TTABlog Test: Is UGLY DOG SALOON for Restaurant and Bar Services Confusable with UGLY DOG for Distilled Spirits?

The USPTO refused to register the mark UGLY DOG SALOON for "Bar and restaurant services; catering services" [SALOON disclaimed], finding confusion likely with the registered mark UGLY DOG for "alcoholic beverages, namely, distilled spirits; alcoholic cocktail mixes." Applicant argued that "it is very uncommon for a restaurant to offer distilled spirits under a common mark." How do you think this appeal came out? In re Saloon Promotions, Inc., Serial No. 90849904 (August 28, 2024) [not precedential] (Opinion by Judge Melanye K. Johnson).

The Board noted that the record "is devoid of any uses of, or registrations containing, 'ugly dog' for 'alcoholic beverages.'" It therefore found the cited mark to be arbitrary and inherently distinctive. "Arbitrary marks are inherently or conceptually strong," and so the cited mark is entitled to a "broad scope of protection."

Turning to the goods and services, applicant asserted that the Office is required (and failed) to show "'something more,' evidence-wise, than just marks that are used for both 'bar and restaurant services' and alcoholic beverages." See In re Coors Brewing Co., 343 F.3d 1340, 1345 (Fed. Cir. 2003) (quoting Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 1236 (CCPA 1982)).

The Board observed that "[t]here is no per se rule that certain goods are related, such as restaurant services and food and beverages." However, the Board has found the "something more" requirement to be met when, for example, an applicant’s mark clearly demonstrates its restaurant specializes in the registrant’s type of goods, or when the cited mark is particularly strong.

In addition to the inherent strength of Registrant’s UGLY DOG marks, to satisfy the “something more” requirement, the Examining Attorney submitted 20 valid and subsisting registrations to demonstrate that the same entity has registered a single mark for catering, bar, or restaurant services, as well as alcoholic beverages, distilled spirits, or alcoholic cocktail mixes.

The Examining Attorney also submitted printed pages from 28 third-party Internet websites showing that the same entity offers “bar and restaurant services” or catering services under a mark, and manufactures, produces, or offers for sale distilled spirits under that same mark.

Applicant’s principal argument is that, considering the holding of In re Coors, the facts and evidence here require us to find "it is very uncommon for a restaurant to offer distilled spirits under a common mark." The Board found applicant's evidence non probative and/or unpersuasive.

After consideration of the admissible evidence of record, we find . . . that collectively, the evidence of record here meets the “something more” requirement. In addition to the cited UGLY DOG registrations being arbitrary and inherently strong, as discussed above, the Examining Attorney submitted 20 third-party use-based registrations showing Registrant’s goods and Applicant’s services registered under the same mark. The Examining Attorney also submitted printed pages from 28 distinct third-party Internet websites showing the same entity offering Registrant’s goods and Applicant’s services at the websites, supporting our finding that the goods and services are complementary.

The Board also noted that applicant’s mark contains the word "saloon" - defined as "a place where alcoholic drinks are sold and drunk; a tavern." And Applicant’s specimen of record lists "Adult Beverages: Ask about cocktails + frozen drinks to-go" as a menu item.

And so, finding the marks confusingly similar, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: The Ugly Dog Saloon is located in New Orleans. We'll have to check it out during the INTA mid-year meeting. PS: I think in these restaurant/alcoholic beverage cases, your only hope of winning is to weaken the cited mark through third-party evidence and then distinguish the two marks.

Text Copyright John L. Welch 2024.

TTAB Posts September 2024 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled eight (8) oral hearings for the month of September 2024. As indicated below, five of the hearings will be held virtually; the remaining three will be held in-person at the USPTO's Madison East Building in Alexandria, Virginia. Briefs and other papers for each case may be found at TTABVUE via the links provided.

September 5, 2024 - 1 PM [Virtual]: In re Metabeauty, Inc., Serial No. 97492557 [Section 2(d) refusal of the mark shown below, for non-medicated skin care preparations and related retail store services, in view of the registered mark TWELVE COSMETICS for cosmetics [COSMETICS disclaimed].]

September 10, 2024 - 1PM [Virtual]: Lucasfilm Ltd. LLC and Lucasfilm Entertainment Company Ltd. LLC v. Aubray McPherson, Opposition No. 91273412 [ Opposition to registration of the mark shown below, for "Professional business consulting" on the grounds of likelihood of confusion with, and likely dilution of, various registered JEDI marks for a variety of goods and services.]

September 11, 2024 - 10 AM [Virtual]: Morris Bart, III and Morris Bart, LLC v. Laborde Earles Law Firm, LLC, Serial No. 97325462 [Opposition to registration of ON MY SIDE for legal services, in view of opposer's registered mark I’M ON YOUR SIDE for legal services.]

September 17, 2024 - 10 AM [In-Person]: Revolution Jewelry Works, Inc. v. Stonebrook Jewelry, LLC DBA Revolution Jewelry, Oppositions Nos. 91248007 and 91248009 [Oppositions to REVOLUTION JEWELRY, in standard character form, and REVOLUTION JEWELRY DESIGNS in the design form shown below, for jewelry, in view of the allegedly previously used mark REVOLUTION JEWELRY WORKS for jewelry.]

September 19, 2024 - 11 AM [Virtual]: U.S. Department of Homeland Security Office of The General Counsel v. Safepassport, Inc., Opposition No. 91268135 [Opposition to registration of the mark COVID PRE & Design shown first below, for "Licensing of software in the framework of software publishing," in view of the registered marks TSA PRE & Design, shown second below, and TSA PRECHECK, in standard character form, both for "Airline passenger security screening services, namely, an expedited screening initiative that enhances aviation security and expedites the travel experience by pre-screening individuals who volunteer to participate in the program."]

September 19, 2024 - 1 PM [Virtual]: Hangzhou Mengku Technology Co., Ltd and Fuzhou Mengku Technology Co., Ltd v. Shanghai Zhenglang Technology Co., Ltd, Opposition No. 91272143 [Opposition to registration of the mark shown below for computer game software, on the ground of mere descriptiveness.]

September26, 2024 - 1 PM [In-Person]: In re Audemars Piguet Holding SA, Serial No. 90045780 [Refusal to register the product design mark shown below, for "watches, wristwatches" on the ground of Section 2(e)(5) functionality and, alternatively, on the ground of lack of acquired distinctiveness.]

September 26, 2024 - 1:30 PM [In-Person]: In re Audemars Piguet Holding SA, Serial No. 90045814 [Refusal to register the product design mark shown below, for "watches, wristwatches" on the ground of Section 2(e)(5) functionality and, alternatively, on the ground of lack of acquired distinctiveness.]

