Friday, February 22, 2019

TTABlog Test: Is SKYRIZI Confusable with IZIRIZE for Pharmaceuticals?

Novartis AG opposed an application to register the mark SKYRIZI for various pharmaceutical preparations, alleging a likelihood of confusion with its registered mark IZIRIZE, also for various pharmaceutical preparations. The parties stipulated that the goods "are related and overlap in part," and that the trade channels "will be substantially identical." But what about the marks? How do you thing this came out? Novartis AG v. AbbVie Biotechnology Ltd., Opposition No. 91238564 (January 24, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).


Strength of Opposer's Mark: Applicant AbbVie contended that the letter sequence "RIZ" is entitled to a narrow scope of protection because the term is in common use in the pharmaceutical industry. Applicant submitted a list of numerous registrations for marks containing "RIZ" in Class 5 for "pharmaceuticals," including CARIZAX; BACTRIZOLE; BRIZO; HORIZANT; OBRIZANDA; ORIZON; PRIZEMBA; RIZAPORT; RIZIMO; RIZLATET; RIZOPRAD; RIZUPA; TRIZELL; TRIZIVIR; VARIZIG; VORIZE; WELTRIZ; and the following two marks owned by Opposer: VISPRIZA and RIZARG.

The Board observed that third-party registrations alone, although not probative as to commercial strength, "may be relevant to show the sense in which a mark is used in ordinary parlance; that is, an element common to both parties’ marks may have a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is inherently relatively weak." Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)).

In light of the third-party registration evidence, the Board found that "the letter sequence “RIZ” is a weak source indicator for pharmaceutical products." [Query? What is the well-recognized or suggestive meaning of "RIZ"? - ed.].

Comparing the Marks: The Board found that the marks look different. The lead element of a mark may be perceived as having a position of prominence, and the lead elements differ here. Neither mark has any meaning.

Although there is no correct pronunciation of a coined term, the parties agreed that there are several possible pronunciations of each mark. They disagreed, however, as to what those pronunciations are likely to be. The Board found, "[b]ased on typical conventions of pronunciation in English, . . . Applicant’s mark is likely to be pronounced SKĪ RĪZ E or SKĪ RIZ E and Opposer’s mark is likely to be pronounced as EASY RISE or IZZY RISE."

Since the only comment element in the marks is the weak letter string "RIZ," the Board concluded that the marks are more dissimilar than similar.

Conditions of sale: Applicant AbbyVie argued that the likely consumers of the products are prescribing medical professionals and pharmacists, who are sophisticated and are likely to exercise increased care in their purchasing decisions. The Board, however, observed that it must make its determination based on the least sophisticated consumer," which in this case may include members of the general public who have a medical need for a pharmaceutical product, but who have neither medical nor legal expertise."

In particular, as our precedent dictates, where competing medical products are at issue, “there is no reason to believe that medical expertise as to pharmaceuticals will ensure that there will be no likelihood of confusion as to source or affiliation.”

And so the Board found this factor to be neutral.

Conclusion: Citing Kellogg Co. v. Pack’e Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142,1145 (Fed. Cir. 1991) ("We know of no reason why, in a particular case, a single du Pont factor may not be dispositive"), the Board concluded that, in light of the differences in the marks, confusion is not likely, and it dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2019.

Thursday, February 21, 2019

Finding No Fraud and Naked Licensing Barred by Licensee Estoppel, TTAB Denies TREE'S WINGS & RIBS Cancellation Petition

The Board dismissed this petition for cancellation of a registration for the mark TREE'S WINGS & RIBS, in standard character form, for restaurant services, ruling that petitioner's abandonment-by-naked-licensing claim was barred by the doctrine of licensee estoppel, and rejecting its fraud claim as legally and factually groundless. A & M Wings, Inc. v. Glenn Thompson, Cancellation No. 92064044 (February 14, 2019) [not precedential] (Opinion by Judge Susan J. Hightower).


Abandonment: The Board gave short shrift to Petitioner's abandonment claim. Petitioner alleged that Respondent Glenn Thompson has abandoned his mark by uncontrolled or “naked” licensing to Petitioner itself and to third parties.

