TTAB Summarily Rejects Morehouse Defense

Respondent KCG moved for summary judgment in this Section 2(d) cancellation proceeding involving its registration for the mark CITADEL, in standard character form, for various financial services. KCG invoked the "Morehouse defense," relying on its ownership of a registration (incontestable) for the mark shown below for the same services. Not so fast, said the Board, denying the summary judgment motion and striking the affirmative defense. Citadel Federal Credit Union v. KCG IP Holdings LLC, Cancellation No. 92055228 (July 10, 2013) [not precedential].

The theory behind the Morehouse defense is that one party cannot be harmed by the issuance to, or existence of a registration of, a second party if the second party already owns a registration for essentially the same mark for essentially the same goods or services. Therefore, in order to prevail on its Morehouse defense to Petitioner's likelihood-of-confusion claim, KCG must show that "it owns a prior registration for essentially the same mark registered in connection with essential the same services that are the subject of the involved registration." See Morehouse Mfg. Corp. v. J. Strickland Co., 160 USPQ 715, 717 (CCPA 1969).

Petitioner did not dispute that the services in KCG's two registrations are essentially the same. The question, then, was whether the two marks are essentially the same.

KCG argued that the marks are pronounced the same and have the same meaning and commercial impression because CITADEL is the dominant element of the earlier mark and the design element has no significant effect. Petitioner contended that KCG improperly applied a test for mark similarity under a likelihood of confusion analysis, and not the stricter "essentially the same" standard required for the Morehouse defense. 

The Board agreed with Petitioner. It found the "crenellated design element" to be a "significant portion of the mark which presents a bold impression not present in the standard character mark." The design element is not merely a small difference that requires "careful inspection to detect." (quoting Morehouse, 160 USPQ at 717). Distinguishing two precedents, the Board observed that the design element here is not merely a background design nor mere stylization of a word mark.

Therefore the Board ruled that the Morehouse is not available to Respondent KCG, and it denied KCG's summary judgment motion and struck the affirmative defense, ordering that the proceeding proceed.

Read comments and post your comments here.

TTABlog comment: If and when Petitioner succeeds in this cancellation proceeding, do you think KCG will oppose Petitioner's published application based on KCG's prior, "incontestable registration" on the ground of likelihood of confusion? Then what happens?

Note that the Morehouse defense is available only in the inter partes context. See In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) [precedential]. [TTABlogged here].

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Is JAKEMANS Primarily Merely a Surname for Medicated Confectionery?

The PTO refused registration of the mark JAKEMANS for "medicated confectionery; medicated confectionery containing menthol; lozenges for pharmaceutical purposes; pastilles for pharmaceutical purposes; medicated throat pastilles, throat lozenges," and for "non-medicated lozenges; confectionary, namely, pastilles; non-medicated throat pastilles; hard candies." A nationwide telephone listing revealed 87 listings for individuals with the surname JAKEMAN. But what about the well-known actor, Hugh Jackman? How do you think this came out? In re G R Lane Health Products Limited, Serial No. 85115445 (July 10, 2013) [not precedential].

In view of the small number of telephone listings, the Board deemed JAKEMANS to be "an extremely rare surname." The Examining Attorney pointed to a handful of Internet webpages that refer to persons with the JAKEMAN surname, but the Board found that these citations "do not reflect the type of uses that would outweigh the rareness of this surname to imbue it with primary surname significance."

Nothing in the record indicated that anyone named JAKEMAN or JAKEMANS is associated with applicant. However, negative dictionary evidence showed that JAKEMAN has no recognized, non-surname meaning.

Finally, the Examining Attorney argued that JAKEMAN has the look-and-sound of a surname because it is similar to JACKMAN. She pointed to 2,365 listings of JACKMAN in a nationwide telephone directory, online references to Hugh Jackman, and a third-party 2(f) registration for JACKMAN. Applicant, on the other hand, asserted that JACKMAN does not sound like JAKEMANS.

Although many surnames end in "man," so do many first names (e.g., Norman Vincent Peale  , Herman Melville, Sherman Lollar). The Board relied on In re "Baik" in observing that evidence of look-and-sound is not in itself enough to support a surname refusal.

