Precedential No. 7: TTAB Dismisses Cancellation Proceeding as Moot After Registrant Fails to File Section 8 Declaration

In another precedential procedural ruling, the Board held that, because a registration expires by law as of its sixth anniversary if a Section 8 declaration is not filed before the expiration of the six-month grace period, a petition for cancellation filed during the grace period is deemed moot and judgment cannot be entered against the respondent. Retrobrands America LLC v. Molson Coors Beverage Company USA LLC, 2024 USPQ2d 769 (TTAB 2024) [precedential].

Retrobrands petitioned to cancel a registration for the mark ZIMA for "Alcoholic flavored brewed malt beverages, except beer," on the ground of abandonment. The challenged registration issued on August 22, 2017; a Section 8 Declaration of Use was due six years later but could be filed during the subsequent six-month grace period ending February 22, 2024. The subject petition for cancellation was filed on September 21, 2023, during the grace period.

On September 23, 2023, Respondent Molson moved to dismiss the petition as moot, strangely arguing that, because it did not plan to file a Section 8 Declaration, the registration expired as a matter of law at the six-year deadline. Alternatively, it moved to suspend proceedings until the expiration of the grace period, and for dismissal as moot at that time. Retrobrands asserted that this was effectively an attempt by Molson to cancel the registration without consent under Section 7(e) of the Trademark Act, thereby avoiding judgment against it.

The Board observed that, when the six-month grace period expires for the filing of a Section 8 Declaration, the subject registration is cancelled by operation of law as of the last day of the sixth year following registration. Men’s Wearhouse, LLC v. WKND NYC LLC, 2024 USPQ2d 86, at *1 (TTAB 2024). When Retrobrands filed its petition for cancellation, it was (obviously?) not yet known if the registration would be cancelled retroactively. Molson's motion to dismiss on the ground of mootness was therefore premature and so it was denied.

However, the Board declined to consider Molson's request as a voluntary surrender of the registration, but rather saw it merely as a premature request for dismissal based on its representation that it would not file the Declaration. The Board therefore denied Retrobrands' request for entry of judgment.

The Board granted Molson's request for suspension "to the extent we consider this case suspended retroactive to the filing date of Respondent's motion."

The Board then dismissed the petition to cancel "without prejudice as moot." [Emphasis by the Board].

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TTABlogger comment: It seems to me that once the petition for cancellation was filed, Molson should have to explain why it should be able to jettison its registration without judgment being entered. See, for example, the Ruifei case [TTABlogged here], observing that a registrant may not, by deleting goods from a registration, moot a proceeding to avoid a judgment as to the deleted goods, and requiring the registrant to explain the reason for its deletions.

Text Copyright John L. Welch 2024.

Precedential No. 6: TTAB Denies Meta Platforms' Motion to Dismiss META Opposition on Timing and Standing Grounds

The Board denied Applicant Meta Platform, Inc.'s motion to dismiss this Section 2(d) opposition, rejecting its claims that the Board lacked subject matter jurisdiction (FRCP 12(b)(1)) and that Opposer MyMeta Software, Inc. failed to state a claim upon which relief can be granted (FRCP 12(b)(6). The first ground concerned the alleged untimeliness of opposer's amended notice of opposition, while the second denial hinged on the relationship of myMeta Software, Inc., a Delaware corporation, and MyMeta Software SRL ("MyMeta SRL"), its Italian counterpart. MyMeta Software, Inc. v. Meta Platforms, Inc., 2024 USPQ2d 780 (TTAB 2024) [precedential].

FRCP 12(b)(1) Motion: MyMeta Software, Inc. obtained an extension of time to oppose Meta Platforms' application to register the mark META for a host of computer-related services in Class 42. When the notice of opposition was filed, the ESTTA cover sheet named MyMeta Software, Inc. as the opposer, but the notice of opposition itself named myMeta SRL as the opposer. Based on the cover sheet, however, the Board considered MyMeta Software, Inc. as the opposer

The Board uses the information provided on an ESTTA filing form accompanying a pleading when instituting the proceeding. This includes the name of the opposer, which is identified on the ESTTA filing form directly following the statement: “Notice is hereby given that the following party opposes registration of the indicated application.”

An amended notice of opposition was filed by MyMeta Software, Inc., as a matter of course under Rule 2.107 and FRCP 15(a)(1)(B), naming MyMeta Software, Inc. as the opposer. Applicant Meta Platforms argued that because the amended notice naming a different opposer was filed outside the extended opposition period, the amendment was untimely and the Board therefore lacked jurisdiction. The Board disagreed. "Because the Board already considered MyMeta Software as the opposer in the timely filed July 14, 2023, notice of opposition, MyMeta Software’s amended pleading is not an untimely effort to bring an opposition."

And so, The Board dismissed the FRCP 12(b)(1) motion.

FRCP 12(b)(6) motion: Meta Platforms argued that MyMeta Software "does not and cannot allege sufficient facts to assert it is entited to a statutory cause of action because it solely relies on the registration rights of a third-party, myMeta SRL." MyMeta Software responded that it is a "corporate domestication" of the Italian company and is therefore the same legal entity myMeta SRL.

The Board first observed that MyMeta Software pleaded ownership of prior common law rights in the mark myMeta, and therefore sufficiently pleaded entitlement to a statutory cause of action. Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, at *4 (TTAB 2019).

The amended notice of opposition also included allegations regarding an application owned by myMeta SRL, as to which the USPTO had cited Meta Platforms' application as a potential bar to registration. The question, then was "the impact of myMeta SRL's corporate domestication in Delaware and whether the resulting entity, MyMeta Software, is or is not the same legal entity as my Meta SRL."

The Board looked to Delarawe's appliable law, concluding that "under the plain language of the statute, myMeta SRL (the non-United States entity) and MyMeta Software (the domesticated corporation) are deemed to be the same continuing entity under Delaware law." Del. Code. Ann. tit. 8 Section 388(i).

Under the Delaware statute, myMeta SRL is not a third party but rather the foreign corporation whose domestication resulted in MyMeta Software and the rights and property of myMeta SRL are vested in MyMeta Software. Del. Code Ann. tit. 8, § 388(i).

The Board concluded that MyMeta Software Inc. may rely on the refusal of the application owned by myMeta SRL "as further proof of its entitlement to bring the likelihood of confusion claim under Section 2(d)."

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TTABlogger comment: The myMeta SRL application (filed under Section 66(a)) has an earlier constructive use date than the META application because it claims priority to an earlier Jamaican application. Therefore, it is available as a ground for opposition, but judgment is contingent on issuance of a registration on that U.S. application. See Section 7(c) of the Trademark Act and Trademark Rule 2.129(d).

Text Copyright John L. Welch 2024.

