Friday, May 24, 2019

Updated TTABlog Collection of Section 2(a) Deceptiveness Cases

Here is an updated collection of Section 2(a) deceptiveness cases from the TTABlog. Of course, most of these decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.

The Board applies a three-part test for determining whether a mark is deceptive under Section 2(a): (1) is the term misdescriptive of the character, quality, function, composition or use of the goods? (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods? (3) If so, is the misdescription likely to affect a significant portion of the relevant consumers' decision to purchase? In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) [precedential], citing In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988).

Deceptive trademarks (unlike deceptively misdescriptive marks under Section 2(e)(1)) are not eligible for registration via Section 2(f) acquired distinctiveness.

A mark is deceptively misdescriptive if it satisfies the first two prongs of the test set forth above. Deceptively misdescriptive marks may be registered on the Principal Register via Section 2(f), or on the Supplemental Register.

Marks that are primarily geographically deceptively misdescriptive are treated under Section 2(e)(3) and are not eligible for registration via Section 2(f), unless the mark acquired distinctiveness before December 8, 1993, the effective date of the North American Free Trade Agreement Act (NAFTA). The TTABlog collection of 2(e)(3) cases may be found here.

These distinctions are explained and explored in Anne Gilson LaLonde's article, "You Are Not Going to Believe This! Deception, Misdescription and Materiality in Trademark Law," 102 Trademark Reporter 883 (May-June 2012) [TTABlogged here].

Marks found deceptive:

Marks found not deceptive:

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Thursday, May 23, 2019

Updated TTABlog Collection of Section 2(e)(2) "Primarily Geographically Descriptive" Cases

Here's an updated, lengthy list of Section 2(e)(2) geographical descriptiveness cases. These are much more common than Section 2(e)(3) refusals, perhaps because the former is more easily established since it is not necessary to prove the materiality of the misrepresentation. The great majority of the decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.

For a mark to be deemed primarily geographically descriptive under Section 2(e)(2), it must be shown that (1) the mark's primary significance is a generally known geographic location; (2) the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark; and (3) the goods do originate in that place. When the goods do come from the location named, then a goods/place association may be presumed.

Marks found to be primarily geographically descriptive under Section 2(e)(2):

Marks found not to be primarily geographically descriptive under Section 2(e)(2):

Read comments and post your comment here.

Text Copyright John L. Welch 2019.

Tuesday, May 21, 2019

Updated TTABlog Collection of Section 2(e)(3) "Primarily Geographically Deceptively Misdescriptive" Cases

Here is an updated collection of Section 2(e)(3) cases. Of course, most of the decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.

There are four elements that must be met to invoke the bar of Section 2(e)(3): (1) The primary significance of the mark is a generally known geographic place; (2) The goods or services do not originate in the place identified in the mark; (3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and (4) The misrepresentation would be a material factor in a substantial portion of the relevant consumer's decision to buy the goods or use the services. In re Spirits Int’l N.V., 563 F.3d 1347, 90 U.S.P.Q.2d 1489, 1490-95 (Fed. Cir. 2009); In re California Innovations, 329 F.3d 1334, 66 U.S.P.Q.2d 1853, 1858 (Fed. Cir. 2003).

Acquired distinctiveness may overcome a Section 2(e)(3) refusal, provided that the mark became distinctive prior to enactment of the NAFTA Implementation Act on December 8, 1993. See In re Boyd Gaming Corp., 57 U.S.P.Q.2d 1944, 1947 (T.T.A.B. 2000).

Marks found to be primarily geographically deceptively misdescriptive under Section 2(e)(3):

Marks found not to be primarily geographically deceptively misdescriptive under Section 2(e)(2):

Read comments and post your comment here.

Text Copyright John L. Welch 2019.

Monday, May 20, 2019

TTABlog Test: Are Clothing and Jewelry Related Under Section 2(d)?

