TTABlog Quarterly Index: April - June 2024

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Section 2(a) - False Suggestion of a Connection:

• Precedential No. 11: TTAB Upholds 2(a) False Connection Refusal of LEATHERNECKS for Motorcycle Club Membership

Section 2(c) - Consent of Living Individual

• Supreme Court Upholds Constitutionality of the Trademark Act’s “Names Clause” in Affirming Refusal to Register TRUMP TOO SMALL

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Is HOLLYWOOD COFFEE CO. for Retail Store Services Confusable with HOLLYWOOD CAFÉ for Restaurant Services?
• TTABlog Test: Three More Section 2(d) Refusals For Your Review
• On Remand, TTAB Again Dismisses I-FIT FLEX Opposition Due to Difference in Goods and Services
• TTABlog Test: Three Recent Section 2(d) Appeals For Your Consideration
• TTAB Reverses Section 2(d) Refusal of "CREATIVE HOME IDEAS" in view of Weakness of Two Cited Marks
• TTAB Sustains Nike's Confusion and Dilution Claims Against "DON'T JUST DO IT, GET IT DONE" for Clothing
• TTABlog Test: Which of These Three Recent 2(d) Refusals Was/Were Reversed?
• TTAB Orders Cancellation of "THE PLIMSOULS" Registration on Ownership and Likelihood of Confusion Grounds, Rejects Abandonment Claim
• Another Section 2(d) Reversal: USPTO Fails to Prove Cosmetics Are Related to Flatware and Other Household Goods/li>
• BREAKING! TTAB Reverses Section 2(d) Refusals of FURY TIRES and FURY OFF-ROAD for Tires
• TTAB Affirms Section 2(d) Refusal of NUDE X for Cosmetics in view of NAKED X for Hair Care Products
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• CAFC Affirms TTAB: Opposer's Testimony Declaration Deemed Timely and Sufficient to Prove Priority
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• TTABlog Test: Is CROKO for Chocolates and Cookies Confusable with CROCO BERRY CRUNCH for Breakfast Cereals?

• TTABlog Test: Are Backpacks, Wallets, and Purses Related to Cake Under Section 2(d)? [Yes]
• TTABlog Test: Are Cigarettes and Cigars Related to Alcoholic Beverages Under Section 2(d)? [Yes]
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• Precedential No. 5: TTAB Finds SAGEFORTH Confusable With SAGE CENTRAL for Medical Information Services, Dismisses Section 18 Counterclaim Without Prejudice
• Summary Judgment Motion Backfires: C.D. Cal. Dismisses Kate Spade Appeal of TTAB Opposition Defeat
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?

Section 2(e)(1) - Mere Descriptiveness:

• "ECOPRENEUR" Merely Descriptive of Environmental Awareness Software and Services, Says TTAB
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• In a Split Decision, TTAB Reverses Mere Descriptiveness Refusal of ARBATA for Tea Despite the Word's Lithuanian Meaning
• TTAB Affirms Mere Descriptiveness Refusal of SPICED CHAI for Tobacco
• TTAB Sustains 2(e)(1) Opposition, Finding WOOLWAX Merely Descriptive of Lubricants

Section 2(e)(5) - Functionality:

• TTAB Says "No Dice" to Opposer's Claim of Functionality of Dice Box Configuration

Section 2(f) - Acquired Distinctiveness:

• TTAB Affirms Refusal to Register Muffler Configuration Due to Lack of Acquired Distinctiveness
• TTAB Affirms 2(e)(4) Surname Refusal of "BASQUIAT" for Alcoholic Beverages, Rejecting Transferred Distinctiveness Claim
• 4th Circuit Upholds District Court and TTAB: Timberland Boot Design Lacks Acquired Distinctiveness

Section 43(c) - Likelihood of Dilution:

• TTAB Sustains Nike's Confusion and Dilution Claims Against "DON'T JUST DO IT, GET IT DONE" for Clothing

Abandonment:

• TTAB Summarily Dismisses Monster Energy's Opposition to PREDATOR & Design: No Lack of Bona Fide Intent and No Abandonment

Failure-to-Function:

• "ASSHOLES LIVE FOREVER" Fails-to-Function as a Service Mark for Online Retail Store Services, Says TTAB
• "DREAM DECIDE DO" Fails to Function as a Trademark for Stationery and Printed Works, Says TTAB

Genericness:

• TTAB Deems STUDENT ALLY Generic for . . . . Guess What?
• TTAB Issues Correction of CINNAMON DONUT STOUT Opinion Regarding Genericness Burden of Proof
• TTAB Finds CINNAMON DONUT STOUT to be Generic for . . . Guess What?

