Thursday, June 08, 2023

Parody at the TTAB: Does the Supreme Court's "Bad Spaniels" Ruling Change the Game?

You may have heard that the Supreme Court issued its decision in the "Bad Spaniels" case yesterday [pdf here], vacating the Ninth Circuit's decision that, inter alia, had immunized VPI from trademark infringement under Rogers v. Grimaldi. The Court ruled that, since VPI was (concededly) using its comedic design as a source indicator, Grimaldi did not apply. Therefore, the Ninth Circuit was wrong in reversing the district court's finding of likelihood of confusion.

However, the Court also said that the comedic nature of the dog toy should be taken into account in the likelihood-of-confusion analysis:

Yet to succeed, the parody must also create contrasts, so that its message of ridicule or pointed humor comes clear. And once that is done (if that is done), a parody is not often likely to create confusion. Self-deprecation is one thing; self-mockery far less ordinary. So although VIP’s effort to ridicule Jack Daniel’s does not justify use of the Rogers test, it may make a difference in the standard trademark analysis.

Consider, now, the TTAB's treatment of the parody defense. The Board has long held that parody is a viable defense in a likelihood of confusion analysis only if the involved marks are otherwise not found confusingly similar. See Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1592 (TTAB 2008) (“In finding that the marks are not similar, we have given no weight to applicant's argument that his mark is a parody. Parody is not a defense if the marks would otherwise be considered confusingly similar.”); Nike, Inc. v. Maher, 100 U.S.P.Q.2d 1018, 1023 (TTAB 2011) (“[P]arody is not a defense if the marks would otherwise be considered confusingly similar.”)

So now what will the Board do? Will it continue to give "no weight" to parody? Will it follow the Court's lead? Does it have to?

Read comments and post your comment here.

Text Copyright John L. Welch 2023.

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

So far this year, by my count, the TTAB has affirmed 31 of 33 Section 2(e)(1) mere descriptiveness (or disclaimer) refusals. How do you think the three appeals summarized below came out? Results will be found in the first comment.

In re Sensory Path Inc., Serial No. 88667617 (May 31, 2023) [not precedential] (Opinion by Judge David K. Heasley) [Requirement to disclaim the words THE SENSORY PATH in the mark shown below, for "interactive decals with permanent adhesive backing, designed for use by children to improve cognition and other skills."]

In re
, Serial No. 90239860 (June 2, 2023) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon). [Section 2(e)(1) mere descriptiveness refusal of SKIPOSTERS.COM, in slightly stylized form, for "On-line retail store services featuring photographs and artwork" and "Printing; Printing services."]

In re Radical Marketing LLC, Serial No. 90381196 (June 6, 2023) [not precedential] (Opinion by Thomas W. Wellington). [Mere descriptiveness refusal of the proposed certification mark shown below, for "foods, beverages, and food products" (IRRITABLE BOWEL SYNDROME disclaimed).]

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHAs here?

Text Copyright John L. Welch 2023.

Wednesday, June 07, 2023

TTAB Grants ARTNCRAFT Cancellation Petition: Respondent's Amazon Take-Down Notice Excused Petitioner's Subsequent Nonuse

The Board granted a petition to cancel a registration for the mark ARTNCRAFT for, inter alia, ceramic knobs and pulls, finding confusion likely with petitioner's identical, prior-used common law mark for overlapping goods. Respondent claimed that petitioner abandoned his mark through nonuse for a period of three years, beginning in 2019. But the Board found the nonuse excusable because it resulted from respondent's Amazon take-down notice. Vardhman Sancheti v. Bhupendra Tekwani DBA Artncraft, Cancellation No. 92077340 (June 5, 2023) [not precedential] (Opinion by Judge Cynthia C. Lynch).

In April 2019, respondent sent a Take-Down Notice to stating that petitioner's use of the mark ARTNCRAFT was an infringement of its registered trademark rights, and demanding removal of petitioner's goods from Amazon complied, and the petitioner has been barred from posting his goods on Amazon. 

The Board sided with petitioner:

Even though Petitioner discontinued his use in the U.S. in 2019, where discontinued use is “occasioned by” enforcement activity such as Respondent’s takedown, the discontinuation of use does not reflect an “intent to abandon the mark,” particularly where the aggrieved party engages in “vigorous efforts” to defend itself, as Petitioner has done here by instituting this cancellation proceeding. *** Petitioner’s testimony and Respondent’s admission regarding Respondent’s enforcement activity against Petitioner suggest that Petitioner was justified in postponing his use of the mark pending the outcome of this proceeding.

