of limited geographic areas of actual use known to the owners of the involved registrations."

[T]he fact that the Examining Attorney did not submit more third-party examples does not detract from the fact that this evidence reveals that beer and soda are often 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.

And so, the Board affirmed the refusal to register.

Read comments and post your comment:here.

TTABlogger comment: I believe that the most popular brands of "soda pops" do not also sell beer. Wouldn't that affect the consuming public's perception regarding relatedness?

Text Copyright John L. Welch 2024.

WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS! Fails to Function as a Source Indicator for . . . Guess What?

The Board affirmed a refusal to register the proposed mark WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS!, finding that the phrase fails to function as a service mark for "legal services." Applicant Russell feebly attacked the Office's evidence, but the Board found that the evidence established the informational nature of the supposed mark.  In re Richard M. Russell, Serial No. 90432695 (March 25, 2024) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The CAFC recently gave its imprimatur to the Board's "failure-to-function" jurisprudence in In re Go & Assocs., LLC, 90 F.4th 1354, 2023 USPQ2d 1337 (Fed. Cir. 2024). That opinion had originally been deemed nonprecedential, but at the USPTO's request, the court re-designated it as precedential. The CAFC there, in a case involving a failure-to-function refusal of the phrase EVERBODY VS RACISM, said:

The [Trademark] Act conditions the registrability of any mark on its ability to distinguish an applicant’s goods and services from those of others. See 15 U.S.C. §§ 1052, 1053. In other words, it is a threshold requirement of registrability that the mark “identify and distinguish” the goods and services of the applicant from those of others, as well as “indicate the source” of those goods and services.

The question, then, was whether WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS! functions as a mark based on whether the relevant public, i.e. purchasers or potential purchasers of the recited legal services, would perceive the phrase as identifying the source or origin of Attorney Russell's services. Here, "the relevant consuming public comprises all potential purchasers of the identified legal services, and therefore includes members of the general public."

In In re Vox Populi Registry Ltd., 25 F.4th 1348, 2022 USPQ2d 115, at *3 (Fed. Cir. 2022), the appellate court "noted the Board’s holding that 'matter that 'merely convey[s] general information about the goods or services or an informational message' fails to function as a source identifier.'"

Here, Examining Attorney Justine Levy contended that the proposed mark "fails to function as a trademark because the wording is merely informational and constitutes a commonplace slogan." She relied on a Thomson Reuters’ Legal online article referring to "clients' legal needs" in connection with legal services, along with third-party law firms' uses of the wording in the proposed mark, or nearly identical wording.

Applicant Russell characterized the third-party uses as merely a “handful” of examples, and he asserted that "[s]uch minimal results are insufficient to establish that the applied-for mark is 'ordinary.'" He also argued that because the third-party uses are 'on interior web pages' or relatively less prominent than other wording or graphics, this diminished their probative value. The Board was unimpressed.

We find the quantity and quality of examples – which fall squarely within the context of Applicant’s recited legal services and which reflect a consistent meaning – persuasive to show the informational nature of the wording.

As for the less prominent usage by third-parties, the Board deemed such usage to align with, rather than detract from, the informational significance of WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS!

Applicant’s specimen is consistent with the informational nature of the proposed mark, as we find that consumers would view the much larger and more prominent wording RUSSELL LAW FIRM as the source of the services, and would understand WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS! to convey the availability (WE’RE HERE) to perform the legal services the consumer viewing the specimen might require (TO HELP WITH YOUR LEGAL NEEDS).

And so, the Board affirmed the refusal under Sections 1, 2, 3 and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2024.

USPTO Proposes Trademark Fee Hike for FY 2025

The USPTO is proposing to increase many trademark fees in Fiscal Year 2025. The proposal is set forth in a Notice of Proposed Rulemaking to be published today (pdf here). Comments are due by May 28th.

As part of our regular assessment of fees under our fee-setting authority, we are proposing certain adjustments necessary to efficiently and effectively administer the U.S. trademark system. These fees provide our agency with the ability to implement programs and initiatives driving our 2022–2026 Strategic Plan, including developing news ways to fight fraud, supporting our employees and stakeholders with reliable IT infrastructure, and enhancing our work to reduce pendency. Our proposed changes to the trademark fees can be found in a notice of proposed rulemaking (NPRM) that will officially publish [March 26th]in the Federal Register. An NPRM on proposed patent fee changes is forthcoming.

* * * * * * * *

Our proposal is shaped by public feedback we’ve received throughout the past several months, beginning with a public hearing in June 2023 hosted by our Trademark Public Advisory Committee (TPAC). Following the hearing, TPAC provided our agency with a written report detailing the public comments received and its recommendations regarding the proposed fees. We considered and analyzed all comments and feedback to create this proposal.

Two provisions seem to be particularly irksome to practitioners. First, if an applicant does not choose the goods and/or services identifications directly from the Trademark Next Generation ID Manual, but instead enters them manually in a free-form text box, the USPTO proposes a $200 fee per class for said free-form identification. Second, the Office proposes a fee of $200 for each additional group of 1,000 characters beyond the first 1,000 characters in the free-form text field, including punctuation and spaces. This fee would also apply to amended identifications that exceed the character limit in a response to an office action.

Read comments and post your comment here.

TTABlogger comment: Thoughts? 

Text Copyright John L. Welch 2024.

TTABlog Test: Are Pizza and Bakery Goods Related Under Section 2(d)?

The USPTO refused to register the mark HIGH FIVE for “Pizza for consumption on or off the premises," finding confusion likely with the identical mark registered for "bakery goods." The issue baked down to whether the goods are related for Section 2(d) purposes. Applicant Pizza Inn argued that "something more" is required to prove relatedness when marks are used for food products and for restaurant services. How do you think this came out? In re Pizza Inn, Inc., Serial No. 88244151 (March 21, 2024) [not precedential] (Opinion by Judge Mark Lebow).

Examining Attorney Lakeisha Lewis submitted some 30 website references each showing bakery goods and pizza sold under the same mark, along with some 50 registrations covering both type of products. The Board concluded that the involved goods are closely related.