I know. The cynics out there are saying that, in TTAB land, everything is related to clothing. Well what about this one? The USPTO refused registration of the mark OUT OF ORDER for various clothing items, finding the mark likely to cause confusion with the registered mark shown below, for various goods in class 14, including bracelets, necklaces, earrings, and watches. Applicant Manja Studio argued that the cited mark is distinguishable because it is dominated by the letters "OOO" and that the goods "are not subject to complementary use." How do you think this came out? In re Manja Studio SDN BHD, Serial No. 87647277 (May 17, 2019) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

The Marks: The Board found the marks to be "very similar in appearance, sound, connotation and commercial impression, due to the shared phrase OUT OF ORDER." To the extent the consumers see the element "OOO" as a mere design, the literal element OUT OF ORDER would dominate the mark. If the "OOO" is viewed as three letters, they will be seen "as an abbreviation, initialism or acronym for the wording OUT OF ORDER, which only reinforces the dominant nature of the phrase OUT OF ORDER in Registrant’s mark." Therefore, the Board found the term OUT OF ORDER to be the dominant portion of the cited mark.

Manja pointed to a statement made by registrant's attorney during prosecution of its underlying application, asserting that "OOO" is the dominant part of registrant's mark. The Board refused to consider this an "admission" by registrant, and in any case the statement "simply expresses a legal argument and purported intention of that applicant (now Registrant) and does not reflect how the purchasing public views the cited mark." Moreover, each application is considered by the Board on its own record.

Manja argued that, in registrant’s actual use of the cited mark, the term "out of order" ironically suggests that its goods are distressed and would not be working properly, whereas in applicant’s mark the term suggests unruliness, rebelliousness and edginess. The Board was not impressed. It disagreed that the marks would have different meanings, and "even if consumers were to discern an ironic connotation when viewing Registrant’s mark on its identified goods, we see no reason why they would not perceive Applicant’s mark on its identified clothing in the same manner, especially when fashions trend towards torn or 'distressed' clothing."

The Goods: Examining Attorney Khanh M. Le submitted a number of Internet web pages from third-party websites "demonstrating that a single entity is likely to offer for sale many of the clothing articles identified in the application, and watches, necklaces and earrings, such as those identified in the registration, under the same mark." E.g., KATE SPADE, J. CREW, LOFT, BOSS, and DIESEL. Furthermore, the Board found that the involved goods are indeed complementary: "watches, earrings and necklaces are a type of goods that consumers could purchase at the same time as the sort of clothing identified in the application, or with an earlier purchase of such goods in mind, so as to coordinate a fashionable ensemble." The Board therefore concluded that the goods are "closely related."

This same evidence confirmed that the involved goods travel in the same channels of trade and are offered to the same classes of consumers.

Manja maintained that registrant's goods are "luxury designer watches" that “are sold at prices that reflect the high quality of these goods (i.e., on average 400 USD),” and therefore consumers would exercise considerably more care when purchasing registrant's watches as compared to Manja's T-shirts, outerwear, and hats. The Board pointed out, however, that there are no limitations as to price in either the subject application or the cited registration, and so this argument was, so to speak, out of order.

Prior Registration: Finally, Manja pointed to a now-cancelled third-party registration for OUT OF ORDER for clothing, which registration co-existed for a time with the cited registration. This, according to Manja, supports its position here. The Board considered this argument under the catch-all 13th du Pont factor but found it unavailing. Again it pointed out that each case must be decided on its own record. Moreover, a cancelled registration is not entitled to any of the presumptions of Section 7(c) of the Lanham Act.

Conclusion: The Board found confusion likely and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: So what else is new?

Text Copyright John L. Welch 2019.

Friday, May 17, 2019

TTABlog Collection of Section 2(c) "Consent to Register" Cases

The recent MANIKCHAND decision is one of only seven Sections 2(c) decision discussed at the TTABlog in the last 14 and one-half years. Set out below is a complete list. Note that five of the seven are precedential.