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

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the involved goods/services. Here are the three such appeals recently decided by the TTAB. How do you think these three came out? No hints this time. [Answers in first comment.]

In re Melapreneur, Serial No. 90858280 (April 15, 2024) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of MELAPRENEUR for online retail clothing store services and for providing podcasts for motivational and educational purposes about entrepreneurship in the black community, in view of the registered mark MELANINPRENEURS for directory services featuring hyperlinks to the websites of Black owned businesses.]

In re RoboBurger Enterprises Inc., Serial No. 90884560 (April 18, 2024) [not precedential] (Opinion by Judge Christopher C. Larkin). [Section 2(d) refusal to register ROBO for "vending machines; industrial robots for making and assembling hamburgers and heated patty sandwiches," in view of the registered mark ROBOCAFE for vending machines.]

In re American Health Formulations, Inc., Serial No. 88911633 (April 19, 2024) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) refusal to register the mark shown immediately below, for "dietary supplements for humans," in view of the registered mark NEXGEN ADVANCED for, inter alia, dietary supplements.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2024.

TTABlog Test: Is CROKO for Chocolates and Cookies Confusable with CROCO BERRY CRUNCH for Breakfast Cereals?

The USPTO refused to register the mark CROKO for "Chocolates and Chocolate Confectionery Products, namely, snack foods being chocolate, candy; Biscuits; cookies," finding confusion likely with the registered mark CROCO BERRY CRUNCH for "breakfast cereals" [BERRY disclaimed]. Applicant appealed. How do you think the appeal came out? In re International Foodstuffs Co. LLC, Serial No. 97444092 (April 23, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Marks: The words BERRY CRUNCH in the cited mark "are likely non-distinctive elements that tell consumers something about the breakfast cereal itself, rather than about its source." Therefore, "'CROCO,' the first word of the cited mark, is clearly the dominant element." CROCO has no apparent meaning vis-a-vis cereals. "Being an arbitrary term, and used as the first element of the mark, CROCO is the key source-identifying element of the cited mark." The mark CROKO is visually similar to CROCO.

When a consumer familiar with the CROCO BERRY CRUNCH mark for breakfast cereals views, separately, cookies or chocolate candy bearing the CROKO mark, the likely mental connection will be to the CROCO mark, which is quite similar in appearance to CROKO. It is in this way that these marks are visually similar.

As to sound, there is no "correct" pronunciation of a word like CROKO that is not a recognized word in the English language. It may be pronounced the same as CROCO. There was no evidence as to meaning or commercial impression of the marks.

[W]e find the similarities, particularly when the marks are spoken, are more likely to impact consumer perception and recollection than the differences. As noted above, similarity in any means of comparison may be sufficient to find that marks are similar, and, on balance, the CROCO BERRY CRUNCH and CROKO marks are more similar than dissimilar, so the first DuPont factor weighs in favor of likelihood of confusion.

The Goods: Examining Attorney Megan Hartnett submitted evidence showing that several brand names are used with both breakfast cereals, on the one hand, and cookies, candies, or snack bars, on the other. For example, Oreo:

Other evidence showed the KETO FRIENDLY mark used with both breakfast cereal and snack bars, and the marks CADIA, BACKPACKER’S PANTRY, and HILLSIDE LANE FARM used with both breakfast cereals and cookies or snack bars.

The evidence shows that the goods are related in a way that would lead consumers to believe some of Applicant’s goods come from the same source as Registrant’s goods. The second DuPont factor, therefore, weighs in favor of a finding of likelihood of confusion.

Conclusion: The Board affirmed the refusal to register.

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TTABlogger comment: I find this one a bit hard to swallow. Do the marks really look and sound alike?

Text Copyright John L. Welch 2024.

TTAB Affirms Mere Descriptiveness Refusal of SPICED CHAI for Tobacco

The Board affirmed a refusal to register the proposed mark SPICED CHAI for "Hookah tobacco; Tobacco; Tobacco pouches," finding the mark to be merely descriptive under Section 2(e)(1) and lacking in acquired distinctiveness. Deeming the mark "highly descriptive," the Board found Applicant Fumari's Section 2(f) evidence inadequate and unpersuasive. In re Fumari, Inc., Serial No. 88437933 (April 19, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The evidence submitted by Examining Attorney Robert Guliano "overwhelmingly" showed that Fumari and the media refer "descriptively to SPICED CHAI as one of Applicant’s tobacco flavors."

This evidence, from Applicant’s own website, from third-party reviews of Applicant’s SPICED CHAI product, and from other tobacco and smoking sellers’ offerings of “Spiced Chai” and similarly-named flavors, reflects that consumers of tobacco and other smoking-products perceive “Spiced Chai” as describing a particular flavor of tobacco reminiscent of chai tea, a beverage whose ingredients include black tea, honey, spices, and milk. Indeed, we find the evidence to show that the term is highly descriptive.

The Board found support in the CAFC's decision in In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987), upholding a mere descriptiveness refusal of APPLE PIE, the scent of a potpourri product. Fumari pointed to the SNO-RAKE case, In re Shutts, 1983 WL 51780 (TTAB 1983), but the Board found that Shutts has "almost nothing in common with the evidence in the record here."

Fumari asserted that the USPTO allowed it to register WHITE GUMMI BEAR and RED GUMMI BEAR for tobacco products, without raising a descriptiveness issues. According to Fumari, those two marks are like SPICED CHAI in that they are "vaguely evocative" of a flavor, and therefore those two registrations are "evidence" that the Board should reverse the refusal here. [What flavor is "white gummi bear? - ed.]. The Board, however, pointed out once again that it must examine each case on its own record.

Not only are these files not of record, but even if they were, it is well-settled that these sorts of consistency arguments are legally irrelevant.

Turning to the issue of acquired distinctiveness, the Board observed that "[t]o determine whether a mark has acquired distinctiveness, the Board may consider a wide range of evidence, including advertising expenditures and sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies." Because SPICED CHAI is highly descriptive, Fumari's burden of proof under Section 2(f) was correspondingly high.

Fumari relied use of the mark since 2011, sales of 600,000 pounds of "SPICED CHAI tea" [what does tea have to do with it? - ed.], unquantified advertising expenditures,  third-party reviews, and various social media posts. The Board found that Fumari's evidence fell "far short" of establishing acquired distinctiveness, but most significant was "the evidence [that] shows that Applicant’s use of SPICED CHAI is far from exclusive."

The apparently common use by others in the marketplace of the term in which Applicant seeks exclusive rights not only fatally undermines Applicant’s claim but shows that granting Applicant exclusive rights would potentially inhibit competition by restricting competitors’ freedom to (continue to) use the term to describe their version of this flavor of tobacco.

