November 2024 Update of TMEP Now Available

The November 2024 version of the Trademark Manual of Examining Procedure (TMEP) is now available on the USPTO website (here).

Another Strategic Partners Argument Fails: TTAB Affirms Refusal of "REACH & Design" for Vehicle Parts

The Board upheld a Section 2(d) refusal to register the mark shown below, for vehicle radiators and air conditioner parts, finding confusion likely with the registered mark REACH for "Motor vehicles, namely, automobiles, trucks, vans, sport utility vehicles and structural parts therefor; trucks and structural parts therefor; vans and structural parts therefor." Applicant Reach International argued that, under the Strategic Partners approach, its prior registration for a similar mark should serve to overcome the refusal. The Board, however, found that Reach overreached. In re Reach International, Inc., Serial No. 97335655 (November 25, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).

In Strategic Partners, the Board faced "the unique situation presented by the coexistence of applicant’s existing registration with the cited registration for over five years, when applicant’s applied-for mark is substantially similar to its existing registered mark, both for identical goods.” Strategic Partners, 102 USPQ2d at 1400. The applicant owned a registration for the mark ANYWEARS, which was substantially similar to the mark ANYWEAR that applicant sought to register, for the same goods (footwear).

Here, Applicant Reach owned a registration for the mark shown immediately below. That registration issued in 2005 but expired in 2016 when it wasn't renewed.

Examining Attorney Nathaniel Pettican argued that, unlike in Strategic Partners, the applicant's earlier registration had co-existed on the Trademark Register for only four years (not five) and furthermore that the earlier registration here had expired. The Board, however, agreed with Reach that, under the case law, five years of co-existence is not required. But a live registration is necessary in order to invoke Strategic Partners.

The Strategic Partners holding is based, in part, on the view that the owner of the cited registration in that case faced no new or different harm if a substantially similar mark was registered again for the same goods. The prior registration owned by the applicant in Strategic Partners had been registered for more than five years, which meant the owner of the cited registration could no longer petition to cancel the applicant’s prior registration.

In this case, Applicant does not own a prior registration. "The cited registration stands alone, at least with respect to any registrations owned by this Applicant. If the registration of Applicant’s new version of its mark causes harm to the owner of the cited registration, that will be a new harm, not duplicative of any existing situation."

[W]e have found no Board decision applying this holding to a case where the applicant’s prior registration was cancelled, nor does Applicant cite to any. In at least three recent decisions (all nonprecedential), the Board distinguished Strategic Partners for the same reason we do here: because the prior registration was cancelled.

The Board further noted "another important distinction" between this appeal and the “unique situation” in Strategic Partners. Reach is currently seeking registration in two classes (International Classes 7 and 11), but its cancelled registration identified goods only in International Class 7. In short, the subject application includes goods that did not appear in the deceased registration. 

The Board swiftly found the marks similar, the goods related, and the trade channels overlapping. And so, it affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Strategic Partners provides a very small loophole in the USPTO's Section 2(d) net.

Text Copyright John L. Welch 2024.

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

The TTAB affirmance rate for Section 2(d) appeals continues to run at about 90% so far this year. Here are three recent Board decisions, at least one of which reversed the refusal. How do you think they came out?

In re Agrinova Science S.A., Serial No. 97636947 (November 12, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin). [Section 2(d) refusal of the mark AGRINOVA SCIENCE & Design for, inter alia, fertilizer, compost, and agricultural chemicals and for on-line retail store services featuring chemicals of all kinds for use in agriculture, horticulture and forestry [SCIENCE disclaimed], in view of the registered mark AGRINOVA for "Fresh agricultural products, namely, vegetables, fruits, herbs, living grass, natural turf, and seeds, none of the foregoing including potatoes."

In re iPayed, LLC, Serial No. 90855472 (November 21, 2024) [not precedential] (Opinion by Judge Christen M. English) [Section 2(d) refusal of the mark shown below, for "bank tendering, namely, tendering of money; banking; electronic banking via a global computer network; home banking; online banking; savings bank services" [EBANK disclaimed], in view of the registered mark IPAY for, inter alia, "providing financial information" and "financial planning and investment advisory services."]

In re A JW Production, LLC, Serial No. 97426636 (November 21, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of the mark ONE DROP CONFERENCE for "Business and direct sales training, and distributing course materials in connection therewith; educational services, namely, developing, arranging, and conducting business conferences, seminars, classes, workshops, training, and programs in the fields of business, leadership,and entrepreneurship, none of which relate to humanitarian projects" [CONFERENCE disclaimed], in view of the registered mark ONE DROP for “business management, planning, and development of humanitarian projects for improving quality of life and living conditions of underprivileged populations” and for “charitable fund raising; financing of humanitarian projects for improving quality of life and living conditions of underprivileged populations."

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2024.

Precedential No. 28: TRIPLEYE Not Confusable With 3RD EYE for Optical Monitoring Software and Services, Says TTAB

In a rather straightforward, yet precedential decision, the Board dismissed a Section 2(d) opposition to registration of the mark TRIPLEYE for optical monitoring software and equipment and related technical services, finding confusion unlikely with the registered mark 3RD EYE for vehicle surveillance and detection systems and related hardware, software and software-based services. The Board found the differences in sound, appearance, connotation, and commercial impression between the marks to be the most important factor in reaching its conclusion. The Heil Co. v. Tripleye GmbH, 2024 USPQ2d 2010 (TTAB 2024) [precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

Evidentiary Rulings: Opposer Heil was knocked back on its heels by two evidentiary rulings. First, the Board tossed out its claim to a "family of marks" because Heil did not make that allegation in its notice of opposition and the issue was not tried by implied consent. Second, the Board upheld Applicant Tripleye's objection to Heil's last-minute attempt to change the sales figures that it provided during discovery. Tripleye was dealt an early blow when the Board refused to take judicial notice that "autonomous vehicles are (or will be when they reach the market) expensive purchases," due to the vagueness of the statement and the lack of unquestionable evidence in support.

