Ornamental Design on Jewelry and Clothing Fails to Function as a Trademark, Says TTAB

The Board upheld a refusal to register the design mark shown below, for jewelry and for "Clothing, namely, t-shirts, socks, hoodies" on the ground that under Sections 1, 2 and 45 of the Trademark Act, the proposed mark, as used on the specimens of record, is merely a decorative or ornamental feature of the goods and does not function as a trademark to indicate their source. In re Dragonsteel Entertainment, L.L.C., Serial No. 97200167 (October 29, 2024) [not precedential] (Opinion by Judge Robert Lavache).

The question was whether consumers would view the design as mere ornamentation on the goods or as a source indicator for the goods. In such a case, the Board has found it "helpful to consider various aspects of designs and shapes," including "the size, location and dominance of the designs." In that light, it reviewed applicant's specimens of use:

Applicant argued that “[t]he TTAB has made it clear that ‘emblazoning’ a logo on the front of a t shirt or hoodie does not preclude the logo functioning as a source identifier in the minds of the consuming public.'" The Board agreed: "we have previously rejected any per se rule regarding registrability based on the size of a mark on clothing." However, that didn't help the applicant:

In this case, we find that the size, as well as the location and dominance, of the proposed mark on the goods make it more likely than not that consumers viewing the mark will perceive it as mere ornamentation, rather than as an indicator of source. Specifically, in all of the specimens . . . except the one displaying the socks, the proposed mark is the only design element on the goods and it is displayed on the front of goods taking up a significant portion of the shirts’ surface area and composing almost the entirety of the jewelry items. Thus, the proposed mark wholly defines the appearance of the jewelry and forms the essence of the shirts’ expressive element.

As to the socks, the Board agreed with the Examining Attorney Tasha Pulvermacher that the poor image quality of the specimen prevented a determination as to whether the proposed mark actually appears on the socks, and so the Board could not determine whether the specimen shows merely ornamental use.

The Board also considered marketplace evidence that jewelry and clothing commonly feature prominently displayed ornamentation or design elements. [Hardly surprising - ed.] "Thus consumers may be predisposed to perceiving such elements as something other than indicators of source on such goods and may purchase the goods because of their appearance rather than because they come from a particular source."

So, while the design of the proposed mark may be deemed unique as compared to the other designs in evidence, the manner in which Applicant applies the proposed mark to shirts and jewelry (i.e., a prominently displayed design serving as the sole decorative of the goods) is nonetheless a mere refinement of a common form of ornamentation for such goods.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Applicant made no attempt to show acquired distinctiveness. It did make a feeble attempt at what the Board construed as a "secondary source" argument (the primary source being the books of Brandon Sanderson) but offered no proof to support it.

Text Copyright John L. Welch 2024.

TTABlog Test: Is PHYSICIANCARE Merely Descriptive of Software and Services Enabling Manufacturers to Deliver Information to Healthcare Providers?

The USPTO refused registration of the mark PHYSICIANCARE under Section 2(e)(1), finding it merely descriptive of services that enable the management and delivery, on behalf of pharmaceutical and medical device manufacturers, of clinically relevant communications to physicians and other healthcare providers. Applicant LDM Group argued that its mark cannot be descriptive because "it is not providing a medical service," pointing to the Examining Attorney’s “concession” that Applicant’s services “do[] not appear to be a medical service but rather some technological service.” How do you think this appeal came out? In re LDM Group, LLC, Serial No. 97184496 (October 24, 2024) [not precedential] (Opinion by Judge Jessica B. Bradley).

The Examining Attorney maintained that PHYSICIANCARE does not create a unique, incongruous, or nondescriptive meaning, but rather retains the descriptive meaning of the individual terms, "refer[ring] to how applicant’s healthcare related software and technology services are for assisting physicians in providing care to patients."

LDM Group asserted that the “function” of its services “is to provide product information from a pharmaceutical manufacturer to a physician, not to dictate the care provided to a patient,” and thus the mark PHYSICIANCARE is not merely descriptive of its “technology or software service.”

The Examining Attorney pointed to certain statements on LDM Group's website referring to helping patients, but the Board found that "these statements confirm the non-descriptive meaning. They inform relevant purchasers (i.e., the pharmaceutical and medical device manufacturers providing the medical and clinical information) that the medical and clinical information transmitted by Applicant’s services is used by physicians to care for patients."

The Board found that purchasers must engage in a multi-step analysis to arrive at the meaning proposed by the Examining Attorney.  "The first immediate step is identified by the services in the application, namely, that the 'website' and 'application programming interface' 'deliver[] clinically relevant communications' from 'pharmaceutical and medical device manufacturers' 'to physicians and other healthcare providers.'" In the second or third step, the physician reviews the communications and provides care to a patient. "This type of multi-stage reasoning supports that Applicant’s mark is suggestive."

Accordingly, Applicant’s mark PHYSICIANCARE, when considered in relation to Applicant’s Identified Services that provide medical and clinical information from pharmaceutical and medical device manufacturers to physicians in order to provide care for patients, presents an incongruous meaning, or at a minimum one that requires “some measure of imagination and ‘mental pause.'"

The Board acknowledged once again the thin line between suggestiveness and mere descriptiveness and its obligation to give the benefit of any doubt to the applicant, "with the knowledge that a competitor of applicant can come forth and initiate an opposition proceeding in which a more complete record can be established.”

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: How did you do? 

Text Copyright John L. Welch 2024.

Precedential No. 26: TTAB Denies Motion to Compel: Responding without Objection to First Set of Discovery Requests does not Preclude Excessiveness Objection to Second Set

The Board denied Opposer 1661's motion to compel discovery responses premised on the unsupported and dubious notion that, once a party responds to a first set of interrogatories or document requests, it cannot object to a second set on the ground that the total number of interrogatories or documents requests exceeds the maximum limit of 75. 1661, Inc. v. TF Intellectual Property Pty Ltd, 2024 USPQ2d 1719 (TTAB 2024) [precedential] (Interlocutory Attorney Jennifer Krisp).

Trademark Rules 2.120 (d) and (e) limit the number of interrogatories and requests for production (RFPs) that a party may serve to 75 (counting subparts). If a party wants to object under these Rules, it must serve a general objection on the ground of excessiveness, rather than responding.

Applicant TFIP responded to 1661's first set of interrogatories and requests for production (RFPs) and did not raise an objection to their number. Opposer 1661 then served second sets of interrogatories and RFPs, to which TFIP objected on the ground that the total number now exceeded 75 for each. 1661 moved to compel responses, claiming that because TFIP did not object to the first sets, it could not object to the second sets on the ground of excessiveness.