The Board went on to note several glaring deficiencies in Fumari's evidence: Fumari itself uses SPICED CHAI to describe a flavor of tobacco, not as a source identifier; and its assertions concerning sales revenues and advertising efforts were not limited to the United States.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: WYHA? 

Text Copyright John L. Welch 2024.

J. Michael Keyes: "Will Bad Spaniels' New 'Disclaimer' Keep VIP Products Out Of The Doghouse?"

Here is the latest literary effort from Mike Keyes, a consumer survey expert and IP litigator at Dorsey & Whitney LLP (you may subscribe to his newsletter here). "Will Bad Spaniels' New 'Disclaimer' Keep VIP Products Out Of The Doghouse? - A Consumer Survey Provides a Cautionary Tale for Would-Be Parodists," appears in Vol. 64, No. 2 (March 2024) of IDEA The Law Review of the Franklin Pierce Center for IP at the University of New Hampshire School of Law. (Link here).

When the trial court first decided the issue of infringement in 2018, it relied heavily on a consumer survey conducted by the late Dr. Gerald Ford. (the “May 2015 Survey”). That survey showed that nearly 30% of the respondents believed there was a connection or affiliation between the famed whiskey maker and the scrappy dog toy manufacturer. When the May 2015 Survey was conducted, VIP Products had a very small disclaimer at the bottom of the back of the hang tag stating “[t]his product is not affiliated with Jack Daniel Distillery.”

Since that time, though, VIP Products has apparently “upped” its disclaiming efforts. In an attempt to further distance itself from “Old No. 7,” the reverse side of the hang tag now prominently states that this toy is a “parody,” that it has no affiliation with Jack Daniel’s, and that consumers should not be “confused” into believing there is a connection between the two companies. In fact, the reverse side of the hang tag goes so far as to provide consumers with the “correct” answers to the original survey questions from the May 2015 Survey.

Mr. Keyes has conducted his own survey to assess the effectiveness of VIP's revised disclaimer. Read his article and you'll find out his conclusions.

Read comments and post your comment here.

TTABlogger comment: Bad Spaniels make bad law, says David Perlsack.

Text Copyright John L. Welch 2024.

TTABlog Test: Are Backpacks, Wallets, and Purses Related to Cake Under Section 2(d)?

Hostess Brands, owner of the registered mark SUZY Q'S for "cake," opposed the application of Holly Sue Williams to register the mark SUZYQ for "Backpacks; Wallets” and “purses," claiming a likelihood of confusion under Section 2(d). The marks are close enough, but what about the goods? How do you think this came out? Hostess Brands, LLC v. Holly Sue Williams, Opposition No. 91272724 (April 18, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Hostess also alleged prior common law rights in the SUZY Q'S mark for clothing and tote bags, but the testimony of its witness on the issue of priority was vague and inconsistent. There was no specific testimony describing the type of clothing or merchandise. no information as to where or when these goods were sold, and no documentary evidence for any such clothing, clothing accessories or merchandise. One witness testified irrelevantly regarding use of various other Hostess brands (HOSTESS, TWINKIES, DONETTES, SNO BALLS, DING DONGS, and HO HOS) for these goods. 

The Board therefore found that Hostess "has not established prior use of SUZY Q’s for any particular clothing goods or clothing accessories or other merchandise prior to Applicant’s application filing date."

As to the strength of opposer's registered mark, two third-party registrations for non-food items were insufficient to dent the commercial strength of SUZY Q'S, and there was no evidence of use in the marketplace of SUZY or SUZY Q’S with cake. 

Opposer's witnesses testified that the SUZY Q’S mark, in use since 1961, is widely recognized as a source indicator for cakes, as is the house mark HOSTESS, and the former has been in use since 1961. The Hostess Brands’ gross profit for 2022 was $465,679,000, and the advertising and marketing expenditures for Hostess Brands was $21.3 million, $9.5 million, and $6.2 million for the years ended December 31, 2022, 2021 and 2020 respectively.

The Board, however, found the evidence inadequate to prove fame for the SUZY Q'S mark. The witnesses provided no specific sales or advertising information for the SUZY Q’s brand alone. Instead, opposer’s witnesses generally discussed sales, marketing and advertising expenditures as a whole for its other Hostess Brands marks (HOSTESS, TWINKIES, DONETTES, SNO BALLS, DING DONGS, and HO HOS).

In view of the foregoing, we find that Opposer’s mark is a conceptually strong mark that is entitled to the normal scope of protection of an inherently distinctive mark. The strength of the mark SUZY Q’S is neutral in the likelihood of confusion analysis.

Turning to the goods, the Board found that the evidence did not establish that cake and wallets, backpacks and purses are related.

[T]he record is devoid of any evidence suggesting that wallets, handbags and backpacks may emanate from these large commercial bakery companies under a house mark or product mark and that consumers are accustomed to seeing backpacks, wallets and purses branded with a commercial bakery house mark or product mark.

With regard to trade channels, opposer’s witnesses testified that its goods are offered in retail consumer and grocery stores and online grocery stores, in convenience stores, and through vending machines.  Applicant Williams sells her handbags via her website and social media accounts. The Board was not impressed: "The fact alone that both parties may offer their goods online is insufficient to find overlapping channels of trade." The Board found the DuPont factor relating to channels of trade to be "neutral." [Seems like it should favor the applicant - ed.]

Based on the lack of proof of relatedness and the neutrality of the channels of trade, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: I've had a few of these Hostess snacks. To me, they always look better than they taste.

Text Copyright John L. Welch 2024.

TTAB Sustains 2(e)(1) Opposition, Finding WOOLWAX Merely Descriptive of Lubricants

The Board sustained this opposition to registration of the proposed mark WOOLWAX for "corrosion inhibitors in the nature of a coating; rust preventatives in the nature of a coating" and for  "all purpose lubricants," on the ground of mere descriptiveness under Section 2(e)(1). Applicant Kellsport sought registration under Section 2(f), thereby conceding that the mark is not inherently distinctive. To prove acquired distinctiveness, it relied on a declaration of at least five years of continuous and substantially exclusive use. Not good enough, said the Board. Eureka Chemical Company v. Kellsport Industries Inc., Opposition No. 91274117 (April 17, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen).

The issues before the Board were two-fold: "whether Applicant’s proposed mark is so highly descriptive of the goods that Applicant is subject to a higher burden of proof to demonstrate acquired distinctiveness, and whether Applicant has met that burden."

Highly Descriptive?: Opposer Eureka Chemicals argued that wool wax, "the wax secreted by the sebaceous glands of sheep, is synonymous with lanolin and is highly descriptive of Applicant’s goods." In support, Eureka submitted third-party website excepts and online dictionary and encyclopedia definitions for woolwax and lanolin. One of the websites stated "Sheep’s wool is the source of one of the most useful natural lubricants, called woolwax or lanolin."

