Wednesday, March 27, 2024

WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS! Fails to Function as a Source Indicator for . . . Guess What?

The Board affirmed a refusal to register the proposed mark WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS!, finding that the phrase fails to function as a service mark for "legal services." Applicant Russell feebly attacked the Office's evidence, but the Board found that the evidence established the informational nature of the supposed mark.  In re Richard M. Russell, Serial No. 90432695 (March 25, 2024) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The CAFC recently gave its imprimatur to the Board's "failure-to-function" jurisprudence in In re Go & Assocs., LLC, 90 F.4th 1354, 2023 USPQ2d 1337 (Fed. Cir. 2024). That opinion had originally been deemed nonprecedential, but at the USPTO's request, the court re-designated it as precedential. The CAFC there, in a case involving a failure-to-function refusal of the phrase EVERBODY VS RACISM, said:

The [Trademark] Act conditions the registrability of any mark on its ability to distinguish an applicant’s goods and services from those of others. See 15 U.S.C. §§ 1052, 1053. In other words, it is a threshold requirement of registrability that the mark “identify and distinguish” the goods and services of the applicant from those of others, as well as “indicate the source” of those goods and services.

The question, then, was whether WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS! functions as a mark based on whether the relevant public, i.e. purchasers or potential purchasers of the recited legal services, would perceive the phrase as identifying the source or origin of Attorney Russell's services. Here, "the relevant consuming public comprises all potential purchasers of the identified legal services, and therefore includes members of the general public."

In In re Vox Populi Registry Ltd., 25 F.4th 1348, 2022 USPQ2d 115, at *3 (Fed. Cir. 2022), the appellate court "noted the Board’s holding that 'matter that 'merely convey[s] general information about the goods or services or an informational message' fails to function as a source identifier.'"

Here, Examining Attorney Justine Levy contended that the proposed mark "fails to function as a trademark because the wording is merely informational and constitutes a commonplace slogan." She relied on a Thomson Reuters’ Legal online article referring to "clients' legal needs" in connection with legal services, along with third-party law firms' uses of the wording in the proposed mark, or nearly identical wording.

Applicant Russell characterized the third-party uses as merely a “handful” of examples, and he asserted that "[s]uch minimal results are insufficient to establish that the applied-for mark is 'ordinary.'" He also argued that because the third-party uses are 'on interior web pages' or relatively less prominent than other wording or graphics, this diminished their probative value. The Board was unimpressed.

We find the quantity and quality of examples – which fall squarely within the context of Applicant’s recited legal services and which reflect a consistent meaning – persuasive to show the informational nature of the wording.

As for the less prominent usage by third-parties, the Board deemed such usage to align with, rather than detract from, the informational significance of WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS!

Applicant’s specimen is consistent with the informational nature of the proposed mark, as we find that consumers would view the much larger and more prominent wording RUSSELL LAW FIRM as the source of the services, and would understand WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS! to convey the availability (WE’RE HERE) to perform the legal services the consumer viewing the specimen might require (TO HELP WITH YOUR LEGAL NEEDS).

And so, the Board affirmed the refusal under Sections 1, 2, 3 and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2024.

Tuesday, March 26, 2024

USPTO Proposes Trademark Fee Hike for FY 2025

The USPTO is proposing to increase many trademark fees in Fiscal Year 2025. The proposal is set forth in a Notice of Proposed Rulemaking to be published today (pdf here). Comments are due by May 28th.

As part of our regular assessment of fees under our fee-setting authority, we are proposing certain adjustments necessary to efficiently and effectively administer the U.S. trademark system. These fees provide our agency with the ability to implement programs and initiatives driving our 2022–2026 Strategic Plan, including developing news ways to fight fraud, supporting our employees and stakeholders with reliable IT infrastructure, and enhancing our work to reduce pendency. Our proposed changes to the trademark fees can be found in a notice of proposed rulemaking (NPRM) that will officially publish [March 26th]in the Federal Register. An NPRM on proposed patent fee changes is forthcoming.