In attempting to resolve this dispute, TFIP informed 1661 that it counted the first sets of RFPs and interrogatories as totaling 69 and 68, respectively, and the second sets as totaling 79 and 85, and TFIP provided its counting methodology.

The Board pointed out that TFIP, when responding to the first sets, had "no duty to inform 1661 how it counted, i.e., that it counted some to be compound or have subparts." Then, upon concluding that the second sets pushed the numbers over the limit, TFIP permissibly served its general objections.

Under the Rules, a party has no obligation to inform its adversary of its analysis of the total or its method of counting unless (and until) it believes the total number exceeds the permissible limit. In sum, TFIP did not fail to timely object, and thus did not forfeit its right to serve general objections upon determining the requests exceeded 75 using its counting method.

1661 feebly accused TFIP of "gamesmanship," but the Board observed that "as a practical matter, when served with the first set of requests, TFIP had no basis to believe it needed to or should inform 1661 that it counted therein fewer than 75 requests. As TFIP aptly states, it 'cannot be expected to know 1661’s plans for discovery and whether 1661 even wanted to serve another set of discovery requests.'"

Read comments and post your comment here.

TTABlogger comment: Suppose the original sets had exceeded 75 and TFIP did not object. Could FTIP have objected to further sets on the ground of excessiveness? I think so.

Text Copyright John L. Welch 2024.

TTAB Finds Energy Drinks Related to Nutritional Supplements and Pickles

Beverage behemoth PepsiCo knocked the stuffing out of Defendant Rockstar Industries in this consolidated opposition and cancellation proceeding. The Board granted PepsiCo's petitions for cancellation of three registrations for the mark ROCKSTAR for nutritional supplements and related products, and sustained an opposition to two applications for snack items and pickles, finding confusion likely with PepsiCo's identical mark for energy drinks. This blog post will attempt to hit the "highlights." PepsiCo, Inc. v. Rockstar Industries LLC, Opposition No. 91247241 and Cancellations Nos. 92075918 and 92076204 (October 25, 2024) [not precedential].

Strength of PepsiCo's Mark: As to conceptual strength, the Board found PepsiCo's ROCKSTAR mark to be arbitrary and strong. As to commercial strength, PepsiCo submitted evidence of length of use, sales and advertising figures, consumer exposure through media, athletic sponsorships and popular music, and the other indirect evidence of consumer recognition. The defendants did not provide evidence of third-party uses in the relevant field "that would establish any diminished commercial or marketplace strength of PepsiCo’s ROCKSTAR marks under the sixth DuPont factor." The Board found that PepsiCo’s ROCKSTAR and formative marks enjoy "significant commercial strength." However, due to the lack of "more robust context for the sales and advertising figures, and the reach and impact of the promotional efforts, not at the farthest end of the spectrum of fame."

The Marks: Not much to talk about here. Since the marks are identical, the first DuPont factor weighed "heavily" in favor of PepsiCo.

The Goods: PepsiCo relied on a variety of evidence to establish the relatedness of the goods at issue. It submitted third-party use evidence and 33 third-party registrations in which energy drinks and some of Defendants’ goods appear under the same mark. In addition, cross-promotions between ROCKSTAR energy drinks, Matador beef jerky, Lays potato chips and Doritos tortilla chips "show the relatedness of these food and beverage items."

Turning to pickles and the like, "the evidentiary showing of relatedness specific to these goods is less than for the others." [Not surprising - ed.]. However, the Board found the evidence sufficient "in view of the strength of PepsiCo’s marks and the identicality of PepsiCo’s and Defendants’ marks."

The record establishes that snack foods which could include the pickles, pickled vegetables, or canned fruits and vegetables, are complementary to energy drinks, that energy drinks and various snack foods are promoted together, and that energy drink providers also offer a wide variety of snack foods under the same marks as their energy drinks.

Trade Channels and Classes of Consumers: The evidence showed that the respective goods are offered in some of the same trade channels, and the relevant consumers overlap.

Purchaser Care: The items are inexpensive, and the snack items may be purchased on impulse. As to supplements, consumers may exercise some care. However, the Board must consider the least sophisticated purchaser, and so the Board concluded that this factor is neutral vis-a-vis supplements.

Actual Confusion: Survey evidence supported a finding of likely confusion with respect to meal replacement products, energy bars, and/or dietary and nutritional supplements" that were the subject of the survey. Several examples of actual consumer confusion were "reasonably probative to corroborate the showing under this factor."

Conclusion: Defendants lost.

Read comments and post your comment here.

TTABlogger comment: Pickles, pickled vegetables, or canned fruits and vegetables are complementary to energy drinks? Really?  

Text Copyright John L. Welch 2024.

TTABlog Test: Is This Word-and-Design Mark Confusable with PASION, Both for Cigars?

The USPTO refused to register the composite word-and-design mark shown below, for cigars, finding confusion likely with the registered mark PASION for, inter alia, cigars. Applicant argued on appeal that it had prior use of its mark, that it sells its cigars in two Philadelphia stores and at its website whereas the registrant's cigars are sold in New York City and on its own website, that the websites feature different color schemes, that customers will exercise care in their purchasing decisions, and that evidence of actual confusion was lacking. How do you think this appeal came out? In re Martinez Hand Rolled Cigars, Inc., Serial No. 97479082 (October 23, 2024) [not precedential] (Opinion by Judge Angela Lykos).

(Click on image to enlarge)

The literal portion of applicant's mark comprises the word PASIÓN and the phrases HAND MADE IN NEW YORK CITY, USA and SINCE 1974 MARTINEZ HAND ROLLED CIGARS. All of the words except PASIÓN and MARTINEZ are disclaimed.

Of course, applicant's claim of prior use was irrelevant in this ex parte appeal because it amounted to a collateral attack on the cited registration. The proper vehicle for such a challenge is a petition for cancellation. As to the assertions regarding where the cigars are sold and the color schemes of the websites, those facts also were irrelevant, since it is not permissible to read real-world limitations into the identified goods in the application and/or cited registration. Moreover, since the goods are identical, they are presumed to travel in the same trade channels to the same classes of consumers.

As to purchaser care, the Board found that neither the application nor the cited registration are limited to "high-end" cigars, but rather include inexpensive cigars, and there was no evidentiary basis to conclude that all cigar purchasers are sophisticated in their purchasing. As for the lack of evidence of actual confusion, that assertion is not probative value in an ex parte proceeding where the registrant has no opportunity to be heard on the issue.

Applicant having been given the short end of the licklog with regard to the factors discussed above, the Board now came to a consideration of the marks. Since the goods overlap, the Board observed, a lesser degree of similarity is necessary to support a finding of likely confusion.

