Precedential No. 25: TTAB Awards Priority to Opposer over Its Employee, Sustains Opposition to DISTRICT OF FASHION Mark

In a highly fact-dependent, yet precedential, decision, the Board sustained this opposition to registration of the mark DISTRICT OF FASHION for fashion show exhibitions, finding that Opposer "BID" had priority of use of the mark DOWNTOWNDC DISTRICT OF FASHON for the same services, and that any use of the latter mark by Applicant Clarke prior to her application filing date occurred as an employee of BID and therefore inured to BID's benefit. The Board then found confusion likely between the two marks. DowntownDC Business Improvement District v. Roquois Y. Clarke, Opposition No. 91275100 (October 8, 2024) [precedential] (Opinion by Judge Cheryl S. Goodman).

Applicant Clarke was hired by Opposer BID as a "Digital Content and Design Assistant." Because of her fashion industry experience, she was assigned to three fashion show events in 2018 and 2019, for which BID expended "significant resources." In 2021, Clarke's position was eliminated and she was let go. In May 2021, Clarke filed the subject intent-to-use application to register the mark DISTRICT OF FASHION.

Clarke admitted that she created the mark DISTRICT OF FASHION "during the temporal period she was employed by Opposer," but claimed that she worked on the project during off-hours, created the DISTRICT OF FASHION "brand identity" so as to allow any entity to sponsor the fashion show.

Both parties relied on the same use of the mark DOWNTOWNDC DISTRICT OF FASHION as the basis of their priority claims. Clarke admitted that she never used that mark apart from BID's use for the 2018 and 2019 fashion shows. However, she argued that she created the mark outside of the scope of her employment, that the mark was not assigned to BDI, and that any use by BDI was by implied license and inured to her benefit. In sum:

[R]esolution of the priority issue depends on what the record reveals as to whether the DOWNTOWNDC DISTRICT OF FASHION name and services were developed in the course of Applicant’s employment, outside the scope of her employment, and/or whether there was an implied license between Applicant and Opposer with the benefit of Opposer’s use of DOWNTOWNDC DISTRICT OF FASHION inuring to Applicant’s benefit.

The Board found that BDI assigned the fashion work to Clarke and had control over the work performed. BDI regularly approved tasks and expenses for the events. There was "no question that Applicant's work on promoting and producing the fashion shows was as Opposer's employee." The Board declined to give "great weight to the fact that some of the work was performed after hours since, inter alia, Clarke was "tasked as a dedicated staff member" and received bonuses for her efforts on the fashion shows. The Board concluded that Clarke "performed the fashion show work within the scope of her employment."

Under such circumstances, there is a prima facie presumption that any use of DOWNTOWNDC DISTRICT OF FASHION “during this period …. was done so [by Applicant] as a representative or an agent of opposer, on behalf of opposer, and in furtherance of opposer’s business; and any goodwill created by such use inured to opposer’s benefit.” Scranton Plastic Laminating, 1975 TTAB LEXIS 85, at *26-27.

It was then Clarke's burden to overcome this presumption "by presenting competent and convincing proof that opposer's activities were as a licensee under applicant's control and supervision." The evidence showed that Clarke was BDI's representative and acted at the direction of BDI. "Opposer, not applicant, stood behind the services offered under the mark DOWNTOWNDC DISTRICT OF FASHION." The Board concluded that "the parties’ objective intentions and expectations, as evidenced by Applicant’s and Opposer’s conduct, do not reflect an implied license but that Opposer owned the DOWNTOWNDC DISTRICT OF FASHION mark."

Since the uses of the mark in 2018 and 2019 inured to the benefit of BDI, and since Clarke may rely only on her 2021 filing date as her (constructive) first use date, Opposer BDI has priority for the DOWNTOWNDC DISTRICT OF FASHION mark.

Turning to the issue of likelihood of confusion, the Board wasted no time in sustaining BDI's Section 2(d) claim.

Because DISTRICT OF FASHION forms a significant portion of Opposer’s mark and DISTRICT OF FASHION is the entirety of Applicant’s mark, we find the marks as a whole are similar in appearance, sound, connotation and commercial impression. The additional wording DOWNTOWNDC in Opposer’s mark does not significantly alter the commercial impression, as purchasers will likely take DOWNTOWNDC as simply identifying the location of the services or their connection to the District of Columbia. Consumers thus are likely to view the two marks as variations of each other, but pointing to a single source.

