Friday, January 22, 2021

TTABlog Test: Is COMPOSTA (Italian) Merely Descriptive of Compostable Containers?

The USPTO refused to register the proposed mark COMPOSTA for compostable containers made of kraft paper or plastic for use in the food service industry, finding the mark to be merely descriptive of the goods under Section 2(e)(1). Examining Attorney Sahar Nasserghodsi relied on the doctrine of foreign equivalents, maintaining that "composta" is an Italian word meaning "compost," "mixture," or "compound." Applicant provided other definitions, including “composed” and “compote,” and also pointed to the issuance of registrations for COMPOSTABOX and COMPOST-A-PAK without disclaimer of COMPOST. Cosa è successo? In re Elkay Plastics Co., Inc., Serial No. 88573025 (January 8, 2021) [not precedential] (Opinion by Judge Mark Lebow).

Contrary to Applicant Elkay's position, application of the doctrine of equivalents is not precluded when a term has multiple meanings.

“The doctrine is applicable in this case because the record shows that the relevant English translation is literal and direct, the word comes from a common, modern language, and there is no contradictory evidence of another relevant meaning.” Sadoru Grp., 105 USPQ2d at 1485. Many words have multiple meanings. Hence, the applicable definition of a word depends on the context of its use.

See, for example, S. Malhotra, 128 USPQ2d 1100, 1105 (affirming refusal to register , Greek equivalent of English words “marriage, “matrimony,” and “wedding,” as merely descriptive of applicant’s jewelry and watches despite alternate meanings, including “small deer,” “buck,” and “a sexual ritual that plays out a marriage between a god and a goddess”). 

The Board found that the proposed mark COMPOSTA has definite English translations as “compost,” “mixture,” or “compound.”

There was no dispute that Italian is a common, major language. The Board concluded that "the ordinary American purchaser would 'stop and translate [COMPOSTA] into its English equivalent.'" Palm Bay, 73 USPQ2d at 1696.

Third-party internet evidence showed that "the term COMPOST, and its use in adjective form as COMPOSTABLE, is descriptive of goods with the feature and characteristic of being used for compost and/or is compostable." For example, Eco Products, a provider of compostable liners and bags made with renewable resources, stated: "These compostable plastic bags are made with renewable resources, BPI certified compostable and compliant."

Elkay pointed to the USPTO's issuance of registrations for COMPOST-A-PAK and COMPOSTABOX for similar goods, without disclaimers of COMPOST, but the Board noted that because those are unitary marks, disclaimer was not required. In any event, the issuance of those registration is not conclusive as to the examination of the instant mark. "In a final analysis, we are not so much concerned with what has been registered, but rather what should or should not be registered."

Based on the record in its entirety, we find that consumers of Applicant’s compostable pouches, containers and films who are familiar with the Italian language would immediately understand COMPOSTA to convey information about a feature or characteristic of those goods, namely, that they may be used as compost and/or are compostable. Because the proposed mark immediately conveys knowledge about Applicant’s goods, it is merely descriptive under Trademark Act Section 2(e)(1).

And so the Board affirmed the refusal.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2021.

Thursday, January 21, 2021

TTABlog Test: Which One of These Three Section 2(d) Refusals Was Reversed?

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods or services. Here are three recent decisions in appeals from Section 2(d) refusals. One of the refusals was reversed. Which one? [Answer in first comment].

In re Asept Air, Inc. , Serial No. 88265476 (January 6, 2021) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of ASEPT-AIR for “Air purification machinery units for residential, commercial and industrial use and accessories, namely, filters for air purification" in view of the registered mark shown below for "UV light disinfection systems comprised primarily of ultraviolet lamps for use in medical and healthcare facilities; Air purifiers for commercial and domestic use."] 
In re Shenzhen Airsmart Technology Co., Ltd., Serial No. 87427315 (January 14, 2021) [not precedential] (Opinion by Judge Albert C. Zervas). [Section 2(d) refusal of MUZEN in stylized form (below left) for "Acoustic membranes; Blank CD-ROMs for sound or video recording; Cabinets for loudspeakers; Compact disc players; Headphones; Horns for loudspeakers; Juke boxes for computers; Personal stereos; Portable media players; Sound transmitting apparatus," in view of the registered mark MUSES & Design (below right) for "Integrated circuits; operational amplifiers; 3-D surround-sound processors; electronic circuits; audio amplifiers; audio circuit boards; computer accelerator boards; and computer expansion boards." [N.B. "muzen" is Dutch for "muse"]].
In re Anastasia Confections, Inc., Serial No. 87588050 (January 14, 2021) [not precedential] (Opinion by Judge Peter W. Cataldo). [Section 2(d) refusal of the mark shown below for “coconut and chocolate confections; cookies; chocolates; chocolate snacks; baked goods, namely, cookies, chocolate-based bakery goods, and coconut-based bakery goods" in view of the registered mark THE TASTE OF PARADISE for "processed macadamia nuts."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2021.

