Friday, September 13, 2019

Precedential No. 25: TTAB Grants Section 2(a) Cancellation Petition: SCHIEDMAYER for Pianos Falsely Suggests a Connection with Petitioner

The Board granted a petition for cancellation of a registration for the mark SCHIEDMAYER for "pianos, namely, upright pianos, grand pianos, and digital pianos," finding that the mark falsely suggests a connection with Petitioner in violation of Section 2(a). The Board rejected Respondents' laches defense, finding that although Petitioner's delay of nearly seven and one-half years before filing its petition for cancellation was unreasonable, Respondents failed to prove any material damage resulting from the delay. Schiedmayer Celesta GmbH v. Piano Factory Group, Inc. and Sweet 16 Musical Properties, Inc., 2019 USPQ2d 38409 (TTAB 2019) [precedential] (Opinion by Judge Michael B. Adlin).

Petitioner manufactures and sells a keyboard instrument known as a celesta. A celesta is similar to a piano, but rather than striking wires the celesta keys strike a metal plate to make sounds. Nonetheless, a celesta resembles a piano and is played as a piano would be played. Petitioner and its CEO, Ms. Schiedmayer, are connected to the original German Schiedmayer family and business known for offering keyboard instruments for some 200 years.

Respondents are Los Angeles piano dealers that retail, but do not manufacture, pianos. They added the SCHIEDMAYER name plate to "no-name" pianos (also known as "stencil pianos") from China, a practice not uncommon in the keyboard instrument field. Respondents sold about 29 SCHIEDMAYER brand pianos from 2007-2018.

Section 2(a): In order to prove its false connection claim under Section 2(a), Petitioner had to show that SCHIEDMAYER is "unmistakably associated with a particular personality or 'persona.'" Univ. of Notre Dame Du Lac v. J.C. Gourmet Food Imps. Co., Inc., 703 F.2d 1372, 217 USPQ 505, 509 (Fed. Cir. 1983).

To make this showing, Petitioner must establish that: (1) the mark is the same as, or a close approximation of, Petitioner’s previously used name or identity; (2) the mark would be recognized as such, in that it points uniquely and unmistakably to Petitioner; 3) Petitioner is not connected with the activities performed by Respondents under the mark; and 4) Petitioner’s name or identity is of sufficient fame or reputation that when Respondents use the mark in connection with their goods or services, a connection with Petitioner would be presumed. Id.; Bos. Athletic Ass’n, 117 USPQ2d at 1495; Bondarchuk, 82 USPQ2d at 1842; Hornby v. TJX Cos., Inc., 87 USPQ2d 1411, 1424 (TTAB 2008); Buffett v. Chi- Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985).

Because "celesta" merely describe Petitioner's primary product and GmbH is merely its German entity designation, "'Schiedmayer'" is Petitioner's name and identity." The record evidence, including encyclopedia entries, Internet search results, and media mentions, demonstrated that "Petitioner and its instruments are known to and by the public as 'Schiedmayer.'" Respondent's registration is for that same name.

The record evidence also demonstrated that SCHIEDMAYER points uniquely and unmistakably to Petitioner. Respondents' use of SCHIEDMAYER is "strong evidence that they seek to draw a connection between their goods and Petitioner, the prominent source of SCHIEDMAYER keyboard musical instruments in the United States." In fact, Petitioner is the only entity that SCHIEDMAYER could possibly identify. Respondents conceded that they are not connected to Petitioner in any way.

Finally, the evidence established that SCHIEDMAYER is famous in the United States in connection with keyboard musical instruments. The Board rejected Respondents' argument that, although Petitioner may have some level of fame for celestas and glockenspiels, that fame does not carry over to pianos. It noted that the difference between pianos and these keyboard instruments are "internal, mechanical, and perhaps not even noticeable or known by some consumers." In light of Respondents' use of SCHIEDMAYER, the Board "'may draw an inference that [Respondents] inten[d] to create a connection with' Petitioner, and that the public would make the false association. In re Peter S. Herrick, P.A., 91 USPQ2d at 1509 (citing In re N. Am. Free Trade Ass’n, 43 USPQ2d 1282, 1285 (TTAB 1997) (quoting Univ. of Notre Dame, 217 USPQ at 509))."