The Board noted that the look-and-sound factor is highly subjective and, again citing Baik, pointed out that "[i]n cases where the proposed mark is a very rare surname, 'we cannot assume that the purchasing public will view the mark as a surname based on exposure to the surname use.'"

Resolving any doubt in favor of a applicant, the Board concluded that the PTO had failed to satisfy its burden of proof, and so it reversed the refusal.

Read comments and post your comment here.

TTABlog note: Judge Seeherman's opinion in In re Baik is worth remembering. [TTABlogged here]. Her view of Section 2(e)(4) is sometimes, but not always, followed.

Text Copyright John L. Welch 2013.

Precedential No. 31: TTAB Dismisses U. Alabama Opposition to HOUNDSTOOTH MAFIA & Design for Clothing

In a 78-page opinion, the Board dismissed this opposition to registration of the mark depicted below for "shirts, caps" [HOUNDSTOOTH disclaimed], denying opposers' claims of likelihood of confusion under Section 2(d), and false suggestion of a connection and disparagement, both under Section 2(a).  Opposers based their opposition principally on the alleged extensive use of a houndstooth pattern that identifies Coach Paul "Bear" Bryant and the University of Alabama’s goods and educational and athletic services. The Board of Trustees of The University of Alabama and Paul W. Bryant, Jr. v. William Pitts, Jr. and Christopher Blackburn, 107 U.S.P.Q.2d 2001 (TTAB 2013) [precedential]. [NB: This decision was vacated on March 3, 2016, in compliance with an Order issued by the U.S. District Court for the Northern District of Alabama (TTABlogged here)].

Likelihood of Confusion: Although Coach Bryant was recognized for wearing patterned fedoras at the University’s football games, that fact "does not endow either Coach Bryant (including his estate) or the
University with trademark rights in the Houndstooth Pattern. There is no evidence that Coach Bryant ever used the Houndstooth Pattern as a trademark in connection with products or services." Therefore, the University did not acquire trademark rights in the Houndstooth Pattern from Coach Bryant or his estate.

The Board then turned to the question of whether the University itself established common law trademark or service mark rights in the Houndstooth Pattern. The University had to prove that the pattern is either inherently distinctive or has acquired distinctiveness.

The evidence showed use of the Houndstooth Pattern mark in an ornamental manner, and the Board found that it would be perceived as a non-distinctive background design rather than as an indicator of source or sponsorship. Applying the CCPA's Seabrook test, the Board concluded that opposer's Houndstooth Pattern, which is used together with other trademarks and identifying indicia of the University, is not inherently distinctive.

As to acquired distinctiveness, there was no evidence that the University promoted or treated the Houndstooth Pattern, per se, as a trademark. Although opposers submitted substantial evidence of media coverage commenting on Coach Bryant’s houndstooth fedora, that evidence may support the association of a houndstooth fedora with the Coach, but it does not establish any trademark association of the Houndstooth Pattern with the University. There was no evidence of “look for” advertising or other promotional efforts to create a source association between the Pattern and the University. The University’s evidence regarding sales was not probative because the figures were not broken down to show sales of merchandise bearing the Houndstooth Pattern, nor did the University provide a date on which the sale of such merchandise bearing the Houndstooth Pattern began. However, even had itemized sales information been provided, its value would have been limited because the goods prominently feature the University’s trademarks, including “Alabama,” “Crimson Tide,” and a “Stylized A” design.

The parties agreed that the public "associates houndstooth with Coach Bryant’s hat and fans wear houndstooth apparel to the University's football games to show support for the University because they know that is 'what Coach Bryant wore." [In fact, applicants sold their merchandise at Alabama football games]. In any case, there was no evidence that the houndstooth design on the fans’ apparel serves as a source-indicator for the University. The University is not the exclusive user of the Houndstooth Pattern, because houndstooth apparel is available from other sources. The fact that fans wear houndstooth apparel of unknown origin cuts against the University's claim of exclusive use.

The Board concluded that "opposers’ evidence does not get it into the end zone by proving it has trademark rights in the alleged Houndstooth Pattern mark."