The Examining Attorney argued that the marks are similar because the applicant's mark begins with PASIÓN, which is the entirety of the cited mark PASION, and PASIÓN is the dominant portion of Applicant’s mark. The Board pooh-poohed that argument because it amounted to an improper dissection of Applicant’s mark. "Applicant’s composite mark incorporates the cited word mark, but the similarities stop there."

The Board found that the word PASIÓN in Applicant’s mark "blends harmoniously in the eagle depicted above the medallion, making it less perceptible to prospective consumers." In other words, 
the word PASIÓN is “difficult to notice” in the context of the overall commercial impression made by the design elements. The Board therefore rejected the Examining Attorney’s assertion that PASIÓN is the dominant element in Applicant’s mark.

If any literal element dominates at all, it would be the stylized surname MARTINEZ in Old English style font displayed in the medallion. Prospective consumers would be more naturally drawn to this relatively larger and prominently depicted term in the center of the design. The surname MARTINEZ sounds completely different than the cited mark PASION. As a surname, it also evokes a distinct connotation and commercial impression.

The Board concluded that the marks are dissimilar in sight, sound, appearance and connotation. "The unique multi-element design of Applicant’s composite mark contributes to these differences. This DuPont factor strongly weighs against finding a likelihood of confusion."

And so, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: How did you do? If you ordering one of applicant's cigars, what would you ask for?

Text Copyright John L. Welch 2024.

TTABlog Test: Must "CATTLE COMPANY" Be Disclaimed in "ROCK CREEK CATTLE COMPANY" for Real Estate Development Services?

The USPTO refused to register the mark ROCK CREEK CATTLE COMPANY, in standard character and design form, for "Real estate development services, namely, development of a private luxury resort property; real estate development," without a disclaimer of CATTLE COMPANY. The Examining Attorney, pointing to the fact that applicant's services are offered on a site that includes an active cattle ranching operation, concluded that CATTLE COMPANY merely describes the services "because CATTLE COMPANY immediately conveys a business that develops real estate featuring nearby domesticated animals." How do you think this appeal came out? In re Rock Creek Cattle Company, Ltd., Serial Nos. 90439051 and 90439338 (October 22, 2024) [not precedential] (Opinion by Judge Christopher C. Larkin).

The Board first pointed out that the Examining Attorney USPTO bears the burden of proving that the words CATTLE COMPANY in applicant’s mark are merely descriptive of at least one of the services identified in the applications. Any doubt regarding mere descriptiveness must be resolved in applicant’s favor. 

Applicant relied in part on its previously issued (now lapsed) registration of the same composite shown above for "real estate development services, namely, development of a private luxury resort property," one of the two services identified in the current applications, with a disclaimer of COMPANY but not CATTLE COMPANY. The Board was unmoved.

We thus do not know why the USPTO required only a disclaimer of COMPANY, and not CATTLE COMPANY, when it issued the ’129 Registration in 2009 for “real estate development services, namely, development of as private luxury resort property.” We conclude that the USPTO’s issuance of the ’129 Registration for those services without a disclaimer of CATTLE COMPANY does not entitle Applicant ipso facto to another registration of the composite mark for those services without a disclaimer of CATTLE COMPANY.

In short, each application must be examined on its own record.

The Examining Attorney relied most heavily on applicant’s own website for proof of the mere descriptiveness of the wording CATTLE COMPANY in the context of the identified services. The Board noted that in mere descriptiveness cases, the USPTO “commonly looks to an applicant’s website when it is made of record for possible evidence of descriptive use of a proposed mark.”

The evidence showed that the services "are currently rendered only at a single 30,000-acre residential community in Deer Lodge, Montana that . . . contains 225 lots and cabin sites that can be developed, as well as several existing features, including a golf course and golf clubhouse and the working cattle ranch."

The record leaves us with doubt that prospective purchasers of the identified “real estate development services, namely, development of a private luxury resort property” and “real estate development” services at the Deer Lodge development would understand the wording CATTLE COMPANY to “immediately convey[ ] a business that develops real estate featuring nearby domesticated animals.” The identified real estate development services are provided with respect to privately owned land located in certain portions of the Deer Lodge development, not with respect to the existing working cattle ranch at the development, and we have difficulty seeing how prospective purchasers of the identified services would understand from the wording CATTLE COMPANY that their privately owned land to be developed (as opposed to the working cattle ranch itself) “featur[es] nearby domesticated animals.”

The Board again acknowledged the "fine line between suggestive marks and descriptive terms." Giving applicant the benefit of the doubt, the Board found the term CATTLE COMPANY to be suggestive rather than descriptive.

And so, the Board reversed the disclaimer requirement in each case.

Read comments and post your comment here.

TTABlogger comment: Is "Rock Creek" geographically descriptive under Section 2(e)(2)? Doubtful. I thought Rock Creek was in D.C., not Montana. Anyway, what did you think of this refusal? 

Text Copyright John L. Welch 2024.

TTABlog Test: Is FIJIAN SPICE COMPANY for Spices Confusable with FIJI for Drinking Water?

Fiji Water opposed an application to register the mark FIJIAN SPICE COMPANY & Design, shown below, for spices [SPICE COMPANY disclaimed], alleging a likelihood of confusion with its registered mark FIJI for "“natural, spring and artesian water for drinking." Applicant Hitesh Patel employed a rope-a-dope strategy, taking no testimony and submitting no evidence and no trial brief. The Board found that the FIJI mark "falls on the very strong side of the spectrum from very strong to very weak." But are the marks similar enough? Are the goods related? How do think this came out? Fiji Water Company Pte. Ltd. v. Hitesh Patel, Opposition No. 91280233 (October 18, 2024) [not precedential] (Opinion by Judge Martha B. Allard).

Strength of the FIJI Mark: The Board found that, because the term FIJI is geographically descriptive (registered under Section 2(f)), the mark is conceptually weak. Commercially, opposer claimed that the FIJI mark is famous for Section 2(d) purposes, pointing to sales of FIJI water in the United States for more than 18 years, amounting to over 206 million cases, which equates to 3.5 billion individual bottles of water. [17 bottles per case? - ed.]. In addition, substantial advertising expenditures, a long and widespread advertising campaign, high-profile event sponsorship, movie and television placements, and media recognition led the Board to conclude that "the FIJI mark falls on the very strong side of the spectrum from very strong to very weak."

On balance, the evidence regarding the commercial strength of the FIJI term with the identified goods overcomes the mark’s intrinsic shortcoming. As a result, we find that Opposer’s mark is entitled to a broad scope of protection.