The Board found that Petitioner had satisfied all four elements of the Section 2(a) test, and that Respondents' mark falsely suggests a connection with Petitioner.

Laches: The defense of laches requires proof of (1) unreasonable delay in asserting one’s rights against another; and (2) material prejudice to the latter resulting from the delay. Lincoln Logs, 23 USPQ2d at 1703. "[L]aches begins to run from the time action could be taken against the acquisition by another of a set of rights to which objection is later made. In an opposition or cancellation proceeding the objection is to the rights which flow from registration of the mark." Nat’l Cable Television Ass’n v. Am. Cinema Editors, Inc., 937 F.2d 1572,
19 USPQ2d 1424 (Fed. Cir. 1991).

Here, the petition for cancellation was filed nearly seven and one-half years after the challenged registration issued: "fairly long, and in the absence of extenuating circumstances or an excuse, unreasonable." Petitioner provided no excuse for its delay, and so the Board found the period of delay unreasonable.

However, Respondents failed to prove material damage resulting from the delay. Their only evidence was a "general recollection" that Respondents sold at most 17 SCHIEDMAYER-labeled pianos between issuance of the registration and the filing of the cancellation petition.

Respondents’ claim of prejudice rings hollow where the only direct, marginal expense incurred in selling SCHIEDMAYER-labeled pianos is buying the SCHIEDMAYER labels from trophy or decal makers. Indeed, virtually all of the money Respondents spent to offer SCHIEDMAYER-labeled pianos related to acquisition of the no-name pianos themselves, which could just as easily be labeled something else.

In sum, Respondents failed to show "any meaningful economic or other damage" or any significant change of position resulting from Petitioner’s delay. Consequently, they failed to meet their burden of establishing that the petition is barred by laches.

The Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I love that Billy Joel tune, "Celesta Man."

Text Copyright John L. Welch 2019.

Thursday, September 12, 2019

ABA-IPL Trademark Day: September 18, 2019 at the USPTO

ABA-IPL Section and the U.S. Patent and Trademark Office (USPTO) will host the 7th Annual ABA-IPL Trademark Day on Wednesday, September 18, 2019 at the USPTO headquarters in Alexandria, Virginia. [Register here]. Some of the topics for new trademark practitioners include an introduction to TTAB practice and a review of best practice tips; topics for experienced practitioners include sessions on non-traditional marks and on how to make effective arguments at the TTAB. The afternoon session will feature a live TTAB Inter Partes or Ex Parte Hearing. CLE credit will be available for this one-day program, involving two tracks of programming: one track covering topics for new practitioners and the other covering topics for experienced practitioners. [More details in this flyer].

Speakers will include Commissioner for Trademarks Mary Boney Denison and Chief Administrative Trademark Judge Gerard F. Rogers, TTAB Judge Michael Adlin, and TTAB Interlocutory Attorneys Catherine Faint and Elizabeth Winter. A more detailed agenda may be found here

Last Call: AIPLA Trademark Roundtable in Boston: Sept. 17th

The American Intellectual Property Law Association (AIPLA) and Foley Hoag LLP are hosting a trademark roundtable discussion in Boston on September 17th, from 11:45 AM -2:00 PM, at the Foley Hoag offices. Details and registration information here. Registration fee is $20 and lunch will be served! How can you beat that?

The roundtable will feature USPTO officials Meryl Hershkowitz (Deputy Commissioner for Trademark Operations, United States Patent and Trademark Office) and Larry Stanley (Interlocutory Attorney, Trademark Trial and Appeal Board).

Topics will cover a range of USPTO trademark operations, procedures, and policies, including the recent and upcoming changes to representation of foreign applicants, specimen requirements, and other initiatives intended to secure the integrity of the trademark register.