Because the parties' services overlap, the second DuPont factor "weighs heavily" in favor of a finding of likelihood of confusion. Likewise, the channels of trade and classes of consumers overlap, and so the third factor also weighs in favor of finding a likelihood of confusion.

All of the DuPont factors for which there is evidence in the record—the similarity of the marks, the in-part identical nature of the services, the trade channels and classes of consumers—favor likelihood of confusion. In re Charger Ventures LLC, 64 F.4th 1375, 1381 (Fed. Cir. 2023). We therefore conclude that confusion is likely.

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TTABlogger comment: A fifty-page opinion reaching the inevitable result. Why precedential?

Text Copyright John L. Welch 2024.

TTABlog Webinar: Michael Keyes on "Avoiding Consumer Survey Pitfalls at the TTAB"

The TTABlogger is pleased to announce that Dorsey IP litigation partner and consumer survey expert, Michael Keyes, will provide my dear readers (and anyone else) with an entertaining webinar on "Avoiding Consumer Survey Pitfalls at the TTAB" on Wednesday, October 16, 2024, at 12:00PM - 1:00PM ET, 11:00 AM CT, etc. To register, please click here.

Consumer surveys are on the rise at the TTAB. Whether they are being offered to prove genericism, secondary meaning, or likelihood of confusion, consumer surveys can play a pivotal role in the outcome of trademark proceedings. All too often, though, parties spend significant time and resources developing survey research only to have the TTAB reject it – or significantly discount its value. Don’t let this happen to you!

Drawing on his background in survey research and nearly 25 years as a trademark trial lawyer, Mike will provide an engaging and thoughtful perspective on important topics and critical issues affecting the use of consumer surveys before the TTAB. Whether you are a seasoned pro or are just getting started on developing survey research, this presentation has something for everyone.

Read comments and post your comment here.

Text Copyright 2024.

TTABlog Test: Three Section 2(d) Appeals - Affirmed or Reversed?

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal about 95% of the time just by looking at the marks and the goods/services. Here are three recent Board decisions. How do you think they came out?

In re Hi-Tech Pharmaceuticals, Inc., Serial No. 97092374 (October 7, 2024) [not precedential] (Opinion by Judge Robert H. Coggins). [Section 2(d) refusal of the mark EQUIPOISE for "dietary supplements" in view of the registered mark AQUIPOISE for "health food supplements; vitamins; dietary and nutritional supplements; vitamin and mineral supplements."]

In re In re Muhammad A Al-Ansari, Dallas W. Patterson and Gordon K. Skinner, Serial No. 97617649 (October 8, 2024) [not precedential] (Opinion by Judge Catherine Dugan O'Connor) [Section 2(d) refusal of the mark THANKS SKATEBOARDING CLUB for "Clothing, namely, t-shirts, hooded sweatshirts, crewnecks, and shorts; socks" and for "Skateboards" [SKATEBOARDING disclaimed] in view of the registered mark THANK YOU SKATEBOARDS for "clothing; footwear; headwear; jackets; short-sleeved or long-sleeved T-shirts; shorts; socks; sweaters; sweatpants; tops as clothing" and for "Skateboard decks; skateboard grip tapes; skateboard trucks; skateboard wheels; skateboards; bags for skateboards" [SKATEBOARDS disclaimed]].

In re In re Cratus Enterprises LLC dba Vintage Muscle, Serial No. 90873360 (October 9, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen). [Section 2(d) refusal of the mark VINTAGE MUSCLE for "nutritional and health food supplements featuring anabolic precursor and pro-hormone formulations" [MUSCLE disclaimed] in view of the registered mark VINTAGE BURN for “dietary and nutritional supplements."]

Read comments and post your comment here.

TTABlogger comment: How did you do? See any WYHA?s.

Text Copyright John L. Welch 2024.