The Marks at Issue: Turning to the marks, the Board noted that "[t]he parties’ marks only point of similarity is the geographically significant term FIJI and its variation FIJIAN." It found that "Applicant’s distinctive design has equal importance to the wording due to its sheer comparative size and its location at the top of the mark."

[C]onsidering the marks in their entireties, we find that the remoteness (relative to US consumers) of the Fiji island causes the FIJI and FIJIAN terms to engender different commercial impressions when considered in light of the identified goods. FIJI for water engenders the commercial impression of clear, blue water and, due to its geographical remoteness, it also engenders the commercial impression that the water is untainted and unpolluted. However, in connection with Applicant’s mark, the remoteness of the Fiji islands engenders a different commercial impression, i.e., that of an exotic spice. The tiki design of Applicant’s mark reinforces the exotic nature of the identified goods

Observing that the opposer must "demonstrate that there is confusion as to the source of the goods, and not merely confusion because the parties’ goods may both originate from the same country," the Board concluded that the marks are "more dissimilar than similar."

The Goods: Opposer asserted in its brief that "[w]hile the goods are not related, they are both consumable goods, making it more likely for consumers to think that 'the bottled water people' are now also selling spices." The Board took that as a concession that the goods are not related. In any case, the fact that the goods are both consumables does not mean they are related for Section 2(d) purposes. Since the opposer offered no probative evidence on this point, the Board concluded that the second DuPont factor "weighs heavily against a finding of likelihood of confusion."

Channels of Trade: Opposer submitted evidence as to its channels of trade, but there was no evidence as to the normal channels of trade for applicant's spices. Although the Board "must assume that the parties’ respective goods travel in all the normal channels of trade and to all prospective purchasers for the relevant goods or services, due to the lack of evidence, [it was] unable to compare the normal trade channels for the respective goods. Therefore, this DuPont factor was neutral.

Purchaser Care: Since there was no evidence regarding "purchasing conditions, pricing, and types of purchasers who would purchase Applicant’s identified goods," the Board found this fourth factor to be neutral.

Conclusion: "Due to dissimilarity of the marks and Opposer’s concession that the parties’ goods are not related, we conclude that Applicant’s mark is not likely to cause confusion with Opposer’s mark. In reaching our conclusion, we find that the first and second factors are dispositive and outweigh the other factors, including the fifth factor relating to the fame of Opposer’s mark."

Read comments and post your comment here.

TTABlogger comment: How did you do? Hat tip to FOB Gene Bolmarcich, Applicant's cornerman in this one-sided TTABout.

Text Copyright John L. Welch 2024.

Replay of and Slides from Michael Keyes Webinar on "Avoiding Consumer Survey Pitfalls at the TTAB"

In case you missed it, Dorsey IP litigation partner and consumer survey expert, Michael Keyes, has provided us with a link (here) to a replay of last week's entertaining and informative webinar entitled "Avoiding Consumer Survey Pitfalls at the TTAB." You may also download a pdf of his slides. Again, thank you Mike.

Consumer surveys are on the rise at the TTAB. Whether they are being offered to prove genericism, secondary meaning, or likelihood of confusion, consumer surveys can play a pivotal role in the outcome of trademark proceedings. All too often, though, parties spend significant time and resources developing survey research only to have the TTAB reject it – or significantly discount its value. Don’t let this happen to you!

Drawing on his background in survey research and nearly 25 years as a trademark trial lawyer, Mike will provide an engaging and thoughtful perspective on important topics and critical issues affecting the use of consumer surveys before the TTAB. Whether you are a seasoned pro or are just getting started on developing survey research, this presentation has something for everyone.

Read comments and post your comment here.

Text Copyright 2024.

TTABlog Test: Must "Pop! Popcorn" Be Disclaimed in "Harry & David Pop! Popcorn" for Popcorn?

In its application to register the mark HARRY & DAVID POP! POPCORN for popcorn, Harry and David, LLC disclaimed the word POPCORN but declined to disclaim the term POP! POPCORN, arguing that POP! does not merely describe a feature of the "applied-for" goods. The USPTO refused to register the mark because of that failure to disclaim. How do you think Harry and David's appeal came out? In re Harry and David, LLC, Serial No. 97680254 (October 17, 2024) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

"Merely descriptive terms are unregistrable under Trademark Act Section 2(e)(1), and therefore are subject to disclaimer if the mark is otherwise registrable." Trademark Act Section 6(a). "Failure to comply with a disclaimer requirement is a ground for refusal of registration."

However, a disclaimer is not required "if the term is combined or merged together with other elements of a composite mark, so that they form a unitary whole having a distinct meaning that itself is not merely descriptive."

A unitary mark has certain observable characteristics. Specifically, its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its own independent of the meaning of its constituent elements. In other words, a unitary mark must create a single and distinct commercial impression.

Dictionary evidence submitted by both the Examining Attorney and Harry and David indicated that one of the definitions of “pop” is “to cause to explode or burst open,” as in “popped some popcorn." That was not the end of the inquiry, however. 

The Board found that the HARRY & DAVID POP! portion of the subject mark forms a unitary, nondescriptive expression such that disclaimer of exclusive rights in POP! POPCORN is not required.

Notably, POP! immediately follows the words HARRY & DAVID. In this location, the term POP!, with its exclamation point, forms an interjection, modifying and linking the preceding words together in a distinct grammatical phrase, HARRY & DAVID POP! *** The exclamation point sets these words apart, physically and conceptually, from the trailing word POPCORN, which is generic for the applied-for goods.

The Board noted several other definitions for the word "pop," including "a small portion of something that makes a vivid impression, "something such as a color that looks very bright and noticeable next to something else," and "power or strength." The alternative definitions further supported the Board's conclusion that HARRY & DAVID POP! has “a distinct meaning of its own independent of the meaning of its constituent elements” because the phrase indicates "a source of a handy snack, striking flavors and/or memorable treats or gift items."

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: How did you do? I think there should have been two disclaimers: one for POP! and one for POPCORN, rather than one disclaimer of POP! POPCORN. The packaging supports my approach.

PS: I don't like the term "applied-for goods." How does one apply for goods?

Text Copyright John L. Welch 2024.

Recommended Reading: Farmer and Bosnic: "2023-24 Trademarks Developments"

John B. Farmer, the founder of Leading Edge Law Group, PLC, in Richmond, Virginia, has for more than 25 years written a monthly column for the Richmond Times on breaking legal issues in the e-commerce, intellectual property and high-tech fields. He also lectures annually for the Virginia bar on trademark law developments. His highly practical analysis and advice is always worth reading. John has kindly given me permission to provide a link to his latest effort, co-authored with his colleague, Dana Bosnic, entitled "2023-24 Trademark Developments." [pdf here].