Applicant Kellsport's specimen of use described various applications for its WOOLWAX product; it states that "Almost anything that has a moving metal part can be lubricated and protected with Woolwax®." Its website states: "WOOLWAX® contains more raw woolwax (lanolin) than any competitive product," and "'Woolwax® is made from lanolin. Also known as wool grease, wool fat, woolwax. Lanolin comes from sheep’s wool.'"

As all this evidence shows, wool wax is at least highly descriptive. Consumers encountering the proposed mark WOOLWAX will clearly understand that, in the context of Applicant’s goods, the mark refers to coatings and lubricants made of wool wax.

Acquired Distinctiveness: The Board observed that "[w]hen proposed marks are highly descriptive, a statement of use for at least five years, or even longer, is generally insufficient to show acquired distinctiveness." The Board then looked to the Converse factors in determining whether Kellsport had cleared that high Section 2(f) hurdle.

Kellsport claimed use of the mark since 2013, but its evidence was questionable. In any case, "that length of time is not persuasive given the highly descriptive nature of WOOLWAX." Kellsport's evidence regarding advertising expenses were unaccompanied by any sample advertisements, and there was no evidence as to how often the advertisements appeared or how many consumer were exposed thereto.

In sum, there is no evidence regarding the impact or extent of the advertising or marketing efforts. Without further information as to the nature, kind, and extent of its advertising and marketing expenditures or context, Applicant’s statements are of little probative value.

Kellsport's evidence regarding its sales was vague Its sales and advertising figures, without any context in the trade, "are not so impressive as to support a finding" that WOOLWAX has acquired distinctiveness.

"Given the highly descriptive nature of Applicant’s proposed mark, Applicant is obliged to adduce a great deal more evidence to meet its burden of proof." And so, the Board sustained the opposition.

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TTABlogger comment: WYHA?  

Text Copyright John L. Welch 2024.

TTABlog Test: Are Cigarettes and Cigars Related to Alcoholic Beverages Under Section 2(d)?

Opposer Nemiroff IP opposed an application to register the mark NEMIROFF for cigars cigarettes, and various other tobacco-related products and accessories, claiming likelihood of confusion with its identical mark NEMIROFF for "alcoholic beverages, namely, brandy, vodka, liqueurs and distilled spirits featuring honey." Are the goods sufficiently related? How do you think this came out? Nemiroff Intellectual Property Establishment v. RAM Development Associates LLC, Opposition No. 91244891 (April 11, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington).

Oddly, Opposer pleaded 35 registrations, 27 of which have been cancelled. It also argued that applicant's proposed mark violates the false connection provision of Section 2(a), but the Board refused to consider that unpleaded claim. Applicant submitted no evidence or testimony and did not file a brief, leaving opposer with the burden to prove its case.

The Board focused on one of the pleaded, live registrations, as noted above. Because the involved marks are identical, the first DuPont factor "weighs heavily in favor of a likelihood of confusion."

Turning to the second DuPont factor, the similarity of the goods, opposer argued that the involved goods are related because tobacco products and alcohol are "complementary" in that they are marketed together for "simultaneous consumption." It submitted website evidencing same, as well as four third-party registrations covering both types of products. Furthermore, the evidence showed that applicant’s tobacco products include alcohol-infused cigarettes and cigarillos.

The aforementioned evidence demonstrates a complementary relationship between the parties’ goods, namely, alcoholic beverages, including vodka and spirits and tobacco products, including cigarettes and cigars. These goods are marketed and touted as goods that can be “paired” with each other, and they may be found in the same trade channels, such as liquor stores and duty-free shops.

Under the fifth DuPont factor, opposer's evidence and testimony indicated that NEMIROFF brand vodka has been sold in this country for 20 years, has been advertised and promoted in a broad range of national media, and was ranked as the third best-selling vodka in the global duty free and travel retail market sector. The Board found the amount spent on advertising and marketing (designated "confidential") was "particularly impressive."

Based on the record, we find Opposer’s NEMIROFF mark is commercially strong and should be accorded a broader scope of protection than marks without any demonstrated commercial strength. Thus, the fifth DuPont factor weighs in Opposer’s favor.

Because the marks at issue are identical, opposer's mark is commercially strong mark, and the goods are related in a complementary manner and may be offered for sale in the same trade channels, the Board found confusion likely and it sustained the opposition.

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TTABlogger comment: Are beer and pretzels complementary and related? vodka and tonic? vodka and orange juice?

Text Copyright John L. Welch 2024.

4th Circuit Upholds District Court and TTAB: Timberland Boot Design Lacks Acquired Distinctiveness

The U.S. Court of Appeals for the Fourth Circuit affirmed-in-part the decision of the U.S. District Court for the Eastern District of Virginia, concluding that the lower court did not err in finding that Timberland’s product configuration mark (shown immediately below) lacked acquired distinctiveness and was therefore unregistrable. The district court had also found the configuration to be de jure functional. [TTABlogged here], but the appellate court declined to reach the functionality issue. TBL Licensing v. Vidal, Appeal No. 23-1150 (4th Cir. April 15, 2024).

click on image for larger picture

Timberland's proposed mark is directed to eight specific features of its boot, including a "bulbous toe box," a "tube-shaped ankle collar," a "two-toned outsole," and an hourglass-shaped rear heel panel.

After taking discovery, the parties agreed to allow the district court to "resolve any factual disputes without the need for a trial," and both parties moved for summary judgment.

Citing Wal-Mart, the court observed that trademark law does not protect "product designs that lack distinctive meaning as a source identifier." That same principle applies to trademark registration.

On distinctiveness, the issue we face is not whether the public recognizes the entire product as Timberland’s perhaps iconic boot; rather, we must decide whether the district court reversibly erred in concluding that the subset of design features that TBL selectively sought to register lacks distinctiveness in the public’s view.

The Court observed that "[a] party seeking to establish secondary meaning in a product design bears a 'formidable burden of proof.'" The Fourth Circuit assesses secondary meaning through a number of factors: (1) advertising expenditures; (2) consumer studies linking the mark to a source; (3) record of sales success; (4) unsolicited media coverage of the product; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark’s use.

Timberland did not challenge the district court's rejection of its survey evidence. Timberland had used grayscale photographs of the boots, rather than the drawing from the trademark application, "improperly suggesting that the boot was a Timberland." Furthermore, the survey questions "nudged" the recipients to name only a single company associated with the boot.

The lower court found that Timberland's advertising did not call attention to the features that were the subject of its trademark application, but rather depicted the entire boot. Likewise, unsolicited media coverage included features that did not appear in the trademark application (for example, the tree logo burned into the boot). Timberland's impressive sales figures were not given much weight because there was no evidence as to why consumers bought the boot - i.e. no connection with the particular features of the proposed mark. And there was no evidence that competitors sell similar looking boots to trick consumers regarding the source of their products.

