"DREAM DECIDE DO" Fails to Function as a Trademark for Stationery and Printed Works, Says TTAB

The phrase DREAM DECIDE DO may sound like it came from a Taylor Swift song, but it wasn't a hit with the TTAB. The Board affirmed a refusal to register the proposed mark, finding that it fails to function as a source indicator for "Stationery; Blank notepads; Blank paper notebooks; Printed day planners; Printed desktop planners; Printed motivational cards; A series of printed books, printed articles, printed handouts and printed worksheets in the field of motivation and personal development." In re Financial Success Media, LLC, Serial No. 97087569 (May 10, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Board's assessment of whether the proposed mark functions as a trademark is based on whether the relevant public, i.e., purchasers or potential purchasers of the identified goods, would perceive DREAM DECIDE DO as a source identifier for those goods. "We look to the specimens and other evidence of record showing how the designation is actually used in the marketplace."

Examining Attorney Kim Teresa Moninghoff submitted marketplace evidence showing use of the phrase "Dream Decide Do” by third parties in connection with clothing, podcasts, career events, book teasers, and planners, and in blogposts and other social media. She argued that DREAM DECIDE DO is widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment, and is “commonly used as a motivational or coaching tool to convey the steps to achieving one’s dreams.”

Applicant pointed to the lack of evidence of use of DREAM DECIDE DO for planners or its other 16 goods. The Board, however, observed that the evidence showed individuals and businesses using this slogan in a non-trademark manner. "In prior cases, we have found evidence of usage by various businesses, or on other products and services, not limited to any particular sector, or particular goods, to be probative of informational use."

Moreover, "ornamental use of phrases on planners by third-parties, or variants of the designation, while not determinative, is relevant to the determination of whether DREAM DECIDE DO functions as a mark."

Applicant also criticized the amount of evidence as insufficient to establish widespread use. The Board was unmoved. "Although the volume of evidence in this case is not as large as in other Board cases, there is no specific rule as to the exact amount or type of evidence necessary to prove informational use."

Concluding that "[t]his common use by third parties of DREAM DECIDE DO and its variants, renders it less likely that the public would perceive the phrase as identifying a single commercial source," the Board affirmed the refusal to register."

Read comments and post your comment here.

TTABlogger comment: Do you think DREAM DECIDE DO could serve as a source indicator for an ice cream parlor? An ice cream flavor? The BLACK CARD case suggests that whether a mark fails to funciton depends on the goods/services involved.

Text Copyright John L. Welch 2024.

TTAB Finds CINNAMON DONUT STOUT to be Generic for . . . Guess What?

I don't drink a lot of beer - I want to keep my weigh down. But I don't think I would ever want a glass of CINNAMON DONUT STOUT. The Board was not enamored with the idea, either. It affirmed a refusal to register, on the Supplemental Register, the term CINNAMON DONUT STOUT for "beer" [STOUT disclaimed], finding it to be generic for the goods under Sections 23(c) and 45. Examining Attorney Raul Cordova "proffered clear and convincing evidence that beer is offered in a variety of flavors that describe the central, or key, aspect of the beer." In re Blake Farms Hard Apple Cider, LLC, Serial No. 90504414 (May 16, 2024) [not precedential] (Opinion by Judge Melanye K. Johnson).

Not surprisingly, the Board found the genus of the goods to be "beer" and the relevant purchasers to be "ordinary adult members of the public who are beer drinkers." As to the meaning of the proposed mark, applicant's specimen of use states: "Made with Blake’s Cider Mill famous donuts & locally sourced cold brew coffee, this stout has notes of rich chocolate, vanilla and cinnamon."

The Examining Attorney submitted third-party website evidence that included the terms "cinnamon donut" in the name of a beer. Based on that evidence, the Board found that "flavored beer is a type of beer within the genus “beer” defined by Applicant’s identification of goods."