The Board concluded that petitioner’s use "has been sufficiently ongoing and consistent to satisfy his burden of proof of priority." From there it was a hop, skip, and jump to a finding of likelihood of confusion.

And so, the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Perhaps the respondent should have done some investigation before sending that take-down notice.

Text Copyright John L. Welch 2023.

Tuesday, June 06, 2023

TTABlog Test: Is EL BURRO BORRACHO Confusable WIth EL BURRO for Restaurant Services?

El Burro, Inc. petitioned to cancel a registration for the mark EL BURRO BORRACHO, claiming priority and likelihood of confusion with its registered mark EL BURRO, both for restaurant services. Well, the marks are awfully close and the services identical, so this looks like a no-brainer, right? What do you think? El Burro, Inc. v. Knuckle Sandwich LLC, Cancellation No. 92075933 (May 26, 2023) [not precedential] (Opinion by Judge Frances S. Wolfson).

The filing date of the application that matured into Petitioner’s EL BURRO registration (February 11, 2011) preceded the September 9, 2014 filing date of the application that matured into Respondent’s registration as well as Respondent’s first use date, and so Petitioner had priority of use.

Although the services of the parties are identical, Respondent argued that the trade channels are different because each party would  offer its services only within its own establishment, and never “side-by-side.” The Board pointed out, however, that "[w]hether services would be offered “side-by-side” is not the test, but even if it were, there is no evidence to support this contention. Because Petitioner and Respondent offer identical services, we must presume that the services move through the same channels of trade and are sold to the same classes of purchasers."

Regarding classes of consumers, the evidence showed that each party’s restaurant is intended to appeal to the same classes of purchasers, namely members of the general public who enjoy Mexican-style cuisine. 

As to the marks, the Board concluded that, even though EL BURRO is the lead element in Respondent’s mark, it is not the dominant portion of the mark. "Consumers are as likely to recall the alliteration of BURRO BORRACHO and may equally remember these two words as they would the term EL BURRO."

As to connotation, the word “burracho” means “drunken” in Spanish. Petitioner’s mark connotes an ordinary donkey, while Respondent’s mark connotes "a whimsical, that is, a drunken donkey." "Nonetheless, both marks bring to mind the idea of this specific pack animal. The marks are thus similar in meaning. And because BORRACHO simply serves to modify the type of BURRO involved, the marks create a similar overall commercial impression." And so, the first DuPont factor favored the petitioner.

Turning to the strength of petitioner's mark, respondent contended that EL BURRO is “intrinsically weak” because it identifies a Mexican-style restaurant, and commercially weak because of the existence of eleven third-party vendors who use EL BURRO, alone or with other words, for Mexican-style restaurants: EL BURRO TACO SHOP, EL BURRO PICANTE, EL BURRO, EL BURRO VELOZ, EL BURRO LOCO (four times), EL BURRO POLLO, EL BURRO MEXICAN GRILL, and LOCO BURRO.

The Board found EL BURRO to be inherently strong. There was no evidence that the term suggests a Mexican restaurant, or any cuisine from a Spanish-speaking country. As to commercial strength, however, that was a different story.

After careful consideration of the evidence, we find that Petitioner has not shown its mark to be commercially strong. To the contrary, we find under DuPont factor six that Respondent has shown Petitioner’s EL BURRO mark to be commercially on the weaker side of the spectrum. We find the prevalence of these similar marks weighs strongly against a finding of likelihood of confusion.

The Board deemed the sixth DuPont factor to be dispositive: "The sixth DuPont factor thus outweighs the other factors that favor likelihood of confusion. In other words, the mark EL BURRO BURRACO [sic!] does not so resemble EL BURRO that when used in association with restaurant services within such a crowded field confusion, mistake, or deception is likely."

And so the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Is the evidence of eleven third-party uses sufficient when there was apparently no proof of the extent of use of the third-party marks?

Text Copyright John L. Welch 2023.

Monday, June 05, 2023

TTAB Sustains Opposition to "PET C COLA" for Animal Supplements, Finding Likely Diluton of . . . . Guess What Famous Mark?

