TTAB Affirms Refusal Because Specimens Show Use of Mark with Mobile App but not SAAS

The Board upheld a specimen refusal for the mark HEARTIFY & Design for software as a service (SAAS) featuring software for providing health-related data and information, in Class 42. Applicant's specimen of use displayed the mark in connection with a mobile phone app, but not with SAAS. In re Heartify LLC, Serial No. 97768868 (November 12, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).

Examining Attorney Marco Wright and the applicant agreed that "SAAS refers to 'a method of software delivery and licensing in which software is accessed online via a subscription, rather than bought and installed on individual computers.'" SAAS is somewhat similar to downloadable software in International Class 9, but for SAAS, the software resides on the service provider’s system. Applicant submitted specimens showing mobile phone applications, but not SAAS services.

Applicant only argument was that one of the mobile phone screenshots shows a tab for account information. Applicant argued that this tab directs a user to its website, where the user would then receive SAAS services relating to the user’s account. The Board pointed out, however, that "[t]he statutory definition of service mark use does not allow for the indirect 'chain-of-events' type of use Applicant argues for here."

None of the specimens submitted by Applicant "show anything resembling SAAS services. Every specimen shows or provides information about Applicant’s mobile phone application. We agree with the Examining Attorney that these specimens fail to show use of Applicant’s mark in connection with the SAAS services in International Class 42. The specimen refusal was proper."

Read comments and post your comment here.

TTABlogger comment: Applicant's class 9 software was supported by the specimens of use.

Text Copyright John L. Welch 2024.

TTAB Reverses 2(d) Refusals of "SUN CHLORELLA" for Noodles Due to Crowded Field

The Board reversed Section 2(d) refusals of the mark SUN CHLORELLA, in standard character and design form, for "Udon noodles made in whole or significant part of chlorella" [CHLORELLA disclaimed], finding confusion unlikely with the registered mark SUN NOODLE for, inter alia, noodles [NOODLE disclaimed]. Sixteen third-party, use-based registrations for mark containing the word SUN for noodles, and 18 more for arguably related goods, convinced the Board that the cited mark merits only a narrow scope of protection. In re Sun Chlorella Corp., Serial Nos. 97350448 and 97350457 (October 29, 2024) [not precedential] (Opinion by Judge Peter W. Cataldo).

Applicant’s "Udon noodles made in whole or significant part of chlorella" are encompassed by the "noodles" of the cited registration. Because the goods are thus overlapping and legally identical (in part), the Board must presume that those goods travel in the same trade channels to the same classes of consumers. "Accordingly, the DuPont factors relating to the similarity or dissimilarity of the goods and the similarity or dissimilarity of their trade channels "`heavily favor a finding of likelihood of confusion." [Why "heavily"? - ed.]

With respect to the strength of the cited mark, Applicant submitted 34 live third-party registrations for SUN-formative marks, all identifying various food items, the most probative being sixteen that identify various types of noodles among their goods. [E.g., SUN LUCK, SUN RIGHT, and SUN BLUSH]. The Board observed that “extensive evidence of third-party use and registrations is 'powerful on its face,' even where the specific extent and impact of the usage has not been established." Jack Wolfskin, 116 USPQ2d at 1136 (citing Juice Generation, 115 USPQ2d at 1674) (emphasis by the Board).

Under these circumstances, based on the evidence of record, we accord marks consisting, in whole or in part, of the words “SUN” and its foreign equivalents in connection with noodles a narrow scope of protection. Such marks travel in a crowded field.

As to the marks, the Board noted that "chlorella" is defined as "any of a genus (Chlorella) of unicellular green algae," "any of a genus of single-celled green algae that have been grown as a possible source of food" or "a genus of unicellular green algae potentially a source of high-grade protein and B-complex vitamins." 

Website evidence discussing Applicant’s goods stated that: “Chlorella Udon Noodles by Sun Chlorella contain the freshwater algae billed as one of the newest superfoods that’s rich in minerals and vitamins like D and B12."