Moreover, Timberland's claim of acquired distinctiveness was undercut by its previous statements that only the wheat-yellow color of the boot identified that the boots came from Timberland.

The record was "replete with pictures of boots marketed and sold in the United States that appear 'substantially similar' to the design TBL sought to register, which suffices to prevent TBL from proving it exclusively used that design." The district court made no error in finding that Timberland "came up short in showing that its use of the design was substantially exclusive."

In conclusion, the district court did not clearly err in finding that TBL failed to carry its burden of proving that the boot design it sought to register has acquired a distinctive meaning. For that reason alone, TBL could not register the design described in its application, regardless of whether or not that design, as a whole, is functional. Accordingly, without deciding the functionality issue, the district court’s judgment is AFFIRMED.

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TTABlogger comment: I refuse to say that Timberland got the boot.

Text Copyright John L. Welch 2024.

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

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the involved goods/services. Here are the three such appeals recently decided by the TTAB. How do you think these three came out? No hints this time. [Answers in first comment.]

In re Suarez Industries, Inc., Serial No. 97602779 (April 10, 2024) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of EDENPURE for household cleaners in view of the registered mark EDEN'S PURE for body care products.]

In re Oracle's Apothecary, LLC, Serial No. 90399653 (April 11, 2024) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal to register ORACLE’S APOTHECARY for online retail store services featuring, inter alia, smudge sticks [APOTHECARY disclaimed] in view of the registered mark ORACLE HEALING & Design for Online retail store services featuring, inter alia, healing crystals [HEALING disclaimed].]

In re Deidra O. Babers and Leon Babers, Jr., Serial No. 90775501 (April 12, 2024) [not precedential] (Opinion by Judge Melanye K. Johnson). [Section 2(d) refusal to register the mark KINGDOM KUTS & Design for "Barber shop services; Barber services; Barbering services" [KUTS disclaimed] in view of the registered mark THE KINGDOM BARBERSHOP for “Barbershops; Hair cutting; Hair cutting services; Hair salon services, namely, hair cutting, styling, coloring, and hair extension services" [BARBERSHOP disclaimed].]

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

Text Copyright John L. Welch 2024.

Precedential No. 5: TTAB Finds SAGEFORTH Confusable With SAGE CENTRAL for Medical Information Services, Dismisses Section 18 Counterclaim Without Prejudice

The Board sustained this Section 2(d) opposition to registration of the mark SAGEFORTH for "providing information in the field of psychological counseling, assessments, diagnosis, and treatment," in view of the registered mark SAGE CENTRAL for "providing health and medical information about postpartum depression and treatment." The only somewhat interesting part of the decision concerned the Board's dismissal (without prejudice) of applicant's counterclaim to restrict four additional pleaded registrations that the Board did not include in its Section 2(d) analysis. Sage Therapeutics, Inc. v. SageForth Psychological Services, LLC,, 2024 USPQ2d 689 (TTAB 2024) [precedential] (Opinion by Judge Mark A. Thurmon).

Likelihood of Confusion: The Board focused on opposer's mark SAGE CENTRAL, mechanically finding applicant's mark SAGEFORTH to be similar in appearance, sound, meaning, and commercial impression. "The common 'sage' element of the marks anchors them in a way to the same theme and creates a risk that consumers will mistakenly assume connections between the services provided under the marks."

As to the services, applicant's broad identification, with no limitations on the type of mental health issues covered, "include[s] providing information relating to any type of mental health condition that falls within the scope of psychological care." The involved services are therefore legally identical, and so the overlapping services are presumed to be offered through the same trade channels to the same classes of consumers.

Evidence of third-party registration and use of the word "sage" in connection with the provision of information regarding mental health led the Board to find that "'sage' is somewhat conceptually weak as a source-identifier within the mental health field." The Board concluded that SAGE CENTRAL "is less conceptually strong than an arbitrary mark. but suggestive marks are inherently distinctive and entitled to protection."

When we consider all the relevant DuPont factors, and assign appropriate weights to the factors, Opposer has proven its Section 2(d) claim by a preponderance of the evidence.

Counterclaim for Restriction: Applicant's counterclaim targeted four registrations for the mark SAGE THEREAPEUTICS in various forms, all for a "House mark for pharmaceutical preparations." Applicant sought to restrict those registrations to "a house mark for pharmaceutical preparations that treat post-partum depression."

In order to prevail on its Section 18 counterclaim for restriction, applicant would have to prove two elements: (1) the proposed amendment avoids a likelihood of confusion finding; and (2) the proposed amendment is supported by the evidence. Wellcome Found. Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 (TTAB 1998) (citing Eurostar v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 (TTAB 1994)); TBMP § 309.03(d).

In Eurostar, the Board held that "in a case involving likelihood of confusion, we should not exercise our authority under Section 18 to permit an action to restrict an application or registration where such a restriction is divorced from the question of likelihood of confusion.” Eurostar, 34 USPQ2d at 1270. Here, the Board concluded that the counterclaim "cannot avoid the likelihood of confusion finding we made to sustain the opposition, and we therefore see no purpose in addressing it now."

The Board deemed the counterclaim to be moot, since the four targeted registrations were not included in the Section 2(d) analysis. Dismissing the Section 18 counterclaim but without prejudice, the reasoned:

[I]t remains possible that Opposer here might assert the same four registrations in an infringement proceeding challenging Applicant’s use of its mark. In that scenario, we see no reason why Applicant should not retain the right to bring a counterclaim against any of the registrations asserted against it, which could include the four house mark registrations it challenged through its counterclaim in this proceeding.

The Board considered its ruling to be a "modest extension" of its Section 18 precedent:

We thus hold that a Section 18 counterclaim should be denied without prejudice if the Board sustains a Section 2(d) opposition based on registrations that are not challenged by the counterclaim. This modest extension of the Eurostar holdings is consistent with the policies and concerns behind that decision. Section 18 should not be used to force the Board into conducting likelihood of confusion analyses that cannot have a real impact on the registrability of a mark.

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TTABlogger comment: Do you agree that the marks look alike? sound alike? have the same meaning? BTW, if the counterclaim is moot, is the Section 18 discussion mere dictum?

Text Copyright John L. Welch 2024.

CAFC Partially Remands "HERE COMES THE JUDGE" Appeal to TTAB for Production of AEO Materials

Well, here's a bit of "inside baseball." You may recall that, about a year ago, Michael P. Chisena was on the losing end of three oppositions brought by the Major League Baseball Players Association (MBPLA) and New York Yankee outfielder Aaron Judge. [TTABlogged here]. Chisena, now appearing pro se, appealed to the CAFC. He then filed a motion for access to Attorneys-Eyes-Only material that he was not allowed to see when he was represented by counsel before the Board. The court granted a limited remand so that the Board may consider the issue but limited the potential production to materials cited in the trial briefs at the TTAB and/or in the TTAB's decision. Michael P. Chisena v. Major League Baseball Players Association, Aaron Judge, Appeal No. 2023-2073 (Fed. Cir., Nov. 8, 2023).