This quixotic attempt to register PET C COLA, in standard form, as a trademark for animal supplements was swept aside by Opposer PepsiCo, owner of the "exceedingly famous" mark PEPSI-COLA for soft drinks. Applicant's "test mode"  website indicated that it would be marketing itself as “the pet drink specialist” and it asserted that "Pet C Cola is the nutritional and super tasty drink for dogs and cats." "Applicant’s adoption of a color, font, and stylization with virtually identical elements to those used by Opposer for its PEPSI-COLA script mark is 'eyebrow raising,' ... and is strong evidence of Applicant’s intent to copy and create an association with Opposer’s mark." And so, the Board sustained Pepsico's Section 43(c) dilution-by-blurring claim.  PepsiCo, Inc. v. Pet C Cola Corporation, Opposition No. 91255530 (June 1, 2023) [not precedential] (Opinion by Judge Robert H. Coggins).
Opposer has continuously advertised and sold beverages under the mark PEPSI-COLA since 1898. It has frequently partnered with celebrities to market its PEPSI-COLA brand beverages, and has advertised during the Super Bowl, Academy Awards, Golden Globes, and Grammy Awards. Its Facebook page has more than 37 million followers, its Twitter account more than 3 million followers, and its Instagram page almost 2 million followers. Between the years 2017-2021 the PEPSI-COLA brand has fluctuated between being the 22nd and 28th best global brand. In sum, the evidence demonstrated that Opposer "has been an incredibly successfully business, and has for decades been a part of mainstream popular culture in the United States."

In order to prevail on its claim of dilution by blurring, Opposer had to prove that:

  • (1) Opposer owns a famous mark that is distinctive,
  • (2) Applicant is using a mark in commerce that allegedly dilutes Opposer’s famous mark,
  • (3) Applicant’s use of its mark began after Opposer’s mark became famous, and
  • (4) Applicant’s use of its mark is likely to cause dilution by blurring.

As to the Factor 1, there was no question that the PEPSI-COLA mark is distinctive. In determining whether the PEPSI-COLA mark is "famous" for dilution purposes, the Board found the evidence regarding advertising and publicity to be "overwhelming" and there was no doubt that PEPSI-COLA "is among the most widely recognized brands in the United States." In short, "by any and all measures" the mark is "exceedingly famous."

As to Factor 2, the fact that applicant has not used its mark in commerce "is of no moment." "[A]n application based on intent to use a mark in commerce under Trademark Act Section 1(b) satisfie[s] the commerce requirement." And as to Factor 3, there was no question that the  PEPSI-COLA mark became famous long before Applicant’s constructive use date of August 14, 2019.

As to Factor 4, the Board looked to Section 43(c)(2)(B)(i-vi) in considering:

  • (i) the degree of similarity between Applicant’s mark and Opposer’s famous mark;
  • (ii) the degree of inherent or acquired distinctiveness of Opposer’s mark;
  • (iii) the extent to which Opposer’s is engaging in substantially exclusive use of its mark;
  • (iv) the degree of recognition of Opposer’s mark;
  • (v) whether Applicant’s intended to create an association with Opposer’s PEPSI-COLA mark; and
  • (vi) any actual association between Applicant’s mark and Opposer’s mark.

Comparing the involved marks, the Board found that "the appearance of the marks overall is sufficiently similar that Applicant’s mark will 'trigger consumers to conjure up’ Opposer's famous mark. That is, consumers encountering Applicant's mark will immediately be reminded of Opposer’s famous [PEPSI-COLA] mark and associate the two."

The Board also found the PEPSI-COLA mark to be highly distinctive, and its use by Opposer "substantially exclusive." In fact, there was no evidence of "any third-party use of marks that would reduce the degree of Opposer's exclusivity of use." Moreover, the PEPSI-COLA mark is "extremely famous and widely recognized by the consumer public," a factor weighing heavily in Opposer's favor.


As to applicant's intent, there was no direct evidence that applicant intended to associate its mark with the PEPSI-COLA mark, but its intent may be "inferred from its slavish copying of Opposer's PEPSI-COLA script mark." "Applicant’s adoption of a color, font, and stylization with virtually identical elements to those used by Opposer for its PEPSI-COLA script mark is 'eyebrow raising,'"

There are countless ways in which Applicant could display its mark on its website, including other ways to wrap the mark around a dog to incorporate the dog within the lettering,65 but its choice to display the mark in a script that immediately conjures up the famous PEPSI-COLA script mark supports an inference that Applicant’s desire was to have its mark stand out because of its striking similarity to Opposer’s famous mark. Equally notable is the striking similarity in the sound of Applicant’s mark to Opposer’s PEPSI-COLA mark when pronounced.