* * * * * * * *

Our proposal is shaped by public feedback we’ve received throughout the past several months, beginning with a public hearing in June 2023 hosted by our Trademark Public Advisory Committee (TPAC). Following the hearing, TPAC provided our agency with a written report detailing the public comments received and its recommendations regarding the proposed fees. We considered and analyzed all comments and feedback to create this proposal.

Two provisions seem to be particularly irksome to practitioners. First, if an applicant does not choose the goods and/or services identifications directly from the Trademark Next Generation ID Manual, but instead enters them manually in a free-form text box, the USPTO proposes a $200 fee per class for said free-form identification. Second, the Office proposes a fee of $200 for each additional group of 1,000 characters beyond the first 1,000 characters in the free-form text field, including punctuation and spaces. This fee would also apply to amended identifications that exceed the character limit in a response to an office action.

Read comments and post your comment here.

TTABlogger comment: Thoughts? 

Text Copyright John L. Welch 2024.

Monday, March 25, 2024

TTABlog Test: Are Pizza and Bakery Goods Related Under Section 2(d)?

The USPTO refused to register the mark HIGH FIVE for “Pizza for consumption on or off the premises," finding confusion likely with the identical mark registered for "bakery goods." The issue baked down to whether the goods are related for Section 2(d) purposes. Applicant Pizza Inn argued that "something more" is required to prove relatedness when marks are used for food products and for restaurant services. How do you think this came out? In re Pizza Inn, Inc., Serial No. 88244151 (March 21, 2024) [not precedential] (Opinion by Judge Mark Lebow).

Examining Attorney Lakeisha Lewis submitted some 30 website references each showing bakery goods and pizza sold under the same mark, along with some 50 registrations covering both type of products. The Board concluded that the involved goods are closely related.

Nonetheless, Pizza Inn argued that the goods are not related. First it argued that, in the Office's evidence, the bakery goods are sold in separate locations from the pizza. Not so, said the Board, and in any case it doesn't make any difference.

Next, Pizza Inn contended that these businesses "call out their bakery services separate and apart from their pizzeria operation through use of separate headings, links and – in some cases – even separate web pages. Clearly, these business owners consider pizzas to be their own category of goods separate from bakery goods.” The Board was unimpressed: "The fact that a business has different menu pages, headings, or links for its various goods does not necessarily detract from their relatedness."

With regard to Pizza One's "something more" argument, the Board pointed out that "the heightened 'something more' standard first enunciated in Coors Brewing may be required in any context where 'the relatedness of the goods and services is not evident, well-known or generally recognized.'" In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082 (Fed. Cir. 2014),

[H]ere, the evidence in this case shows that Registrant’s bakery goods and Applicant’s pizza goods are closely related. Because the evidence sufficiently demonstrates that Applicant’s goods are related to those in the cited registration, there is no need to address the “something more” standard.

The Office's evidence also established that the involved products travel to the same trade channels to the same classes of consumers.

Pizza Inn argued that its mark has co-existed with the cited mark since 2017 without any incidents of actual confusion. The Board pointed out once again that the test under Section 2(d) is likely confusion, not actual confusion. In any event, Pizza Inn did not provide evidence regarding the duration, extent, or geographic reach of its sales under its mark, and therefore there was no basis on which to conclude that a reasonable opportunity for actual confusion had occurr.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2024.

Friday, March 22, 2024

TTAB Denies Bertini's Petition for Cancellation of APPLE Registration Due to Failure of Proof of Abandonment

Charles Bertini won a battle with Apple, Inc. last year [TTABlogged here], but he lost this one. Bertini petitioned to cancel a registration for the mark APPLE for a host of entertainment and other services in class 41, claiming that Apple Inc. abandoned the mark through nonuse. Bertini contended that the nonuse occurred "during a period of at least three years and six months after the date of the SOU, namely during November 11, 2011 - May 31, 2015." However, Bertini failed to make a prima facie case of nonuse, and so the Board denied the petition. Charles Bertini v. Apple Inc., Cancellation No. 92068213 (March 20, 2024) [not precedential] (Opinion by Judge Peter W. Cataldo).

