Thursday, May 13, 2021

California Lawyers Association Webinar June 15:
"Trademark Cases To Remember From A Year To Forget"

The IP Section of the California Lawyers Association (f/k/a the California Bar Assn.) will host a webinar on June 15th from 1:00 PM to 2:30 PM (Pacific Standard Time), entitled "Trademark Cases To Remember From A Year To Forget." Martin B. "Marty" Schwimmer and Yours Truly will share the spotlight in what we hope to be an informative and entertaining presentation. CLE credit is available. Details and registration here.

The TTAB is where the rubber hits the road in terms of trademark registrability. Speakers shall peruse a formidable pile of failure-to-function cases that have made the trademark practitioner’s journey more problematical. The TTAB’s latest surname decision raised the bar to registration, and it decisions on Section 2(e)(5) functionality continue to trip up would-be registrants of product configurations. Speakers will address SCOTUS’ Lexmark decision on “standing,” and the TTAB’s consideration as to whether a plaintiff is “entitled to bring a cause of action.”

Turning to the contours of trademark enforceability, the speakers will discuss SCOTUS’ decision in the genericness case involving the mark BOOKING.COM and the Tiffany v. Costco lawsuit involving Costco’s use of the term “Tiffany Setting,” and will consider how functionality limits the protection of product configuration, including protection of Gorilla Glue blister packs, the POCKY-brand chocolate cookie sticks, and a rainbow of adhesives in a dental adhesive gun.

The speakers will review appellate cases targeting the RedBubble online marketplace and the issue of intermediate liability, parody and free speech, as it relates to the BAD SPANIELS dog toy case, and the recent Nike “Satan Shoes” dispute.

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

Wednesday, May 12, 2021

"INVENTORY IS EVIL" Fails to Funtion as a Trademark for Business Consulting Services, Says TTAB

Another proposed mark ran into the TTABrick wall known as the failure-to-function refusal. The Board affirmed a refusal to register the phrase INVENTORY IS EVIL as a service mark for "business consulting; business consulting, management, and planning services in the field of product distribution, operations management services, logistics, reverse logistics, supply chain and production systems, and distribution solutions." The evidence provided by Examining Attorney Robert N. Guliano "overwhelmingly establishes that the term INVENTORY IS EVIL is a common phrase that is widely used in business management and consulting throughout a variety of industries." In re Arthur Koch Management Consulting, LLC, Serial No. 88325642 (May 10, 2021) [not precedential] (Opinion by Judge Mark Lebow).

Matter that is widely used to convey ordinary or familiar concepts or sentiments, or similar informational messages that are in common use, would not be perceived as indicating source and is not registrable as a mark. See In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *1 (TTAB 2020) (PAST PRESENT FUTURE); Team Jesus, 2020 USPQ2d 11489 at, *7 (TEAM JESUS); Texas With Love, 2020 USPQ2d 11290, at *2 (TEXAS LOVE); see also D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (I ♥ DC). “The more commonly a phrased is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” In re Eagle Crest, Inc., 96 USPQ2d at 1229.

The Examining Attorney provided dictionary definitions of “inventory” and "evil" and printouts from numerous third-party websites, to support his argument that “[t]he expression INVENTORY IS EVIL is commonly used in the business supply chain and logistics industry as an adage or mantra and, in the context of business consulting, management, and planning services, informs consumers that the principle guiding those services is that having goods on hand causes harm.” 

The Board agreed with the Examining Attorney, finding that the evidence "overwhelmingly establishes that the term INVENTORY IS EVIL is a common phrase that is widely used in business management and consulting throughout a variety of industries, in news articles, and in academia, as an adage or mantra expressing the concept or sentiment that large inventories of goods can be extremely damaging to the economic well-being of companies in any industry for a variety of reasons, and that reducing inventory can save businesses and even a global crisis brought on by a recession or a pandemic."