Wednesday, January 20, 2021

TTAB Affirms Geographical Descriptiveness Refusal of RENOAIR for Air Transport Services: Distinctiveness for Model Airplanes Not Transferable

American Airlines applied to register the mark RENOAIR for "air transport of passengers, cargo and freight" under Section 2(f) of the Lanham Act, claiming that acquired distinctiveness transferred to this mark from AA's registration of the same mark for "toys, namely model airplanes." In view of the Section 2(f) claim, there was no issue as to geographical descriptiveness under Section 2(e)(2). The Board found that AA failed to carry the "heavy burden" to establish that acquired distinctiveness will transfer. In re American Airlines, Inc., Serial No. 88298380 (January 11, 2021) [not precedential] (Opinion by Judge Michael B. Adlin].

Even without the Section 2(f) claim, the record left the Board with no doubt that  (1) the primary significance of the RENOAIR is the name of a place known generally to the public; (2) the public would make a services/place association, i.e. it would believe that the services  originate in that place ; and (3) the source of the services is the geographic region named in the proposed mark. "The addition of AIR to the term RENO is of no consequence with respect to geographic descriptiveness, as it does not change the geographic meaning of Applicant’s proposed mark, being merely descriptive of or generic for Applicant’s identified 'air transport' services."

Turning to the issue of acquired distinctiveness, the Board noted that a Section 2(f) claim is usually not made in an intent-to-use application until after an amendment to allege use or a statement of use is filed. However, acquired distinctiveness can be established if the applicant "can show that same mark acquired distinctiveness for sufficiently similar or related goods, and that this acquired distinctiveness will
transfer to the goods specified in the application when that mark is used in connection with them." An applicant faces a "heavy burden;" in fact, "the required showing for acquired distinctiveness to 'transfer' to new products is a rigorous one."

Thus, Applicant is required to do more than establish merely that there is some type of relationship between the goods and services . It must show the extent to which the goods and/or services in the intent to use application are related to the goods and/or services in connection with which the mark is distinctive, and that there is a strong likelihood that the mark’s established trademark function will transfer to the related goods and/or services when use in commerce occurs.” (Emphasis by the Board).

Trademark Rule 2.41(a)(1) states that a prior registration "may be accepted as prima facie evidence of distinctiveness in appropriate cases." (Emphasis by the Board). Here the prior registration was not enough.  

Applicant AA asserted that model airplanes and air transport services are related based on evidence that a number of airlines offer air transport services and model airplanes under the same mark. The Board, however, observed that airlines "sell model airplanes as ancillary products, on portions of their websites devoted not to air transport, but to general consumer products bearing the airline’s mark."

While the Prior Registration issued almost 18 years ago, that is not enough without more to show that the mark has acquired distinctiveness for model airplanes, much less that there is a “strong likelihood” that any acquired distinctiveness will transfer.

AA pointed to a 2015 Board opinion finding a likelihood of confusion between TWA for airline services and model airplanes. [TTABlogged here]. The Board pointed out that not only was that decision nonprecedential, but it also addressed a different issue. Here, the Board was concerned with whether Applicant AA made a "rigorous" showing that RENOAIR has acquired distinctiveness for model airplanes and that model airplanes are "sufficiently similar or related" to air transport services that the acquired distinctiveness will transfer to air transport services.

The Board concluded that Applicant AA did not meet its heavy burden to show that "any distinctiveness its mark may have acquired for model airplanes will transfer to the air transport services in connection with which Applicant intends to use its proposed mark." And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I'm puzzled by the Board's statement that AA has to prove that the mark acquired distinctiveness for model airplanes. It's registered on the Principal Register, so isn't the mark presumed to be distinctive?

Text Copyright John L. Welch 2021.

Tuesday, January 19, 2021

TTAB Sustains Mere Descriptiveness Opposition to "ENHANCED PUSH-TO-TALK" for Telecommunication Services

The Board sustained oppositions to registration of ENHANCED PUSH-TO-TALK for telecommunication services on the ground of mere descriptiveness under Section 2(e)(1), and to AT&T ENHANCED PUSH-TO-TALK for the same services, in the absence of a disclaimer of “ENHANCED PUSH-TO-TALK. (Applicant AT&T had already disclaimed PUSH-TO-TALK in both applications.) Because ENHANCED PUSH-TO-TALK is "highly descriptive" of AT&T's services, the Board found that AT&T's 'impressive advertising and promotional efforts and expenditures, sales numbers, and relative market share" were insufficient to establish acquired distinctiveness in that term. Sprint Communications Company L.P. v. AT&T Intellectual Property II, L.P., Opposition Nos. 91241178 and 91241179 (January 8, 2021) [not precedential] (Opinion by Judge Jonathan Hudis).

AT&T's disclaimer of PUSH-TO-TALK constituted an admission that the term is merely descriptive of its services. The Board observed that "Push-to-talk ('PTT') is a service that essentially turns a cellular phone into a two-way radio. "PTT services utilize a cellular phone network to allow subscribers to use their phones like walkie-talkies anywhere with cellular coverage" so that a user may a user may communicate with another user via the press of a single button.

Opposer's witness testified that AT&T's services offers a number of added features to push-to-talk: "PTT support over 3G and 4G networks, availability of PTT communications over a WiFi network, a desktop, web-based PTT interface, PTT support over a wide variety of devices, and PTT support over a widely-available cellular, as opposed to a proprietary, network." He declined to say that these are "enhancements," but he recognized that "'enhance' ... means [to] improve over something." 