A trademark registration is presumed valid, and so a party seeking cancellation bears the initial burden of establishing a prima facie case of abandonment. If the petitioner presents a prima facie case, the burden of production shifts to the registrant to rebut the prima facie showing. The ultimate burden of proof, however, remains with the petitioner.

Under Section 45 of the Trademark Act, proof of non-use for three consecutive years constitutes prima facie evidence of abandonment.

Bertini submitted examples of websites that display the APPLE mark in connection with other terms, websites that display other marks owned by Apple, Inc., and websites that do not display the APPLE mark. From this evidence, Bertini "essentially requests that the Board infer that Respondent was not using the APPLE mark in connection with the recited services from November 11, 2011 to May 31, 2015." Nothing doing, said the Board.

The record consists only of circumstantial evidence of abandonment. Petitioner could have taken the oral testimony deposition of Respondent to ascertain whether Respondent had indeed discontinued use of it registered mark and if so, whether it had any intent to resume use, but elected not to do so. Petitioner further could have compelled responses to his discovery requests or amended his requests to obviate the objections raised by Respondent. Petitioner, however, elected to proceed with discovery responses consisting largely of procedural objections rather than substantive responses and evidence showing use of the APPLE mark that Respondent believed was insufficient. Therefore, Petitioner has failed to make a prima facie showing that there is no use of Respondent’s registered mark for the services identified in its Registration over a three-year period.
The Board pointed out that "[t]he addition of a generic or highly descriptive term does not necessarily detract from the separate commercial impression created by the mark APPLE alone." And it rejected Bertini's argument that the "use of APPLE as a trade name precludes the term from also serving as a trademark or service mark to indicate source."

And so, the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Faced with the presumption of validity, a cancellation petitioner who claims abandonment through nonuse has the difficult task of proving a negative. Hard to do without thorough discovery, probably including a deposition of the registrant.

Text Copyright John L. Welch 2024.

Thursday, March 21, 2024

Precedential No. 4: TTAB Finds "ZPILE" Merely Descriptive of Metal Sheet Piles

In a dubiously precedential ruling, the Board upheld a Section 2(e)(1) refusal to register the proposed mark ZPILE, finding it to be merely descriptive of "Metal sheet piles, metal sheet pile sections, and metal sheet pile connectors for joining metal sheet piles." The Board declined to reach the Office's failure-to-function refusal, but in obvious dictum, discussed the issue anyway. In re Sheet Pile, LLC, Serial No. 97010763 (March 19, 2024) [precedential] (Opinion by Judge Christopher C. Larkin).

The term "sheet piling" refers to a type of retaining wall that is installed in the ground by driving or pushing, rather than pouring or injection. "Sheet piles" are interlocking sections of steel used to create retaining walls and cofferdams, typically to create a rigid barrier between earth and water.

In the context of the involved goods, the word “pile” in Applicant’s proposed mark ZPILE means “[a] heavy post of lumber, concrete, or steel, driven into the earth as a foundation or support for a structure.” The record shows that the letter “Z” that precedes and modifies PILE in the proposed mark ZPILE refers to sheet piling that is roughly in the shape of the letter “Z.”

Numerous website references led the Board to conclude that, in the context of the involved goods, "the letter 'Z' describes and refers to a particular shape and type of sheet pile know by construction project engineers and construction companies." The combination of "Z" and "PILE" "immediately describes for construction project designers and construction companies a feature or characteristic of the goods, namely, that they are or pertain to the well-known 'Z' shape of sheet pile."

The Office thus established a prima facie case of mere descriptiveness, which Applicant Sheet Pile LLC failed to overcome. And so, the Board affirmed the Section 2(e)(1) refusal.