John is a former Chairman of Trademark Public Advisory Committee (TPAC) and a frequent lecturer on trademark and branding issues. I thank him for allowing me to provide TTABlog readers with his insightful commentary on what's going on in the trademark world, and particularly at the USPTO and the TTAB. Here is the Table of Contents for this article.

Contents

I. Recent USPTO Administrative Developments That Affect Your Practice.

II. The Free Speech Clause of the First Amendment vs. Lanham Act. 

III. Recent Evolution on When a Term or Phrase Fails to Function as a Mark and Cannot Be Registered. 

IV. Pitfalls to Avoid in Seeking Mark Registration Concerning Establishing Mark Use or an Intent To Use. 

V. Latest Developments in the Effectiveness of Citing Third-Party Mark Registration and Use Evidence When Litigating Over Mark Registration Rights. 

VI. Attacking a Blocking Registration By Trying To Pare Back Its Goods/Services ¬ When Does That Work? VII. Settlement And Coexistence Agreements – How To Avoid Barring Your Future Mark Policing Efforts. 

 VIII. The Cutting Room Floor: Quick hits on other important developments. 

IX. Periscope: Big Case to Watch.

2024 Leading-Edge Law Group, PLC. All rights reserved.

TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed on Appeal?

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal about 95% of the time just by looking at the marks and the goods/services. In the past decade, about 90% of Section 2(d) refusals have been affirmed on appeal. So, if you say "affirmed" you will be right 90% of the time! Anyway, here are three recent Board decisions, at least one of which resulted in a reversal. How do you think they came out?

In re Western Workhorse Management, LLC, Serial No. 88008152 (October 16, 2024) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal of the mark NXT for "management of multi-tenant living facilities owned by others, namely, building management" in view of the registered mark NXT CAPITAL, in both standard-character and the stylized form shown below, for "commercial lending services and financial investment services; commercial real estate lending and investment services; and institutional investment management and advisory services related to the foregoing" [CAPITAL disclaimed]].

In re Hussmann Corporation, Serial No. 97530166 (October 16, 2024) [not precedential] (Opinion by Judge Mark Lebow) [Section 2(d) refusal of the mark STORECONNECT for "Platform as a service (PAAS) featuring computer software platforms for providing analytics for commercial refrigeration equipment in the food and beverage retailing industry" in view of the identical mark registered for "Downloadable and recorded data processing software for use in . . . inventory management."]

In re Robert Greaves, Serial No. 90248955 (October 2, 2024) [not precedential] (Opinion by Judge Christen M. English). [Section 2(d) refusal of the mark TIMBERLINE PATIO COVERS for “consultancy, planning, laying out, construction and installation, and construction management, supervision, and project management, all of the foregoing in the field of construction, maintenance, and repair of free-standing gazebos or covers for decks, porches, and patios for outdoor spaces of residential and commercial buildings” [PATIO COVERS disclaimed], in view of the registered mark TIMBERLYNE GROUP for "building construction; general construction contracting management; building construction consulting; construction of complete post-frame, post and beam, mortise and tenon, and mass timber buildings and structures,” and for "architectural design services; construction drafting; interior design assist, technical consultation in the field of architecture, engineering surveying, and engineering" [GROUP disclaimed].]

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2024.

TTAB Denies Motion For Relief from Judgment After Applicant Failed to Appoint U.S. Counsel

When Chinese Applicant Terasako Technology's attorney withdrew from this opposition, Terasako was given time to appoint new U.S. counsel to satisfy Rule 2.11. When Terasako did not respond, the Board issued a show cause order in November 2023, asking "why the notice of opposition should not be sustained based on Applicant’s failure to appoint U.S. counsel." Again, Terasako failed to respond, nor did counsel appear, and so, on April 3, 2024 the Board entered judgement against Terasako, sustaining the opposition. New counsel appeared on July 2nd and on August 29th he filed a motion for relief from judgment under FRCP 60 (b). The Board denied the motion. Yong Tang v. Terasako and Shenzhen Dekelan Technology Co., Ltd., Opposition No. No. 91285334 [not precedential].

Relief from a final judgment is an extraordinary remedy to be granted only in exceptional circumstances or when other equitable considerations exist.

Fed. R. Civ. P. 60(b)(1) permits the Board to "relieve a party or its legal representative from a final judgment, order, or proceeding" because of "mistake, inadvertence, surprise, or excusable neglect." Terasako’s motion was timely because it was filed within one year of judgment.

The Board applied the Supreme Court's Pioneer analysis to determine whether Terasako's delay in appointing U.S. counsel was the result of "excusable neglect."

[A]t bottom [the decision is] an equitable one, taking account of all relevant circumstances surrounding the party's omission. These include. . . [1] the danger of prejudice to the [nonmovant], [2] the length of the delay and its potential impact on judicial proceedings, [3] the reason for the delay, including whether it was within the reasonable control of the movant, and [4] whether the movant acted in good faith. (quoting Pioneer).

Several courts have stated that the third Pioneer factor, the reason for the delay and whether it was in the control of the moving party, might be the most important factor.

As to the first factor, since Opposer Yong Tang did not respond to the FRCP 60(b) motion, there was no evidence of prejudice, and so this factor favored Terasako.

As to the second, the motion was filed five months after judgment was entered. Moreover, granting the motion would require resetting the schedule to account for suspension of the proceeding from more than a year ago. "This would be significantly detrimental to the Board’s orderly administration of this proceeding because, when suspended, the next deadline was initial disclosures, but had Applicant timely appointed U.S. counsel, this proceeding could be in the trial briefing stage." And so, this factor weighed against a finding of excusable neglect.

As to the third factor, Terasako asserted that it did not understand the TTAB procedures but the Board pointed to five orders concerning the U.S.-counsel requirement for foreign-domiciled parties. Terasako's post-judgment submissions did not explain "what, if any, efforts Applicant undertook in the many months preceding judgment to secure U.S. counsel; in fact, it appears Applicant did not begin contacting potential U.S. counsel until after judgment was entered." In short, Terasako did not produce any evidence "demonstrating that its months-long failure to comply with the U.S.-counsel requirement, of which it was made aware a number of times, was outside Applicant’s reasonable control." And so, this factor weighed against Terasako.

Finally, because there was no evidence of Terasako’s good or bad faith, the fourth factor was neutral.

Balancing the Pioneer factors, the Board concluded that Terasako's failure to present an acceptable explanation for its failure to timely appoint U.S. counsel, combined with the length of the delay caused by this failure, outweighed any lack of prejudice to opposer. And so, the Board denied the motion for relief from judgment.

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TTABlogger comment: You can't just fiddle and diddle for a year and expect the Board to be sympathetic.