When a term “directly names the most important or central aspect or purpose of [an] applicant’s goods” and would be understood by the relevant consumers as referring to a category of those goods, the term is generic. In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) [ATTIC for sprinklers]. *** Here, flavor, including flavors resulting in beer tasting like another food or beverage, is an important and central aspect for beer. Specifically, the flavor “cinnamon donut” refers to a key, or central, aspect of Applicant’s Goods as well as the goods of several third parties.

The Board further noted that an adjective may serve as a generic term. See Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1366 (TTAB 2013) [FOOTLONG for sandwiches]. "The primary significance of 'cinnamon donut' is as a generic adjective for cinnamon donut beer, and the fact that CINNAMON DONUT STOUT is not the common name of one type of beer does not mean that the term is registrable."

Here, the term “cinnamon donut” immediately describes the most important or central aspect of Applicant’s Goods — the “cinnamon donut” flavor. Thus, “cinnamon donut” is a term that identifies a category of beer.

The Board concluded that the Examining Attorney met the USPTO's burden of proving genericness by "clear and convincing evidence." In re Cordua Rests., 118 USPQ2d at 1635. And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA? Perhaps you would prefer a Blueberry Muffin? Note that last year, in Uman Diagnostics, a precedential decision, the Board ruled that the standard for proof of genericness is a "preponderance of the evidence." See Michael Hall's article here. Here the Board said the standard is "clear and convincing." What gives?

Text Copyright John L. Welch 2024.

Chestek PLLC Files Cert Petition for Supreme Court Review of CAFC Decision Upholding Domicile Address Requirement

Chestek PLLC has filed a petition for writ of certiorari, asking the Supreme Court to review the CAFC's decision [TTABlogged here] upholding the TTAB's affirmance [TTABlogged here] of a refusal to register the mark CHESTEK LEGAL for "legal services," based on Applicant Chestek PLLC's failure to provide its "domicile address." Chestek PLLC v. Vidal, No. 223-1217 (filed May 13, 2024) (petition here) (S. Ct. docket here).

As noted, the USPTO refused to register the mark CHESTEK LEGAL based on Chestek PLLC's failure to provide its "domicile address." Chestek listed a post office address, but under Trademark Rules 2.32(a)(2) and 2.189 a post office box is not a street address. Conceding that it failed to comply with the domicile address requirement, Chestek argued on appeal to the CAFC that the Rules were unlawfully promulgated under the Administrative Procedure Act (APA), but the Board disagreed and the CAFC sided with the Board.

The CAFC observed that Section 553(b)(A) of the APA "does not require the formalities of notice-and-comment for 'interpretative rules, general statement of policy, or rules of agency organization, procedure, or practice.'" Chestek argued that the domicile address requirement is not an "interpretative" rule but rather a "substantive" rule requiring notice-and-comment. Alternatively, Chestek argued that notice-and-comment is required even for interpretative rules. The CAFC was not persuaded.

The court concluded that the USPTO's requirement is not a substantive rule because it "does not alter the substantive standards by which the USPTO evaluates trademark applications, e.g., a mark's use in commerce or distinctiveness." As to the alternative argument, Chestek offered no support for displacing the procedural exceptions to notice-and-comment rulemaking contained within Section 553(b).

The petition for certiorari states the Question Presented as: "Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2)."

Read comments and post your comment here.

TTABlogger comment: The deadline for filing an amicus brief is June 14th.

Text Copyright John L. Welch 2024.

TTAB Affirms Refusal to Register Muffler Configuration Due to Lack of Acquired Distinctiveness

Rarely does the Board find that a product configuration clears the hurdles of functionality and acquired distinctiveness to reach the registrability finish line. Here, the first hurdle was set aside because the Board declined to consider the functionality issue. Applicant Don Emler failed to clear the second hurdle. In re Don Emler, Serial No. 90688260 (May 13, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).

Emler applied to register a product configuration for motorcycle mufflers, and particularly only "the slanted line at the connection between the canister portion of the muffler" and the outlet end cap, which Emler refers to as a "Slashcut" design. Emler sought registration of this single feature under Section 2(f), since a product configuration can never be inherently distinctive (Wal-Mart).