Petitioner submitted evidence that Respondent licensed it to use the name “Tree’s Wings and Ribs” in 1995, and that in 2004 the parties extended the license agreement for 99 years, until 2103. * * * Because Petitioner is licensed to use the subject mark, the doctrine of licensee estoppel bars Petitioner from bringing a claim that Respondent abandoned the mark through uncontrolled licensing. See, e.g., Freeman v. Nat'l Assn. of Realtors, 1700, 1703 (TTAB 2002).

The Board therefore dismissed the abandonment claim.

Fraud: Petitioner asserted that Respondent Thompson committed fraud on the USPTO when he renewed his registration, by submitting a picture of Petitioner’s restaurant and website as specimens. According to Petitioner, its use of the mark is not “controlled” by Respondent, and therefore Petitioner’s use as depicted in the renewal specimens does not inure to Respondent’s benefit.

Respondent, when he submitted the Section 8 specimens of use, stated that "the mark is in use in commerce" and that the specimens "show the mark as used in commerce." These statements were true. The USPTO does not require "an application to specify if the applied-for mark is not being used by applicant but is being used by one or more related companies whose use inures to the benefit of applicant." Applying this policy to respondent's Section 8 Declaration, he was not required to disclose that the claimed use was by petitioner. "[T]his omission was immaterial and cannot serves as the basis for a fraud claim."

In any event, Petitioner has not shown that Respondent intended to deceive the Office. There was no false allegation that Respondent had the requisite control over Petitioner’s use, because there was no such allegation in Respondent’s submission to the Office. And Petitioner has not proven that Petitioner knew the use claimed in the Section 8 affidavit did not inure to his benefit, but falsely represented to the Office that it did. Rather, Petitioner argues that Respondent submitted the specimen “knowing that Petitioner did not consider such use to inure to Respondent.” Petitioner’s Brief at 32, 30 TTABVUE 33. Petitioner’s own belief does not establish Respondent’s intent to deceive the Office.

And so the Board dismissed the fraud claim.

Read comments and post your comment here.

TTABlog comment: Not the clearest explanation of the fraud issue, but there you have it.

Text Copyright John L. Welch 2019.

Wednesday, February 20, 2019

E.D. Va. Dismisses Bayer's Section 43(a) Claims but Affirms TTAB's Cancellation of Belmora's FLANAX Registration

When we last visited (here) the long-running Bayer versus Belmora battle over the mark FLANAX, the U.S. Court of Appeals for the Fourth Circuit had reversed and remanded the case to the U.S. District Court for the Eastern District of Virginia. The lower court had ruled that Bayer lacked standing to bring its Section 43(a) claims of unfair competition and its Section 14(3) claim for cancellation of Belmora's FLANAX registration, because Bayer was not using the FLANAX mark in the United States. The Fourth Circuit, however, found that under a proper reading of Lexmark, Bayer has standing for all its claims. On remand, the district court has now dismissed, on summary judgment, Bayer's Section 43(a) claims, affirmed the TTAB's Section 14(3) decision, and dismissed various counterclaims brought by Belmora. Belmora LLC v. Bayer Consumer Care AG, 338 F. Supp. 3d 477 (E.D. Va. 2018).


Belmora's FLANAX

Bayer's Section 43(a) claims: The district court found that Bayer's Section 43 claims for unfair competition and false advertising, and its similar claims under California law, were barred by the applicable statute of limitations. The court concluded that, whether it applied a three-year or four-year statute of limitations in accordance with California law (there was some split in the Ninth Circuit courts), "Bayer's filing of this action [in 2014] misses the statute of limitations by almost a decade. There are at least six different dates [in 2004, 2005, 2006, and 2009] that establish that Bayer either knew or should have known of its Lanham Act rights."

Bayer's Section 14(3) cancellation claim: With regard to the TTAB's ruling under Section 14(3), the court observed that Belmora did not produce any new credible new evidence that Belmora's principal was not aware of Bayer's Mexican FLANAX product when he chose that mark, or that Belmora's packaging and advertising was not as the Board found, and that "the Board's decision was not arbitrary, capricious, or otherwise not in conformance with the law." And so it affirmed the Board's decision.