Read comments and post your comment here.

TTABlog comment:  Any predictions? See any WYHAs? Any WYHOs?

Text Copyright John L. Welch 2024.

TTABlog Test: Is "LIP TAR" Confusable with "THE LIP BAR" for Lip Gloss?

The parties to this opposition proceeding filed cross-motions for summary judgment but stipulated that the Board could decide the case on the merits based solely on the summary judgment papers, including resolution of any genuine disputes of material facts. The Board treated these stipulations as an agreement to go forward under the Accelerated Case Resolution (ACR) procedure. Applicant Metro1 sought registration of the mark LIP TAR for "lip gloss" [LIP disclaimed]]. Opposer claimed likelihood of confusion with its registered mark THE LIP BAR for, inter alia, lip gloss [LIP disclaimed]. How do you think this came out? The Lip Bar, Inc. v. Metro1 Solutions, LLC, Opposition No. 91289231 (August 22, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Since the goods overlap, they presumably travel in the same channels of trade to the same classes of consumers. Actually, Metro1 so stipulated. It also stipulated that the relevant consumers would exercise only ordinary care in their purchasing decisions.

The Board found opposer’s mark to be "inherently distinctive–at least suggestive–because it is registered on the Principal Register," although its strength is "somewhat limited by its disclaimer of LIP which is descriptive or generic for cosmetics for the lips such as lip gloss or lipstick." As to commercial strength, opposer's evidence and testimony was unimpressive. And so, the Board concluded that opposer's mark "is entitled to a normal scope of protection of an inherently distinctive mark.

Turning to the key issue, the similarity of the marks, the Board found that TAR and BAR are the dominant elements of the marks. Metro1 conceded that the marks are "somewhat similar" in appearance and sound. The Board went a step further:

The marks are similar visually, with both marks containing the term LIP, with the dominant portion of each mark differing by one letter, BAR/TAR. The marks also sound similar because although Opposer’s mark includes THE, both marks contain the descriptive if not generic term LIP followed by a three-letter word with a similar “AR” construction–BAR/TAR.

Metro1 argued that the differences in connotation and commercial impression avoid confusion: i.e., Opposer’s mark connotes that it is sold in bar form or is manufactured or sold by a retail store called “The Lip Bar,” whereas the word “tar’ in its mark "suggests to consumers that its lip gloss is a viscous and durable substance that fully covers and sticks to one’s lips." The Board agreed that the marks have somewhat different connotations.

Nonetheless, we find that when considered in their entireties, the similarities in sound and appearance outweigh the differences in meaning resulting from the words BAR/TAR, or the addition of THE in Opposer’s mark, particularly because “the average customer ... retains a general rather than specific impression of marks.”

And so, the Board found that the first DuPont factor favored Opposer.

Finally, Metro1 pointed out that Opposer’s mark previously co-existed with a LIP TAR mark on the trademark register and that Opposer was not harmed by its co-existence. Although acknowledging that expired registrations have no probative value and that the Board is not bound by prior examining attorney decisions, Metro1 contended that consistency and predictability in examination should be considered. In short, if the marks co-existed in the past, they should be able to co-exist now. The Board was not impressed: "The fact that Opposer’s THE LIP BAR mark co-existed on the trademark register with another LIP TAR mark does not prove that they coexisted during that time without confusion in the marketplace."

And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: FWIW, I think the Board got this wrong.

Text Copyright John L. Welch 2024.

EAGLE PARK DISTILLING for Alcoholic Beverages Not Confusable with EAGLE RARE for Bourbon Whiskey, Says TTAB

In a 50-page opinion, the Board dismissed this opposition to registration of the marks EAGLE PARK DISTILLING for "distilled spirits; alcoholic beverages, except beer," and EAGLE PARK BREWING COMPANY for "alcoholic beverages, namely beer," finding confusion unlikely with Sazerac's registered marks EAGLE RARE for "bourbon whiskey" and the design mark shown below for "whiskey." The dissimilarity of the marks underpinned the dismissal as to the first challenged mark and, combined with the lack of proof of relatedness of beer and whiskey, also underpinned the dismissal as to the second mark. Sazerac Brands, LLC v. Eagle Trace Brewing Company LLC, Opposition No. 91272260 (August 22, 2024) [not precedential] (Opinion by Judge Mark Lebow).

The Marks: The Board found the word EAGLE to be the dominant element in the EAGLE RARE mark. However, in applicant's marks, EAGLE is used as an attributive noun modifying the noun PARK "such that the combination of EAGLE and PARK conveys the idea of a geographic place, real or imagined where one might or might not see an eagle." Likewise, the eagle design mark and applicant's marks have "distinct overall connotations and commercial impressions." 

The Board concluded that the first Dupont factor "strongly" favors a finding of no likelihood of confusion, and indeed was dispositive as to the EAGLE PARK DISTILLING mark.

Survey Evidence:With respect to the EAGLE PARK DISTILLING mark, Opposer Sazerac submitted the results of a Squirt-style survey based on the EAGLE RARE mark, resulting in the following conclusion: “The overall net rate of confusion, using the Control Group rate to net out ‘survey noise’ or guessing, is 18.7 percent.” The Board, however, agreed with the applicant that a number of defects in the survey diminished its probative value to the extent that the Board "cannot rely on it with any confidence. " In sum:

For the various reasons discussed, including but not limited to our finding that (i) the Squirt-style survey format is more conducive where an opposer’s mark is not alleged to be commercially strong; (ii) the survey has significant design flaws, including with respect to—for example—the brands chosen for the array, and the universe of participants; (iii) the low net confusion rate, and, perhaps most significantly, (iv) the survey fails to sufficiently approximate market conditions, we are unable to infer that there is a likelihood of confusion between Opposer’s EAGLE RARE mark and Applicant’s EAGLE PARK DISTILLING mark based on the survey.

Beer and Whiskey: The Board noted once again that there is no per se rule that all alcoholic beverages are related for Section 2(d) purposes. "Even though whiskey and beer (and other alcoholic beverages) have been found related in other cases, we must decide the outcome of this proceeding, just as we do with all cases, based on the facts and evidence submitted in this case."

Sazerac pointed to applicant as an example of a company that sells both beer and whiskey, but the Board was unimpressed: "[O]ne example of the same company using two different marks (EAGLE PARK DISTILLING and EAGLE PARK BREWING COMPANY) for different alcoholic beverages does not, itself, suffice to establish relatedness of the goods." Sazerac simply failed to prove that beer and whiskey are related for purposes of finding a likelihood of confusion, and so the second DuPont factor favored the applicant.