Section 2(c), in pertinent part, bars registration of a mark that "[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his [sic] written consent ...." This provision applies not only to full names but also to shortened names and nicknames, as long as the name identifies a particular living individual.

A consent is required only if the individual bearing the name in the mark will be associated with the mark as used on the goods or services, either because: (1) the person is so well known that the public would reasonably assume a connection between the person and the goods or services; or (2) the individual is publicly connected with the business in which the mark is used.

* * * * * * * * * * * *

Precedential No. 10: TTAB Dismisses Rare Section 2(c) Opposition Due to Death of Named Individual

Precedential No. 36: TTAB Gives the Boot to Nike's Inadequate Section 2(a) and 2(c) Claims

Precedential No. 4: TTAB Affirms 2(a) and 2(c) Refusals of "PRINCESS KATE" and "ROYAL KATE" for Clothing

Precedential No. 12: TTAB Reverses Section 2(c) Refusal of FRANKNDODD for Legislative Information Services

TTAB Affirms Section 2(c) Refusal of MARTIN & WEYRICH ROSSO ALLEGRO for Wine

Presidential No. 44: In Rare Section 2(c) Ruling, TTAB Affirms Refusal of "OBAMA BAHAMA PAJAMAS"

In a Citable Section 2(c) Decision, TTAB Partially Cancels "KRAUSE PUBLICATIONS" Registration

Read comments and post your comment here.

TTABlog comment: If someone tried to register the mark TTABlog PAJAMAS, I would certainly oppose under Section 2(c).

Text Copyright John L. Welch 2019.

Thursday, May 16, 2019

District Court Rules on Motion to Dismiss Counterclaim in Appeal from TTAB's "Bullet-Shaped-Antenna" Decision

ESR Performance Corp. has commenced a civil action in the U.S. District Court for the Middle District of Florida, seeking review of the Board's decision granting a petition for cancellation of ESR's registration for the product configuration mark shown below (shaped like "a bullet cartridge") for "automobile antennas." [TTABlogged here]. The Board rejected petitioner JVMAX's claim that the design is aesthetically functional because JVMAX failed to prove a competitive need for use of that shape. The Board, however, found that the applied-for mark lacked acquired distinctiveness. The district court recently ruled on Plaintiff ESR's motion to dismiss parts of defendant's counterclaim, which included a count based on aesthetic functionality and a count requesting cancellation of several pending ESR trademark applications. ESR Performance Corp. v. JVMAX, Inc., Civil Action No. 6:18-cv-1601-Orl-37GJK (M.D. Fla. May 7, 2019).

Issue Preclusion re Aesthetic Functionality? One count of JVMAX's counterclaim sought cancellation of ESR's registration based on aesthetic functionality. ESR moved to dismiss, contending that issue preclusion barred this attack because the TTAB had already found against JVMAX on aesthetic functionality. The court pointed out, however, that ESR is appealing the Board's decision and therefore the decision is under de novo review. "Only if a party fails to seek review is the TTAB decision entitled to a preclusive effect." The court therefore declined to dismiss this count.

Cancellation of Pending Trademark Applications?: The court granted the motion to dismiss with respect to JVMAX's claim for cancellation of several pending trademark applications of ESR. Section 37 of the Lanham Act gives the court power to cancel a registration, or otherwise rectify the register as to a registration. However, Section 37 does not apply to a pending application, and therefore the court concluded that it lacked subject matter jurisdiction over this count.

The court noted that some courts have exercised jurisdiction over a pending trademark application when one of the parties has a registered mark with "sufficient nexus" to the pending trademark applications. But even if the court did consider the nexus, "the relationship is insufficient here." The pending applications are for word marks, whereas the mark involved in this appeal is a product configuration mark.

Read comments and post your comment here.

TTABlog comment: Plaintiff ESR included infringement and unfair competition claims. JVMAX's counterclaim included a count for unfair competition.

Text Copyright John L. Welch 2019.

