Friday, March 16, 2018

TTAB Test: Is "S-LON" Confusable With "C-LON" for Thread?

The USPTO refused registration of the mark S-LON for "yarns and threads for use in making beaded jewelry," finding the mark likely to cause confusion with the registered mark C-LON for "threads made of nylon." The goods overlap, but are the marks too close? How do you think this appeal came out? In re M & Y Trading, Serial No. 86879006 (March 14, 2018) [not precedential] (Opinion by Judge Susan J. Hightower).

Applicant agreed that its identification of goods encompasses nylon thread. The Board must presume that these overlapping goods travel through the same, normal channels of trade to the same classes of consumers.

As to the marks, applicant contended that each mark contains only “one letter with source identifying capacity” and that the different initial letters S and C sufficiently distinguish the marks in appearance, sound and pronunciation, connotation, and commercial impression. The Board did not agree.

Considered in their entireties, the marks are highly similar in appearance. With respect to sound, it is well-established that “there is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner.”  *** Although there is no “correct” way to verbalize the two coined terms before us, we find the most likely pronunciation of Applicant’s mark to be “ess-lon,” which is similar to Registrant’s mark “cee-lon.” Particularly given the overlapping nature of the goods at issue, it is likely that consumers will view C-LON and S-LON as variations of each other; perhaps denoting different varieties of threads, but nonetheless pointing to a
common source.

As for connotation and overall commercial impression, there was no evidence to support applicant' assertion that the element "–LON" conveys to consumers that the threads in question are made of nylon. Even if it did, "this shared significance serves to heighten the similarity in meaning between the marks."

We are mindful that because the marks would appear on goods that are overlapping and legally identical, the degree of similarity necessary to support a conclusion of likely confusion declines. See Viterra, 101 USPQ2d at 1908; In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016). We find the marks in their entireties to be highly similar in appearance, sound, connotation and commercial impression. The first du Pont factor thus weighs heavily in favor of a finding that confusion is likely.

Applicant argued that consumers engaged in handcrafts are particular about the materials that they use in fabricating their craft products and are careful in their purchasing decisions. The Board, however, found no supporting evidence in the record. In fact, registrant's C-LON threads are sold for as little as two dollars, and thus "may be subject to impulse purchase, including by consumers new to beaded jewelrymaking." The Board is required to make its decision based on the least sophisticated potential purchasers. In any event, even sophisticated purchasers “are not immune from source confusion where similar marks are used in connection with related [goods or] services."

The Board therefore affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: Do you agree with the decision?

Text Copyright John L. Welch 2018.

Thursday, March 15, 2018

Precedential No. 7: TTAB Denies Motion to Strike Disclosure Notice and Preclude Expert Testimony

In this consolidated cancellation proceeding involving registrations for the marks MONSTER SEAL A FLAT, MONSTER UP, and UNLEASH THE BEAST for "tire sealing compound," Respondent Martin moved to strike Petitioner Monster Energy Company’s notice of expert disclosure and to preclude the testimony of the named expert. The Board denied both motions, finding the notice to be timely and pointing out that Respondent may request additional time to take discovery of the expert. Monster Energy Company v. William J. Martin, 125 USPQ2d 1774 (TTAB 2018) [precedentail] (Order by Interlocutory Attorney Jennifer Krisp).

The Notice: The deadline for Monster's notice of expert disclosure was July 4, 2017 (ninety days before the close of commencement of the first testimony period on October 2, 2017). See Rule 2.120(a)(2)(iii) and FRCP 26(a)(2). Because July 4th is a holiday in the District of Columbia, the due date was extended to the next day. See Trademark Rule 2.120(a)(2)(iii)). On July 5, 2017, Monster Energy filed with the TTAB its notice of expert disclosure (and it served its expert report on the same day). The notice stated the correct proceeding number, but Monster's law firm entered the wrong proceeding number at the time of electronic filing. [NB - the Rules require service of the disclosure, not filing - ed.]. On July 6th, The firm informed the Board of the error and on July 7th the Board entered the notice in the correct case and assigned it a date of July 5. [NB - the notice was properly and correctly served on Respondent on July 5th, so this seems like a wholly unnecessary exercise to this writer - ed].