"Decisions of the Federal Courts and the Trademark Trial and Appeal Board on Registrability Issues July 2023 to August 2024"

Here [pdf] for your reading pleasure is the article/outline that I provided in connection with my presentation yesterday at the All Ohio Annual Institute on Intellectual Property (AOAIOIP). It summarizes the "Decisions of the Federal Courts and the Trademark Trial and Appeal Board on Registrability Issues July 2023 to August 2024." Enjoy!

Read comments and post your comment here.

Text Copyright John L. Welch 2024.

In Second Stage of Cancellation Proceeding, TTAB Deems RASCAL HOUSE Abandoned for Restaurant Services

The parties to this cancellation proceeding opted to litigate the case under the Accelerated Case Resolution (ACR) regime. In accordance with the parties' stipulation, the case was divided into two stages, the first stage addressing the issue of whether Respondent Jerry's Famous Deli had ceased use of the registered marks RASCAL HOUSE, WOLFIE COHEN’S RASCAL HOUSE, and the word-and-design mark shown below, for restaurant services. The Board concluded that Jerry's had indeed stopped using the mark for a period of more than three years. [TTABlogged here]. In this second stage, the Board concluded that Jerry's failed to prove an intent to resume use that would avoid a finding that the marks were abandoned. Rascal House, Inc. v. Jerry’s Famous Deli, Inc., Cancellation Nos. 92075125, 92075180, and 92075185 (September 30, 2024) [not precedential] (Opinion by Judge David K. Heasley).

Section 45 of the Trademark Act provides that a mark shall be deemed abandoned: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for three consecutive years shall be prima facie evidence of abandonment. 

The proof that Respondent Jerry's failed to use the marks for a period of more than three years established a prima facie case of abandonment. The burden of production then shifted to Jerry's to rebut that presumption by submitting evidence of its intent to resume use. The burden of persuasion, however, remained with the petitioner.

“To prove excusable nonuse,” the Federal Circuit states, “the registrant must produce evidence showing that, under his particular circumstances, his activities are those that a reasonable business[], who had a bona fide intent to use the mark in United States commerce, would have undertaken.” “The intent must be to resume use of the mark within the reasonably foreseeable future once the reason for suspension abates.”

Respondent's president declared that his company always intended to resume use, but if a mere declaration of intent were enough to avoid abandonment, then no mark would ever be abandoned. Respondent also pointed to the display of the marks on menus and signage at its other establishments, but that was not probative:

Respondent may have continued to display the RASCAL HOUSE marks at its other establishments, along with other marks (such as PUMPERNIKS, a brand under which Respondent never provided services) because it wanted the residual goodwill that might emanate from those brands. But “residual goodwill does not negate a finding of abandonment based on nonuse.” * * * [T]hey do not reflect present use in commerce, much less intent to resume use.

Respondent established no special external circumstances that compelled it to cease using the RASCAL HOUSE marks.

Respondent’s evidence falls far short of establishing intent to resume use. Its evidence shows an intent to continue use of other marks, such as EPICURE or JERRY’S FAMOUS DELI, but not the RASCAL HOUSE marks. Respondent’s testimony relies exclusively on party witnesses, its president and former president, with no corroboration from nonparty witnesses or documentation focusing on the RASCAL HOUSE marks. 

Respondent’s evidence showed only "vague, desultory communications concerning potential use of some marks, not serious, sustained efforts directed toward execution of lease agreements for RASCAL HOUSE restaurants." "Importantly, Respondent’s efforts, feeble as they were, did not take place until 2014, six years after the RASCAL HOUSE restaurants closed in 2008."

Finally, Respondent's recent post-cancellation efforts to resurrect the RASCAL HOUSE marks, which took place in 2023, constituted "a new and separate use that does not cure the abandonment."

Read comments and post your comment here.

TTABlogger comment: Bifurcation worked well here. You may recall that earlier this month, the Board bifurcated the VELCRO case into two stages: entitlement to a statutory action, and genericness. [TTABlogged here].

Text Copyright John L. Welch 2024.

TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal about 95% of the time just by looking at the marks and the goods/services. Here are three recent Board decisions, at least one of which resulted in a reversal. How do you think they came out?

In re Livewire Drinks, Inc., Serial No. 88795611 (October 4, 2024) [not precedential] (Opinion by Judge Jessica B. Bradley). [Section 2(d) refusal of the mark LIVEWIRE for "Alcoholic beverages, not including beer" in view of the registered mark MOUNTAIN DEW LIVEWIRE for "soft drinks, and syrups and concentrates for making the same."]