The Board therefore found that applicant was attempting to trade on the goodwill and fame of the PEPSI-COLA script mark.

Finally, since the opposed application was filed on an intent-to-use basis and applicant stated that it has not yet offered for sale any products bearing the mark. "there has been a limited opportunity for the public to make any actual association between the parties’ . . . marks." The Board deemed this factor neutral.

And so, the Board sustained Opposer's dilution-by-blurring claim.

Read comments and post your comment here.

TTABlogger comment: The take-away: don't dilute Pepsi.

Text Copyright John L. Welch 2023.

Friday, June 02, 2023

Free Webinar June 7th: Strand and Welch "Trademark Year in Review" (New York CLE Credit)

On June 7th from 12:00 - 1:00PM, Wolf Greenfield will host a webinar entitled “Trademark Year in Review: Key Developments in the Courts and at the TTAB.” John Strand and John Welch will provide a summary and analysis of the past year’s most important trademark cases in the courts and at the TTAB. CLE Credit is available in New York. Register here.

Mr. Strand will focus on recent and upcoming court rulings, while yours truly will discuss .... wait for it .... TTAB developments!

Read comments and post your comment here.

TTABlog Test: Is RAILROAD RUM for Distilled Spirits Confusable with RAILROAD RED for Wine?

The USPTO refused to register the proposed mark RAILROAD RUM for "distilled spirits" (RUM disclaimed), finding confusion likely with the registered mark RAILROAD RED for "wines" (RED disclaimed). The Board found the marks to be confusingly similar, since they both are dominated by the word RAILROAD, the first and only distinctive word in each mark. But what about the goods? How do you think this came out? In re Wild West Spirits, LLC, Serial No. 90540784 (May 30, 2023) [not precedential] (Opinion by Judge Christen M. English).

Examining Attorney Olivia Lee submitted third-party website evidence showing that "some third-parties use the same mark to identify distilled spirits and wine." Applicant Wild West feebly criticized this evidence as “extrinsic," but the Board pointed out that evidence of third-party use of a single mark to identify both an applicant’s and registrant’s goods is commonly used to establish relatedness.

Wild West further asserted that the Examining Attorney introduced “a handful of cherry-picked” and “obscure” examples of relatedness, but the Board found that the evidence provided "a reasonable predicate supporting the Examining Attorney’s position on relatedness and shift[s] the burden to Applicant to rebut the evidence with competent evidence of its own."

Wild West also attacked the evidence as failing to demonstrate that “rye whiskey” and “red wine” are “regularly or predominantly sold” under the same marks. According to Wild West, "it is common knowledge that the vast majority of wine brands do not also sell rye whiskey or distilled spirits -- and vice versa, well known rye whiskey brands do not also sell red wines." However, as the Board pointed out, the application at issue is not limited to rye whiskey.

Lastly, Wild West asserted that the identified goods themselves are different, but the Board was not impressed. The issue at hand “is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of these goods"

Because neither the application nor the cited registration includes limitations as to trade channels or classes of purchasers, the Board must presume "that the involved goods move in all the normal channels of trade for such goods – liquor stores, bars, restaurants and online retailers – and flow to the same classes of purchasers. Moreover, the same third-party Internet evidence referenced above demonstrates that wine and distilled spirits may be encountered by the same classes of consumers under the same marks in at least one common trade channel – the websites and physical locations of wineries and distilleries, i.e., producers and sellers of wine and distilled spirits."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA? Note that there is no per se rule that all alcoholic beverages are related. It just turns out that way.

Text Copyright John L. Welch 2023.

Thursday, June 01, 2023

Precedential No. 17: TTAB Finds Hotel Shape Not Inherently Distinctive and Lacking in Acquired Distinctiveness

The Board upheld the USPTO's refusals to register the two proposed marks shown below, for "hotel services; provision of conference, exhibition, and meeting facilities," finding that the building designs are not inherently distinctive and lack secondary meaning. The proposed marks comprise the three-dimensional configuration of the front and back of a hotel building. Unlike in the Seminole Tribe decision, wherein the Board deemed a hotel building configuration to be neither product design nor trade dress packaging but rather "tertium quid," here the Board panel found the designs to be "akin to the packaging of what is being rendered and sold inside, namely, hotel services." In re Palacio Del Rio, Inc., 2023 USPQ2d 630 (TTAB 2023) [precedential] (Opinion by Judge Jonathan Hudis).