Nonetheless, Pizza Inn argued that the goods are not related. First it argued that, in the Office's evidence, the bakery goods are sold in separate locations from the pizza. Not so, said the Board, and in any case it doesn't make any difference.

Next, Pizza Inn contended that these businesses "call out their bakery services separate and apart from their pizzeria operation through use of separate headings, links and – in some cases – even separate web pages. Clearly, these business owners consider pizzas to be their own category of goods separate from bakery goods.” The Board was unimpressed: "The fact that a business has different menu pages, headings, or links for its various goods does not necessarily detract from their relatedness."

With regard to Pizza One's "something more" argument, the Board pointed out that "the heightened 'something more' standard first enunciated in Coors Brewing may be required in any context where 'the relatedness of the goods and services is not evident, well-known or generally recognized.'" In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082 (Fed. Cir. 2014),

[H]ere, the evidence in this case shows that Registrant’s bakery goods and Applicant’s pizza goods are closely related. Because the evidence sufficiently demonstrates that Applicant’s goods are related to those in the cited registration, there is no need to address the “something more” standard.

The Office's evidence also established that the involved products travel to the same trade channels to the same classes of consumers.

Pizza Inn argued that its mark has co-existed with the cited mark since 2017 without any incidents of actual confusion. The Board pointed out once again that the test under Section 2(d) is likely confusion, not actual confusion. In any event, Pizza Inn did not provide evidence regarding the duration, extent, or geographic reach of its sales under its mark, and therefore there was no basis on which to conclude that a reasonable opportunity for actual confusion had occurr.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2024.

TTAB Denies Bertini's Petition for Cancellation of APPLE Registration Due to Failure of Proof of Abandonment

Charles Bertini won a battle with Apple, Inc. last year [TTABlogged here], but he lost this one. Bertini petitioned to cancel a registration for the mark APPLE for a host of entertainment and other services in class 41, claiming that Apple Inc. abandoned the mark through nonuse. Bertini contended that the nonuse occurred "during a period of at least three years and six months after the date of the SOU, namely during November 11, 2011 - May 31, 2015." However, Bertini failed to make a prima facie case of nonuse, and so the Board denied the petition. Charles Bertini v. Apple Inc., Cancellation No. 92068213 (March 20, 2024) [not precedential] (Opinion by Judge Peter W. Cataldo).

A trademark registration is presumed valid, and so a party seeking cancellation bears the initial burden of establishing a prima facie case of abandonment. If the petitioner presents a prima facie case, the burden of production shifts to the registrant to rebut the prima facie showing. The ultimate burden of proof, however, remains with the petitioner.

Under Section 45 of the Trademark Act, proof of non-use for three consecutive years constitutes prima facie evidence of abandonment.

Bertini submitted examples of websites that display the APPLE mark in connection with other terms, websites that display other marks owned by Apple, Inc., and websites that do not display the APPLE mark. From this evidence, Bertini "essentially requests that the Board infer that Respondent was not using the APPLE mark in connection with the recited services from November 11, 2011 to May 31, 2015." Nothing doing, said the Board.

The record consists only of circumstantial evidence of abandonment. Petitioner could have taken the oral testimony deposition of Respondent to ascertain whether Respondent had indeed discontinued use of it registered mark and if so, whether it had any intent to resume use, but elected not to do so. Petitioner further could have compelled responses to his discovery requests or amended his requests to obviate the objections raised by Respondent. Petitioner, however, elected to proceed with discovery responses consisting largely of procedural objections rather than substantive responses and evidence showing use of the APPLE mark that Respondent believed was insufficient. Therefore, Petitioner has failed to make a prima facie showing that there is no use of Respondent’s registered mark for the services identified in its Registration over a three-year period.

The Board pointed out that "[t]he addition of a generic or highly descriptive term does not necessarily detract from the separate commercial impression created by the mark APPLE alone." And it rejected Bertini's argument that the "use of APPLE as a trade name precludes the term from also serving as a trademark or service mark to indicate source."

And so, the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Faced with the presumption of validity, a cancellation petitioner who claims abandonment through nonuse has the difficult task of proving a negative. Hard to do without thorough discovery, probably including a deposition of the registrant.

Text Copyright John L. Welch 2024.

Precedential No. 4: TTAB Finds "ZPILE" Merely Descriptive of Metal Sheet Piles

In a dubiously precedential ruling, the Board upheld a Section 2(e)(1) refusal to register the proposed mark ZPILE, finding it to be merely descriptive of "Metal sheet piles, metal sheet pile sections, and metal sheet pile connectors for joining metal sheet piles." The Board declined to reach the Office's failure-to-function refusal, but in obvious dictum, discussed the issue anyway. In re Sheet Pile, LLC, 2024 USPQ2d 522 (TTAB 2024) [precedential] (Opinion by Judge Christopher C. Larkin).

The term "sheet piling" refers to a type of retaining wall that is installed in the ground by driving or pushing, rather than pouring or injection. "Sheet piles" are interlocking sections of steel used to create retaining walls and cofferdams, typically to create a rigid barrier between earth and water.

In the context of the involved goods, the word “pile” in Applicant’s proposed mark ZPILE means “[a] heavy post of lumber, concrete, or steel, driven into the earth as a foundation or support for a structure.” The record shows that the letter “Z” that precedes and modifies PILE in the proposed mark ZPILE refers to sheet piling that is roughly in the shape of the letter “Z.”

Numerous website references led the Board to conclude that, in the context of the involved goods, "the letter 'Z' describes and refers to a particular shape and type of sheet pile know by construction project engineers and construction companies." The combination of "Z" and "PILE" "immediately describes for construction project designers and construction companies a feature or characteristic of the goods, namely, that they are or pertain to the well-known 'Z' shape of sheet pile."

The Office thus established a prima facie case of mere descriptiveness, which Applicant Sheet Pile LLC failed to overcome. And so, the Board affirmed the Section 2(e)(1) refusal.