Finding that likelihood of confusion is "even more remote" with respect to applicant's mark EAGLE PARK BREWING COMPANY for beer, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: The Board was quite critical of the Squirt form of survey, not just for this case, but generally.

Text Copyright John L. Welch 2024.

Recommended Reading: The Trademark Reporter, July-August 2024 Issue

The July–August 2024 (Vol. 114 No. 4) issue of The Trademark Reporter (TMR) is now published [pdf here]. Willard Knox, Editor-in-Chief, summarizes the contents as follows (and below): "This issue offers our readers an article on the new frontier of Web 3.0 (the next phase of the World Wide Web) and the potential promise and peril of blockchain domain names for brand owners, as well as a book review of a practitioner’s guide to winning domain name disputes (in the current version of the Internet)."

Back to the Future with Blockchain Domain Names: Toward a Global Policy to Fight Cybersquatting in Web 3.0, by Vera Glonina. The author of this in-depth article guides brand owners through the nascent world of Web 3.0—the next stage of the World Wide Web. The author explores the potential promise and peril of blockchain domain names in Web 3.0 and calls for a new regulatory framework to protect trademarks against cryptosquatters (the next iteration of bad-faith cybersquatters in the current version of the Internet).

Book Review: Prosecuting and Defending Domain Name Disputes: Effective Litigation Strategies. Daniel R. Bereskin. Reviewed by Karen L. Elburg. The reviewer of this book finds it offers readers a comprehensive yet compact guide on how practitioners can navigate the complex world of domain names and effectively represent their clients in related disputes.

Read comments and post your comment here.

TTABlog comment: This issue of the TMR is Copyright © 2024, the International Trademark Association, and is made available with the permission of the Trademark Reporter®.

TTAB Reverses Section 2(d) Refusal of "LendingOne & Design" Over LENDERS ONE Due to Differences in Mortgage Lending Services

Two Section 2(d) refusals reversed in one week? I kid you not. The Board overturned a refusal to register the mark shown below, for various mortgage lending services, finding confusion unlikely with the registered mark LENDERS ONE for "cooperative mortgage lending services" [LENDERS disclaimed]. The Board found the marks to be highly similar, but the second, third and fourth DuPont factors favored the applicant, and the cited mark was somewhat weak. In re LendingOne, LLC, Serial No. 97627670 (August 20, 2024) [not precedential] (Opinion by Judge Angela Lykos).

 

Applicant identified its services as: "Origination of single and one-to-four family rental, fix-and-flip, and small-balance multifamily business-purpose mortgage loans and non-bank commercial real estate mortgage loans related to the private money lending business secured by non-owner occupied residential investment, multifamily, or commercial real property, specifically excluding mortgage lending services to mortgage lenders in connection with business services at negotiated prices."

The Board began with an assessment of the strength of the cited mark. It reviewed a number of registrations for and uses of marks including the words "lend" or "lending" but none were as close to the registered mark as applicant's mark. Nonetheless, the Board concluded that "the cited mark’s strength is somewhat limited by the first word LENDERS which has been shown to be conceptually weak by third-party registration evidence and has been disclaimed."

Turning to registrant's services, the Board looked to extrinsic evidence to discern the meaning of "cooperative mortgage lending services."

This evidence clarifies that Registrant does not provide mortgage loans to real estate investors. Nor does Registrant even provide mortgage lending services. Rather, Registrant is a cooperative comprised of independent mortgage bankers that provides bundled support services to its members in order to compete against large mortgage lenders.

Applicant’s specimen of use states that the focus of its services is the provision of loans to real estate investors, such as “Fix & Flip Loans,” “Multifamily Bridge Loans,” and “Rental Loans.” 

The Board found it "obvious" that applicant’s and registrant’s services are not legally identical. Moreover, there was no evidence (i.e., third-party registrations or excerpts from third-party websites)  that these services may emanate from a single source.

The Board next found that, "although the classes of consumers differ, both Applicant’s and Registrant’s consumers are likely to exercise great care in purchasing their respective services."

The Board concluded that the first factor was outweighed by the second, third and fourth factors, and "slightly by the sixth factor." "In other words, although the marks are highly similar, this is outweighed by the findings that the services are unrelated, the channels of trade and classes of purchasers do not overlap, and consumers of both Applicant’s and Registrant’s services will exercise more than ordinary care in their purchasing decisions."

Read comments and post your comment here.

TTABlogger comment: The rate of affirmance of Section 2(d) refusals is running at about 93% so far this year.

Text Copyright John L. Welch 2024.

TTABlog Test: Is "SIMON FAMILY WINES" Primarily Merely a Surname for Wines?

The USPTO refused to register the mark SIMON FAMILY WINES for wines, finding the mark to be primarily merely a surname under Section 2(e)(4). Applicant argued that "Simon" may be perceived as a male first name, and pointed out that the Trademark Register lists 29 registrations for marks the include the word SIMON without a claim of acquired distinctiveness under Section 2(f). How do you think this appeal came out? In re Simon Family Wines, LLC, Serial No. 97608809 (August 20, 2024) [not precedential] (Opinion by Judge Robert H. Coggins).

The Board observed that the analysis of the mark in its entirety requires addressing the issue of the surname significance of SIMON, and then determining whether the additional words FAMILY WINES “alter the primary significance of the mark as a whole to the purchasing public.” The following inquiries are pertinent:

• Whether anyone connected with Applicant has the surname SIMON;

• Whether SIMON has a non-surname meaning; and

• The extent to which SIMON is used by others as a surname.

The evidence established that SIMON is the surname of both Sam Simon, the founder of the applicant winery, and Nada Simon, Sam’s wife and business partner. Applicant's website indicates that it is a family-focused business and features images of Sam, Nada, and their sons Michael and Peter in a vineyard. "Promotional materials touting a founder whose surname is in the mark support public perception of the mark primarily as a surname."

Applicant pointed to search results wherein "[a]lmost all the hits relate to Simon as a first name or retail real estate [sic]." The Board observed, however, that most of the entries referred to the musician Paul Simon, including all three of the “Top Stories” and the first video hit. Nonetheless, the search results also included references to Simon Cowell, Simon Sinke, Simon Shopping Malls, and “Simon” as a biblical name and a boy’s name.

The Board pointed out that although “Simon” may also be a male first name, "we keep in mind that '[t]he question is not whether a mark having surname significance might also have a non-surname significance, but whether, in the context of the goods . . . at issue, that non-surname significance is the mark’s primary significance to the purchasing public, thus eclipsing and relegating the mark’s surname significance to secondary rather than primary status.'" Miller, 105 USPQ2d at 1621.