Laches:

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

Lack of Bona Fide Intent:

• TTAB Summarily Dismisses Monster Energy's Opposition to PREDATOR & Design: No Lack of Bona Fide Intent and No Abandonment

Nonuse:

• TTAB Orders Cancellation of TEEN EARTH Registration Due to Nonuse With Intent Not to Resume Use

Ownership:

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

Discovery/Evidence/Procedure:

• Fourth Circuit Rules that Bacardi May Challenge USPTO's Renewal of HAVANA CLUB Registration via Civil Action Under the APA
• Precedential No. 12: TTAB Rejects Sovereign Immunity Claim in Opposition to Virginia College System Marks
• Precedential No. 10: TTAB Denies Section 18 Petition to Restrict Beer Registration to Micro-Brewed Craft Beer
• Precedential No. 9: TTAB Denies HOLLYWOOD HOTEL Summary Judgment Motion, Finding No Claim Preclusion
• Precedential No. 8: TTAB Strikes "Trademark Bullying" Affirmative Defense in DOOR DABZ Opposition
• CAFC Affirms TTAB: Opposer's Testimony Declaration Deemed Timely and Sufficient to Prove Priority
• Precedential No. 7: TTAB Dismisses Cancellation Proceeding as Moot After Registrant Fails to File Section 8 Declaration
• Precedential No. 6: TTAB Denies Meta Platforms' Motion to Dismiss META Opposition on Timing and Standing Grounds

CAFC Decisions:

• CAFC Affirms TTAB Dismissal of Consolidated Cancellations Due to Lack of Entitlement to a Statutory Cause of Action
• Chestek PLLC Files Cert Petition for Supreme Court Review of CAFC Decision Upholding Domicile Address Requirement
• CAFC Remands I-FIT FLEX Opposition at Request of USPTO for Re-consideration of First and Second DuPont Factors
• CAFC Affirms TTAB: Opposer's Testimony Declaration Deemed Timely and Sufficient to Prove Priority
• CAFC Partially Remands "HERE COMES THE JUDGE" Appeal to TTAB for Production of AEO Materials

Recommended Reading:

• Recommended Reading: The Trademark Reporter, May-June 2024 Issue
• Five Amicus Briefs in Support of Chestek PLLC Petition for Writ of Certiorari
• Recommended Reading: Fromer and McKenna, "Amazon's Quiet Overhaul of the Trademark System"
• J. Michael Keyes:: "Just Do It" Doesn't Fly When Submitting Survey Evidence to the TTAB"
• Ted Davis: "Annual Review of U.S. Federal and State Case Law and T.T.A.B. Developments"
• The Trademark Reporter's "Annual Review of European Trademark Law"
• J. Michael Keyes: "Will Bad Spaniels' New 'Disclaimer' Keep VIP Products Out Of The Doghouse?"

Other:

• TTAB Posts June 2024 Hearing Schedule
• The Last Two Slides from My INTA Presentation>/a>
• "MEET THE BLOGGERS" Postponed Until 2025
• S.D. Ohio District Court, Despite Default, Stays Infringement Action in Favor of Pending TTAB Proceeding
• Divided 9th Circuit Says District Court Has Power to Adjudicate TM Applications
• Three Recent TTAB Inter Partes Decisions of Interest

Text © John L. Welch 2024.

Precedential No. 13: TTAB Reverses Requirement to Disclaim "ARCHITECT" in KORN FERRY ARCHITECT for HR Services

The Board upended the USPTO's refusal to register the mark KORN FERRY ARCHITECT absent a disclaimer of the word ARCHITECT, for, inter alia, "executive search, recruitment and placement services; business consultation services in the field of human resources management and development" and for "providing temporary use of online non-downloadable software in the field of human resources." The evidence failed to show that "architect" "identifies a defined position in the human resources field, or that it "immediately describes any quality, characteristic, feature, function, purpose, or use of any of the services identified in the application." In re Korn Ferry, Serial No. 90890949 (June 27, 2024) [precedential] (Opinion by Judge Christopher C. Larkin).