Wednesday, May 15, 2019

TTAB Found "FOUNDRY" Deceptively Misdescriptive of Non-Foundry Faucets

The Board affirmed a Section 2(e)(1) refusal to register the mark FOUNDRY, finding it deceptively deceptively misdescriptive of "plumbing products, namely, faucets." Applicant Masco stated that the goods are not manufactured in a foundry, nor are they cast metal, but it argued that the mark may be perceived as "fanciful" and merely a reference to the "industrial style" of applicant's faucet collection. In re Delta Faucet Co., Serial No. 87001991 (May 10, 2019) [not precedential] (Opinion by Judge Angela Lykos).

A mark is deceptively misdescriptive if (1) it 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. For a term to misdescribe the goods it must be "merely descriptive of a significant aspect of the goods which the identified goods could plausibly possess."

Examining Attorney Nelson B. Snyder III submitted dictionary definitions of foundry as "(1) the act, process, or work of melting and molding metals; (2) metal castings; and (3) a place where metal is cast." He also submitted a registration for faucets in which the term FOUNDRY was disclaimed, and numerous other registrations showing FOUNDRY disclaimed for other metal goods such as pipes and manhole covers. Based on this evidence, the Board concluded that "foundry" describes a significant feature of the identified goods: i.e., that they are made from metal castings and/or are produced in this type of facility.

To determine whether FOUNDRY misdescribes the goods, the Examining Attorney issued a Rule 2.61 request for information, asking whether any of the identified goods, or parts thereof, are or will be produced in a foundry. Applicant Masco said no, the goods are made with stamped components.

The Board therefore found that the first prong of the test was met. As to the second prong, whether consumers would believe the misrepresentation, the Examining Attorney pointed to evidence that competitors promote the fact that they manufacture their plumbing products, such as faucets, from metal castings and in foundries. Thus consumers are accustomed to seeing such plumbing products mad from metal products and produced in a foundry. Therefore it is likely that consumers will be deceived by the misrepresentation.

As to Masco's argument that consumer will see the mark as "fanciful," the Board was skeptical, in light of the evidence, that consumers would ascribe any fanciful meanings to the applied-for mark.

And so the Board affirmed the refusal under Section 2(e)(1).

Read comments and post your comment here.

TTABlog comment: Is the mark deceptive under Section 2(a)? That would require proof that the misdescription is material to the purchasing decision. Of course, if deceptive, the applied-for mark would be unregistrable. On the other hand, a mark that is deceptively misdescriptive is still eligible for registration via a showing of acquired distinctiveness.

Text Copyright John L. Welch 2019.

Tuesday, May 14, 2019

Precedential No. 11: TTAB Hammers Cancellation Respondent Over Inadequate Discovery Responses

In olden days, one could think of a TTAB inter partes proceeding as a lower cost, less complicated alternative to filing a trademark infringement action, but not any more. In this precedential order, the Board raked Respondent Arroware over the coals for failing to properly and fully respond to Petitioner HP's discovery demands. In line with the Board's open door policy on discovery, the Board tossed out many of respondent's objections to HP's interrogatories and document requests and required respondent to provide a (typically useless) attorney-client privilege log. Hewlett Packard Enterprise Development LP v. Arroware Industries, Inc., Cancellation No. 92067494 (May 2, 2019) [precedential].

HP sought cancellation of a registration for the mark MY APOLLO for peer-to-peer software for sharing data and files, claiming abandonment. Dissatisfied with Arroware's discovery responses, HP moved to compel.

Respondent Arroware objected to the number of interrogatories and document requests as excessive (i.e., more than 75, including subparts). However, rather than serving a general objection under Rule 2.120(d), Arroware made the mistake of serving objections and responses; it then asserted that it should not be required to supplement its responses because it "responded to a proper number." The Board, however, ruled that Arroware had waived its right to object on this numerical ground.