Based on the dictionary definition, the Board found that the term “enhanced” means “to increase or improve in value, quality, desirability, or attractiveness.” "It is this “dictionary sense” in which “enhanced” is being used in the telecommunications market, and it is not being used in a source-identifying manner by Applicant."

Third-party registrations for marks that included the word "enhanced" were too few to be persuasive regarding descriptiveness. More persuasive was the number of descriptive uses by AT&T, third parties, and the media of "enhanced push-to-talk" or the combined use of "enhanced" and "push-to-talk" (or the acronym "PTT") in press releases, a patent, advertising materials and press reports. The Board also noted the laudatory nature of "enhanced."

[W]e find each of the words comprising the term “enhanced push-to-talk,” “enhanced” and “push-to-talk,” is highly descriptive of telecommunication services of the type provided by Applicant. Moreover, when combined, we further find the composite terminology “enhanced push-to-talk” is, at the very least, highly descriptive of a walkie talkie type service provided over a cell phone accompanied by additional features and functionality.

Turning to the issue of acquired distinctiveness, AT&T has used the proposed marks since 2012,  with hundreds of thousands of individual subscribers and tens of thousands of corporate, government entity, and college/university subscribers, resulting in hundreds of millions of dollars in annual revenue from these subscribers. It has spent tens of millions of dollars in promotion and has captured a significant share of the wireless business market. AT&T enjoyed significant media attention when the service was launched.

The Board found that "the nature and number of descriptive uses in the record by Opposer and third-parties of 'enhanced push-to-talk,' 'enhanced' and 'push-to-talk' indicate that use by Applicant has not been 'substantially exclusive' as is required for a showing of acquired distinctiveness." Therefore, "enhanced push-to-talk” is not perceived by consumers as an indicator of a single source.

Moreover, AT&T's length of use of the proposed marks "is outweighed by the other evidence showing that 'enhanced push-to-talk' is highly descriptive, and the absence of any additional direct evidence showing recognition of the wording by consumers as a source indicator for Applicant’s telecommunication services"

And so, the Board sustained the opposition as to the ENHANCED PUSH-TO-TALK application and allowed AT&T 30 days within which to submit a disclaimer of "ENHANCED PUSH-TO-TALK" in the other application.

Read comments and post your comment here.

TTABlogger comment: Do you think ENHANCED PUSH-TO-TALK is generic for these services? like SMART KEYBOARD? [TTABlogged here].

Text Copyright John L. Welch 2021.

Friday, January 15, 2021

CAFC Affirms TTAB: NORTH 61 Confusable with 66⁰NORTH for Clothing and Clothing Store Services

The U.S. Court of Appeals for the Federal Circuit ("CAFC") upheld the TTAB's decision (here) sustaining an opposition to registration of the mark NORTH 61 (in standard characters) for various clothing items and for retail store services featuring clothing,, finding a likelihood of confusion with the regsitered mark 66°NORTH (in standard characters) for T-shirts, shirts, and trousers, and for retail clothing store services. North 61 LLC v. Sjoklaedagerdin Hf., 2021 USPQ2d 52 (Fed. Cir. 2021) [not precedential].

Likelihood of confusion is a legal determination based on underlying findings of fact relating to the DuPont factors. The CAFC reviews the Board's factual findings for substantial evidence but it weighs the factors de novo. On this appeal, Appellant North primarily challenged the TTAB's analysis regarding the similarity of the marks (factor one) and the fame (i.e., strength) of Sjoklaedagerdin's mark (factor six).

As to the first DuPont factor, North claimed that the Board failed to compare the marks in their entireties, and in particular that the Board failed to consider the degree symbol in Sjoklaedagerdin's mark. According to North, the degree symbol renders 66⁰NORTH substantially different from NORTH 61. The Board disagrees. The Board acknowledged that Sjoklaedagerdin's mark, "which is verbalized as the word 'degree,'" but it gave the symbol less weight because it is "so small an appears in the middle of the mark." The Board concluded that any difference created by the symbol was outweighed by the similarities.

North next argued that the Board ignored evidence that the parties’ marks convey distinct commercial impressions: i.e., that NORTH 61 connotes Minnesota Highway 61, “a scenic, northbound highway” that “runs through Minnesota,” whereas 66⁰NORTH connotes Icelandic imagery because “66⁰” “derives its name from the latitudinal line of the Arctic Circle which touches Súgandafjörður,” the “town in Iceland where [Sjoklaedagerdin] was formed.” The CAFC disagreed with North. The Board expressly addressed this argument but found it unimpressive, since there was no evidence (other than testimony of North's own witnesses) regarding consumer understanding of the marks. The Board noted that North's "intended interpretation of the mark is not necessarily the same as the consumer perception of it."

The CAFC ruled that substantial evidence supported the Board's finding that the marks are similar in sound, appearance, meaning, and commercial impression.

As to the sixth DuPont factor, North contended that the Board improperly disregarded evidence of third-party registrations of marks similar to 66⁰NORTH, which registrations demonstrate that the mark is “weak because it is one of so many similar marks” registered for apparel. Again, the court disagreed. The Board determined that the third-party registrations were of limited probative value because none included 66⁰ or 66 DEGREES with the word NORTH, and many of the marks included substantial additional matter. Therefore it was logical for the Board to afford less weight to this evidence "given the Board's findings that the marks were dissimilar to Sjoklaedagerdin's mark." The CAFC concluded that substantial evidence supported the Board's finding with respect to the sixth DuPont factor.