Inherent Distinctiveness: The Supreme Court's decision in Two Pesos, involving the decor of a Mexican restaurant, established that "adornments in a building structure" may be protectable as a service mark." In Wal-Mart, the Court described that restaurant décor "as either product packaging - which . . . normally is taken by the consumer to indicate origin - or else some tertium quid that is akin to product packaging." Following these teachings, the Board considered whether the proposed marks are inherently distinctive for applicant's services "under the paradigm established for 'product packaging.'" See In re Frankish Enters. Ltd., 113 USPQ2d 1964, 1973 (TTAB 2015) (finding design of monster truck to be analogous to product packaging for exhibition services).

To determine whether the proposed marks are inherently distinctive, the Board applied the Seabrook factors:

  1. Whether the proposed marks constitute a “common” basic shape or design;
  2. Whether the proposed marks are unique or unusual in the field in which they are used;
  3. Whether the proposed marks are a mere refinement of commonly adopted and well-known forms of ornamentation for the particular class of services viewed by the public as a dress or ornamentation for the services; and
  4. Whether the proposed marks are capable of creating a commercial impression distinct from the accompanying words.

To show that applicant's proposed marks each constitute a "common" basic shape or design, Examining Attorney Erin Falk submitted evidence of a dozen or so hotel buildings having common design elements similar to the proposed marks. In response, applicant submitted declarations from four customers of the hotel (the Hilton Palacio Del Rio in San Antonio, Texas). The Board, however, found the declarations to be of "minimal persuasiveness" since they were few in number and identical ("cookie cutter") in many ways, and they included legal conclusions that were the sole province of the Board. In short, applicant failed to overcome the USPTO's evidence.

Applicant's specimens of use and its advertising evidence depicted the side of the building that also displays the hotel name. There was no evidence that applicant promotes the shape of the building separate from the hotel name, or that customers rely upon that shape to identify and distinguish applicant's services.

In sum, Applicant’s articles and customer declaration evidence do not overcome the Examining Attorney’s evidence that Applicant’s proposed marks constitute the “common” basic design elements of hotel buildings façades (e.g., grid-like hotel rooms, smooth column, outwardly extending crown, and arches); they are not unique or unusual in the hotel field, and they are mere refinements of commonly-adopted and well-known forms of ornamentation for hotel buildings that would be viewed by the public “as a dress or ornamentation” for Applicant’s hotel services.

Acquired Distinctiveness:
In view of the Board's findings under the Seabrook factors, applicant's burden to prove acquired distinctiveness was "commensurately high." The Board turned to the CAFC's Converse factors to assess applicant's Section 2(f) evidence.
  1. association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys);
  2. the length, degree, and exclusivity of use; 
  3. the amount and manner of advertising; 
  4. the amount of sales and number of customers; 
  5. intentional copying; and 
  6. unsolicited media coverage of the services in connection with which the trade dress is used.

Applicant did not submit survey results or any other direct evidence of consumer association of the proposed marks with applicant (Factor 1), nor did it provide any evidence of copying by third parties (Factor 5). Applicant's declaration evidence established that the designs have been in use since 1968, but only at the single, San Antonio location (Factor 2).

As to Factor 3, applicant's advertising did not encourage consumers to view the proposed marks as source indicators. "Given the ways in which Applicant advertises its services, affording little recognition to the design elements of the hotel building itself as shown in the application drawings and described in the Applications, the proposed marks are unlikely to create a commercial impression distinct from the HILTON PALACIO DEL RIO hotel name."

With regard to Factor 4, applicant's sales numbers lacked context as to market share or their significance in the industry. Finally, as to Factor 6, unsolicited media coverage discussed the innovative techniques employed in constructing the hotel rather than directing consumers to look for the elements of the hotel design as source indicators for applicant's services.

And so, the Board concluded that the applicant had failed to establish acquired distinctiveness, and therefore the refusals to register the proposed marks were affirmed.

Read comments and post your comment here.

TTABlogger comment: Perhaps applicant should have used a guitar shape.

Text Copyright John L. Welch 2023.

