Friday, May 27, 2022

Precedential No. 14: TTAB Allows Amendment to Applicant's Goods, Dismisses 2(d) Opposition to LUX ENHANCER

The Board has re-designated as precedential its March 22, 2022 decision denying Opposer Conopco's motion to re-open its discovery and trial periods, granting applicant's motion to narrow its identification of goods, and dismissing this Section 2(d) opposition to registration of LUX ENHANCER for certain hair care products in view of Conopco's registered mark LUX (Stylized) for "soap and body cleansing wash." Conopco, Inc. v. Transom Symphony OpCo, LLC DBA Beauty Quest Group, Opposition No. 91256368 (Redesignated May 23, 2022) [precedential].

Motion to Re-open: When Opposer Conopco failed to file its main brief in the case, the Board issued a show cause order under Rule 2.128(a)(3), asking why this failure should not be treated as a concession of the case. Opposer response indicated that it had not lost interest in the case, and so the Board discharged the show cause order.

The Board then turned to opposer's motion to re-open its discovery and testimony periods. The Board observed that one must show "excusable neglect" in order to justify the requested re-opening. Conopco failed to do. The Board, applying the Supreme Court's Pioneer factors, noted that Conopco waited nineteen months before seeking to re-open the discovery period. It offered no reason why it was not diligent in prosecuting the case. The Board concluded that "the reason for the delay was completely within Conopco’s control and this weighs strongly against finding excusable neglect."

And so the Board denied the motion to re-open.

Likelihood of Confusion: Conopco did manage to get its registration into evidence by way of its original pleading; of course, the opposed application was automatically of record.

The Board unsurprisingly found the involved marks to be "very similar in overall appearance, sound, connotation and commercial impression." As to the goods, the Board found the "non-medicated cosmetic soap" in applicant's original identification of goods to be broad enough to encompass Conopco's "soap and body cleansing wash." These overlapping goods are presumed to travel through the same trade channels to the same classes of consumers.

And so, the Board found confusion likely as to the goods in applicant's original identification of goods.

Applicant's Amended Goods: The Board next turned to applicant's proposed amendment to its identification of goods: namely, "hair care preparations excluding soap and body cleaning wash, and distributed through and used by hair stylists and other hair care professionals." The Board found no evidence that hair care preparations are related to Conopco's soap and body cleansing wash, nor evidence that the normal channels of trade for Conopco's goods would include distribution through hair stylists and other hair care professionals. "Accordingly, although the parties' marks are quite similar, we find that the proposed amendment would obviate a likelihood of confusion between the marks."

However, the Board found that applicant's proposed language “excluding soap and body cleaning wash” fell outside the scope of "hair care preparations." And so it amended applicant’s identification of goods to read: "Hair care preparations distributed through and used by hair stylists and other hair care professionals."

The Board then dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: Do you get the feeling that the Board really didn't want opposer to win after its feeble performance? Why was this case deemed precedential? For the lesson that you can't sit on your hands for nineteen months and expect the Board to be sympathetic?

Text Copyright John L. Welch 2022.

Thursday, May 26, 2022

TTABlog Test: Are Table Lamps and Lighting Fixtures Related for Section 2(d) Purposes?

The USPTO refused registration of the mark AJ LAMPS for "Lighting apparatus, namely, table lamps" [LAMPS disclaimed], on the ground of likelihood of confusion with the registered mark AJ for "Lighting fixtures; HID lighting fixtures." The Board unsurprisingly found the marks to be similar, but what about the goods? Applicant argued that the Board cannot presume that goods are related solely because they perform the same function of providing artificial light. How do you think the appeal came out? In re Louis Poulsen A/S, Serial No. 88933093 (May 18, 2022) [not precedential] (Opinion by Judge Angela Lykos).


Applicant relied on In re Princeton Tectonics, Inc., 95 USPQ2d 1509 (TTAB 2010) wherein the Board reversed a Section 2(d) refusal based on a determination that “personal headlamps” were unrelated to “lighting fixtures.” [TTABlogged here]. The Board, however, pointed out that the evidence of record here supports a finding of relatedness, whereas the evidence in Princeton Tectonics did not.