Applicant argued that the cited articles that use the phrase "Inventory is evil" do not refer to the sale or promotion of business consulting services, but rather to a broad concept that is not intended to be a source indicator. The Board was unimpressed: "The fact that the plethora of evidence in this case shows widespread use and common use of the term INVENTORY IS EVIL as a well-known concept within the industry of business management and consulting, and not as a mark promoting goods or services, does not detract from its probative value; it enhances it."

While not used as a mark in the evidence, the term INVENTORY IS EVIL is routinely used by providers of business management and consulting services, or other services, in the course of explaining this well-known business management concept, either to agree or disagree with it, as shown by the evidence.

Applicant conceded that “[t]he concept behind Applicant’s INVENTORY IS EVIL mark stems from a quote by Tim Cook, the current CEO of Apple,” who was quoted widely in the Internet articles of record. The Board again agreed with the Examining Attorney: "the evidence of a prominent business leader’s adoption of a closely similar phrase as a business principle enhances the mark’s significance as a business mantra and reinforces the commonality of the phrase in the minds of business consulting, management, and planning consumers."

Applicant provided several examples of its use of the term INVENTORY IS EVIL on its website but none demonstrated that the phrase INVENTORY IS EVIL would be perceived as a source-indicator for business consultation services.

Consequently, the Board concluded that the term INVENTORY IS EVIL fails to function as a mark under Sections 1, 2, 3 and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2021.

Tuesday, May 11, 2021

TTABlog Test: Must "DANK" be Disclaimed in DANK TANK for Ale and Beer?

The USPTO refused to register the proposed mark DANK TANK for "Ale; Beer," without a disclaimer of the word "DANK." The Examining Attorney maintained that the term DANK "means or refers to ‘…sticky, juicy, very pungent and of a high level’ and ‘[v]ery hoppy, cloudy IPAs with high alcohol content and flavors with a very funky taste.’" Applicant Sweetwater Brewing argued that DANK TANKS is a unitary mark and a double entendre, and so disclaimer of DANK should not be required. How do you think this came out? In re Sweetwater Brewing Company, LLC., Serial No. 87772674 (May 3, 2020) [not precedential] (Opinion by Judge Linda A. Kuczma)

Examining Attorney Richard J. Struck relied on a Detroit Free Press article and on an Urban Dictionary entry for the definitions of "dank." Third-party websites showed use by multiple third parties of "dank" to describe beer and ale. For example, ". . . you see, cannabis and hops are relatives, and both get their flavors and aromas from compounds called terpenes. That’s why brewers like to describe super-hoppy IPAs the way that they might talk about marijuana: 'dank,' 'resinous,' 'sticky.'" ( 

Sweetwater feebly argued that but DANK TANK "requires imagination to determine what the goods actually will be, namely – such wording cannot be deemed merely descriptive and is, at most, suggestive of a beer or ale product that does not include cannabis." The Board pointed out, however, that descriptiveness is considered in the context of the goods, not in the abstract, and other meanings of the term "dank" in other contexts are irrelevant.

As to Sweetwater's argument that DARK TANK is a unitary mark, the Board observed that "[a] unitary mark has certain observable characteristics. Specifically, its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its own independent of the meaning of its constituent elements." In other words, "the whole [must be] something more than the sum of its parts."

However, in the absence of legal argument or evidence showing that its mark is unitary, we find that prospective purchasers seeing Applicant’s mark DANK TANK knowing that “dank” is descriptive of ale and beer, and “TANK” is defined as “1: a usually large receptacle for holding, transporting, or storing liquids (such as water or fuel)” would readily understand it to be comprised of the two separate terms “dank” and “tank.” While the two terms in Applicant’s proposed mark rhyme, the rhyming quality imparts no new or different meaning to “DANK TANK.”

As to the double entendre issue, again Sweetwater provided no legal argument or evidence, DANK, "retains its descriptive significance in relation to Applicant’s ale and beer. Therefore, “DANK” would be perceived by purchasers of Applicant’s ale and beer as signifying a quality, feature or characteristic of those goods resulting in no unitary meaning or double entendre imparted by DANK TANK."