Because the Board did not err in its conclusion that registration of North’s mark would create a likelihood of con-fusion and because its evaluation of the relevant DuPont factors is supported by substantial evidence, we affirm.

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TTABlogger comment: Do you think the marks are confusingly similar? 
Text Copyright John L. Welch 2021.

Thursday, January 14, 2021

TTAB Deems Apple's SMART KEYBOARD Generic for .... Guess What?

In a 75-page opinion, the Board affirmed a refusal to register the proposed mark SMART KEYBOARD on the Supplemental Register for "Accessory for a handheld mobile digital device, namely, a protective and decorative cover for a tablet computer that functions as a computer stand and incorporates a keyboard" [KEYBOARD disclaimed], on the ground of genericness. The Board ruled that the record evidence supported "a finding that purchasers and prospective purchasers understand the term SMART KEYBOARD as referring to technologically advanced keyboards, the genus of goods that includes Applicant’s goods," which comprise "a subcategory of such genus." In re Apple Inc., Serial No. 86857587 (January 13, 2020) [not precedential] (Opinion by Mark Lebow).


Since Apple sought registration on the Supplemental Register, the question for the Board was whether SMART KEYBOARD is capable of distinguishing Applicant’s goods from those of others. “Generic terms do not so qualify.” The Board applies a two-part test to determine genericness: "(1) what is the genus (class or category) of the goods or services at issue? and (2) does the relevant public understand the designation primarily to refer to that genus of goods or services?"

The Genus: Examining Attorney Robert A. Cohen correctly noted that, while “a proper genericness inquiry focuses on the description of [goods] set forth in the [application], Magic Wand, 19 USPQ2d at 1552, other relevant evidence of record may be considered in order to properly determine the genus at issue." The Board sided with the Examining Attorney in finding that “technologically advanced keyboards for mobile digital devices” is an accurate description of the genus. The fact that Apple's device included additional features does not make it not a keyboard. 

Applicant, here, appears to have purposely “structured” its identification of goods in a manner that deemphasizes the core function of its goods in order to avoid a likely finding of genericness. However, we need not turn a blind eye to the reality of what is offered by Applicant’s description of goods as shown by the evidence, including Applicant’s own evidence.

The Relevant Public's Understanding: The Board agreed with the Examining Attorney that the relevant public comprises ordinary consumers who purchase applicant’s goods. The evidence of record included dictionary definitions, third-party Internet webpages and publications in the nature of articles, reviews, and retail promotions, and a variety of patents and patent applications. The Board concluded that Apple's particular keyboard (and its feature of being foldable into a stand and cover) "is but one of many technologically advanced keyboards that may be described as a smart keyboard."
Applicant challenged the USPTO's evidence on various grounds and provided a substantial amount of evidence in support of its argument that “the public recognizes SMART KEYBOARD as its trademark for the identified goods.” However, the Board

Applicant’s response in this case to the Examining Attorney’s evidentiary showing is fairly impressive, as was the applicant’s in Merrill Lynch. However, unlike the record in Merrill Lynch, in this appeal, we have unrebutted and unexplained generic use of the term SMART KEYBOARD or other more specific wording (e.g, smart wireless keyboard), both before and subsequent to Applicant’s adoption of that term as its trademark, by no less than ten other companies (e.g., Always Innovating, Das, OneBoard, Samsung, Belkin, Satchi, ONHI, Logitech, Viboton, Nums, Zagg Rugged, and Raydem) to describe their products; numerous reviews of technologically advanced third-party keyboards described as “smart keyboards,” many of which include references or comparisons to Applicant’s product; scores of articles and publications discussing existing or anticipated technologically advanced keyboards as “smart keyboards”; and more than a dozen patents that use “smart keyboard” as a term of art to describe a variety of technologically advanced functioning keyboards. Thus, numerous keyboard users, other than Applicant’s customers encounter SMART KEYBOARD used in a generic manner.

 And so the Board affirmed the refusal to register.
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TTABlogger comment: A thorough opinion, but I suspect this will be appealed.

Text Copyright John L. Welch 2021.

Wednesday, January 13, 2021

Rejecting Claim of Acquired Distinctiveness, TTAB Affirms Failure-to-Function Refusal of Melissa & Doug's "Red Oval" Background Design

The Board affirmed a refusal to register the proposed mark shown below, consisting of a red oval with a white border (acting as a carrier for the words “MELISSA & DOUG") for various toys, arts and crafts, and hobby kits, and for online retail store services, on the ground that the mark comprises a background design that fails to function as a mark]. Applicant did not claim inherent distinctiveness but instead sought registration under Section 2(f). The Board found its proofs inadequate. In re Melissa & Doug, LLC, Serial No. 87915069 (January 8, 2021) [not precedential] (Opinion by Judge Christen M. English).

Because the proposed marks consists of a common geometric shape, it is "not the type of mark likely to be perceived as a source identifier." Therefore, applicant had a "heavy burden to show acquired distinctiveness." The Board applied the Converse factors in determining whether applicant's evidence, viewed as a whole, established acquired distinctiveness.