HP also argued that Arroware's objections were mere "boilerplate" and did not explain how HP's discovery requests were defective. The Board pointed out that an objecting party "may not rely on conclusory statements such as "overly broad, unduly burdensome, vague or ambiguous, or not proportional to the need of the case." The party must "detail with specificity the reasons for its objections." [Aren't the reasons often self-evident? - ed.]. Also, a responding party must state "clearly and affirmatively whether it has searched for and identified, but withheld, any documents responsive to any document request based on the objections it lodged in response to any of [the other party's] document requests." The Board therefore overruled Arroware's "boilerplate objections."

Arroware managed to win one battle: observing that neither FRCP 36 nor the Board's rules require a party to explain the basis for an admission or denial, the Board deemed "impermissible" HP's use of a "blanket interrogatory or document request" that seeks documents or information forming the basis of Arroware's responses to requests for admission.  However, somewhat paradoxically, the Board okayed without explanation a blanket document request calling for all documents pertaining to Arroware's interrogatory responses. [Although it is not crystal clear, it appears that an interrogatory or document request seeking the basis for a single admission or denial is allowed; i.e., only the "blanket" version is disallowed. - ed.].

Next, the Board considered Arroware's invocation of FRCP 33(d) in relying on its business records in response to some of HP's interrogatories, rather than providing narrative responses. The Board concluded that Arroware had failed to meet the applicable requirements for invoking this rule: it (1) failed to specify why providing written responses would impose a significant burden; (2) it failed to specify in sufficient detail where the answers to the interrogatories can be ascertained. The fact that HP's document requests called for the same documents was deemed irrelevant. And so the Board ordered Arroware to provide "sworn, complete, and narrative responses" to these interrogatories.

Finally, HP demanded that Arroware provide supplemental responses to its document requests that meet the "full scope of the requests." Arroware's responses stated that it would produce documents located after a reasonable search. Not good enough, said the Board. "[A] party must state whether or not it has responsive documents in its possession, custody or control and, if it does, state that the documents will be produced by a specified date or they are being withheld, based on a claim of privilege or a specified objection." If privilege is claimed, a privilege log must be provided.

The Board ordered Arroware to "fully complete its search and production" and to fully meet the scope of the document requests. Arroware is not required, however, to identify all U.S. customers for the preceding three years, as HP demanded. The Board ordered Arroware to identify two newly-registered U.S. users per year. [How is the identification of customers a proper response to a request for documents? - ed.].

The Board then set various deadlines for compliance with its order, and reset the remaining dates for discovery, briefing, and trial.

Read comments and post your comment here.

TTABlog comment: Nothing generates more expense and wastes more time than disputes over discovery. Nor is there a more effective weapon to beat the other side into submission than aggressive discovery that requires the responding party to turn itself inside out. The easy position for the Board to take is to require a party to "produce everything." As long as that's the case, TTAB practice will continue to be discovery-centric, and there is little that is more uninteresting than dealing with and arguing about discovery issues.

Text Copyright John L. Welch 2019.

Monday, May 13, 2019

TTAB Affirms Section 2(e)(5) Functionality Refusal of Milk Container Configuration

The Board affirmed a Section 2(e)(5) refusal of the container configuration shown below, for "milk," finding the design to be de jure functional. Applicant's utility patent was sufficient to establish a prima facie case of functionality that applicant failed to overcome. In re Creative Edge Design Group, Ltd., Serial No. 87287662 (May 9, 2019) (corrected on May 13, 2019 to not precedential] (Opinion by Judge Karen Kuhlke).

The CAFC's Morton-Norwich opinion sets forth the following factors to be considered in determining whether a design is de jure functional: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

Utility Patent: The existence of a utility patent "is strong evidence that the features claimed therein are functional" and “[w]here the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.” TrafFix, 58 USPQ2d 1005. Moreover, "statements in a patent's specification illuminating the purpose served by a design may constitute equally strong evidence of functionality." Becton, Dickinson & Co., 102 USPQ2d at 1377.