And so the Board affirmed the disclaimer requirement.

Read comments and post your comment here.

TTABlogger comment: It seems that breweries are getting more and more desperate to find brand names. DANK TANK is not one that would attract me to purchase the product. 

Text Copyright John L. Welch 2021.

Monday, May 10, 2021

TTABlog Test: Which of These Three Section 2(d) Refusal Was/Were Reversed?

The TTAB recently decided the appeals from the three Section 2(d) likelihood of confusion refusals summarized below. At least one of the three refusals was reversed. How do you think they came out? [Answer will be found in the first comment.]

In re Mas Clarella SL, Application Serial No. 88079246 (May 6, 2021) [not precedential] (Opinion by Judge George C. Pologeorgis). [Section 2(d) refusal of NYMPHS OF CLARELLA in view of the registered mark THE NYMPH, both for wines. Applicant maintained that “nymph” is somewhat suggestive or even descriptive of wine because the term  has a strong association with Dionysus, the Greek god of wine, and therefore the term "OF CLARELLA" distinguishes the marks.]

In re ProBleu, Inc., Serial No. 88310811 (May 4, 2021) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) Refusal of PROBLEU for computer information security and computer network support services, in view of the registered mark BLUEPRO & Design for overlapping computer security services. Applicant argued that the transposition of the wording is significant because neither mark gives "any indication as to the goods and/or services they are selling or providing, and the ordering and appearance of the terms thus makes all the difference."]

In re Royal Realty Corp., Serial No. 88380382 (April 22, 2021) [not precedential] (Opinion by Judge Karen Kuhlke). [Section 2(d) refusal of LIVE ON POINT for "Real estate services, namely, leasing and management of buildings," in view of the registered mark ON POINT CAROLINAS REALTY for identical or related real estate services [CAROLINAS REALTY disclaimed]. Applicant argued that the real estate market is replete with uses of "on point," and further that its mark exhorts consumers to LIVE ON POINT, whereas the cited mark informs customers that registrant's services are directed to a specific geographic location.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2021.

Friday, May 07, 2021

TTABlog Test: Are These Two "Bull" Designs Confusingly Similar For Auto Parts?

Here's another Section 2(d) opposition involving dueling design marks, this time for overlapping and related auto parts and services. Applicant K2 refers to its mark (on the left) as "an abstract partial body view of a cattle like creature." Opposer Streetcar refers to its mark (on the right) as a "fanciful design of a bison." Confusable? You be the judge. StreetCar ORV, LLC d/b/a American Expedition Vehicles v. K2 Motor Corp., Opposition No. 91248742 (May 3, 2021) [not precedential] (Opinion by Judge David K. Heasley). 

Since the parties goods are in part identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board observed that side-by-side comparison is not the proper approach for comparing the marks. Nonetheless, "the relevant consumers—motorists seeking customized structural modifications for their vehicles—are likely to perceive the parties’ marks as more similar than dissimilar."

The bovine subfamily includes cattle and bison. Both designs depict bulls. Both bulls appear in a three-quarter perspective, their feet planted, their heads lowered beneath prominent humps, as if threatening to charge. Although one faces left and one faces right, that distinction would be little noted nor long remembered—as demonstrated by analogous cases[.]

The Board found that consumers "could easily perceive Applicant's design mark as a stylistically modified version of Opposer’s design mark."

The Board also found that Opposer Streetcar's marks are "somewhat commercially strong." Applicant K2 submitted dozens of third-party registrations for marks that included a bull or a bison figure, but withouy evidence regarding the extent of use of the marks they were entitled to little evidentiary weight. Furthermore, many of the marks were not that similar to Streetcars mark, and the identified goods were as close to Streetcar's goods as are Applicant K2's.