The format will be an open roundtable discussion. Attendees may also submit questions/topic proposals in advance by contacting my friend and Foley Hoag partner Joshua Jarvis (see the link above).

Single Book Title Fails to Function as a Trademark, Says TTAB

The Board affirmed a refusal to register THE NEUROTIC PARENT’S GUIDE (in standard characters, with GUIDE disclaimed), finding that it fails to function as a trademark for "Publications, namely, books on the subjects of colleges and college admissions." Rejecting a recent non-precedential Board decision [TTABlogged here] indicating that a single book title is merely descriptive and therefore eligible for registration via Section 2(f), the Board stated: "The title of a single work is ... unregistrable even if an applicant submits proof of acquired distinctiveness." In re Rothman, Serial No. 85945757 (September 10, 2019) [not precedential] (Opinion by Judge David K. Heasley).

The TTAB has (almost always) followed the principle laid down by the CAFC in Herbko v. Kappa Books that the title of a single work is not registrable as a trademark. "The policy behind this is clear. Because a trademark can endure for as long as the trademark is used, at the point that copyright protection ends, others have the right to use the underlying work, they must also have the right to call it by its name."

Although the title of a single work is unregistrable, the name for a series of works is eligible for registration because it functions as a trademark: it indicates that each work in the series comes from the same source. Examples are THE MAGIC SCHOOL BUS, ENCYCLOPEDIA BROWN, HARDY BOYS ADVENTURES, and NANCY DREW.

Applicant Judith Rothman argued that her book and her blog, The Neurotic Parent, constitute a series of works and therefore the proposed mark is registrable. Examining Attorney Amy E. Thomas maintained that, to be a series, the works must be in the same medium. The Board disagreed: "[t]he issue is not whether the creative works appear in the same medium; it is whether they would tend to be associated with a single source in the mind of the relevant public."

The problem here "lies with the titles and the contents of the blog and book." (emphasis by the Board). The mark THE MAGIC SCHOOL BUS was followed by additional words on each different work: for example, THE MAGIC SCHOOL BUS above the phrase AT THE WATERWORKS in smaller type. Thus the words THE MAGIC SCHOOL BUS created a separate impression from the complete title.

Here, Applicant Rothman is not seeking to register the common characteristic in the titles. She seeks to register the title of the book THE NEUROTIC PARENT'S GUIDE.

The book title, as shown in Applicant’s specimen of use, does not prominently display the words THE NEUROTIC PARENT in a way that would make a commercial impression separate and apart from THE NEUROTIC PARENT’S GUIDE. That is the opposite of the holding in the THE MAGIC SCHOOL BUS case.

With regard to contents, the Board noted that in the SCHOOL BUS series, each book varied in content: e.g., a trip to a cloud or to the center of the earth. "Those variations in content are important in establishing a series. If the content were the same, albeit in different formats, the work would be considered a single creative work, not a series."

As to Rothman's book and blog, she contended that although both concerned colleges and college admissions, the book includes some blog posts but also additional, unpublished creative content. However, she failed to provide evidence to support that contention, and so the Board was unable to find that the book and blog constitute a series."

Conclusion: "While it is possible for titles of creative works in different media to form a series, the evidence of record in this case does not show that the applied-for mark is the title of the claimed series, or that the content of the creative works differs sufficiently to create a series."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: What's next for Ms. Rothman? File a new application for "a series of works ..." and submit more evidence? Could she add evidence in an appeal by way of civil action?

Text Copyright John L. Welch 2019.

Wednesday, September 11, 2019

TTAB Affirms Rejection of Specimens That Do Not Associate the Mark with the Goods

The Board affirmed a refusal to register the alleged mark SLEEP HYGIENE CYCLE on the ground that Applicant's specimens of use failed to show use of the mark with the identified goods: nutritional supplements. In re Physician's Seal, LLC, Serial No. 87169253 (September 6, 2019) [not precedential] (0pinion by Judge Thomas W. Wellington).