Even assuming that registrant's "lighting fixtures" does not encompass "table lamps," Examining Attorney Mariam Aziz Mahmoudi submitted ample evidence from third-party websites to show the goods are related (e.g., Pottery Barn, Ethan Allen, Bed Bath & Beyond).


[I]t is not uncommon for such entities to manufacture and offer for sale table lamps and lighting fixtures (e.g. chandeliers, flush mount and semi-flush mount fixtures) either via their self-branded direct-to-consumer websites or in their own self-branded brick-and-mortar retail stores.

The Board noted that, although some of the marks were house marks, they did not identify a broad range of goods, but were limited to home furnishings and decor. Moreover, the evidence showed that table lamps and lighting fixtures are complementary products: some manufacturers offer sub-brands in co-ordinating designs and styles.

Applicant argued that its goods are designed by a world-renowned architect (Danish designer Arne Jacobsen), noting that "[t]he base of the table lamp was originally intended to accommodate an ashtray but now contributes solely to the design." Consequently they are sold in different channels of trade to different classes of consumers than applicant's mundane lighting fixtures. The Board, however, pointed out that there are no such limitations or restrictions in the application or cited registration, and so these real-world facts were irrelevant.

Likewise, applicant's argument regarding the sophistication and care of its customers was irrelevant, since the identified goods encompass inexpensive products, and the Board must consider purchases by the least sophisticated consumer.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: How close is this to being a WYHA?

Text Copyright John L. Welch 2022.

Wednesday, May 25, 2022

USPTO Examination Guide 1-22: "Clarification of Examination Evidentiary Standard for Marks Refused as Generic"

The USPTO has issued Examination Guide 1-22, "Clarification of Examination Evidentiary Standard for Marks Refused as Generic." [pdf here]. This guide "clarifies that the standard for an examining attorney to establish a prima facie case of genericness is the same as for other refusals, namely, there must be sufficient evidence to support a reasonable predicate for the refusal under the applicable legal standard."

Prior USPTO examination guidance suggested a heightened, “clear evidence” standard for an examining attorney to establish a prima facie case of genericness. Any heightened standard would be inconsistent with both (1) the standard for third parties to challenge the registration of marks as generic and (2) the “reasonable predicate” meaning of “prima facie case” in the context of other refusals in examination.

This examination guide clarifies that an examining attorney does not bear a greater burden in supporting a position that an applied-for mark is generic beyond the evidentiary showing required by the relevant legal test.

***

To resolve the confusion, the USPTO will no longer use the terminology “clear evidence” in the TMEP to refer to the examining attorney’s burden to support genericness refusals.


Read comments and post your comment here.

TTABlogger comment: If you consider genericness as a subset of failure-to-function refusals, then this may be another step in the enlargement of the failure-to-function net.

Text Copyright John L. Welch 2022.

Tuesday, May 24, 2022

TTAB Affirms Section 2(e)(4) Surname Refusal of VESS for Educational Services

Although the Examining Attorney accepted applicant's claim of acquired distinctiveness under Section 2(f), the applicant maintained its right to contest the Section 2(e)(4) refusal of its mark VESS for various educational services. The Board, however, agreed with Examining Attorney Maureen J. Reed that VESS is primarily merely a surname, and so it affrrmed the refusal. In re Education First, Inc., Serial No. 87875275 (May 18, 2022) [not precedential] (Opinion by Judge Christopher Larkin).

The Board spent the first 12 pages of the decision explaining the history of the prosecution of this application. Turning to the substance of the surname, the Board applied the standard Benthin test, focusing first on what has become the most important factor, the "frequency of, and public exposure to" the proposed mark as a surname.