In re Everwest Technologies - FZCO, Serial Nos. 97417414 and 97417422 (October 2, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin) [Section 2(d) refusals of the mark MYQRCODE.COM in standard characters and in the design form shown below, for "Providing on-line non-downloadable software for generating machine-readable barcodes; Software as a service (SAAS) services featuring software for generating machine-readable barcodes” (both with QRCODE disclaimed), in view of the registered mark QR CODE (on the Supplemental Register) for in-part legally identical services.]

In re New Roots Herbal Inc., Serial No. 97205991 (September 30, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of the mark PROBIOTIC INTENSITY for "Dietary and nutritional supplements containing probiotics for humans; Probiotic supplements for humans" (PROBIOTIC disclaimed) in view of the registered mark INN TENSITY for "dietary supplements."]

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2024.

TTABlogger Presentation: October 9th -"Meanwhile Back at the TTAB" - All Ohio Annual Institute on Intellectual Property

Yours truly, the TTABlogger, will give a virtual presentation entitled "Meanwhile Back at the TTAB" on October 9th at 2:45 PM at the 34th All Ohio Annual Institute on Intellectual Property (AOAIOIP) - part of a two-day virtual webinar (October 8 and 9) covering recent developments in patent, trademark, copyright and advertising law. A brochure describing the sessions may be found here. Register here.

Text Copyright John L. Welch 2024.

Consent Agreement Trumps Other DuPont Factors in Reversal of Section 2(d) Refusal

The Board reversed a Section 2(d) refusal to register WATERLOO SPIKED SPARKLING WATER for various alcoholic beverages (SPIKED SPARKLING WATER disclaimed), finding confusion unlikely with the registered mark WATERLOO NO.9 GIN for "spirits" [GIN disclaimed]. Under the 10th DuPont factor, the Board found that applicant and the cited registrant "carefully negotiated and crafted a mutually satisfactory written agreement that there is no likelihood of confusion." Quoting Bongrain, the Board observed: "[t]he parties operate in the 'real world,' and are thus in a 'better position to know the real life situation than bureaucrats or judges.'" In re Waterloo Sparkling Water Corp., Serial No. 90843090 (September 30, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

In weighing the probative value of a consent agreement, the Board considers the following non-exclusive factors: (1) Whether the consent shows an agreement between both parties; (2) Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels; (3) Whether the parties agree to restrict their fields of use; (4) Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and (5) Whether the marks have been used for a period of time without evidence of actual confusion. See generally, In re Four Seasons Hotels Ltd.

The Examining Attorney, on the other hand, argued that the agreement is a “naked consent” and does not overcome the likelihood of confusion, because it neither (1) sets forth reasons why the parties believe there is no likelihood of confusion, nor (2) describes the arrangements undertaken by the parties to avoid confusing the public

The Board, acknowledging that the agreement does not "explicity address" factors 2-5 in the same terms as Four Seasons, nonetheless found that the agreement "is more than a naked consent and is clothed."

[P]rovisions regarding efforts to prevent confusion or to cooperate and take steps to avoid future confusion “may render the agreement more probative, but it is not an essential provision for the agreement to have probative value." Obviously, "the more information that is in the consent agreement as to why the parties believe confusion to be unlikely, and the more evidentiary support for such conclusions in the facts of record or in the way of undertakings by the parties, the more we can assume that the consent is based on a reasoned assessment of the marketplace, and consequently the more weight the consent will be accorded."

The Board found that the parties "plainly intended that Registrant’s current use and registration of WATERLOO marks for 'spirits' is permitted under agreed-upon conditions." The Board inferred from the requirement to deliver COLA labels to applicant that the parties have a system to avoid confusion and that these provisions "are substantively and essentially efforts to avoid actual and future confusion under factor 4 of Four Seasons."

Following the lead of Applicant and Registrant, we find the agreement more important than the similarities we may see in the marks, because the parties have agreed to minimize consumers’ exposure to the similarities, and draw their attention to dissimilarities, not just between Applicant’s and Registrant’s marks, but importantly between Applicant’s and Registrant’s “real world” marketing practices that impact (reduce) the likelihood of confusion.