Belmora's Counterclaims: The  court dismissed Belmora's seven counterclaims. As to the first three, for trademark infringement and unfair competition, the court found no evidence that Bayer sold its Mexican FLANAX product in the United States, and so no likelihood of confusion. As to the fourth and fifth cpunterclaims, for importation of unauthorized or infringing goods under 19 USC Section 1526 and 15 U.S.C. Section 1124, the court again pointed to the lack of evidence that Bayer imported Mexican FLANAX into the United States. The sixth counterclaim, for monopolization under Section 2 of the Sherman Act, failed due to lack of expert testimony establishing the relevant market. And the seventh counterclaim, for tortious interference with a contract or prospective economic advantage, also failed for lack of evidence that Bayer had interfered with any orders that Belmora had received.

Both parties have appealed from the district court's ruling.

Read comments and post your comment here.

TTABlog comment: This brouhaha began in 2007 at the TTAB. Belmora remains the owner of the FLANAX mark in the United States. Its ownership of the mark is not in dispute.

Text Copyright John L. Welch 2019.

Tuesday, February 19, 2019

In view of Applicant's 11 Existing Registrations, TTAB Reverses 4 Failure-to-Function Refusals of RANDOM ACTS OF KINDNESS

The Board reversed four failure-to-function refusals of the mark RANDOM ACTS OF KINDNESS, in the special form shown below, for goods and services relating to the promotion and encouragement of the "doing of good deeds for others." The examining attorney maintained that the subject phrase is "merely informational and constitutes a widely used common slogan" that does not indicate source. The Board, however, pointed to applicant's eleven existing registrations for the phrase or variations thereof, and found this departure from the USPTO's prior position to be inexplicable and unacceptable. In re The Random Acts of Kindness Foundation, Serial Nos. 87245967, 87245971, 87245973, and 87245975 (February 15, 2018) [not precedential] (Opinion by Judge Angela Lykos).


The examining attorney relied upon excerpts from various websites encouraging people to perform good deeds, charitable activities, and acts of compassion, as well as on articles regarding altruism. Applicant argued that its previously registered marks, all on the Principal Register, preclude a finding that the applied-for marks fail to function as source indicators. In response, the examining attorney cited In re Nett Designs, Inc.,  57 USPQ2d 1564, 1566 (Fed. Cir. 2001), for the principle that each case must be decided on its own facts, and that the Board is not bound by prior decisions of examining attorneys in other cases.


The Board observed that it was faced with a "unique situation." Each of Applicant’s eleven prior registrations issued on the Principal Register and is entitled to a presumption of validity under Section 7(b). The marks of the prior registrations either constitute or incorporate the same phrase at issue. Six of the registrations are more than five years old, and the remaining five issued from applications filed on the same day as the four applications here at issue. None include a disclaimer of the phrase.

The Examining Attorney’s refusals thus constitute a departure from the Office’s prior position. * * * There is no evidence, or even argument, to suggest that the alleged incapability of this phrase to identify source could not have been discerned at the time any of the prior registrations were examined. The same types of evidence the Examining Attorney now relies on was previously available. Furthermore, the Office offers no reason for its inconsistent treatment of the five registrations which recently issued that were filed on the same day as the four applications before us. In light of these unusual circumstances, we are compelled to reverse the Examining Attorney’s refusals. To find otherwise would result in inconsistent examination.

And so the Board reversed the refusals.

Read comments and post your comment here.

TTABlog comment: Should this decision be precedential?

Text Copyright John L. Welch 2019.

Friday, February 15, 2019

TTABlog Test: Is "PINK COW & Design" Confusable With "RED BULL & Design" for Soft Drinks?