Census bureau data showed that 2300 people have the surname VESS, and online articles, webpages, and pages from Wikipedia and Linkedin referred to persons with the surname VESS. Applicant argued that the online evidence is hearsay, but the Board pointed out that the Federal Rules of Evidence (which define hearsay and govern when it is and is not admissible at a hearing or trial) “do not apply in ex parte appeals." Even it they did, the evidence submitted by the Examining Attorney was not offered for the truth of the matter stated (i.e., so-and-so did such-and-such), but only to show that the public was exposed to use of VESS as a surname.

The Board also rejected the argument that the USPTO must show that persons named VESS are famous or prominent. See In re tapio GmbH [TTABlogged here]. The Board noted that "[i]n the final analysis, however, whether or not 'Vess' is a 'rare' surname is of little importance because ''[e]ven a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname.'"

Applicant claimed that "vess" has other meanings, pointing to the Urban Dictionary. However, because the Urban Dictionary is a collaborative website, the Board requires corroboration of the entries (as it does with Wikipedia). The Board agreed with the Examining Attorney that "vess" does not have an "ordinary language" meaning "of the sort that would be found in a standard dictionary of American English."

Applicant also claimed that "vess" is a fanciful term that it coined as an acronym for the Spanish phrase “Vida Equilibrada Sentido y Sabiduría.” However, there was no evidence that consumers are familiar with the Spanish-language phrase, much less with the claimed abbreviation "V.E.S.S."

Finally, the Examining Attorney furnished evidence that VESS has the structure and pronunciation of a surname, namely, inclusion of the surnames “Hess,” “Ness,” “Bess,” “Gess,” and “Ress” in the LEXISNEXIS Public Records database, all of which surnames have the same four-letter, one-syllable structure as “Vess,” and when pronounced are quite similar in sound to “Vess.”

The Board therefore affirmed the Section 2(e)(4) refusal, but in light of the accepted Section 2(f) claim, the application will now be published for opposition.

Read comments and post your comment here.

TTABlogger comment: FWIW: I've never met anyone named Vess, Hess, Ness, Bess, Gess, or Ress.

Text Copyright John L. Welch 2022

Monday, May 23, 2022

TTAB Upholds Rejection of Specimens for "IT'S ABOUT THE FABRICS" for Performance Fabrics

The Board affirmed the USPTO's refusal to register the proposed mark IT'S ABOUT THE FABRICS for performance fabrics, finding that on applicant's specimens of use the phrase refers to a component of clothing rather than to fabric offered by itself. Moreover, applicant's website specimens of use were not acceptable because they provided only a means of getting information about applicant’s clothing items and not a means for ordering its fabrics. In re Striker Brands LLC, Serial No. 88519404 (May 19, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

All three of applicant's specimens of use included the phrase IT’S ABOUT THE FABRICS, the TM designation, and an identification of fabrics of specific types. Applicant argued that the specimens constituted point-of-sale displays, and further that the third specimen did not refer to the end products, but rather "merely gives details as to what the fabrics are made of, how the fabrics are made, the benefits of the fabrics, and the differences between the fabrics associated with the Applied-For Mark and other fabrics."A link labeled "Click here to inquire about our fabrics" led to information about applicant's fabrics.

Reviewing the submitted specimens, the Board agreed with Examining Attorney Jared M. Mason that the specimens identify a component of clothing, rather than raw fabric goods.

As used on Applicant’s first, second and third specimens, IT’S ABOUT THE FABRICS creates a direct association between integral features built into the finished clothing items, namely performance fabric and their features. The specimens indicate that Applicant’s clothing uses high performance fabrics in its finished clothing goods that contain, for example, Hydrapore laminate for protection from extreme elements, ultraviolet protection factor for protection from ultraviolet rays, and Permanent Cooling Technology with an automatic cooling function to make the wearer feel cooler.


In sum, "applicant’s use of ITS ABOUT THE FABRICS supports a finding that consumers who encounter the mark will perceive it as referring to an integral component of the finished clothing items, namely specialized performance fabrics built into the clothing, and not a reference to the raw materials--fabric--used for the manufacture of clothing."