The Board noted that "the frequent, common adoption of bull or bison designs by third parties, as evinced by their registrations, serves to show that the designs are suggestive of the rugged, strong, characteristics or qualities of auto parts." However, "suggestive registered marks are entitled to protection against registration of confusingly similar marks—especially marks used on identical or legally identical goods."

Considering all the relevant DuPont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: A well-written ramble through the DuPont factors.

Text Copyright John L. Welch 2021.

Thursday, May 06, 2021

In a Six-Year TTAB Tussle, Monster Energy and Toronto Raptors Claw Their Way to a Dismissal of All Section 2(d) Claims and Counterclaims.

In a 71-page decision, including a 15-page appendix listing the involved registrations and applications, the Board dismissed Monster Energy's oppositions and the applicants' counterclaim alleging likelihood of confusion between various claw-containing design and logo marks for a variety of goods and services. Opposer Monster Energy alleged a likelihood of confusion between the applicants' four "claw" marks shown first below in view of its "M-Claw" mark shown second below. Applicants counter-claimed on the ground of likelihood of confusion between the M-Claw mark and a fifth claw mark (the "Prior Claw Mark") shown third below. Monster Energy Company v. Maple Leaf Sports & Entertainment Ltd. and NBA Properties, Inc., Opposition Nos. 91222422 (Parent), 91222445, 91226092 and 91228458 (May 3, 2021) [not precedential] (Opinion by Judge Jonathan Hudis).

Monster Energy's Section 2(d) Claims: The Board found Monster's M-Claw mark to be inherently strong. Applicants' third-party registration evidence, without any showing of the manner or extent of use, was insufficient to weaken that inherent strength. As to commercial strength, the applicants conceded that the M-Claw mark is famous, in the likelihood of confusion context, for energy drinks, but the Board agreed with the applicants that this fame did not extend to other markets. 

Comparing the M-Claw mark with the first four of applicants'marks, the Board found them to be distinguishable:

While we find Monster’s M-Claw Mark distinctive and famous for likelihood of confusion purposes, the significant differences in appearance, sound (if any), meaning and commercial impression between Monster’s mark and Maple Leaf’s and NBA’s involved marks precludes a finding of likelihood of confusion. Kellogg v. Pack’em, 21 USPQ2d at 1145. We therefore dismiss Monster’s likelihood of confusion claims. 

Dilution:  Monster Energy also claimed dilution by blurring, but its proofs fell short of meeting the high standard for dilution fame. The Board noted that "the extent of actual recognition of Monster’s M-Claw Mark appears limited to sports drinks." Moreover, because applicants' marks are distinguishable from the M-Claw mark, "none of the former conjure up the latter."

Applicant's Counterclaim: Applicants' counterclaim "appears not as a direct assertion that confusion between its Prior Claw Mark and Monster’s M-Claw Mark is likely, but rather as an odd contingent claim." They asserted that, if the other marks are confusable, they should win on the basis of their prior use. 

The Board noted that applicants had already won, but it considered the counterclaim anyway. It found the Prior Claw mark to be inherently distinctive, but there was no proof regarding commercial success.

As to the marks, the Board found that the applicants' "Prior Claw Mark is so different from Monster’s M-Claw Mark in appearance, sound (if any), meaning and overall commercial impression so as to preclude a finding of likelihood of confusion."

And so the Board dismissed the counterclaim.

Read comments and post your comment here.

TTABlogger comment: This proceeding began in June 2015.  I took nearly six years to reach the conclusions that were quite apparent at the outset: the marks are not confusingly similar!

Text Copyright John L. Welch 2021.

Wednesday, May 05, 2021

TTAB Finds DENVER MIX Generic for ..... Guess What?

Concluding that DENVER MIX "is the name of a key aspect of popcorn, specifically, the flavor of the popcorn," the Board affirmed a refusal to register the proposed mark on the ground of genericness. In the alternative, the Board found the term to be merely descriptive and lacking in acquired distinctiveness. In re Doc Popcorn, LLC, Serial No. 88151165 (April 29, 2021) [not precedential[ (Opinion by Judge Kuhlke)

Genericness: The Board found the genus of the goods to be "popcorn" and the relevant consumers to be the general public. 