Although the Board declined to reach the failure-to-function refusal, it did provide comments thereon. The refusal was "effectively" based on the same evidence as the mere descriptiveness refusal. The examining attorney maintained that "consumers would perceive the applied for mark Z PILE [sic] to convey information about the goods, namely, that they are Z-shaped piles," and therefore failed to function as a source indicator. According to the Board, however, the "impact" of the two refusals is different:

an applicant may overcome a mere descriptiveness refusal by submitting sufficient evidence of acquired distinctiveness under Section 2(f) or by amending to seek registration on the Supplemental Register, but a failure-to-function refusal based on a finding that a term is merely informational would be an absolute bar to registration, affording the applicant no such option to overcome the refusal.

Rather than a failure-to-function analysis, the USPTO should apply the "distinctiveness continuum," which includes "a threshold absolute bar to registration for generic terms—terms that by definition fail to function as source identifiers." This continuum "provides the appropriate framework for the assessment of registrability based on the rationale articulated by the Examining Attorney in this case—i.e., that the goods at issue 'are Z-shaped piles.'"

Read comments and post your comment here.

TTABlogger comment: What's the distinction between a proposed mark being merely descriptive and being informational? Doesn't a descriptive term provide information? Yet a descriptive term may be registered under Section 2(f) or on the Supplemental Register, according to the Board, but an "informational" term cannot be.

Text Copyright John L. Welch 2024.

TTABlog Test: Are These Two Stylized "X" Marks Confusable for Footwear?

The USPTO refused to register the mark shown below left for, inter alia, footwear, finding confusion likely with the mark shown below right, for "shoes." Applicant Global Brand Partners asserted that "the marks are sufficiently different” to avoid a likelihood of confusion. What do you think? In re Global Brand Partners Pte Ltd, Serial No. 97102423 (March 18, 2024) [not precedential] (Opinion by Judge Mark Lebow).

The Board found the respective goods to be legally identical in part; these overlapping goods are presumed to travel in the same channels of trade to the same class of purchasers. The second and third DuPont factors therefore weighed strongly in favor of a finding of likelihood of confusion. Moreover, with the goods identical in part, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Turning to the marks, the Board agreed with Examining Attorney Magdalena Berger that their overall commercial impression is “sufficiently similar to find a likelihood of confusion."

Both marks are discernable depictions of the letter X and share certain characteristics including three lines on the left side and solid prongs on the right side. See Textron Inc. v. Maquinas Agricolas “Jacto” S.A., 215 U.S.P.Q. 162, 163 (TTAB 1982) (observing that in cases involving highly stylized letter marks “similarity of appearance is usually controlling and the decision [regarding likelihood of confusion] will turn primarily on the basis of the visual similarity of the marks”).

Global attempted to prove the weakness of the cited mark by introducing a dozen third-party registrations covering clothing products. However, as the Examining Attorney observed, none featured "a design that visually resembles the mark at issue." "Seven of the submitted third-party marks are composite marks' that "feature design elements and other wording thereby creating a markedly different commercial impressions from applicant’s and registrant’s mark;" and "the design elements in these registrations do not resemble the stylized letters X at issue in this case."

The Board, deeming the marks "far more similar than disimilar," affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Have you ever seen a bigger WYHA?

Text Copyright John L. Welch 2024.

TTABlog Test: Are Gummy Vitamins Related to Personal Care Products Under Section 2(d)?

The USPTO refused to register the mark KUDO for "Gummy vitamins; Nutritional supplements in the form of gummies," finding confusion likely with the nearly identical mark KUDOS registered for "Hair shampoo, hair conditioner, soap for hands, face and body, skin/body moisturizer, skin/body lotion, shaving preparations, body/hand cream, skin cleansing cream, and bath gels/oil." Are the goods related? Do they travel through the same trade channels? How do you think this appeal came out? In re Salvation Nutraceuticals Inc., Serial No. 97015288 (March 8, 2024) [not precedential] (Opinion by Judge Mark Lebow).

Examining Attorney Yat Sye Lee submitted internet evidence that some eighteen different companies offer the goods of both applicant and registrant under the same mark (including SEPHORA, BATH & BODY WORKS, and PACIFICA), along with twenty use-based third-party registrations covering these goods. The Board therefore found the goods to be related.

Applicant Salvation contended that “[c]ompanies typically separate their topical goods from their consumable goods,” which “prevents consumers from believing that the consumable goods somehow contain similar ingredients or characteristics as the topical products, which can contain toxins or other undesirable ingredients to consume and allows the companies to market the products with different message." [sic].: According to applicant:

[The USPTO actually has a long and consistent practice of not finding dietary and nutritional supplements to be related or similar to skin care products. But recently, many marks are being rejected by presenting extrinsic evidence that improperly extends the rights of registrants in an ex parte proceeding based on being so-called substantially related. And the pendulum has swung too far.

However, evidentiary support for that assertion was lacking.

Salvation also complained that it “was not allowed to present extrinsic evidence of actual use by the registrant to show that the goods are not substantially related,' specifically, that Registrant is a manufacturer of guest amenities for hotels, which do not provide supplements and vitamins for their guests." The Board was not impressed, pointing out once again that:

“[the] likelihood of confusion determination must be made on the basis of the goods or services as identified in the application and the registration, rather than on the basis of what the evidence might show the applicant’s or registrant’s actual goods or services to be.” In re Trackmobile, 15 USPQ2d 1152, 1153 (1990)),

With regarding to the overlap in trade channels, the examining attorney relied on the same evidence discussed above regarding the relatedness of the goods, including the webpage evidence from retailers Avon, Honest, Pacifica, Tula, Ulta, Vegamour, Hello Bello, Love Beauty & Planet, Sephora, Blue Mercury, Bath & Body Works, Blu Atlas, Consult Beaute, Gimme, Love Wellness, New Nordic, Oase, and ZAS Naturals. "This evidence supports a finding that these goods are offered in at least one common channel of trade, that is, the websites operated by the third-party specialty retailers, often on the same page."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Does this one bother you? Would you rub a gummy vitamin on your skin?