Opposers' assertion of rights in a crimson -and-white color scheme was, the Board concluded, a “red herring.” Applicants’ applied-for mark does not constitute an indicia of the University and therefore, even if it may be depicted in red and white colors, it is not likely to be confused with the University’s color scheme. Furthermore, whether use of applicant's mark on crimson and red hats and shirts constitutes infringement of opposers' rights is an issue for the courts and is beyond the Board's jurisdiction.

Opposers contend that applicants adopted the applied-for mark in bad faith with an intent to create an association with opposers, a fact that should be considered in the likelihood of analysis. The Board, however, pointed out that "if confusion is not likely to result from the use of the marks, applicants’ motives cannot affect their right to the registration sought."

Finally, the Board gave short shrift to opposer's assertion that the applied-for mark is likely to cause confusion with the common law mark PAUL. W. BRYANT MUSEUM & Design (shown below). The Board found the dissimilarity of the marks to be dispositive of the issue.

False Suggestion of a Connection: The Board focused on the "key factor" in the Section 2(a) false suggestion analysis: "whether applicants’ mark is a close approximation of opposers’ name or identity, i.e., a right in which opposers possess a protectable interest." Moreover, the similarity required for a "close approximation" is "akin to that required for a likelihood of confusion under § 2(d) and is more than merely 'intended to refer' or 'intended to evoke.'"

The Board found no basis for concluding that applicants’ mark closely approximates the University’s identity. There was no showing that the University "used or promoted the Houndstooth Pattern, much less the word 'houndstooth,' in a manner that would constitute the University’s identity."

As to Coach Bryant, the accused mark must do more than simply “bring to mind” or reference the hat worn by him. The Board concluded that the applied-for-mark did not closely approximate the identity or persona of Coach Bryant and therefore was not "unmistakably associated" with his identity or persona, nor did it “point uniquely” to him.

Here ... applicants’ mark is not the name or image of Coach Bryant, with his patterned fedora, nor does it contain his patterned fedora per se. The fact that applicants did not incorporate any of the foregoing in their mark diminishes the significance of their admission that they intended their mark, in part, to “make[] reference to the houndstooth hat that Coach Bryant wore at Alabama football games.”

Disparagement: Opposers contended that the applied-for mark is disparaging and brings them into contempt and disrepute because "mafia" refers to a criminal organization. The Board disagreed.

While we appreciate that the term “mafia” may refer to organized crime, we do not find this meaning present given the context of applicants’ mark. We cannot conclude on this record that consumers would reasonably associate organized crime with the University or Coach Bryant, especially when there is a much more plausible meaning for “mafia,” which does not have the allegedly disparaging connotation advanced by opposers. There simply are no facts whatsoever in this record that suggest that those familiar with Coach Bryant would choose the derogatory meaning of “mafia” and infer that either the University or Coach Bryant is a member of, or has ties to, organized crime.

The Board recognized that "“mafia" has a positive definition unrelated to organized crime. The use of a common houndstooth pattern imparts a light-hearted connotation to the mark that is inconsistent with any sinister meaning. "In view of the incongruous nature of applicants’ HOUNDSTOOTH MAFIA and Design mark, the mark would not be offensive to a reasonable person of ordinary sensibilities when used on applicants’ apparel items."

And so the Board dismissed the Section 2(a) disparagement claim.



Read comments and post your comment here.

TTABlog note: For a thorough discussion of the role of intent in the likelihood of confusion analysis, see Thomas L. Casagrande's article, "A Verdict For Your Thoughts? Why an Accused Trademark Infringer's Intent Has No Place in Likelihood of Confusion Analysis," 101 Trademark Reporter 1447 (September-October 2011). [TTABlogged here].

Text Copyright John L. Welch 2013.

FACEMAIL Falls on its Face When Faced with Famous FACEBOOK Mark

What did Think Computer think would happen to its application to register FACEMAIL for email and instant messaging services, when faced with the FACEBOOK mark? The Board sustained Facebook's Section 2(d) opposition, finding the applied-for mark likely to cause confusion with FACEBOOK, registered in standard character and design form for, inter alia, instant messaging services. Impressive survey results, media evidence, and user data convinced the Board that FACEBOOK is a famous mark, entitled to a broad scope of protection. Facebook, Inc. v. Think Computer Corporation, Opposition 91198355 (July 23, 2013) [not precedential].