Red Bull GmbH opposed an application to register the mark PINK COW & Design (shown first below) for "Beers; mineral and aerated waters; soft drinks; smoothies; vegetable juice; fruit drinks and fruit juices; concentrates for making fruit drinks; syrups for making non-alcoholic beverages; excluding energy drinks," alleging a likelihood of confusion with its registered mark RED BULL & Design (second below) for "soft drinks; and sports drinks." The goods overlap ("soft drinks"), but what about the marks? Are they confusable? How do you think this came out? Red Bull GmbH v. Morganti Flavio Innovaciones Gastronomicas, S.L., Opposition No. 91223317 (January 18, 2019) [not precedential] (Opinion by Judge Susan J. Hightower).



du Pont factors 2, 3, and 4: Because the goods are identical in part, the Board presumed that those goods move in the same channels of trade to the same classes of consumers. These factors "weigh heavily" in opposer's favor. Moreover, because the involved goods are relatively inexpensive, "the risk of likelihood of confusion is increased because purchasers of such products are held to a lesser standard of purchasing care."

Strength of Opposer's Mark: The Board found Red Bull's mark to be inherently distinctive. As to commercial strength, Red Bull claimed that its mark(s) are famous. It provided "significant evidence of fame" (all under seal). Although Red Bull's evidence had some shortcomings, it "easily supports a finding that Opposer's mark is famous on the spectrum employed" in the du Pont analysis. This fifth du Pont factor heavily favored opposer. [Note, although this evidence of fame related to "energy drinks," which are expressly excluded from applicant's identification of goods, the evidence was pertinent because the Board found that energy drinks are "soft drinks." - ed.].

Similarity of the Marks: The Board found some similarity between the marks in sound and appearance, and "strong similarity" in connotation and overall commercial impression. "The verbal portion of each mark totals seven letters and comprises two short, one-syllable words denoting a color followed by a term for a bovine."

As the connotation, the Board observed that "pink is a lighter shade of red." Furthermore, "'Bull' is defined as a 'male bovine; especially: an adult uncastrated make domestic bovine,' while definitions of 'cow' included both 'the mature female of cattle' and 'a domestic bovine animal regardless of sex or age.'"

Thus, “bull” and “cow” can mean male and female bovines, respectively. But in common vernacular, a “bull” also can be a “cow,” that is, “a domestic bovine animal regardless of sex or age.” Per the record, therefore, consumers can interpret BULL and COW either as designating bovines of the opposite sex or as synonyms.

The fact that the involved marks each incorporates bovine imagery increases their similarity. "Indeed, consumers are likely to construe Applicant's mark as a feminized version of Opposer's mark."

The Board therefore found that the first du Pont factor favors a finding of likely confusion.

Conclusion: Noting that fame plays a dominant role in the du Pont analysis, and keeping in mind that any doubts must be resolved against the newcomer, the Board found confusion likely and it sustained the opposition. The Board declined to rule on Red Bull's dilution and false association claims.

Read comments and post your comment here.

TTABlog comment: What do you think? Please avoid any barnyard epithets.

Text Copyright John L. Welch 2019.

Thursday, February 14, 2019

"OOPS! WRONG ANSWER" Fails to Function as a Mark for a Trivia Website, Says TTAB

[This blog post is a collaborative effort of yours truly and members of the IP CO-LAB Clinic at Northeastern University]. The Board affirmed a refusal to register the phrase OOPS! WRONG ANSWER, finding that it fails to function as a mark for trivia website services. The Board likewise affirmed the same refusal for CONGRATULATIONS! YOU ARE CORRECT! Applicant Trivia Today feebly argued that it uses the phrases "prominently appearing by themselves or in different font colors," unlike the third-party uses cited by the examining attorney, and that the USPTO has registered other OOPS and CONGRATULATIONS marks. In re Trivia Today, LLC, Serial Nos. 86760550 and 86745338 (February 8, 2019) [not precedential] (Opinion by Judge David K. Heasley).



To function as a service mark, a proposed mark must, by definition, “identify and distinguish the services of one person ... from the services of others and … indicate the source of the services, even if that source is unknown.” Lanham Act Section 45. "The critical inquiry in determining whether a designation functions as a service mark is how it would be perceived by the relevant public." In order to assess how consumers would perceive the phrases sought to be registered, the Board looks to the specimens of use and to the evidence of record showing the phrases as used.