Motion to Amend: Tripleye, in an attempt to side-step the Section 2(d) claim, had filed a Rule 2.133 motion to amend its application by limiting the goods and services to use with "Level 4 or Level 5 autonomous vehicles." The Board denied the motion because the proposed amendment "does not introduce a substantially different issue for trial," since Heil's registrations are broadly worded and cover the goods and services in Tripleye's application even if so amended.

Likelihood of Confusion: Turning to the substantive issue, the likelihood of confusion, Heil argued that its mark is commercially strong but its proofs were underwhelming. Although claiming use of the mark 3RD EYE since 2004, its sales figure were limited to the 2019-2022 time period and lacked industry context. It provided evidence of a few media articles, promotion at a single trade show, and an unimpressive media presence.

We cannot place Opposer’s 3RD EYE mark on the high end of the fame/commercial strength spectrum amongst a “significant portion of the relevant U.S. consumers” in the vehicle surveillance and detection system industry. *** Perhaps on a more developed record we would find otherwise. As a result, the fifth DuPont factor is neutral.

As to the sixth DuPont factor, the Board found - based on 26 third party registrations - that the word EYE "is a common element of marks for “cameras.” Third-party use evidence likewise showed such use of the word EYE, but none of the marks were similar to Heil's mark overall.

Under the sixth DuPont factor, the evidence of third-party marks reflects weakness of the word EYE but not of Opposer’s mark as a whole. However, consumers apparently distinguish among coexisting EYE-formative marks based on other elements, and EYE is the only shared component of Opposer’s and Applicant’s marks. The sixth DuPont factor thus weighs against likely confusion.

Most significantly, the Board found the marks TRIPLEYE and 3RD EYE to be "different enough" in sound, appearance, connotation, and commercial impression to avoid a likelihood of confusion.

[T]he marks TRIPLEYE and 3RD EYE convey different connotations and commercial impressions. TRIPLEYE has a meaning of “three eyes,” suggesting three cameras in this context, whereas 3RD EYE, as a phrase, has a specific understood meaning and connotation and will be viewed as a unitary mark, calling to mind an additional eye that provides extra-ordinary perception, including for example the “mind’s eye” or “inner eye.” Opposer asks us to take too far a leap by ignoring the understood meaning of the phrase “third eye.” These differing connotations and commercial impressions are consistent with distinctions between the parties’ goods, as indicated by the record.

The goods in the opposed application and in Heil's registrations are in-part identical (e.g., "cameras"), and those goods presumably travel through the same trade channels to the same classes of consumers. The recited services are closely related: "Applicant’s Class 42 services cover the design of software that performs the identical purpose or function of Opposer’s software (i.e., controlling and monitoring vehicles). Thus, consumers can seek out Applicant’s services, or purchase Opposer’s software, to accomplish the same purpose." These services are offered to "many of the same industries as Opposer, such as 'mining and construction,' 'logistics,' and 'marine and ports.'" The Board acknowledged that, with regard to the involved services, consumers "will exercise at least a somewhat heightened degree of consumer care."

In conclusion, the Board found that, as to Thirdeye's goods, the dissimilarity of the marks, together with the weakness of the only shared element, the word EYE, outweighed the other DuPont factors. As to the services, those findings, along with "the elevated degree of care in making purchasing decisions under the fourth Dupont factor," outweighed the other factors.

Read comments and post your comment here.

TTABlogger comment: A well written run-through of the DuPont factors

Text Copyright John L. Welch 2024.

TTAB Affirms Refusal of ENDURELITE in view of ENDUROLETE for Supplements, Rejecting Strategic Partners Argument

The Board affirmed a refusal to register the mark ENDURELITE, finding confusion likely with the registered mark ENDUROLETE, both for dietary and nutritional supplements. The marks are "extremely similar," the goods identical in-part, and the channels of trade and classes of consumers for those goods are presumably identical. Applicant argued that, under Strategic Partners, its ownership of a registration for the mark ENDURELITE FUELING FAST & Design (shown immediately below) justifies registration of the standard character mark. The Board disagreed. In re Endurelite Supplements, LLC, Serial No. 90708132 (November 15, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington).

Examining Attorney Kevin Flebbe and Applicant argued over the applicability of In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012). [TTABlogged here]. There the applicant sought to register the mark ANYWEAR in slightly stylized form, for footwear, and its ownership of a registration for ANYWEARS in standard character form was enough to sidestep a likelihood of confusion refusal.

Here, as in Strategic Partners, the prior registration was more than five years old and therefore was "not subject to attack by the owner of the cited registration on a claim of priority and likelihood of confusion." Furthermore, the identical word ENDURELITE appears in both marks.

On the other hand, unlike in Strategic Partners, the marks are not "substantially similar" since the prior mark includes a design and additional wording. Also, Applicant here is seeking to register the mark ENDURELITE for goods that include “dietary and nutritional supplements,” which is "a significant expansion upon the more specifically-described nutritional supplements listed in Applicant’s existing prior registration." In Strategic Partners, the Board noted, the goods covered by both the applicant’s existing prior registration and in its application were identical: "footwear."

In view of the above, we find the existence of Applicant’s prior registration only weighs slightly in favor of finding confusion unlikely. We hasten to add, however, that there are significant differences between the circumstances present in this appeal with those in Strategic Partners, and we certainly do not find ourselves in the “unique position” where the thirteenth DuPont factor “outweighs the other [factors].” Id. at 1399.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Well, that Hail Mary pass failed to connect.

Text Copyright John L. Welch 2024.

TTAB Remands Failure-to-Function Refusal to USPTO for Consideration of Descriptiveness and Deceptiveness

Applicant Litehouse, Inc. filed an appeal from a failure-to-function refusal of the proposed mark VEGGIES IN EVERY BITE for "pasta, macaroni and cheese, pasta sauce, pizza, pizza crust, croutons, frozen meals consisting primarily of pasta or rice." The Board, perhaps fed up with the steady stream of such refusals, suspended the appeal and remanded the application to the Examining Attorney for further examination. In re Litehouse, Inc., Serial No. 97501419 (November 8, 2024) [not precedential] (Opinion by Judge Angela Lykos).