According to the evidence, Facebook has some 200 million user accounts in this country, and has received extensive and continuous media attention. Facebook's survey expert, Dr. Gerald L. Ford, found that approximately 95% of the general public recognize the FACEBOOK mark as referring to a social networking site. and about 98% of past and potential social network users recognize the mark. The Board concluded that FACEBOOK is famous, and its fame is "particularly significant because the evidence shows that it is well known to the general public as well as to users of social networking services." Of course, fame, when proven, plays a dominant role in the likelihood of confusion analysis.

Because the involved services are identical in part, the Board presumed that the channels of trade and the classes of purchasers (ordinary consumers) are the same.

As to the marks, the Board pointed out for the zillionth time that when the services are identical, a lesser degree of similarity is necessary to support a finding of likely confusion. The word "face" is the dominant element of both marks, and its significance is increased by its location as the first part of each mark. Moreover, "mail" is descriptive of applicant's services, and so "face" is the significant source-identifying element in the applied-for mark. Moreover, even though opposer itself does not use the term "facemail," industry writers have used the term to identify opposer's email and messaging applications (think "Big Blue for IBM). That evidence, too, supports opposer's claim. This evidence led to the conclusion that "Face" is the dominant element of both marks.

And so the Board concluded that the marks are more similar than dissimilar in appearance, sound, connotation, and commercial impression.

Finally, Facebook submitted the results of a likelihood of confusion survey, again conducted by Dr. Ford. Approximately 36.2% of respondents believed that applicant's services provided under the FACEMAIL mark were either offered or authorized by opposer, or that some business affiliation existed. The Board found that these results support a finding of likely confusion.

Applicant argued that opposer is a legal bully who uses "fraud, deceit, and an army of well-paid litigators to effectively crush any entity deemed a threat by its megalomaniacal leadership," and that opposer's history is well documented in the public domain and needs no further exposition by applicant. The Board was unimpressed by these assertions: it refused to take judicial notice of any facts purportedly underlying these accusations, found no supporting evidence in the record, and saw no egregious conduct in opposer's conduct of the opposition.

And so the Board sustained the opposition on the Section 2(d) ground, declining to reach opposer's dilution claim.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Is IPEN Merely Descriptive of Digital Pens?

The PTO issued a Section 2(e)(1) refusal to register the mark IPEN, deeming it to be merely descriptive of digital pens and online retail store services featuring digital pens. On appeal, the Board found that IPEN "is the equivalent of 'Internet pen,'" but does it immediately describe a function, feature, or characteristic of the identified goods and services? How do you think this came out? In re Tofasco of America, Inc., Serial No. 85069228 (June 24, 2013) [not precedential].

Wacom digital pen
The Examining Attorney relied on a dictionary definition of "pen" and the Board took judicial notice that "I" is shorthand for "Internet." Applicant submitted a webpage defining digital pen as a "battery-operated writing instrument that allows the user to digitally capture a handwritten note." A Wikepedia entry (here) described a digital pen as an  input device that captures the handwriting strokes of a user and digitizes them for display on a computer monitor.

The Board found that IPEN is an abbreviation for "Internet pen," and that a "digital pen" is an electronic input device that may be used with a computer in the manner of a traditional ink pen.

The question, then, was whether IPEN or "Internet pen" merely describes a function, feature or characteristic of digital pens or online retail store services featuring digital pens.

The Examining Attorney argued that applicant "has merely taken the 'I' prefix which signifies the Internet and merely added to it the generic term 'pen.'" It is well settled, the Examining Attorney argued, that when the "I" prefix is coupled with a descriptive term for Internet-related goods or services, the resulting mark is considered to be merely descriptive.

However, the Board concluded that the PTO had failed to show that a digital pen is an "Internet pen," or that the mark IPEN merely describes a function, feature or characteristic of the involved goods or services.

In other words, while the evidence supports a finding that IPEN is the equivalent of "Internet pen," there is no evidence that such term is synonymous with the term “digital pen” or merely describes an attribute of the recited goods and services.

Finally, the Board noted that any doubt as to mere descriptiveness must be resolved in favor of the applicant, and in such a case the application must be passed to publication so that it may be opposed by anyone who believes the mark is descriptive may opose registration.

And so the Board reversed the refusal.

Read comments and post your comments here.