As to applicant's (third) website specimen, "[i]nformation that we would consider essential to a purchasing decision is absent." See In re Siny Corp. [TTABlogged here].


There is no information at all regarding the price, or even a range of prices, for fabric goods. There is no information regarding the weight or thickness of the fabric or the dimensions in which a bolt of the fabric would be available. There is no information about the minimum quantities one may order, how one might pay for the products, or how the goods would be shipped. We find that customers would need a great deal more information about the Permanent Cooling Technology fabric before they would be prepared to purchase it.

And so, the Board affirmed a refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2022.

Friday, May 20, 2022

TTAB Reverses Section 2(a) False Association Refusal of "WILL AND KATE PHOTOGRAPHY" for Photography Services

The Board reversed a Section 2(a) refusal of the mark WILL AND KATE PHOTOGRAPHY for "photograph services" [PHOTOGRAPHY disclaimed], rejecting the USPTO's position that the mark may falsely suggest a connection with William Windsor, aka Prince William, Duke of Cambridge, and Kate Middleton, aka Catherine, Duchess of Cambridge. The evidence failed to establish that "WILL AND KATE" points uniquely and unmistakably to William Windsor and Kate Middleton. In re Will and Kate Photography LLC, Serial No. 90568132 (May 18, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo).

Section 2(a), in pertinent part, bars registration of "matter which may . . . falsely suggest a connection with persons, living or dead . . . ." Here, the USPTO had to show that:
 

(1) Applicant’s mark is the same as, or a close approximation of, the name or identity previously used by another person(s) or institution, in this case William Windsor and Kate Middleton;
(2) Applicant’s mark would be recognized as such, in that it points uniquely and unmistakably to William Windsor and Kate Middleton;
(3) William Windsor and Kate Middleton are not connected with the services offered by Applicant under the mark; and
(4) the fame or reputation of William Windsor and Kate Middleton is such that, when Applicant’s mark is used with Applicant’s services, a connection with them would be presumed. 


Under the first factor, based on various webpage references to "Will and Kate," the Board found that "Will and Kate" is a name or identity of William Windsor and Kate Middleton." Noting that the word "photography" is generic, the Board then found that applicant's mark is a close approximation of William Windsor's and Kat Middleton's names or identities.

The next question was whether the proposed mark will be recognized by purchasers of applicant's photography services as pointing uniquely and unmistakably to William Windsor and Kate Middleton. Applicant submitted twelve webpages evidencing that other businesses use the name "Will and Kate" because (like applicant) they are owned by people who happen to be named Will and Kate.

The Board pointed out that the evidence does not point to "widespread" use of "Will and Kate" to refer to William Windsor and Kate Middleton. In fact the evidence suggests that the two are commonly referred to as "William and Kate."


 
The Examining Attorney pointed out that applicant displays a crown and the phrase "We Treat You Like Royalty" in promoting its services. Applicant responded that this slogan is commonly used by event service providers. The Board sided with Applicant, concluding that applicant's mark does not point uniquely to William Windsor and Kate Middleton.

Given the number of third-party uses of “Will and Kate” formatives for a variety of goods and services, relevant consumers will perceive the designation as identifying couples or pairs of individuals named “Will and Kate.” Applicant’s use of its mark is similar to the use prevalent among these third parties. Accordingly, the requirement that the name or identity serve to point uniquely to a single entity has not been satisfied.

As to the third element of the Section 2(a) test, applicant conceded that William Windsor and Kate Middleton are not connected with its services. As to the fourth, the Examining Attorney asserted that Kate Middleton is known for her photography, and therefore a connection with applicant would be presumed. The Board, however, found the evidence insufficient to prove that William Windsor and Kate Middleton "will be associated with Applicant's photography services, despite their fame and Kate Middleton's interest in photography."

And so, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: Suppose that a sub-set of Americans, namely British-Americans, would make the association. Would that be enough to sustain the refusal?

Text Copyright John L. Welch 2022.