Examining Attorney Lauren E. Burke maintained that the applied-for marks convey information "that a question has been answered correctly or incorrectly, but do not indicate the entity asking the question." She pointed to a number of uses of the same or similar phrases from third-party websites. Applicant Trivia Today pointed to its use of varying font colors, and to several third-party registrations for marks containing CONGRATULATIONS or OOPS (none of which were in the trivia field).

The Board, however, noted that applicant sought registration of the phrases in standard character form, not in any particular colors or font. As to the third-party registered marks:

None are similar to the subject applications, where the wording of the proposed marks, CONGRATULATIONS! YOU ARE CORRECT! and OOPS! WRONG ANSWER., functions as a part of the services, indicating whether one’s answers to a trivia guessing game are correct or incorrect.

The Board concluded that the applied-for marks are merely informational and fail to identify the source of the services.

They must accordingly remain in the public domain, available to all competitors. In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460 (TTAB 1998). As McCarthy puts it, “as a matter of competitive policy, it should be close to impossible for one competitor to achieve exclusive rights” in common phrases or slogans. 1 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7:23 (5th ed. Nov. 2018 update).

And so the Board affirmed the refusals to register.

Read comments and post your comment here.

TTABlog comment:  Interesting point about the phrases functioning as part of the services. Compare that with registered, arguably common phrases, like JUST DO IT, or the SMILE MORE mark discussed here.

Text Copyright John L. Welch et al. 2019.

Wednesday, February 13, 2019

TTAB Dismisses 2(d) Opposition to "M" Mark for Medication Costing Software

The Board dismissed this Section 2(d) opposition to registration of the mark shown below left, for software "for providing information to medical personnel and patients regarding the cost of a patient’s prescription medication taking into account that patient’s insurance coverage," finding that opposer had failed to prove a likelihood of confusion with the two registered marks shown below right, for various medical services and publications. H. Lee Moffitt Cancer Center and Research Institute, Inc. v. Milligram, Inc., Opposition No. 91228243 (February 11, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).


Goods and Services: Opposer Moffitt failed to proved that its goods and services are related to applicant's software. Although "intuitively the 'evaluation and testing of drug and treatment effectiveness relating to cancer and other diseases' should have a connection to pharmacy services," applicant’s description of goods and services does not involve pharmacy services. There was no testimony or evidence "that other treatment or research centers provide information regarding the cost of prescription medications taking into account that patient’s insurance coverage."

As to trade channels, the Board noted that "some patients in need of cancer treatment will need prescription medications and will want a means for determining the price for the prescription medications. Accordingly, Opposer’s goods and services will be offered to some of the same consumers as Applicant’s goods and services."

Strength of Opposer's Marks: Opposer is a well-known center for cancer research, but opposer failed to show that consumers associate the stylized letter “M” design mark with Opposer or that the "M" is a well-known trademark. Moreover, opposer uses its "M" mark primarily adjacent to the phrase MOFFITT CANCER CENTER. Thus opposer failed to show that its "M" mark is commercially stronger than any other mark.

The Board considered various third-party "M" marks in the medical field and concluded that "companies create use logos incorporating the first letter of their trade name. Presumably, consumers encountering logos incorporating the first letter of an entity’s trade name are likely to associate the logos with the trade names and, that without evidence that consumers identify the letter logos as standalone marks, such marks should not entitled to a broad scope of protection." As to opposer's stand alone "M" mark, the Board placed in the middle of the spectrum between weak and very strong.

The Marks: The Board found that the involved marks are not similar, "[g]iven the conditions under which or the degree of care consumers will naturally exercise in selecting goods and services in the field of health care, cancer protection, prevention, detection and treatment."

Conclusion: Although some consumers may encounter the marks of the parties, because the marks are not similar and the goods and services are not related, the Board found no likelihood of confusion.

Read comments and post your comment here.

TTABlog comment:  Well, this was not the most exciting case I've ever read, but there you have it.

Text Copyright John L. Welch 2019.

Tuesday, February 12, 2019

TTABlog Test: Are These Two "I-10" Marks Confusable for Beer?