Text Copyright John L. Welch 2024.

TTABlog Test: Three Recent Section 2(d) Oppositions - How Do You Think They Came Out?

The outcome of a Section 2(d) opposition is more difficult to predict than a Section 2(d) appeal. Lack of actual confusion may come into play, for example, and the parties may enter into stipulations or make admissions that significantly affect the result. By my estimate, Section 2(d) oppositions have been sustained about 80% of the time so far this year, which may indicate how the deck is stacked against the applicant in th likelihood-of-confusion analysis. Here are three recent Board decisions. How do you think they came out?

Flowers Bakeries Brands, LLC v. OWN Your Hunger Inc., Opposition No. 91278157 (October 3, 2024) [not precedential] (Opinion by Judge Melayne K. Johnson). [Opposition to registration of WONDERSPREAD for "nut butters" in view of the registered mark WONDER for bread and bakery goods.]

BrightView LLC v. BrightView Behavioral Health Center, Inc., Opposition No. 91281647 (October 8, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande). [Opposition to registration of BRIGHTVIEW BEHAVIORAL HEALTH for "Behavioral health services; Behavioral health services in the nature of child disability services" [BEHAVIORAL HEALTH disclaimed] in view of the common law mark BRIGHTVIEW for addiction treatment service.]

Ateara L. Garrison v. Neidy E. Hornsby, Opposition No. 91269392 (October 11, 2024) [not precedential] (Opinion by Judge Christopher C. Larkin). [Opposition to registration of GUARD YOUR GENIUS WITH NOIR IP in view of the registered mark GUARD YOUR GIFTS, both for legal services.]

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TTABlogger comment: How did you do?.

Text Copyright John L. Welch 2024.

Precedential No. 25: TTAB Awards Priority to Opposer over Its Employee, Sustains Opposition to DISTRICT OF FASHION Mark

In a highly fact-dependent, yet precedential, decision, the Board sustained this opposition to registration of the mark DISTRICT OF FASHION for fashion show exhibitions, finding that Opposer "BID" had priority of use of the mark DOWNTOWNDC DISTRICT OF FASHON for the same services, and that any use of the latter mark by Applicant Clarke prior to her application filing date occurred as an employee of BID and therefore inured to BID's benefit. The Board then found confusion likely between the two marks. DowntownDC Business Improvement District v. Roquois Y. Clarke, 2024 USPQ2d 1778 (TTAB 2024) [precedential] (Opinion by Judge Cheryl S. Goodman).

Applicant Clarke was hired by Opposer BID as a "Digital Content and Design Assistant." Because of her fashion industry experience, she was assigned to three fashion show events in 2018 and 2019, for which BID expended "significant resources." In 2021, Clarke's position was eliminated and she was let go. In May 2021, Clarke filed the subject intent-to-use application to register the mark DISTRICT OF FASHION.

Clarke admitted that she created the mark DISTRICT OF FASHION "during the temporal period she was employed by Opposer," but claimed that she worked on the project during off-hours, created the DISTRICT OF FASHION "brand identity" so as to allow any entity to sponsor the fashion show.

Both parties relied on the same use of the mark DOWNTOWNDC DISTRICT OF FASHION as the basis of their priority claims. Clarke admitted that she never used that mark apart from BID's use for the 2018 and 2019 fashion shows. However, she argued that she created the mark outside of the scope of her employment, that the mark was not assigned to BDI, and that any use by BDI was by implied license and inured to her benefit. In sum:

[R]esolution of the priority issue depends on what the record reveals as to whether the DOWNTOWNDC DISTRICT OF FASHION name and services were developed in the course of Applicant’s employment, outside the scope of her employment, and/or whether there was an implied license between Applicant and Opposer with the benefit of Opposer’s use of DOWNTOWNDC DISTRICT OF FASHION inuring to Applicant’s benefit.

The Board found that BDI assigned the fashion work to Clarke and had control over the work performed. BDI regularly approved tasks and expenses for the events. There was "no question that Applicant's work on promoting and producing the fashion shows was as Opposer's employee." The Board declined to give "great weight to the fact that some of the work was performed after hours since, inter alia, Clarke was "tasked as a dedicated staff member" and received bonuses for her efforts on the fashion shows. The Board concluded that Clarke "performed the fashion show work within the scope of her employment."

Under such circumstances, there is a prima facie presumption that any use of DOWNTOWNDC DISTRICT OF FASHION “during this period …. was done so [by Applicant] as a representative or an agent of opposer, on behalf of opposer, and in furtherance of opposer’s business; and any goodwill created by such use inured to opposer’s benefit.” Scranton Plastic Laminating, 1975 TTAB LEXIS 85, at *26-27.

It was then Clarke's burden to overcome this presumption "by presenting competent and convincing proof that opposer's activities were as a licensee under applicant's control and supervision." The evidence showed that Clarke was BDI's representative and acted at the direction of BDI. "Opposer, not applicant, stood behind the services offered under the mark DOWNTOWNDC DISTRICT OF FASHION." The Board concluded that "the parties’ objective intentions and expectations, as evidenced by Applicant’s and Opposer’s conduct, do not reflect an implied license but that Opposer owned the DOWNTOWNDC DISTRICT OF FASHION mark."

Since the uses of the mark in 2018 and 2019 inured to the benefit of BID, and since Clarke may rely only on her 2021 filing date as her (constructive) first use date, Opposer BID has priority for the DOWNTOWNDC DISTRICT OF FASHION mark.

Turning to the issue of likelihood of confusion, the Board wasted no time in sustaining BDI's Section 2(d) claim.

Because DISTRICT OF FASHION forms a significant portion of Opposer’s mark and DISTRICT OF FASHION is the entirety of Applicant’s mark, we find the marks as a whole are similar in appearance, sound, connotation and commercial impression. The additional wording DOWNTOWNDC in Opposer’s mark does not significantly alter the commercial impression, as purchasers will likely take DOWNTOWNDC as simply identifying the location of the services or their connection to the District of Columbia. Consumers thus are likely to view the two marks as variations of each other, but pointing to a single source.

Because the parties' services overlap, the second DuPont factor "weighs heavily" in favor of a finding of likelihood of confusion. Likewise, the channels of trade and classes of consumers overlap, and so the third factor also weighs in favor of finding a likelihood of confusion.

All of the DuPont factors for which there is evidence in the record—the similarity of the marks, the in-part identical nature of the services, the trade channels and classes of consumers—favor likelihood of confusion. In re Charger Ventures LLC, 64 F.4th 1375, 1381 (Fed. Cir. 2023). We therefore conclude that confusion is likely.

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TTABlogger comment: A fifty-page opinion reaching the inevitable result. Why precedential?