As to applicant's goods, the Board first considered 31 consumer declarations collected at a toy store in New York City. The declarations contained blanks for consumers to fill in by hand. The declarants stated that they recognized the red oval, by itself, as indicating a Melissa & Doug product. The Board found that "while 31 declarants is a small number of relevant consumers," the declarations were "clear, reliable and probative of consumer perception, albeit on a limited basis."

Applicant asserted that it has been using the proposed mark since 2003, and in each year from 2003 to 2008 it sold more than 100 million units with annual sales averaging $300M. The Board found that this constituted "some evidence" for applicant's Section 2(f) claim, but "[i]t is important to note ... that Applicant has shown no use of the Proposed Mark separate and apart from the Composite Mark." [i.e.,  without the words Melissa & Doug within the oval.


As to the exclusivity of use of a red oval, Examining Attorney Katherine M. DuBray submitted 17 third-party registrations for marks including a red oval, but the Board noted that there was no proof that the marks are in use, and so they were not probative on this particular point. However, these registrations "are relevant to the conceptual strength of the Proposed Mark and reinforce our conclusion that the Proposed Mark is not the type of mark likely to be perceived as a source indicator, and therefore, Applicant’s burden to establish acquired distinctiveness is quite high."

In sum, Applicant’s length, degree, and substantial exclusivity of use provides some support for Applicant’s claim of acquired distinctiveness, but the fact that the Proposed Mark is always displayed as part of the Composite Mark and never as a standalone mark, lessens the probative value of this evidence.

The number of applicant's social media followers was "not that impressive" and "disproportionately small compared to Applicant’s sales volume." Moreover, its social media promotions always include the wording “Melissa & Doug” as part of the logo. Applicant did not submit advertising figures, stating that it does not advertise "through traditional television or print media." The Board noted that [a]dvertising expenditures, particularly related to any 'look-for' advertising, would be important where, as here, Applicant seeks to register a mark that is so inherently non-distinctive."

Although applicant's sales figures were "substantial" and "impressive," their probative impact is "limited to some degree" by the fact that the red oval is always accompanied by MELISSA & DOUG within the oval.

Applicant's evidence of supposed copying by third parties was unpersuasive, since the third-party products also copied various trade dress elements in addition to the red oval.

On this record, we cannot find that consumers would view the Proposed Mark as an indication of origin separate and apart from the wording with which it appears. In sum, given the Proposed Mark is comprised of a common oval shape and the colors red and white, and Applicant uses the Proposed Mark exclusively as a carrier for the word mark MELISSA & DOUG, we find that more is needed to establish acquired distinctiveness.

As to applicant's services, applicant submitted very little evidence regarding sales under or use of the mark, and so the Board could not find that applicant had established acquired distinctiveness.

The Board therefore affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: High burden of proof + no survey evidence + no look-for advertising = no trademark registration. 

Text Copyright John L. Welch 2021.

Tuesday, January 12, 2021

The Top Ten TTAB Decisions of 2020 (Part II)

This is the second of two posts; the first five selections were posted here yesterday. Additional commentary on each case may be found at the linked TTABlog post. The cases are not necessarily listed in order of importance (whatever that means).

Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086 (TTAB 2020) [precedential] (Opinion by Judge Elizabeth A. Dunn). [TTABlogged here]. On October 20, 2015, Striatum Ventures B.V. (a Netherlands company) obtained a registration for the mark ZUPR in the word-plus-design form shown here, for software and various business services, via the Madrid Protocol (Section 66(a) of the Trademark Act). On October 22, 2018, Wirecard AG filed a petition for cancellation of that registration on the ground of abandonment. The parties, proceeding under the Board’s Accelerated Case Resolution (“ACR”) procedure, stipulated that during the period from the issuance of the registration through the date of the stipulation (May 28, 2019), no goods or services had been sold in the United States under Striatum’s mark. The Board observed that, although the Trademark Act refers to "abandonment," the allegation that a mark was never used "pleads the necessary non use for abandonment, so long as the period of nonuse is at least three years or, if less than three years, is accompanied by a lack of intent to resume or commence use." (Emphasis added). The Board found that Striatum carried its burden of proving an intent to commence use of its mark in commerce during the three-year statutory period of nonuse and therefore had rebutted Wirecard’s prima facie showing of abandonment. “Following registration in the U.S., Respondent entered into a contract for a U.S. marketing strategy, retooled its platform in response to that marketing strategy, demonstrated the retooled products to its public relations firm, and reached agreement at least orally with a retailer’s representative to use the ZUPR goods and services in the U.S. following the product launch in 2019."