Under Section 6(a) of the Lanham Act, the USPTO "may require the applicant to disclaim an unregistrable component of a mark otherwise registrable." The examining attorney here required a disclaimer of the word ARCHITECT on the ground of mere descriptiveness under Section 2(e)(1), primarily arguing that the applicant “may provide its services for architects." He also maintained that "architect" is a human resources industry term for "someone who sets the conceptual and political stage for accomplishing any work related to organizational issues or talent."

The applicant pointed to its eight registrations for marks containing the word ARCHITECT, none of which includes a disclaimer of that term. The Board once again pointed out that each mark must be assessed on its own facts and record, and that "prior decisions and actions of other trademark examining attorneys in registering other marks are not binding upon the USPTO or the Board."

The applicant next argued that KORN FERRY ARCHITECT is a unitary term and therefore no disclaimer should be required. The Board disagreed: "Applicant’s corporate name KORN FERRY is separable from the final word ARCHITECT, and the mark [KORN FERRY ARCHITECT] does not have 'a distinct meaning of its own independent of the meaning of its constituent elements.'"

Finally, the applicant argued that the mark is at most suggestive of the services because "there is no known “human resources architect” position or role in connection with employment and recruitment services."

With respect to the Examining Attorney's argument that the term ARCHITECT is descriptive because it identifies consumers of the recited services, the Board reviewed the few precedents of relevance and concluded:

Taken together, these cases hold that a mark or term comprising part of a mark is merely descriptive of goods or services if it immediately identifies the consumers to which the identified goods or services, or an appreciable number of the goods or services, are at least primarily directed. The possible mere descriptiveness of a term under this theory is determined on the basis of the term itself, the identification of goods or services, and any evidence of the applicant’s use of the term.

Beginning with the "mark itself," the Board found that, "in the context of Applicant’s mark as a whole and the services identified in the application, . . . the word ARCHITECT does not immediately identify a person 'who designs and supervises the construction of buildings or other large structures' as the type of individual to whom all or an appreciable number of Applicant’s services are primarily directed."

As to the identifications of services, the Board found nothing that indicates the consumers of the services. Although the services are identified broadly enough to encompass professional architects as possible consumers. the Board "decline[d] to infer from the identifications alone that the services are primarily directed to, or primarily consumed by, professional architects."

As to applicant's specimen of use, it "does not make it clear that an appreciable part, or even any part, of Applicant’s services are primarily directed to architects." 

Turning to the examining attorney's alternative argument that "architect" is a term of art in the human resources industry, the references cited "do not show that the word identifies a particular defined position in the human resources field, and do not show that the word ARCHITECT in Applicant’s KORN FERRY ARCHITECT mark immediately describes any quality, characteristic, feature, function, purpose, or use of any of the services identified in the application."

The Board has frequently acknowledged the “fine line between suggestive marks and descriptive terms,” and given that fine line, in this case "we must resolve any doubt in favor of finding the term [ARCHITECT] suggestive rather than descriptive.” 

The Board concluded that the examining attorney failed to prove that the word ARCHITECT is merely descriptive of any of the services identified in the application. And so, the disclaimer requirement was rejected and the refusal reversed.

Read comments and post your comment here.

TTABlogger comment: Korn Ferry sounds to me like a boat trip across the Mississippi from Illinois to Iowa. But then, I lived in central Illinois for ten years. 

Text Copyright John L. Welch 2024.

Recommended Reading: The Trademark Reporter, May-June 2024 Issue

The May-June 2024 (Vol. 114 No. 3) issue of the Trademark Reporter has arrivede. [pdf here]. Willard Knox, Editor-in-Chief, summarizes the contents as follows (and below): "This issue offers readers an article on how the constitutional-avoidance doctrine allows courts to accommodate free speech concerns when applying the Rogers v. Grimaldi test in the wake of the U.S. Supreme Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, an article on how surveys can help brand owners facing “failure to function” refusals to register their trademarks, and a book review on the intersection of intellectual property and sustainability."