The Board observed that Emler's burden of proof to establish acquired distinctiveness "is particularly heavy where an applicant seeks to establish the distinctiveness of a product design, which consumers are predisposed to view as useful or appealing, not source-indicating."

The question, then, was whether the Slashcut or slanted line "has become distinctive to motorcycle consumers." The Board noted that, although the identified goods are limited to motorcycle exhaust components, the application does not include any limitation as to the type of motorcycle. "This broad scope is important here, because there are many kinds of motorcycles, ranging from scooters to high-performance racing motorcycles to off-road motorcycles." Therefore, the relevant consumers include all motorcycle riders and owners.

Emler claimed exclusive use of the Slashcut design element since 2005, with sales of about 15,000 units per year. "With almost twenty years of sales and no competitors using the same design, it is at least plausible that the proposed mark has become distinctive within its primary market segment."

Emler submitted several declarations from individuals engaged in motorcycle-related businesses, attesting that they recognize the Slashcut design as a source identifier. The Board found the declarations to be probative, but it saw "a theme running through all of Applicant’s evidence:" the evidence related to mufflers used primarily with off road or motocross motorcycles.

Applicant’s evidence may be somewhat probative of acquired distinctiveness within the off road and motocross motorcycle segment. The declarations are detailed and specific to each declarant, and the declarants are highly experienced persons within the off road and motocross communities. But therein lies the problem. Applicant’s evidence is limited to the off road and motocross market segment, but the Application is not. The Application identifies motorcycle exhausts more generally, and includes, therefore, street motorcycle exhausts, too. For this reason alone, we find Applicant has failed to show acquired distinctiveness for the proposed mark.

Furthermore, the slanted line or Slashcut "is likely just one example of a visible angled line somewhere on the exterior of the motorcycle. It is not a prominent feature, even of the muffler itself, and when viewed within the context of a motorcycle with many different parts, the challenge of proving acquired distinctiveness will be daunting."

The Board advised Emler that if he continues to pursue trademark protection for the proposed mark, he would have to present a substantially stronger record than he presented here. 

Read comments and post your comment here.

TTABlogger comment: Should Emler file a new application limiting the identification of goods to mufflers for off-road and motocross motorcycles?

Text Copyright John L. Welch 2024.

TTAB Orders Cancellation of "THE PLIMSOULS" Registration on Ownership and Likelihood of Confusion Grounds, Rejects Abandonment Claim

In another of those battles between a rock band and one of its members, the Board again sided with the band, granting a petition for cancellation of a registration for THE PLIMSOULS for "entertainment in the nature of live performances by a musical band." The Board ruled that the band was entitled to challenge the registration, had not abandoned the mark, and had proved its claim of ownership of the mark and likelihood of confusion based on its prior use of the same mark for the same services. The Plimsouls v. Edward David Munoz, Cancellation No. 92076883 (May 8, 2024) [not precedential] (Opinion by Judge Michael B. Adlin).

"The Plimsouls" band was formed in California in 1979 with four band members, Respondent Munoz being one of the four equal partners. After their "heyday" in the early 1980’s, the Plimsouls had alternating periods of activity and inactivity: "typical of bands that last as long as ours has,” said Peter Case. During its breaks from performing, the band continued to release recordings in new digital formats including compact disc and electronic downloads, licensed its music for streaming, managed its copyrights, and collected royalties.

Entitlement to a Statutory Cause of Action: The Board observed that a band is entitled to seek cancellation of a registration for its own name, "especially when that registration is owned by another performer that plays not only the same type of music but the same exact songs." Respondent Munoz asserted that the petitioner had failed to provide any evidence that it was a legal entity, but the Board pointed out that under California law, "the association of two or more persons to carry on as co-owners a business for profit forms a partnership, whether or not the persons intend to form a partnership." Moreover, "[a] person who receives a share of the profits of a business is presumed to be a partner in the business."

In short, Petitioner has used THE PLIMSOULS for live musical performances over the years, plans to continue doing so, and in any event has been an ongoing for-profit concern (partnership) that has collected royalties on its songs and recordings for the last 40+ years. There is no evidence that the Plimsouls partnership ever dissolved. The band is entitled to request cancellation of the involved registration for its name.