Wednesday, May 31, 2023

TTAB Posts June 2023 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled nine (9) oral hearings for the month of June 2023. All of the hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

June 14, 2023 - 11 AM:
Mi-Box Moving and Mobile Storage Inc. v. Mybox Inc., Opposition No. 91265197 [Opposition to registration of MYBOX for "Modular metallic buildings; transportable metal buildings; prefabricated metal buildings; relocatable metal buildings, "Custom manufacture of modular components of modular buildings, transportable buildings, prefabricated buildings, and relocatable buildings," and "Rental of portable buildings, namely, portable modular buildings, transportable buildings, prefabricated buildings, and relocatable buildings," on the ground of likelihood of confusion with the registered mark MI-BOX for "Moving and storage services, namely, rental, storage, delivery and pick up of portable storage units."]

June 15, 2023 - 1 PM: Robyn Roche-Paull v. Mom2Mom Global, DBA, Breastfeeding in Combat Boots, Cancellation No. 92071516 [Petition to cancel a registration for the mark BREASTFEEDING IN COMBAT BOOTS for "Providing breastfeeding information," on the grounds of nonownership, fraud, and likelihood of confusion with the identical mark allegedly used first by the petitioner for the same services.]

June 21, 2023 - 11 AM: Perfectionately Yours, LLC v. Charles F. Coleman, Jr. , Opposition No. 91241854 and Cancellation No. 92075733 [Opposition to registration of BLACK BRILLIANCE (Stylized), and petition to cancel a registration for BLACK BRILLIANCE in standard form, for clothing and for various educational and entertainment services, on the grounds of nonownership, nonuse, fraud, and and likelihood of confusion with the identical mark allegedly used first by the plaintiff for the same goods and related services.]


June 21, 2023 - 2 PM: JetBlue Airways Corporation v. Airblue Limited, Opposition No. 91239609 [Opposition to registration of AIRBLUE for credit card services and air transportation services, on the grounds of likelihood of confusion with, and/or likely dilution of, the mark JETBLUE, and various BLUE-formative marks, for identical services.]

June 27, 2023 - 11 AM: LogMeIn, Inc. and GoTo Technologies USA, Inc. v. Telus Corporation and GoCo Technology Limited Partnership , Opposition No. 91265230 [Opposition to registration of GOCO for various unified communication services in view of the registered mark GOTO for overlapping and/or related services.] 

June 27, 2023 - 2 PM: Billy Stott v. Split Decision Music, LLC, Opposition No. 91249613 [Opposition to registration of SPLIT DECISION for "Entertainment services in the nature of live visual and audio performances, namely, musical rock band" on the grounds of nonownership, fraud, and and likelihood of confusion with the identical mark allegedly used first by the opposer for the same services.]

June 28, 2023 - 11 AM: In re Qx World Kft., Serial No. 79280195 [Section 2(d) refusal to register the mark OMNIS for downloadable computer software for data collection for use of medical, veterinary and cosmetic devices in International Class 9, medical imaging and rehabilitative devices, including biofeedback devices, in International Class 10, and retail and wholesale store and new product commercialization services featuring computer software and devices for medical, veterinary and cosmetic use in International Class 35, in view of the registered mark DAKO OMNIS for, inter alia, recorded and downloadable software for identifying and diagnosing immunodeficiency diseases and cancer and processing digital images in International Class 9, medical diagnostic instruments and apparatuses in International Class 10, and medical research and installation, integration, maintenance, and updating of software for use in medical analysis, diagnosis and research in International Class 42, .and OMNIS HEALTH for, inter alia, blood glucose meters in International Class 10, retail store services featuring the sale of diabetic supplies and devices in International Class 35, and providing information in the field of health, healthcare and wellness in International Class 44.]

June 28, 2023 - 1 PM: Servi-Tek, Inc. v. Jimmy's Contractor Services, Inc. , Cancellation No. 92071703 [Petition for cancellation of a registration for the mark SERV-TECH for "Roofing services; Roofing consultation; Roofing contracting; Roofing installation; Roofing repair; Roofing services, namely, waterproofing" on the ground of likelihood of confusion with the common law mark SERVI-TEC for "janitorial services; building maintenance services."  


June 29, 2023 - 1 PM: Rockport IP Holdings, LLC, The Rockport Company, LLC v. Joshua George Savoy, Oppositions Nos. 91252440 and 91255819 [Opposition to registration of the mark shown below left for various clothing items, including footwear, in view of the registered mark shown below center, and the common law mark shown below right, for footwear., and "counter-opposition" to registration of the third mark.]

Read comments and post your comment here.