Constitutional Avoidance and Standards of Proof in Trademark Infringement Litigation: A Comment on Post–Jack Daniel’s Applications of the Rogers Test for Liability, by Theodore H. Davis Jr. - With the U.S. Supreme Court’s 2023 decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC leaving open the question of whether the Rogers v. Grimaldi test should apply in cases involving an artistic or expressive work where a defendant’s allegedly infringing use of a plaintiff’s trademark is not as a designation of source for defendant’s own goods and services, the author of this article argues that the constitutional-avoidance doctrine allows courts to accommodate free speech considerations when determining whether defendant’s use explicitly misleads consumers as to the source or content of such artistic or expressive work.

Survey Methodologies to Overcome “Failure to Function” Refusals in the U.S. Patent and Trademark Office, by R. Charles Henn Jr. - Brand owners sometimes face United States Patent and Trademark Office “failure to function” refusals to register their trademarks. The author of this article offers brand owners practical advice on how to design surveys that can provide empirical evidence showing whether an applied-for term functions as a mark.

Book Review: Intellectual Property and Sustainable Markets by Ole-Andreas Rognstad and Inger B. Orstavik, eds. Reviewed by Gabriele R. Fougner.

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®.

Introductory Text Copyright John L. Welch 2024.

TTABlog Test: Is HOLLYWOOD COFFEE CO. for Retail Store Services Confusable with HOLLYWOOD CAFÉ for Restaurant Services?

The USPTO refused to register the mark HOLLYWOOD COFFEE CO. for "Retail store services featuring packaged coffee and packaged foods" [COFFEE CO. disclaimed], finding confusion likely with the registered mark HOLLYWOOD CAFÉ, in standard character form, for "Mobile restaurant services; restaurant and café services; restaurant services featuring coffee, coffee products, other hot and cold beverages, desserts, pastries and snacks" [CAFÉ disclaimed]. There must be a lot of "Hollywood" marks, right? How do you think this came out? In re USA Innovations, Inc., Serial No. 97441814 (June 25, 2024) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

Applicant included in its brief, a list of third-party registrations for HOLLYWOOD-formative marks, but they were not previously made of record. Examining Attorney Bridgett Smith objected and the Board sustained the objection. "Only evidence filed during examination is timely, Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), and it should not be submitted on appeal."

The Board, not surprisingly, found HOLLYWOOD to be the dominant element of the involved marks. "While there are some specific differences between HOLLYWOOD CAFÉ and HOLLYWOOD COFFEE CO., when the marks are viewed in their entireties, they are similar in appearance, sound and connotation, and they convey similar commercial impressions, due to the common presence of the identical arbitrary term HOLLYWOOD." [I think they look and sound different and have different connotations - ed.]

As to the services, the Examining Attorney submitted the third-party website printouts from Black Acres Roastery, Zeke’s Coffee, Starbucks and Dunkin’, "all of which offer under their own names restaurant services featuring coffee like those identified in the cited registration, and packaged coffee through a retail component like the retail store services identified in the application." She also submitted seven third-party, use-based registrations "covering the types of restaurant and café services identified in the cited registration as well as retail store services featuring packaged coffee of the type identified in the application."

This same evidence sufficed to establish the overlap in channels of trade and classes of consumers.

And so, the Board affirmed the refusal to register

Read comments and post your comment here.

TTABlogger comment: What do you think? Is it worth seeking review by way of civil action, where the applicant could submit additional evidence?

Text Copyright John L. Welch 2024.

TTAB Summarily Dismisses Monster Energy's Opposition to PREDATOR & Design: No Lack of Bona Fide Intent and No Abandonment

Frequent TTAB litigant Monster Energy lost another one at the TTAB, this time on summary judgment. It sought cancellation of a registration for the mark PREDATOR & Design, issued in 2017, for soft drinks and energy drinks made with natural ingredients, claiming lack of bona fide intent and abandonment. The registration was blocking Monster's application to register PREDATOR for energy drinks, soft drinks, and sports drinks. The Board granted respondent's summary judgment motion, finding no genuine disputes of material fact. Monster Energy Company v. Golden Global Innovations Besloten Vennootschap and Golden Global Group BV, Cancellation No. 92078934 (June 20, 2024) [not precedential].