As to the 29 third-party registrations, seven of the marks comprised full names, such as SIMON CARTER. Other marks included a design element. Still others included additional distinctive matter such that the marks as a whole would not be perceived as primarily merely a surname (for example, SIMON SAFETY BEAR for teaching materials, SIMON VERSUS for clothing). None of the registered marks included the term FAMILY WINERY, or even just FAMILY, and none of the registrations  identified wine or wine-related services.

Turning to the use of SIMON by others, the Board noted that SIMON is the 366th most common surname in the USA with some 104,003 incidences. Multiple media sources mentioned people with the surname SIMON, including musicians Carly Simon and Paul Simon, poker player Gilles Simon, Indiana Pacers (basketball team) owner Herb Simon, and politician Steve Simon. The Board found the evidence "sufficiently probative to establish that the purchasing public has been exposed to the surname SIMON."

Next, the Board considered the mark SIMON FAMILY WINES in its entirety, concluding that the additional wording FAMILY WINES "enhances the surname significance of SIMON." "Adding FAMILY immediately after SIMON in the mark creates the overall impression that SIMON is the surname (i.e., family name) of the owner of the winery making Applicant’s goods."

Evidence submitted by Examining Attorney Michael Furda established that "it is common for wineries to be run as family businesses, identifying in a winery name the surname of the family who runs it, and using the term 'family winery' or the like to describe their operations,"

Concluding that the primary significance of SIMON FAMILY WINES to consumers is that of a surname within the meaning of Section 2(e)(4), the Board affirmed the refusal to register. 

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2024.

TTAB Reverses Section 2(d) Refusal of NAMASTE COUTURE BY APRIL STOLF over NAMASTE for Jewelry

The Board reversed a Section 2(d) refusal of the mark NAMASTE COUTURE BY APRIL STOLF, finding confusion unlikely with the registered mark NAMASTE, both for jewelry. The Board found the registered mark to be weak in view of numerous third-party uses, and the two marks more dissimilar than similar. However, it upheld the Office's requirement that the applicant disclaim the word COUTURE. In re Namaste Couture LLC, Serial No. 97652794 (August 19, 2024) [not precedential] (Opinion by Judge Peter W. Cataldo).

Based on use by Hindus in South Asia, the Board found that the word "namaste" "may suggest an expression of respectful greeting on the part of the wearer" and therefore "may have a small degree of inherent conceptual weakness in connection with jewelry and on its face is at worst mildly suggestive when used in connection with such goods." [Really? - ed.].

As to marketplace strength, the evidence showed numerous uses of "namaste" both as ornamentation and/or as a source identifier.

While Applicant has not presented specific evidence concerning the extent and impact of these uses, it nevertheless presented extensive evidence of these third-party marks and ornamental uses in internet commerce for the jewelry identified in the cited registration. “Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.”

The Board concluded that the word "namaste" is "quite weak" as a formative, and that "consumers of jewelry will look not just to the NAMASTE component of Applicant’s mark to identify and distinguish the source of the goods, but also to the other parts of the marks, particularly the phrase BY APRIL STOLF in Applicant’s mark, which identifies the designer."

Comparing the marks in their entireties, the Board concluded that the additional wording COUTURE BY APRIL STOLF distinguishes applicant’s mark from the registered mark "in appearance, sound, and, to a lesser extent, in meaning, with the result that the marks are more dissimilar than similar in overall commercial impression."

Turning to the disclaimer requirement, the Board found that the term “COUTURE” immediately describes a feature or characteristic of applicant’s custom-made and handmade jewelry, namely, that it is unique, hand-crafted and of superior quality.

Applicant argued that NAMASTE COUTURE is a unitary term, but the Board was unconvinced. It noted that the two words are not alliterative, nor are they connected physically or by design features. And there was no evidence that consumers would view the terms NAMASTE COUTURE as inseparable from one another or as creating an additional meaning beyond that of the component terms. Nor is the term incongruous or a double entendre.

And so, the Board upheld the disclaimer requirement but allowed the applicant thirty days within which to submit the required disclaimer. 

Read comments and post your comment here.

TTABlogger comment: Do you remember Joe Namaste when he quarterbacked the New York Jets?

Text Copyright John L. Welch 2024.

(Corrected) Current Roster of TTAB Administrative Trademark Judges

With the retirements of Judges Bergsman, Wolfson, and Taylor, the passing of Judge Hudis, and the addition of six judges this year, the Board’s membership now stands at thirty (30) Administrative Trademark Judges. The current roster is set forth below, beginning with Chief Judge Gerard F. Rogers and Deputy Chief Judge Thomas W. Shaw, and then proceeding alphabetically.

Rogers, Gerard F. (Chief Judge): Appointed to TTAB in 1999. Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D. magna cum laude, New England School of Law.

Shaw, Thomas V. (Deputy Chief Judge): Appointed to TTAB in 2011. Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.

Adlin, Michael B.: Appointed to TTAB in 2012. Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University; J.D., Boston University School of Law.

Allard, Martha B.: Appointed to TTAB in 2021. Prior Professional Experience: Private Practice (Nashville); Education: B.S. University of Kentucky; J.D., Western New England University School of Law.

Bradley, Jessica D.: Appointed to TTAB in 2024. Prior Professional Experience: Private Practice ; LexisNexis; Education: B.A., George Washington University; J.D., Catholic University of America Columbus School of Law.

Brock, Elizabeth K.: Appointed to TTAB in 2024. Prior Professional Experience: Private Practice; Education: B.A., University of Michigan; J.D., Wayne State University Law School.

Casagrande, Thomas L.: Appointed to TTAB in 2023. Prior Professional Experience: Private Practice (Texas), USPTO Associate Solicitor 2012-2023; Education: B.A., University of Pennsylvania; J.D., University of Connecticut School of Law.

Cataldo, Peter W.: Appointed to TTAB in 2006. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Coggins, Robert H.: Appointed to TTAB in 2017. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Davidson College; J.D., Wake Forest School of Law.

Cohen, Wendy B.: Appointed to TTAB in 2023. Prior Professional Experience: Private Practice, 1998-2012, TTAB Interlocutory Attorney, 2012-2023; Education: B.A, University of Missouri - Columbia; J.D., University of Missouri - Columbia School of Law.

Dunn, Elizabeth A.: Appointed to TTAB in 2019. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Boston University; J.D., American University Washington College of Law.

Elgin, Jennifer L.: Appointed to TTAB in 2023. Prior Professional Experience: Private Practice, 1993-2020, TTAB Interlocutory Attorney, 2020-2023; Education: B.S., Cornell University; J.D., Emory University School of Law.