TTABlog comment: See anything interesting? Any WYHO?s

Text Copyright John L. Welch 2023.

Tuesday, May 30, 2023

Precedential No. 16: TTAB Finds Guitar Shape for Hotel to be Inherently Distinctive

The Board reversed a refusal to register "trade dress consisting of a three-dimensional building in the shape of a guitar" (shown below), for "casinos" and "hotel, restaurant and bar services," finding the proposed mark to be inherently distinctive. The examining attorney had accepted the Seminole Tribe's alternative claim of acquired distinctiveness under Section 2(f), but the Tribe chose to pursue its claim that the building shape is an inherently distinctive source indicator. In re Seminole Tribe of Florida, 2023 U.S.P.Q.2d 631 (TTAB 2023) [precedential] (Opinion by Judge Melanye K. Johnson).

In Two Pesos, the Supreme Court held that proof of secondary meaning is not required for trade dress that is inherently distinctive, and it upheld the finding that the décor of Taco Cabana's Mexican restaurants was inherently distinctive. In Wal-Mart, the Court distinguished "product design" trade dress from "product packaging," ruling that the former is protectable "only upon a showing of secondary meaning." The Court ruled that the clothing designs at issue constituted product design. As to the trade dress in Two Pesos, the Court observed:
Two Pesos is inapposite to our holding here because the trade dress at issue [in Two Pesos], the décor of a restaurant, seems to us not to constitute product design. It was either product packaging — which, as we have discussed, normally is taken by the consumer to indicate origin — or else some tertium quid that is akin to product packaging and has no bearing on the present case. (Emphasis by the Board).

The Board then turned to decisions that analyzed the inherent distinctiveness of trade dress used with a variety of services, not just building designs. In Chippendales, the CAFC affirmed the Board's finding that the "Cuffs & Collar" trade dress for erotic dancers was not inherently distinctive because it was "inspired by the ubiquitous Playboy bunny suit," but it also ruled that the Board erred in suggesting that any costume in the adult entertainment industry would lack inherent distinctiveness.

Under Chippendales it is appropriate for the Board to consider "whether a consumer would immediately rely on Applicant's Guitar Design to differentiate Applicant's Services from the services of others who offer casinos or hotel, restaurant and bar services." This "set the stage" for the Board's finding in Frankish that the "fanciful, prehistoric animal design" of the cab of a monster truck is "akin to product packaging for an applicant's monster truck services, and therefore, inherently distinctive." The Board found the design to be "unique" and "unusual" in the monster truck field, and the evidence scant, at best, that the design is "a 'mere refinement' of anything, let alone a -commonly-adopted' and 'well-known form' in the monster truck field."

The Board found the proposed mark be "tertium quid" akin to product packaging. Focusing on the uniqueness of the Tribe's building design in the relevant industry, it concluded that applicant’s building design is inherently distinctive for the Tribe's services.

The Board's conclusion was "further supported" by the Seabrook test for inherent distinctiveness: "whether the trade dress is a “common” basic shape or design; whether it is unique or unusual in a particular field; or whether it is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods."

We find that Applicant’s Mark is not a common design; rather, it is unique, and not a mere refinement of a commonly-adopted and well-known form of ornamentation for Applicant’s Services. Given the uniqueness of Applicant’s three-dimensional Guitar Design trade dress as applied to Applicant’s Services, we find Applicant’s Mark is of a type that consumers would immediately rely on to differentiate Applicant’s Services from casinos or hotel, restaurant, and bar services offered by others, and that it therefore constitutes inherently distinctive trade dress.

Read comments and post your comment here.

TTABlogger comment: Since the examining attorney had already accepted the Tribe's Section 2(f) claim, why did it bother to pursue the claim of inherent distinctiveness? Steve Feingold explained why he did that in the Chippendales matter: "Why You Should Think Twice Before Accepting a 2(f) Registration"

P.S. Hat tip to FOB Miriam Richter.

Text Copyright John L. Welch 2023.

Friday, May 26, 2023

TTABlog Test: How Did These Three Appeals from Section 2(d) Refusals Turn Out?

By my count, the TTAB has affirmed about 83% of the Section 2(d) refusals it has reviewed on appeal this year. How do you think these latest three appeals came out? Results will be found in the first comment.