In re Team Jesus LLC, 2020 USPQ2d 11489 (TTAB 2020) [precedential] (Opinion by Judge Cynthia C. Lynch). [TTABlogged here]. In one of several precedential failure-to-function rulings, the Board upheld a refusal to register TEAM JESUS for clothing items and educational and entertainment services promoting religion, under Sections 1, 2, 3, and 45 of the Trademark Act. The Board pointed out once again that “[m]atter that is widely used to convey ordinary or familiar concepts or sentiments, or social, political, religious, or similar informational messages that are in common use, would not be perceived as indicating source and is not registrable as a mark.” The examining attorney proffered numerous examples evidencing general use, in a variety of contexts, of the phrase TEAM JESUS to convey a Christian affiliation: including at various religious websites, in media articles, on many t-shirts, and on bracelets, lanyards, and buttons. The Board found that, in light of the nature of use of the phrase TEAM JESUS, including on apparel from many sources, “it does not create the commercial impression of a source indicator, even when displayed on a hangtag or label.” [In similar rulings, the Board found that the following terms failed to function as trademarks: GOD BLESS THE USA for pillows; PAST PRESENT FUTURE for t-shirts; and TEXAS LOVE for t-shirts].

In re Vox Populi Registry Ltd., , 2020 USPQ2d 11289 (TTAB 2020) [precedential] (Opinion by Judge Thomas W. Wellington). [TTABlogged here]. The Board upheld refusals to register the term .SUCKS in the stylized form shown here, as a service mark for “Domain registry operator services related to the gTLD in the mark, in International Class 42,” and the standard character mark .SUCKS for those same services and for “Domain name registration services featuring the gTLD in the mark; registration of domain names for identification of users on a global computer network featuring the gTLD in the mark, in International Class 45.” The Board observed that “consumers are ‘highly conditioned’ to view a gTLD as signifying its function as a portion of an Internet domain name.” Despite applicant’s attempts to use .SUCKS in the manner of a source-identifier, “the evidence shows that consumers will view it as only a non-source identifying part of a domain name, rather than as a mark.” As to the stylized version, the Board found that “it does not create a sufficiently distinct commercial impression separate from the non-source-identifying element, .SUCKS. While the pixelated design may be antiquated since it was once ‘mandated by technological limitations,’ given the ubiquity of the design in the ‘early days’ of computing, consumers would view pixelated lettering as ordinary.”

City of London Distillery, Ltd. v. Hayman Group Limited, 2020 USPQ2d 11487 (TTAB 2020) [precedential] (Opinion by Judge Marc A. Bergsman). [TTABlogged here]. This applicant squeaked by with a Supplemental Registration for CITY OF LONDON for gin [LONDON disclaimed], after surviving an opposition based on four grounds: Section 2(e)(1) mere descriptiveness, Section 2(e)(2) geographical descriptiveness, Section 2(e)(3) geographically deceptive misdescriptiveness, and failure-to-function as a trademark. The Board sustained the geographical descriptiveness claim, dismissed the other three, rejected applicant’s claim of acquired distinctiveness, and then granted its motion to amend to seek registration on the Supplemental Register. The Board found that CITY OF LONDON is the name of a geographic place known generally to the American gin drinking and purchasing public, namely London, England. Although applicant’s gin does not originate in the technical City of London (i.e., within the boundaries of the financial district subdivision of London), it does originate in London. As to the other three claims, however, there was nothing misdescriptive or deceptive about the mark, nor was the mark so highly descriptive as to be incapable of functioning as a mark. The Board found applicant’s meager proofs inadequate to satisfy Section 2(f), but it granted applicant’s motion to amend to the Supplemental Register as timely, even though filed after discovery had closed. 

In re tapio GmbH, 2020 USPQ2d 11387 (TTAB 2020) [precedential] (Opinion by Judge Melanye K. Johnson). [TTABlogged here]. The Board affirmed two refusals to register the proposed mark TAPIO for various Internet-related goods and services, finding applicant’s identification of goods unacceptably indefinite in part, and deeming the term TAPIO to be primarily merely a surname under Section 2(e)(4). The Board found the phrase “devices and services” in applicant’s Class 9 identification of goods to be indefinite because the phrase could include goods or services in more than one class. As to the surname refusal, the Board refused to adopt applicant’s proposed standard requiring “celebrity status,” “national notoriety,” or “significant media attention” in order to establish that a surname, although not common, has sufficient public exposure to be deemed primarily merely a surname under Section 2(e)(4). The examining attorney submitted LexisNexis® evidence showing 374 occurrences of the surname “Tapio,” database search results that included 71,018 “hits” for the surname “Tapio,” news items referring to five people with the surname Tapio (including a South Dakota state senator), and a page from the Internet website of a forty-year-old construction business located in Vancouver, Washington using the founder’s name, “Tapio.” The Board observed that "while TAPIO is not a common surname, there is meaningful and fairly widespread public exposure to the surname throughout the United States." It further found that TAPIO has the structure and pronunciation of a surname and has no non-surname meaning.

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Text Copyright John L. Welch 2020-2021.

Monday, January 11, 2021

The Top Ten TTAB Decisions of 2020 (Part I)

What a year! Despite the tumult, the TTABlogger has once again bravely (?) chosen the ten (10) TTAB (Tee-Tee-Ā-Bee) decisions that he considers to be the most important and/or interesting from the previous calendar year (i.e., 2020). This is the first of two posts; the first five selections are set out below. Additional commentary on each case may be found at the linked TTABlog posting. The cases are not necessarily listed in order of importance (whatever that means). 