The Office maintained that VEGGIES IN EVERY BITE “is so widely used by numerous third parties to convey a message that food is nutritional such that it fails to function as a trademark under Sections 1, 2, 3,2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, 1053, 1127."

Rule 2.142(f)(1) provides: "If, during an appeal from a refusal of registration, it appears to the Trademark Trial and Appeal Board that an issue not previously raised may render the mark of the appellant unregistrable, the Board may suspend the appeal and remand the application to the examining attorney for further examination to be completed within the time set by the Board."

[T]he Board remands the application to the Examining Attorney to consider whether to:

● refuse registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is merely descriptive of the identified goods;

● issue an information request pursuant to Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b), asking Applicant relevant information about the goods, including, but not limited to, whether the goods will contain vegetables;

● refuse registration, if appropriate, under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is deceptively misdescriptive; and

● refuse registration, if appropriate, under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), on the ground that Applicant’s mark is deceptive.

(Emphasis supplied).

The procedure following remand is laid out in Rules 2.142(f)(3) and 2.61-2.63. Ultimately, if one or more new refusals is/are made final, the case will return to the Board for further appeal briefing, etc.

The Examining Attorney is reminded that the scope of the remand is limited solely to whether to also refuse registration on the additional grounds summarized above. The Examining Attorney should not issue a new ground for refusal or requirement not specified in this order, nor should the Examining Attorney supplement the record on other issues or advance any new arguments regarding the original refusal. See TBMP § 1209.01. Likewise, Applicant’s response to any nonfinal Office action issued on remand must be limited to the matters raised in that Office action.

Read comments and post your comment here.

TTABlogger comment: Earlier this year, in the ZPILE case, the Board suggested that the Office should have applied the "distinctiveness continuum" rather than a failure-to-function approach in light of the evidence before the Board. TTABlogged here.

Text Copyright John L. Welch 2024.

"SURVIVAL + Greek Cross Design" Fails to Function as a Trademark for First Aid Kits, Says TTAB

The Board upheld a refusal to register the proposed mark shown below for "first aid kits" [SURVIVAL disclaimed] on the ground that the supposed mark "would be perceived as merely informational matter and thus fails to function as a trademark" for the identified goods. The Board found that each of the elements of the mark - the white Greek cross on a green background, the word SURVIVAL, and the red rectangle - is non-distinctive both alone and in combination. In re Tyrrells Administration Pty Ltd, Serial No. 97002256 (November 15, 2024) [not precedential] (Opinion by Judge Robert Lavache).

“The critical question in determining whether [a proposed mark] functions as a trademark is the commercial impression it makes on the relevant public, i.e., whether the term sought to be registered would be perceived as a mark identifying the source of the goods ....” Peace Love World Live, 2018 TTAB LEXIS 220, at *7; see also GO & Assocs., 90 F.4th at 1359 (noting that the relevant analysis focuses on “how the mark is used in the marketplace and how it is perceived by consumers").

The Greek Cross: The Board agreed with Examining Attorney Anna Oakes that the white Greek cross on a green background "is a universal symbol for first aid and is commonly used by those in the first aid field." Applicant Tyrells argued that there are many symbols connoting "first aid," but that didn't help. The evidence showed that the white Greek cross on a green background is recognized as one of them.

SURVIVAL: The Board found that "third parties in the field of first aid kits, some of whom are presumably Applicant’s competitors, commonly use the term SURVIVAL to refer to first aid kits that contain materials and components for supporting the continuation of life, i.e., for survival." The Board concluded that "potential purchasers of first aid kits will recognize the term SURVIVAL as identifying a category of first aid kits or a key aspect of them." In sum, SURVIVAL is generic for first aid kits.

Red rectangle: Applicant claimed the red rectangle (but not the "white and blue outlining") as part of its proposed mark. The Board found the rectangle to be nondistinctive:

[T]here is nothing striking, unique, or distinctive about the color or shape of the rectangle that contains the word SURVIVAL, or the manner in which that word is placed or stylized within the rectangle. Further, we find that the color red actually renders the rectangle less distinctive, as the record contains numerous examples showing that red is commonly used on first aid kits or in connection with first aid generally.

The Combination: The Board again agreed with the Examining Attorney that "there is nothing in the combination such that the mark, as a whole, serves indicate the source of Applicant’s first aid kits and distinguish them from those of others."

Finally, Tyrells pointed to the two marks below, registered for first aid kits, as justification for registration of its mark. The Board was unmoved.

While both of these registrations cover first aid kits, their existence on the register does not justify registration of Applicant’s proposed mark where the evidence of record shows that the relevant public would perceive the Greek cross, and the mark as a whole, as something other than an indicator of source. We reiterate here, as many prior Board decisions have, that “[e]ach application for registration must be considered on its own merits.”

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 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. Of course, if you just said "affirmed" you'd be right about 90% of the time. Anyway, here are three recent Board decisions. How do you think they came out? Answer in first comment.

In re Fertinagro Biotech International, S.L., Serial No. 79328903 (November 12, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin). [Section 2(d) refusal of the composite mark shown below for "Soil fertilizers; fertilizers" in view of the registered mark FERTUM for "chemical preparations for use in agriculture, horticulture and forestry, namely, chemical additives for use in the manufacture of fertilizer; fertilizers; manures."]

In re Washington Trust Bank, Serial No. 97542874 (November 13, 2024) [not precedential] (Opinion by Judge Albert J. Zervas) [Section 2(d) refusal of the mark CLEARLY CASH BACK for "banking services; credit card services, namely, issuance of credit cards; credit card services, namely, providing cash and other rebates for credit card use as part of a customer reward program and customer use incentive program" [CASH BACK disclaimed], in view of the registered mark CLEARLY BETTER BUSINESS CHECKING for "banking services" [BETTER BUSINESS CHECKING disclaimed].