Abandonment: The Board framed the question as "whether the continued sale and streaming of Petitioner's recorded music throughout these periods would lead consumers encountering another 'Plimsouls' group performing live, such as Respondent's, to perceive Respondent’s group as originating from the same source as Petitioner’s band."

Respondent Munoz argued that Petitioner abandoned the mark because "none of the members of The Plimsouls besides [Respondent] have performed live under that name since 2007 and they have not engaged in any commercial activity at all with respect to the mark since they released an album in 2012." The Board found otherwise:

We disagree, notwithstanding that there have been multiple three-year periods in which the Plimsouls did not perform live, because the group was still using the mark for, inter alia, a number of recordings, and earning royalties from those recordings. ***

Since 2012 the group continued to license its music for streaming, manage its copyrights and collect royalties. Since releasing its first EP in 1981, the band continuously sold its recordings. "Courts have repeatedly found that these types of activities by musical groups disprove claims of abandonment."

Ownership: The Board found it "crystal clear" that the parties intended to form, and jointly benefit from, a partnership consisting of four members: Case, Ramirez, Pahoa, and Respondent Munoz. Each of the partners had an "equal say." Respondent not only continued to earn royalties from the band’s partnership after he registered THE PLIMSOULS mark in his own name, but he also joined with his partners in managing the band’s copyrights.

Respondent had and continues to have his cake (royalties from the band). But he cannot eat it too (exclusively own the band’s mark), when the record reveals the parties’ joint intention and expectation since 1979 that they would own the mark THE PLIMSOULS together, in partnership.

The evidence was also crystal clear that the public associates the mark THE PLIMSOULS with the group, not just Munoz, its lead guitarist. Furthermore, the public will look to Petitioner, the band they know from recordings, concerts, Valley Girl [performance] and press reports, to stand behind the quality of goods or services offered under THE PLIMSOULS."

The Board concluded that Respondent Munoz "did not solely own THE PLIMSOULS and as a result Respondent’s application was void ab initio."

Likelihood of Confusion: The Board had "little doubt" that confusion is likely. "Petitioner’s sound recordings, which remain on sale, and Respondent’s 'Plimsouls' performances 'draw upon the same source of consumer goodwill.'" See Wonderbread 5, 115 USPQ2d at 1301-02 (“when the parties are claiming rights in the same mark for the same goods or services, likelihood of confusion is inevitable”).

Conclusion: "Petitioner owns the mark THE PLIMSOULS, Respondent does not, and Respondent’s use of that mark will only cause further confusion."

Read comments and post your comment here.

TTABlogger comment: Never heard of them. By the way, the name was a play on the English word for sneakers, "plimsolls." Never heard of them either.

Text Copyright John L. Welch 2024.

Another Section 2(d) Reversal: USPTO Fails to Prove Cosmetics Are Related to Flatware and Other Household Goods

When in rains, it drizzles. The Board reversed a Section 2(d) refusal of the mark ELEMENTARY (standard characters) for various goods and services in eight classes, including flatware, table lamps, desk sets, pillows, dishes, bath linens, rugs, and retail store services featuring household goods, finding confusion unlikely with the mark shown below for "Non-medicated skin cleansing and exfoliating preparations; pads for cleaning impregnated with cosmetics; Nonmedicated soaps; perfumes; essential oils; cosmetics; make-up; make-up removing preparations; lipstick; beauty masks." The Board concluded that "the lack of relatedness of the goods and services outweighs any similarity of the marks for Classes 8, 11, 16, 20, 21, 24, 27 and 35 and any overlap in trade channels for the goods." In re Dileep Essentials Pvt. Ltd., Serial No. 90978154 (May 8, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Board found the marks to be "highly similar" based on their visual and phonetic similarities. It observed that "many consumers are likely to perceive both marks to be variations on, or misspellings of, and the phonetic equivalent of 'elementary.'" "In view of the similarities in appearance, sound, and likely similar connotation for many consumers as a misspelling or phonetic equivalent of “elementary,” with the same meaning, we find the overall commercial impressions of the marks to be very similar.