Respondent Martin claimed that the notice was untimely filed. [If filing wasn't required, how could it be untimely? - ed.]. Martin did not state that he did not receive the notice (correctly captioned) on July 5th.

In the context of discovery, the Board has made clear that an “obvious typographical error” should not operate to derail the discovery process, and that it expects parties who become aware of such an error to cooperate so as to avoid unnecessary delay and increased costs. Cadbury UK Ltd. v. Meenaxi Enter., Inc., 115 USPQ2d 1404, 1407 (TTAB 2015) (parties are expected to demonstrate good faith and cooperation during discovery; a party cannot avoid discovery obligations due to an obvious typographical error in discovery requests).

The Board therefore considered the (unnecessary) filing as timely, and it denied Martin's quixotic motion to strike the notice.

Respondent's Discovery: Pointing to a seeming clash of the applicable Rules, Respondent Martin asserted that because the amended Rules require written discovery request be served at least thirty-days prior to the close of discovery (set to close on August 3rd) - see Rule 2.120(a)(3) and Estudi Moline Dissey, S.L. v. BioUrn Inc., 123 USPQ2d 1268, 1270 (TTAB 2017) - he would be denied the right to written discovery of Monster's expert if the Board found the July 5th expert disclosure (and the expert report) acceptable. Moreover, Rule 2.120(a)(3) provides "the time to respond may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board, but the response may not be due later than the close of discovery." Not to worry!

The requirement in Trademark Rule 2.120(a)(3) that discovery requests be served early enough in the discovery period so that responses are due no later than the close of discovery does not, and is not intended to, preclude or encumber the opportunity to take discovery of an expert, regardless of whether the party makes an expert disclosure on or after the deadline therefor, provided that the Board is informed of the disclosure and finds it appropriate under the circumstances, so that it can issue an order that allows time for the discovery to occur.

* * *

Trademark Rule 2.120(a)(2)(iii) provides the Board wide latitude in managing a proceeding following any party’s disclosure of plans to use expert testimony, including but not limited to, suspending proceedings to allow for discovery of the expert and for any other party to disclose plans to use a rebuttal expert.

The Board therefore found no reason to preclude the expert’s testimony on the basis of Rule 2.120(a)(3), since Respondent Martin may request additional time for discovery.

The Board then suspended the proceeding under Trademark Rule 2.117(a) in light of a pending civil action between the parties.

Read comments and post your comment here.

TTABlog comment: A reader once asked whether an order issued by an interlocutory attorney can be precedential.

Text Copyright John L. Welch 2018.

Wednesday, March 14, 2018

Precedential No. 6: TTAB FInds MECHANICALLY FLOOR-MALTED Generic for ... Guess What?

The Board affirmed the USPTO's refusal to register the term MECHANICALLY FLOOR-MALTED, in standard characters, finding it to be generic for "malt for brewing and distilling" in International Class 31 and "processing of agricultural grain' in International Class 40. Applicant Mecca, relying primarily on the CAFC's Princeton Vanguard decision, contended that the Examining Attorney Dawn Feldman Lehker’s evidence did not include use of the exact term "mechanically floor-malted" as a generic designation for the identified goods or services. The Board pointed out, however, that Mecca was misreading the precedent. In re Mecca Grade Growers, LLC, Serial No. 86358219 (March 12, 2018) [precedential] (Opinion by Judge Angela Lykos).

Mere Descriptiveness: Applicant Mecca first argued that the applied-for term is not merely descriptive of the goods or services, but the Board concluded that the term immediately conveys to prospective consumers characteristics of both the goods and the services.

