TTABlog Test: Is "THE HARRIMAN HOTEL" Primarily Merely a Surname for Hotel Services?

The USPTO refused to register THE HARRIMAN HOTEL for hotel, real estate, and health spa services, deeming the mark to be primarily merely a surname under Section 2(e)(4). Applicant argued that HARRIMAN is a rare surname (ranking 6694th in the 2010 Census list of surnames occurring 100 or more times), and that, because William Averell Harriman is an historical figure, HARRIMAN would not likely be perceived by consumers as primarily a surname but rather would be seen as referring specifically to him. How do you think this came out? In re Harriman Hotel, LLC, Serial No. 90096825 (March 22, 2023) [not precedential] (Opinion by Judge Albert Zervas).

The Board first considered "the frequency of, and public exposure to, [HARRIMAN] as a surname … keeping in mind that ‘[t]he relevant question is not simply how frequently a surname appears . . . but whether the purchasing public for Applicant’s services is more likely to perceive Applicant’s proposed mark as a surname rather than as anything else." See, for example, Beds & Bars, 122 USPQ2d at 1551 (BELUSHI found to be primarily merely a surname even though only five people in the United States had the surname “Belushi”).

Examining Attorney Vivian Micznik First submitted evidence regarding William Averell Harriman, who "held positions of prominence during the not too distant past, and thus may be known to a segment of the U.S. population." Harriman was a prominent and accomplished businessman and politician who served as chairman of the Union Pacific Railroad, Governor of New York, Ambassador to the United Kingdom, Ambassador to the Soviet Union, Secretary of Commerce, Assistant Secretary of State and a Democratic presidential candidate in 1956. He also was the founder of Sun Valley Idaho, a winter sports destination.

The Board noted applicant’s statement on its website that it "honors those contributions and his legacy by proudly affixing his name to this stunning new hotel that calls his precious Sun Valley home," which statement suggests that "consumers are or will be exposed to Mr. Harriman’s name on Applicant’s website and that consumers hence are likely to view HARRIMAN, as it appears in Applicant’s proposed mark, as a surname."

The Board concluded that the evidence supports a finding that HARRIMAN is likely to be perceived primarily as a surname.

Turning to the historical name issue, the Board observed that "[t]he decisions addressing historical names generally draw a line between widely recognized names that are almost exclusively associated with a specific historical figure (are thus not considered primarily a surname)." Applicant's evidence is support of this argument was mostly "not of a recent vintage or mentions Mr. Harriman in passing, and hence is not particularly helpful to Applicant."

The Board also noted that others in the Harriman family attained some notoriety, including a wife, father, and brother. The Board therefore found that the term “Harriman” does not point only to one, historical figure.

Applicant also pointed to several geographical locations, including Harriman State Park in New York, Harriman State Park in Idaho, and Harriman Glacier in Alaska, to show that the term has non-surname meanings. However, there was no evidence that these localized uses would be known generally to U.S. consumers.

Finally, the Board found that the words THE and HOTEL do not change the surname significance of the proposed mark: "Combining a surname, such as HARRIMAN, with the generic name for the services, i.e., HOTEL, and adding the term THE, does not overcome the proposed mark’s surname significance."

And so, the Board affirmed the refusal.

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TTABlogger comment: What an incredible career!

Text Copyright John L. Welch 2023.

TTABlog Test: Is CAMP WALDO for Summer Camps Confusable with THE WALDO SCHOOL for Primary Schools?

The USPTO refused to register the proposed mark CAMP WALDO for "summer camps" [CAMP disclaimed] on the ground of likely confusion with the registered mark THE WALDO SCHOOL for "educational services in the nature of primary schools" [SCHOOL disclaimed]. Evidence of third-party registration and use by entities that offer both summer camps and educational services convinced the Board that the involved services are related. As to the marks, applicant argued that "Waldo" is a weak formative, pointing to twenty or so schools with names that include the word "Waldo," including schools in Waldo, Maine and Waldo, Florida. How do you think this came out? In re Appalachian Headwaters, Inc., Application Serial No. 90448759 (March 21, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman).