Thursday, May 19, 2022

TTAB Affirms "EVERLAST" Refusal on Res Judicata and Section 2(d) Grounds

The Board affirmed the USPTO's refusal to register the mark EVERLAST & Design for "wet well mounted pumping stations; wastewater pumping stations; sewage pumping stations" on two grounds: res judicata, since the Board had already affirmed the same refusal of the same mark for the same goods; and likelihood of confusion (again) with the same registered mark EVERLASTING for "valves for controlling the flow of fluids." In re Smith & Loveless, Inc., Serial No. 88497482 (May 16, 2022) [not precedential] (Opinion by Judge Christopher Larkin).

On June 26, 2019,  the Board affirmed a Section 2(d) refusal to register applicant's mark, finding confusion likely with the EVERLASTING mark. (Opinion here). In that appeal, the Board refused to consider evidence of third-party registrations and website evidence that was not made of record during prosecution of the application. Undaunted, on July 2, 2019, the applicant applied to register the same mark for the same goods (asserting in this appeal that the second application was filed "so that full consideration to Applicant's arguments could be had."

Examining Attorney David A. Brookshire issued the same Section 2(d) refusal, and applicant filed this appeal. The Board remanded the case to the Office for consideration of the applicability of res judicata (a/k/a claim preclusion) based on the prior appeal. The Examining Attorney then added the ground of res judicata to the final refusal.

The primary additions to the record on this second appeal were the third-party evidence of applicant and some additional third-party webpages made of record by the Examining Attorney.

Res judicata: Under the doctrine of res judicata, "a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies on the same cause of action." The Board found last year's SolarWindows decision [TTABlogged here] to be procedurally on point. There, two years after a Board decision upholding a mere descriptiveness refusal of POWERCOATINGS for certain chemicals, the applicant filed a new application for the same mark and goods. The Board affirmed the second refusal on the ground of res judicata, ruling that certain new arguments made by the applicant did not "demonstrate the required material change of circumstances or conditions" that would avoid res judicata, since those arguments could have been made in the first appeal.

Similarly, here the additional evidence was admittedly available when the prior application was pending, and so it did not constitute a material change of circumstances that would justify not applying res judicata. "A losing party does not get a second bite of the apple simply because they can find [] new and arguably more persuasive evidence to present in the second proceeding." Here, the evidence was not even "new."

Likelihood of Confusion: The Board went on to consider the Section 2(d) issue, including the additional evidence, since the CAFC has warned that "particular caution is warranted" when applying claim preclusion. The Board came to the same conclusion as previously.

Applicant relied primarily on two third-party registered marks: Teksan, everlasting company (stylized) and EVERLAST SPAS. However the impact of third-party registrations on the commercial strength of a mark depends on the usage of the mark, and the evidence submitted by applicant did not show use of these marks.

As to the inherent strength of the cited mark EVERLASTING, the "handful" of third-party registrations had little probative value: they were a "far cry from the large quantum of evidence" held to be "significant" in the Jack Wolfskin and Juice Generation cases.

In sum, the third-party evidence was insufficient to show that the cited mark is either commercially or conceptually weak or is entitled to only a narrow scope of protection. As to the remaining DuPont issues, the Board saw no reason to change its findings from those in the first decision.

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

Read comments and post your comment here.

TTABlogger comment: Let's hope this second affirmance will be everlasting.

Text Copyright John L. Welch 2022.

Wednesday, May 18, 2022

Twitter Poll Results: "After attending the INTA Annual Meeting in DC, did you test positive for Covid?"

I ran a Twitter poll for the last several days, asking this question: After attending the INTA Annual Meeting in DC, did you test positive for Covid? The results are set out below. I take no position regarding the statistical significance of these results, but look forward to comments regarding same.

If these poll results hold true for the entire 6,800 people in attendance, that would mean more than 1,750 attendees tested positive for Covid. The ramifications of that number of infections are troublesome, to say the least.

A few side notes: Several people have told me that, based on conversations with others, they think the positive rate was even higher: closer to 50%. One of the surprising things I heard is that the opening speaker, at the end of his speech, told his listeners that each of them should hug eight other people in the room. Not a good idea, I think.