Although the Board declined to reach the failure-to-function refusal, it did provide comments thereon. The refusal was "effectively" based on the same evidence as the mere descriptiveness refusal. The examining attorney maintained that "consumers would perceive the applied for mark Z PILE [sic] to convey information about the goods, namely, that they are Z-shaped piles," and therefore failed to function as a source indicator. According to the Board, however, the "impact" of the two refusals is different:

an applicant may overcome a mere descriptiveness refusal by submitting sufficient evidence of acquired distinctiveness under Section 2(f) or by amending to seek registration on the Supplemental Register, but a failure-to-function refusal based on a finding that a term is merely informational would be an absolute bar to registration, affording the applicant no such option to overcome the refusal.

Rather than a failure-to-function analysis, the USPTO should apply the "distinctiveness continuum," which includes "a threshold absolute bar to registration for generic terms—terms that by definition fail to function as source identifiers." This continuum "provides the appropriate framework for the assessment of registrability based on the rationale articulated by the Examining Attorney in this case—i.e., that the goods at issue 'are Z-shaped piles.'"

Read comments and post your comment here.

TTABlogger comment: What's the distinction between a proposed mark being merely descriptive and being informational? Doesn't a descriptive term provide information? Yet a descriptive term may be registered under Section 2(f) or on the Supplemental Register, according to the Board, but an "informational" term cannot be.

Text Copyright John L. Welch 2024.

Wednesday, March 20, 2024

TTABlog Test: Are These Two Stylized "X" Marks Confusable for Footwear?

The USPTO refused to register the mark shown below left for, inter alia, footwear, finding confusion likely with the mark shown below right, for "shoes." Applicant Global Brand Partners asserted that "the marks are sufficiently different” to avoid a likelihood of confusion. What do you think? In re Global Brand Partners Pte Ltd, Serial No. 97102423 (March 18, 2024) [not precedential] (Opinion by Judge Mark Lebow).

The Board found the respective goods to be legally identical in part; these overlapping goods are presumed to travel in the same channels of trade to the same class of purchasers. The second and third DuPont factors therefore weighed strongly in favor of a finding of likelihood of confusion. Moreover, with the goods identical in part, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Turning to the marks, the Board agreed with Examining Attorney Magdalena Berger that their overall commercial impression is “sufficiently similar to find a likelihood of confusion."

Both marks are discernable depictions of the letter X and share certain characteristics including three lines on the left side and solid prongs on the right side. See Textron Inc. v. Maquinas Agricolas “Jacto” S.A., 215 U.S.P.Q. 162, 163 (TTAB 1982) (observing that in cases involving highly stylized letter marks “similarity of appearance is usually controlling and the decision [regarding likelihood of confusion] will turn primarily on the basis of the visual similarity of the marks”).

Global attempted to prove the weakness of the cited mark by introducing a dozen third-party registrations covering clothing products. However, as the Examining Attorney observed, none featured "a design that visually resembles the mark at issue." "Seven of the submitted third-party marks are composite marks' that "feature design elements and other wording thereby creating a markedly different commercial impressions from applicant’s and registrant’s mark;" and "the design elements in these registrations do not resemble the stylized letters X at issue in this case."

The Board, deeming the marks "far more similar than disimilar," affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Have you ever seen a bigger WYHA?

Text Copyright John L. Welch 2024.

Tuesday, March 19, 2024

TTABlog Test: Are Gummy Vitamins Related to Personal Care Products Under Section 2(d)?

The USPTO refused to register the mark KUDO for "Gummy vitamins; Nutritional supplements in the form of gummies," finding confusion likely with the nearly identical mark KUDOS registered for "Hair shampoo, hair conditioner, soap for hands, face and body, skin/body moisturizer, skin/body lotion, shaving preparations, body/hand cream, skin cleansing cream, and bath gels/oil." Are the goods related? Do they travel through the same trade channels? How do you think this appeal came out? In re Salvation Nutraceuticals Inc., Serial No. 97015288 (March 8, 2024) [not precedential] (Opinion by Judge Mark Lebow).

