Cleveland Guardians Attack CLEVELAND SPIDERS for Clothing: Summary Judgment Motion Fails on Fraud, Succeeds in Part on Nonuse

Major League Baseball's Cleveland Guardians trace their history back to a 19th Century team called the Cleveland Spiders. Applicant Adam Barrington's application to register the mark CLEVELAND SPIDERS and the two marks shown immediately below, for various clothing items, was met with an opposition by the Guardians, who alleged, inter alia, fraud, nonuse, and likelihood of confusion with the registered marks CLEVELAND and C for clothing. The Guardians then moved for summary judgment on the fraud and nonuse claims, with limited success. Cleveland Guardians Baseball Company, LLC v. Adam Barrington, Opposition No. 91277995 (June 21, 2024) [not precedential].

Fraud: Applicant Barrington conceded that he never used two of his marks on sweaters, headbands, shorts, or team uniforms, and further that he used the marks on jackets, coats, and pants only after the filing of the corresponding two applications. The Guardians asserted that "[t]here can be no dispute that, at a minimum, [Applicant] acted with reckless disregard for the truth of the statements being submitted."

Barrington asserted that "[i]t was the Trademark Examiner . . . who wrote the more specific list of clothing items that is now recited in the Application.” Acting pro se, he "was simply following the lead and instructions of the Examiner, and Applicant had absolutely no ‘intent to deceive’ when filing, as alleged by Opposer.”

The Board concluded that the Guardians failed to show the absence of a genuine dispute of material fact for trial. "[A]t a minimum, there exist genuine disputes of material fact as to Applicant’s subjective deceptive intent to commit fraud on the Office. Opposer has not introduced any direct evidence of Applicant’s intent to deceive the Office, and Applicant has essentially denied such intent in his submitted affidavit."

And so, the Board denied the summary judgment motion as to the fraud claim.

Nonuse: The Board observed that "an entire application is not deemed void ab initio if the applicant made use on any of the listed goods at the time the use-based application was filed. Barbara’s Bakery, Inc. v. Landesman, Opp. No. 9115782, 2007 TTAB LEXIS 9, at *19 (TTAB 2007). Instead, the application is amended to delete the goods on which the mark had not been used."

Based on Barrington's concessions, the Board found that the Guardians has satisfied their burden to show that there were no genuine disputes of material fact remaining for trial with regard to its nonuse claim, and so the Board granted its motion for partial summary judgment as to nonuse vis-a-vis headbands, shorts, team uniforms, jackets, coats, and pants. It ordered that those goods be deleted from the subject applications.

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TTABlogger comment: A rather feeble attempt at summary judgment, don't you think? Seems like MLB teams think that all they have to do is throw their gloves on the TTAB field and they'll win. How many people do you think would confuse CLEVELAND SPIDERS with CLEVELAND? BTW: the Guardians included a Section 2(a) false connection claim. How many people would connect the mark CLEVELAND SPIDERS with the CLEVELAND GUARDIANS? What do you think a survey would show?

Text Copyright John L. Welch 2024.

TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

So far this year, the Board has affirmed just over 90% of the Section 2(e)(1) mere descriptiveness refusals reviewed on appeal. Here are three more. How do you think they came out? [Results in first comment].

In re Stephen Van Eynde, Serial No. 90814404 (July 10, 2024) [not precedential] (Opinion by Judge Michael B. Adlin). [Mere descriptiveness refusal of BRKFST KRSPS for breakfast foods, including cereal.]

In re VOTEAPP, Inc., Serial No. 90774555 (July 10, 2024) [not precedential] (Opinion by Judge Martha B. Allard) [Refusal to register VOTEAPP for, inter alia, "Software as a service (SAAS) services featuring software in the field of voting for government, corporate, and consumer use, namely, software that enables users securely, transparently, quickly, and accurately to record ballots and track election results."]

In re Gabriel Sezanayev, Serial No. 90641384 (July 8, 2024) [not precedential] (Opinion by Judge Martha B. Allard) [Mere descriptiveness refusal of the proposed mark THE ORIGINAL PINEAPPLE for “Alcoholic beverages, namely, distilled spirits, cocktails from distilled spirits, liqueurs."]

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TTABlog comment: How did you do? See any WYHA?s

Text Copyright John L. Welch 2024.

TTABlog Test: Three Recent Section 2(d) Appeals For Your Consideration

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

In re SERO Innovation, LLC, Serial No. 97436057 and 97570427 (July 9, 2024) [not precedential] (Opinion by Judge Christen M. English) [Section 2(d) refusal of the mark SOL in standard character and design form for "sailboats," in view of the registered mark SOLGEAR for, inter alia, retail store services featuring outdoor sports equipment and river gear, including boats.