English, Christen M.: Appointed to TTAB in 2019. Prior Professional Experience: Private Practice; TTAB Interlocutory Attorney; Education: B.A., Boston College; J.D. Catholic University Columbus School of Law.

Goodman, Cheryl S.: Appointed to TTAB in 2014. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State College of Law.

Greenbaum, Cindy B.: Appointed to TTAB in 2012. Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Heasley, David K.: Appointed to TTAB in 2015. Prior Professional Experience: Private Practice (Washington, D.C.); Education: B.A., The Johns Hopkins University; J.D., University of Maryland School of Law.

Johnson, Melayne K.: Appointed to TTAB in 2020. Prior Professional Experience: Corporate Counsel; Senior Counsel, Office of General Counsel at the U.S. Department of Health and Human Services (HHS); Education: B.A., University of Michigan; J.D., Ohio State University Moritz College of Law.

Kuhlke, Karen S.: Appointed to TTAB in 2005. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Larkin, Christopher C.: Appointed to TTAB in 2016. Prior Professional Experience: Private Practice (Los Angeles, CA; New York, N.Y.); Education: B.A., Stanford University; J.D., Columbia Law School.

Lavache, Robert: Appointed to TTAB in 2024. Prior Professional Experience: Trademark Legal and Examination Policy Specialist; various other USPTO positions; Education: B.A., University of Miami; J.D., Cornell Law School.

Lebow, Mark: Appointed to TTAB in 2020. Prior Professional Experience: Private Practice (Alexandria, Virginia); Education: B.A., Florida Atlantic University; J.D., Hofstra University School of Law; L.L.M., John Marshall Law School.

Lykos, Angela: Appointed to TTAB in 2010. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., The Johns Hopkins University; J.D., Duke University Law School.

Lynch, Cynthia C.: Appointed to TTAB in 2015. Prior Professional Experience: Private Practice; Attorney-Advisor at the International Trade Commission; USPTO Assistant Solicitor: USPTO Administrator for Trademark Policy and Procedure; Education: B.A., University of North Carolina; J.D., University of Virginia School of Law.

Myles, Mary Beth: Appointed to TTAB in 2024. Prior Professional Experience: Private Practice, TTAB Interlocutory Attorney; Education: B.A., Bethany College; J.D., Columbia University School of Law.

O'Connor, Catherine Dugan: Appointed to TTAB in 2024. Prior Professional Experience: Law Clerk to Hon. Denny Chen (SDNY); private practice; Education: B.A., University of Connecticut; J.D., St. John's University School of Law.

Pologeorgis, George C.: Appointed to TTAB in 2015. Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Attorney in the Office of Trademark Quality Review and Training; Trademark Examining Attorney; Private Practice; Education: B.A., University of Pennsylvania; J.D., George Washington University National Law Center.

Stanley, Lawrence T., Jr.: Appointed to TTAB in 2024. Prior Professional Experience: Private Practice; TTAB Interlocutory Attorney; Education: B.A., Indiana University; J.D., New England School of Law.

Thurmon, Mark A.: Appointed to TTAB in 2019. Prior Professional Experience: Private Practice; Adjunct Professor of Law, University of Texas School of Law; Assistant Professor of Law, Levin College of Law, University of Florida; Professor of Law at the Southern University Law Center, Southern University; Education: B.S, Louisiana State University; J.D. with high honors, Duke University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007. Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Zervas, Albert J.: Appointed to TTAB in 2005. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.

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Text Copyright John L. Welch 2023.

Precedential No. 20: Supplemental Registration for PERMITS.COM Cancelled by Prior User of PERMIT.COM Despite No Acquired Distinctiveness

In a "somewhat unusual" Section 2(d) cancellation proceeding targeting a Supplemental Register registration and involving "dueling claims of acquired distinctiveness," the Board granted a petition for cancellation of Fieldvine's Inc's registration for the mark PERMITS.COM for construction permit services. Although Petitioner State Permits, Inc. could not prove acquired distinctiveness for its mark PERMIT.COM, it did prove first use for identical services, and that was enough. State Permits, Inc. v. Fieldvine, Inc., 2024 USPQ2d 1458 (TTAB 2024) [precedential] (Opinion by Judge Thomas W. Wellington).

Under the rule of Otto Roth, a plaintiff must prove it has proprietary rights in a mark in order to succeed on a likelihood of confusion claim when challenging a registration on the Principal Register. However, the holding of Otto Roth was limited by the CAFC's decision in Books on Tape: if the challenged registration resides on the Supplemental Register and covers a descriptive term that lacks acquired distinctiveness, a prior user of a confusingly similar term may succeed in cancelling that registration even without establishing acquired distinctiveness for its own mark.

Here, both parties asserted rights in their respective marks based on acquired distinctiveness. Whichever party successfully demonstrated that it was first to acquire distinctiveness would prevail. If neither did so, then the prior user would prevail. 

Each party acknowledged in its brief that the word PERMIT or PERMITS, combined with the top-level domain .COM, "constitutes, at the very least, a descriptive and non-inherently distinctive term in connection with their services." Respondent's registration on the Supplemental Register itself constitutes an admission that as of the registration date (February 18, 2020), PERMITS.COM was merely descriptive. Similarly, petitioner's invocation of Section 2(f) in seeking to register its PERMIT.COM is a concession that the mark is not inherently distinctive.

The Board first found that both marks are "highly descriptive" of the parties' services: "the term PERMIT, in each mark, describes the most important characteristic or end goal of the identified services, namely, assisting others in obtaining construction permits." The addition of .COM does not make the marks distinctive; "rather, it is a non-source-identifying generic top-level domain (gTLD) that merely indicates an Internet address for use by a commercial, for-profit organization." Consequently, "the commensurate burden of proving that it has acquired distinctiveness for either party is heavy."

In answering the question of acquired distinctiveness vel non, that Board applied the CAFC's Converse factors. Petitioner began using its mark in 2013, spent more than $500,000 in promotional efforts, and garnered some $49M in total revenue while securing approximately 70,000 permits for its customers. It also submitted testimony declarations from knowledgeable customers and others in the construction industry in support of the Section 2(f) claim. 

The Board, however, concluded that petitioner failed to meet it "difficult burden," noting the lack of survey evidence, of media coverage, and of intentional copying. Furthermore, petitioner's sales and advertising figures were not placed in industry context. 

Although Petitioner has not proven acquired distinctiveness, Petitioner has at least established that it began using PERMIT.COM in a manner consistent with service mark use as early as 2013.