To demonstrate the relatedness of the goods and services, the Examining Attorney relied on webpages from retailers Anthropologie and Urban Outfitters, and from fashion designers Louis Vuitton, Gucci, Versace, and Aerin. The Board was unimpressed. As to the retailers:

We find this evidence does not support a finding of relatedness under DuPont factor two. None of the soap, fragrance or cosmetic/makeup products are offered under the Anthropologie or Urban Outfitters marks but are third-party products offered under third-party marks. This evidence is more akin to department store evidence as it shows the offering of a wide variety of differently-branded goods by a retailer. The landing webpages for these websites also show that these products are offered under different categories and different subpages.

As for the evidence regarding the four fashion designers - Louis Vuitton, Gucci, Versace, and Aerin - the Board was again unimpressed.

Third-party designer marks are well-recognized as covering a wide variety of products, and they are of little value in showing that consumers will perceive the listed goods as emanating from a single source. * * * Outside of the designer mark context, there is no inherent relatedness between soap, perfume, and cosmetics, on the one hand, and cutlery, furniture, flatware, dishes and plates, photo frames, vases, candlesticks, on the other hand, as shown on these webpages.

Applicant Dileep's recited retail store services did not identify soap, cosmetic/makeup, or fragrances, or any of the other goods identified in the cited registration. None of the remaining evidence in the record established the relatedness of Dileep’s retail store services and any of the goods in the cited registration.

As to channels of trade, the webpages showed that these retailers sell the involved goods on their websites, although the various categories of goods are sold on different subpages. The Board found that Dileep’s identified goods are offered "in at least one common channel of trade, that is, the websites operated by the third-party specialty retailers."

The Board concluded that the second DuPont factor was dispositive, and so it reversed the refusal.

Read comments and post your comment here. Nice to see the USPTO's reliance on "fashion designers" pegged back a bit.

TTABlogger comment:

Text Copyright John L. Welch 2024.

In a Split Decision, TTAB Reverses Mere Descriptiveness Refusal of ARBATA for Tea Despite the Word's Lithuanian Meaning

The USPTO refused to register the mark ARBATA for "tea" on the ground of mere descriptiveness, relying on the doctrine of foreign equivalents: the word "arbata" means "tea" in Lithuanian. Applicant MJ Cobalt, LLC argued that the doctrine should not apply because Lithuanian is not a "common" language in the United States. The panel majority agreed, finding it "very unlikely that the ordinary American consumer of tea would 'stop and translate [ARBATA] into its English equivalent.'" The dissent criticized the majority's "sole emphasis on [a] statistical analysis" and its reliance on precedents dealing with likelihood of confusion rather than descriptiveness or genericness. In re MJ Cobalt, LLC, Serial No. 97673097 (May 9, 2024) [not precedential] (Opinion by Judge Christopher C. Larkin, dissent by Judge Angela Lykos).

The Board began with the issue of "the applicability of the doctrine of foreign equivalents to the Lithuanian language."

“Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine . . . descriptiveness. . . . When it is unlikely that an American buyer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).

The "ordinary American purchaser" includes purchasers knowledgeable in English as well as the pertinent foreign language. In re Taverna Izakaya LLC, 2021 USPQ2d 1134, at *2-3 (TTAB 2021).

The Board found that Lithuanian is clearly a modern language; "unlike a 'dead' language such as Latin, Lithuanian is currently spoken in Lithuania and elsewhere." But is it a "common" language in the United States?

The TMEP instructs examining attorneys to provide evidence of the percentage or number of United States consumers who speak the language in question. (Section 1207.01(b)(vi)(B)). Here, it was the applicant who provided census data: the October 2015 U.S. Census Bureau table showed that between 2009-2013, fewer than 40,000 persons in the United States spoke Lithuanian at home.

The number of Lithuanian speakers in the U.S. population is at least one order of magnitude smaller than the percentages of speakers of Spanish, French, and Russian in the United States in the cases discussed in TMEP Section 1207.01(b)(vi)(B), and it is many times smaller than the number of speakers of modern languages found to be “common” in other cases.

