Wednesday, February 28, 2024

First DuPont Factor Brings TTAB Dismissal of Monster Energy's Opposition to LAIKABEAST & Design for Mugs and Plates

Frequent TTAB litigant Monster Energy Company got mugged in this opposition to registration of the mark shown immediately below, for mugs and plates. Monster claimed a likelihood of confusion with various BEAST-formative marks for beverages, as well as a lack of bona fide intent. The Board concluded that the involved marks are "too dissimilar overall to warrant a finding of likelihood of confusion," and it found that Applicant Rodriguez had the capacity to market his products and had taken steps to create a small Internet business, thus defeating the lack-of-bona-fide-intent claim. This post will attempt to hit the highlights of the 53-page opinion. Monster Energy Company v. Victor Rodriguez, Opposition No. 91271109 (February 26, 2024) [not precedential] (Opinion by Judge Mark Lebow).

The Goods: Monster argued that the goods are "highly related," since mugs are "beverageware," and so consumers will believe that applicant's plates and mugs are distributed by or co-branded with Monster. However, Monster provided no evidence to support its argument.

Trade Channels and Classes of Consumers: There was no evidence that the trade channels for the involved goods overlap. "Even if we assume that mugs and plates are carried by mass merchandisers, that does not constitute a common channel of trade." As to consumers, "[t]he fact that some portion of Applicant’s target audience – gamers and anime fans of all ages – may from time to time also consume energy drinks of the type listed in Opposer’s Beast mark registration, is not a sufficient basis to conclude that the classes of customers are the same."

The Marks: Monster asserted its rights in the marks UNLEASH THE BEAST!, UNLEASH THE NITRO BEAST!, UNLEASH THE ULTRA BEAST!, UNLEASH THE SALTY BEAST!, REHAB THE BEAST, HYDRATE THE BEAST! and PUMP UP THE BEAST! Monster claimed that applicant's mark is "highly similar" because the word "beast" is dominant in all the marks. The Board disagreed.

Like Applicant’s composite mark, whose wording LAIKABEAST is unitary and thus has no dominant portion, each of Opposer’s Beast marks are also unitary, and each has a structure that is similar to one another, yet quite different from Applicant’s mark.

The Board concluded that the marks are much more dissimilar than similar, and that the first DuPont factor "weighs strongly against a finding of likelihood of confusion."

Strength of the Pleaded Marks: The Board agreed that Monster's Beast marks "are somewhat suggestive of Opposer’s energy drink beverages" (the marks "suggest an intended result or effect to a consumer of Opposer’s caffeine and energy drinks (i.e., consumers will be pumped up, hydrated, unleashed, or rehabbed.")

As for commercial strength, the Board found that UNLEASH THE BEAST, which appears on Monster's beverage containers, has "moderate commercial strength," but as to the other marks, there was "little evidence" regarding their strength.

Section 2(d) Conclusion: "Simply put, the parties’ marks are too dissimilar overall to warrant a finding of likelihood of confusion and the first DuPont factor, accordingly, is dispositive in this case."

Bona Fide Intent: The Board observed that starting a small business to make and sell plates and mugs printed with designs "is not rocket science." Applicant Rodriguez purchased equipment to produce the goods, including a professional heat press machine that is capable of printing images on mugs and plates, took other steps geared toward creating a small business on the Internet. The Board noted that "[e]vidence that a party has the capacity to market or manufacture a product can rebut a lack of bona fide intent to use claim."

The Board found that "Applicant’s evidence and testimony as a whole, including his deposition testimony, has been credible and straightforward," and that Monster failed to demonstrate that Rodriguez lacked the requisite bona fide intent to use his LAIKABEAST and Design mark in commerce in connection with mugs and plates.

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TTABlogger comment: The bigger they are, the harder they fall.

Text Copyright John L. Welch 2024.

Tuesday, February 27, 2024

TTABlog Test: Is TABLEAU for Wine Confusable with TABLEAU for Bar Services?

The USPTO refused registration of the mark TABLEAU for wine, finding confusion likely with the identical mark registered for "restaurant and bar services; cocktail lounges." Applicant Caymus Vineyards argued that the Office failed to prove the "something more" required to establish relatedness between these goods and services, and further argued that, of the 600,000 restaurants in the U.S., the Office's evidence of third-party overlapping use constituted only “25 ten-thousands of one percent, or fewer than one in 10,000." How do you think this came out? In re Caymus Vineyards, Serial No. 97040804 (February 22, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen).