Applicant’s marks and the cited mark contain the identical first word “SUN,” followed by the terms NOODLE, describing a broad category of products and CHLORELLA,  describing a more specific type of product encompassed by the term NOODLE. The marks thus are similar in appearance and sound. [Seems like a nons sequitur to me - ed.]

The Board acknowledged the differences between the marks, but it nonetheless found that, viewing the marks as a whole, consumers "could mistakenly believe the marks are variations of each other, pointing to a common source," because the marks "are similar in appearance, sound and meaning and, overall, create similar commercial impressions."

Despite finding the marks more similar than dissimilar and the channels of trade and classes of consumers overlapping, the Board concluded that confusion is unlikely:

[E]vidence of extensive registration by third parties of “SUN” formative marks for goods identical or related to those identified in the cited registration demonstrates that the cited mark is conceptually weak to such an extent that it is entitled to a very narrow scope of protection. We thus find that the cited registration cannot prevent registration of Applicant’s involved applications.

Read comments and post your comment here.

TTABlogger comment: In discussing Applicant's irrelevant prior registrations (different goods), the Board describes the prior registrations as incontestable. However, we know there is no such thing as an "incontestable" registration. The right to use a mark may be made incontestable under Section 15, not its registration.

Text Copyright John L. Welch 2024.

Recommended Reading: The Trademark Reporter, September-October 2024 Issue

The September-October 2024 (Vol. 114 No. 5) issue of the Trademark Reporter has arrived. [pdf here]. Willard Knox, Editor-in-Chief, summarizes the contents as follows (and below): "This issue offers readers an article on how practitioners can use survey evidence to prevail on behalf of brand owners contesting failure-to-function refusals to register their trademarks as well as a book review of a practical handbook on design law."

Phantom Rules: The USPTO’s Disruptive Denial of Trademark Protection in New Communicative Spaces, by Christopher P. Bussert & Jonathan E. Moskin. The practitioner authors of this article argue that the United States Patent and Trademark Office (USPTO) has sought to shift the burden of proof to brand owners that contest the USPTO’s refusal to register their trademarks on the ground of failure to function—and share their experience with using survey evidence to prevail on the brand owners’ behalf.

Book Review: Research Handbook on Design Law, Henning Hartwig, ed. Reviewed by Elisabeth Kasznar Fekete. The reviewer of this treatise finds it offers readers a comprehensive and authoritative survey of design law that will be useful to policymakers, intellectual property office examiners, attorneys, and judges.

Read comments and post your comment here.

TTABlog comment: This issue of the TMR is Copyright © 2024, the International Trademark Association, and is made available with the permission of the Trademark Reporter®.

TTAB Posts November 2024 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled six (VI) oral hearings for the month of November 2024. As indicated below, four of the hearings will be held virtually and two will be in-person at the USPTO's Madison East Building in Alexandria, Virginia. Briefs and other papers for each case may be found at TTABVUE via the links provided.

November 7, 2024 - 11 AM [Virtual]: Moet Hennessy USA, Inc. v. K-Stokes, Inc., Cancellation No. 92080021 [Petition for cancellation of a registration for the mark K-STOKES HENNY for "Barbecue sauce; Barbeque sauce; Chicken wing sauce; Chili sauce; Fish sauce; Hot sauce; Hot chili pepper sauce; Jerk sauce; Pasta sauce; Pizza sauce; Sloppy Joe Sauce; Spaghetti sauce; Sriracha hot chili sauce; Steak sauce; Tomato sauce" on the ground of fraud, nonuse, likelihood of confusion with the registered mark HENNESSY for cognac, and likelihood of dilution-by-blurring of the HENNESSY mark.]

November 13, 2024 - 11 AM [In person]: Plumrose Holding Ltd. v. USA Ham LLC, Opposition No. 91272970 [Opposition to registration of the mark LA MONTSERRATINA, in stylized form, for "Ham; Meat; Pork; Cold cuts; Cold cuts, namely, mortadella, pork loin, ham, bologna, salami, chorizo; Pork tenderloin; Processed meat; Sausage meat; Smoked sausages; Snack food dips" on the grounds of misrepresentation of source under Section 14(3), nonownership, and fraud.]