[W]e accord this agreement weight and find the consent agreement supports Applicant’s position of no likelihood of confusion based on the reasoned analysis of Applicant and Registrant who understand the nature of their businesses. We should not substitute our views for theirs.

In short, we accept Applicant’s and Registrant’s views concerning the marks over any of our own, given the protections and restrictions set forth in the agreement.

Read comments and post your comment here.

TTABlogger comment: In my view, naked consents are probative only in nudist colonies.

Text Copyright John L. Welch 2024.

TTABlog Webinar: Michael Keyes on "Avoiding Consumer Survey Pitfalls at the TTAB"

The TTABlogger is delighted to announce that Dorsey IP litigation partner and consumer survey expert, Michael Keyes, will provide my dear readers (and anyone else) with an entertaining webinar on "Avoiding Consumer Survey Pitfalls at the TTAB" on Wednesday, October 16, 2024, at 12:00PM - 1:00PM ET, 11:00 AM CT, etc. To register, please click here.

Consumer surveys are on the rise at the TTAB. Whether they are being offered to prove genericism, secondary meaning, or likelihood of confusion, consumer surveys can play a pivotal role in the outcome of trademark proceedings. All too often, though, parties spend significant time and resources developing survey research only to have the TTAB reject it – or significantly discount its value. Don’t let this happen to you!

Drawing on his background in survey research and nearly 25 years as a trademark trial lawyer, Mike will provide an engaging and thoughtful perspective on important topics and critical issues affecting the use of consumer surveys before the TTAB. Whether you are a seasoned pro or are just getting started on developing survey research, this presentation has something for everyone.

Read comments and post your comment here.

Text Copyright 2024.

TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?

The TTAB affirmance rate for Section 2(d) appeals continues to run at about 90% so far this year. Here are three recent Board decisions. At least one of them resulted in a reversal. How do you think they came out?

In re Kalsec, Incorporated, Serial No. 97346119 (September 26, 2024) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of the mark DURASHIELD for "chemical additives for use in the manufacture of food, beverages, animal feed and pharmaceuticals" in view of the registered mark DURASHIELD PLUS for "liquid chemical compound for preserving, protecting and soil retarding of floor coverings, upholstery, furnishings, clothing, lamps, blinds, window shades, wallpaper, painted surfaces and other interior fabrics, materials and surfaces."]

In re Mick Schumacher, Serial No. 79324040 (September 27, 2024) [not precedential] (Opinion by Judge Michael B. Adlin) [Section 2(d) refusal of the mark shown below left, for "luggage; schoolbags; backpacks;" "textile flags and pennants;" and various clothing items, including jackets, shirts, and headwear, in view of the registered marks FORTY SEVEN, 47, '47, and the mark shown below right for, inter alia, backpacks, duffel bags, cloth pennants; felt pennants, and various clothing items, including jackets, shirts, and headwear.]

In re Mulligan Golf Gift Store LLC, Serial No. 97669290 (September 30, 2024) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of the mark shown below, for "Retail store services, featuring sporting goods, novelties, souvenirs, office gifts, golf equipment, apparel and accessories, custom logo golf balls, home office decorations, books, games, pranks and novelty gifts" [GOLF GIFT STORE EST. 2021 disclaimed] in view of the registered mark MULLIGANS for “Provision of an on-line marketplace for buyers and sellers of golf equipment."]

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2024.

District Court Overturns USPTO's Genericness Refusal of SPECTACLES for "Smart Glasses"

In a 60-page Memorandum Opinion and Order, the U.S. District Court for the Central District of California reversed the USPTO's refusal to register the mark SPECTACLES [in standard character and stylized form] for "smart glasses" on the ground of genericness, but upheld the finding of mere descriptiveness. The TTAB had affirmed the refusal [TTABlogged here], leading to this Section 1071 civil action for de novo review. Applicant Snap Inc.'s claim of acquired distinctiveness failed, but the court remanded the applications to the Office "to permit supplemental registration of SPECTACLES both as a word and stylized mark." Snap Inc. v. Vidal, Case No. 2:22-cv-00085-SK (C.D. Cal. Sept. 27, 2024).