The application underlying the challenged registration was filed as a Madrid Protocol request for extension of protection under Section 66(a). That provision includes a requirement that an applicant declare that it has a bona fide intent to use the mark in commerce. "To prove intent to begin use, Respondent must produce evidence showing that, under its particular circumstances, its activities are those that a reasonable business with a bona fide intent to use the mark in United States [('U.S.')] commerce would have undertaken." The three-year statutory abandonment period began no earlier than May 2, 2017, the issue date of the registration (the “Abandonment Period”).

Respondent submitted declarations, testimony, and exhibits, while Monster submitted no contradictory evidence. Instead, Monster argued that none of respondent's activities demonstrated use in commerce during the Abandonment Period because they were “token” uses and/or were internal rather than “open” uses of the mark. Monster contended that these activities did not demonstrate an intent to resume or commence use because the activities were “sporadic” and “half-hearted,” and not the activities of a reasonable business.

The Board, however, found that "Respondent’s activities are the type that would be undertaken by a reasonable business under Respondent’s particular circumstances with a bona fide intent to use the mark in U.S. commerce in association with beverage goods both as of the application filing date and during the Abandonment Period."

As a relatively small operation consisting of only the two Co-Founders based in the Netherlands, prior to the application filing date Respondent created globally accessible social media pages and began producing its goods using a production facility that was registered with the U.S. FDA. Following the application filing date and continuing through and after the registration date, Respondent, inter alia, sponsored U.S.-based athletes, engaged in various negotiations with U.S. distributors, suppliers, retailers, and marketing/business strategists, pitched its goods and provided many samples at various exhibitions, conferences, and festivals, actively pursued the proper labeling, registration, and licensing to sell its goods in the U.S., created a U.S. entity, and, ultimately, entered into contracts for U.S. marketing strategies, U.S. distribution, and sale of its goods bearing the mark in U.S. retailers. Furthermore, the activities following the Abandonment period in which Respondent began selling its goods through U.S. distributors and retailers support the declarations, testimony, and evidence regarding Respondent’s intent to commence use during the Abandonment Period.

The Board therefore concluded that Respondent "[c]arried its burden of proving that there are no genuine disputes of material fact that it had a bona fide intent to use its mark in U.S. commerce as of the application filing date and an intent to commence use in U.S. commerce during the three-year statutory period of nonuse." And so, it denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: The Board did not reach the issue of whether respondent's activities during the Abandonment Period constituted actual use in commerce; it was enough to show that there was no intent not to commence use.

Text Copyright John L. Welch 2024.

Five Amicus Briefs in Support of Chestek PLLC Petition for Writ of Certiorari

Five amicus briefs have been submitted in support of the petition for writ of certiorari filed by Chestek PLLC [TTABlogged here], seeking Supreme Court review of the CAFC's decision [TTABlogged here] upholding the TTAB's affirmance [TTABlogged here] of a refusal to register the mark CHESTEK LEGAL for "legal services," based on Applicant Chestek PLLC's failure to provide its "domicile address." Chestek PLLC v. Vidal, No. 223-1217 (filed May 13, 2024). Pdfs of the amicus briefs may be found at the links below.

Readers will recall that the rule in question, requiring an applicant to state its domicile address, was adopted in 2019 so that the USPTO could require applicants outside the United States to retain an attorney inside the U.S. in order to reduce the number of fraudulent applications emanating from abroad. The issue here is whether this domicile address rule is merely procedural, or whether it is substantive and therefore required a notice-and-comment period before adoption by the USPTO.

• Cato Institute and Ethics and Public Policy Center: here.

• Bar Association for the District of Columbia: here.

• International Game Developers Association and Codemiko Project, LLC: here

• IEEE-USA: here.

• New Civil Liberties Alliance: here

Read comments and post your comment here.

TTABlogger comment: This domicile address requirement is referred to by some as the "where do you sleep at night?" rule.

Text Copyright John L. Welch 2024.