TTABlog comment: Note that the Board distinguished this case from its ITOOL and iPOSTAGE decisions, where the PTO's proofs were more to the point.

Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Are C•PREME and SUPREME Confusingly Similar for Bicycles?

This applicant sought to register the mark shown below for bicycles and parts therefor, but the PTO refused registration under Section 2(d) in view of the registered mark SUPREME, in standard character form, for the same goods. The Board agreed with the Examining Attorney that "C•PREME" is the dominant element in the applied-for mark. But otherwise are the marks too close for comfort? How do you think this came out? In re C. Preme Limited, LLC, Serial No. 85316370 (June 28, 2013) [not precedential].

Because the involved goods are in part identical, the Board must assume, absent any limitations in the application and the cited registration, that the goods travel in the same, normal channels of trade to the same classes of consumers.

The Board agreed with the Examining Attorney that the literal portion of the applied-for mark "is the dominant portion because consumers will refer to applicant's goods using this portion of the mark." The Examining Attorney further contended that the involved marks are "phonetic equivalents" because applicant's mark "could reasonably be pronounced 'seh-preme,' the equivalent of 'supreme,'" and furthermore even if the applied-for mark were pronounced "see-preme" the marks would still sound quite similar. Finally, the Examining Attorney pointed out that C•PREME is not found in dictionaries, and submitted that the term is merely a "creative spelling" of SUPREME.

The Board, however, did not agree that C•PREME, which is not an actual word, is sufficiently similar to the actual word SUPREME to result in confusion.

In fact, there is no evidence that there are any words in the English language which include an individual letter separated from the rest of the word by a symbol such as applicant’s “dot” or “•.” More importantly, there is no similarity whatsoever between the first two characters of the respective marks, “SU” and “C•,” and the mere fact that registrant’s mark and the literal portion of applicant’s mark end in PREME, which is not itself an English-language word, is not enough for the marks to create similar overall commercial impressions.

Moreover, the cited mark SUPREME is laudatory and therefore weak and not entitled to broad protection.

In short, C•PREME and SUPREME look different, sound different, and convey different meanings (SUPREME having a commonly-understood meaning, whereas C•PREME has no meaning.)

The design element of the applied-for mark is large, distinctive, and impossible to ignore. Indeed the Board may not ignore it. But there is nothing in the design that calls to mind the word SUPREME. Despite the inclusion of "PREME" in both marks, they, on balance, create entirely different commercial impressions.

And so the Board reversed the Section 2(d) refusal.

Disclaimer requirement: The Board also reversed a requirement that applicant disclaim the word C•PREME. The Board disagreed that the word C•PREME is a misspelling of SUPREME or that it calls to mind that word. It concluded that C•PREME is not descriptive of anything, and so a disclaimer was neither necessary nor appropriate.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

Precedential No. 30: TTAB Re-Designates as Precedential Its Opinion Vacating ROLEX/ROLL-X

On July 17, 2013, the Board re-designated as precedential its January 29, 2013 opinion in the ROLEX/ROLL-X case, vacating its original decision of December 5, 2011. The TTAB originally dismissed Opposer Rolex's dilution-by-blurring claim, concluding that Rolex had failed to prove that the applied-for mark ROLL-X for "x-ray tables for medical and dental use" would, despite an "actual association" between the marks, impair the distinctiveness of Opposer's famous ROLEX mark. And in a further ruling, the Board dismissed Rolex's claim that Applicant AFP did not have a bona fide intent to use the ROLL-X mark when it filed its application to register. [TTABlogged here]. Rolex appealed to the CAFC and, while the appeal was pending, applicant AFP unilaterally withdrew its application to register. The CAFC then dismissed the appeal as moot and remanded the case to "allow the Board to consider a motion to vacate its decision in the first instance, in accordance with United States Bancorp Mortgage Company v. Bonner Mall Partnership, 513 U.S. 18, 29 (1994), and for any further proceedings deemed appropriate by the Board." The Board concluded that U.S. Bancorp mandated that the Board's decision be vacated. [TTABlogged here]. Rolex Watch U.S.A., Inc. v. AFP Imaging Corporation, 107 USPQ2d 1626 (TTAB 2013) [precedential].