In re ZF Friedrichshafen AG
, Serial No. 79322731 (May 18, 2023) [not precedential] (Opinion by Judge Angela Lykos). [Refusal to register KING OF THE ROAD for "Batteries; rechargeable batteries; electric batteries; vehicle batteries; car batteries; batteries for electronic cigarettes; battery boxes; battery jars; battery chargers" and for "Lighting apparatus for vehicles; lights for vehicles; lights for automobiles; lighting installations for air vehicles; lamps; electric lamps; light bulbs; light bulbs for directional signals for vehicles; light diffusers; LED light bulbs; lighting apparatus and installations, namely, lighting apparatus for vehicles and lighting installations" in view of the identical mark registered for "mirrors for land vehicles."

In re Falicie E. Dirosier, Serial No. 90074262 (May 18, 2023) [not precedential] (Opinion by Judge Christopher Larkin) [Refusal to register the mark shown below, for "Bar soap," in view of the registered mark MOOD SWING for "hair styling preparations."]In re Nature Cravings Pet Treats LLC, Serial Nos. 90139331 (May 19, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo) [Refusal to register BARKING BUDDHA for "Consumable pet chews; Edible pet treats; Pet beverages; Pet food; Pet treats in the nature of bully stick" in view of the registered mark BUDDHA BISCUITS (in standard form) for "Edible organic pet treats for dogs" [BISCUITS disclaimed].

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHAs here?

Text Copyright John L. Welch 2023.

Thursday, May 25, 2023

TTAB Reverses Functionality Refusal of Rocking Chair Design But Finds Acquired Distinctiveness Lacking

The Board reversed a Section 2(e)(5) functionality refusal of a product configuration mark (shown below) comprising the side of a rocking chair (not including the high back and curved base). Applying the Morton-Norwich factors, and giving some weight to applicant's design patents, the Board concluded that the USPTO failed to make a prima facie case of functionality. However, Applicant JBL failed to prove that this design has acquired distinctiveness, and so registration was refused on the Principal Register, but the Board accepted JBL's alternative amendment to the Supplemental Register. In re JBL International, Inc., Serial No. 88941388 (May 22, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington).

There were no utility patents of record, nor any evidence showing that JBL touted any utilitarian advantages of this product design. Nor was there any evidence that JBL’s product design serves to minimize the cost or simplify the manufacture of its rocking chairs.

JBL pointed to its ownership of seven design patents for rocking chairs of the same or a very similar configuration. The Board noted that "[o]ur law recognizes that the existence of a design patent for the very design for which trademark protection is sought 'presumptively . . . indicates that the design is not de jure functional.'" And so, the design patents constituted evidence weighing against a finding of functionality, but the Board pointed out that they are not dispositive of the issue.

The examining attorney contended that evidence of third-party rocking chairs “shows that [applicant's design] is one of a few superior designs available." The Board was not impressed: "while the Examining Attorney points out that some of the third-party rocking chairs have 'an arm-rest connected to the chair’s back and front legs with an angled rear leg' or 'an armrest and front leg that meet at an approximate 90-degree angle,' there is no explanation how these design traits are 'superior' or how they are utilitarian because they are 'essential to the use or purpose' of the rocking chairs." Instead, the evidence showed that "there are several alternative functionally equivalent designs available to Applicant's competitors. Indeed, some of the third-parties' rocking chairs bear little resemblance in product design to Applicant's." [see example below]

And so, the Board found that the USPTO had failed to make a prima facie case of functionality.

Turning to the issue of acquired distinctiveness, the Board applied the Converse factors, with JBL relying on its length of use (since 2010), sales figures (very little meaningful evidence), and advertising and promotion (ditto). It did not offer any evidence of "look for" advertising, but pointed to its registered logo (below) depicting a rocking chair.The Board noted, however, that the logo does not feature the elements of the design at issue, nor was there any evidence regarding the extent of consumer exposure to this mark.

Finally, there was no direct evidence of consumer perception of the proposed mark, nor any evidence of copying or of unsolicited media attention.

And so, the Board concluded that JBL fell short of meeting its high burden to prove acquired distinctiveness for its product design. The Board did, however, accept JBL's amendment to the Supplemental Register, which amendment was made in the alternative during prosecution of the subject application.

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TTABlogger comment: In my view, the existence of a design patent should have no bearing on the issue of whether the proposed mark is functional in a trademark sense because the respective standards for functionality are different. See Sarah Burstein, Faux Amis in Design Law, 105 TMR 1455 (2015). [pdf here].

Text Copyright John L. Welch 2023.