The Brooklyn Brewery Corporation v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 460354 (TTAB 2020) [precedential] (Opinion by Judge Thomas Shaw). [TTABlogged here]. The Board denied a petition for cancellation of a registration for the mark BROOKLYN BREW SHOP, and dismissed an opposition to that mark in stylized form, for a “beer making kit,” ruling that laches and acquiescence barred the plaintiff’s Section 2(d) claims. Plaintiff admitted that it was aware of defendant’s use of the word mark for more than four years before filing the petition for cancellation, and during that time the parties collaborated on a co-branded beer-making kit. The Board found that confusion between defendant’s marks and plaintiff’s marks BROOKLYN and BROOKLYN BREWERY for beer was not inevitable: "If Plaintiff’s CEO has 'no problem' with Defendant’s use of BROOKLYN BREW SHOP on beer-making kits, confusion is not inevitable as to the kits." The Board considered defendant’s word mark and stylized mark to be substantially the same, and so laches applied in the opposition proceeding as well. The Board found plaintiff’s delay unreasonable, rejecting plaintiff’s progressive encroachment argument, and it concluded that defendant suffered material prejudice because of the delay. As to acquiescence, the Board found that, in view of the parties’ collaboration, plaintiff actively represented that it would not assert its rights against defendant.

In re Medline Industries, Inc., 2020 USPQ2d 10237 (TTAB 2020) [precedential] (Opinion by Judge Christopher Larkin). [TTABlogged here]. In a rare Section 2(d) refusal involving color marks, the Board reversed a refusal to register, on the Supplemental Register, the color green (left) as applied to “medical examination gloves” in view of the registered mark shown on the right (also on the Supplemental Register), for the color green as applied to the exterior of “gloves for medical use; protective gloves for medical use.” As to the sixth du Pont factor, the strength of the cited mark, the Board’s decision in Cook Medical teaches that what is relevant is “the existence of third-party marks, not simply the presence in the marketplace of third-party goods bearing some shade of the color at issue.” (emphasis added). The Board observed that none of the third-party green medical gloves proffered by Medline were displayed in a way that identified or referred to green or a particular shade of green as a trademark, and so “it is very unlikely that the colors or shades of green used by third parties on medical gloves would be perceived as marks.” Nonetheless, under the 13th du Pont factor, this evidence of third-party use of the color green “corroborates the weakness of the cited mark and its limited potential scope of protection,” and “weighs against a likelihood of confusion.” The Board found that the two shades of green “would be viewed and remembered, at most, as distant relatives in the green family,” and it concluded that confusion as to source is “not likely.”

In re Guild Mortgage Company, 2020 USPQ2d 10279 (TTAB 2020) [precedential] (Opinion by Judge Lorelei Ritchie). [TTABlogged here]. On remand from the CAFC, the Board again affirmed a Section 2(d) refusal to register the mark GUILD MORTGAGE COMPANY & Design for “mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans” [MORTGAGE COMPANY disclaimed] in view of the registered mark GUILD INVESTMENT MANAGEMENT for “Investment advisory services” [INVESTMENT MANAGEMENT disclaimed]. In January 2019, the CAFC vacated the Board’s earlier decision because the Board had “failed to consider pertinent evidence and argument under DuPont factor 8,” which looks to “the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” The Board looked to the actual marketplace conditions – which the Board pointed out, are irrelevant to some DuPont factors — and found a lack of evidence that would allow it to make a finding under the eighth factor. It therefore deemed that factor to be neutral. Although consumer sophistication weighed slightly against a finding of likely confusion, the similarity of the marks, the relatedness of the services, and the overlap in channels of trade and classes of consumers led the Board to uphold the refusal.

Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611 (TTAB 2020) [precedential] (Opinion by Judge David K. Heasley). [TTABlogged here]. The Board dismissed this opposition to registration of SOCK IT UP for “socks,” rejecting opposer’s claim of likelihood of confusion with the registered mark SOCK IT TO ME for “socks and stockings” [SOCK disclaimed] due to the dissimilarity in the marks. Perhaps more importantly, the Board first denied opposer’s claim that Applicant Aiping Fan was not the owner of the mark at the time of filing of the opposed application. The opposer contended that the mark SOCK IT UP was used in the United States not by Applicant Fan, but by JY Instyle, and therefore JY Instyle owned the mark, not Fan. The Board, however, deemed the informal arrangements between Fan and JY Instyle (a company run by Fan’s son and daughter-in-law) to be sufficient to qualify JY Instyle as a related company under Section 5 of the Trademark Act, and therefore its use of the mark inured to Fan’s benefit. “Sufficient control by a licensor may exist despite the absence of any formal arrangements for policing the quality of the goods sold or services rendered under the mark by its licensee(s).” “This holds true especially where the licensor and licensee have a close working relationship, such as a familial relationship."

In re Stanley Brothers Social Enterprises, LLC, 2020 USPQ2d 10658 (TTAB 2020) [precedential] (Opinion by Judge Frances Wolfson). [TTABlogged here].  In a blow to the cannabis industry, the Board found that use of the mark CW for “Hemp oil extracts sold as an integral component of dietary and nutritional supplements” constitutes a per se violation of the Food, Drug & Cosmetics Act (“FDCA”), and so it affirmed the USPTO’s refusal to register under Sections 1, 2, and 45 of the Trademark Act. The evidence showed that applicant’s goods contain cannabidiol (CBD), an extract of the cannabis plant that is regulated under the FDCA as a drug. The FDCA prohibits “[t]he introduction or delivery for introduction into interstate commerce of any food to which has been added … a drug or biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public ….” 21 U.S.C. § 331(ll). The examining attorney maintained that Applicant’s “hemp oil extracts” are food to which CBD has been added, and that CBD was the subject of clinical investigations during prosecution of the involved application. The Board agreed, noting that under 21 U.S.C. § 321(ff) “a dietary supplement shall be deemed to be a food within the meaning of this chapter.” The exception in the 2014 Farm Bill that permitted the cultivation of “industrial hemp” under limited circumstances did not override the FDCA’s prohibition.