Recommended Reading: Fromer and McKenna, "Amazon's Quiet Overhaul of the Trademark System"

Despite all the hoopla about the Supreme Court's rulings in Tam, Brunetti, and Elster, how much do those rulings affect the everyday practice of trademark law? One could argue that Amazon and its Brand Registry have had much more of an impact.As Professors Fromer and McKenna argue: " In combination, Amazon’s business model and Brand Registry have overhauled the American trademark system, and they have done so with very little public recognition of the consequences of Amazon’s business approach." Fromer, Jeanne C. and McKenna, Mark P., "Amazon's Quiet Overhaul of the Trademark System" (June 19, 2024), California Law Review, Volume 113, forthcoming 2025. Available here

Abstract

Amazon's dominance as a platform is widely documented. But one aspect of that dominance has not received sufficient attention-the Amazon Brand Registry's sweeping influence on firm behavior, particularly in relation to the formal trademark system. Amazon's Brand Registry serves as a shadow trademark system that dramatically affects businesses' incentives to seek legal registration of their marks. The result has been a dramatic increase in the number of applications to register, which has swamped the U.S. Patent and Trademark Office and created delays for all applicants, even those that previously would have registered their marks. And the increased value of federal registration has drawn in bad actors who fraudulently register marks that are in use by others on the Amazon platform and use those registrations to extort the true owners.

Amazon's policies also create incentives for businesses to adopt different kinds of marks. Specifically, businesses are more likely to claim descriptive or generic terms, advantageously in stylized form or with accompanying images, and to game the scope limitations that would ordinarily attend registration of those marks. And the same Amazon policies have given rise to the phenomenon of "nonsense marks"-strings of letters and numbers that are not recognizable as words or symbols. In the midst of these systemic changes, Amazon has consolidated its own branding practices, focusing on a few core brands and expanding its use of those marks across a wide range of products. In combination, Amazon's business model and Brand Registry have overhauled the American trademark system, and they have done so with very little public recognition of the consequences of Amazon's business approach.

Amazon's impact raises profound questions for trademark law, and for law more generally. There have been powerful players before, and other situations in which private dispute resolution procedures have affected parties' behavior. But Amazon's effect on the legal system is unprecedented in scale and scope. What does (and should) it mean that one private party can so significantly affect a legal system? Do we want the trademark system to have to continually adapt to Amazon's rules? If not, how can the law disable Amazon from having such a profound impact? In this regard, we explore the ways in which Amazon's practices might both help and hurt competition, be harmful to the trademark system, and reshape how we think about trademark law at its foundation.

Read comments and post your comment here.

Introductory text Copyright John L. Welch 2024.

On Remand, TTAB Again Dismisses I-FIT FLEX Opposition Due to Difference in Goods and Services

On May 3, 2024, the CAFC remanded to the Board its decision in iFit's opposition to registration the mark I-FIT FLEX for safety eyewear. iFit claimed likely confusion with its registered mark IFIT for exercise equipment and related services. The Board originally dismissed the opposition, finding that the first DuPont factor favored iFit, but deeming the second factor dispositive: "Opposer has failed to show that the parties’ goods and services are related, or that they travel in the same channels of trade to the same classes of consumers." The Board has again dismissed the opposition. Icon Health & Fitness, Inc. v ERB Industries, Inc., Opposition No. 91264855 (June 13, 2024) [not precedential] (Opinion by Judge Michael B. Adlin).

After Applicant ERB failed to appear in the appeal, the CAFC invited the USPTO Director to intervene. The Director did so and then filed a motion for remand. [TTABlogged here]:

The TTAB's decision does not provide complete factual findings as to whether the personal training services in Appellant's registrations and the goods in ERB's application are related under the second DuPont factor. Further, the TTAB did not have the benefit of this Court's recent decision in Naterra [TTABlogged here], which held that the TTAB erred in not weighing the similarity of the marks heavily in favor of a likelihood of confusion when it found the marks were "more similar than dissimilar."

On remand, the Board quickly took care of the "weigh heavily" issue: "Here, because we found the parties’ marks “highly similar,” we now clarify pursuant to Naterra that the similarities between IFIT and I FIT FLEX weigh heavily in favor of finding a likelihood of confusion."

As to the goods and services, the Board found "no persuasive evidence in the record that sources of fitness training services or exercise equipment also offer safety glasses, much less that consumers would perceive safety glasses, which they purchased separately from exercise equipment or fitness training services, as emanating from the same source."