 

In its remand order, the CAFC stated: "the court finds it appropriate to remand to allow the Board to consider whether the protective order should be modified to allow Mr. Chisena access to appellees’ AEO-designated material referenced in either the trial briefs or the Board’s final decision to ensure he has a fair opportunity to prosecute his case on appeal."

On April 10, 2024, the Board issued an order [here] requiring the parties to "meet and confer in good faith to (i) identify the AEO-designated materials to which the parties’ trial briefs or the Board’s final decision referred, and (ii) determine which of those AEO-designated materials, if any, can be redesignated as 'CONFIDENTIAL' by agreement of the parties."

"Prior to their meeting, the parties must review Section 412.01(a) of the TBMP and authorities discussed therein, regarding the proper designation of confidential matter. The parties are reminded that the Board’s standard protective order provides for two tiers of protected information:" CONFIDENTIAL (shielded from public access) and CONFIDENTIAL - ATTORNEYS EYES ONLY (shielded from public access, restricted from any access by the parties, and available for review by outside counsel for the parties and, subject to the provisions of paragraphs 4 and 5 (of the Board's Standard Protective Order), by independent experts or consultants for the parties).

Over the seventy days following the meet-and-confer, the parties must report seriatim to the Board with regard to their agreements and disagreements regarding what should be produced. Chisena may also challenge the AEO designations made by the opposers. The Board suggested that Chisena may want to enlist a lawyer to help him in this process.

Read comments and post your comment here.

TTABlogger comment: Suppose Chisena had not been represented by counsel before the TTAB. Would the Board have required the opposers to similarity produce AEO materials that had not been provided to Chisena?

Text Copyright John L. Welch 2024.

"MEET THE BLOGGERS" Postponed Until 2025

Marty Schwimmer and yours truly, the TTABlogger, have decided to postpone our next MEET THE BLOGGERS get-together until next year. For some reason, I think it will be in Philadelphia. Does that ring a bell? In any event, we hope to see y'all in Atlanta next month.

MEET THE BLOGGERS - San Diego 2005(Click on photo for larger picture)

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2024.

S.D. Ohio District Court, Despite Default, Stays Infringement Action in Favor of Pending TTAB Proceeding

The U.S. District Court for the Southern District of Ohio stayed this trademark infringement action even though Defendant Goatlift had defaulted by not filing an answer to the complaint. The court had serious doubts that Goatlift's mark posed a likelihood of confusion, and therefore whether Plaintiff 1661 was entitled to judgment. Instead of deciding that issue, the court chose to stay the lawsuit in favor of an opposition pending between the parties (Opposition No.91264548). 1661, Inc. d/b/a GOAT v. Goatlift, LLC, Case No. 2:24-cv-78 (S.D. Ohio, March 27, 2024).

The court noted that it has discretion to stay an action pending the resolution of an administrative proceeding. In making that ruling, it should consider if any prejudice would result from the stay, whether it would simplify the issues, and whether a stay is convenient at the particular stage of the litigation.

The court first found that a stay would not harm Plaintiff 1661:

Unlike here, the TTAB docket demonstrates that both parties have been actively involved in the opposition proceedings, with briefing on each application to be completed within approximately one month. Yet, Plaintiff waited until January of this year - over three years - to file its civil suit in this Court. Given that Plaintiff proceeded before the TTAB for three years before filing suit, Plaintiff will not be prejudiced by waiting for a conclusion of those proceedings.

Second, the stay will simplify the issues because issue preclusion may apply in the civil action pursuant to B&B Hardware. If the Board finds confusion likely, and if that decision is not appealed or is affirmed on appeal, Plaintiff 1661 will be entitled to judgment in this civil action. If a Board finding that confusion is unlikely is upheld, 1661 will not be entitled to judgment. "Either way, a final TTAB decision will be binding on this Court."

Third, a stay is convenient at this stage of the litigation. Since plaintiff's success on the merits is not "guaranteed," the court would need to perform a full likelihood of confusion analysis (a test Plaintiff did not even cite in its motion for default judgment).

Thus, although the civil action is at the default judgment stage, this is one of the rare instances where it is more convenient to stay the litigation in favor of the administrative proceeding.

All three factors favored a stay, and so the court directed the clerk of the court to stay the case.

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TTABlogger comment: If Defendant Goatlift is actively contesting the opposition proceeding, why did it default in the civil action?

Text Copyright John L. Welch 2024.

Divided 9th Circuit Says District Court Has Power to Adjudicate TM Applications

Section 1119 of the Trademark Act gives a federal district court the power to "determine the right to registration, order cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action." Does it give a court power to invalidate pending trademark applications? A divided panel of the U.S. Court of Appeals said yes in BBK Tobacco & Foods LLC d/b/a HGI v. Central Coast Agriculture, Inc., Appeals Nos. 22-16190 and 16281 (9th Cir. April 2, 2024).

BBK, a seller of smoking-related products under the mark RAW, alleged that Central Coast infringed the RAW trademark by selling cannabis products under the mark RAW GARDEN. The district court granted BBK's summary judgment motion on its infringement claim, as well as on its counterclaim to invalidate four of Central Coast's pending trademark applications (on the ground of lack of bona fide intent).

The Ninth Circuit panel affirmed the invalidation of the four Central Coast pending applications, ruling that when an action involves infringement of a registered trademark, a district court also has jurisdiction to consider challenges to the trademark applications of a party to the action. The dissenting judge opined that federal courts lack authority to cancel pending applications.

The panel majority concluded that the district court's power to "determine the right to registration" and to "rectify the register" includes the power to decide disputes over trademark applications. The Trademark Act describes an application as a request for registration, and therefore a challenge to an application "necessarily affects the applicant's right to a registration."

The plain language of Section 1119 thus grants a district court jurisdiction to consider challenges to the trademark applications of a party to the action if the action involves a registered trademark.

Permitting the district court to adjudicate trademark applications when a registration is involved "advances the interest in resolving all registration disputes in a single action." Section 1119 does not require a district court to address such claims when "the interest in efficiency or other considerations counsel against adjudicating a right to registration."

The dissenting judge contended that the Trademark Act's text, structure, and context confirm that district courts are not allowed "to interfere with the PTO's approval process and to prematurely cancel pending trademark registration applications. (emphasis in original).

The judge pointed out that "[a]s a historical matter, courts have seemingly always deferred to patent and trademark tribunals to review trademark applications in the first instance." Congress has created specific procedure and protections within the USPTO to adjudicate trademark applications. That system should not be interfered with lightly.