The explanatory text from Applicant’s specimen of use states that it produces a specific type of malt known as “floor-malted” malt and that Applicant’s grain processing services substitute mechanization for traditional floor-malting techniques.

By combining the old world approach to floor-malting with today’s modern technology, we have designed a malting machine capable of producing the finest quality, consistent malt available. We call this proprietary process: “Mechanical Floor-Malting.”

Moreover, the record showed it is "not uncommon" for artisan brewers to market their beer as “floor malted”  or for malt producers to use a mechanized version of floor malting,

Applicant argued that the juxtaposition of "mechanical" with "floor malting" creates an incongruity, but the evidence showed that "that mechanical assistance has been used in the past for some time in order to facilitate the floor malting process."

And so the Board affirmed the Section 2(e)(1) mere descriptiveness refusal.

Genericness: Applicant Mecca argued in the alternative that its proposed mark was registrable on the Supplemental Register. “In order to qualify for registration on the Supplemental Register, a proposed mark ‘must be capable of distinguishing the applicant’s goods or services.’” In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB 2017) (quoting 15 U.S.C. § 1091(c)). “Generic terms do not so qualify.” Id.

“The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.” Princeton Vanguard, 114 USPQ2d at 1830 (quoting Marvin Ginn, 228 USPQ at 530).

Making this determination “involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services?” Marvin Ginn, 228 USPQ at 530. See also Princeton Vanguard, 114 USPQ2d at 1829 (“there is only one legal standard for genericness: the two-part test set forth in Marvin Ginn”).

The USPTO has the burden of proving genericness by “clear and convincing evidence." In re Cordua, 118 USPQ2d at 1635.

The Board agreed with the Examining Attorney that the genus of goods and services is defined by applicant's identification of goods and services. See Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper genericness inquiry focuses on the description of [goods or] services set forth in the [application or] certificate of registration.”). The relevant purchasing public comprises purchasers and users of malt for brewing and distilling, and persons and
entities that have or obtain grain and need to have it malted.

The Board explained that Applicant's reliance on Princeton Vanguard was misplaced. "The fact that there is no evidence of third-party use of the precise term 'mechanically floor-malted' is not, by itself, necessarily fatal to a finding of genericness."

According to Princeton Vanguard, "[T]here is only one legal standard for genericness: the two-part test set forth in Marvin Ginn. … Regardless of whether the mark is a compound term or a phrase, the applicable test is the same and the Board must consider the record evidence of the public’s understanding of the mark as a whole. Am. Fertility, 188 F.3d at 1348-49."

Princeton Vanguard explicitly did not overturn In re Gould, in which dictionary definitions and explanatory text in the applicant's specimen sufficed to establish genericness. By remanding the Princeton Vanguard case to the Board for full consideration of dueling surveys, the CAFC merely underscored that all evidence bearing on public perception must be given appropriate consideration.

Here, as in In re Gould, the record consists of dictionary and industry specific evidence demonstrating the use of the words, ”mechanical,” “mechanically,” “malt,” “malting,” “malter,” “malted,” “floor-malting,” “floor-malted,” and “floor-malter,” and demonstrating how these words may be used together. These examples clearly show the meanings that relevant consumers attribute to those words when they are used separately and when they are used together. The purchasers in this case are not members of the general public who might not be familiar with the processing of grain for brewing or distilling. Here, the customers are those in the brewing and distilling business who are likely to know exactly what MECHANICALLY FLOOR-MALTED malt is and the process for producing this type of malt, regardless of the grammatical form of the word “mechanical” or whether “floor-malted” is spelled with a hyphen. 

The Board observed that "an applicant’s own website or marketing materials may be probative, or even, as in Gould, 'the most damaging evidence,' in indicating how the relevant public perceives a term." On its specimen website page, Applicant Mecca "admits that 'floor-malted' refers to a type of malt (available not only from Applicant but from others) for brewing and distilling and that 'floor-malting' is a process performed by others." As to the services, Mecca concedes that floor-malted malt may be produced using machinery.