In re Making Connections Professional Services, LLC, Serial Nos. 97472548 and 97472577 (November 14, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal of the mark MAKING CONNECTIONS PROFESSIONAL SERVICES, in standard character and logo form, for "Consulting services in the field of marketing of educational training; Business consultation in the field of education leadership development; Business consulting, management, planning and supervision; Business management consultation in the field of executive and leadership development; Business management consulting; Business management supervision; Business organization consulting; Personnel management consultation; Professional business consultation; Professional business consulting" [PROFESSIONAL SERVICES disclaimed] in view of the registered mark MAKING CONNECTIONS THAT COUNT for "On-line business networking services.]"

Read comments and post your comment here.

TTABlogger comment: See any WYHA?s?

Text Copyright John L. Welch 2024.

Precedential No. 27: TTAB Dismisses Empresa Cubana's Pan-Am Article 8 Claim, But With Leave To Re-Plead

In a precedential decision of interest to the many aficianados of the Pan-American Convention, the Board granted a Rule 12(b)(6) motion to dismiss Petitioner Empresa Cubana's claim for cancellation under Article 8 of the Convention. Empresa's allegations fell just short of stating a proper claim, but the Board gave Empresa twenty days to re-plead. Empresa Cubana del Tabaco d.b.a. Cubatabaco v. Kretek International, Inc., 2024 USPQ2d 1972 (TTAB 2024) [precedential].

Empressa sought cancellation of the registrations for the two marks shown above, for "cigars," claiming likelihood of confusion Under Section 2(d) with several of its marks, and violation of Article 8 of the Pan-American Convention. The Article 8 claim was founded on Empresa's pending application for the mark shown below.

Article 8 provides, in pertinent part:

When the owner of a mark seeks the registration . . . of the mark in a Contracting State other than that of origin of the mark and such registration . . . is refused because of the previous registration . . . of an interfering mark, he shall have the right to apply for and obtain the cancellation or annulment of the interfering mark upon proving, in accordance with the legal procedure of the country in which cancellation is sought, the stipulations in Paragraph (a) and those of either Paragraph (b) or (c) below:

(a) That he enjoyed legal protection for his mark in another of the Contracting States prior to the date of the application for the registration . . . which he seeks to cancel; and

(b) That the claimant of the interfering mark, the cancellation of which is sought, had knowledge of the use, employment, registration or deposit in any of the Contracting States of the mark for the specific goods to which said interfering mark is applied, prior to adoption and use thereof or prior to the filing of the application or deposit of the mark which is sought to be cancelled; . . . . 46 Stat. 2907. (Emphasis by the Board).

Respondent Kretek argued that (1) Empresa's Article 8 claim was "premature" because the USPTO had not cited Kretek's registrations as grounds for refusal of Empresa's pending application, but had only suspended the application pending resolution of this cancellation proceeding; and (2) Empresa had not alleged a sufficient factual basis as to Kretek's knowledge of Empresa's mark prior to Kretek's adoption and use of its marks or prior to the underlying applications for the challenged registration.

Premature?  As to whether Emrepesa's claim was premature, the question was whether Empresa's application had been "refused" because of Kretek's registrations. In the Lacteos case, the Board found that a "potential for refusal" based on an opposition proceeding sufficed to satisfy Article 8.

Building on Lacteos, where “the potential for refusal” is sufficient to bring a counterclaim for cancellation, we now hold that where a Trademark Examining Attorney suspends prosecution of a plaintiff’s application for registration pending the disposition of a legal proceeding involving plaintiff’s likelihood of confusion claim against a defendant’s registration that has been identified as presenting a bar to registration of the plaintiff’s mark, the requirement in the Article 8 Preamble for “the potential for refusal” is satisfied.

Knowledge? Having decided that Empresa's claim was timely, the Board then turned to the specific allegations of the claim:

Petitioner must allege that: (1) it seeks registration in the U.S. of a mark which originated in another Contracting State; (2) during ex parte examination by the USPTO, registration to Petitioner has either been refused or the Examining Attorney has identified a potential for refusal because of Respondent’s Registrations; (3) Petitioner enjoyed legal protection for its mark in another Contracting State prior to the date of Respondent’s applications for Respondent’s Registrations; and (4) Respondent had knowledge of the use or registration in any of the Contracting States of Petitioner’s mark for the identical goods to which Respondent’s marks are applied, prior to adoption and use of Respondent’s marks or prior to the filing of Respondent’s applications for Respondent’s Registrations. See Lacteos, 2020 TTAB LEXIS 13, at *12-13. (Emphasis supplied).

After reviewing Empresa's allegations in detail, the Board found that Empresa had stated a factual basis for its claim. In particular, as to whether Kretek "had knowledge of the use, employment, registration or deposit in any of the Contracting States," the Board found sufficient the allegations that Kretek's marks are "a blatant and obvious copying" of Empresa's mark meant to "capitalize upon and exploit" the fame of its designs used in connection with its "renowned COHIBA cigars."

Leave to Re-plead: Nevertheless, the Board granted the motion to dismiss because Empresa did not include the required allegation that registration "has either been refused or the Examining Attorney has identified a potential for refusal" because of Kretek's registrations. The dismissal was without prejudice, however, and the Board allowed Empresa twenty days within which to file and serve a "supplemental petition for cancellation" that includes that allegation.

Read comments and post your comment here.

TTABlogger comment: For a helpful explanation of the Pan-American Convention, see Professor Christine Haight Farley's TTABlog article here.

Text Copyright John L. Welch 2024.