The Board therefore found that Lithuanian is not a “common” language in the United States, "making it very unlikely that the ordinary American consumer of tea would ‘stop and translate [ARBATA] into its English equivalent.'" Malhotra, 128 USPQ2d at 1102 (quoting Palm Bay Imps., 73 USPQ2d at 1696). It is far more likely that such a consumer will simply "take [ARBATA] as it is . . . ." Palm Bay Imps., 73 USPQ2d at 1696."

The Examining Attorney also contended, alternatively, that, even if not translated, "the term ARBATA is known in English-speaking circles," and that "upon a Google or other Internet search the term ARBATA would be found and would be used in reference to tea." In other words, it is unnecessary to apply the doctrine of foreign equivalents because "arbata" has an independent meaning as a word in English. The evidence, however, consisted mostly of foreign websites, and was unpersuasive.

The Examining Attorney has not shown why U.S. consumers of tea, a staple beverage in the United States, are likely to search for and be exposed to websites of tea companies located in Lithuania and Hong Kong.

And so, the refusal was reversed.

Dissent: Judge Lykos agreed that ARBATA, without translation, is not merely descriptive of tea. She disagreed, however, with the majority's refusal to apply the doctrine of foreign equivalents. Judge Lykos asserted that the panel majority was wrong in "[p]lacing the sole emphasis on this statistical analysis" because it "represents a departure from our precedent governing the application of the doctrine of foreign equivalents in the context of mere descriptiveness and genericness refusals."

This is because the underlying policy rationale is different and arguably stronger for applying the doctrine of foreign equivalents in the context of mere descriptive and genericness refusals as compared to likelihood of confusion refusals. Such refusals pertain to the validity of a trademark as opposed to consumer confusion.

In rejection the majority's statistical approach to the meaning of the word "common," Judge Lykos reviewed many precedents and explained: "The key point is that the doctrine applies to mere descriptiveness and genericness refusals for common foreign languages even if the general public is unfamiliar with the language."

The doctrine of foreign equivalents should not be applied “mechanically.” In re Isabella Fiore, LLC, 75 USPQ2d 1564, 1569 (TTAB 2005). In this case, it is undisputed that Applicant’s single word mark ARBATA is the Lithuanian word for “tea;” that the identified goods consist of “tea;” and there is no other meaning in English of the word “arbata.” The record shows that the United States is home to the largest diaspora of individuals of Lithuanian descent outside of the country of Lithuania. Under these circumstances, where the validity of a proposed mark is implicated, the Examining Attorney’s mere descriptiveness refusal should be affirmed.

Read comments and post your comment here.

TTABlogger comment: Quite a clash of opinions! Well worth the read. Is it time for an en banc decision by the Board on this issue?

Text Copyright John L. Welch 2024.

BREAKING! TTAB Reverses Section 2(d) Refusals of FURY TIRES and FURY OFF-ROAD for Tires

So far this year, the Board has affirmed 69 of the first 71 Section 2(d) refusals reviewed on appeal (i.e., 97%). Trademark practitioners are scratching their collective head. But the Board uncommonly just reversed two Section 2(d) refusals: "We believe that this case presents a situation where the differences in the marks, taken in their entireties, outweigh the other factors. While not a common occurrence, cases like this arise from time to time." In re Limin Jiang, Serial Nos. 88921750 and 88921790 (May 8, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The USPTO refused registration of FURY TIRES (TIRES disclaimed) and FURY OFF-ROAD (OFF-ROAD” disclaimed), both for “Tires for off road use; off road tires,” finding confusion likely with the registered mark ELDORADO SPORT FURY AT 4S for “tires” (SPORT disclaimed). In an opinion of only twelve pages, the Board reversed the refusals.