The record as a whole establishes that with regard to the International Class 31 goods, consumers would understand the designation “mechanically floor-malted” to signify a specific kind of “[m]alt for brewing and distilling.” Similarly, with respect to the International Class 40 services, this evidence also shows that consumers would understand Applicant’s proposed mark as a whole to identify “[p]rocessing of agricultural grain.”

In short, the record showed that the mark Mecca seeks to register will be understood by the relevant public primarily as referring to the identified genus of goods and services. The fact that the term is an adjective rather than a noun "does not render it less generic." In re Central Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (ATTIC for fire sprinklers); see also Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1366 (TTAB 2013) (FOOTLONG for sandwiches).

Regardless of whether Mecca is the first and only user of the designation, it is not entitled to register a generic term. The test is not whether relevant consumers use the term to identify the genus, but whether consumers perceive the term as such.

The Board therefore concluded that MECHANICALLY FLOOR-MALTED is incapable of functioning as a mark for the subject good and services, and it affirmed the refusal to register on the Supplemental Register.

Read comments and post your comment here.

TTABlog comment: This phrase is a sub-genus of a sub-genus. The line between genericness and mere descriptiveness seems a bit fuzzy in these cases.

Text Copyright John L. Welch 2018.

Tuesday, March 13, 2018

Recommended Reading: Prof. Eric Goldman, "Emojis and the Law"

Eric Goldman, Professor at Santa Clara University School of Law, Director of the law school's High Tech Law Institute, and well known blogger (Technology and Marketing Law Blog), considers the problematic role played by emojis in modern day discourse, in his paper, "Emojis and the Law." [Download pdf here]. The article is "forthcoming" in Volume 83 of the Washington Law Review, but Eric has made available his latest draft.


Emojis are an increasingly important way we express ourselves. Though emojis may be cute and fun, their usage can lead to misunderstandings with significant legal stakes—such as whether someone should be obligated by contract, liable for sexual harassment, or sent to jail.

Our legal system has substantial experience interpreting new forms of content, so it should be equipped to handle emojis. Nevertheless, some special attributes of emojis create extra interpretative challenges. This Article identifies those attributes and proposes how courts should handle them.

One particularly troublesome interpretative challenge arises from the different ways platforms depict emojis that are nominally standardized through the Unicode Consortium. These differences can unexpectedly create misunderstandings.

The diversity of emoji depictions isn’t technologically required, nor does it necessarily benefit users. Instead, it likely reflects platforms’ concerns about intellectual property protection for emojis, which forces them to introduce unnecessary variations that create avoidable confusion. Thus, intellectual property may be hindering our ability to communicate with each other. The Article will discuss how to limit this unwanted consequence.

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

Monday, March 12, 2018

TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?

It has been said that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the goods or services. Presented for your consideration are three recent TTAB decisions in Section 2(d) appeals. One refusal was reversed. Which one? [Answer in first comment].

In re David Copeland-Smith, Serial No. 85498107 ((March 9, 2018) (Opinion by Judge Albert Zervas) [not precedential]. [Oral argument in this appeal was heard at Tulane Law School on February 28, 2018. Section 2(d) refusal of BEAST MODE SOCCER for "T-shirts" and "Sporting goods and equipment for soccer training, namely, balls" [SOCCER disclaimed], in view of the registered mark BEAST MODE, owned by NFL player Marshawn Lynch, for "t-shirts" and "Men's, women's and children's clothing, namely, shirts, sweatshirts; headwear, namely, hats, caps"].

In re Raphael Dal Bo AG, Serial No, 79204613 (March 9, 2018) (Opinion by Judge Lorelei Ritchie) [not precedential] [Section 2(d) refusal of the mark RAPHAEL DAL BO LA VITA È BELLA for “alcoholic beverages except beers," in view of the registered mark VITABELLA for "Alcoholic beverages containing fruit; aperitifs, liqueurs; pre-mixed alcoholic beverages, other than beer-based; spirits; wine; red wines; rose wines; sparkling wines; white wines"].