Examining Attorney Yat Sye Lee submitted internet evidence that some eighteen different companies offer the goods of both applicant and registrant under the same mark (including SEPHORA, BATH & BODY WORKS, and PACIFICA), along with twenty use-based third-party registrations covering these goods. The Board therefore found the goods to be related.

Applicant Salvation contended that “[c]ompanies typically separate their topical goods from their consumable goods,” which “prevents consumers from believing that the consumable goods somehow contain similar ingredients or characteristics as the topical products, which can contain toxins or other undesirable ingredients to consume and allows the companies to market the products with different message." [sic].: According to applicant:

[The USPTO actually has a long and consistent practice of not finding dietary and nutritional supplements to be related or similar to skin care products. But recently, many marks are being rejected by presenting extrinsic evidence that improperly extends the rights of registrants in an ex parte proceeding based on being so-called substantially related. And the pendulum has swung too far.

However, evidentiary support for that assertion was lacking.

Salvation also complained that it “was not allowed to present extrinsic evidence of actual use by the registrant to show that the goods are not substantially related,' specifically, that Registrant is a manufacturer of guest amenities for hotels, which do not provide supplements and vitamins for their guests." The Board was not impressed, pointing out once again that:

“[the] likelihood of confusion determination must be made on the basis of the goods or services as identified in the application and the registration, rather than on the basis of what the evidence might show the applicant’s or registrant’s actual goods or services to be.” In re Trackmobile, 15 USPQ2d 1152, 1153 (1990)),

With regarding to the overlap in trade channels, the examining attorney relied on the same evidence discussed above regarding the relatedness of the goods, including the webpage evidence from retailers Avon, Honest, Pacifica, Tula, Ulta, Vegamour, Hello Bello, Love Beauty & Planet, Sephora, Blue Mercury, Bath & Body Works, Blu Atlas, Consult Beaute, Gimme, Love Wellness, New Nordic, Oase, and ZAS Naturals. "This evidence supports a finding that these goods are offered in at least one common channel of trade, that is, the websites operated by the third-party specialty retailers, often on the same page."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Does this one bother you? Would you rub a gummy vitamin on your skin?

Text Copyright John L. Welch 2024.

Monday, March 18, 2024

TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

So far this year, the Board has affirmed more than 90% of the Section 2(e)(1) mere descriptiveness refusals reviewed on appeal. Here are three more. How do you think they came out? [Results in first comment].



In re DMG Mori Co., Serial No. 79317839 (March 5, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon). [Mere descriptiveness refusal of GEAR PROFILER for "Metalworking machines and machine tools, and their structural parts" and for "Computers; downloadable and recorded computer software for controlling and monitoring tools of metalworking machine tools for use in connection with metalworking machine tools; computer peripheral devices; laser measuring systems; scanners." Applicant argued that the mark does not directly describe "metalworking machines and machines tools, computers, laser measuring systems, or scanners, much less with the requisite level of particularity required to support a ‘merely descriptive’ refusal.”]


In re Roto-Mix LLC, Serial No. 90862644 (March 6, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen) [Refusal to register AUTO-FEED for “agricultural machines, namely, motorized-vehicle-based automated and semi-automated livestock feed dispensers for livestock feeding trucks and systems" and for "land vehicles, namely, automated feed delivery vehicles." Applicant maintained that "'feed' has a double meaning–both as sustenance for animals and as supplying a consumable within a machine . . . meaning the term is not merely descriptive" and that "'auto' could be a shortened version of automatic but also a reference for an automobile and thus, the proposed mark requires '[s]everal mental steps' to determine what the coined term suggests about the goods and that the mark may be suggestive."]