PICKWELL FARMS Confusable with PICTSWEET FARMS for Frozen Vegetables, Says TTAB

[Caveat: the petitioner was represented by Tonia Sayour and Kira-Khanh McCarthy of Wolf, Greenfield & Sacks, PC, home of the TTABlogger]. The Board granted a petition for cancellation of a registration for the mark PICKWELL FARMS for, inter alia, frozen vegetable, finding confusion likely with the registered mark PICTSWEET FARMS for “Frozen vegetables; frozen vegetable-based entrees." [FARMS disclaimed in both marks]. This blog post will attempt to hit the high points of the decision. The Pictsweet Company v. Moran Foods, LLC, Cancellation No. 92078530 (November 7, 2024) [not precedential] (Opinion by Judge Elizabeth K. Brock).

Laches: Respondent Moran pled the affirmative defense of laches but failed to prove same.  Pictsweet had no knowledge of the PICKWELL FARMS mark prior to the publication of Moran's mark for opposition. Therefore, the period for laches began to run as of the February 4, 2020 registration date. Pictsweet filed its cancellation petition on November 22, 2021—a delay of approximately 21.5 months. Moran failed to prove that the delay was unreasonable. Nor did Moran prove any damage resulting from the delay.

Acquiescence: In April 2021, Pictsweet contacted Moran to discuss selling its product in Moran's Save-A-Lot stores. Pictsweet filed the petition for cancellation seven months later. The Board found that this delay of seven months was excusable. Also, as previously noted, there was no proven prejudice from the delay.

Priority: "In a cancellation proceeding such as this one where both parties own registrations, priority is in issue. Pictsweet was entitled to rely on the March 6, 2015 filing date of the application that matured into its pleaded Registration. That was before Moran's constructive use date in 2018.

Likelihood of Confusion: Because the goods are identical in part, the second DuPont factor weighed "heavily" in Pictsweet's favor. The Board must presume that these identical goods travel through the same trade channels to the same classes of consumers. Moreover, the goods are low cost items that may be purchased on impulse. These factors also weigh heavily in Pictsweet's favor.

As to the marks, because the goods are in part identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. The Board noted that both marks: "(a) comprise two terms (b) in which the first term is dominant, (c) the dominant term is a compound word (d) beginning with the verb PICK or a misspelling of its past tense, 'picked,' and (e) the mark ends with the term FARMS, which is disclaimed in both registrations. Thus, they have many similarities."

The Board found the marks to be similar in appearance and sound. "Because of these similarities and the fact that marks end with the identical element FARMS, consumers may not notice the difference in the middle of the marks—SWEET and WELL."

Indeed, considering both of these differing components, SWEET and WELL, (a) contain the letter W in the first or second position (a visually wide letter that takes up space) followed by the letter E, (b) both components follow the consonant sound-vowel sound-consonant pattern, and (c) also contain double letters, it would be easy to miss the difference between SWEET and WELL. When considering the marks as a whole, we find these differences in elements of the marks weigh less than the more meaningful similarities in the marks in their entireties.

The Board found the marks to be similar in connotation: Petitioner's mark PICTSWEET FARMS "connotes vegetables that were picked, plucked or chosen for a certain quality—i.e., sweetness—from a farm:" Moran's mark suggests "picking things at harvest then doing a good job at it."

As to the strength of Pictsweet's mark under the fifth and sixth DuPont factors, the Board found it to be "at least suggestive" and " somewhat commercially strong." Moran did not show that use of similar marks in the relevant market that weakens the PICTSWEET FARMS Mark. In sum, "the fifth factor slightly favors a finding of likely confusion and the and sixth factor is neutral."

Moran pointed to the lack of evidence of actual confusion. In a lengthy discussion, the Board found that "there has been some meaningful opportunity for actual confusion but there is insufficient evidence for us to conclude that this opportunity for actual confusion has been so significant such that the seventh and eighth DuPont factors would weigh heavily against a finding of likelihood of confusion." "[T]he seventh and eighth DuPont factors slightly weigh against a finding of likelihood of confusion."

Conclusion: Balancing the relevant DuPont factors, the Board found confusion likely and it granted the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: None this time.

Text Copyright John L. Welch 2024.

TTABlog Test: Is AGAVE BLACK Confusable with BLACK AGAVE ESPECIAL for Skin Care Preparations?

The USPTO refused to register the mark AGAVE BLACK for cosmetics and various skin care preparations containing agave as an ingredient [AGAVE disclaimed], finding confusion likely with the registered mark BLACK AGAVE ESPECIAL for skin care products [BLACK AGAVE disclaimed]. Applicant argued that, in the cited mark, BLACK AGAVE will be seen as a reference to the plant, whereas in its mark, the word BLACK would be seen as a laudatory term, as in Johnnie Walker "Black Label." How do you think this appeal came out? In re Agave and Phoenix, LLC, Serial No. 97504141 (November 7, 2024) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The goods of the cited registration overlap with those in the application, "at least as to 'skin moisturizers,' which is unrestricted and therefore must be construed to encompass all types of skin moisturizers, including those that contain agave." The Board must presume that these overlapping goods travel in the same trade channels to the same classes of consumers.

As to the marks, the file history of the registration indicates that the term BLACK AGAVE was disclaimed not because it referred to the "so-called black agave plant," but because registrant's tanning products "are in the nature of black bronzers made with agave extract."

Nor are we persuaded by the Johnnie Walker analogy, as we see no reason that consumers would perceive BLACK in Applicant’s mark in the same way as the “Black Label” on the Johnnie Walker bottle, nor do we have a basis on this record to discern how consumers perceive the Johnnie Walker “Black Label” reference regardless. In fact, we find the most notable aspect of Applicant’s label shown above to be the prominent use of “Special” (the English translation of the additional term in the cited mark) in close proximity to Applicant’s AGAVE BLACK mark. Overall, we remain unconvinced by Applicant’s argument that consumers would understand BLACK AGAVE and AGAVE BLACK differently in the respective marks.

The Board found the marks to be "similar in appearance and sound because of the shared words AGAVE and BLACK," and the marks’ connotations and commercial impressions "very similar." 

As to the transposition of the words, "the combination of AGAVE and BLACK, regardless of word order, carries the same meaning and commercial impression." The word ESPECIAL "does not add to the connotation or commercial impression of the mark in any significant way that distinguishes BLACK AGAVE ESPECIAL from AGAVE BLACK."