In re Biowish Technologies International Inc., Serial No. 86739178 (March 7, 2018) (Opinion by Judge Michael B. Adlin]. [not precedential] [Section 2(d) refusal of the mark BIOWISH GARD’N FRESH for "fruit and vegetable wash," in view of the registered mark GARDEN FRESH for "cleaning preparations for household purposes"].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

Friday, March 09, 2018

The Trademark Reporter's 2018 "Annual Review of U.S. Trademark Cases"

The Trademark Reporter has published its Annual Review of U.S. Trademark Cases: "The Seventieth Year of Administration of the Lanham Act of 1946," by Theodore H. Davis, Jr. and yours truly, John L. Welch. (download pdf here). The issue is dedicated to the late Arthur J. Greenbaum.

In his Introduction, Ted Davis observes that in Matal v. Tam, a case that will be remembered "fondly or otherwise," the Supreme Court invalidated a federal intellectual property statute for only the second time, the first beingThe Trademark Cases in 1879. The latter decision had significant consequences: trademark owners lacked federal protection until passage of the Trademark Act of 1905. Tam is not likely to have such a dramatic impact, since few provisions of the Lanham Act are viewpoint discriminatory. Some content-based restrictions, however, are or may be on the ropes: for example, the scandalousness provision of Section 2(a).

Ted also notes the TTAB's strong stand, in view of the federal Controlled Substances Act, against registration of marks used (or intended to be used) for marijuana-related products and services. An unexpected flurry of surname refusal cases under Section 2(e)(4) signaled a shift in the Board's focus to consumer perception rather its previous, more mechanical approach. And the Board continues to reject fraud claims, in contrast to the more receptive approach of the federal courts on that issue.

Finally, Ted notes that the Supreme Court has failed to resolve the issue that has long split the lower courts: whether a prevailing plaintiff in a trademark suit must show willful misconduct by the defendant infringer in order to obtain an accounting of profits.

* * * * * * * *
Again I thank The Trademark Reporter for granting leave to provide a link to this issue, which is Copyright © 2018 the International Trademark Association and reprinted with the permission of The Trademark Reporter®, 108 TMR 1 (January-February 2018).

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

Thursday, March 08, 2018

TTAB Sustains Opposition to "REMEMBER THIS NAME" - Fails to Function as a Mark for Legal Services

The Board sustained an opposition to registration of the slogan REMEMBER THIS NAME for legal services on the ground that the phrase does not function as a service mark. Applicant Lundy Law failed to provide direct testimony or survey evidence regarding consumer perception of the slogan as a source indicator. Larry Pitt Associates, P.C. v. Lundy Law, LLP, Opposition No. 91210158 (March 6, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Procedural Issues: The Board denied Lundy's motion to introduce into evidence, well after the close of trial and briefing, a single Facebook posting due to the lateness of the request, the lack of significant probative value, and the prejudice to opposer in delaying further this five-year old proceeding.

The Board limited the testimony of each party's expert witness to legal marketing issues, and refused to consider any assertions regarding how consumers would perceive applicant's mark, observing that the opinion of purported experts may not "serve as a substitute for the Board's judgment on the legal claim" before it.
Finally the Board jettisoned various items of proposed evidence, ruling that they were not eligible for submission via notice of reliance: including a written analysis of Lundy's advertising, video and audio recordings of use of REMEMBER THIS NAME by third-parties and by Lundy, and email communications involving Lundy. The Board noted that the documents that are eligible for a notice of reliance are registrations owned by a party, Internet materials, and discovery responses. See Rule 2.122(e)(1), (e)(2), (g), and (k).

Standing: Opposer Larry Pitt did not discuss the threshold issue of standing, but the Board found from the evidence that the parties are competitors in the field of personal injury law.