Text Copyright John L. Welch 2024.

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

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

In re DMG Mori Co., Serial No. 79317839 (March 5, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon). [Mere descriptiveness refusal of GEAR PROFILER for "Metalworking machines and machine tools, and their structural parts" and for "Computers; downloadable and recorded computer software for controlling and monitoring tools of metalworking machine tools for use in connection with metalworking machine tools; computer peripheral devices; laser measuring systems; scanners." Applicant argued that the mark does not directly describe "metalworking machines and machines tools, computers, laser measuring systems, or scanners, much less with the requisite level of particularity required to support a ‘merely descriptive’ refusal.”]

In re Roto-Mix LLC, Serial No. 90862644 (March 6, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen) [Refusal to register AUTO-FEED for “agricultural machines, namely, motorized-vehicle-based automated and semi-automated livestock feed dispensers for livestock feeding trucks and systems" and for "land vehicles, namely, automated feed delivery vehicles." Applicant maintained that "'feed' has a double meaning–both as sustenance for animals and as supplying a consumable within a machine . . . meaning the term is not merely descriptive" and that "'auto' could be a shortened version of automatic but also a reference for an automobile and thus, the proposed mark requires '[s]everal mental steps' to determine what the coined term suggests about the goods and that the mark may be suggestive."]

In re Low Carbon Technologies LLC, Serial No. 88632729 (March 15, 2024) [not precedential] (Opinion by Judge Mark Lebow) [Mere descriptiveness refusal of the proposed certification mark LOW CARBON BEEF for "beef processing." Applicant argud that its services "do not evaluate 'carbon emissions' or specific characteristics of beef itself" and instead "certify numerous steps of beef processing and whether or not they meet numerous, non-obvious criteria that are part of its certification proceeding to reduce overall greenhouse gas emissions."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2024.

TTABlog Test: Is VEUVE OLIVIER for Sparkling Wines Confusable with VEUVE CLICQUOT for Champagne?

Petitioner MHCS sought cancellation of a registration for the mark VEUVE OLIVIER for sparkling wines, claiming a likelihood of confusion with the registered mark VEUVE CLICQUOT for champagne. Priority was not an issue because MHCS filed its underlying application first. The Board found the goods to be, in part, legally identical, since champagne is a type of sparkling wine. But what about the marks? How do you think this came out? MHCS v. Les Grands Chais De France, Cancellation No. 92075021 (March 8, 2024) [not precedential] (Opinion by Judge Martha B. Allard).

As to the conceptual strength of the cited mark, since the mark is registered on the Principal Register without a claim of acquired distinctiveness, it is presumed to be inherently distinctive. Furthermore, the word "veuve" (meaning widow) "is an arbitrary term as applied to Champagne and therefore is conceptually strong."

With regard to commercial strength, MHCS has used the mark VEUVE CLICQUOT in the United States since 1994. VEUVE CLICQUOT brand champagne is sold everywhere in the United States, through both online and in more than 50,000 brick-and-mortar stores. The mark has been widely advertised and promoted, has enjoyed high sales for the years since 2011, and has been the subject of numerous unsolicited media references. However, MHCS did not provide sales or advertising figures for the VEUVE CLICQUOT mark alone, but rather as to total figures for all of its “VEUVE Marks.”

The Board concluded that "overall the mark has substantial commercial strength and falls on the stronger side of the spectrum from very strong to very weak."

Turning to the marks, each of the marks could connote "a specific widow, i.e., the widow named Clicquot and the widow named Olivier." The Board found that "an appreciable number of purchasers are unlikely to be aware that VEUVE means 'widow' and are unlikely to translate the marks into English."

The slight difference in the “widow” connotations of the respective marks in translation, i.e., “the Widow Clicquot” versus “Widow Olivier,” would likely be lost on these purchasers, and it will not aid such purchasers in distinguishing the marks. They will perceive only that the same French-looking and French-sounding word, VEUVE, appears as the first term in both.

MHCS provided evidence that it has made VEUVE "a theme of its marketing efforts because of the history, and the widow Clicquot herself, connected with the origins of the company." "The presence of this strong distinctive term as the first word in each party’s mark further substantiates the marks' similarities."

Viewing the marks in their entireties in terms of sight, sound, meaning and commercial impression, we find that the marks are similar due to the shared initial term VEUVE. This shared dominant element outweighs the specific points of dissimilarity between the marks due to the terms that follow, i.e., CLICQUOT and OLIVIER.

And so, the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Do you think consumers would be confused? Respondent did not submit any evidence or testimony, nor did it file a brief. That rope-a-dope strategy didn't work. Would the lack of actual confusion over 8 years of coexistence have been a fertile ground for exploration?

Text Copyright John L. Welch 2024.

Despite Applicant's Bad Intent, TTAB Dismisses Oppositions to EVSFOOD for Beverages

The Board tossed out these three-pronged oppositions to registration of the mark EVSFOOD for beverages and beverage components, dismissing Opposer's claims of lack of bona fide intent, false suggestion of a connection under Section 2(a), and likelihood of confusion under Section 2(d). Opposer's proofs came up way short on all three claims. Nu Science Corporation v. Yuyao Deutrel Chemical Science and Technology Co., Ltd., d/b/a Evsfood Group, Oppositions Nos. 91225314 and 91225328 (March 11, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Lack of Bona Fide Intent: Opposer Nu Science bore the burden of proof but failed to make a prima facie case of lack of bona fide intent. "Opposer did not submit any document request(s) and response(s) to substantiate its argument that there is no documentary evidence reflecting a bona fide intent to use the mark. The prima facie case may not require much, but it requires at least that. Nor does Opposer cite any other evidence in the trial record to substantiate its Section 1(b) claim."

Likelihood of Confusion: Nu Science alleged that applicant’s EVSFOOD mark "is a clear combination of Opposer’s two (2) Trademarks. ‘EVS’ is the initials of ‘EVERETT STOREY’ and ‘FOOD’ is the suffix of ‘CELLFOOD.’ Put together, the mark creates ‘EVSFOOD.'" Both notices of opposition alleged that "there exists a likelihood of confusion based on Opposer’s use of two marks conjointly."