The Board ruled that there was no need to show "something more" to support the relatedness of the goods and services here because there is "an inherent relationship between Registrant’s bar services and cocktail lounges and Applicant’s wine." The Board noted that "inherent relatedness often exists when the services in question include or center on the sale of the particular goods in question."

Moreover, even if "something more" were required, that standard is met here. The cited mark TABLEAU is arbitrary and inherently distinctive. In addition, the evidence established that restaurant services and wine may be advertised by the same source under the same mark and offered at the same location, and that the customer bases for wine and restaurant services overlap.

Examining Attorney Scott Bibb established that wine and bar services are often offered by the same entity under the same mark by submitting eleven third-party registrations, more than thirty webpages, and eight internet articles. Caymus asserted that this was not a robust collection of evidence, but the Board was unmoved.

The fact that the Examining Attorney did not submit more does not detract from the fact that this evidence reveals that wine and restaurant services are offered by the same party under the same mark. The Court of Appeals for the Federal Circuit and Trademark Trial and Appeal Board have long recognized that "the PTO is an agency of limited resources" for obtaining evidence when examining applications for registration; the practicalities of these limited resources are routinely taken into account when reviewing a trademark examining attorney’s action.

With respect to the argument based on the number of restaurants and and drinking places in the United States, Caymus relied on an Internet printout from bls.gov. The Board deemed that information of limited value because it constitutes hearsay. Moreover, that printout is not evidence of the number of restaurants "that do or do not offer wine or whether the wine is labeled with the same trademark."

And so, the Board affirmed the Section 2(d) refusal.

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TTABlogger comment: So, you shouldn't name a bar or lounge without first checking for wine trademarks, and vice versa.

Text Copyright John L. Welch 2024.

Monday, February 26, 2024

Guest Article by Michael Hall: "A Few Recommendations for the Office and Those Practicing Before the Office"

Michael Hall, a former examining attorney and now Senior Counsel at Womble Bond Dickinson, provides (pdf here) three recommendations for trademark practitioners to consider when preparing responses to Office Actions, followed by two recommendations for the USPTO with regard to improving its examination of applications.

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Text Copyright John L. Welch 2024.

Friday, February 23, 2024

TTAB Denies Request for Reconsideration of TORPEDO JUICE Cancellation Denial

Petitioner Oregon Grain requested reconsideration of the Board's denial of its petition for cancellation of a registration for the mark TORPEDO JUICE for "Alcoholic beverages, except beer; Gin; Liquor; Rum" [TTABlogged here]. The Board had found that Oregon failed to prove priority because it failed to prove that its common law, identical mark was distinctive as of the filing date of Respondent's underlying application. Oregon here claimed that the Board erred in ruling that the issue of the lack of distinctiveness of Oregon's mark was tried by implied consent. Oregon Grain Growers Brand Distillery Inc. v. Michael Pitsokos, Cancellation No. 92076817 (reconsideration denied February 9, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Implied Consent Not Necessary: The Board first pointed out that, despite its earlier ruling, "it was not necessary to find implied consent" to consider the issue of distinctiveness. First, the issue of priority was raised by respondent in its answer, and in any event the petitioner in a cancellation proceeding must prove priority. Second, "under the rule of Otto Roth, a petitioner cannot prevail unless it shows that its unregistered common law mark is distinctive of its goods or services." The Board noted that "plaintiffs relying on common law rights, in general, often overlook the element of proof of distinctiveness as part of the burden of establishing priority."

Accordingly, the Board did not err in considering, as an initial matter, the distinctiveness of Petitioner’s designation TORPEDO JUICE in connection with priority since distinctiveness of an asserted common law mark must be proven and addressed in our consideration of Petitioner’s prior rights in such mark.

Distinctiveness of Petitioner's Mark: The Board also concluded that it did not err in finding TORPEDO JUICE to be merely descriptive.

The evidence and testimony in the record fully support our finding that TORPEDO JUICE merely describes a feature of Petitioner’s pineapple vodka by informing purchasers that Petitioner’s goods are an alcoholic beverage that is high proof, and that its pineapple flavored vodka is based on a beverage that purportedly originated from naval sailors during World War II.

Amend Petition to Add Descriptiveness Claim?: Petitioner asserted that the issue of descriptiveness was also tried with regard to registrant’s identical mark. The Board, construing this argument as seeking an amendment to the pleadings to conform to the evidence under Fed. R. Civ. P. 15(b) based on implied consent, was unmoved.