Genericness: The parties agreed that the relevant "product category" based on Snap’s applications and its product specimens is "smart glasses." The question, then, was "whether 'consumers in fact perceive' SPECTACLES 'as the name' for that product class as such or 'as a term capable of distinguishing among members of the class.'"

The court found that the USPTO’s evidence - including Snap's use of the term, linguistic evidence, competitor usage, and media usage - proved only that "spectacles" is a descriptive—not generic—term for smart glasses. Furthermore, the Office's Teflon survey suffered from at least four design flaws (discussed in detail by the court), that rendered it non-probative.

[T]he surveys’ absolute numbers of respondents who classified SPECTACLES as a generic name are not reliable enough to find empirically that relevant consumers perceive the mark as a product name for smart glasses. Those seemingly high figures obscure the respondents who sorted SPECTACLES into the “generic” column because they thought it named smart glasses from those who did so because in their minds it could just as well have described the product.

The court concluded that the Office failed to prove "by clear and convincing evidence" that the term SPECTACLES is "primarily understood by most consumers of smart glasses as a generic name for that product." Instead, the evidence establishes that those consumers overwhelmingly understand the term to be a "description of the product’s prominent eyewear form rather than a generic name for smart glasses."

Descriptiveness/Acquired Distinctiveness: The court rejected Snap's contention that the term "Spectacles" is a double entendre, or that it is merely suggestive of smart glasses. "Snap has not proven that consumers need to employ any imagination to instantaneously associate SPECTACLES with one of the most essential aspects of smart glasses—its eyewear design."

The court noted that Snap’s seven years of continuous use of the SPECTACLES mark is prima facie evidence of secondary meaning. See 15 U.S.C. § 1052(f). Likewise, the limited evidence of advertising expenditures and gross sales revenues is "superficially probative of secondary meaning, too."

The PTO does not contest Snap’s claim that it has spent tens of millions of dollars on advertising between 2016 and 2022, including with billboards, vending machines, and both print and digital advertising. * * * Nor does the PTO deny Snap’s claim that it has sold (as of trial) an estimated 300,000 units of its products, not even including SPECTACLES 4, generating more than $37 million in gross revenues

But given the highly descriptive nature of the SPECTACLES mark, the court found that "this circumstantial evidence combined still fails to meet Snap’s burden." The sales and advertising figures lacked industry context, and the raw sales figures "may only point to product popularity or rapid market gains."

Snap has not produced enough evidence to prove even by a preponderance standard that SPECTACLES carries enough secondary meaning to be included immediately on the principal register. Still, the mark can acquire such source-identifying significance if for no other reason than the term’s arcane etymology and alternative dictionary meanings. SPECTACLES should thus be eligible for supplemental registration.

Conclusion: The court remanded the applications to the USPTO "so that the agency can take the necessary actions for amendment or approval of those applications to permit supplemental registration of SPECTACLES both as a word and stylized mark."

Read comments and post your comment here.

TTABlogger comment: Several things caught my eye. First, the court annoyingly misuses "trademark" as a verb (pages 3, 5n.3, and 6). Second, the court applied a "clear and convincing" standard of proof for genericness, citing the Federal Circuit'sCordua decision. Note that last year the Board switched to a preponderance of the evidence standard. In footnote 4, the district court recognized that change but explained that "because that change was announced only after Snap filed suit here, the PTO has agreed not to dispute in this case—while preserving its right to do so in another—that it must prove genericness by clear and convincing evidence. Also note that here, the court stated that even if it applied the lower standard it would not have found genericness. See footnote 17 at page 41.

Text Copyright John L. Welch 2024.

"Sunflower in Lapel" for Legal Services Lacks Acquired Distinctiveness, Says TTAB

The Board upheld a refusal to register the mark shown below, for providing podcasts, CLE, and on-line videos in the field of intellectual property law, and for legal advisory services in the field of trademark law, on the ground that the proposed mark "fails to function as a service mark because it is nondistinctive trade dress and Applicant has not established that it has acquired distinctiveness for Applicant’s services." In re Erik M. Pelton & Associates, PLLC, Serial No. 97325462 (September 26, 2024) [not precedential] (Opinion by Judge Robert Lavache).