And so, the Board affirmed the refusal.

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TTABlogger comment: Nothing especial here. How did you do? 

Text Copyright John L. Welch 2024.

Faulty Specimen Sinks YACHTLY Application for Yacht Chartering Services

The Board has decided 16 appeals from specimen refusals this year and has reversed half of them. Here is the 17th. The Board upheld this refusal to register the proposed mark YACHTLY for "yacht chartering services" because the specimens of use failed to show a direct association with the identified services. In re Yachtly Inc., Serial No. 90784139 (November 6, 2024) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

Applicant's original specimen was a printout from its website, shich showed the mark YACHTLY used with payment processing services but not yacht chartering services. When that specimen was rejected, Apppicant submitted substitute specimens, described as "screen shots of user interface screens showing the mark and rendering the yacht chartering services; photographs of employees with the mark on their clothing while promoting the services; a photograph of business signage." Examining Attorney Jaclyn Kidwell Walker maintained: "It is clear based on all the attached evidence that applicant ONLY provides yacht payment services and does not engage in the chartering services themselves."

A service mark specimen consisting of advertising or promotional materials generally must show a “direct association” between the mark and the services for which registration is sought. *** While the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services that have been recited in the application. *** A specimen that shows “only the mark with no reference to, or association with, the services does not show service mark usage.” [citations omitted].

As to the original specimen, the Board agreed with the Examining Attorney: "the Original Specimen indicates that Applicant provides a 'payment platform' for consumers that themselves charter yachts. 'Payment processing services' are different than 'yacht chartering services.' Accordingly, we find that the Original Specimen does not make a direct association or reference to the identified 'yacht chartering services.'"

As to the substitute specimens, the user interface screens included a list of booked charters with yacht names, charter IDs, broker names, date added, start dates, and other information in connection with third-party charters. The Examining Attorney argued that "[a] reasonable reading of the dashboard specimen suggests that applicant is not providing charter services, but rather tracking the charters of others and processing payments through their proprietary downloadable software."

Applicant contends that "it provides comprehensive yacht chartering services under the ‘Yachtly’ mark through its website and user interface by connecting, coordinating and managing the abovementioned providers and requirements that are necessary to charter a yacht."

The Board sided with the Examining Attorney: "none of the user interface screens identify Applicant as the one chartering a yacht. While Applicant’s counsel asserts that there are several providers involved in a yacht charter, and that Applicant “connect[s], coordinat[es] and manag[es]” these different providers, the evidence of record supports that Applicant does not charter yachts itself."

Nothing in record demonstrates that consumers would perceive the applied-for mark as a source indicator for “yacht chartering services.” To the contrary, the record supports that a consumer would understand that Applicant provides a payment platform for persons that themselves charter yachts. In other words, one who provides yacht chartering services brings their booked yacht charters to Applicant, and Applicant provides a service that helps that person or entity manage their yacht charters, namely via Applicant’s payment platform.

As to the clothing and business signage, the Board again agreed with the Examining Attorney: "The applied-for [proposed] mark appearing on an employee shirt or at a booth at a trade association event fails to show a direct association between the applied-for mark and the identified “yacht chartering services.” There is no information on the clothing or banners making a direct association between use of the applied-for mark and “yacht chartering services.”

And so, the Board affirmed the refusal.

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TTABlogger comment: WYHA? If Applicant is rendering yacht chartering services, you would think it could come up with a price chart or schedule or something.

Text Copyright John L. Welch 2024.

TTAB Wrestles with Applicant over Specimen Refusal: Guess Who Won?

The Board tossed out this appeal of a refusal to register the mark shown immediately below, for various wrestling-related services, agreeing with Examining Attorney Rebecca Ruiz that the mark is not a "a substantially exact representation" of the mark as used, as required under Trademark Rule 2.51(a). Applicant's argument that the mark in the application drawing need not be an "exact match" with the specimens of use, while true, missed the mark. In re Chris Irvine, Inc., Serial No. 97156945 (November 6, 2024) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The proposed mark consists of "a full figure design of a character comprising a fedora, a leather jacket having spikes protruding therefrom, a scarf, and a painted face."

“In an application under section 1(a) of the Act, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services.” Trademark Rule 2.51(a), 37 C.F.R. § 2.51(a). The “drawing depicts the mark sought to be registered.” Trademark Rule 2.52, 37 C.F.R. § 2.52.

Applicant argued that it should receive "the exact same treatment" as several third-party registration that it submitted. The Board was unmoved: "The third party registrations say nothing about whether Applicant’s proposed mark as shown in the drawing is a substantially exact representation of the matter shown in Applicant’s specimens. We are not bound by the decisions to register those marks and must decide the instant Application on its own merits."

Although the law does not require that the drawing “exactly match” the mark as used in the specimens, it must be a “substantially exact representation” of the mark as used; “minor alterations” that do not create a new and different mark with a different commercial impression are acceptable.

In comparing Applicant’s mark drawing and specimens, the Board found more than minor differences between the proposed mark and the specimens of use. Several of the specimens contain only partial images of the character of the proposed mark, shown from the chest up.

Applicant's substitute specimens showed the proposed mark "in use" during live wrestling performances. "Unlike the mark drawing, these images show the individual’s face turned to one side, not looking directly at the camera, again with his teeth bared. The individual is wearing a t-shirt with a design that is not featured in the mark drawing, and the gloved hands are not shown."

[The] differences between the mark drawing and Applicant’s specimens create distinct commercial impressions, such that the mark drawing is not a substantially exact representation of the applied-for mark as used, and Applicant has failed to provide a specimen showing use of that mark in commerce in connection with the identified services.

In sum, "Applicant’s specimens therefore do not show use of the applied-for mark in commerce in connection with the identified services, as required by Sections 1 and 45 of the Trademark Act."

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TTABlogger comment: He's no Gorgeous George! I hesitate to refer to this as a "mutilation" case in light of the context. Is the look of a wrestler protectable as trade dress? Why not? BTW: Is this a WYHA?