Not surprisingly, the Board found the word FURY to be the dominant element in applicant's marks. The Examining Attorney argued that the words ELDORADO and FURY dominate the cited mark, since SPORT is descriptive and AT 4S stands for "all terrain four seasons." Hold you horses, said the Board:

Even if we were to consider the terms “AT” and “4S” descriptive―and we hasten to note that we don’t think the evidence cited by the Examining Attorney quite rises to that level―the mark we are considering is made up of five terms: ELDORADO SPORT FURY AT 4S. To conclude, as the Examining Attorney does, that consumers will focus selectively on the first and third terms, but not the second, fourth, and fifth, strikes us not only as a legally improper dissection of the mark, but also as an inaccurate reflection of how consumers would perceive the registered mark.

The Board found that, when the marks are considered in their entireties, "the multiple dissimilarities between Applicant’s marks and the registered mark overshadow the one similarity." And so, it reversed the refusals to register.

Read comments and post your comment here.

TTABlogger comment: WHYRR? (Would you have refused registration?)

Text Copyright John L. Welch 2024.

TTAB Orders Cancellation of UBANK Registration for Banking Services, Rejects Laches Defense and Suggested Geographical Carve-Out

In this mostly straightforward cancellation proceeding, Respondent UBANK (Texas) conceded that Petitioner UBANK TN was the first user of the mark UBANK for banking services. Respondent claimed, however, that petitioner's prior use resulted in "minimal market penetration," asserted that the challenged registration should survive with a carve-out granting rights to Petitioner that are geographically limited to Jellico, Tennessee, and argued laches as an affirmative defense. The Board was unimpressed and it granted the petition for cancellation. UBANK (TN) v. UBANK, Cancellation No. 92078890 (May 1, 2024) [not precedential] (Opinion by Judge Martha B. Allard).

Since the marks, services, and channels of trade were identical, topped off with several incidents of actual confusion, respondent faced a formidable task in seeking to avoid cancellation. 

Minimal Market Penetration: Respondent’s minimal market penetration argument (i.e., that petitioner's prior use was limited to a single city) was a loser because, for purposes of priority, the Trademark Act "does not require any degree of market penetration; rather, it only requires 'prior use.' Case law makes it clear that Petitioner’s mark may be used in either interstate commerce or intrastate commerce, so long as the use is 'prior use.'"

Geographical Carve-Out: Respondent urged that petitioner, as a senior user in a remote trading area, is entitled only to be a concurrent user with rights limited to its geographical trading area. The Board pointed out, however, that such a carve-out cannot be obtained in this proceeding. "[P]ossible concurrent rights are determined by the Board only in a concurrent use proceeding, not a cancellation proceeding."

We agree with Petitioner that the present proceeding is not a concurrent use proceeding, nor could it be . . . , as the present proceeding cannot be converted to a concurrent use proceeding. Rather, a concurrent use proceeding may be generated only by filing an application with the USPTO for registration as a lawful concurrent user.

Laches: In order to establish its laches defense, respondent was required to show that "there was undue or unreasonable delay [by Petitioner] in asserting its rights, and prejudice to [Respondent] resulting from the delay." Respondent proved neither.

"'In the absence of actual knowledge [of trademark use] prior to the close of the opposition period, the date of registration is the operative date for laches,’ as it provides constructive notice to [a] petitioner of the registrant’s claim of ownership." The testimony was unclear as to when petitioner first had knowledge of respondent's use of the UBANK mark, and so the the operative date for assessing laches was the date the registration issued: July 23, 2019.

The petition for cancellation was filed on January 20, 2022, and so the period of delay was two-and-one-half years. "Our case law has held that comparable time periods with no communication between the parties was not a sufficient amount of time to find laches."

Turing to the issue of prejudice, assuming arguendo that there was an unreasonable delay, the Board looked to respondent's claim of economic prejudice "due to its continued investment in and promotion of its banking services under the UBANK Mark." However, respondent's CEO testified that "she did not consider Petitioner’s usage of the same mark to be a problem."

Respondent does not appear to have been affected by Petitioner’s usage, much less prejudiced by it. There is no evidence, nor does Respondent allege, that it curtailed its advertising or its expansion, or even considered doing so, in light of Petitioner’s usage. Thus, Respondent’s argument that it is prejudiced by Petitioner’s delay is not supported by the record.