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Text Copyright John L. Welch 2020-2021.

Friday, January 08, 2021

CAFC Affirms TTAB: WEIGEL'S KITCHEN & Design Not Confusable With QT KITCHENS & Design

The U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision (TTABlogged here), dismissing an opposition to registration of the mark shown first below, for "Processed, ready to eat foods, namely, sandwiches, wrap sandwiches, pizza and pastries" and for "restaurant services." The Board ruled that Opposer QuikTrip West failed to prove a likelihood of confusion with its registered mark shown next below, for "Garden, vegetable, meat, cheese and fruit salads" and "Processed, ready to eat foods, namely, sandwiches, wraps, pastries and pasta salads," finding that Weigel's mark "is so dissimilar to Opposer’s pleaded mark, and the common element between them is so weak that no likelihood of confusion exists." QuikTrip West, Inc. v. Weigel Stores, Inc., 2021 USPQ2d 35 (Fed. Cir. 2021) [precedential]. 

Likelihood of confusion is a legal determination based on underlying findings of fact relating to the DuPont factors. The CAFC reviews the Board's factual findings for substantial evidence but it weighs the factors de novo. On this appeal, QuikTrip challenged the TTAB's analysis regarding the similarity of the marks (factor one) and Weigel's bad faith (factor 13), and it also challenged the Board's weighing of the factors.

Similarity of the Marks: The CAFC agreed with Appellee Weigel that the Board properly analyzed the marks. The Board accorded less weight to the shared term KITCHEN(S) because, as established by the evidence, "kitchen" is a "highly suggestive, if not descriptive, word." It also gave more weight to the dominant portions of the marks - Weigel's encircled W next to the surname WEIGEL, and QuikTrip's QT in a square below a chef's hat - in view of their prominent placement, unique design, and color. See In re Electrolyte Labs., Inc., 929 F.2d 645, 647 (Fed. Cir. 1990) (“More dominant features will, of course, weigh heavier in the overall impression of a mark.").

The Board properly compared the marks in their entireties and observed the differences in lettering and geometric shapes, and the inclusion of a tilted chef's hat in QuikTrip's mark. It noted that the marks are not similar in sound because the "letters do not rhyme or otherwise sound close to one another, and the component WEIGEL'S adds an entirely different sound." As to connotation, the Board determined that Weigel’s mark connotes a kitchen run by a person named Weigel whereas QuikTrip's mark connotes "a string of kitchens with chefs, run by QT."

The court concluded that substantial evidence supported the Board’s factual finding that the marks, in their entireties, differ in appearance, sound, connotation, and commercial impression.

Bad Faith: A party's bad faith in adopting a mark is relevant under the thirteenth duPont factor. DuPont, 476 F.2d at 1361; see also Estrada v. Telefonos De Mex., S.A.B. de C.V., 447 F. App’x 197, 204 (Fed. Cir. 2011) (nonprecedential) (“An applicant’s bad faith is potentially relevant in the likelihood-of-confusion analysis.”). However, something more is required that mere knowledge of a prior mark: an intent to confuse must be proven. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 117 (2d Cir. 2009) (“[T]he ‘only relevant intent is intent to confuse. There is a considerable difference between an intent to copy and an intent to deceive.’” (quoting 4 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23.113)).

QuikTrip argued that the Board had failed to consider evidence that Weigel intentionally copied elements of its mark and surreptitiously photographed its stores. Moreover, the Board failed to consider that the marks are more confusingly similar when presented "in comparable trade dress contexts." Weigel, on the other hand, asserted that its willingness to alter its mark on several occasions, in response to QuikTrip's cease-and-desist letters, negates any inference of bad faith.

The CAFC sided with Weigel: the willingness to change its mark evidences Weigel's lack of bad faith. As to QuikTrip's trade dress argument, the fact that the Board did not address it does not mean that it did not consider it. "We have held 'on multiple occasions that failure to explicitly discuss every issue or every piece of evidence does not alone establish that the tribunal did not consider it.'" Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1328 (Fed. Cir. 2017).

The court concluded that substantial evidence supported the Board's finding that Weigel did not act in bad faith. 

Weighing the Factors: The CAFC rejected QuikTrip's claim that the Board gave undue weight to the first DuPont factor, noting that "one DuPont factor 'may be dispositive in a likelihood of confusion analysis, especially when that single factor is the dissimilarity of the marks.'" Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375 (Fed. Cir. 1998). The court saw no legal error in the Board's determination that the differences between the marks was dispositive in the likelihood of confusion analysis. 

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TTABlogger comment: This WYHO? became a WYHA?

Text Copyright John L. Welch 2021.