Text Copyright John L. Welch 2024.

TTABlog Celebrates 20th Anniversary !

"It was twenty years ago today ...." When I started this blog in 2004, I never dreamed it would still be going strong (more or less) twenty years later. Eighteen or nineteen maybe, but not twenty. The TTABlog debuted on November 8, 2004, with a post entitled "Leo Stoller Loses Again." (here). Remember him? Here we are, more than 5,600 blog posts and 15,000 "tweets" later. Thank you all for reading!

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Text Copyright John L. Welch 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 Alliant Insurance Services, Inc., Serial No. 973516444 (November 5, 2024) [not precedential] (Opinion by Judge Albert J. Zervas). [Section 2(d) refusal of the mark ALLIANT INSURANCE FOUNDATION for “charitable foundation services, namely, providing financial support to individuals, institutions and organizations for providing opportunities relating to classes instruction and careers in insurance” [INSURANCE FOUNDATION disclaimed] in view of the registered mark ALLIANT for "Health insurance underwriting; insurance underwriting in the field of health insurance for individuals and businesses; insurance administration; health, dental, and vision insurance administration and underwriting; insurance services, namely, underwriting, issuance, and administration of health, dental, and vision insurance plans.”]

In re Positivevolution Pty Ltd, Serial No. 79348303 (November 5, 2024) [not precedential] (Opinion by Judge Robert Lavache) [Section 2(d) refusal of the mark ENSOMBL for, inter alia, "Netcasting, namely, broadcasting programs via global computer network in the field of finance and investing for financial professionals and investment advisors;” “electronic transmission of pictures, images, audio and/or video via online forums for financial professionals and investment advisors;” and “transmission of financial, investment and legal news," in view of the registered mark ENSEMBLE for "Telecommunication services, namely, routing calls, SMS messages, and push-notifications to local third-party motorized vehicle operators and food and grocery delivery agents in the vicinity of the caller using mobile phones; Telecommunications, namely, transfer of data by telecommunications."]

In re Orlando Bathing Suit, LLC, Serial No. 97782597 (November 4, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal of the mark VITAMIN SEA for "swimwear" in view of the identical mark registered for, inter alia, "scarves."]

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TTABlogger comment: In the first case, Applicant submitted 58,921 pages of evidence. The Board was not pleased.

Text Copyright John L. Welch 2024.

TTAB Affirms Refusal Because Specimens Show Use of Mark with Mobile App but not SAAS

The Board upheld a specimen refusal for the mark HEARTIFY & Design for software as a service (SAAS) featuring software for providing health-related data and information, in Class 42. Applicant's specimen of use displayed the mark in connection with a mobile phone app, but not with SAAS. In re Heartify LLC, Serial No. 97768868 (November 12, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).

Examining Attorney Marco Wright and the applicant agreed that "SAAS refers to 'a method of software delivery and licensing in which software is accessed online via a subscription, rather than bought and installed on individual computers.'" SAAS is somewhat similar to downloadable software in International Class 9, but for SAAS, the software resides on the service provider’s system. Applicant submitted specimens showing mobile phone applications, but not SAAS services.

Applicant only argument was that one of the mobile phone screenshots shows a tab for account information. Applicant argued that this tab directs a user to its website, where the user would then receive SAAS services relating to the user’s account. The Board pointed out, however, that "[t]he statutory definition of service mark use does not allow for the indirect 'chain-of-events' type of use Applicant argues for here."

None of the specimens submitted by Applicant "show anything resembling SAAS services. Every specimen shows or provides information about Applicant’s mobile phone application. We agree with the Examining Attorney that these specimens fail to show use of Applicant’s mark in connection with the SAAS services in International Class 42. The specimen refusal was proper."

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TTABlogger comment: Applicant's class 9 software was supported by the specimens of use.

Text Copyright John L. Welch 2024.

TTAB Reverses 2(d) Refusals of "SUN CHLORELLA" for Noodles Due to Crowded Field

The Board reversed Section 2(d) refusals of the mark SUN CHLORELLA, in standard character and design form, for "Udon noodles made in whole or significant part of chlorella" [CHLORELLA disclaimed], finding confusion unlikely with the registered mark SUN NOODLE for, inter alia, noodles [NOODLE disclaimed]. Sixteen third-party, use-based registrations for mark containing the word SUN for noodles, and 18 more for arguably related goods, convinced the Board that the cited mark merits only a narrow scope of protection. In re Sun Chlorella Corp., Serial Nos. 97350448 and 97350457 (October 29, 2024) [not precedential] (Opinion by Judge Peter W. Cataldo).

Applicant’s "Udon noodles made in whole or significant part of chlorella" are encompassed by the "noodles" of the cited registration. Because the goods are thus overlapping and legally identical (in part), the Board must presume that those goods travel in the same trade channels to the same classes of consumers. "Accordingly, the DuPont factors relating to the similarity or dissimilarity of the goods and the similarity or dissimilarity of their trade channels "`heavily favor a finding of likelihood of confusion." [Why "heavily"? - ed.]

With respect to the strength of the cited mark, Applicant submitted 34 live third-party registrations for SUN-formative marks, all identifying various food items, the most probative being sixteen that identify various types of noodles among their goods. [E.g., SUN LUCK, SUN RIGHT, and SUN BLUSH]. The Board observed that “extensive evidence of third-party use and registrations is 'powerful on its face,' even where the specific extent and impact of the usage has not been established." Jack Wolfskin, 116 USPQ2d at 1136 (citing Juice Generation, 115 USPQ2d at 1674) (emphasis by the Board).

Under these circumstances, based on the evidence of record, we accord marks consisting, in whole or in part, of the words “SUN” and its foreign equivalents in connection with noodles a narrow scope of protection. Such marks travel in a crowded field.