Examining Attorney Mark Shiner maintained that "[i]n relation to popcorn, the evidence shows that the wording 'Denver' when used alone or together with 'mix' means the combination of white cheddar cheese popcorn and caramel popcorn." He submitted 25 examples of third-parties using the term DENVER MIX and 13 using the term DENVER alone "to refer to a key aspect of the popcorn, specifically the flavor mixture of caramel and white cheddar."

Applicant Doc Popcorn's specimen of use described DENVER MIX as a cheddar/caramel flavor: “Snowy white kernels of Triple White Cheddar slaloming down Rocky Mountains of Caramel Bliss, creating an incredible flavor sensation.”

The Board concluded that DENVER MIX is generic for popcorn.

Acquired Distinctiveness: Doc Popcorn claimed distinctiveness under Section 2(f), thereby conceding that DENVER MIX is merely descriptive of popcorn. Moreover, in light of the record evidence, the Board concluded that the proposed mark is highly descriptive. Therefore, applicant's burden of proof was "commensurately high." 
The Board applied the SnoWizard/Converse factors in determining whether DENVER MIX has acquired distinctiveness. Applicant has used the mark for more than six years and spent some $6500 in advertising per year. From 2014 to 2019 its annual sales have increased from $110,000 to $220,000. Doc Popcorn did not provide any market context for those numbers. 
The Doc submitted declarations from seven customers and one franchisee asserted that Applicant "is the owner of the mark sought to be registered," that no others have "the right to use said mark in commerce," and that they recognize DENVER MIX "is owned by the Applicant." 
The Board observed that six years of use of a highly descriptive mark "is not particularly long." Moreover, the third party uses of the term were more than "inconsequential" or "infringing." In fact they were substantial enough to support a finding of genericness. The form declarations from six customers and one franchisee constitute "an infinitesimally small portion of potential consumers of popcorn."

All seven are identical in substance, having been written on preprinted forms with space saved for the declarant to add his or her location of residence, signature, printed name and date. Form declarations such as these may not "actually reflect the views of the declarants" and are entitled to "little weight."

In sum, the Board found the probative value of these declarations to be extremely limited. 
The Board concluded that, "[g]iven the highly descriptive nature of Applicant’s proposed mark, this record does not support a finding of acquired distinctiveness." And so, the Board affirmed both the genericness refusal and the alternative mere descriptiveness refusal.  
Read comments and post your comment here.

TTABlogger comment: What is Boston Mix? Cheese popcorn, popcorn shrimp, and baked beans.

Text Copyright John L. Welch 2021.

Tuesday, May 04, 2021

Schwimmer and Welch: "Where to appeal a TTAB decision? The choice is complicated"

Martin B. "Marty" Schwimmer and Yours Truly co-authored an article recently published by the World Trademark Review, entitled "Where to appeal a TTAB decision? The choice is complicated." [pdf here]. The springboard for the article was the Fourth Circuit's ruling in the long-running PRETZEL CRISPS case in which the court ruled that Snyder's/Princeton Vanguard, by appealing a TTAB decision to the CAFC under Section 1071(a) of the Trademark Act, did not waive its right to appeal to the district court, under Section 1071(b), from a subsequent TTAB decision in the same case.

A party appealing an adverse TTAB decision has two options: appeal to the US Court of Appeals for the Federal Circuit (CAFC) or commence a civil action in US district court. In this guest piece, Leason Ellis LLP’s Martin Schwimmer and Wolf, Greenfield & Sacks, PC’s John L Welch unpick the recent Fourth Circuit decision in the PRETZEL CRISPS genericness case to examine the practical factors at play when making that decision.