November 19, 2024 - 1 PM [Virtual]: Kuldisak, LLC d/b/a Swag Golf v. RASL Enterprises Inc., Opposition No. 91276063 [Opposition to registration of the mark SWAG GOLF for "Clothing for athletic use, namely, padded shirts; Clothing, namely, khakis; Belts for clothing; Bottoms as clothing; Embroidered clothing, namely, shirts, hats; Hoodies; Jerseys; Tops as clothing; Wearable garments and clothing, namely, shirts" on the ground of likelihood of confusion with the mark SWAG for golf equipment.]

November 20, 2024 - 11 AM [Virtual]: The Calliope Joy Foundation v. MLD Foundation, Opposition No. 91274114 [Opposition to registration of the mark MLD FAMILY for "Promoting the interests of patients, families, researchers, clinicians, and policymakers affected by metachromatic leukodystrophy by means of public advocacy" on the grounds of genericness, mere descriptiveness, and failure to function as a trademark.]

November 21, 2024 - 11 AM [Virtual]: In re G4 2010, LLC, Serial No. 90281547 [Refusal to register the mark PROMATCH for "drum sticks and percussion instruments" on the ground that the proposed mark identifies a process or system and therefore does not function as a trademark.]

November 25 - 2 PM [In person]: Garan Services Corp. v. Jesus Villa, Cancellation No. 92074777 [Petition for cancellation of a registration for the mark HALFANIMAL for "Beanies; Hats; Pants; Shorts; Sweat pants; Sweat shirts; Sweat shorts; Sweat suits; T-shirts; Wind resistant jackets" on the grounds of abandonment and false suggestion of a connection with Petitioner Garan (under Section 2(a)).]

Read comments and post your comment here.

TTABlog comment:  Any predictions? 

Text Copyright John L. Welch 2024.

Ornamental Design on Jewelry and Clothing Fails to Function as a Trademark, Says TTAB

The Board upheld a refusal to register the design mark shown below, for jewelry and for "Clothing, namely, t-shirts, socks, hoodies" on the ground that under Sections 1, 2 and 45 of the Trademark Act, the proposed mark, as used on the specimens of record, is merely a decorative or ornamental feature of the goods and does not function as a trademark to indicate their source. In re Dragonsteel Entertainment, L.L.C., Serial No. 97200167 (October 29, 2024) [not precedential] (Opinion by Judge Robert Lavache).

The question was whether consumers would view the design as mere ornamentation on the goods or as a source indicator for the goods. In such a case, the Board has found it "helpful to consider various aspects of designs and shapes," including "the size, location and dominance of the designs." In that light, it reviewed applicant's specimens of use:

Applicant argued that “[t]he TTAB has made it clear that ‘emblazoning’ a logo on the front of a t shirt or hoodie does not preclude the logo functioning as a source identifier in the minds of the consuming public.'" The Board agreed: "we have previously rejected any per se rule regarding registrability based on the size of a mark on clothing." However, that didn't help the applicant:

In this case, we find that the size, as well as the location and dominance, of the proposed mark on the goods make it more likely than not that consumers viewing the mark will perceive it as mere ornamentation, rather than as an indicator of source. Specifically, in all of the specimens . . . except the one displaying the socks, the proposed mark is the only design element on the goods and it is displayed on the front of goods taking up a significant portion of the shirts’ surface area and composing almost the entirety of the jewelry items. Thus, the proposed mark wholly defines the appearance of the jewelry and forms the essence of the shirts’ expressive element.

As to the socks, the Board agreed with the Examining Attorney Tasha Pulvermacher that the poor image quality of the specimen prevented a determination as to whether the proposed mark actually appears on the socks, and so the Board could not determine whether the specimen shows merely ornamental use.

The Board also considered marketplace evidence that jewelry and clothing commonly feature prominently displayed ornamentation or design elements. [Hardly surprising - ed.] "Thus consumers may be predisposed to perceiving such elements as something other than indicators of source on such goods and may purchase the goods because of their appearance rather than because they come from a particular source."