In re Smith’s Bakeries Inc., Serial No. 97312629 (July 8, 2024) [not precedential] (Opinion by Judge Cindy B. Greenbaum) [Section 2(d) refusal to register the mark shown below left, for baked goods [BAKERIES disclaimed], in view of the registered marks MRS. SMITH'S for "bakery products-namely, frozen pies" and SMITH'S (Stylized) for "Rolls; white bread; hot dog buns; hamburger buns; English muffins."]

International Foodstuffs Co. LLC, Serial No. 97444079 (July 2, 2024) [not precedential] (Opinion by Judge Martha B. Allard) [Section 2(d) refusal of BRONKO for "Chocolates and Chocolate Confectionery Products; Biscuits; cookies; Ice Cream; Pasta," in view of the registered mark BRONCO BERRY SAUCE for "Sauce" [BERRY SAUCE disclaimed].]

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TTABlog comment: Predictions? See any WYHA?s

Text Copyright John L. Welch 2024.

TTAB Says Chutter Still Good Law: Reckless Disregard in Obtaining or Maintaining a Registration is Enough for Fraud

In Chutter, Inc. v. Great Management Group, LLC, the Board ruled that reckless disregard for the truth is sufficient for a finding of fraud on the USPTO. [TTABlogged here]. The CAFC reversed that ruling because Section 14 of the Lanham Act, which lists the bases for cancellation of a registration, does not include fraud committed in connection with a Section 15 incontestability declaration (as opposed to fraud in obtaining a registration). [TTABlogged here]. Here, the Board now confirmed that "Chutter remains good law and binding precedent with respect to its analysis of fraud per se." Ruifei (Shenzhen) Smart Technology Co., Ltd. v. Shenzhen Chengyan Science and Technology Co., Ltd., Cancellation No. 92077931 (July 2, 2024) [not precedential] (Opinion by Judge Christopher C. Larkin).

Petitioner Ruifei claimed that Respondent Shenzhen Chengyan committed fraud on the USPTO in obtaining and maintaining its registration for the mark DISO for “earphones and headphones; portable media players, namely, MP3 players.” [The registration when issued covered a number of additional goods, but those additional items were deleted from the registration after a USPTO audit. See earlier decision TTABlogged here.] 

Unlike in Chutter, this case involved a false Section 8 Declaration of Use, not a Section 15 Declaration of Incontestability. It also involved a false Statement of Use submitted during prosecution of the underlying application. The Board observed that "[a] registration may be 'obtained fraudulently' within the meaning of Section 14(3) of the Act based on fraud committed in connection with its issuance or its maintenance. Bose at 1338-39 (citing Torres v. Cantine Torressella S.r.l., 808 F.2d 46, 48 (Fed. Cir. 1986)). [Emphasis supplied].

In Bose, the Federal Circuit left open the question of whether “a submission to the [US]PTO with reckless disregard of its truth or falsity satisfies the intent to deceive requirement.” Bose, 580 F.3d at 1246 n.2. The Board answered that question in Chutter, holding “as a matter of law that reckless disregard satisfies the requisite intent for fraud on the USPTO in trademark matters.”

The Board found that Respondent made false statements in its Statement of Use and in its Section 8 Declaration when it asserted that the subject mark was in use on all the goods listed in its application and its registration as issued. After a USPTO audit of the registration, Respondent deleted all the goods except those for which it could prove use: namely, "earphones and headphones; portable media players, namely, MP3 players." 

If Petitioner shows that Respondent committed fraud on the USPTO with respect to any of the goods identified in the ’173 Registration at the time of the fraud, the ’173 Registration must be cancelled as to the handful of goods remaining in the single-class registration at the time of trial even if Respondent did not commit fraud as to those goods per se.

Turning to the critical issue of intent, the Board observed that it was "unaware of any precedential decision post-Bose in which the Board found fraudulent intent in the absence of testimony from the relevant declarant as to his or her state of mind when making false statements to the USPTO." In Chutter and in the NATIONSTAR case, a finding of subjective intent to deceive was based on the deposition testimony of the person who made the false statement.

Here, there was no testimony taken of the persons who made the false statements. The Board refused to infer from the evidence of record that these statements were subjectively intended to deceive the USPTO or in reckless disregard of the truth of the statements.

Petitioner could have deposed CEO Wang and Ms. Jiang to develop direct evidence or better circumstantial evidence regarding the declarants’ respective understanding of the use of the DISO mark, the false statements in the Statement of Use and Section 8 Declaration, and other matters relevant to the declarants’ states of mind, but did not do so.