Author Schwimmer provided this flowchart to illustrate how Section 1071 of the Trademark Act works (click on the picture for a larger image): 


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TTABlogger comment: We thank the World Trademark Review for granting us permission to distribute copies of this article.  

Text Copyright John L. Welch 2021.

Monday, May 03, 2021

Precedential Nos. 9 and 10: TTAB finds "CLEAR" Deceptively Misdescriptive of Non-Transparent Clothing and Handbags

The Board affirmed two Section 2(e)(1) refusals of the proposed mark CLEAR for footwear, lingerie, and other clothing items, and for handbags, purses, wallets and related items, all "excluding transparent goods," finding the term to be deceptively misdescriptive of the goods. The Board observed that consumers are not aware of the "nontransparent" limitation in the application, and not all purchases of Applicant Dolce Vita's goods are made after direct inspection of the goods. In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478 and 479 (TTAB 2021) [precedential] (Opinions by Judge Jyll Taylor).

A mark is considered deceptively misdescriptive under Section 2(e)(1) if: (1) the mark misdescribes a quality, feature, function, or characteristic of the goods or services with which it is used; and (2) consumers would be likely to believe the misrepresentation. See In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988); In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Quady Winery, Inc., 221 USPQ 1213, 1214 (TTAB 1984)). [T]he reasonably prudent consumer test is applied in assessing whether consumers are likely to believe the misrepresentation. In re Hinton, 116 USPQ2d at 1052 (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)).

Dictionary definitions and third-party website evidence convinced the Board that consumers "will perceive CLEAR as describing a feature" of Dolce Vita's clothing and clothing items, handbags, wallets, etc. 

As to Dolce Vita's exclusion of "non-transparent goods," the Board found that this exclusion "conclusively establishes" the CLEAR misdescribes a feature of the goods, satisfying the first element of the Section 2(e)(1) test.

Applicant’s contention that its proposed mark CLEAR does not describe a plausible feature of its goods because it has restricted its identification so that the recited goods do not include transparent footwear and clothing is unavailing. We cannot assume that consumers of Applicant’s goods will be aware that its identification is so restricted, and the restriction is not controlling of public perception. See In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187-88 (TTAB 2018). Cf., e.g., In re Clorox Co., 578 F.2d 305, 198 USPQ 337, 340 (CCPA 1978) (“[T]he locus of potential confusion is [not] in the files of the PTO.”); In re Wada, 48 USPQ2d 1689, 1692 (TTAB 1998) (public is unaware of disclaimers that “quietly reside” in the records of the Office).

The Board observed that Dolce Vita "cannot avoid a finding of deceptive misdescriptiveness by excluding from its identification the very characteristic that its mark is misdescribing. Cf. In re ALP of South Beach, Inc., 79 USPQ2d 1009, 1010 (TTAB 2006) (“We find that the word CAFETERIA used in connection with restaurant services that explicitly exclude cafeteria-style restaurants does misdescribe the services.”)."

Next, as to the second element of the test, because the evidence showed that various types of clothing, footwear, and handbags may be transparent in whole or in part, the Board found that relevant consumers are likely to believe the misrepresentation. 

The Board rejected Dolce Vita's argument that consumers are unlikely to believe the misrepresentation because they will visually inspect the goods before purchase. Dolce Vita relied on three TTAB decisions, but the Board distinguished them: In re Econoheat, Inc., 218 USPQ 381, 383 (TTAB 1983) (SOLAR QUARTZ for space heaters), Nw. Golf Co. v. Acushnet Co., 226 USPQ 240, 242-43 (TTAB 1985) (POWER-STEP for golf clubs), and In re Robert Simmons, Inc., 192 USPQ 331, 333 (TTAB 1976) (WHITE SABLE for paint brushes made from synthetic fibers). As to WHITE SABLE, consumers are not likely to believe that paint brushes would be made from the hair or fur of a sable. As to POWER-STEP, the word STEP did not necessarily signify that the golf club shafts had a single "step." And as to SOLAR QUARTZ, there we no evidence that there was such a thing as a solar quartz heater.