So, while the design of the proposed mark may be deemed unique as compared to the other designs in evidence, the manner in which Applicant applies the proposed mark to shirts and jewelry (i.e., a prominently displayed design serving as the sole decorative of the goods) is nonetheless a mere refinement of a common form of ornamentation for such goods.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Applicant made no attempt to show acquired distinctiveness. It did make a feeble attempt at what the Board construed as a "secondary source" argument (the primary source being the books of Brandon Sanderson) but offered no proof to support it.

Text Copyright John L. Welch 2024.

TTABlog Test: Is PHYSICIANCARE Merely Descriptive of Software and Services Enabling Manufacturers to Deliver Information to Healthcare Providers?

The USPTO refused registration of the mark PHYSICIANCARE under Section 2(e)(1), finding it merely descriptive of services that enable the management and delivery, on behalf of pharmaceutical and medical device manufacturers, of clinically relevant communications to physicians and other healthcare providers. Applicant LDM Group argued that its mark cannot be descriptive because "it is not providing a medical service," pointing to the Examining Attorney’s “concession” that Applicant’s services “do[] not appear to be a medical service but rather some technological service.” How do you think this appeal came out? In re LDM Group, LLC, Serial No. 97184496 (October 24, 2024) [not precedential] (Opinion by Judge Jessica B. Bradley).

The Examining Attorney maintained that PHYSICIANCARE does not create a unique, incongruous, or nondescriptive meaning, but rather retains the descriptive meaning of the individual terms, "refer[ring] to how applicant’s healthcare related software and technology services are for assisting physicians in providing care to patients."

LDM Group asserted that the “function” of its services “is to provide product information from a pharmaceutical manufacturer to a physician, not to dictate the care provided to a patient,” and thus the mark PHYSICIANCARE is not merely descriptive of its “technology or software service.”

The Examining Attorney pointed to certain statements on LDM Group's website referring to helping patients, but the Board found that "these statements confirm the non-descriptive meaning. They inform relevant purchasers (i.e., the pharmaceutical and medical device manufacturers providing the medical and clinical information) that the medical and clinical information transmitted by Applicant’s services is used by physicians to care for patients."

The Board found that purchasers must engage in a multi-step analysis to arrive at the meaning proposed by the Examining Attorney.  "The first immediate step is identified by the services in the application, namely, that the 'website' and 'application programming interface' 'deliver[] clinically relevant communications' from 'pharmaceutical and medical device manufacturers' 'to physicians and other healthcare providers.'" In the second or third step, the physician reviews the communications and provides care to a patient. "This type of multi-stage reasoning supports that Applicant’s mark is suggestive."

Accordingly, Applicant’s mark PHYSICIANCARE, when considered in relation to Applicant’s Identified Services that provide medical and clinical information from pharmaceutical and medical device manufacturers to physicians in order to provide care for patients, presents an incongruous meaning, or at a minimum one that requires “some measure of imagination and ‘mental pause.'"

The Board acknowledged once again the thin line between suggestiveness and mere descriptiveness and its obligation to give the benefit of any doubt to the applicant, "with the knowledge that a competitor of applicant can come forth and initiate an opposition proceeding in which a more complete record can be established.”

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: How did you do? 

Text Copyright John L. Welch 2024.

Precedential No. 26: TTAB Denies Motion to Compel: Responding without Objection to First Set of Discovery Requests does not Preclude Excessiveness Objection to Second Set

The Board denied Opposer 1661's motion to compel discovery responses premised on the unsupported and dubious notion that, once a party responds to a first set of interrogatories or document requests, it cannot object to a second set on the ground that the total number of interrogatories or documents requests exceeds the maximum limit of 75. 1661, Inc. v. TF Intellectual Property Pty Ltd, 2024 USPQ2d 1719 (TTAB 2024) [precedential] (Interlocutory Attorney Jennifer Krisp).

Trademark Rules 2.120 (d) and (e) limit the number of interrogatories and requests for production (RFPs) that a party may serve to 75 (counting subparts). If a party wants to object under these Rules, it must serve a general objection on the ground of excessiveness, rather than responding.