The phrase "determine the right to registration" in Section 1119 does not authorize cancelling applications. It refers to the court's authority to determine "the ownership, scope, priority, and use of trademarks, which may entitle a party to registration of the mark." Section 1119 gives a court the power to decide "who has rights to a mark."

The term "otherwise" in the phrase "otherwise rectify the register," is a "big deal." The canon noscitur a sociis (a word is known by the company it keeps) instructs that all terms in Section 1119 be read similarly. Each of the other powers in Section 1119 refer to control over completed registrations. So should "right to registration" be read.

And so, the dissenting judge would not reach the issue of cancellation of Central Coast's four pending applications.

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TTABlogger comment: The majority does not cite any court precedent for its position. There does not seem to be any other court of appeals decision on point. What do you think? Some lower courts have suggested that a district court has authority over applications for marks that are sufficiently related to the marks at issue in the infringement lawsuit.

Text Copyright John L. Welch 2024.

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

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the involved goods/services. Here are the three such appeals recently decided by the TTAB. How do you think these three came out? No hints this time. [Answers in first comment.]

In re Pace 49, Inc., Serial No. 90873297 (April 4, 2024) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal of PACE KLEENGROW for “Algicides, fungicides, bactericides, disinfectants, and virucides for greenhouse structures and equipment and public areas surfaces; Pesticide for ornamental crops in greenhouses and in greenhouse recirculated irrigation systems,” in view of the registered mark CLEANGROW for “Water treatment chemicals for use in greenhouse and hydroponic systems; chemical products for preventing scale; nutrients for hydroponic and soil medias; fertilizers, namely, hydroponic fertilizers, fertilizers for use in greenhouse and hydroponic systems, and multi-phase liquid-based fertilizers."]

In re Cuts Clothing, Inc., Serial No. 90880357 (April 4, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal to register VERSAKNIT for "textile fabrics for the manufacture of clothing" in view of the registered marks VERSAFLEX for “Non-woven textile fabrics” and VERSATECH for "Woven fabric for use in the manufacture of apparel and other related uses.”]

In re Premium Economy Concepts LLC, Serial No. 90014041 (April 5, 2024) [not precedential] (Opinion by Judge Christopher C. Larkin). [Section 2(d) refusal to register DRT MOTORSPORTS for "bolt-on styling parts including bumpers, fenders, doors, grills, tire carriers, and hood scoops for off-road recreational vehicles" [MOTORSPORTS disclaimed], in view of the registered mark DRT STYLE for "automotive accessories, namely, fender flares."]

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

Text Copyright John L. Welch 2024.

TTAB Orders Cancellation of TEEN EARTH Registration Due to Nonuse With Intent Not to Resume Use

Speaking of proving nonuse/abandonment, here's an instructive opinion right on point. The Board granted a petition for cancellation of a registration for the mark TEEN EARTH for "entertainment in the nature of beauty pageants" on the ground of abandonment. Petitioner Carousel, owner of the registered mark MISS EARTH for identical services, carried its burden to prove nonuse of the TEEN EARTH mark for a period of more than three years with an intent not to resume use. Carousel Productions, Inc. v. Michael R. Stafford, Cancellation No. 92076712 (April 4, 2024 [not precedential] (Opinion by Judge Michael B. Adlin).

The parties filed more than 100 pages of objections, responses to objections, and replies to responses, with regard to the trial testimony and evidence. The Board observed that "[w]hile the parties’ objections may provide a great example of overkill to those searching for one, they are otherwise unhelpful." Judge Adlin pointed out that:

Fortunately, there is no need for us to rule on the parties’ many repetitive, but not outcome determinative, evidentiary objections. We are able to, inter alia: identify hearsay and apply its exceptions; determine whether witnesses have provided a “proper foundation” or sufficiently authenticated documents; assess relevance; and, more generally, apply the Federal Rules of Evidence and Trademark Rules.

Petitioner Carousel is a Philippines corporation that operates the international MISS EARTH beauty pageant. Respondent Stafford is the assignee of the subject registration, which was obtained by former U.S. franchisees of Carousel.

The Board acknowledged the difficulty a party has in trying to prove a negative:

[W]e should point out that by their nature, "nonuse claims such as Petitioner’s in this case are typically difficult or impossible to prove by direct evidence. Indeed, in a country of hundreds of millions of people and substantial, constantly churning commerce, which comprises a large portion of North America, obtaining negative evidence from, for example, each potential pageant contestant, audience member or other potential witness that could encounter the pageant services in question would not be feasible. If doing so were required, it would be essentially impossible to ever prove nonuse abandonment.

Consequently, a prima facie case of nonuse may be established inferentially based on proven facts.

Petitioner Carousel searched for but could not find any evidence of use of TEEN EARTH by the original owners of the registration or by Respondent Stafford during the three years prior to the filing of the petition for petition for cancellation (on March 15, 2021). Those owners stated that in 2018 they decided to no longer “do the TEEN EARTH pageants” and to turn them over to Stafford. The Board saw this as "about as unequivocal a statement of discontinuance of use of a mark with an intention not to resume use as there could be."

Thus, the original owners "discontinued use of the mark with an intent not to resume use shortly after filing their TEEN EARTH application that issued as the involved Registration." As Carousel pointed out "there is no other reasonable explanation as to why he would file to register TEEN EARTH [in late 2017] except to try to reserve a right to the mark to which he was not entitled and despite having no intent to resume use of the mark himself."

The burden then shifted to Stafford to rebut Carousel's prima facie case. He submitted some evidence of use of the mark TEEN EARTH in 2019 but then disavowed that evidence in his trial brief. Stafford's purported use of the mark in 2021 did not cure the abandonment that had already occurred.

And so, the Board granted the petition for cancellation:

When we consider the record in its entirety, we find that it "is consistent with a subjective desire to reserve a right in the [TEEN EARTH] mark." Exec. Coach Builders, 123 USPQ2d at 1192. That is not sufficient to overcome Petitioner’s prima facie showing of abandonment. In fact, when Respondent acquired the mark and Registration by assignment in 2021, the mark had already been abandoned, and thus the transaction was nothing more than a “naked” assignment without accompanying goodwill. Auburn Farms, 51 USPQ2d at 1441.14

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TTABlogger comment: Note that petitioner also took discovery in order to ferret out the facts.

Text Copyright John L. Welch 2024.

Three Recent TTAB Inter Partes Decisions of Interest

Here are three recent TTAB decisions that you may find of interest. Some of you may remember a rock-and-roll group called "The Young Rascals," later called "The Rascals" once they got older. Three of the original members are still involved in a dispute over use of the name. As part of a long running battle over the mark DERMAPEN, the Board deemed that mark abandoned because the respondent's parent was the user of the mark but the registration was owned by a subsidiary. And the third case demonstrates that discovery is very helpful, if not mandatory, in proving nonuse.