After a thorough review of the record, we find that the issue of descriptiveness of Respondent’s mark was not tried by the implied consent of the parties and, in particular, that Respondent was never fairly apprised that Petitioner’s evidence was being offered in support of a descriptiveness claim. To the contrary, until its present request for reconsideration, Petitioner had not raised this issue. *** In its brief on the case, Petitioner states unequivocally that there are two issues in this proceeding, namely, likelihood of confusion and nonuse. Petitioner does not in any way address the issue of descriptiveness of Respondent’s mark in its brief.

And so, the Board denied the request for reconsideration and denied the request to amend the pleadings.

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TTABlogger comment: In a review of a Board decision by way of civil action under Section 1071, the plaintiff may raise new issues and add evidence. What new issue would you raise?

Text Copyright John L. Welch 2024.

Thursday, February 22, 2024

TTABlog Test: Are Nail Polish Strengtheners Related to Dietary Supplements?

The USPTO refused to register the mark TRI-FLEX TECHNOLOGY for "nail care preparations, nail strengtheners, non-medicated nail treatment preparations for cosmetic purposes, nail polish, nail color gels, nail lacquers, none of the foregoing containing collagen" [TECHNOLOGY disclaimed], finding confusion likely with the registered mark shown below, for "dietary supplements for humans containing Types I, II, and III Collagen." Are the marks confusable? Are the goods related? How do you think the appeal came out? In re Wella Operations US, LLC, Serial No. 97401927 (February 20, 2024) [not precedential] (Opinion by Judge Albert J. Zervas).

The Marks: The Board found TRI-FLEX to be the dominant element in both marks. The design in the cited mark, having "three sections of curved, flexible arms," reinforces the term TRI-FLEX. [Flexible? - ed.]. The term COLLAGEN is "generic in the context of the goods," and so it "plays a much lesser role than TRI-FLEX in the mark’s commercial impression." The Board therefore found the marks to be similar "in sound, meaning, appearance and commercial impression." [Sound? Appearance? - ed.].

The Goods: The Board focused on "nail care preparations” not containing collagen, in applicant's identification of goods. It observed that "collagen is an important contributor to nail strength; that supplements, including collagen supplements, are taken to improve nail strength." The evidence established that "consumers will consider both Applicant’s and Registrant’s goods when wanting to strengthen fingernails."

Moreover, third-party websites showed that "the same entity provides nail care products and treatments and collagen supplements and markets these goods under the same mark." The evidence convinced the Board that the goods are related.

As to channels of trade, the Board found persuasive "the FlexiNail webpage offering the involved goods as part of a single package on one webpage, and the Beauty Pie website offering such goods on the same website under the same Beauty Pie brand."

From the identifications and from the Examining Attorney’s website evidence, we find that purchasers of Applicant’s and Registrant’s identified goods, i.e., members of the general consuming public who desire stronger nails, overlap.

Conclusion: The Board concluded that confusion is likely, and so it affirmed the refusal to register.

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TTABlogger comment: What do you think? I am unconvinced.

Text Copyright John L. Welch 2024.

Wednesday, February 21, 2024

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

People are saying that one can predict the outcome of a Section 2(d) appeal about 95 percent of the time just by looking at the marks and the goods and/or services. Here are the three Section 2(d) appeals recently decided by the TTAB. How do you think these three came out? [Answers in first comment.]

In re Adorama, Inc., Serial No. 97263050 (February 9, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal TURNSTILE AUDIO for “microphones, headphones, in-ear monitors not for medical purposes, audio speakers in the nature of studio monitor speakers, and other related audio equipment used in recording, live sound, post-production, and broadcasting, namely, sound recording apparatus” [AUDIO disclaimed] in view of the registered mark TURNSTYLE for "carrying cases, namely, shoulder bags, and messenger bags, all designed for carrying one or more of cameras, photographic equipment, digital audio players, cell phones, satellite telephones, personal digital assistants, electronic reading devices, tablet computers, and computer accessories.]

In re LIT Hookah LLC, Serial No. 87904603 (February 14, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of the mark shown below for "On-line retail store services featuring handmade all-glass hookahs" in view of the registered mark LIT for "Electronic cigarettes and components and parts, namely, cartomisers, atomisers, and refill cartridges."]

In re CARWIZ International d.o.o., Serial Nos. 79261503, and 79261504 (February 15, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal of CARWIZ, in standard character and design form (shown below) for, inter alia, vehicle rental, in view of the registerd mark WIZZ for, inter alia, car rental.]