Applicant is the owner of expired U.S. Patent No. 6068161, for "Stackable, Thin-walled Containers Having a Structural Load Distributing Feature Permitting Caseless Shipping." It contended that this patent does not "discuss the utililitarian advantages of the cuboidal shape, size, and appearance" of the design, arguing that the "central advance" of the patent is the structural load-distributing feature that transfers load from the top to the base of the container, allowing for efficient stacking of the containers. The abstract of the patent describes the "substantially planar" and parallel surfaces of the top and base of the container and side walls that include a "structural load distributing feature."

The Board found that many of the patent claims "bear directly on the applied-for trade dress, including the cuboidal shape." The patent specification references the cost effectiveness of stackability and caseless shipping. Two of the patent figures depict embodiments "very similar to the applied-for design."

The Board concluded that the specification and claims of the patent "reveal the functionality of the design."

The applied-for aspects in the application, “generally cuboidal in shape,” “substantially flat and square shaped top surface,” “generally flat sides” and “handle form[ing] the upper part of the corner defined by two of the side walls and extend[ing] to the flat top surface of the bottle,” are all referenced in the utility patent and are not “merely an ornamental, incidental, or arbitrary aspect of the packaging.”

The Board therefore found that the patent "is sufficient to establish a prima facie case that the design is functional."

Advertising: Examining Attorney Jonathan R. Falk submitted excerpts from news articles that "contain photographs of the applied-for mark" and include claims of the benefits of the design - namely, self-stacking and resulting lower transportation costs. Although this evidence was not applicant's advertising, it still tends to show consumer exposure to the "touting" of these functional aspects.

Applicant argued that it is seeking a registration for "milk," not for containers, and the advantages discussed do not make the jug's shape functional for milk. The Board was not impressed: "The stackability feature is a utilitarian advantage whether the applied-for goods are containers for milk or milk. This advantage begins when the containers are filled with milk, and continues as the milk is distributed to and then sold at the store."

Alternative Designs: Applicant asserted that there are a multiplicity of alternative designs, but the Board noted that the examples submitted did not clearly show the same stackability feature, and "may have aspects that would not be amenable to caseless stacking." In any case, once functionality is found based on other considerations, there is no need to consider alternative designs." Becton, Dickinson & Co., 102 USPQ2d at 1377. [Doesn't this make the prima facie patent evidence conclusive, if the Board will not consider applicant's evidence? - ed.].

Cost of Manufacturing: Applicant argued, without evidence, that it had to incur significant expense in changing its manufacturing process, but the Board pointed out that the cost advantage comes from reduced transportation costs, nor from the manufacturing process. Moreover, even if the container is not "comparatively simple or cheap to manufacture, this does not mean that the design is not functional."

Conclusion: The Board affirmed the refusal.

Based on the evidence, competitors would need this cuboidal shape to achieve the same advantages for distributing and selling milk. To afford registration to Applicant’s design would inhibit legitimate competition by in effect extending the lifespan of its monopoly previously afforded by its now expired utility patent. Mars Inc., 105 USPQ2d at 1866.

Read comments and post your comment here.

TTABlog comment: I fail to understand why this decision was deemed precedential, when last October's Lakeside v. Evoqua summary judgement finding of de jure functionality (here) was not deemed precedential. That case involved more interesting issues, including an expired patent not owned by the registrant and registrant's own advertising brochure.

Text Copyright John L. Welch 2019.

Friday, May 10, 2019

Updated TTABlog Collection of Section 2(a) False Connection Cases

After nearly six years, I am updating the TTABlog collection of Section 2(a) false connection cases. There appears to be a fairly even split between cases in which a false connection is found, and those not. Of course, most of these decisions are not precedential, but we know that even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.

Section 2(a) provides, in pertinent part, that "[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it (a) consists of or comprises . . . matter which may . . . falsely suggest a connection with persons living or dead, institutions, beliefs, or national symbols."