Failure to Function: The critical issue in determining whether a designation functions as a mark is how the relevant consumers perceive the purported it. "The mere fact that a designation appears on the specimen of record does not make it a trademark."

There is no question that REMEMBER THIS NAME may be considered a slogan, tagline, or a “call to action” used in Applicant’s advertising. The issue is whether REMEMBER THIS NAME as used by Applicant performs the function of a service mark by signifying to purchasers the source of the legal services being offered by Applicant.

The Board observed that 1-800-LUNDY LAW is the prominent element of applicant's advertising, while REMEMBER THIS NAME is the least prominent.

[The definition of trademark] contemplates use in such a manner as to fulfill that function and clearly does not contemplate that the public will be required or expected to browse through a group of words, or scan an entire page in order to decide that a particular word, separated from its context, may or may not be intended, or may or may not serve, to identify the product [or service] of the manufacturer or dealer. Ex parte National Geographic Society, 83 USPQ 260 (Comm’r. Pat. 1949).

Applicant Lundy Law did not provide any direct testimony regarding consumer perception of REMEMBER THIS NAME as used in its advertising. The Board found that "[t]he impression created by Applicant’s use of REMEMBER THIS NAME is an advertising message, informational slogan or a 'call to action' rather than an expression to identify and distinguish Applicant’s legal services." Although such a phrase could serve as a service mark, it must be used in such a way that it is perceived as an indicator of source of the services being advertised.

In this case, however, Applicant’s use of REMEMBER THIS NAME does not rise to the level of a service mark because there is nothing in the record demonstrating that the phrase REMEMBER THIS NAME creates a commercial impression separate and apart from the other material with which it appears in Applicant’s advertising.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Shirley, applicant needed a survey to show consumer perception. BTW this case was argued at Tulane Law School on February 28, 2018. One week later, the decision!

Text Copyright John L. Welch 2018.

Wednesday, March 07, 2018

Playboy Bunny Fails to Save GND Logo Mark From Section 2(d) Refusal, Says TTAB

Playboy Enterprises failed to pull a rabbit out of its hat in this appeal from a Section 2(d) refusal of the mark shown below, for various entertainment services including video game-related services. The Board,  however, found the mark likely to cause confusion with the registered mark GND for "provision of Internet website featuring news and information relating to current affairs, business, sports and entertainment."  In re Playboy Enterprises International, Inc., Serial No. 86745640 (March 5, 2018) [not precedential] (Opinion by Judge Albert Zervas).

The Marks: Playboy claimed that its mark "evokes the unique image of video gaming in conjunction with" its Rabbit Head Design, and further that the x-shape in the mark suggest the direction pads of video game controllers. Moreover, the combination of the letters GND with its allegedly iconic Rabbit Head Design purportedly calls to mind Playboy’s history and its association with the phrase “Girl Next Door.” Therefore, confusion would not be likely. The Board was not impressed.

We find that purchasers will give more weight to the letters than the design elements in considering the mark in its entirety, because the letters are large in size, the pentagon-shaped arrows function as a background for each letter, and the “rabbit head design” is not likely to be articulated verbally in this mark.

There was no evidence that the letters GND would be recognized as referring to Applicant Playboy. Furthermore, Playboy's own use of the mark indicates that it intends the letters “G,” “N” and “D” to mean “Gamer Next Door,” not “girl next door.”

Even if consumers perceive the "rabbit head design" as a house mark and GND as a service mark, there still would be likely confusion, since addition of a house mark "does not obviate confusion." Indeed, the Board noted, "this could engender reverse confusion" with registrant's mark.

In sum, the Board found Playboy's mark to be more similar than dissimilar to the cited mark.

The Services: The Board found the services to be overlapping since both applicant and registrant provide a website and registrant's entertainment information may include information about video game tournaments, events, and competitions. Similarly, Playboy's continuing programming about the gaming industry may be identical to the contents of registrant's website. Third-party use and registration evidence confirmed the relatedness of the involved services. The Board presumed that the purchasers and trade channels are the same for the overlapping services.