In re Low Carbon Technologies LLC, Serial No. 88632729 (March 15, 2024) [not precedential] (Opinion by Judge Mark Lebow) [Mere descriptiveness refusal of the proposed certification mark LOW CARBON BEEF for "beef processing." Applicant argud that its services "do not evaluate 'carbon emissions' or specific characteristics of beef itself" and instead "certify numerous steps of beef processing and whether or not they meet numerous, non-obvious criteria that are part of its certification proceeding to reduce overall greenhouse gas emissions."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2024.

Friday, March 15, 2024

TTABlog Test: Is VEUVE OLIVIER for Sparkling Wines Confusable with VEUVE CLICQUOT for Champagne?

Petitioner MHCS sought cancellation of a registration for the mark VEUVE OLIVIER for sparkling wines, claiming a likelihood of confusion with the registered mark VEUVE CLICQUOT for champagne. Priority was not an issue because MHCS filed its underlying application first. The Board found the goods to be, in part, legally identical, since champagne is a type of sparkling wine. But what about the marks? How do you think this came out? MHCS v. Les Grands Chais De France, Cancellation No. 92075021 (March 8, 2024) [not precedential] (Opinion by Judge Martha B. Allard).


As to the conceptual strength of the cited mark, since the mark is registered on the Principal Register without a claim of acquired distinctiveness, it is presumed to be inherently distinctive. Furthermore, the word "veuve" (meaning widow) "is an arbitrary term as applied to Champagne and therefore is conceptually strong."

With regard to commercial strength, MHCS has used the mark VEUVE CLICQUOT in the United States since 1994. VEUVE CLICQUOT brand champagne is sold everywhere in the United States, through both online and in more than 50,000 brick-and-mortar stores. The mark has been widely advertised and promoted, has enjoyed high sales for the years since 2011, and has been the subject of numerous unsolicited media references. However, MHCS did not provide sales or advertising figures for the VEUVE CLICQUOT mark alone, but rather as to total figures for all of its “VEUVE Marks.”

The Board concluded that "overall the mark has substantial commercial strength and falls on the stronger side of the spectrum from very strong to very weak."

Turning to the marks, each of the marks could connote "a specific widow, i.e., the widow named Clicquot and the widow named Olivier." The Board found that "an appreciable number of purchasers are unlikely to be aware that VEUVE means 'widow' and are unlikely to translate the marks into English."

The slight difference in the “widow” connotations of the respective marks in translation, i.e., “the Widow Clicquot” versus “Widow Olivier,” would likely be lost on these purchasers, and it will not aid such purchasers in distinguishing the marks. They will perceive only that the same French-looking and French-sounding word, VEUVE, appears as the first term in both.

MHCS provided evidence that it has made VEUVE "a theme of its marketing efforts because of the history, and the widow Clicquot herself, connected with the origins of the company." "The presence of this strong distinctive term as the first word in each party’s mark further substantiates the marks' similarities."

Viewing the marks in their entireties in terms of sight, sound, meaning and commercial impression, we find that the marks are similar due to the shared initial term VEUVE. This shared dominant element outweighs the specific points of dissimilarity between the marks due to the terms that follow, i.e., CLICQUOT and OLIVIER.

And so, the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Do you think consumers would be confused? Respondent did not submit any evidence or testimony, nor did it file a brief. That rope-a-dope strategy didn't work. Would the lack of actual confusion over 8 years of coexistence have been a fertile ground for exploration?

Text Copyright John L. Welch 2024.