Respondent Fieldvine claimed use of its mark since 2018, relying on the declaration of its CEO, but the sales and advertising figures he provided lacked industry context. Moreover, in light of petitioner's use of PERMIT.COM since 2012, Fieldvine's use of its mark "has not been exclusive." And Fieldvine did not introduce any third-party testimony to support its Section 2(f) claims

Indeed, as stated, the burden of proving that such a highly descriptive term has acquired distinctiveness is a particularly heavy one, and Respondent’s evidence falls woefully short.

As in Books on Tape the Board found that "it would be an 'anomalous result' if, in view of our finding of a likelihood of confusion, Respondent is permitted to keep its Supplemental Register registration for PERMITS.COM, in the absence of a showing of acquired distinctiveness and in the face of Petitioner’s prior use of PERMIT.COM."

And so, the Board granted the petition for cancellation.

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TTABlogger comment: Since each party owns the corresponding ".com" domain name, how valuable is a Supplemental Registration anyway?

Text Copyright John L. Welch 2024.

TTABlog Test: Three Recent Section 2(d) Appeals - Outcome?

A TTAB judge (now retired) 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 involved marks and the goods/services. Here are three recent TTAB decisions in Section 2(d) appeals. How do you think they came out? [Answers in first comment.]

In re Parklife Innovations Ltd., Serial No. 88413981 (August 9, 2024) [not precedential] (Opinion by Judge Mary Beth Myles) [Section 2(d) refusal of the mark BAZOOKAGOAL for "sports training apparatus, namely, portable, retractable pop-up goal nets for soccer training and modified soccer training" in view of the registered mark BAZOOKA BALL for "amusement products, namely, inflatable balls; Athletic equipment, namely, striking shields; Balls for games; Balls for sports; Outdoor activity game equipment sold as a unit comprising paint ball equipment modified for playing games; Target equipment, namely, backers for targets; Target equipment, namely, stands for targets; Umpire protection equipment" [BALL disclaimed].

In re Oozootech Co., Ltd., Serial No. 79329157 (August 13, 2024) [not precedential] (Opinion by Judge Melanye K. Johnson) [Section 2(d) refusal to register the mark DOCSOLE for "Insoles for shoes" in class 25, in view of the registered mark DOCTORINSOLE for “Orthotic inserts for footwear” in class 10].

In re Cofftea Trading Company Ltd., Serial No. 97562979 (August 13, 2024) [not precedential] (Opinion by Judge Thomas H. Coggins) [Section 2(d) refusal of COFFTEA for "coffee; tea; coffee beans; fruit teas; herbal tea; peppermint tea; processed tea leaves; tea bags" in view of the identical mark registered for "restaurant services."]

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TTABlog comment: Predictions? See any WYHA?s

Text Copyright John L. Welch 2024.

Three Administrative Trademark Judges Added to TTAB Roster

Chief Judge Gerard F. Rogers has announced the appointment of three Administrative Trademark Judges to the TTAB (see below). By my count, this brings the number of ATJs at the Board to thirty-one.

Jessica D. Bradley started with the Board July 1. Judge Bradley has practiced in the field of intellectual property law for nearly 20 years. For most of her career, Judge Bradley was an IP litigator and represented clients in over 50 cases involving trademark and copyright issues in various federal district courts and in nearly 150 proceedings before the TTAB. For two years, she authored for LexisNexis more than 30 Practical Guidance Documents and Expert Annotated Forms on aspects of practice before the Trademarks and TTAB operations of the USPTO and the Copyright Claims Board. A summa cum laude graduate of George Washington University with a B.A. in Journalism, Judge Bradley earned a law degree with magna cum laude honors from the Columbus School of Law at The Catholic University of America.

Elizabeth K. Brock started with the Board July 15. Judge Brock worked for the national IP firm of Harness, Dickey & Pierce for nearly 20 years before a move to Blue Filament Law PLLC, a women-owned firm in Michigan. Judge Brock’s client work included representation of entities ranging from startups and small businesses to large, multinational corporations. Her responsibilities encompassed selection, clearance and prosecution of thousands of U.S. and international trademarks for clients; management of IP portfolios for clients; and trademark and copyright enforcement and anti-counterfeiting efforts, including through civil actions in the courts, TTAB proceedings, and domain name proceedings. Judge Brock earned her undergraduate degree in English Language and Literature from the University of Michigan and her law degree from the Wayne State University Law School.

Catherine Dugan O’Connor joined the Board on July 29. Judge O’Connor spent her first year as an attorney serving as a law clerk for the Hon. Denny Chin [SDNY], then a United States District Judge and now a United States Circuit Judge. The clerkship was followed by a nearly 30-year career as an attorney and litigator handling commercial and IP litigation and counseling. Eventually becoming a Partner for the firm of Day Pitney LLP, Judge O’Connor engaged in a broad-based and comprehensive legal practice advising clients on IP matters. Judge O’Connor represented many clients in proceedings before the TTAB, and in industries as diverse as manufacturing, life sciences, construction, toys, cosmetics, alcoholic beverages, financial services and software. After earning her undergraduate degree in Business Administration and Marketing, cum laude, from the University of Connecticut, Judge O’Connor attended St. John’s University School of Law on a full academic scholarship, earning her law degree summa cum laude.

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Introductory Text Copyright John L. Welch 2024.

Precedential No. 19: Red-White-and-Blue Mark Not Confusable with Red-Top Mark for Fence Posts, Says TTAB

Inter partes proceedings involving two color marks are as rare as a traffic cop in Boston. The Board denied this petition for cancellation of a supplemental registration for the color mark (red-white-and-blue) shown below left, for "metal fence posts," finding confusion unlikely with the registered color mark (red top) shown below right for "metallic fence posts." In a 69-page decision, the Board found the first DuPont factor - the dissimilarity of the marks - to be dispositive. Keystone Consolidated Industries, Inc. v. The Franklin Investment Corp. DBA Franklin Industries, 2024 USPQ2d 2025 (TTAB 2024) [precedential] (Opinion by Judge Cheryl S. Goodman).

Priority: In a cancellation proceeding in which the petitioner owns a Principal Register registration and challenges a Supplemental Registration, the Section 7(b) presumptions apply only to petitioner. Petitioner was therefore entitled to rely on its registration for purposes of priority without having to establish a prior use date either by relying on its application filing date or on an earlier use date. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1402 (CCPA 1974).

Goods/Channels/Consumers: Because the goods are identical, the Board presumed that the channels of trade and classes of consumers are the same. As to purchaser care, the Board found that buying metal fence posts, generally used for agricultural properties, would not be an impulse purchase. "However, because there is no specific testimony in the record about purchasing conditions, pricing, and all types of purchasers who would purchase such metallic or metal fence post products. we find the sophistication of purchasers neutral in the DuPont analysis."