The third-party website evidence established that educational services and summer camp services are offered via the same websites to the same consumers. And so, the Board found the involved services "are offered in the same channels of trade to the same consumers and, therefore, this DuPont factor weighs in favor of finding a likelihood of confusion."

Turning to the strength of the cited mark, the Board found THE WALDO SCHOOL to be inherently distinctive, noting that it is registered on the Principal Register without a claim of acquired distinctiveness and therefore is entitled to the benefits accorded registered marks under Section 7(b).

As to commercial strength, only one of the registrations that applicant submitted covered educational services, and that was owned by the cited registrant. As to third-party website evidence, there were "three WALDO school names where Waldo refers to the name of the city where the school is located, seven Waldo-formative school names located in cities other than Waldo of which Waldo is a given name in five of the schools (e.g., Waldo Pafford Elementary School), and 11 RALPH WALDO EMERSON school names."

The Board noted, however, that Ralph Waldo Emerson is the name of the renowned American essayist and poet, and is a unitary term or name that engenders a different commercial impression than the singular name "Waldo" because it points uniquely to a singular, well-known individual.

Likewise, the marks where WALDO is a given name (e.g., WALDO PAFFORD ELEMENTARY SCHOOL) creates a different commercial impression than WALDO alone. Second, the WALDO schools located in cities named Waldo has a geographic significance that does not necessarily apply with Registrant’s mark THE WALDO SCHOOL. Finally, the entities using WALDO and WALDO-formative names are generally in disparate geographic locations indicating that consumers are unlikely to encounter multiple WALDO educational facilities and, thereby distinguish among them by looking at features other than the name "Waldo."

Nonetheless, these third-party uses cannot be ignored; they negatively affect the cited mark in that the mark is "not entitled to such a broad scope of protection that THE WALDO SCHOOL will be a bar to every application consisting in whole, or in part, of the name WALDO." The registered mark will bar "only the registration of marks as to which the resemblance to [THE WALDO SCHOOL] is striking enough to cause one seeing it to assume that there is some connection, association, or sponsorship between the two."

Comparing the marks, and noting the applicable disclaimers, the Board found WALDO to be the dominant element in both marks. "The peripheral differences between the marks in this appeal – CAMP WALDO versus THE WALDO SCHOOL – fail to distinguish the marks." The Board concluded that the similarities in the marks outweigh the differences.

Applicant argued that consumers sending their children to summer camp will exercise a high degree of care because “they are selecting a place to which they will send their child unaccompanied for a substantial period of time” and "understand the identity of the provider of the service.” The Board was not impressed, observing that applicant's argument is based on the incorrect premise that all summer camps are overnight camps. Examining Attorney Julie Watson's evidence of third-party use was not limited to overnight camps. And so the Board found this DuPont factor to be neutral.

Balancing the relevant DuPont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.

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TTABlogger comment: Where's Camp Waldo? Hinton, West Virginia. Where's The Waldo School? Jersey City, NJ.

Text Copyright John L. Welch 2023.

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

A TTAB judge once told me that one can predict the outcome of a Section 2(d) case 95% of the time by just looking at the involved goods and services and the marks. Maybe he or she was referring to ex parte cases only. Anyway, let's see how you do with the three oppositions summarized below. Answer(s) in the first comment.

Volvo Truck Corporation v. Mac Tíre Clothing LLC , Opposition No. 91264810 (March 13, 2023) [not precedential] (Opinion by Judge Marc A. Bergsman) [Opposition to registration of MAC TÍRE CLOTHING for various clothing items, including shirts and hats [CLOTHING disclaimed], in view of the registered marks MACK for trucks and for "sweaters including fleece pullovers, polo shirts, T-shirts, shirts including dress shirts, caps including knit caps and fleece caps, sport jackets, sweatshirts, pants, namely, jogging pants, coats, neckwear; outerwear, namely, leather jackets; jeanswear, namely, jeans, work coveralls of denim, jean jackets, jean shirts" and MACK TRUCKS and design for "shirts and hats."]