Examining Attorney Alicia Collins Edwards maintained that the term REMFRESH appears prominently on Applicant's website, not the proposed mark, but Applicant argued that when one scrolls down the page, the phrase "Sleep Hygiene Cycle" appears in the nature of a tagline. Applicant also submitted a photograph of the insert to its packaging, but the Examining Attorney rejected that specimen as well, asserting that "the average consumer viewing the mark as shown on the [second] specimen would view it as information about goods sleep habits being provided ... rather than attributing thereto the special significance of a trademark to distinguish the applicant's goods from the goods of others." She also pointed out that product inserts are generally not acceptable as trademarks.

The Board found the "key issue" to be not the format of the specimens, but the the manner in which SLEEP HYGIENE CYCLE is used on the specimens. The Board agreed with the Examining Attorney that consumers "will not directly associate the proposed mark with the involved goods in a manner that would indicate the source of the goods."

As to the product insert, the phrase appears in the middle of the "Frequently Asked Questions" portion, embedded in the response to "What is the best way to support my sleep." According to the Board, [t]his is far from the prominent use needed to clearly associate the proposed mark with the identified goods. More importantly, the proposed mark only points to a suggested program for getting better sleep, not the underlying goods."

As to the first specimen, Applicant pointed to In re Dell,Inc., 71 USPQ2d 1725 (TTAB 2004), where the mark QUIETCASE was not the primary mark displayed on the webpage specimen. The Board pointed out, however, that the mark QUIETCASE was clearly identifying the "internal cases for computer hardware." Here, there is no such direct association with Applicant's supplements. "At most, consumers will perceive the proposed mark as being used in connection with the offering of advice for obtaining better sleep which is given in conjunction with Applicant's REMfresh-brand products."

Ultimately, the first and second specimens do not demonstrate use of the mark on or in connection with the goods in commerce because they do not directly associate the mark with the goods. Because the requirement to submit an acceptable specimen showing use of the mark in commerce has not been met, registration must be refused under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051 and 1127.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment:  WYHA?

Text Copyright John L. Welch 2019.

Tuesday, September 10, 2019

TTAB Sustains Section 2(e)(1) Opposition, Finding "IR DEFENSE" Merely Descriptive of Protective Beauty Serums

In this Section 2(e)(1) opposition, the Board agreed with Opposer Christie Brinkley Skincare that Applicant Alumier's alleged mark IR DEFENSE is merely descriptive of "beauty serums that provide protection against infrared radiation" [IR disclaimed]. Alumier pointed to Opposer Brinkley's own application for the same mark for cosmetics that provide IR protection, where Brinkley feebly argued that IR DEFENSE is not merely descriptive. The Board brushed aside that argument. Christie Brinkley Skincare, LLC v. Alumier Europe Ltd., Opposition No. 91229847 (September 6, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

Dictionary definitions, a thesaurus entry, an Internet article, and Alumier's own identification of goods left the Board with no doubt that IR DEFENSE is merely descriptive of Alumier's product.

Opposer Brinkley, in its own application to register IR DEFENSE, argued that the term is not merely descriptive for its sun-protective cosmetics because its goods "cannot immediately be identified simply by viewing the subject mark." [LOL - ed.]. The Board pointed out that that is not the correct test for mere descriptiveness.

Indeed, "[t]he 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." DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, 64 USPQ2d at 1316-17).

Here, consumers who know what Alumier's goods are will immediately understand that the proposed mark directly describes their stated purpose: to defend a user's skin against IR radiation. The Board observed that the term should remain available for others to describe their competing products and services.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Brinkley also owns applications for RECAPTURE DAY + IR DEFENSE and RECAPTURE 360 + IR DEFENSE, in both of which IR DEFENSE is disclaimed. Those applications were blocked by Alumier's application for IR DEFENSE.

Text Copyright John L. Welch 2019.

Monday, September 09, 2019

TTABlog Test: How Did These Three Recent Section 2(d) Appeals Come Out?