Text Copyright John L. Welch 2024.

TTABlog Webinar: Michael Keyes on "Avoiding Consumer Survey Pitfalls at the TTAB"

The TTABlogger is pleased to announce that Dorsey IP litigation partner and consumer survey expert, Michael Keyes, will provide my dear readers (and anyone else) with an entertaining webinar on "Avoiding Consumer Survey Pitfalls at the TTAB" on Wednesday, October 16, 2024, at 12:00PM - 1:00PM ET, 11:00 AM CT, etc. To register, please click here.

Consumer surveys are on the rise at the TTAB. Whether they are being offered to prove genericism, secondary meaning, or likelihood of confusion, consumer surveys can play a pivotal role in the outcome of trademark proceedings. All too often, though, parties spend significant time and resources developing survey research only to have the TTAB reject it – or significantly discount its value. Don’t let this happen to you!

Drawing on his background in survey research and nearly 25 years as a trademark trial lawyer, Mike will provide an engaging and thoughtful perspective on important topics and critical issues affecting the use of consumer surveys before the TTAB. Whether you are a seasoned pro or are just getting started on developing survey research, this presentation has something for everyone.

Read comments and post your comment here.

Text Copyright 2024.

TTABlog Test: Three Section 2(d) Appeals - Affirmed or Reversed?

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal about 95% of the time just by looking at the marks and the goods/services. Here are three recent Board decisions. How do you think they came out?

In re Hi-Tech Pharmaceuticals, Inc., Serial No. 97092374 (October 7, 2024) [not precedential] (Opinion by Judge Robert H. Coggins). [Section 2(d) refusal of the mark EQUIPOISE for "dietary supplements" in view of the registered mark AQUIPOISE for "health food supplements; vitamins; dietary and nutritional supplements; vitamin and mineral supplements."]

In re In re Muhammad A Al-Ansari, Dallas W. Patterson and Gordon K. Skinner, Serial No. 97617649 (October 8, 2024) [not precedential] (Opinion by Judge Catherine Dugan O'Connor) [Section 2(d) refusal of the mark THANKS SKATEBOARDING CLUB for "Clothing, namely, t-shirts, hooded sweatshirts, crewnecks, and shorts; socks" and for "Skateboards" [SKATEBOARDING disclaimed] in view of the registered mark THANK YOU SKATEBOARDS for "clothing; footwear; headwear; jackets; short-sleeved or long-sleeved T-shirts; shorts; socks; sweaters; sweatpants; tops as clothing" and for "Skateboard decks; skateboard grip tapes; skateboard trucks; skateboard wheels; skateboards; bags for skateboards" [SKATEBOARDS disclaimed]].

In re In re Cratus Enterprises LLC dba Vintage Muscle, Serial No. 90873360 (October 9, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen). [Section 2(d) refusal of the mark VINTAGE MUSCLE for "nutritional and health food supplements featuring anabolic precursor and pro-hormone formulations" [MUSCLE disclaimed] in view of the registered mark VINTAGE BURN for “dietary and nutritional supplements."]

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TTABlogger comment: How did you do? See any WYHA?s.

Text Copyright John L. Welch 2024.

"Decisions of the Federal Courts and the Trademark Trial and Appeal Board on Registrability Issues July 2023 to August 2024"

Here [pdf] for your reading pleasure is the article/outline that I provided in connection with my presentation yesterday at the All Ohio Annual Institute on Intellectual Property (AOAIOIP). It summarizes the "Decisions of the Federal Courts and the Trademark Trial and Appeal Board on Registrability Issues July 2023 to August 2024." Enjoy!

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Text Copyright John L. Welch 2024.

In Second Stage of Cancellation Proceeding, TTAB Deems RASCAL HOUSE Abandoned for Restaurant Services

The parties to this cancellation proceeding opted to litigate the case under the Accelerated Case Resolution (ACR) regime. In accordance with the parties' stipulation, the case was divided into two stages, the first stage addressing the issue of whether Respondent Jerry's Famous Deli had ceased use of the registered marks RASCAL HOUSE, WOLFIE COHEN’S RASCAL HOUSE, and the word-and-design mark shown below, for restaurant services. The Board concluded that Jerry's had indeed stopped using the mark for a period of more than three years. [TTABlogged here]. In this second stage, the Board concluded that Jerry's failed to prove an intent to resume use that would avoid a finding that the marks were abandoned. Rascal House, Inc. v. Jerry’s Famous Deli, Inc., Cancellation Nos. 92075125, 92075180, and 92075185 (September 30, 2024) [not precedential] (Opinion by Judge David K. Heasley).

Section 45 of the Trademark Act provides that a mark shall be deemed abandoned: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for three consecutive years shall be prima facie evidence of abandonment. 

The proof that Respondent Jerry's failed to use the marks for a period of more than three years established a prima facie case of abandonment. The burden of production then shifted to Jerry's to rebut that presumption by submitting evidence of its intent to resume use. The burden of persuasion, however, remained with the petitioner.

“To prove excusable nonuse,” the Federal Circuit states, “the registrant must produce evidence showing that, under his particular circumstances, his activities are those that a reasonable business[], who had a bona fide intent to use the mark in United States commerce, would have undertaken.” “The intent must be to resume use of the mark within the reasonably foreseeable future once the reason for suspension abates.”

Respondent's president declared that his company always intended to resume use, but if a mere declaration of intent were enough to avoid abandonment, then no mark would ever be abandoned. Respondent also pointed to the display of the marks on menus and signage at its other establishments, but that was not probative:

Respondent may have continued to display the RASCAL HOUSE marks at its other establishments, along with other marks (such as PUMPERNIKS, a brand under which Respondent never provided services) because it wanted the residual goodwill that might emanate from those brands. But “residual goodwill does not negate a finding of abandonment based on nonuse.” * * * [T]hey do not reflect present use in commerce, much less intent to resume use.

Respondent established no special external circumstances that compelled it to cease using the RASCAL HOUSE marks.

Respondent’s evidence falls far short of establishing intent to resume use. Its evidence shows an intent to continue use of other marks, such as EPICURE or JERRY’S FAMOUS DELI, but not the RASCAL HOUSE marks. Respondent’s testimony relies exclusively on party witnesses, its president and former president, with no corroboration from nonparty witnesses or documentation focusing on the RASCAL HOUSE marks. 

Respondent’s evidence showed only "vague, desultory communications concerning potential use of some marks, not serious, sustained efforts directed toward execution of lease agreements for RASCAL HOUSE restaurants." "Importantly, Respondent’s efforts, feeble as they were, did not take place until 2014, six years after the RASCAL HOUSE restaurants closed in 2008."