Nu Science argued that the public will see, understand, and pronounce applicant’s mark as "Ev’s Food" because they "(1) will see and understand 'EV' as short for 'Everett Story,' (2) know 'Everett Storey' either as the inventor of Opposer’s CELLFOOD supplement or as a trademark used by Opposer, and therefore (3) will view the mark EVSFOOD as a hybrid of EVERETT STOREY and CELLFOOD." However, Nu Science failed to provide any evidence that consumers "will undertake this multi-step perceptive process."

Comparing the opposed mark with Nu Science's marks individually, the Board found the opposed mark more dissimilar than similar to CELLFOOD and very dissimilar to EVERETT STOREY.

As to the goods, Nu Sciene's registrations covered vitamin and mineral supplements. Nu Science provided no evidence to prove that these goods are related to applicant's beverages and beverage components.

Here, the goods are not identical, which is to say, they’re different. And the lack of probative evidence in this case constrains us, as in IKEA Systems, from finding that the goods are related. We’re not super-consumers with expertise in particular markets. We must rely on parties to submit the evidence we need to decide their claims. On the evidence―or more precisely, the lack thereof―in this case, this factor weighs against a conclusion that confusion is likely.

As to channels of trade, the "spotty" evidentiary record left the Board "unable to determine which way this factor tips," and so the Board considered it to be neutral. And although the overlap in classes of consumers favored Nu Science, the import of that overlap "pales by comparison to the dissimilarities in the marks and goods."

False Suggestion of a Connection: Nu Science made applicant's intent the centerpiece of its case. The Board found that the evidence "evinces Applicant’s intent to create an association between EVSFOOD, on the one hand, and Dr. Everett Storey and CELLFOOD products, together, on the other hand."

But bad intent is not what Section 2(a) proscribes. Falsely suggesting to the consuming public a connection is the proscribed wrong. That question, like so many others in trademark law, is one of consumer perception.

The Board found no direct evidence supporting Nu Science's argument that consumers will understand that “EVS” is a reference to Everett Storey. The evidence fell "far short of supporting Opposer’s claim that '“Everett Storey' is a part of Opposer’s name or identity such that, when U.S. consumers see EVSFOOD, they will associate it with Opposer."

In sum, there was a clear lack of evidence that "(1) EVSFOOD is the same as, or a close approximation of, the name or identity previously used by Opposer and that (2) EVSFOOD would be recognized by consumers as such, in that it points uniquely and unmistakably to Opposer."

And so, the Section 2(a) claim failed.

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TTABlogger comment: Note that Judge Casagrande did not discuss applicant's bad intent in connection with the 2(d) claim. Perhaps his Trademark Reporter article explains why: "A Verdict For Your Thoughts? Why an Accused Trademark Infringer's Intent Has No Place in Likelihood of Confusion Analysis," 101 Trademark Reporter 1447 (September-October 2011).

Text Copyright John L. Welch 2024.

Stock Ticker Symbol HIG Confusable with H.I.G. for Financial Services, Says TTAB

The Board affirmed a refusal to register the mark HIG for, inter alia, "financial services," finding confusion likely with the registered mark H.I.G., in standard character and design form (below) for "investment services in the nature of venture capital and private equity financing, and investment banking services." The Board found these services to be legally identical. Focusing on the cited standard character mark, it found the marks to be confusingly similar. Is that the end of the story? In re Hartford Fire Insurance Company, Serial No. 90263124 (March 11, 2024) [not precedential] (Opinion by Judge Mark Lebow).

Applicant Hartford pointed out that its stock ticker symbol HIG has been publicly listed on the New York Stock Exchange since 1995, peacefully co-existing with the cited registrations. It argued that its use of the mark HIG as a stock symbol "is a dramatically different use than the use made of the marks in the registrations."

Specifically, it asserts, “Registrant’s use is made in connection with financial services sold to consumers and promoted through its website,” whereas “Applicant’s stock securities are only available for purchase.” Thus, “[t]he refusal and the arguments by the Examining Attorney do not take into account the dramatically different uses by Applicant and Registrant in this situation.”

The Board pointed out, however, that proof of actual confusion is not necessary to establish a likelihood of confusion. Furthermore,Hartford's argument regarding the differences in the services actually offered missed the point. "The question of likelihood of confusion must be determined based on an analysis of the services recited in Applicant’s application, rather than what evidence or attorney argument shows the services might be."

Hartford stated that "its primary intention with the application is to protect its stock ticker symbol." It explained:

Since there is currently no approved identification relating to the sale of securities on a public exchange in the Official Identification Manual, Applicant described its services with both specific and broad terms. Once the U.S. Trademark Office approves an identification for stock ticker symbols, Applicant will amend its identification to exclude the broader wording. Applicant respectfully submits that once this is done, there will be no likelihood of confusion.

The Board found this to be an acknowledgement by Hartford that "at least until such time as the USPTO adopts an identification for stock ticker symbols, that its recitation of services is currently broad enough to result in a likelihood of confusion."

And so, the Board affirmed the refusal.

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TTABlogger comment: Is Hartford ticked off?

Text Copyright John L. Welch 2024.

Finding MRS. COLORADO Use-less, TTAB Grants Petition for Cancellation

The Board granted a petition for cancellation of a registration for the mark MRS. COLORADO, finding that Respondent Abundance Productions had not used the mark in commerce in connection with "Entertainment in the nature of beauty pageants" on or before the filing date of the underlying application. The registration was therefore void ab initio. Miss United States of America LLC, DBA United States of America Pageants v.Abundance Productions, LLC, Cancellation No. 92071814 (March 8, 2024) [not precedential] (Opinion by Judge Melanye K. Johnson).