The USPTO refused registration of the mark shown immediately below, for beer, finding the mark likely to cause confusion with the registered mark I-10 for "beer, ale, lager, stout and porter." The goods overlap, but what about the marks? How do you think this came out? In re RPD Management, LLC, Serial No. 87573250 (February 11, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).


The Board found that the du Pont factors regarding of the goods, channels of trade and classes of consumers "weigh heavily in favor of likelihood of confusion."

As to the marks, the Board not surprisingly found "I-10" to be the dominant portion of the applied-for mark (the remaining terms appearing in the mark were disclaimed). Applicant's mark is likely to be shortened to "I-10" by consumers.

Applicant argues that the facts of this case are similar to those presented in In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) [TTABlogged here], in which the Board found no likelihood of confusion between the applied-for mark (shown below) for various clothing items and the registered mark RACEGIRL for clothing items that encompassed in part the applicant’s goods.


Here, however, "the vintage wagon in Applicant's mark "clearly displays the wording emblazoned upon the sides, hood and front of the car. The design does not draw the viewer’s attention away from the wording, but rather draws attention to the wording by incorporating it into the design."

A consumer viewing Applicant’s mark cannot look at the design without noticing and reading the wording that covers large portions of the car. The largest lettering, “I-10” and “IPA” are particularly prominently displayed on the door and hood of the wagon. There is no separate design element, such as the “RR letters” in the Covalinski mark to either draw attention away from the wording or render the wording difficult to read. As a result, we find the facts of Covalinski to be distinguishable from those in the instant appeal.

The Board concluded that "the fact that each mark is dominated by the same term 'I-10' simply outweighs the points of
dissimilarity."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2019.

Monday, February 11, 2019

Denying Cancellation Petition, TTAB Finds that Roman Atwood's "SMILE MORE" Functions as a Mark

The Board dismissed this petition for cancellation of Roman Atwood's registration for the mark SMILE MORE for various goods (stickers, backpacks, shirts) and for retail store service featuring clothing, denying petitioner's claim that the term fails to function as a mark. The evidence of a very small number of third-party uses for related goods was insufficient to undermine the source-identifying significance of the phrase. Disorderly Kids, LLC. v. Roman Atwood, Cancellation No. 92062027 (November 28, 2018) [not precedential] (Opinion by Judge Peter W. Cataldo).

YouTube personality and comedian Roman Atwood

Although Atwood's specimens of use in the underlying application displayed the mark in an ornamental fashion on his goods (e.g., the t-shirt above), his service mark specimens did not. Those specimens showed the SMILE MORE mark used with "The Official Smile More Store" and the "Roman Atwood Pranks" YouTube channel, and "clearly associate the SMILE MORE mark with Respondent."


Moreover, as to the goods, the term SMILE MORE "conveys to the public a secondary source, namely, Respondent Roman Atwood, his YouTube channel and the content he posts there, and is registrable on the Principal Register." In re Paramount Pictures Corp., 213 USPQ at 1112 (in this case, wording on a T-shirt “inherently tells the purchasing public the source of the T-shirt, not the source of the manufacturer but the secondary source.”).

Petitioner submitted evidence of a "modest number" of third-party uses of the wording "Smile More" and formatives thereof for t-shirts, hats, stickers, and the like. But the record evidence also showed that Atwood "actively and vigorously polices his SMILE MORE mark and views such uses as infringement."

Respondent has successfully prevented or stopped such uses by Café Press, Zazzle.com, USCD Apparel and RedBubble, i.e., the very third parties Petitioner relies upon for its assertion of widespread use of “Smile More” in connection with the relevant field of goods and services. The record further establishes that fans of Respondent actively report such uses when they encounter them. In addition, the record reflects that some of the third-party users point to Respondent when advertising their “Smile More” merchandise in an attempt to associate their goods with him.

Petitioner pointed to eight registrations of SMILE MORE and SMILE-formative marks for dental services and snack foods, but none related to the goods in Atwood's registration.The Board concluded that this is "not a case in which widespread ornamental use of the phrase SMILE MORE by third parties" may influence how the mark is perceived. "To the contrary, the record evidence . . . supports a finding that SMILE MORE, as used in connection with the goods and services recited in the Registration, serves to indicate a single origin or source, namely Respondent."