Greater Orlando Aviation Authority v. Sanford Airport Authority, Oppositions Nos. 91234602 and 91235774 (March 14, 2023) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) opposition to registration of ORLANDO SANFORD INTERNATIONAL AIRPORT, in standard character form [INTERNATIONAL AIRPORT disclaimed] and in the logo form shown first below [ORLANDO SANFORD and INTERNATIONAL AIRPORT disclaimed], for "airport services," in view of the mark ORLANDO INTERNATIONAL AIRPORT, in standard character form and in the registered logo form shown second below [INTERNATIONAL AIRPORT disclaimed] for "airport services."].

San Diego Comic Convention v. Erik Yacko, Opposition No. 91263787 (March 17, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington) [Section 2(d) opposition to the word-plus-design mark shown below, for "conducting entertainment exhibitions in the nature of comic book and pop culture conventions" in view of the registered mark COMIC-CON for “education and entertainment services, namely, organizing and conducting conventions in the fields of animation, comic books and popular art."].

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Text Copyright John L. Welch 2023.

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

Here are three recent appeals from Section 2(d) refusals. As previously mentioned, a former TTAB judge once told 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 involved goods and services. How do you think theses three cases came out? [Results in first comment].

Better Life Nutritional Supplements, LLC, Serial No. 90389844 (March 13, 2023) [not precedential] (Opinion by Judge Cindy B. Greenbaum) [Section 2(d) refusal of WAKE-UP CALL for "Dietary supplements; Nutritional supplements," in view of the registered mark WAKE UP CALL for "Skin care products, namely, non-medicated skin serum."

Speymalt Whiskey Distributors Ltd, Serial No. 79296030 (March 16, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo) [Section 2(d) refusal of THE CAIRN for “Spirits and liqueurs; whisky and whisky-based liqueurs; but insofar as whisky and whisky-based liqueurs are concerned, only Scotch whisky and Scotch whisky-based liqueurs," in view of the registered mark CAIRN BREWING for "beer" [BREWING disclaimed] and CAIRN BREWING & Design, shown below, for "taproom services, taproom services featuring craft beer" (KENMORE WASHINGTON BREWING disclaimed).]

In re Jon Wayne Heating & Air Conditioning, Inc., Serial No. 87065528 (March 16 2023) [not precedential] (Opinion by Judge Thomas W. Wellington) [Section 2(d) refusal of the mark JW (Stylized), shown below, for "an extensive list of services, including contractor, repair, installation, maintenance, and technical support services in the fields of heating, ventilation, air conditioning, plumbing, insulation, solar energy, and home automation," in view of the registered mark JW HOME IMPROVEMENT for various handyman services, including custom carpentry and building repair and maintenance [HOME IMPROVEMENT disclaimed]].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2023.

TTAB Orders Cancellation of Safety Helmet Registrations Due to Lack of Acquired Distinctiveness

In a whopping 163-page opinion, the Board granted a petition for cancellation of two registrations for the configuration of safety helmets, rejecting Petitioner Honeywell's Section 2(e)(5) functionality claim but sustaining Honeywell's claim of lack of acquired distinctiveness. The Board noted that "[t]he Respondent’s failure to comply with its discovery and disclosure obligations plays a pivotal role in our determination." [This blog post will summarize the high points of the decision.]. Honeywell Safety Products USA, Inc. v. ERB Industries, Inc., Cancellation No. 92070774 (March 13, 2023) [not precedential] (Opinion by Judge Angela Lykos).

The marks consist of the "three dimensional configuration of two ridges located along the center of a safety helmet," one helmet with a surrounding brim and the other with a short brim at the front. (referred to as the "Ridge Designs").

Discovery Sanctions: The Board made certain adverse inferences against Respondent ERB for failure to comply with a Board order compelling interrogatory answers, including inferences that Respondent ERB did not conduct any look-for advertising and did not conduct any survey to show acquired distinctiveness.