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Precedential No. 29: TTAB Affirms Five (5) Refusals of "AOP" for Wine

WYHA? [Would You Have Appealed?] The Board affirmed a quintet of refusals to register the term AOP for wine, finding it to be deceptive under Section 2(a), and descriptive or deceptively misdescriptive under Section 2(e)(1). The Board also found that the term fails to function as a trademark (Sections 1, 2, and 45), and that applicant failed to comply with Examining Attorney Edward Fennessy's requirement for more specific information regarding the goods (Rule 2.61(b)). In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) [precedential].

Applicant's original specimen of use
Section 2(a) Deceptiveness: The test for deceptiveness under Section 2(a) has three elements: (1) whether the mark misdescribes the goods; (2) if so, whether consumers would likely believe the misrepresentation; and (3) whether the misrepresentation would materially affect the decisions of potential purchasers to purchase the product. [Or, shorthandedly, "misdescription, belief, and materiality?" - ed.].

The Examining Attorney submitted "a significant amount of evidence" to show that "AOP" is a term used by members of the European Union (EU) to designate a particular quality and geographical origin of wine. Applicant did not dispute the meaning of AOP, but argued that U.S. consumers will not be aware of the significance of the AOP designation because that designation is not yet mandatory, because it does not appear on most European wines distributed here, because AOP is a French-based acronym, and because most American wine consumers do not understand European designations of origin.

Applicant's contention, however, was contradicted by the "substantial evidence" submitted by the PTO, including excerpts from widely-available websites that discuss, in English, the AOP designation, and Internet evidence that demonstrate the sale of wine in bottles bearing the AOP designation.

The Board found that AOP is a designation of origin used by the European Union, and that applicant does not administer the AOP. Applicant admitted that its goods "do not necessarily originate in Europe." Therefore the Board concluded that AOP misdescribes applicant's wine. Based on the same evidence, the Board found that consumers would believe the misdescription of applicant's wine.

Finally, the PTO's evidence showed that a substantial portion of consumers would be interested in the AOP designation, since it is an indicator of quality and origin, and that bloggers and wine aficionados [One can't be both? - ed.] are "keenly aware"of the AOP designation. Therefore applicant's misdescription is material to the purchasing decision.

With all three elements of the deceptiveness test being met, the Board affirmed the refusal to register on the ground of deceptiveness.

Excerpt from above specimen of use
Rule 2.61(b) Requirement: The Examining Attorney required that applicant state "whether applicant's goods originate in Europe" and whether the applied for term AOP indicates whether applicant's goods are certified to meet the AOP standards of the EU. Applicant's responses were "evasive:" "[a]pplicant's goods do not necessarily originate in Europe," and its wines meet "all applicable rules and regulations" regarding origin and authenticity. When the questions were repeated, applicant responded that its goods "do not all originate in Europe," and that it had "no reason to seek certification by a European regulatory body."

In view of these "equivocal" responses, the Board found that applicant failed to comply with the requirement for information, and it affirmed this refusal.

Section 2(e)(1): In view of ambiguity in applicant's responses to the Rule 2.61(b) requirement for information, the Board addressed the mere descriptiveness and deceptive misdescriptiveness refusals in the alternative, based on the assumption that had applicant responded directly and fully to the Examining Attorney's requests for information, the responses would have been unfavorable.

If applicant's wines are AOP-certified then applicant would know this and the use of the term AOP would be known by applicant to be merely descriptive of the wines, and if the wines are not so certified, then the term is deceptively misdescriptive, and applicant is presumed to know this.

The Board, as discussed above, found that consumers would likely understand the term AOP to describe the EU system for indicating quality and geographic origin of certain wines. If applicant's wine is so certified, then its proposed mark is merely descriptive of the wine. If the wine is not so certified, the proposed mark is deceptively misdescriptive because consumers would likely believe the misrepresentation. [Note that, in contrast to Section 2(a) deceptiveness, materiality is not required here. Unlike a term deemed deceptive, a deceptively misdescriptive mark may be registered under Section 2(f) via a showing of acquired distinctiveness.  - ed.]