The Board therefore dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I suspect that Mr. Atwood is smiling more after this ruling.

Text Copyright John L. Welch 2019.

Friday, February 08, 2019

TTAB Reverses Descriptiveness Refusal of “CANNABIS CANNIBALS” for Cartoons Featuring Cannabis-Smoking Cannibals

[This guest post was written by Stephanie Grace Stella, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. The Board reversed a Section 2(e)(1) mere descriptiveness refusal of CANNABIS CANNIBALS for “entertainment services, namely, an ongoing series featuring animated cannabis smoking cannibals provided through network or cable TV and the internet,” finding that the mark’s primary significance is to indicate to viewers “an ongoing entertainment series and the fanciful animated fictional, principal characters of the series.” In re Jeffrey Butscher, Serial No. 87572095 (January 29, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).


The Examining Attorney concluded that the proposed mark CANNABIS CANNIBALS “merely describes the subject matter of [Applicant’s] series.” In response, Applicant Jeffrey Butscher conceded that the series features animated cannabis-smoking cannibals, but argued (1) “the mark is suggestive because viewers will have to use their imagination to discern the thematic content and genre of the show,” and (2) the Board should apply the competitors' use and competitors' need tests, relying on the Board’s 1985 decision in No Nonsense Fashions. The Board noted, however, that it has rejected the tests set forth in No Nonsense Fashions, and it reiterated that the test for descriptiveness is “whether a mark immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.”

There is no requirement that the Office prove actual competitor use or need; it is well established that even if an applicant is the only user of a merely descriptive term, this does not justify registration of that term. . . . Descriptiveness must be evaluated in relation to the particular goods [or services] for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods [or services] because of the manner of its use or intended use. [Citations and quotation marks omitted.]

Applying the appropriate test, the Board concluded that the proposed mark is not merely descriptive because “the primary significance of CANNABIS CANNIBALS to a prospective viewer indicates an ongoing entertainment series and the fanciful animated fictional, principal characters of the series.” The Board reasoned that “[to] hold to the contrary would lead to the inequitable result that this Applicant, as well as countless other applicants in the creative industries, could not register their marks because the marks identify their characters or the subject matter of the televisions shows.” The Board relied on several precedential decisions involving similar marks, including MORK & MINDY for decals ornamented with the mark, and design marks comprising drawings of Superman, Batman and the Joker for toy dolls of those characters.

The Board distinguished this case, where Applicant owns intellectual property rights in the work from which the “cannabis-smoking cannibal” characters arose, from those where the character is in the public domain. For example, in In re Carlson Dolls Co., 31 USPQ2d 1319, 1320 (TTAB 1994), the Board held that LITTLE MERMAID for dolls is merely descriptive because "a fictional public domain character like the Little Mermaid of the Hans Christian Anderson fairy tale is not necessarily linked to a specific commercial entity and may be presented in various embodiments . . . and, thus. describes the purpose or function of the goods (i.e., to represent the Little Mermaid of the fairy tale)." (quoting In re United Trademark Holdings, Inc. 122 USPQ2d 1796, 1799 (TTAB 2017).

The Board further distinguished cases such as In re Weather Channel, Inc., 229 USPQ 854 (TTAB 1986), in which the Board found THE WEATHER CHANNEL to be generic for “a television transmission whose subject matter exclusively concerns the weather because viewers would understand that term as the apt descriptive name for television channel dedicated to the weather.” The Board reasoned that, in this case, the mark CANNABIS CANNIBALS connotes “the fanciful animated, fictional subjects of Applicant’s entertainment services created by Applicant rather than a factual subject matter.”

Finally, the Board noted that the alliterative use of the letter “C” as the first consonant in both terms of the CANNABIS CANNIBALS mark, “while not dispositive in and of itself, adds to the character of the mark.”

And so the Examining Attorney’s descriptiveness refusal went up in smoke.

Read comments and post your comment here.

TTABlog comment: Stephanie is still working on her punsmanship

Text Copyright Stephanie Grace Stella and John L. Welch 2019.