Section 2(e)(5) Functionality: Honeywell alleged that the Ridge Designs are "essential to the use or purpose of the registered goods, in that they function to help absorb impact and increase stability” and put “competitors at a significant competitive disadvantage since there are only a limited number of ways to design a safety helmet to absorb impact in a cost-effective manner." The Board framed the issue as follows:

[W]e must determine whether the Ridge Designs as depicted in the ’481 and ’482 registrations are essential to their use or purpose or affect the cost or quality of the product [the Supreme Court's Inwood standard], that is, whether allowing the trademark registrations to continue to exist will hinder competition. In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 12-15 (CCPA 1982). In other words, the issue is whether the designs of both safety helmets work better in the configurations at issue.

If functionality is established under Inwood, further inquiry under the Morton-Norwich factors is unnecessary. See TrafFix, 58 USPQ2d at 1006.

After an exhaustive review of the evidence, the Board concluded that Honeywell "failed to meet its burden under the preponderance of the evidence standard [to] rebut the presumption that Respondent's Ridge Designs are valid and nonfunctional under Inwood." The Board noted that it might have found otherwise on a more developed record.

The Board then turned to the Morton-Norwich factors:

• (1) the existence of a utility patent disclosing the utilitarian advantages of the design; 
• (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; 
• (3) the availability to competitors of functionally equivalent designs; and 
• (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

There was no relevant patent or patent application, and so the first factor favored Respondent ERB. As to the second factor, there was no evidence of advertising touting the utilitarian benefits of the Ridge Designs. As the the third, the record included many alternative designs, thus favoring ERB. And finally, there was no proven benefit to the Ridge Designs in terms of ease or cost of manufacture.

And so, the Board concluded that Honeywell had failed to make a prima facie case of invalidity under Section 2(e)(5).

Lack of Acquired Distinctiveness: Of course, product designs cannot be inherently distinctive and are registrable as trademarks only upon a showing of acquired distinctiveness under Section 2(f). The party seeking to cancel a registration for lack of acquired distinctiveness bears the initial burden to make a prima facie case.

To satisfy this initial burden, the party seeking cancellation must “present sufficient evidence or argument on which the board could reasonably conclude' that the party has overcome the record evidence of acquired distinctiveness—which includes everything submitted by the applicant during prosecution. The burden of producing additional evidence or argument in defense of registration only shifts to the registrant if and when the party seeking cancellation establishes a prima facie showing of invalidity. The Board must then decide whether the party seeking cancellation has satisfied its ultimate burden of persuasion, based on all the evidence made of record during prosecution and any additional evidence introduced in the cancellation proceeding.

In making its determination regarding acquired distinctiveness, the Board looked to the CAFC's Converse factors:

• (1) association of the trade[mark] with a particular source by actual purchasers (typically measured by consumer surveys); 
• (2) length, degree, and exclusivity of use;
• (3) amount and manner of advertising; 
• (4) amount of sales and number of customers; 
• (5) intentional copying; and 
• (6) unsolicited media coverage of the product embodying the mark.

The Board found "minimal direct evidence" that consumers perceive the Ridge Designs as source indicators, giving Respondent ERB's testimony from its own employees little weight and noting the absence of survey evidence. ERB's claim of long use (2004 and 2008) was not necessarily persuasive in the context of a product configuration.

With regard to exclusivity of use, the record failed to support a finding that "other marketplace uses are significant enough to conclude that Respondent’s marks have not been in substantially exclusive use." The Board noted that on a more developed record it might find otherwise.

ERB's evidence regarding advertising and promotional expenditures were both questionable and lacking in marketplace context. As to look-for advertising, in addition to the adverse inference drawn by the Board, there was no attempt in ERB's advertising to call attention to the Ridge Designs as source indicators. ERB's sales figures were not impressive, and they also lacked marketplace context. And there was no evidence of intentional copying or of media coverage.

The Board concluded that Honeywell had made a prima facie case that the Ridge Designs lacked acquired distinctiveness. The burden then shifted to Respondent to provide "additional evidence or argument" in this cancellation proceeding. Petitioner Honeywell, however, bore the ultimate burden of proof by a preponderance of the evidence.

ERB failed to produce any additional evidence or argument to overcome Honeywell's prima facie showing, and so the Board found that Honeywell had "satisfied its ultimate burden of persuasion under the preponderance of the evidence standard"

And so, the Board ordered that the two registrations be cancelled.