Finally, Respondent's recent post-cancellation efforts to resurrect the RASCAL HOUSE marks, which took place in 2023, constituted "a new and separate use that does not cure the abandonment."

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TTABlogger comment: Bifurcation worked well here. You may recall that earlier this month, the Board bifurcated the VELCRO case into two stages: entitlement to a statutory action, and genericness. [TTABlogged here].

Text Copyright John L. Welch 2024.

TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal about 95% of the time just by looking at the marks and the goods/services. Here are three recent Board decisions, at least one of which resulted in a reversal. How do you think they came out?

In re Livewire Drinks, Inc., Serial No. 88795611 (October 4, 2024) [not precedential] (Opinion by Judge Jessica B. Bradley). [Section 2(d) refusal of the mark LIVEWIRE for "Alcoholic beverages, not including beer" in view of the registered mark MOUNTAIN DEW LIVEWIRE for "soft drinks, and syrups and concentrates for making the same."]

In re Everwest Technologies - FZCO, Serial Nos. 97417414 and 97417422 (October 2, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin) [Section 2(d) refusals of the mark MYQRCODE.COM in standard characters and in the design form shown below, for "Providing on-line non-downloadable software for generating machine-readable barcodes; Software as a service (SAAS) services featuring software for generating machine-readable barcodes” (both with QRCODE disclaimed), in view of the registered mark QR CODE (on the Supplemental Register) for in-part legally identical services.]

In re New Roots Herbal Inc., Serial No. 97205991 (September 30, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of the mark PROBIOTIC INTENSITY for "Dietary and nutritional supplements containing probiotics for humans; Probiotic supplements for humans" (PROBIOTIC disclaimed) in view of the registered mark INN TENSITY for "dietary supplements."]

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2024.

TTABlogger Presentation: October 9th -"Meanwhile Back at the TTAB" - All Ohio Annual Institute on Intellectual Property

Yours truly, the TTABlogger, will give a virtual presentation entitled "Meanwhile Back at the TTAB" on October 9th at 2:45 PM at the 34th All Ohio Annual Institute on Intellectual Property (AOAIOIP) - part of a two-day virtual webinar (October 8 and 9) covering recent developments in patent, trademark, copyright and advertising law. A brochure describing the sessions may be found here. Register here.

Text Copyright John L. Welch 2024.

Consent Agreement Trumps Other DuPont Factors in Reversal of Section 2(d) Refusal

The Board reversed a Section 2(d) refusal to register WATERLOO SPIKED SPARKLING WATER for various alcoholic beverages (SPIKED SPARKLING WATER disclaimed), finding confusion unlikely with the registered mark WATERLOO NO.9 GIN for "spirits" [GIN disclaimed]. Under the 10th DuPont factor, the Board found that applicant and the cited registrant "carefully negotiated and crafted a mutually satisfactory written agreement that there is no likelihood of confusion." Quoting Bongrain, the Board observed: "[t]he parties operate in the 'real world,' and are thus in a 'better position to know the real life situation than bureaucrats or judges.'" In re Waterloo Sparkling Water Corp., Serial No. 90843090 (September 30, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

In weighing the probative value of a consent agreement, the Board considers the following non-exclusive factors: (1) Whether the consent shows an agreement between both parties; (2) Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels; (3) Whether the parties agree to restrict their fields of use; (4) Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and (5) Whether the marks have been used for a period of time without evidence of actual confusion. See generally, In re Four Seasons Hotels Ltd.

The Examining Attorney, on the other hand, argued that the agreement is a “naked consent” and does not overcome the likelihood of confusion, because it neither (1) sets forth reasons why the parties believe there is no likelihood of confusion, nor (2) describes the arrangements undertaken by the parties to avoid confusing the public

The Board, acknowledging that the agreement does not "explicitly address" factors 2-5 in the same terms as Four Seasons, nonetheless found that the agreement "is more than a naked consent and is clothed."

[P]rovisions regarding efforts to prevent confusion or to cooperate and take steps to avoid future confusion “may render the agreement more probative, but it is not an essential provision for the agreement to have probative value." Obviously, "the more information that is in the consent agreement as to why the parties believe confusion to be unlikely, and the more evidentiary support for such conclusions in the facts of record or in the way of undertakings by the parties, the more we can assume that the consent is based on a reasoned assessment of the marketplace, and consequently the more weight the consent will be accorded."

The Board found that the parties "plainly intended that Registrant’s current use and registration of WATERLOO marks for 'spirits' is permitted under agreed-upon conditions." The Board inferred from the requirement to deliver COLA labels to applicant that the parties have a system to avoid confusion and that these provisions "are substantively and essentially efforts to avoid actual and future confusion under factor 4 of Four Seasons."

Following the lead of Applicant and Registrant, we find the agreement more important than the similarities we may see in the marks, because the parties have agreed to minimize consumers’ exposure to the similarities, and draw their attention to dissimilarities, not just between Applicant’s and Registrant’s marks, but importantly between Applicant’s and Registrant’s “real world” marketing practices that impact (reduce) the likelihood of confusion.

[W]e accord this agreement weight and find the consent agreement supports Applicant’s position of no likelihood of confusion based on the reasoned analysis of Applicant and Registrant who understand the nature of their businesses. We should not substitute our views for theirs.

In short, we accept Applicant’s and Registrant’s views concerning the marks over any of our own, given the protections and restrictions set forth in the agreement.

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TTABlogger comment: In my view, naked consents are probative only in nudist colonies.

Text Copyright John L. Welch 2024.

TTABlog Webinar: Michael Keyes on "Avoiding Consumer Survey Pitfalls at the TTAB"

The TTABlogger is delighted to announce that Dorsey IP litigation partner and consumer survey expert, Michael Keyes, will provide my dear readers (and anyone else) with an entertaining webinar on "Avoiding Consumer Survey Pitfalls at the TTAB" on Wednesday, October 16, 2024, at 12:00PM - 1:00PM ET, 11:00 AM CT, etc. To register, please click here.

Consumer surveys are on the rise at the TTAB. Whether they are being offered to prove genericism, secondary meaning, or likelihood of confusion, consumer surveys can play a pivotal role in the outcome of trademark proceedings. All too often, though, parties spend significant time and resources developing survey research only to have the TTAB reject it – or significantly discount its value. Don’t let this happen to you!

Drawing on his background in survey research and nearly 25 years as a trademark trial lawyer, Mike will provide an engaging and thoughtful perspective on important topics and critical issues affecting the use of consumer surveys before the TTAB. Whether you are a seasoned pro or are just getting started on developing survey research, this presentation has something for everyone.

Read comments and post your comment here.

Text Copyright 2024.