Here are three very recent TTAB decisions in Section 2(d) appeals, decided on the same day. I'm not giving any hints, so you're on your own. How do you think these appeals came out? [Answer in first comment].

In re Smith & Wesson Corp., Serial No. 87390227 (September 4, 2019) [not precedential] (Opinion by Judge Albert Zervas). [Section 2(d) refusal of M&P SHIELD for knives, can openers, hatchets, and machetes, in view of the registered mark SHIELD for "knives"].

In re EP Family, Corp., Serial Nos. 87561113 and 87561116 (September 4, 2019) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of the mark CHA4TEA in standard character and stylized form (below left) for "Instant tea; Tea," in view of the registered mark CHA FOR TEA and design (below right) for "Food preparation services; preparation of food and beverages; provision of food and drink in restaurants; restaurant services, including sit-down service of food and take-out restaurant services; restaurant services, namely, providing of food and beverages for consumption on and off the premises; serving of food and drink/beverage" [CHA and FOR TEA disclaimed].

In re Monsieur Touton Selection Ltd., Serial No. 87874805 (September 4, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo). [Section 2(d) refusal of the mark PACIFIC VIEW VINEYARDS for wine [VINEYARDS disclaimed], in view of the registered mark PACIFIC VISTA for wine].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2019.

Friday, September 06, 2019

TTABlog Test: Is "ISABEL MARANT" Confusable with "MARANT" for Perfumes and Cosmetics?

The USPTO refused to register the mark ISABEL MARANT for perfumes and cosmetics, on the ground of likelihood of confusion with the registered mark MARANT for the same goods. Applicant argued that ISLABEL MARANT is the name of a famous designer while the cited mark MARANT "is an acronym for the owner's name and not a surname." Moreover, Applicant owns three registrations for the mark ISABEL MARANT for goods including eyeglasses, jewelry, clothing, and bags. How do you think this came out? In re IM Production, Serial No. 79206371 (September 4, 2019) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

Applicant did not dispute the relatedness of the goods but argued that they travel in different channels of trade, since Applicant markets its goods in its own outlets and at high-end retailers, whereas registrant sells its products through its website. The Board was unmoved, since there are no such limitations in the application or cited registration. Because the goods are in-part legally identical, the Board must presume that those goods travel in the same trade channels to the same classes of consumers. Furthermore, the products are not limited as to price point or quality, and so the Board must consider even modestly priced goods. These factors weighed heavily in favor of affirmance of the refusal.

Moreover, there is nothing in the nature of the identified products to suggest that the purchasers are particularly sophisticated or careful. The standard of care that the Board must consider is that of the least sophisticated potential purchaser. See Stone Lion, 110 USPQ2d at 1163.

Turning to the marks, Applicant contended that they differ in appearance and sound, and that they create different commercial impressions because ISABEL MARANT is the name of a famous designer, whereas Registrant's mark MARANT "is an acronym for the owner's name and not a surname." The Board, however, agreed with Examining Attorney Louis Kolodner that the marks are similar overall "because the applied-for mark appears to be the full name version of the registered mark."

The Board found the marks to be "very similar" in appearance, sound, connotation, and commercial impression.

Here, the given name “Isabel” in Applicant’s mark modifies the surname “Marant,” in effect identifying a specific individual with the surname “Marant,” and thereby emphasizing the “Marant” portion of Applicant’s mark. Because the marks share the surname “Marant,” which is the sole element in the cited mark and a distinct element in Applicant’s mark, consumers likely would believe that the two marks refer to the same person.

The fact that Isabel Marant is a famous designer is "to Applicant's detriment, as it weighs in favor of a likelihood of confusion. The fame of either a cited mark or an applied-for mark makes it "more likely that purchasers will remember the famous mark and think of it when encountering similar goods sold under a similar mark." (quoting In re, 116 USPQ2d 1406, 1412, n.7 (TTAB 2015), aff'd, 866 F.3d 1315 (Fed. Cir. 2017)).