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TTABlogger comment: Exhaustive and exhausting.

Text Copyright John L. Welch 2023.

TTAB Affirms Geographical Descriptiveness Refusal of "SOHO INK" for Tattoo Ink

The Board affirmed a Section 2(e)(2) refusal of SOHO INK for tattoo ink, tattooing equipment, and tattoo service in Classes 2, 8, and 44 [INK disclaimed], finding the mark to be primarily geographically descriptive of those goods and services. It also affirmed a requirement that the applicant disclaim the word SOHO for clothing. In re Ink Projects LLC, Serial No. 87856799 (March 15, 2023) [not precedential] (Opinion by Judge Angela Lykos).

The test for determining if a mark is primarily geographically descriptive is whether:

• (1) the primary significance of the term in the mark is a generally known geographic location;
• (2) the goods or services originate in the place identified in the mark; and
• (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark.

The relevant public consists of individuals "seeking 'tattooing services, body piercing services, permanent makeup services, and cosmetic tattooing services,' as well as related goods and collateral merchandise demonstrating a consumer's affinity for Applicant’s goods and services."

As to the first prong of the test, the Board observed that the presence of a generic or descriptive term in a proposed mark does not detract from the primary geographical significance of the mark as a whole. Examining Attorneys Susan Leslie DuBois, David C. Reihner, and Esther A. Belenker submitted a Wikipedia entry for "SoHo, Manhattan" showing that SoHo is a well-known geographical designation for a neighborhood located in New York City.

SoHo is a neighborhood in Lower Manhattan, New York City, which in recent history came to the public’s attention for being the location of many artists’ lofts and art galleries, but is now better known for its variety of shops ranging from trendy upscale boutiques to national and international chain store outlets. The area’s history is an archetypal example of inner-city regeneration and gentrification, encompassing socioeconomic, cultural, political, and architectural developments. *** The name “SoHo” refers to the area being “South of Houston Street” ....

The applicant argued that SoHo "is more than a geographic location,' 'it has come to mean a certain style or artistic nature, due to various studios, galleries, shops, and restaurants' and is known as 'a trendy haven for artists and for its upscale shopping'" That meaning is "reinforced by the fact that there is also a SoHo neighborhood in London that is also considered a fashionable district." Applicant also pointed to other meanings of SOHO, such as an abbreviation or acronym for the “Solar & Heliospheric Observatory, Save Our Heritage Organization, SOHO family of fonts, Small Office/Home Office, and the Society of Hematologic Oncology."

The Board was persuaded by the Office's evidence, finding that "'SoHo' is a well-known geographic moniker for a neighborhood in New York City." The fact that the term may have other meanings in other contexts does not alter its geographic significance in the context of the instant application.

Thus, while SoHo may also connote fashion or a trendy area for artists, a neighborhood in London, or constitute an abbreviation for various entities, these other meanings do not detract from its primary significance to the relevant public in the United States as a neighborhood in New York City.

Therefore, the Board found that the first prong of the test was met.

As to the second prong, the applicant confirmed that at least some of its goods and services will be offered at its location at 85 Lafayette St., south of Houston, in New York City. That location is either in SoHo or, depending on how you define the area, close enough. And so, the second prong of the test was met.

If the first two prongs are met, a goods/place association is presumed when the goods or services originate from the named location. Thus, the third prong of the test was satisfied.The Board noted that even without this presumption, the third prong was met because the evidence established that the relevant consumers would associate the applicant's goods and services with SoHo. "SoHo has a well-known reputation for its art galleries and as an artist colony, and tattooing has evolved into an art form for personal expression. Indeed, Applicant touts its tattoo service providers on its website as 'resident artists' with their own portfolios of work."

And so, the Board affirmed the refusal to register SOHO INK for the applicant's Class 2, 8, and 44 goods and services. As to the applicant's clothing in Class 25, the Board affirmed the refusal to register absent a disclaimer of the geographically descriptive term "SOHO." That refusal will be set aside if the applicant submits an appropriate disclaimer within 30 days.

Read comments and post your comment here.