Strength: Color marks applied to products or portions of products "are not generally distinctive, (and can never be inherently distinctive either under common law, under pre-Lanham Trademark Acts, or under the Lanham Act)." The Board therefore found petitioner’s red mark to be inherently and conceptually weak. 

As to commercial strength, the evidence of long use (since 1915) but with no sales figures, and of advertising figures combined with those for other products, was insufficient to support a finding of commercial strength:

Although we have over a hundred years of use of the Red Top Fence Post Mark, and wire fencing with a red topped color feature, we lack sufficient evidence of the extent of consumer exposure to or recognition of the Red Top Fence Post Mark or the red topped fencing product line. Long use is not sufficient by itself to prove fame or commercial strength.

However, there was no evidence of third-party registration or third-party use of the color red, as a single-color mark, for fence post tops, that would demonstrate weakness in the marketplace.

Given the Red Top Fence Post Mark’s conceptual weakness and lack of sufficient record evidence that the Red Top Fence Post Mark is commercially strong, we conclude that Petitioner’s mark is entitled to a narrow scope of protection. We find the fifth and sixth DuPont factors are neutral.

Marks: Respondent's mark consists of "a metal fence post with a blue bottom, white middle, and red top." Petitioner's mark "consists in coloring a short portion of the upper end of the post red." Because the marks are color marks, the similarity of the marks must be decided "primarily on the basis of visual similarity, which has been described as a 'subjective eyeball test.'" The Board noted once again that when the goods are identical, a lesser degree of similarity between the marks is needed to support a conclusion of likely confusion.

Petitioner argued that the dominant feature of both marks is the red, top portion because consumers supposedly recognize the top color of fence posts as a source identifier. The Board was unconvinced: "we consider Respondent’s multi-color mark in its entirety in our comparison of the marks, and do not discount any colored portion."

The Board found that "[t]he commercial impression of Petitioner’s Red Top Fence Post Mark, is a 'red top,' and the color red." On the other hand, consumers would perceive respondent’s Red, White and Blue Fence Post Mark as referring to "the national colors of the United States of America, or the flag of the United States of America."

Critically, as to appearance, the Board found the marks dissimilar. Even if the color red in petitioner's mark were considered to be the same color red as depicted in respondent's registration, "consumers encountering the parties' marks are not likely to perceive Petitioner’s Red Top Fence Post Mark and Respondent’s Red, White and Blue Fence Post Mark as the same or similar." And so, the Board found the two color marks to be "distinct and dissimilar."

Reviewing the relevant DuPont factors, the Board concluded that the relatedness of the goods, channels of trade, and class of consumers weighed in favor of likelihood of confusion. The conditions of sale and the fifth, sixth, seventh, eighth, tenth, and thirteenth DuPont factors were neutral. But the dissimilarity of the marks weighed "heavily" against likelihood of confusion.

Concluding that "the dissimilarity of the marks is the most important and pivotal factor, outweighing the other DuPont factors," the Board denied the petition for cancellation.

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TTABlogger comment: WYHP? 

Text Copyright John L. Welch 2024.

Precedential No. 18 (Part II): TTAB Grants Petition to Cancel BLOOKE Registration for Bicycles

Look Cycle, owner of the mark LOOK for bicycles and bicycle parts, petitioned to cancel a registration for the mark BLOOKE for bicycles, parts, and accessories, alleging likelihood of confusion, nonuse, and fraud. The Board upheld all three claims This blog post will discuss the first two; yesterday's post dealt with the fraud issue. Look Cycle International v. Kunshan Qiyue Outdoor Sports Goods Co., Ltd., 2024 USPQ2d 1424 (TTAB 2024) [precedential] (Opinion by Judge Karen S. Kuhlke).

Likelihood of Confusion: The Board focused on petitioner's registered mark shown below left for "cycles and structural parts therefor" and its common law mark shown below right, for bicycles and bicycle parts. As to the parties' involved registrations, the goods are identical in part and therefore are presumed to travel in the same trade channels to the same classes of consumers. As to petitioner's common law mark, the actual trade channels overlap with the presumed trade channels of respondent. Moreover, the products include inexpensive parts that do not involve a high degree of purchaser care.

Petitioner's marks are inherently distinctive. As to commercial strength, the evidence showed that these marks enjoy a "somewhat heightened level" of strength among serious consumers, but they fall short of the "higher end of the fame or commercial strength spectrum." The Board accorded the marks a "slightly broad scope of protection" in view of marks' strength among bicycle enthusiasts.

The key issue, however, was the similarity of the marks. The Board noted for the umpteenth time that when the involved goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Not surprisingly, the Board found the word LOOK to be the dominant element of petitioner's marks. Surprisingly, however, the Board found the parties' marks to be similar in appearance: "the word LOOK is apparent in the mark in particular when appearing on the product as shown below." [Really? - ed.]

Moreover, the Board opined that since the respondent's mark is registered in standard characters, the Board must consider "possible displays that emphasize the common element LOOK such as bLOOKe or BLOOKE." [Really? That seems a stretch! - .ed].

As to pronunciation, the Board concluded that respondent's mark could be pronounced like the common word "look" and like surnames such as Cooke and Hooke. [Pronunciation is like what patent lawyers refer to as a nose of wax - selectively twistable - id.]. As to connotation, BLOOKE "could invoke LOOK when that word is perceived by consumers as embedded within BLOOKE." [Unlikely - ed.]

Balancing the relevant DuPont factors, the Board found confusion likely.

Nonuse: The Board found the use-based application underlying the BLOOKE registration to be void ab initio because the mark was not in use for any of the identified goods as of the filing date. Petitioner Look undermined respondent's specimen of use (see the fraud discussion) and all of the evidence of use produced by respondent during discovery.

Respondent is correct that use may be proven by witness testimony that is clear, consistent and uncontradicted. But here the testimony is not clear, it does not attest to any of the specific goods listed in the registration, just the class, and is inconsistent with and contradicted by the documentation Respondent submitted with its specimens of use. Petitioner demonstrated this by showing the ghost addresses, and the documentation submitted with the testimony, the aliexpress.com orders, showing orders for goods not listed in the registration or shown in the specimens of use. Respondent is also correct that it is Petitioner’s burden to prove its claim of no use prior to the application filing date, which Petitioner has done by showing the infirmity of the specimens of use, and Respondent did not rebut Petitioner’s showing with evidence to show actual sales of the identified goods prior to April 7, 2021.