The Board brushed aside Applicant family-of-marks argument, since that doctrine is not available in an ex parte proceeding. Likewise. Applicant's assertion that perfumes and cosmetics are within its natural zone of expansion met the same fate. This doctrine has limited applicability in ex parte cases and is usually limited to the issue of priority in inter partes proceedings. In ex parte cases, the Board considers this concept through a "traditional relatedness of goods and services approach." Here, the goods at issue overlap and Applicant's prior registrations do not compel a different result.

Finally, Applicant argued that it should be allowed to use and register "its personal name." But, the Board observed, it may do so only if it would not likely cause confusion as to source.

The Board concluded that confusion is likely and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2019.

Thursday, September 05, 2019

TTAB Finds "LINGO BUS" for Language Education Communication Services Confusable with "LINGO" for Telecommunication Services

Applicant Beijing dialed a wrong number in this appeal from the USPTO's refusal to register the mark LINGO BUS for "Providing access to databases; Providing internet chatrooms; Providing on-line forums for transmission of messages among computer users; Radio communications; all the aforesaid services related to language education." The Office deemed the mark confusingly similar to the registered mark LINGO for telecommunication services. Beijing argued that the services are different because its messaging and communications services are all related to language education while registrant's are not so related, and further that the word BUS in its mark "completely changes the commercial impression of the mark." The Board disagreed. In re Beijing Da Mi Technology Co., Ltd., Serial No. 87526203 (August 29, 2019) [not precedential] (Opinion by Judge Thomas W. Wellington).

The Services: Examining Attorney Collier L. Johnson II pointed out that Registrant's recited telecommunication services are unrestricted and thus are broad enough to encompass services related to language education. Third-party registrations and website pages demonstrated that the radio communication services of Beijing are offered by third parties under the same mark as Registrant's telecommunication services. "To be clear, the services in the application are not 'language education' services. Rather Applicant's amendment merely limit[ed] the area or field of its communication services."

[W]e agree with the Examining Attorney’s observation that Registrant’s services [are] unrestricted and users of its services may thus be involved in language education as well. The third-party registration evidence submitted by the Examining Attorney, as well as the Verizon website printouts, also help show that consumers may be accustomed to entities providing both telecommunications services, like Registrant, as well as services like those described in the application, including access to internet chatrooms, online databases, as well as providing radio communications.

The Board therefore found that the involved services are related for Section 2(d) purposes.

The Marks: The marks are visually and orally similar because they both begin with the word LINGO. Applicant Beijing urged that "the addition of BUS completely changes the commercial impression of the marks" because "it connotes a public transportation vehicle." It argued that in the context of language-focused messaging services, "LINGO BUS connotes a bus full of passengers teaching each other new languages."

The Board, however, was unpersuaded that the marks have significantly different meanings. "Applicant's services are primarily communication services related to language education services and, as such, the term LINGO is suggestive of the ability for consumers of these services to communicate with each other."

The Board found that LINGO BUS is more similar to the mark LINGO than dissimilar. They are "very similar in appearance and sound and they share the same suggestive meaning." The addition of the term BUS is a difference, but it is outweighed by the similarities.

Conclusion: The Board affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: What do you think? Is LINGO BUS distinguishable from LINGO in the context of Applicant Beijing's services?

Text Copyright John L. Welch 2019.

Wednesday, September 04, 2019

"UHJ" Confusable with "UNIVERSAL HOUSE OF JUSTICE" for Religious Services, Says TTAB

The Board's march through the du Pont factors left Applicant without a prayer of avoiding a conclusion of likelihood of confusion between Applicant's mark UHJ and Opposer's mark UNIVERSAL HOUSE OF JUSTICE, both for religious services. The National Spiritual Assembly of the Baha’is of the United States v. Second International Baha’i Council, Opposition No. 91173793 (August 22, 2019) [not precedential] (Opinion by Judge Karen Kuhlke).