TTABlogger comment: What about the Wikipedia entry for SOHO? [not SOHO, MANHATTAN]. It begins, "Soho is an area of the City of Westminster, part of the West End of London."

Text Copyright John L. Welch 2023.

CAFC Affirms TTAB: OXIPURITY Confusable with OXYPURE for Different Chemical Products

In a nonprecedential opinion, the CAFC affirmed the Board's decision upholding a Section 2(d) refusal to register the mark OXIPURITY for various chemical products, finding confusion likely with the registered mark OXYPURE for "hydrogen peroxide intended for use in the treatment of public and private potable water systems and supplies." The applicant argued, without success, that the scientists, chemists, and manufacturers purchasing its products in the pharmaceutical, veterinary, flavor and fragrance, or cosmetic fields are not the same scientists, chemists, and manufacturers purchasing [Registrant] FMC’s hydrogen peroxide for potable water systems." In re Oxiteno S.A. Industria e Comercio, 2023 U.S.P.Q.2d 286 (Fed. Cir. 2023) [not precedential].

The Board found the involved goods to be "different but related." Third-party websites “establish that [Oxiteno’s] chemicals and [FMC’s] hydrogen are commonly manufactured by a single source, and are sold directly to a variety of industries, including the waste treatment, pharmaceutical, biotech, and personal care industries.” The Board also relied on the registrant's promotional brochure, which stated that registrant offered other hydrogen peroxide products, albeit under different brand names, to industries such as the drugs/cosmetics industry. 

Although the involved consumers were sophisticated, the court concluded that “[t]he strong similarity of the marks for related goods, which move in the same channels of trade to the same classes of customers renders confusion likely.” It noted that "it is not necessary to show that the consumers are the same to establish a likelihood of confusion. Though the buyers may be different, they may have overlapping knowledge due to market conditions or channels of trade such that purchasers are familiar with both products." [But if the buyers of one party's product are not buyers of the other party's product, what's the harm from this confusion? - ed.]

The court noted that "there is record evidence that there is consumer overlap, i.e., to some extent the same customers would purchase both Applicant Oxiteno’s and Registrant FMC’s goods, since "[n]early every business has a need for either purification of water for the manufacturing process, or to clean a waste stream/effluent”: i.e, every business is a potential purchaser of hydrogen peroxide for water purification purposes. 

Moreover, registrant's brochure states that it sells hydrogen peroxide products, albeit under different trade names, to the food processing/packaging and drugs/cosmetics industries. And so, the court ruled that "substantial evidence supports the conclusion that at least some of the consumers would be the same."

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TTABlogger comment: Not the most convincing opinion I've ever read.

Text Copyright John L. Welch 2023.

TTAB Affirms Two Refusals of "ROSE PETALS" for Supplements Not Containing Rose Petals

The Board wasted little time in affirming the USPTO's refusals to register the proposed mark ROSE PETALS for "Dietary supplements in capsule form not containing rose petals as an ingredient." The Board found the mark to be deceptive under Section 2(a) and, alternatively, deceptively misdescriptive under Section 2(e)(1). In re Intimate Science, Serial No. 90123272 (March 13, 2023) [not precedential] (Opinion by Judge Cynthia C. Lynch).

A proposed mark must be refused registration as deceptive under Section  2(a) if:

(1) it consists of or comprises a term that describes the character, quality, function, composition, or use of the goods;
(2) prospective purchasers are likely to believe that the misdescription actually describes the goods; and
(3) the misdescription is likely to affect the purchasing decision of a significant or substantial portion of relevant consumers.

The applicant and Examining Attorney Michael FitzSimons agreed that the first prong of the test was satisfied: i.e., the mark misdescribes the goods. As to the second prong, however, the applicant disagreed that the misdescription would be believed because consumers would not take the reference literally: "rose petals conjure the image of decoration or romance."  Applicant submitted Google brand search results showing that rose petals are commonly used as decorations at weddings and the like. The Board was unimpressed: the issue at hand was the meaning of rose petals in the context of applicant's goods, not in the abstract.

The Examining Attorney submitted website evidence of consumer exposure to dietary supplements consisting or containing rose petals, including a journal article referring to the [w]orldwide trend towards the use of natural plant remedies."