The Board again concluded that the dissimilarity of the goods and services and their channels of trade and classes of consumers was dispositive. "despite: (1) the marks being highly similar, which weighs heavily against finding a likelihood of confusion; and (2) Opposer’s IFIT mark being commercially strong.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2024.

TTABlog Test: Three More Section 2(d) Refusals For Your Review

And the hits keep coming on Radio TTAB. Here are three recent Board decisions in Section 2(d) appeals. How do you think they came out? [Answers in first comment.]

In re Sellersfunding Corp., Serial No. 97231564 (June 17, 2024) [not precedential] (Opinion by Judge Peter W. Cataldo) [Section 2(d) refusal of the mark COMMERCEPAY for "Providing working capital financing to small businesses and small business owners; Accounts receivables financing; financing services" in view of the registered mark COMMERCEPAYMENTS for, inter alia, "banking services" and various financial services.]

In re Soil Basics Corporation, Serial No. 97183502 (June 18, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande) [Section 2(d) refusal to register SBC SOBEC CLUTCH for "Fertilizers for use in the field of commercial agriculture" in view of the registered mark CLUTCH for "Insecticides for use in agriculture."]

In re FWREF II Rochester, LLC, Serial No. 97343258 (June 18, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin) [Section 2(d) refusal of ROYAL PARK HOTEL for, inter alia, provision of facilities for conventions, special event planning services, recreational planning services, entertainment services, namely, wine tasting. and restaurant services [HOTEL disclaimed]. in view of the registered mark PARK ROYAL HOTELS & RESORTS & design (shown below) for "Travel club services; travel agency services, namely, arranging and booking air, ground and sea transportation, arranging and booking cruises; arranging of transportation for travel tours" and for "Restaurant services; Providing online reservations and bookings for temporary lodging and accommodations; Travel agency services, namely, making reservations and booking for temporary lodging"[HOTELS & RESORTS disclaimed].]

Read comments and post your comment here.

TTABlog comment: Predictions? See any WYHA?s? PS: the CLUTCH opinion is worth reading for its down-to-earth discussion of the DuPont factors.

Text Copyright John L. Welch 2024.

"ECOPRENEUR" Merely Descriptive of Environmental Awareness Software and Services, Says TTAB

The Board wasted little Time in upholding the USPTO's Section 2(e)(1) mere descriptiveness refusal of the proposed mark ECOPRENEUR for software and services relating to environmental awareness, including educational and research services. Applicant Time USA, Inc. feebly argued that the word "ecopreneur" does not appear in the Merriam-Webster dictionary, that it is merely suggestive because "understanding of the goods and services in connection with the Mark is not instantaneous,” but requires “several mental steps, and that the term is incongruous because it refers to a type of person, not to goods or services. In re Time USA, LLC, Serial No. 90493176 (June 17, 2024) [not precedential] (Opinion by Judge Michael B. Adlin).

Examining Attorney Salvatore Angotti submitted several dictionary definitions of "ecopreneur" (e.g., "an entrepreneur focused on creating and selling environmentally friendly products and services). Another reference stated "Ecopreneurs are entrepreneurs who have spotted opportunities in the environment to start businesses which supports sustainability." Various magazine article used the term in the same vein.

Based on this evidence, the Examining Attorney maintained that “ecopreneur” describes “the characteristics and intended audience of” Applicant’s goods and services," and specifically "people who are currently providing environmentally friendly businesses," "goods and services which can help providing environmentally friendly businesses," "goods and services which can help a person to become" an ecopreneur , and “people, businesses, and new business models" focused on environmental concerns. 

The Board had no doubt that ECOPRENEUR is merely descriptive "because it "immediately conveys knowledge of a quality, feature, function, or characteristic' of one or more of Applicant’s identified goods and services in each Class.: The Board observed that terms that describe the intended user or purchaser of a product or service are often found to be merely descriptive (e.g., SYSTEMS USER merely descriptive of a trade journal for systems users). Therefore, the Board found nothing incongruous about Applicant’s proposed mark.  

Furthermore, Applicant’s argument that the proposed mark is a “general term” and “so broad” that consumers would not know what the goods and services are misapprehends the applicable test. “The question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” 

And so, the Board affirmed the refusal. 

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TTABlogger comment: WYHA? PS: Mere descriptiveness as a "guessing game" is one of my top ten losing TTAB arguments.

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