Abundance had a license from Mrs. Patricia Dampier to use the mark MRS. COLORADO for its beauty pageant, but that license was terminated in 2015. Respondent was permitted to use the mark until December 2017. The licensor allowed the registration to expire in February 2018. In March 2018, Abundance filed its Section 1(a) application to register the mark, claiming use since 2008. The subject registration issued in November 2018.

Petitioner contended that Abundance was not using the MRS. COLORADO mark in commerce as of the filing date of the underlying application because it had not yet rendered any pageant services under the mark, and that any prior use under the license inured to the benefit of the licensor, not to Abundance.

The Board observed that, under Section 45 of the Trademark Act, a service mark is in use in commerce "(1) when it is used or displayed in the sale or advertising of services; and (2) the services are rendered in commerce ...." [Emphasis supplied].

“Mere publicity about services to be rendered in the future does not lay a foundation for an application. The statute requires not only the display of the mark in the sale or advertising of services but also the rendition of those services in order to constitute use of the service mark in commerce.” Intermed Comms., Inc. v. Chaney, 197 USPQ 501, 507-08 (TTAB 1977); see also Aycock Eng., 90 USPQ2d at 1308. “Rendering services requires actual provision of services.” Couture v. Playdom, 113 USPQ2d at 2044 (citing MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 19:103 (4th ed. Supp. 2013)).

Abundance argued that, along with the application to register the MRS. COLORADO mark, it submitted a webpage specimen displaying the words "MRS. COLORADO PAGEANT" at the top and a pink rectangle superimposed with the words "BUY TICKET HERE," through which the public could purchase tickets for the MRS. COLORADO pageant.

The Board, however, concluded that Abundance did not render its entertainment services until its 2018 MRS. COLORADO Pageant actually took place, on or about April 16, 2018. The Board further found that the licensed use of the mark under the prior registration "does not qualify as rendering 'Entertainment in the nature of beauty pageants.'" 

Under the terms of the license agreement, all of the goodwill pertaining to the Prior Registration belonged to Mrs. Dampier [the licensor], and all rights resulting from the use of the Prior Registration (sic) inured to the benefit of Mrs. Dampier.

The Board therefore found that "the underlying application and resulting registration for Respondent’s Mark is void ab initio." It declined to entertain Abundance's laches defense:

“[L]aches is not available as a defense in an action to remove a registration which was clearly void ab initio.” Wandel Mach. Co. v. Altoona Fam Inc., 133 USPQ 410, 410-11 (TTAB 1962) (citation omitted); see also Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 153 n.5 (TTAB 1973).

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TTABlogger comment: Should have filed an I-T-U application?

Text Copyright John L. Welch 2024.

TTAB Dismisses AMERICAN APPAREL Cancellation Petition: Claims Should Have Been Raised as Counterclaims in Pending Opposition

On summary judgment, the Board dismissed this petition for cancellation because Grateful American's claims (genericness and lack of acquired distinctiveness) should have been raised in a pending opposition as compulsory counterclaims. Grateful American waited nearly a year after filing its answer in Gildan Activewear's opposition to registration of the mark GRATEFUL AMERICAN APPAREL before filing this petition for cancellation. Grateful American Apparel LLC v. Gildan Activewear SRL, Cancellation No. 92081329 (March 8, 2024) [not precedential].

Trademark Rule 1.114(b)(3)(i) provides that "[a] defense attacking the validity of any one or more of the registrations pleaded in the petition shall be a compulsory counterclaim if grounds for such counterclaim exist at the time when the answer is filed." Gildan asserted that Grateful American knew of the grounds as evidenced by a letter it sent to Gildan six weeks before its answer, stating that "[t]he trademark AMERICAN APPAREL is notable [sic] weak given half the mark, the term APPAREL, is generic and afforded no protection as a trademark. The other half of the mark, AMERICAN, is blatantly descriptive."

The Board noted that Gildan did not expressly plead, as an affirmative defense, that Grateful American's counterclaims were untimely compulsory counterclaims. However, Gildan did plead that "as a result of Petitioner’s own acts and/or omissions, Petitioner has waived any right to pursue its Cancellation." Grateful American did not move to strike this statement, and the Board concluded that the statement "can be construed to allege that [Grateful American] waived its claims by failing to timely assert them in the Opposition."

Furthermore, Grateful American did not object to the summary judgment motion as being directed to an unpleaded issue, but rather addressed the issue on the merits. The Board therefore deemed Gildan's pleading as amended to include a defense of untimeliness.

The Board then found no genuine dispute of material fact that the newly raised grounds of genericness and lack of acquired distinctiveness existed at the time Grateful American filed its answer in the opposition.

It is well established that a defendant that fails to timely plead a compulsory counterclaim cannot avoid the effect of its failure by thereafter asserting the counterclaim grounds in a separate petition to cancel. * * * Inasmuch as Petitioner’s claims were compulsory in the Opposition, and were not timely asserted in that proceeding, they are waived.

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TTABlogger comment: In Jive Software, Inc. v. Jive Communications, Inc., 125 USPQ2d 1175 (TTAB 2017) [precedential] [TTABlogged here], the Board ruled that the failure to plead a compulsory counterclaim in an original answer is not a per se bar to its later assertion in the same proceeding. There, however, the delay was a mere few weeks and was excusable.

Text 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 in Section 2(d) appeals is over 90%. How do you think these three came out? No hints this time. [Answers in first comment.]

In re Bath Busters, Inc., Serial No. 90850908 (February 28, 2024) [not precedential] (Opinion by Judge Christen M. English) [Section 2(d) refusal of BATH BUSTERS for "remodeling of residential and commercial bathroom[s]" in view of the registered mark TILE BUSTERS, in standard character and logo form, for dust free tile removal services.]