Note that, for a Section 2(a) claim of false connection, a party need not allege proprietary rights in its name for purposes of standing. "[A] petitioner may have standing by virtue of who petitioner is, that is, its identity." Petróleos Mexicanos v. Intermix S.A., 97 USPQ2d 1403 (TTAB 2010) [precedential]. [TTABlogged here].

The Board basically follows the CAFC's decision in University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.1983), aff’g 213 USPQ 594 (TTAB 1982), by applying a four-part test in determining a "false connection" claim under Section 2(a):

1. The mark is the same as, or a close approximation of, the name of or identity previously used by another person;

2. The mark would be recognized as such because it points uniquely and unmistakably to that person;

3. The person named by the mark is not connected with the activities performed by the applicant under the mark; and,

4. The prior user’s name or identity is of sufficient fame or reputation that a connection with such person would be presumed when applicant’s mark is used on applicant’s goods.

Section 2(a) claims are not barred by the five-year statute of limitations of Section 14 of the Act, and therefore a cancellation petitioner will sometimes resort to a Section 2(a) claim when a Section 2(d) claim is already time-barred.

Section 2(a) False Connection Found:

Section 2(a) False Connection Not Found:

Text Copyright John L. Welch 2019.

TTABlog Test: Is "ARKIVE" Merely Descriptive of Document and Data Storage Services?

The USPTO refused registration of the mark ARKIVE for document and data services, finding the mark to be merely descriptive under Section 2(e)(1). On appeal, applicant argued that its mark is a creative double entendre. Do you recognize it? How do you think this came out? In re Arkive Information Management LLC, Serial No. 87487874 (May 8, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

Examining Attorney Paul A. Moreno maintained that the mark is a 'novel spelling of and the phonetic equivalent to, the word 'archive,'" which is defined as a place where documents are kept. Thus applicant's mark merely describes the field and subject matter of its services.

Applicant did not dispute the definition of "archive" but instead asserted that "ARKIVE is a creative combination of the words 'ark' and 'archive' to create a word that has multiple meanings."

Specifically, Applicant’s mark plays on the word “ARK,” which is in reference to the Ark of the Covenant and Noah’s Ark. Applicant’s mark, therefore, conveys that its services are as secure as the ark that Noah built for himself, his family, and hundreds of animals, who were sheltered from the flood. *** Alternatively, consumers may be under the impression that Applicant’s data sharing and cloud computing backup services are as secure and sturdy as the Ark of the Covenant, a gold-covered wooden chest with a lid cover described [in] the Book of Exodus as containing the two stone tablets of the Ten Commandments.

The Board had no doubt that "archive" is merely descriptive of applicant's services. The slight misspelling of the mark does not make ARKIVE non-descriptive. As to applicant's double entendre argument, "[a] double entendre is registrable only if the second, non-descriptive meaning would be readily apparent to the consumer from the mark itself." There was no evidence that consumers would perceive ARKIVE as a reference to Noah's Ark, the Ark of the Covenant, or any other ark.

Applicant's own use of the mark at its website makes clear that the term ARKIVE conveys the same descriptive properties as "archive."

[T]he connection between “disaster recovery” and “security” on the one hand and Noah’s Ark or the Ark of the Covenant on the other is not by any means “readily apparent” from Applicant’s proposed mark, especially where the letters “a-r-k” are used only as part of the term ARKIVE in standard characters, and Applicant uses the phonetically identical, common and descriptive or generic term “archive” (as well as equivalent terms such as “backup”) repeatedly throughout its website.

In short applicant uses ARKIVE to refer to the storing of data and materials, not as a reference to Noah's Ark or the Ark of the Covenant. The meaning suggested by applicant is not apparent when the mark is used with the services.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? By the way, even if applicant's website showed a picture of Noah's Ark, that would be irrelevant since the double meaning must be apparent from the mark itself, without any reference to trade dress, advertising copy, etc. See THE GREATEST bar case (here).

Text Copyright John L. Welch 2019.