Applicant's mark comprises "a sunflower lapel pin uniform feature, with yellow petals forming the outside of the sunflower and a brown center outlined in black; the dotted lines in the image are not part of the mark but to show placement of the sunflower uniform feature on a suit lapel."

Applicant asserted that its proposed mark falls under the “tertium quid" rubric, and the Board agreed: the lapel pin is not applicant's product Applicant, nor is it packaging or "dressing" for goods. Therefore, "the proposed mark is best characterized as trade dress akin to product packaging for services."

The Board noted that product packaging trade dress and trade dress for services can be inherently distinctive, but here inherent distinctiveness was not at issue because Applicant sought registration under Section 2(f). Consequently, "the proposed mark’s lack of inherent distinctiveness is deemed an established fact."

Applicant faced a "heavy burden because the mark consists of a lapel pin, and the evidence of record shows what may generally be taken for granted: lapel pins, including those featuring are common accessories for professional attire in many fields, including the legal industry."

Because of the manner in which lapel pins are commonly used, consumers are predisposed to view lapel pins as ornamental accessories, so they are less likely to perceive them (particularly those featuring typically decorative elements like flowers) as indicators of source for legal services and related entertainment and educational services.

Applicant pointed to its use of the mark for at least five years, website photos, social media posts, photographs of attorneys wearing the pin, and several other items. The Board observed that "where the proposed mark is not inherently distinctive because it is comprised of common features in the relevant field or is typically used or perceived as ornamentation, length of use alone generally is not sufficient to satisfy the elevated burden of proving acquired distinctiveness."

The Board acknowledged that applicant has made some effort to use the proposed mark as a service mark, including some "look for advertising" and inclusion of the sunflower motif on business cards and applicant's website. However, the evidence fell short of satisfying applicant’s heavy burden in establishing that its proposed mark has acquired distinctiveness.

Here, we have little information to enable us to discern the scale or impact, and thus the success, of Applicant’s efforts in educating the relevant public about its proposed mark For instance , the record does not include any customer surveys or declarations from actual purchasers attesting to their association of Applicant's proposed mark with Applicant as the source of its services any specific evidence of sales figures or numbers of clients any conference attendance estimates indicating how many people may have encountered the proposed mark; any indication of the geographic reach of Applicant’s activities; or any data relating to Applicant’s website traffic, course participation or podcast listenership.

The information provided by the applicant suggested that the exposure of the proposed mark to relevant consumers as been limited, and therefore the Board affirmed the refusal to register due to lack of acquired distinctiveness.

Read comments and post your comment here.

TTABlogger comment: I sympathize with Erik. I tried to grow sunflowers this summer and they failed to acquire distinctiveness.

Text Copyright John L. Welch 2024.

Precedential No. 24: TTAB Rejects Law School Amicus Brief, Denies Partial Summary Judgment, and Tosses Out Six Affirmative Defense

In a merciless three-pronged, precedential interlocutory ruling, the Board (1) denied a law school clinic's dubious motion for leave to file an amicus brief, (2) denied Applicant Herman Jones's hopeless motion for partial summary judgment on his nonuse counterclaims, and (3) jettisoned Opposer Monster Energy's improper and ill-pled affirmative defenses. So who's the bully here? Monster Energy Company v. Herman Jones, 2024 U.S.P.Q.2d 1697 (TTAB 2024) [precedential].

Frequent TTAB litigant Monster Energy Company opposed Jones's application to register the mark MONSTER SQUAD DEL MAR (in standard characters) for "Training services in the field of Health and Wellness/fitness," claiming likelihood of confusion with, inter alia, the following two registered marks: MONSTER ARMY in standard characters, and M MONSTER ARMY & design, shown below, both for "Providing a web site featuring entertainment information and news on athletes; organizing and conducting educational programs and activities in the nature of classes, workshops, and sports competitions for athletes in the field of athlete development; athlete development program, namely, athlete training and mentoring in the field of wake, ski, surf, snowboard, motocross, mountain bike, BMX, and skate."

Jones filed counterclaims seeking partial cancellation of those two registrations (the "Counterclaimed Registrations") on the ground of nonuse prior to the expiration of the time for filing the statements of use, for all of the services except for the mentoring portion of the athletic development program. ("Contested Services").