Thursday, March 14, 2024

Despite Applicant's Bad Intent, TTAB Dismisses Oppositions to EVSFOOD for Beverages

The Board tossed out these three-pronged oppositions to registration of the mark EVSFOOD for beverages and beverage components, dismissing Opposer's claims of lack of bona fide intent, false suggestion of a connection under Section 2(a), and likelihood of confusion under Section 2(d). Opposer's proofs came up way short on all three claims. Nu Science Corporation v. Yuyao Deutrel Chemical Science and Technology Co., Ltd., d/b/a Evsfood Group, Oppositions Nos. 91225314 and 91225328 (March 11, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Lack of Bona Fide Intent: Opposer Nu Science bore the burden of proof but failed to make a prima facie case of lack of bona fide intent. "Opposer did not submit any document request(s) and response(s) to substantiate its argument that there is no documentary evidence reflecting a bona fide intent to use the mark. The prima facie case may not require much, but it requires at least that. Nor does Opposer cite any other evidence in the trial record to substantiate its Section 1(b) claim."

Likelihood of Confusion: Nu Science alleged that applicant’s EVSFOOD mark "is a clear combination of Opposer’s two (2) Trademarks. ‘EVS’ is the initials of ‘EVERETT STOREY’ and ‘FOOD’ is the suffix of ‘CELLFOOD.’ Put together, the mark creates ‘EVSFOOD.'" Both notices of opposition alleged that "there exists a likelihood of confusion based on Opposer’s use of two marks conjointly."

Nu Science argued that the public will see, understand, and pronounce applicant’s mark as "Ev’s Food" because they "(1) will see and understand 'EV' as short for 'Everett Story,' (2) know 'Everett Storey' either as the inventor of Opposer’s CELLFOOD supplement or as a trademark used by Opposer, and therefore (3) will view the mark EVSFOOD as a hybrid of EVERETT STOREY and CELLFOOD." However, Nu Science failed to provide any evidence that consumers "will undertake this multi-step perceptive process."

Comparing the opposed mark with Nu Science's marks individually, the Board found the opposed mark more dissimilar than similar to CELLFOOD and very dissimilar to EVERETT STOREY.

As to the goods, Nu Sciene's registrations covered vitamin and mineral supplements. Nu Science provided no evidence to prove that these goods are related to applicant's beverages and beverage components.

Here, the goods are not identical, which is to say, they’re different. And the lack of probative evidence in this case constrains us, as in IKEA Systems, from finding that the goods are related. We’re not super-consumers with expertise in particular markets. We must rely on parties to submit the evidence we need to decide their claims. On the evidence―or more precisely, the lack thereof―in this case, this factor weighs against a conclusion that confusion is likely.

As to channels of trade, the "spotty" evidentiary record left the Board "unable to determine which way this factor tips," and so the Board considered it to be neutral. And although the overlap in classes of consumers favored Nu Science, the import of that overlap "pales by comparison to the dissimilarities in the marks and goods."

False Suggestion of a Connection: Nu Science made applicant's intent the centerpiece of its case. The Board found that the evidence "evinces Applicant’s intent to create an association between EVSFOOD, on the one hand, and Dr. Everett Storey and CELLFOOD products, together, on the other hand."

But bad intent is not what Section 2(a) proscribes. Falsely suggesting to the consuming public a connection is the proscribed wrong. That question, like so many others in trademark law, is one of consumer perception.

The Board found no direct evidence supporting Nu Science's argument that consumers will understand that “EVS” is a reference to Everett Storey. The evidence fell "far short of supporting Opposer’s claim that '“Everett Storey' is a part of Opposer’s name or identity such that, when U.S. consumers see EVSFOOD, they will associate it with Opposer."

In sum, there was a clear lack of evidence that "(1) EVSFOOD is the same as, or a close approximation of, the name or identity previously used by Opposer and that (2) EVSFOOD would be recognized by consumers as such, in that it points uniquely and unmistakably to Opposer."

And so, the Section 2(a) claim failed.

Read comments and post your comment here.

TTABlogger comment: Note that Judge Casagrande did not discuss applicant's bad intent in connection with the 2(d) claim. Perhaps his Trademark Reporter article explains why: "A Verdict For Your Thoughts? Why an Accused Trademark Infringer's Intent Has No Place in Likelihood of Confusion Analysis," 101 Trademark Reporter 1447 (September-October 2011).

Text Copyright John L. Welch 2024.