TTAB Dismisses 2d Opposition to VSS GLOBAL for Vedic Educational Services, But Remands Application for Consideration of Non-Distinctiveness

Applicant Kavita Vachaknavee may have won the battle but lost the war. The Board dismissed this opposition to registration of the mark VSS GLOBAL for "Education services, namely, providing live and on-line classes, seminars and workshops in the field of Vedic philosophy and culture" [GLOBAL disclaimed] because Opposer, who claimed common law rights in the same mark for the same services, failed to prove that VSS GLOBAL is distinctive for its services. That was not the end of the story, however. Arya Samaj Greater Houston v. Kavita Vachaknavee, Opposition No. 91278867 (November 20, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande).

A party who claims likelihood of confusion based on its own unregistered mark "cannot prevail unless [s]he shows that [her[ term is distinctive of [her] goods, whether inherently or through the acquisition of secondary meaning or through whatever other type of use may have developed a trade identity." Towers v. Advent Software, Inc., 913 F.2d 942, 945 (Fed. Cir. 1990).

Applicant Vachaknavee pointed out that at least six other organizations have adopted the term VSS for their Vedic Sanskriti Schools and so, she argued, VSS is "a generic term, like, say, JHS (for Junior High School)." Opposer's president stated that "upon learning that Applicant applied to register VSS GLOBAL, Opposer 'had to oppose this filing not only to protect [Opposer] but also all Samajs using VSS.'"

These statements by the parties strongly point to VSS being a generic term for the services at issue here. *** On this record, we have no difficulty finding that VSS is not inherently distinctive for education services in the field of Vedic culture.

Opposer asserted that the term GLOBAL was added to VSS to reflect its effort to "help[ ] setup local VSS … across the globe." Not only is GLOBAL disclaimed in the subject application, but the term was also disclimed in opposer’s own application for VSS GLOBAL. The Board therefore found that GLOBAL merely describes the territorial reach of the services and thus is non-distinctive.

The Board then found that the two terms in combination "have no source-indicating meaning but, rather, retain their individual, non-distinctive meanings in the term as a whole." Consequently, "at minimum," VSS GLOBAL is not inherently distinctive for education services in the field of Vedic Hindu culture. Opposer did not argue, let alone prove, that VSS GLOBAL has acquired distinctiveness. Therefore, opposer having failed to prove prior trade identity rights in VSS GLOBAL, its claim under Section 2(d) failed.

The Board's finding of lack of distinctiveness raised the issue of whether Applicant Vachaknavee's proposed mark qualifies for registration. Indeed, she referred to VSS as a generic term, noted that at least other Sanskriti Schools use the term VSS GLOBAL for identical services, and stated that VSS GLOBAL "cannot be owned by any individual Sanskriti School."

Opposer did not raise the issues of genericness or mere descriptiveness, and so the Board turned to Trademark Rule 2.131, which provides that in a situation such as this, it "may remand the application to the trademark examining attorney for reexamination in the event the applicant ultimately prevails in the inter partes proceeding." "Upon remand, the trademark examining attorney shall reexamine the application in light of the matter referenced by the Board."

The Board remanded the application to the Examining Attorney "for further prosecution on the question of the potential non-distinctiveness of Applicant’s asserted mark as a whole," and in particular "for possible refusal as merely descriptive or generic under Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§ 1051, 1052, 1053, and 1127."

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TTABlogger comment: Did both parties get what they say they wanted, i.e., no one owns the mark?

Text Copyright John L. Welch 2024.