In sum, Petitioner failed to prove the essential element of fraud: it "failed to carry its heavy burden of showing by clear and convincing evidence that CEO Wang or attorney Jiang intentionally deceived the USPTO, or acted with reckless disregard of the truth, in connection with the preparation and filing of Respondent’s inaccurate Statement of Use and inaccurate Section 8 Declaration.

And so, the Board denied the petition for cancellation.

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TTABlogger comment: This opinion is worth a read. Seems to me it should be precedential for its confirmation of the viability of Chutter.

Text Copyright John L. Welch 2024.

Three Administrative Trademark Judges Added to TTAB Roster

Chief Judge Gerard F. Rogers has announced the appointment of three Administrative Trademark Judges to the TTAB (see below). By my count, this brings the number of ATJs at the Board to twenty-eight.

Robert Lavache has had a lengthy and successful career at the USPTO. In his former Senior Level (SL) position as the Trademark Legal and Examination Policy Specialist, he supervised the Legal Policy attorneys in Trademarks and provided legal policy advice to USPTO senior executives, the TMEP Editor, the Solicitor’s Office, the Office of Enrollment and Discipline and the Office of Policy and International Affairs. He has advised Trademarks leadership on developments in TTAB and Federal Circuit case law, and served as lead Legal Policy attorney and subject matter expert for the Notice of Proposed Rulemaking and Final Rule that implemented the Trademark Modernization Act; and he has served as supervisor of the Trademarks Special Task Force on Improper Activities, combatting fraudulent and improper trademark filings. Judge Lavache is a graduate of the University of Miami and Cornell Law School.

Mary Beth Myles joined the TTAB as an Interlocutory Attorney in July 2016. Judge Myles has been a frequent participant in TTAB outreach efforts and thereby has educated practitioners about the nuances of TTAB practice and procedure. Most recently, she has served as one of two attorneys on the TTAB’s six-member team overseeing the Final Pretrial Conference Pilot program that involves hands-on case management of more complex TTAB proceedings. She also has worked on the annual update of the TTAB Tips paper used as written material for CLE programs featuring TTAB speakers. Before joining the TTAB, Judge Myles spent eight years in IP and commercial litigation practices. She is a summa cum laude graduate of Bethany College and earned her law degree from Columbia University School of Law.

Lawrence Stanley has excelled during a more than 20-year career practicing IP law, which has included 15 years in an active law practice, teaching law, as well as public speaking and writing, followed by five years as an Interlocutory Attorney at the TTAB. A member of the USPTO Patent Bar, Judge Stanley is well-versed in all types of IP and in all aspects of IP litigation. As an attorney for the TTAB, he has been an active trainer and mentor of newer attorneys, thereby continuing to use skills he demonstrated when mentoring law firm associates and teaching law students. Judge Stanley is a graduate of Indiana University and a summa cum laude graduate of New England School of Law.

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Introductory text Copyright John L. Welch 2024.

Precedential No. 14: TTAB Affirms Two Expungement Decisions Based on Nonuse of SMARTLOCK for Evaporative Air Coolers

In this appeal from final refusals issued in two expungement proceedings, the Board affirmed the USPTO Director's decision to cancel registrations for the mark SMARTLOCK, in standard character and design form, for "Components for air conditioning and cooling systems, namely, evaporative air coolers." The Board found that Registrant Locus Link USA never used the mark in connection with "evaporative air coolers," and rejected Locus Link's interpretation of the identification of goods. In re Locus Link USA, Expungements Nos. 2022-100137E and 2022-100138E (July 1, 2024) [precedential] (Opinion by Judge Jennifer L. Elgin).

Expungement proceedings, created by the Trademark Modernization Act of 2020, are ex parte proceedings in which the USPTO may cancel a registration, in whole or in part, if the registered mark has never been used in commerce in connection with some or all of the goods/services identified in the registration. [In contrast, reexamination proceedings concern a registered mark that was not in use as of a specific date: the filing date of a use-based application, or the filing of an amendment to allege use, or before the deadline for filing a statement of use.]

Locus Links's CEO explained that its goods are "refrigerant fittings" for use with HVAC units, but not limited to evaporative air coolers. [See examples below].

Examining Attorney Laura E. Fionda maintained that the subject registrations cover only the specific goods following the term "namely" in the identification of goods: i.e., "evaporative air coolers." 

Locus Link agreed that it did not use the marks with finished goods, and so the Board found that "Registrant has not used the SMARTLOCK Mards in commerce in connection with fully manufactured 'evaporative air coolers.'" However, Locus Link insisted on a different interpretation of the identifications: that the identified goods are components for evaporative air coolers.