As to the marks, the Board noted that "chlorella" is defined as "any of a genus (Chlorella) of unicellular green algae," "any of a genus of single-celled green algae that have been grown as a possible source of food" or "a genus of unicellular green algae potentially a source of high-grade protein and B-complex vitamins." 

Website evidence discussing Applicant’s goods stated that: “Chlorella Udon Noodles by Sun Chlorella contain the freshwater algae billed as one of the newest superfoods that’s rich in minerals and vitamins like D and B12."

Applicant’s marks and the cited mark contain the identical first word “SUN,” followed by the terms NOODLE, describing a broad category of products and CHLORELLA,  describing a more specific type of product encompassed by the term NOODLE. The marks thus are similar in appearance and sound. [Seems like a nons sequitur to me - ed.]

The Board acknowledged the differences between the marks, but it nonetheless found that, viewing the marks as a whole, consumers "could mistakenly believe the marks are variations of each other, pointing to a common source," because the marks "are similar in appearance, sound and meaning and, overall, create similar commercial impressions."

Despite finding the marks more similar than dissimilar and the channels of trade and classes of consumers overlapping, the Board concluded that confusion is unlikely:

[E]vidence of extensive registration by third parties of “SUN” formative marks for goods identical or related to those identified in the cited registration demonstrates that the cited mark is conceptually weak to such an extent that it is entitled to a very narrow scope of protection. We thus find that the cited registration cannot prevent registration of Applicant’s involved applications.

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TTABlogger comment: In discussing Applicant's irrelevant prior registrations (different goods), the Board describes the prior registrations as incontestable. However, we know there is no such thing as an "incontestable" registration. The right to use a mark may be made incontestable under Section 15, not its registration.

Text Copyright John L. Welch 2024.

Recommended Reading: The Trademark Reporter, September-October 2024 Issue

The September-October 2024 (Vol. 114 No. 5) issue of the Trademark Reporter has arrived. [pdf here]. Willard Knox, Editor-in-Chief, summarizes the contents as follows (and below): "This issue offers readers an article on how practitioners can use survey evidence to prevail on behalf of brand owners contesting failure-to-function refusals to register their trademarks as well as a book review of a practical handbook on design law."

Phantom Rules: The USPTO’s Disruptive Denial of Trademark Protection in New Communicative Spaces, by Christopher P. Bussert & Jonathan E. Moskin. The practitioner authors of this article argue that the United States Patent and Trademark Office (USPTO) has sought to shift the burden of proof to brand owners that contest the USPTO’s refusal to register their trademarks on the ground of failure to function—and share their experience with using survey evidence to prevail on the brand owners’ behalf.

Book Review: Research Handbook on Design Law, Henning Hartwig, ed. Reviewed by Elisabeth Kasznar Fekete. The reviewer of this treatise finds it offers readers a comprehensive and authoritative survey of design law that will be useful to policymakers, intellectual property office examiners, attorneys, and judges.

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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 Posts November 2024 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled six (VI) oral hearings for the month of November 2024. As indicated below, four of the hearings will be held virtually and two will be 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.

November 7, 2024 - 11 AM [Virtual]: Moet Hennessy USA, Inc. v. K-Stokes, Inc., Cancellation No. 92080021 [Petition for cancellation of a registration for the mark K-STOKES HENNY for "Barbecue sauce; Barbeque sauce; Chicken wing sauce; Chili sauce; Fish sauce; Hot sauce; Hot chili pepper sauce; Jerk sauce; Pasta sauce; Pizza sauce; Sloppy Joe Sauce; Spaghetti sauce; Sriracha hot chili sauce; Steak sauce; Tomato sauce" on the ground of fraud, nonuse, likelihood of confusion with the registered mark HENNESSY for cognac, and likelihood of dilution-by-blurring of the HENNESSY mark.]

November 13, 2024 - 11 AM [In person]: Plumrose Holding Ltd. v. USA Ham LLC, Opposition No. 91272970 [Opposition to registration of the mark LA MONTSERRATINA, in stylized form, for "Ham; Meat; Pork; Cold cuts; Cold cuts, namely, mortadella, pork loin, ham, bologna, salami, chorizo; Pork tenderloin; Processed meat; Sausage meat; Smoked sausages; Snack food dips" on the grounds of misrepresentation of source under Section 14(3), nonownership, and fraud.]

November 19, 2024 - 1 PM [Virtual]: Kuldisak, LLC d/b/a Swag Golf v. RASL Enterprises Inc., Opposition No. 91276063 [Opposition to registration of the mark SWAG GOLF for "Clothing for athletic use, namely, padded shirts; Clothing, namely, khakis; Belts for clothing; Bottoms as clothing; Embroidered clothing, namely, shirts, hats; Hoodies; Jerseys; Tops as clothing; Wearable garments and clothing, namely, shirts" on the ground of likelihood of confusion with the mark SWAG for, inter alia, belt buckles.]

November 20, 2024 - 11 AM [Virtual]: The Calliope Joy Foundation v. MLD Foundation, Opposition No. 91274114 [Opposition to registration of the mark MLD FAMILY for "Promoting the interests of patients, families, researchers, clinicians, and policymakers affected by metachromatic leukodystrophy by means of public advocacy" on the grounds of genericness, mere descriptiveness, and failure to function as a trademark.]

November 21, 2024 - 11 AM [Virtual]: In re G4 2010, LLC, Serial No. 90281547 [Refusal to register the mark PROMATCH for "drum sticks and percussion instruments" on the ground that the proposed mark identifies a process or system and therefore does not function as a trademark.]

November 25 - 2 PM [In person]: Garan Services Corp. v. Jesus Villa, Cancellation No. 92074777 [Petition for cancellation of a registration for the mark HALFANIMAL for "Beanies; Hats; Pants; Shorts; Sweat pants; Sweat shirts; Sweat shorts; Sweat suits; T-shirts; Wind resistant jackets" on the grounds of abandonment and false suggestion of a connection with Petitioner Garan (under Section 2(a)).]

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TTABlog comment:  Any predictions? 

Text Copyright John L. Welch 2024.