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

Text Copyright John L. Welch 2024.

Tuesday, February 20, 2024

CAFC Vacates and Remands BABIES' MAGIC TEA Cancellation Denial: TTAB Misapplied the DuPont Factors

The CAFC vacated the Board's decision [here] denying a petition for cancellation of a registration for the mark BABIES' MAGIC TEA for "medicated tea for babies that treats colic and gas and helps babies sleep better." The Board found no likelihood of confusion with the registered mark BABY MAGIC for various toiletry goods (including baby lotion). The CAFC ruled that the basis for the Board's finding as to the second DuPont factor was unclear, that the Board had ignored certain evidence bearing on the third factor, and that it erred in failing to weigh the first factor heavily in favor of Petitioner Naterra. Naterra International, Inc. v. Samah Bensalem, Appeal No. 2022-1872 (Fed. Cir. Feb. 14, 2024) [precedential].

The Board concluded that the marks were "more similar than dissimilar," but gave "particular weight" to the lack of "probative evidence showing the relatedness of the parties’ respective goods, . . . coupled with the somewhat weak inherent nature of [Naterra’s] BABY MAGIC mark, [and] the lack of demonstrated commercial strength (let alone fame) and similar trade channels."

With regard to the second DuPont factor (the similarity and nature of the goods), the Board rejected Naterra's expert witness testimony regarding other "umbrella" baby brand companies that purportedly sell both baby skin care products and baby ingestible product, as “unsupported by underlying evidence.” The CAFC, however, deemed this testimony to be "pertinent to the relatedness of the goods." Moreover, Respondent Bensalem's counsel admitted at oral argument that third-party evidence is "absolutely very relevant."

Because the court could not discern "whether the relevant evidence was properly evaluated" it remanded to the Board "for further consideration and explanation of its analysis under this factor."

As to the third DuPont factor (the similarity of established trade channels), the Board ignored Bensalem's admission response that stated that both parties "utilize similar channels of trade in connection with the trademarks." Noting that the Board did not identify any evidence showing a lack of similarity in trade channels, the CAFC again vacated and remanded for further proceedings, directing the Board to consider "all relevant evidence related to the second and third DuPont factors."

The Board also erred in failing to weigh the first DuPont factor (the similarity of the marks) "heavily in favor of a likelihood of confusion finding." The court found instructive its holding in Detroit Athletic, in which it found that the lead words of the marks DETROIT ATHLETIC CLUB and DETROIT ATHLETIC CO. "are their dominant portion and are likely to make the greatest impression on consumers." As in Detroit Athletic, "the first DuPont factor should 'weigh[] heavily in the confusion analysis.'"

We conclude the Board erred in weighing the first DuPont factor and failed to address relevant evidence concerning the third DuPont factor. We also cannot discern whether the Board properly addressed relevant evidence concerning the second DuPont factor. Accordingly, we vacate the Board’s decision and remand for further proceedings consistent with this opinion.

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TTABlogger comment: What do you think will be the result on remand?

Text Copyright John L. Welch 2024.

Monday, February 19, 2024

Another TTAB Footnote on Legal Citations Says USPQ Still Acceptable

We reported here on an internal Board citation program concerning the possible broadening of acceptable forms of legal citations. On the same day, the Board made a different statement regarding the program in In re MYBAGSTORES.COM, Serial No. 90726300 (February 9, 2024), in a footnote quoted first below.

As part of an internal Board pilot citation program on possibly broadening acceptable forms of legal citation in Board cases, this decision varies from the citation form recommended in the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 101.03 (June 2023). This decision cites decisions of the U.S. Court of Appeals for the Federal Circuit and the U.S. Court of Customs and Patent Appeals by the page(s) on which they appear in the Federal Reporter (e.g., F.2d, F.3d, or F.4th) and/or the United States Patents Quarterly (USPQ).For decisions of the Board and the Director, this decision employs parallel citations to both the USPQ and to the WESTLAW database (WL). Until further notice, however, practitioners should continue to adhere to the practice set forth in TBMP § 101.03. (Emphasis added).

The Board took a more restrictive approach (see below) in In re Pro Eagle LLC, Serial No. 97738815 (February 9, 2024). I have highlighted what I perceive to be the differences.