Applicant TFIP responded to 1661's first set of interrogatories and requests for production (RFPs) and did not raise an objection to their number. Opposer 1661 then served second sets of interrogatories and RFPs, to which TFIP objected on the ground that the total number now exceeded 75 for each. 1661 moved to compel responses, claiming that because TFIP did not object to the first sets, it could not object to the second sets on the ground of excessiveness.

In attempting to resolve this dispute, TFIP informed 1661 that it counted the first sets of RFPs and interrogatories as totaling 69 and 68, respectively, and the second sets as totaling 79 and 85, and TFIP provided its counting methodology.

The Board pointed out that TFIP, when responding to the first sets, had "no duty to inform 1661 how it counted, i.e., that it counted some to be compound or have subparts." Then, upon concluding that the second sets pushed the numbers over the limit, TFIP permissibly served its general objections.

Under the Rules, a party has no obligation to inform its adversary of its analysis of the total or its method of counting unless (and until) it believes the total number exceeds the permissible limit. In sum, TFIP did not fail to timely object, and thus did not forfeit its right to serve general objections upon determining the requests exceeded 75 using its counting method.

1661 feebly accused TFIP of "gamesmanship," but the Board observed that "as a practical matter, when served with the first set of requests, TFIP had no basis to believe it needed to or should inform 1661 that it counted therein fewer than 75 requests. As TFIP aptly states, it 'cannot be expected to know 1661’s plans for discovery and whether 1661 even wanted to serve another set of discovery requests.'"

Read comments and post your comment here.

TTABlogger comment: Suppose the original sets had exceeded 75 and TFIP did not object. Could FTIP have objected to further sets on the ground of excessiveness? I think so.

Text Copyright John L. Welch 2024.

TTAB Finds Energy Drinks Related to Nutritional Supplements and Pickles

Beverage behemoth PepsiCo knocked the stuffing out of Defendant Rockstar Industries in this consolidated opposition and cancellation proceeding. The Board granted PepsiCo's petitions for cancellation of three registrations for the mark ROCKSTAR for nutritional supplements and related products, and sustained an opposition to two applications for snack items and pickles, finding confusion likely with PepsiCo's identical mark for energy drinks. This blog post will attempt to hit the "highlights." PepsiCo, Inc. v. Rockstar Industries LLC, Opposition No. 91247241 and Cancellations Nos. 92075918 and 92076204 (October 25, 2024) [not precedential].

Strength of PepsiCo's Mark: As to conceptual strength, the Board found PepsiCo's ROCKSTAR mark to be arbitrary and strong. As to commercial strength, PepsiCo submitted evidence of length of use, sales and advertising figures, consumer exposure through media, athletic sponsorships and popular music, and the other indirect evidence of consumer recognition. The defendants did not provide evidence of third-party uses in the relevant field "that would establish any diminished commercial or marketplace strength of PepsiCo’s ROCKSTAR marks under the sixth DuPont factor." The Board found that PepsiCo’s ROCKSTAR and formative marks enjoy "significant commercial strength." However, due to the lack of "more robust context for the sales and advertising figures, and the reach and impact of the promotional efforts, not at the farthest end of the spectrum of fame."

The Marks: Not much to talk about here. Since the marks are identical, the first DuPont factor weighed "heavily" in favor of PepsiCo.

The Goods: PepsiCo relied on a variety of evidence to establish the relatedness of the goods at issue. It submitted third-party use evidence and 33 third-party registrations in which energy drinks and some of Defendants’ goods appear under the same mark. In addition, cross-promotions between ROCKSTAR energy drinks, Matador beef jerky, Lays potato chips and Doritos tortilla chips "show the relatedness of these food and beverage items."

Turning to pickles and the like, "the evidentiary showing of relatedness specific to these goods is less than for the others." [Not surprising - ed.]. However, the Board found the evidence sufficient "in view of the strength of PepsiCo’s marks and the identicality of PepsiCo’s and Defendants’ marks."