And so, the Board granted the petition and ordered that the registration be cancelled.

Read comments and post your comment here.

TTABlogger comment: So, will the Texas bank now oppose the Tennessee bank's application? Will it file a concurrent use application? Will there be a settlement carving up the country? 

Text Copyright John L. Welch 2024.

TTAB Affirms Section 2(d) Refusal of NUDE X for Cosmetics in view of NAKED X for Hair Care Products

Trademark attorneys would be wise to become familiar with the CAFC's 2018 decision in Detroit Athletic [TTABlogged here]. At the time, I called it "a primer on much of the law of Section 2(d) as applied by the TTAB." It is frequently cited by the Board in recent decisions, including this one. In re BeBella Inc., Serial No. 97281194 (May 2, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen).

Here, in affirming a Section 2(d) refusal of the mark NUDE X for cosmetics in view of the registered mark NAKED X for hair care products, the Board found that, "while somewhat different in appearance and sound, overall the marks evoke similar connotations and commercial impressions." Applicant BeBella failed in its effort to show that NAKED X is a weak mark. "The similarities of the marks, coupled with similarity in goods marketed in the same trade channels to the same classes of consumers" led to the Board conclusion that confusion is likely "resulting from registration of the Application." [Is an Application registered, or a mark? Can registration of a mark cause confusion? - ed.]

Detroit Athletic [which involved the marks DETROIT ATHLETIC CLUB and DETROIT ATHLETIC CO.] was relied on by the CAFC in its recent Naterra opinion [TTABlogged here], wherein the court remanded a case [BABIES' MAGIC TEA and BABY MAGIC] to the Board so that it could "weigh heavily" the first DuPont factor. That remand may have focused the Board's attention on Detroit Athletic, which is cited eight times in this NUDE X affirmance, even for some rather mundane legal propositions, as follows:

• “The second DuPont factor ‘considers [t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration.’” In re Embiid, Ser. No. 8820289, 2021 WL 2285576, at *10 (TTAB 2021) (quoting In re Detroit Athletic Co., 903 F.3d 1297, 1306 (Fed. Cir. 2018) (quoting DuPont, 476 F.2d at 1361)). (p. 4).
  
  
• “[E]vidence … such as whether a single company sells the … [goods] of both parties, if presented, is relevant to a relatedness analysis ….” Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267 (Fed. Cir. 2002); see also Detroit Athletic, 903 F.3d at 1307 (affirming Board’s finding of relatedness of goods and services where the record included marketplace evidence of a single mark for both). (p. 5).
  
  
• While we contemplate the similarity or dissimilarity of the respective goods, we also consider the third DuPont factor, which “considers ‘[t]he similarity or dissimilarity of established, likely-to-continue trade channels.’” Detroit Athletic, 903 F.3d at 1303. (p. 7).
  
  
• The limitation that Applicant’s goods are sold only through its website is not set forth in its identification of goods and so, can form no part of our analysis. Detroit Athletic, 903 F.3d at 1307 (“The third DuPont factor--like the second factor--must be evaluated with an eye toward the channels specified in the application and registration, not those as they exist in the real world.”). (p. 8).
  
  
• We now consider the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Detroit Athletic, 903 F.3d at 1303." (p.18).
  
  
• Although the marks differ in terms of sound and appearance, this does not alleviate confusion. Charger Ventures, 64 F.4th at 1382 (citing Detroit Athletic, 903 F.3d at 1304-05). (p. 21).
  
  
• Disclaimed matter that is descriptive of a party’s goods is typically less significant or less dominant when comparing marks. Detroit Athletic, 903 F.3d at 1305. (p. 22).
  
  
• The disclaimer of NUDE constitutes a rational reason for giving the term less weight in our analysis. See Detroit Athletic, 903 F.3d at 1305. (p. 23).

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TTABlogger comment: The Board's citation of Detroit Athletic and Naterra is going to make it even more difficult to overcome a Section 2(d) refusal or defeat a claim.

Text Copyright John L. Welch 2024.