As part of an internal Board pilot program exploring the possibility of broadening or altering acceptable forms of legal citations in Board cases, the citations in this opinion vary from the citation forms recommended in Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 101.03 (June 2023). This decision cites precedential decisions of the Court of Appeals for the Federal Circuit and the Court of Customs and Patent Appeals only by the page(s) on which they appear in the Federal Reporter (e.g., F.2d, F.3d, or F.4th). Precedential decisions of the Board and the Director will be cited only to WESTLAW (WL) and initial citations to Board decisions will include a parenthetical indicating the decision’s precedential status. There will be no citations to the United States Patents Quarterly (USPQ). Practitioners, however, should continue to adhere to the practice set forth in TBMP § 101.03 until further notice from the Board. (Emphasis added).

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TTABlogger comment: What about citations to TTAB and CAFC slip opinions?

Text Copyright John L. Welch 2024.

USPTO Seeks Candidates for Deputy Chief Administrative Trademark Judge at the TTAB

The USPTO is seeking applications for the position of Deputy Chief Administrative Trademark Judge at the Trademark Trial and Appeal Board. Applications are accepted until February 29, 2024. Further details may be found at the USA Jobs website, here.

Duties

As the Deputy Chief Administrative Trademark Judge you will have the opportunity to serve as a full voting member of the Trademark Trial and Appeal Board. You'll serve under the administrative direction of the Chief Administrative Trademark Judge, who reports to the Office of the Under Secretary and Director of the USPTO. As the DCATJ you will collaborate with various high level USPTO officials on varied agency initiatives, and with administrative trademark judges on a range of hearings, appeals and trial cases. You will work closely with a diverse team of judges, attorneys and Board managers on the full breadth of operations of the Board. You will also have the exciting opportunity to showcase your ability to develop and implement standard operating procedures (SOP) necessary for the internal operation of the Board.

If you are committed and motivated to make a positive impact and join an agency that drives economic growth, national prosperity and supports the development and collaboration among the diverse cultures of its employees, then this amazing next journey is just for you!

In this exciting role as the DCATJ:

  • You'll work closely with the CATJ to develop and deploy the strategic and policy initiatives of the Board, as needs may be identified by the Board or as strategic initiatives may be required by the Office of the Under Secretary and Director of the USPTO, to which the Board reports;
  • You'll provide leadership and guidance in executing comprehensive executive management, strategic planning, policy development, and financial functions that are essential to effective Board operations;
  • You'll develop and maintain quality, timeliness, and productivity performance standards for the administrative trademark judges, attorneys and support staff;
  • You'll collaborate with various stakeholders within the legal community including the Court of Appeals for the Federal Circuit, bar associations, etc.;
  • You'll develop procedures for program operations and oversee assignments and completion of functions;
  • You'll play a significant role in ensuring employee engagement and promoting diversity within the Board and through personnel outreach efforts;
  • You'll represent the agency by actively participating in public conferences and meetings and will prepare and deliver high-level presentations to foreign dignitaries or officials regarding the Board and its operations;
  • You'll lead the efforts in assigning panels of administrative trademark judges to adjudicate all trademark appeals and trademark opposition, cancellation, concurrent use and interference proceedings and periodically serve on such panels;
  • You'll serve as the Acting CATJ during the absence of the CATJ and serve on a variety of USPTO enterprise-level committees;
  • You'll provide expertise skills, leadership and oversight on high level performance and initiatives of the Trademark Trial and Appeal Board.

Read comments and post your comment here.

Text Copyright John L. Welch 2024.

Friday, February 16, 2024

Trade Name Use is not Trademark Use, Says TTAB

The Board affirmed a refusal to register the proposed mark EXPERIMENTAL AND APPLIED SCIENCES for “Dietary and nutritional supplements” on the ground that the mark is used solely as a trade name to identify applicant's business and therefore is not registrable. In re Hi-Tech Pharmaceuticals, Inc., Serial No. 88291540 (February 14, 2024) [not precedential] (Opinion by Judge Martha B. Allard).

A “trade name” is defined in Section 45 of the Trademark Act as “any name used by a person to identify his or her business or vocation.” 15 U.S.C. § 11. "A designation used merely as a trade name cannot be registered under the provisions of the Trademark Act." See, e.g., In re Letica Corp., 226 USPQ 276, 277 (TTAB 1985).

A designation may function as both a trade name and a trademark. “The distinction between trade name use and either trademark or service mark use is often a difficult one to make and often is nebulous in character.” In re Unclaimed Salvage & Freight Co., 192 USPQ 165, 167 (TTAB 1976).