Moreover, not all consumers will have the opportunity to visually inspect the goods:

If Applicant’s goods were to be promoted by word-of-mouth or on social media or in print (e.g., in fashion blogs, magazine articles, or even Applicant’s future advertising) without an image of the goods, a reasonable consumer seeking what the record shows to be a fashion trend would believe that Applicant’s goods, promoted under the proposed CLEAR mark, would feature transparent or clear attributes.

The second element of the test having been met, the Board concluded that proposed mark is deceptively misdescriptive of the goods, and so it affirmed the refusals to register.

Read comments and post your comment here.

TTABlogger comment: Not clear why these appeals weren't consolidated.

Text Copyright John L. Welch 2021.

Friday, April 30, 2021

TTAB Posts May 2021 (Video) Oral Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled six (VI) oral hearings for the month of May 2021. The hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

May 4, 2021 - 11 AM: Rodney Green v. Tensor International Corporation, Cancellation No. 92068730 [Petition for cancellation of a registration for the mark EARTHLOCK for "Plastic sheet materials for construction; plastic mesh materials for asphalt and concrete reinforcement, and construction of civil engineering structures" and "Soil reinforcement mesh and soil stabilization mesh made of plastic; soil erosion control structures, namely, gabions [new word for me - ed.] and mattresses constructed of plastic mesh; plastic mesh material for construction of civil engineering structures" on the ground of likelihood of confusion with petitioner's common law mark EARTHLOK for soil stabilizers].

May 5, 2021 - 1 PM: Trek Bicycle Corporation v. Christina Isaacs, Opposition No. 91232164 [Opposition to registration of the mark RANGER TREK for various goods and services in classes International Classes 16, 18, 21, 25, 26, 28 and 41, and the mark RANGER TREK EXPEDITION JOURNALS & Design for goods and services in classes 16 and 41, on the ground of likelihood of confusion with the allegedly famous common law and registered mark TREK and formatives thereof for a variety of products, including clothing, backpacks, travel bags, all-purpose sports bags, flashlights, wrist watches, powder mixes for energy drinks and snack bars.]

May 11, 2021 - 1:30 PM: In re Clearly IP Holdings, SRL, Serial Nos. 88150585 and 88156396 [Section 2(d) refusal of the mark CLEARLY SPARKLING, in standard character and stylized form [SPARKLING disclaimed] for "Sparkling waters; carbonated waters; drinking waters; flavored waters; mineral waters; water beverages" in view of the registered mark CLEAR & SPARKLING in stylized form for “Carbonated waters; Drinking water; Seltzer water; Fruit-based beverages; Non-alcoholic beverages, namely, carbonated beverages”]

May 13, 2021 - 2 PM: AWP USA Inc. v. Chubb INA Holdings, Inc., Cancellation No. 92070407 [Petition for cancellation of a registration for the mark CHUBB TRAVEL SMART for "Downloadable mobile applications for planning trips, receiving travel, weather, medical, safety, health, and security information, receiving security alerts, and currency converter tool" on the ground of likelihood of confusion with the common law mark TRAVELSMART for mobile application and web-based software services for providing information related to travel insurance, claim filing, flight status checking, medical assistance, and local emergency and assistance during travels.]


May 18, 2021 - 11 AM: In re BFY LLC, Serial No. 88606855 [Section 2(e)(1) refusal to register the mark MULTEEZ for "Homeopathic pharmaceuticals, namely, vitamins," on the ground of mere descriptiveness.]

May 25 2021 - 1 PM: In re Herman Miller, Inc., Serial No. 88027008 [Refusal to register a three-dimensional product configuration of a chair on the ground of de jure functionality under Section 2(e)(5).]

Read comments and post your comment here.

TTABlog comment: Since TTAB hearings are supposed to be public, shouldn't these video hearings be available for everyone to (at least) hear?

Text Copyright John L. Welch 2021.