Seat of the Universal House of Justice, Haifa, Israel

Opposer is the sole "national representative of the Baha'i Administrative Order" in the United States. The Universal House of Justice is the head of the Baha'i and is composed of nine members elected by the National Spiritual Assemblies of the Baha'is around the world. Applicant and its founder have never been affiliated with Opposer.

The Board found that, not only did the services of the parties overlap, but the publications and pamphlets (covered by Opposer's pleaded registration) are also related to Applicant's "evangelical and ministerial services." Moreover, the channels of trade and classes of consumers overlap.

One factor pointed in Applicant's favor: its services "inherently indicate some level of care in the ultimate user or adopter of such services."

As to the strength of Opposer's mark, the Board noted that for likelihood of confusion purposes, it must look to the relevant consumers of the goods and services (people interested in the Baha'i faith), not the general public [unlike fame for dilution purposes - ed.]. The Board found the mark THE UNIVERSAL HOUSE OF JUSTICE to be famous for both publications and religious services, and to be entitled to a broad scope of protection. There was no evidence of third-party use of Opposer's Mark.

Turning to a comparison of the marks, the Board found that relevant consumers will refer to Opposer's goods and services as UHJ because they will shorten the longer mark. Opposer's testimony and an expert survey confirmed that consumers assume a connection between the mark UHJ and Opposer. The record also included Applicant's "deemed admissions" (it failed to respond to admission requests) that UHJ is synonymous with THE UNIVERSAL HOUSE OF JUSTICE and that Applicant intended people to associate UHJ with UNIVERSAL HOUSE OF JUSTICE.

The Board found that the identity in meaning between the two marks outweighed the differences in sound and appearance, and so this du Pont weighed in favor of Opposer.

Opposer submitted evidence of actual confusion, but the Board found the incidents "attenuated and vague." As to Applicant's intent, Opposer pointed to a statement at Applicant's website that it is "The Official Website of the Universal House of Justice," and to its depiction of the "Shrine of Bab." The Board concluded that Applicant believes it is the proper representative of the UNIVERSAL HOUSE OF JUSTICE, but it was not clear that Applicant intended to confuse consumers into believing that it was Opposer "rather than to present itself as the correct representative of the UNIVERSAL HOUSE OF JUSTICE."

Balancing the relevant factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment:  Move along. Not that much to see here.

Text Copyright John L. Welch 2019.

Tuesday, September 03, 2019

TTABlog Test: Is "HYDRAPORE" for Breathable Waterproof Fabric Confusable with "HYDRO PORE" for Clothing?

The USPTO refused registration of the mark HYDRAPORE for "breathable waterproof fabric sold as an integral component" of various clothing items, including jackets and caps, finding a likelihood of confusion with the registered mark HYDRO PORE for "clothing, namely, tops, bottoms, jackets, headwear, and footwear." Applicant Strike Brands argued that the cited mark merely identifies the source of the clothing, not the source of the fabric, and further that HYDRO PORE is commercially weak since the word HYDRO is included in numerous third-party registered marks for clothing. How do you think this came out? In re Striker Brands LLC, Serial No. 87552915 (August 23, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Goods: The Board noted that the subject application encompasses fabric for general clothing items, and therefore "Applicant’s fabric may be sold as components of Registrant’s goods." Examining Attorney Andrew Leaser submitted twenty use-based, third-party registrations for marks identifying, inter alia, fabric sold as a component of clothing as well as particular items of clothing: e.g., CASHMERLON, DURALOCK, and TAC DRY. Although these registrations do not alone prove that the goods are related, since there was no proof that the marks are in use or that the public is aware of them, they "may have some probative value to the extent they may serve to suggest that the goods are of a kind that emanate from a single source." The Board found that "the totality of the dictionary and third-party registration evidence demonstrates that consumers would readily expect that fabrics such as breathable waterproof fabric and clothing could emanate from the same sources." [Not sure what dictionary definitions have to do with it - ed.].