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TTABlogger comment: I think the Board went out of its way to nail this Chinese registrant on the Section 2(d) claim.

Text Copyright John L. Welch 2024.

Precedential No. 18 (Part I): Fraud! TTAB Grants Petition to Cancel BLOOKE Registration for Bicycles

Findings of fraud by the TTAB are rarer than a White Sox fan in Boston. The last fraud ruling was tossed out by the CAFC (Chutter) because Section 14 of the Lanham Act, which lists the bases for cancellation of a registration, does not include fraud committed in connection with a Section 15 incontestability declaration (as opposed to fraud in obtaining or maintaining a registration). [TTABlogged here]. In this case, the Board found fraud in respondent's underlying application for the mark BLOOKE for bicycles, parts, and accessories, notably ruling that respondent's false statements regarding use of its mark were made either with the intention to deceive the USPTO or with reckless disregard for the truth. Look Cycle International v. Kunshan Qiyue Outdoor Sports Goods Co., Ltd., 2024 USPQ2d 1424 (TTAB 2024) [precedential] (Opinion by Judge Karen S. Kuhlke).

Petitioner Look Cycle, owner of the mark LOOK for bicycles and bicycle parts, alleged likelihood of confusion, nonuse, and fraud. This blog post, the first of two, will focus on the fraud claim, the most important of the three claims for our purposes.

The Board, seemingly determined to nail this Chinese registrant, noted that "to the extent the petition for cancellation does not adequately plead fraud, fraud has been tried by implied consent pursuant to Fed. R. Civ. P. 15(b), and the petition is deemed amended to conform to the evidence."

The Board found that the evidence demonstrated "knowing intentional deception." But "even if the evidence were not sufficient to reveal such intention directly, at a minimum, the facts of this case demonstrate reckless disregard for the truth from which we infer the requisite intent." "[T]he Board has held that intent to deceive can be inferred from recklessness, in particular a reckless disregard for the truth." Chutter, Inc. v. Great Mgmt. Grp., LLC, Opp. No. 91223018, 2021 WL 4494251, at *6 (TTAB 2021), reversed on other grounds sub nom. Great Concepts, LLC v. Chutter, Inc., 90 F. 4th 1333 (Fed. Cir. 2023).

Respondent’s specimen of use (for pumps for bicycle tyres) included purported invoices from three transactions prior to the filing date of its underlying application, but the addresses for the three purchases were non-existent. Furthermore, respondent offered no testimony or evidence regarding "use [sic] of the 'pumps for bicycle tyres'" displayed in the specimens of use, but did produce documents during discovery supposedly disclosing an event held prior to April in 2021 in the United States but shown to be referencing a 2023 event in Shanghai China.

In addition, respondent submitted a declaration signed on its behalf by its attorney - whose actions are imputed to respondent - falsely verifying that the specimen showed respondent's use of the mark for the goods identified in the application, and including an averment that "[t]o the best of the signatory’s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions made above have evidentiary support."

[B]ased on the record in this case, the statements in this declaration have been shown to be false, constitute material representations, and were signed by Respondent’s attorney on behalf of Respondent. In view of the evidence in this case, we find this constitutes intentional deception, or at a minimum, reckless disregard for the truth from which we infer intent to deceive. In sum, Respondent submitted the application declaration containing false material representations of fact with the intent to deceive the USPTO

And so, the Board sustained the claim of fraud.

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TTABlogger comment: The Board did not mention that the attorney who filed the underlying use-based application, Jonathan G. Morton, was suspended from practice before the U.S. Patent and Trademark Office for a period of twenty-four months, commencing on April 24, 2022., as stated in the Final Order of suspension (pdf here), Morton acknowledged that did not conduct reasonable inquiries regarding the specimens of use that he submitted on behalf of his clients.

Text Copyright John L. Welch 2024.

TTAB Finds LOTERIA Generic for Gaming Machines

In a 40-page decision, the Board upheld a genericness refusal of LOTERIA [English translation, "Lottery"] for "Gaming machines, namely, slot machines and electronic gaming machines for playing games of chance." Alternatively, the Board affirmed a mere descriptiveness refusal, finding that applicant could not demonstrate the exclusivity of use needed to support her Section 2(f) claim. In re Martha Maria Sanchez Quiroz, Serial No. 90630537 (August 5, 2024) [not precedential] (Opinion by Judge Thomas V. Shaw).

Applicant stated that her predecessor-in-interest introduced a bingo-style game called “Don Clemente Loteria” in Mexico around 135 years ago. Applicant now offers a variety of goods in the United States under several LOTERIA-formative marks and owns a number of registrations, including one for LOTERIA for playing cards.

The Board deemed the genus at issue to be "gaming machines" and the relevant public to "consist of the adult public of the United States who are interested in gambling on gaming machines, namely, slot machines and electronic gaming machines for playing games of chance."

The Board found from the USPTO's evidence that "Loteria" is the generic name of a Mexican-style bingo game of chance played with cards and boards featuring various images. Next, it found that gaming machines can be programmed to give prizes for various combinations of those images or symbols.

It noted that applicant’s gaming machines feature images from its own LOTERIA DON CLEMENTE Mexican-style bingo game, "as would be expected from the name at the top of the machine." The Board therefore agreed with Examining Attorney Rebecca Gilbert that the "Loteria" Mexican-bingo style game "is the key aspect and central feature of the goods." See Cordua Rests., 823 F.3d at 603 (“[A] term can be generic for a genus of goods or services if the relevant public . . . understands the term to refer to a key aspect of that genus[.]").

Therefore, the Board found that LOTERIA is generic when used in connection with applicant’s gaming machines featuring an image-matching game.

The Board noted that "it is possible that some Spanish-speaking consumers are unfamiliar with Mexican-style bingo. That is, some Spanish-speaking consumers would understand LOTERIA only to translate simply to LOTTERY." The Board then went on to find that the English translation as "lottery" would also identify a key aspect of gaming machines (i.e., video lottery machines) that fall within applicant's identification of goods.

For completeness, the Board considered the alternative Section 2(e)(1) refusal, first finding the proposed mark to be highly descriptive, and then finding that applicant had failed to satisfy Section 2(f):  "the plentiful evidence of third-party use of LOTERIA coupled with the absence of evidence such as sales and advertising figures, unsolicited media attention, or quantification of consumer impressions or views of the proposed mark, is fatal."

And so the Board affirmed the refusal(s) to register.

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TTABlogger comment: If Spanish-speaking Americans find LOTERIA to be generic for the goods, isn't that enough? Why did the Board need to consider whether the translated version, LOTTERY, is generic?

Text Copyright John L. Welch 2024.