Conclusion: Confusion is likely, and so the Board affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: Not exactly a hare-raising decision.

Text Copyright John L. Welch 2018.

Tuesday, March 06, 2018

WYHA? TTAB Affirms Requirement for Specificity of Cable Clip Composition to Allow Proper Classification

The Board affirmed a requirement that Applicant Northeastern University amend its identification of goods for the mark NORTHEASTERN by specifying the material composition of its "clips for electric charging cables" to allow proper classification. The Examining Attorney maintained that the clips fall in Class 6 if they are metal, and International Class 20 if they are non-metal. Northeastern insisted that they fall in Class 9 with the rest of the goods in its application ("Cases for mobile phones; refrigerator magnets; battery packs; mouse pads’ computer mouse’ blank USB flash drives; sleeves for laptops). In re Northeastern University, Serial No. 87487674 (March 2, 2018) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

Northeastern argued that the purpose of the clips controls their classification, and material composition s a secondary consideration to be used if the goods cannot be classified by function or purpose. It further contended that the singular purpose of its clips constitutes a special use or attribute justifying classification. The Board was unmoved.

[U]nlike “toilets adapted for medical patients or for use by disabled persons,” which are classified as medical apparatus in Class 10 based on the particular use of the goods, rather than in Class 11 with general “toilets,” Applicant’s “clips for electrical charging cables” do not have a special use or attribute that would justify classification in International Class 9 rather than by material composition in International Classes 6 or 20. See TMEP § 1402.03(5).

The Board agreed with Examining Attorney Steven M. Perez that “[n]othing in the identification of goods indicates that Applicant’s cable clips function differently than other cable clips, or that they are specially adapted for 'for electric charging cables.'"

The Board affirmed the refusal to register solely as to the "clips for electric charging cables."

Read comments and post your comment here.

TTABlog comment: Why not just go along with the Examining Attorney? Did the University want to avoid paying an extra class fee?

By applicant's logic, clips for potato chip bags would be in Class 30.

Text Copyright John L. Welch 2018.

Monday, March 05, 2018

TTAB Test: Is "ALL IN ONE" Merely Descriptive of Electric Wall-Mounted Hand Dryers?

The USPTO refused registration of the mark ALL IN ONE, finding it to be merely descriptive of "electric wall-mounted hand dryers." Applicant Excel argued that because its products perform only one function they can't be all-in-one units, and therefore it would take "significant imagination and thought for a relevant consumer to reach a conclusion as to the nature of the associated goods." How do you think this appeal came out? In re Excel Dryer, Inc., Serial No. 86754756 (March 2, 2018) [not precedential] (Opinion by Judge Thomas Shaw).

The evidence submitted by Examining Attorney Joanna M. Shanoski showed that wall-mounted hand dryers frequently combine a number of functions or features into one unit: for example, the ability to dry both hands and hair. "In addition, the dryers may include automatic sensors, be ADA compliant, vandal resistant and able to handle multiple voltages, incorporate antimicrobial technology, or have paper towel dispensers as well."

Since applicant’s identification of goods is broadly worded and without limitation as to function or feature, it must be interpreted to include functions or features common to such hand dryers.

Accordingly, we find that consumers will readily understand from the term ALL IN ONE that Applicant’s hand dryers will combine two or more functions or features in a single unit. Indeed, two of the foregoing hand dryer product descriptions, the “VERDIdri all-in-one hand dryer” and the American Specialties “all-in-one unit,” use the term “all-in-one” to describe similar competing products with multiple such functions or features. ALL IN ONE must remain available for competitors to use in describing their hand dryers with multiple functions or features."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: The opinion is a mere six pages. Is this a WYHA? If the product performs only one function, then why is it called "ALL IN ONE?"

Text Copyright John L. Welch 2018.