Dino Danelli and Edward Brigati v. Beata Music LLC, Opposition No. 91249965 (March 29, 2024) [not precedential]. [In a 55-page opinion, on cross-motions for summary judgment, the Board sustained this opposition to registration of the mark THE RASCALS for clothing items and entertainment services, upholding Opposer Edward Brigati's claim of contractual estoppel and rejecting Applicant Beata Music's affirmative defense of issue preclusion based on a SDNY litigation. Opposers Danelli and Brigati were members of the original group, along with Felix Cavaliere and Gene Cornish, members of the applicant.]

DP Derm, LLC v. Derma Pen IP Holdings LLC, Cancellation No. 92073045 (April 3, 2024) [not precedential] (Opinion by Judge Jyll S. Taylor). [In a 50-page opinion, the Board gwasanted a petition for cancellation of a registration for the mark DERMAPEN for "skin treatment devices using multiple needles in a vibrating method for performing skin treatment procedures." Distinguishing the Wella precedents, the Board followed its Noble House decision [TTABlogged here] by ruling that because the subject mark was used by respondent's parent company, not by respondent, the DERMAPEN mark was abandoned in light of three years of nonuse with no intent to resume use.]

MEC Addheat Co. Ltd. v. Baiduren (Dongguan) E-Commerce Co., Ltd., Cancellation No. 92079084 (March 29, 2024) [not precedential] (Opinion by Judge Thomas V. Shaw). [The Board granted this petition for cancellation of a registration for the mark ADDHEAT for "Boots; Gloves; Hats; Hoodies; Insoles; Jackets; Overalls; Pants; Shoes; Sweatshirts; Thermal underwear; Tops as clothing; Undershirts; Vests" on the ground of nonuse. Based on petitioner's brief and notice of reliance, the Board concluded that the issue of nonuse was tried by implied consent. Because respondent failed to respond to petitioner's requests for admissions they were deemed admitted, thereby establishing that the mark was not in use for the identified goods at the time the underlying application was filed. And so, the registration was deemed void ab initio.]

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TTABlogger comment: Thoughts?

Text Copyright John L. Welch 2024.

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

Here are three Section 2(d) appeals recently decided by the TTAB. So far this year, the affirmance rate in Section 2(d) appeals is near 95%! How do you think these three came out? No hints this time. [Answers in first comment.]

In re Biobu SARL, Serial No. 90730546 (March 26, 2024) [not precedential] (Opinion by Judge Cindy B. Greenbaum). [Section 2(d) refusal of EKOBO for "Dishes, plates and bowls; cups; serving dishes and serving trays; and serving spoons and serving tongs; bathroom accessories, namely, soap boxes, soap dishes, tooth brush holders, bath sponges, soap dispensers, bathroom trays," in view of the registered mark ECOBOO for “Bath brushes; Bottle cleaning brushes; Cleaning cloth; Cleaning cloths; Cloths for cleaning; Dish cloths; Loofahs for household purposes; Sponges for household purposes; Abrasive sponges for scrubbing the skin; Bath products, namely, body sponges; Bath products, namely, loofah sponges; Cleaning sponges; Fabric clean room wipes; Facial cleansing sponges; Kitchen sponges; Massage sponges; Scouring sponges."]

In re LeNid USA Inc., Serial No. 90747917 (March 28, 2024) [not precedential] (Opinion by Judge Angela Lykos) [Section 2(d) refusal of CRÈMILY for “Frozen-yogurt” in view of the registered mark CREMILLY for “bakery products; chocolate glaze, chocolate ganache."]

In re Iowa Venture Capital Co-Investment Fund, LLC, Serial No. 97558604 (April 1, 2024) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal to register INNOVENTURE IOWA for “Venture capital financing and advisory services in the fields of bioscience, advanced manufacturing and information technology," in view of the registered marks TGH INNOVENTURES and TAMPA GENERAL HOSPITAL INNOVENTURES, for "Financial services, namely, providing venture capital, development capital, and investment funding in the field of healthcare."]

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

Text Copyright John L. Welch 2024.

Summary Judgment Motion Backfires: C.D. Cal. Dismisses Kate Spade Appeal of TTAB Opposition Defeat

Kate Spade moved for summary judgment in its Section 1071 civil action for review of the Board's decision dismissing its opposition to registration of the mark WOLV & Design (shown below left) for watches. The Board found the mark to be too dissimilar to the KATE SPADE word mark and the "spade logo" mark to support Kate Spade's Section 2(d) likelihood-of-confusion and Section 43(c) dilution-by-blurring claims. [TTABlogged here]. The U.S. District Court for the Central District of California not only denied Kate Spade's motion for summary judgment but affirmed the Board's decision. Kate Spade LLC. v. WOLV INC., Civil Action No. CV 22-4392 FMO (SSCx) (C.D. Cal. March 25, 2024).

Kate Spade sought review of only its Section 2(d) claim, alleging likelihood of confusion with its marks for, inter alia, jewelry and watches. The court focused on the two marks shown above right. Defendant WOLV INC did not contest the allegations that the goods are identical and travel in the same trade channels.

Kate Spade asserted that its marks are famous, but the court found its evidence of fame with respect to watches to be inadequate.

[A]lthough evidence of a mark’s general fame for unrelated product categories may be relevant, the weight of such evidence is greater where plaintiff establishes some nexus between the products for which a mark is famous and the product types at issue. Here, plaintiff makes no such argument . . . and thus the court gives little weight to its general evidence of fame.

The court then concluded that Kate Spade's marks are "weakly famous with respect to the product type."

Turning to a comparison of the marks, the court observed that when "marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines." "Also, because the Spade Marks are arbitrary and weakly famous, the degree of similarity needed for a likelihood of confusion finding is further reduced."

Contrary to Kate Spade's contention, the court found the word WOLV to be the dominant element in defendant's mark: "in light of the fallibility of memory ... the average consumer would recall the word WOLV and not the stylized design element." It concluded that "the dissimilarity of the Wolv Mark's word element greatly outweighs any structural similarity."

There was no dispute that the involved marks differ as to sound. Moreover, there is "little similarity of connotation."

The court was "persuaded that the marks are so dissimilar that no 'persons who encounter the marks would be likely to assume a connection between the parties.'"

And so, the court denied Kate Spade's motion for summary judgment. Furthermore, "[t]he TTAB’s findings that the subject marks are so dissimilar in their entireties that there is no likelihood of confusion are affirmed. Plaintiff’s § 2(d) likelihood of confusion claim is hereby dismissed."

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

Text Copyright John L. Welch 2024.