Wednesday, March 30, 2011

E.D. La. District Court Upholds TTAB's "ORCHID CREAM VANILLA" Snowball Decision

In the latest chapter of the snowball fight over SnoWizard's registration for the mark ORCHID CREAM VANILLA for "flavoring concentrate for non-nutritional purposes, namely, flavoring concentrate for shaved ice confections," the U.S. District Court for the Eastern District of Louisiana has upheld the TTAB's decision [TTABlogged here] finding the mark merely descriptive and cancelling the registration. Southern Snow Manufacturing Co. v. Snow Wizard Holdings, Inc., Civil Action 16-9170 et al. (E.D. La.).

Snowizard appealed to the CAFC from the Board's decision, but Southern Snow invoked 15 U.S.C. Sec. 1071(b). However,the appellee has the right, within 20 days of the notice of appeal, to invoke 1071(b) to remove the appeal from the CAFC, requiring the appellant to file an action in the district court. [See TTABlog posting here].

Southern Snow moved for summary judgment on SnoWizard's Section 1071(b) review claim. SnoWizard contended that it was not required to produce new evidence, but could simply ask the court to review the TTAB decision.

... while SnoWizard is correct in that it need not produce new evidence in support of its § 1071 claim, it nonetheless must demonstrate to the Court that there remains some issue to be tried to the jury or at the very least it must point out the TTAB’s specific errors so as to enervate the otherwise persuasive weight that the mover hopes to garner on summary judgment from a favorable TTAB decision.

The court found the TTAB's decision to be "well-reasoned and the factual conclusions to be well-suppported."

The TTAB clearly explained the evidence upon which it relied, the legal standards it was using, and the findings are not conclusory or without explanation. See Am. Heritage, 494 F.2d at 10 n.4. Although the decision is surely not binding on this Court, the decision is nonetheless very persuasive and entitled to some weight. At the very least, the Court is persuaded that the TTAB decision as to ORCHID CREAM VANILLA is sufficient evidence for Plaintiffs to meet their initial burden on summary judgment thereby triggering Defendant’s obligation to create an issue of triable fact.

The court concluded, however, that the record "provides no basis upon which to conclude that snowball stand owners and operators would associate ORCHID CREAM VANILLA with SnoWizard a being the unique, single source of this flavor...."

And so the court ruled that the subject registration "was properly ordered cancelled."

TTABlog note: SnoWizard has not fared well lately at the TTAB. See:

  • WHITE CHOCOLATE & CHIPS, Serial No. 77471425, found merely descriptive of "food flavorings."

  • CAJUN RED HOT, Serial No. 77472649,found merely descriptive of "flavoring concentrate for nonnutritional purposes, namely, flavoring concentrate for shaved ice confections"

  • COOKIE DOUGH, Serial No. 77524268, found merely descriptive of "food flavorings."

Text Copyright John L. Welch 2011.


At 2:28 PM, Blogger Owen said...

Wow, SnoWizard's counsel might want to counsel them more before filing some of those obviously descriptive marks.

At 11:32 AM, Anonymous Anonymous said...

And yet, I don't think you can fault the examiner. "Orchid" does add a suggestive "something extra," and given the examiner didn't have access to the "gotcha" printed publication evidence, why would make the connection between orchids and vanilla (can you hear the mental step?) or orchids and the color (the crayola names might be descriptive in connection with crayons when you are looking at them, but in the abstract it's difficult to make the connection).

At 12:31 PM, Blogger Pamela Chestek said...

And yet they're still enforcing it:


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