In re Tiffany L. Henry, Serial No. 90446044 (March 5, 2024) [not precedential] (Opinion by Judge George C. Pologeorgis). [Section 2(d) refusals of NOBODY CARES ... THEY REALLY DON'T! for "Sweatpants; Sweatshirts; Baseball caps; Bathing suits; Fleece pullovers; Gym pants; Hats; Headwear; Hooded sweatshirts; Hooded pullovers; Hooded sweat shirts; Jackets; Jeans; Jogging pants; Jogging suits; Jumpers; Long sleeve pullovers; Men's socks; Outer jackets; Pajama bottoms; Pants; Robes; Short sets; Shorts; Socks; Sweat jackets; Sweat pants; Sweat shirts; Sweat suits; Sweaters; Swim trunks; Swimsuits; T-shirts; Tank tops; Track jackets; Track pants; Track suits; Tracksuits; Undergarments; Underpants; Undershirts; Underwear; Wind resistant jackets," in view of the registered mark NOBODY CARES for Backpacks; Fanny packs; Tote bags; Gym bags, Shirts, and On-line retail store services featuring apparel and accessories.]

In re Hinsdale Bank & Trust Company, National Association, Serial No. 97374049 (March 6, 2024) [not precedential] (Opinion by Judge Melanye K. Johnson). [Section 2(d) refusal to register COMMUNITY BANK OF WILLOWBROOK for banking services [COMMUNITY BANK disclaimed], in view of the registered mark WILLOWBROOK for "financial management services, investment administration and consulting services, and investment of funds for other."]

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

Text Copyright John L. Welch 2024.

TTABlog Test: Is MOTO CLUB INTERNATIONAL Merely Descriptive of Bumper Stickers and T-Shirts?

The USPTO refused to register the proposed mark MOTO CLUB INTERNATIONAL, deeming it merely descriptive of "decals; sticker; bumper stickers" and of "beanies; headwear; pants; shirts; sweaters; sweatshirts; t-shirts; hooded sweatshirts; jackets; long-sleeved shirts; tank tops" under Section 2(e)(1) [MOTO or INTERNATIONAL disclaimed]. The examining attorney maintained that the mark "merely describes a feature and the intended user or provider of applicant’s goods," because the products are motorcycle-themed and are available on the Internet. How do you think this appeal came out? In re Moto Club International, LLC, Serial No. 90715523 (March 5, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Board began by "noting the obvious:" the mark does not directly describe the goods since they are not sold by or to members of an international motorcycle club. Moreover, applicant is not a club. However, the Board agreed that if the mark describes "a feature of the goods, the intended or expected users/purchasers of the goods, or something significant about the source of the goods, the mark may be merely descriptive."

The examining attorney offered two rationales: applicant's products are motorcycle-themed, and the goods are "international" because they are sold on the Internet without a geographical restriction to the United States. The Board, however, noted the lack of evidence of international promotion of the mark, and there was nothing about the motorcycle theme that suggested an international nature for the goods.

[W]e find the word “international” technically describes something about the goods, but there is no evidence relevant consumers are aware of this fact. Without that connection, we cannot find the word “international,” as used in this mark, is understood as descriptive by consumers.

The Board further observed that the word “international" modifies “moto club,” so relevant consumers are likely to understand the mark as a reference to an international motorcycle club. In that light, the examining attorney’s position that "international" refers to the fact that some purchasers of the goods reside outside the United States "makes little sense."

The other basis for the refusal - that the mark describes "the intended user” of the goods - was unsupported by any evidence that consumers interested in clothing, decals and stickers with a motorcycle theme, think of themselves are being part of a MOTO CLUB. "That is a step too far."

The meanings of “moto” and “club” and “international” do not come together to form a descriptive meaning of the mark as a whole. Instead, these words support different meanings in this case. When a multi-step analysis is used, that analysis must come together, it cannot continue to point in different directions. That is what happened here. It takes too much effort to tie together the disparate threads of analysis relied upon by the Examining Attorney in this case.

The Board found this to be a close case, but any doubt must be resolved in favor of the applicant. And so, the Board reversed the refusal to register.

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TTABlogger comment: After 16 affirmances of mere descriptiveness refusal, this is 2024's first reversal.

Text Copyright John L. Welch 2024.

TTABlog Test: Which of These Three Section 2(d) Oppositions Was/Were Dismissed?

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) case about 95 percent of the time just by looking at the marks and the involved goods and/or services. Here are three Section 2(d) oppositions recently decided by the TTAB. At least one of the oppositions was dismissed. How do you think these three came out? [Answers in first comment.]

Hormel Foods, LLC v. Empacadora Dilusa de Aguascalientes S.A. de C.V., Opposition No. 91275380 (March 4, 2024) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) opposition to registration of the mark shown below, for "Butter; Chicharron; Compotes; Eggs; Lard; Milk; Pork; Canned fruits and vegetables; Edible oils and fats; Meat extracts; Milk shakes; Milk beverages, milk predominating; Pork steaks; Jellies, jams, compotes; Meat, fish, poultry and game, not live; Preserved, dried and cooked fruit and vegetables; Unflavored and unsweetened gelatins," in view of the registered mark DI LUSSO for dry sausage, poultry, beef, pork, cheese , horseradish, mustard, and sauces.]

Juvia’s Holdings LLC v. Sustainable Nutrition, Inc., Opposition No. 91271554 (February 29, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin). [Section 2(d) opposition to ADJUVIA in standard character and design forms, for "Anti-aging cream; Anti-wrinkle cream; Moisturizing creams" (Class 3) and for "Nutritional supplements consisting primarily of astaxanthin and coconut oil with none of the foregoing for the treatment of diabetes" (Class 5), in view of the registered mark JUVIA'S SKIN for "Cosmetic creams for skin care; Cosmetic preparations for skin care; Moisturizing preparations for the skin; Non-medicated skin care creams and lotions; Non-medicated skin care preparations; Non-medicated balms for use on skin; Non-medicated cleansers, namely, skin cleansers; Non-medicated cleansers, namely, facial cleansers; Non-medicated exfoliating preparations for skin" [SKIN disclaimed]].

Baxter S.r.l. v. Wholesale Interiors, Inc., Opposition No. 91263387 (February 16, 2024) [not precedential] (Opinion by Judge Karen S. Kuhlke). [Section 2(d) opposition to registration of BAXTON STUDIO for furniture [STUDIO disclaimed], on the ground of likelihood of confusion with the registered mark BAXTER and Design for furniture.]