The record establishes that snack foods which could include the pickles, pickled vegetables, or canned fruits and vegetables, are complementary to energy drinks, that energy drinks and various snack foods are promoted together, and that energy drink providers also offer a wide variety of snack foods under the same marks as their energy drinks.

Trade Channels and Classes of Consumers: The evidence showed that the respective goods are offered in some of the same trade channels, and the relevant consumers overlap.

Purchaser Care: The items are inexpensive, and the snack items may be purchased on impulse. As to supplements, consumers may exercise some care. However, the Board must consider the least sophisticated purchaser, and so the Board concluded that this factor is neutral vis-a-vis supplements.

Actual Confusion: Survey evidence supported a finding of likely confusion with respect to meal replacement products, energy bars, and/or dietary and nutritional supplements" that were the subject of the survey. Several examples of actual consumer confusion were "reasonably probative to corroborate the showing under this factor."

Conclusion: Defendants lost.

Read comments and post your comment here.

TTABlogger comment: Pickles, pickled vegetables, or canned fruits and vegetables are complementary to energy drinks? Really?  

Text Copyright John L. Welch 2024.

TTABlog Test: Is This Word-and-Design Mark Confusable with PASION, Both for Cigars?

The USPTO refused to register the composite word-and-design mark shown below, for cigars, finding confusion likely with the registered mark PASION for, inter alia, cigars. Applicant argued on appeal that it had prior use of its mark, that it sells its cigars in two Philadelphia stores and at its website whereas the registrant's cigars are sold in New York City and on its own website, that the websites feature different color schemes, that customers will exercise care in their purchasing decisions, and that evidence of actual confusion was lacking. How do you think this appeal came out? In re Martinez Hand Rolled Cigars, Inc., Serial No. 97479082 (October 23, 2024) [not precedential] (Opinion by Judge Angela Lykos).

(Click on image to enlarge)

The literal portion of applicant's mark comprises the word PASIÓN and the phrases HAND MADE IN NEW YORK CITY, USA and SINCE 1974 MARTINEZ HAND ROLLED CIGARS. All of the words except PASIÓN and MARTINEZ are disclaimed.

Of course, applicant's claim of prior use was irrelevant in this ex parte appeal because it amounted to a collateral attack on the cited registration. The proper vehicle for such a challenge is a petition for cancellation. As to the assertions regarding where the cigars are sold and the color schemes of the websites, those facts also were irrelevant, since it is not permissible to read real-world limitations into the identified goods in the application and/or cited registration. Moreover, since the goods are identical, they are presumed to travel in the same trade channels to the same classes of consumers.

As to purchaser care, the Board found that neither the application nor the cited registration are limited to "high-end" cigars, but rather include inexpensive cigars, and there was no evidentiary basis to conclude that all cigar purchasers are sophisticated in their purchasing. As for the lack of evidence of actual confusion, that assertion is not probative value in an ex parte proceeding where the registrant has no opportunity to be heard on the issue.

Applicant having been given the short end of the licklog with regard to the factors discussed above, the Board now came to a consideration of the marks. Since the goods overlap, the Board observed, a lesser degree of similarity is necessary to support a finding of likely confusion.

The Examining Attorney argued that the marks are similar because the applicant's mark begins with PASIÓN, which is the entirety of the cited mark PASION, and PASIÓN is the dominant portion of Applicant’s mark. The Board pooh-poohed that argument because it amounted to an improper dissection of Applicant’s mark. "Applicant’s composite mark incorporates the cited word mark, but the similarities stop there."

The Board found that the word PASIÓN in Applicant’s mark "blends harmoniously in the eagle depicted above the medallion, making it less perceptible to prospective consumers." In other words, 
the word PASIÓN is “difficult to notice” in the context of the overall commercial impression made by the design elements. The Board therefore rejected the Examining Attorney’s assertion that PASIÓN is the dominant element in Applicant’s mark.

If any literal element dominates at all, it would be the stylized surname MARTINEZ in Old English style font displayed in the medallion. Prospective consumers would be more naturally drawn to this relatively larger and prominently depicted term in the center of the design. The surname MARTINEZ sounds completely different than the cited mark PASION. As a surname, it also evokes a distinct connotation and commercial impression.