No Amicus Brief: The George Washington University Law School Intellectual Property & Technology Law Clinic ("GWULC") filed a motion for leave to file an amicus brief, (See TBMP Section 538), contending that its proposed brief presented “arguments of law relating to trademark bullying, abusive enforcement of service mark registrations, likelihood of confusion, and public policy issues that will aid the Board in resolving this case,” and also argument based on “[uncontested] factual matters in support of Applicant.” Although the Board usually seems to bend over backwards in favor of law school clinics, this time it found the proposed brief to be "replete with partisan argument," and otherwise did not aid the Board "in resolving any 'doubtful' issues of law concerning Applicant’s motion for partial summary judgment."

The nonuse issues before us are straightforward and of the type the Board considers on a regular basis. GWULC’s proposed brief and its exhibits do not address issues of law which are not already adequately briefed by the parties. Rather, Applicant tries to paint Opposer as a bad actor – a trademark bully – that is not entitled to relief here because of the alleged bullying.

GWULC’s proposed brief also urged the Board to sua sponte issue an order to show cause for imposition of sanctions against Monster under Fed. R. Civ. P. 1119 "in the nature of 'sanction[ing Opposer] and cancel[ing] its marks.'" [Reminder: Registrations are cancelled, not marks - ed.]. The Board pointed out, however, that GWULC, as a non-party, may not move for (1) sanctions, (2) an order to show cause for the imposition of sanctions, or (3) dismissal of Opposer's opposition.

And so, the Board denied GWULC's motion.

No Partial Summary Judgment: The Board gave short shrift to Applicant Jones's motion for partial summary judgment. Jones argued that summary judgment was appropriate on his nonuse counterclaims because Monster’s "Contested Services" are “nothing more than ordinary and routine activity for the promotion of Opposer’s own products: energy drinks.” With respect to the “athlete development program, namely, athlete training . . . in the field of wake, ski, surf, snowboard, motocross, mountain bike, BMX, and skate” portion of the Contested Services, Jones argued that Monster "produced no evidence in discovery that it has ever trained athletes under the [marks of the Counterclaimed Registrations],” and the Contested Services "have never been advertised or sold."

The Board, however, found that genuine disputes of material fact exist as to whether Monster advertised and rendered the Contested Services prior to the filing of its statements of use, and also whether those services were "performed to the order of, or for the benefit of someone other than Opposer and have been qualitatively different from anything necessarily done in connection with the sale of Opposer’s goods."

No Affirmative Defenses: Monster offered six purported affirmative defenses to Jones's counterclaims, accompanied with a "reservation of right" to identify additional affirmative defenses at a later date. None of that survived.

Monster's first affirmative defense - failure to state a claim - was tossed out because failure to state a claim is not an affirmative defense. Likewise, Monster's attempted "reservation of right" is never allowed, since it fails to give the adversary fair notice of anything.

Monster's second and third defenses - laches and acquiescence - were based on Jones's failure to challenge the registrations while Monster has used the mark in 2005. However, a cancellation claim concerns registration of a mark, not use, and so Monster's allegations based on use were insufficient to support these defenses. Moreover, Monster failed to allege any damage resulting from the purported delay or any underlying facts regarding Jones's actions or omissions.

The fourth defense - unclean hands based on Jones's "fraudulently" alleging priority - failed to meet the heightened pleading requirement of FRCP 9(b). As to the fifth defense - equitable estoppel - Monster failed to allege any misleading conduct on the part that reasonably led Monster to infer that Jones would not assert a counterclaim, nor did Monster allege that it relied on any such conduct, causing material prejudice. Finally, with respect to Monster’s sixth affirmative defense - waiver - Monster failed to plead that Jones intentionally relinquished or abandoned his known rights.

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TTABlogger comment: Maybe this is a good case for teaching law students some of the things not to do in a TTAB proceeding. TTABlog Tip: a good way to get rid of bogus affirmative defenses right off the bat is to ask for Board participation in the discovery/settlement conference, whereby the Board participant will review the pleadings and, in my experience, knock out unbaked affirmative defenses.

Text Copyright John L. Welch 2024.