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2024.

USPTO Seeks Candidates for Deputy Chief Administrative Trademark Judge at the TTAB - March 15 Application Deadline

The USPTO is seeking applications for the position of Deputy Chief Administrative Trademark Judge at the Trademark Trial and Appeal Board. Applications are accepted until March 15, 2024. Further details may be found at the USA Jobs website, here.

Duties

As the Deputy Chief Administrative Trademark Judge you will have the opportunity to serve as a full voting member of the Trademark Trial and Appeal Board. You'll serve under the administrative direction of the Chief Administrative Trademark Judge, who reports to the Office of the Under Secretary and Director of the USPTO. As the DCATJ you will collaborate with various high level USPTO officials on varied agency initiatives, and with administrative trademark judges on a range of hearings, appeals and trial cases. You will work closely with a diverse team of judges, attorneys and Board managers on the full breadth of operations of the Board. You will also have the exciting opportunity to showcase your ability to develop and implement standard operating procedures (SOP) necessary for the internal operation of the Board.

If you are committed and motivated to make a positive impact and join an agency that drives economic growth, national prosperity and supports the development and collaboration among the diverse cultures of its employees, then this amazing next journey is just for you!

In this exciting role as the DCATJ:

• You'll work closely with the CATJ to develop and deploy the strategic and policy initiatives of the Board, as needs may be identified by the Board or as strategic initiatives may be required by the Office of the Under Secretary and Director of the USPTO, to which the Board reports;
• You'll provide leadership and guidance in executing comprehensive executive management, strategic planning, policy development, and financial functions that are essential to effective Board operations;
• You'll develop and maintain quality, timeliness, and productivity performance standards for the administrative trademark judges, attorneys and support staff;
• You'll collaborate with various stakeholders within the legal community including the Court of Appeals for the Federal Circuit, bar associations, etc.;
• You'll develop procedures for program operations and oversee assignments and completion of functions;
• You'll play a significant role in ensuring employee engagement and promoting diversity within the Board and through personnel outreach efforts;
• You'll represent the agency by actively participating in public conferences and meetings and will prepare and deliver high-level presentations to foreign dignitaries or officials regarding the Board and its operations;
• You'll lead the efforts in assigning panels of administrative trademark judges to adjudicate all trademark appeals and trademark opposition, cancellation, concurrent use and interference proceedings and periodically serve on such panels;
• You'll serve as the Acting CATJ during the absence of the CATJ and serve on a variety of USPTO enterprise-level committees;
• You'll provide expertise skills, leadership and oversight on high level performance and initiatives of the Trademark Trial and Appeal Board.

Read comments and post your comment here.

Text Copyright John L. Welch 2024.

TTAB Affirms Section 2(e)(5) Functionality Refusal of Holster Configuration

The Board affirmed a Section 2(e)(5) refusal to register, on the Supplemental Register, the product configuration shown below, for "holsters," finding the proposed mark to be de jure functional under Section 2(e)(5). Once again, the existence of a patent established the functional benefits of the design: it "enables the user to secure the holster within the waistband, and the gun within the holster, with minimal bulkiness and weight and with maximum comfort." This post will aim to hit the high points of the 44-page opinion. In re JM4 Tactical, LLC, Serial No. 90518181 (February 27, 2024) [not precedential] (Opinion by Judge Christopher C. Larkin).

According to the application, the mark consists of "a product configuration of a holster, wherein the holster comprises a strap attached to a holster body, the strap having a securement device at an end of the strap, the body having a second securement device extending from the body, the dashed lines of the body represent positioning of the strap and securement devices and are not claimed as part of the mark." Applicant JM4 Tactical described the device as a "concealed carry holster." The strap folds over the user's waistband, with the holster and the gun inside the waistband.

Under the Inwood test, a product configuration is functional under Section 2(e)(5) if (1) it is "essential to the use or purpose of the article,” or (2) it "affects the cost or quality of the article." In applying that test, the Board may consider the categories of evidence set forth in In re Morton-Norwich:

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

JM4's ’530 Patent established the functional benefits of the proposed mark, "namely, that the overall design, including the shape, length, and positioning of the strap, and the placement of the magnetic securement devices, enables the user to secure the holster within the waistband, and the gun within the holster, with minimal bulkiness and weight and with maximum comfort." A third-party patent suggested an additional benefit, "namely, the ability of the user to return the gun to the holster using the magnetic attraction of the securement devices without the need to divert attention from the user’s surroundings."

The benefits discussed in the ’530 Patent were touted on JM4’s website and reflected on third-party websites and in product reviews. The Board concluded that the first two Morton-Norwich categories of evidence show that the proposed mark “‘is in its particular [configuration] because it works better in that [configuration]," and "make it unnecessary to consider the other categories."

JM4 relied heavily on its ownership of various design patents for the ornamental designs of holsters, but they missed the mark. The Board noted that, "while evidence of a design patent may be some evidence of non-functionality under Morton-Norwich, the fact that a device is or was the subject of a design patent does not, without more, bestow on said device the aura of distinctiveness or recognition as a trademark.'"

Our law recognizes that the existence of a design patent for the very design for which trademark protection is sought “presumptively . . . indicates that the design is not de jure functional. Absent identity between the design patent and proposed mark, the presumption loses force, and the “similar” design patents lack sufficient evidentiary value to overcome the strong conclusion in this case that [applicant’s] utility patent[] underscore[s] the functionality of significant elements of the proposed mark.

The Board found that JM4's design patents covered designs that were not identical to the proposed mark. "To the extent that Applicant’s design patents show designs that are similar to Applicant’s proposed mark, they 'lack sufficient evidentiary value to overcome the strong conclusion in this case that [Applicant’s] utility patent[] underscore[s] the functionality of significant elements of the proposed mark.'"

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Another trademark applicant shot down while trying to extend protection for an out-of-patent invention by way of a potentially perpetual trademark registration.

Text Copyright John L. Welch 2024.