The Board concluded that the marks are dissimilar in sight, sound, appearance and connotation. "The unique multi-element design of Applicant’s composite mark contributes to these differences. This DuPont factor strongly weighs against finding a likelihood of confusion."

And so, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: How did you do? If you ordering one of applicant's cigars, what would you ask for?

Text Copyright John L. Welch 2024.

TTABlog Test: Must "CATTLE COMPANY" Be Disclaimed in "ROCK CREEK CATTLE COMPANY" for Real Estate Development Services?

The USPTO refused to register the mark ROCK CREEK CATTLE COMPANY, in standard character and design form, for "Real estate development services, namely, development of a private luxury resort property; real estate development," without a disclaimer of CATTLE COMPANY. The Examining Attorney, pointing to the fact that applicant's services are offered on a site that includes an active cattle ranching operation, concluded that CATTLE COMPANY merely describes the services "because CATTLE COMPANY immediately conveys a business that develops real estate featuring nearby domesticated animals." How do you think this appeal came out? In re Rock Creek Cattle Company, Ltd., Serial Nos. 90439051 and 90439338 (October 22, 2024) [not precedential] (Opinion by Judge Christopher C. Larkin).

The Board first pointed out that the Examining Attorney USPTO bears the burden of proving that the words CATTLE COMPANY in applicant’s mark are merely descriptive of at least one of the services identified in the applications. Any doubt regarding mere descriptiveness must be resolved in applicant’s favor. 

Applicant relied in part on its previously issued (now lapsed) registration of the same composite shown above for "real estate development services, namely, development of a private luxury resort property," one of the two services identified in the current applications, with a disclaimer of COMPANY but not CATTLE COMPANY. The Board was unmoved.

We thus do not know why the USPTO required only a disclaimer of COMPANY, and not CATTLE COMPANY, when it issued the ’129 Registration in 2009 for “real estate development services, namely, development of as private luxury resort property.” We conclude that the USPTO’s issuance of the ’129 Registration for those services without a disclaimer of CATTLE COMPANY does not entitle Applicant ipso facto to another registration of the composite mark for those services without a disclaimer of CATTLE COMPANY.

In short, each application must be examined on its own record.

The Examining Attorney relied most heavily on applicant’s own website for proof of the mere descriptiveness of the wording CATTLE COMPANY in the context of the identified services. The Board noted that in mere descriptiveness cases, the USPTO “commonly looks to an applicant’s website when it is made of record for possible evidence of descriptive use of a proposed mark.”

The evidence showed that the services "are currently rendered only at a single 30,000-acre residential community in Deer Lodge, Montana that . . . contains 225 lots and cabin sites that can be developed, as well as several existing features, including a golf course and golf clubhouse and the working cattle ranch."

The record leaves us with doubt that prospective purchasers of the identified “real estate development services, namely, development of a private luxury resort property” and “real estate development” services at the Deer Lodge development would understand the wording CATTLE COMPANY to “immediately convey[ ] a business that develops real estate featuring nearby domesticated animals.” The identified real estate development services are provided with respect to privately owned land located in certain portions of the Deer Lodge development, not with respect to the existing working cattle ranch at the development, and we have difficulty seeing how prospective purchasers of the identified services would understand from the wording CATTLE COMPANY that their privately owned land to be developed (as opposed to the working cattle ranch itself) “featur[es] nearby domesticated animals.”

The Board again acknowledged the "fine line between suggestive marks and descriptive terms." Giving applicant the benefit of the doubt, the Board found the term CATTLE COMPANY to be suggestive rather than descriptive.

And so, the Board reversed the disclaimer requirement in each case.

Read comments and post your comment here.

TTABlogger comment: Is "Rock Creek" geographically descriptive under Section 2(e)(2)? Doubtful. I thought Rock Creek was in D.C., not Montana. Anyway, what did you think of this refusal? 

Text Copyright John L. Welch 2024.