Factors to consider include whether Applicant has used its full corporate name or entity designation, capitalized its name, utilized its name in the same lettering style as other matter, used its name in a significantly bolder or larger style of type, or displayed its name in a contrasting color. In re Univar Corp.,20 USPQ2d 1865, 1869 (TTAB 1991); see also TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1202.01 (Nov. 2023) and cases cited therein.

Each of applicant's specimens showed the mark displayed as depicted above, in only one location — on one line of a four-line group, all sharing the same color, identical or at least nearly identical font size and style, and left-hand and right-hand justification.

We agree with the Examining Attorney that “[i]ndeed, applicant would be hard-put to present the term in a less prominent manner.” Because the proposed mark appears in a four-line stack, i.e., with the lines sharing the same left- and right-hand justification, these lines form a visual unit which reinforces the impression that the proposed mark EXPERIMENTAL AND APPLIED SCIENCES should be read in conjunction with the line above it (indicating that the manufacturer is being introduced) and the lines below (providing contact information).

The fact that Applicant does not include a corporate designation, such as “Inc.”, does not detract from its perception as a trade name, particularly where, as here, the designation immediately follows the introduction “Developed and exclusively manufactured by”, which explicitly informs the consumer that what follows is the name of an entity.

The Board therefore found that "Applicant’s designation EXPERIMENTAL AND APPLIED SCIENCES functions solely as a trade name," and so it affirmed the refusal to register.

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TTABlogger comment: Is this a WYHA? Refusal seems as inevitable as a Caitlin Clark three-pointer

Text Copyright John L. Welch 2024.

Thursday, February 15, 2024

TTABlog Test: Is FOOTWARE Merely Descriptive of Footwear with Integrated Technology?

San Antonio Shoe, Inc. opposed Nike's application to register the proposed mark FOOTWARE for goods and service in classes 9, 38, and 42, all related to sensor and communication software, hardware, and services. Nike did not deny that "the FOOTWARE platform may be incorporated into a shoe," but it pointed out that the identification of goods and services makes no mention of shoes or footwear. How do you think this came out? San Antonio Shoe, Inc. v. Nike, Inc., Opposition No. 91263731 February 12, 2024 [not precedential] (Opinion by Judge Karen S. Kuhlke).

San Antonio argued that "[a]n ordinary consumer will understand that: (i) 'FOOT' refers to a product worn on the foot; (ii) 'WARE' refers to the advanced hardware and software technologies embedded in the product," and therefore "'footware' is merely descriptive for foot[-]worn wearable technology." Excerpts from third-party websites submitted by San Antonio included examples of consumer exposure to wearable technology in shoes and use of FOOTWARE in connection therewith.

The Board found that WARE is at least merely descriptive of computer software and hardware goods and services. The addition of FOOT "informs the consumer of a feature (or specification) of the computer software, hardware and services, that they are used in connection with footwear, the phonetic equivalent of footware."

This case presents the unusual situation where the double entendre engendered by the suffix “WARE” unambiguously informs the consumer the computer software and hardware, and computer services, the “Platform,” are for use in connection with footwear. In both meanings FOOTWARE or FOOTWEAR the term merely describes a feature of the computer goods and services.

The Board concluded that the combination of FOOT + WARE does not result in a separate distinctive meaning.

As to Nike's argument regarding the identification of goods and services, the Board observed that "[i]f the refusal of registration applies to any of the goods or services within the class, registration is refused as to the entire class." Nike admitted that its FOOTWARE platform may be incorporated in a shoe. That was enough for Section 2(e)(1) purposes:

[T]he fact that the “Platform” could be used with other networked devices and FOOTWARE may have a different meaning in a different context is not controlling. (citation omitted). Applicant’s identification of goods is broadly worded and encompasses “computer hardware modules for receiving, processing, and transmitting data in Internet of things electronic devices,” “electronic devices and downloadable computer software that allow users to remotely interact with other smart devices,” “telecommunications services, namely, transmission of data by means of telecommunications networks, wireless communications networks and the Internet,” and “cloud computing featuring software for connecting operating and managing networked devices via wireless or wired networks,” used in connection with footwear.

The Board concluded that FOOTWARE "merely describes a feature, function and purpose of the computer goods and services, namely, that they may be used with footwear or shoes." And so, the Board sustained the opposition.

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TTABlogger comment: If the shoe foots, ware it.

Text Copyright John L. Welch 2024.