Striker contended that the cited mark "is intended to enable consumers to readily identify the source of the breathable waterproof fabric, which may be used in the construction of a variety of brands of clothing items bearing their own mark to further indicate the source of the clothing item. Registrant’s goods, by contrast, merely indicate the source of the clothing item, and not the source of the fabric or material." The Board was not impressed: "The evidence of record clearly establishes that fabrics and items of clothing made of such fabric may emanate from common sources."

Channels of Trade: The Examining Attorney provided Internet evidence that six third parties - Eddie Bauer, Helly Hanson, Dick’s Sporting Goods, Marmot, REI and Patagonia - advertise clothing and the waterproof and weatherproof components from which the clothing is made (although some under different marks). Thus Striker's argument that "[w]here the fabric is directed to manufacturers of clothing and the clothing is sold to retailers, there may not be a likelihood of confusion" was belied by the evidence.

The Marks: Based upon the definitions of record, the Board found that HYDRO PORE "suggests a membrane with minute openings to permit water to pass through," and the mark therefore "appears to suggest a function or feature of the clothing items identified thereby." Striker pointed to 33 third-party registered marks beginning with the term "HYDRO” for various types of apparel or fabric, which confirmed the Board's conclusion that the cited mark is suggestive and therefore entitled to a narrower scope of protection than an inherently distinctive mark.

Striker maintained that  the differences between HYDRO and HYDRA "significantly changes how the marks are perceived." The Board did not agree, noting that the definition of HYDR as water or liquid and concluding that consumers "may view both marks as connoting minute spaces in a membrane allowing water or liquid to pass through."

We find as a result that Applicant’s HYDRAPORE mark is nearly identical to the HYDRO PORE mark in the cited registration in appearance and sound. To the extent consumers may ascribe somewhat different meanings to the marks based upon differences in the definitions of HYDRA and HYDRO, such potential differences are not sufficient to create dissimilar commercial impressions between the marks, particularly given that consumers may also view the marks as having the same meaning.

The Board found the marks more similar dissimilar.

Conclusion: "[C]onsumers familiar with Registrant’s goods offered under its mark would be likely to believe, upon encountering Applicant’s mark, that the goods originated with or are associated with or sponsored by the same entity."

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2019.

Friday, August 30, 2019

TTAB Posts September 2019 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled five (V) oral hearings for the month of September 2019. Four of the hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The fifth (September 18th) will be held in the Auditorium. Briefs and other papers for these cases may be found at TTABVUE via the links provided.

September 4, 2019 - 11 AM: In re Kahiki Foods, Inc., Serial No. 87648828 [Refusal to register the mark BOWL & STIX (in standard character form) for "Oriental and Pacific rim cuisine prepared foods ...," under Trademark Act Sections 1 and 45 on the ground that the specimen of use (below) does not show the mark depicted in the drawing, i.e., the drawing is not a substantially exact representation of the mark as shown on the specimen].

September 11, 2019 - 2 PM: Costa Farms LLC, Serial No. 87674168 [Section 2(d) refusal of GROW WITH US for "Live flowers and living plants," in view of the identical mark registered for "Distributorship services in the field of wholesale horticulture supplies and accessories"].

September 12, 2019 - 11 AM: In re Omniome, Inc., Serial No. 87661190 [Section 2(e)(1) mere descriptiveness refusal of SEQUENCING BY BINDING for "reagents for analysis of biological analytes; research laboratory analyzers for analysis of biological analytes for non-medical purposes devices for analysis of biological analytes for medical purposes; analysis of biological analytes; development of new technology for others for analysis of biological analyte"].


September 25, 2019 - 11 AM: Disney Enterprises, Inc. v. United Trademark Holdings, LLC, Oppositions Nos. 91221648 and 91224985 [Section 2(d) opposition to registration of TEEN TINKER BELL and TEEN TINK & Design for dolls, in view of the registered marks TINKERBELL and TINK for a variety of goods, including dolls, doll accessories, doll clothes, and doll playsets].

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TTABlog note: Any predictions? See any WYHA?s?

Text Copyright John L. Welch 2019.