The Board observed that "use of the word 'namely' . . .  is acceptable only if the words that follow it define and fall within the scope of the introductory wording that precedes 'namely' (e.g., 'clothing, namely, shirts')" Furthermore, according to TMEP Section 1402.05(a):

When a mark is used to identify only a component or ingredient of a product, and not the entire product, the identification must (1) precisely set forth the common name of the component or ingredient, (2) indicate that the component or ingredient is sold as a component or ingredient of another finished product, and (3) set forth the common name of the finished product of which the identified component or ingredient forms a part . . . . The identification should leave no doubt that the mark refers only to the component or ingredient and not to the entire product.

The Board agreed with the Examining Attorney that "evaporative air coolers" modifies the otherwise indefinite wording "components for air conditioning systems." "In other words, the identification of goods, as set forth in the ’466 and ’467 Registrations, covers evaporative air coolers that are components of air cooling systems. It does not identify or encompass component parts for evaporative air coolers, such as Registrant’s connectors."

Finally, the Board rejected Locus Link's reliance on the Examining Attorney's acceptance of the specimen of use as validation of its interpretation of the identification of goods. As the Board has often pointed out, it is not bound by prior decisions of Examining Attorneys.

Moreover, the acceptance of specimens by the Examining Attorney does not control the ultimate question of use. Cf. Century 21 Real Estate Corp. v. Century Life of Am., Opp. No. 91075090, 1989 TTAB LEXIS 6, at *3 (TTAB 1989) (“[T]he mere acceptance of specimens by the Examining Attorney does not mandate a finding by us that service mark usage was made.”).

The Board therefore affirmed the decisions to cancel the subject registrations.

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TTABlogger comment: Rather straightforward. Precedential?

Text Copyright John L. Welch 2024.

TTAB Posts July 2024 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled five (5) oral hearings for the month of July 2024. The hearings will be held virtually, except for the first one, which will be held 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.

July 9, 2024 - 11 AM (In person at the USPTO): Paradise Holdings, Inc. v. Neo Nyc inc., Cancellation No. 92078182 [Petition for cancellation of a registration for SEASPICE RESORT WEAR & Design (shown below) for "Bottoms as clothing for pants, shorts, skirts, mini skirts; Tops as clothing for shirts, dresses, pullovers, coverups, rompers" on the ground of likelihood of confusion with petitioner's common law rights to the mark SEASPICE for various clothing items.]

July 10, 2024 - 10 A PM: In re The AZEK Group LLC, Serial No. 97591142 [Section 2(d) refusal of STATEMENT RAIL for "Building products, namely, non-metal railings for decks, porches and stairs as well as non-metal railing accessories, namely, post caps, post sleeves and post skirts" [RAIL disclaimed] in view of the registered mark STATEMENT COLLECTION for, inter alia, non-metal building and construction materials, namely, cladding, trim, panels, planks and boards for exterior application [COLLECTION disclaimed].]

July 17, 2024 - 1 PM: In re H&H Retail Owner, LLC, Serial No. 90119643 [Section 2(d) refusal of OVATION HOLLYWOOD for "Hotel and restaurant services; Restaurant and bar services, including restaurant carryout services" [HOLLYWOOD disclaimed] in view of the registered mark ART OVATION HOTEL for "Hotel services, namely, provision of temporary accommodations, restaurant, bar, café, and cocktail lounge services, and hotel concierge services" [HOTEL disclaimed].]

July 17, 2024 - 1:30 PM: In re H&H Owner, LLC, Serial No. 90119814 [Section 2(d) refusal of OVATION for "Hotel and restaurant services; Hotel, restaurant and bar services; Restaurant and bar services, including restaurant carryout services" in view of the registered mark ART OVATION HOTEL for "Hotel services, namely, provision of temporary accommodations, restaurant, bar, café, and cocktail lounge services, and hotel concierge services" [HOTEL disclaimed].]

July 24, 2024 - 11 AM: Omaha Tree Service, Inc. v. David Steg, Cancellation No. 92079674 [Petition for cancellation of a registration for TREE SERVICES OF OMAHA for "Tree care services" on the grounds of geographical descriptiveness, genericness, and likelihood of confusion with the common law mark OMAHA TREE SERVICE for the same services.]

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TTABlog comment:  Any predictions? See any WYHA?s

Text Copyright John L. Welch 2024.

TTABlog Quarterly Index: April - June 2024

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. Please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at wolfgreenfield.com.

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, 2024 USPQ2d 1166 (TTAB 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.

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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.