The Board found that the "wording in the proposed mark 'is a common supplement or ingredient in dietary supplements, [and] consumers will believe, based on the mark and the goods at issue, that applicant’s goods contain [it].'"

Given consumer exposure to rose petal supplements as shown in the record, supplement consumers would take a reference to ROSE PETALS for supplements literally and believe that Applicant’s “ROSE PETALS” supplements contain that ingredient when, according to Applicant’s identification of goods, they do not.

Turning to the third prong of the test, materiality, the Examining Attorney argued, based again on website evidence, that consumers desire rose petals as an ingredient in supplements because of the perceived health benefits. The Board agreed: "whether a supplement contains rose petals would be material to the purchasing decision of a material portion of the relevant consumers."

And so, the Board upheld the deceptiveness refusal.

As to deceptive escriptiveness, the test is identical to the first two prongs of the deceptiveness test. Those prongs having been met, the Board affirmed this alternative refusal.

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TTABlogger comment:Is this a WYHA? Note that a deceptive misdescriptiveness refusal under Section 2(e)(1) may be overcome by proof of acquired distinctiveness, but not a deceptiveness refusal under Section 2(a).

Text Copyright John L. Welch 2023.

TTABlog Test: Three Recent Affirmances - Guess What Grounds ....

Here are three recent Board affirmances of final refusals. See if you can guess the ground for refusal in each case. [Answers below].

In re Lyte Up Clothing, Serial No. 90104580 (March 2, 2023) [not precedential] (Opinion by Judge Jonathan Hudis) [Affirming refusal to register LYTE UP CLOTHING for "Hats; Suspenders; Bow ties; Halloween costumes; Halloween costumes and masks sold in connection therewith; Headbands; Sweatshirts; Head wraps; Hooded sweatshirts; Ties as clothing; Tops as clothing" [CLOTHING disclaimed]].

D2K IP, Serial No. 90471186 (March 2, 2023) [not precedential] (Opinion by Judge Karen Kuhlke) [Affirming refusal to register HAVE A GREAT DAY for "Cups; Coffee cups; Insulating sleeve holder for beverage cups; Insulating sleeve holders made of paper or cardboard for jars, bottles or cans."]

Help Refugees Limited, Serial No. 87476700 (March 8, 2023) [not precedential] (Opinion by Judge Albert Zervas) [Affirming refusal to register CHOOSE LOVE for various goods and services in Classes 9, 18, 25, 35, and 36, including mobile phone covers, handbags, clothing, and charitable fundraising services.]

TTABlog comment: First one, genericness. Second and third, failure-to-function.

Text Copyright John L. Welch 2023.

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

The Board has affirmed the first 25 Section 2(d) refusals that it reviewed this year. Here are three more, but at least one was reversed. How do you think these three cases came out? [Results in first comment].

YG Entertainment Inc., Serial No. 79975600 (March 9, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo) [Section 2(d) refusal of BABYMONSTERS, in stylized form, for toy animals, stuffed toys, and other toys, in view of the registered mark BABY MONSTERS, in standard form, for baby furniture.] 

 

Dolphin Instruments and Gauges, Inc., Serial No. 88578059 (March 9, 2023) [not precedential] (Opinion by Judge Robert H. Coggins). [Section 2(d) refusal of DOLPHIN for "Fuel gauges; Level gauges; Odometers; Pressure gauges; Speedometers; Tachometers; Water Temperature gauges; all of the above exclusively only for use with classic cars and kit cars," in veiw of the registered mark POWERDOLPHIN for, inter alia, exhausts for motors and engine, mufflers for motors and engines, direction signals for vehicles, and suspension shock absorbers for vehicles.]

Patch Boys International LLC, Serial No. 90242361 (March 9, 2023) [not precedential] (Opinion by Judge Cheryl S. Goodman) [Section 2(d) refusal of the mark THE PATCH BOYS & Design for "Drywall contractor services; General construction contracting," in view of the registered mark PATCHMAN, in standard character and logo form, for "Building construction, remodeling and repair; Building maintenance and repair."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2023.