Read comments and post your comment here.

Text Copyright John L. Welch 2022.

Tuesday, May 17, 2022

TTABlog Test: Is "DIGITAL VISUAL OBSERVER" Merely Descriptive of Drone Managing and Tracking Software?

The USPTO refused registration of the proposed mark DIGITAL VISUAL OBSERVER for software and hardware for managing, controlling, and tracking drones, including collision avoidance and object detection, finding the mark merely descriptive of the goods and services. Examining Attorney Megan Mischler contended that the mark describes features of the goods and services that perform the functions of a person who is a member of a drone crew tasked with visually monitoring a drone in flight. Applicant Skydio argued that because its drones monitor themselves, there is no "observer," and furthermore that the mark is incongruous and/or a double entendre. How do you think this came out? In re Skydio, Inc., Serial No. 88928113 (May 10, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo).

Dictionary definitions and third-party webpages submitted by the Examining Attorney established that a "Visual Observer" is "a member of a drone crew tasked with maintaining visual line of sight with the drone during operation. The VISUAL OBSERVER serves as a second set of eyes, monitoring the drone in flight during operation by the remote pilot in command (PIC)." The Board found that DIGITAL VISUAL OBSERVER describes "an electronic, computer readable and controllable, or DIGITAL, version of an individual tasked with determining a drone’s location and air traffic hazards, or VISUAL OBSERVER. with determining a drone’s location and air traffic hazards, or VISUAL OBSERVER."

Applicant’s computer hardware, software, drones and its services of providing software for observation, detection and collision avoidance perform, inter alia, the functions of a computer readable or DIGITAL version of a human VISUAL OBSERVER. The proposed mark DIGITAL VISUAL OBSERVER merely describes a feature or characteristic of, at least, Applicant’s computer hardware, software, drones and the services of providing use of non-downloadable software, all used for maintaining the position of drones and avoiding collisions and other air traffic hazards.


Applicant Skydio argued that its goods and services use cameras and software that "allow the drone itself to monitor its own surroundings in order to automatically avoid collisions and detect objects." The Board was not impressed. "Applicant acknowledges that its goods and services allow drones to detect objects and avoid collisions. These are some of the functions performed by a human VISUAL OBSERVER."

The Board saw no incongruity in Skydio's proposed mark, nor did it perceive a double entendre: the mark "immediately describes computer hardware and software, either downloadable or available as a service, as well as drones, that feature the ability to monitor a drone in flight to fix its position and avoid collisions and other air traffic hazards."

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.

Monday, May 16, 2022

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

The Board continues to run at an affirmance rate of about 95% for Section 2(d) appeals. Here are three more for your consideration. How do you think they came out? [Results in first comment].



In re Daniel Novela, Serial No. 90134566 (May 10, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson) [Section 2(d) refusal of CASA DE NOVELAS for "eyewear retainers; Eyewear, namely, sunglasses, eyeglasses and ophthalmic frames and cases therefor" [CASA disclaimed], in view of the registered mark NOVELLA for "Ophthalmic lenses for eyeglasses."]

In re Milstead Technologies, LLC, Serial No. 88933287 (May 10, 2022) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of SALEQUICK.COM & Design for "Application service provider (ASP) featuring e-commerce software for businesses for use as a payment gateway that authorizes processing of credit cards, gift cards debit cards or direct payments to merchants," in view of the registered mark QUICKSALE for "providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic payments."]

In re Flexa Network Inc., Serial No. 90002396 (May 13, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of FLEXA CAPACITY for "Providing electronic processing of collateralized cryptocurrency payments via a secure global computer network; collateralized cryptocurrency exchange services," in view of the registered mark CAPACITY for, inter alia, "electronic payment, namely, electronic processing and transmission of bill payment data" and "exchange services in the nature of execution, clearing, reconciling and settlement of trade and financial transactions via a global network involving . . . securities . . . and/or related financial instruments."]



Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.