Failure to Function: The Board reviewed applicant's original specimen of use (above) and its substitute specimen (below), concluding that consumers would view the term AOP as merely informational and not as source-identifying. In the original specimen, AOP appears amidst other informational material at the bottom of the label, and in the substitute specimen AOP again appears far from the name of the wine and adjacent other informational matter. Moreover, Applicant stated to the PTO that its goods bearing the AOP designation "have been deemed by Applicant to meet its high standards for quality, craftsmanship, and satisfaction of all applicable rules and regulations pertaining to the origin and authenticity of the wine," and thus the term is presented "in an informational manner to inform consumers about a certification process rather than as a source identifier." [Query whether applicant's intent in this regard is relevant to how consumers perceive the term? - ed].

And so the Board affirmed this refusal as well.

substitute specimen of use
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TTABlog comment: What Gaul! [that's a pun, son]. Well, would you have appealed? BTW: this decision has been appealed to the CAFC.

Text Copyright John L. Welch 2013.

Precedential No. 28: TTAB Denies 12(b)(6) Motion to Dismiss Fraud Counterclaim

The Board denied Opposer Caymus Vineyards' motion to dismiss Applicant Caymus Medical's counterclaim for cancellation of a registration for the mark CAYMUS for wine, on the ground of fraud, ruling that Applicant's pleading was adequate to state a claim. However the Board granted opposer's motion to dismiss applicant's second counterclaim, which was based on Section 2(e)(2) [geographic descriptiveness], on the ground that it was barred by the 5-year statute of limitations embodied in Section 14 of the Trademark Act. Caymus Vineyards v. Caymus Medical, Inc., 107 USPQ2d 1519 (TTAB 2013) [precedential].

Fraud claim: The Board observed that under In re Bose, a party claiming fraud must allege that the other party obtained the subject registration by "knowingly making a false, material representation of fact with intent to deceive" the USPTO. "[A]llegations of fraud must be set forth with particularity, although malice, intent, knowledge, and other conditions of a person's mind may be averred generally." [What about reliance? - ed.].

Construing the allegations of the counterclaim in the light most favorable to applicant, the Board found that applicant had alleged with sufficient particularity facts that, if proven at trial, would establish fraud. Applicant alleged "when and how the fraud allegedly occurred and the content of the false representations," and indicated "what was obtained by reason of the asserted fraud."


Specifically, the Examining Attorney had asked opposer, when an applicant, whether CAYMUS had any geographical significance or any meaning in a foreign language." As a result of that conversation, the Examining Attorney entered the following amendment: "[t]he wording 'CAYMUS' has no significance other than trademark significance."

Applicant alleged that opposer knowingly, and with deceptive intent, failed to disclose that CAYMUS "had primarily geographic significance, and that its grapes are grown and/or its wine is produced near or at the Caymus locale." Applicant further alleged that opposer made this false statement in order to induce the USPTO to rely thereon, which the USPTO did by issuing, renewing, and maintaining the registration.

Opposer contended that because the amendment was entered by the Examining Attorney and was not opposer's statement per se, the attribution of knowing, deceptive intent is "speculative." The Board was unmoved: "It is applicant's responsibility to ensure that accurate information is transmitted to the USPTO." If opposer believed that the amendment did not accurately reflect the information provided by its counsel, it had an obligation to immediately inform the Examining Attorney. "Deliberately omitting relevant information, as has been alleged by applicant, may be treated as the equivalent of a false statement in its effect and also, under certain circumstances, show the necessary element of intent." And, of course, a client is bound by the actions of its attorney.

Opposer maintained that "CAYMUS" has no geographic, but only historical and cultural significance, but the Board pointed out that this was irrelevant to whether applicant had properly stated a claim of fraud. Instead it constituted a response on the substantive issue.

Therefore, the Board denied the motion to dismiss applicant's fraud counterclaim.

Section 2(e)(2) claim: Although opposer's pleaded registration was more than five years old, applicant maintained that because of opposer's fraud, the Section 14 bar to cancellation should not apply to its claim of geographic descriptiveness . The Board disagreed:

The assertion that opposer may have fraudulently procured its registration, while stating a valid ground for cancellation of a registration that is more than five years old, does not allow applicant to assert a ground that is available only when a registration is less than five years old.

The Board therefore granted opposer's motion to dismiss applicant's second counterclaim as time-barred by Section 14 of the Act.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

Genericness Counterclaim Demolishes ROCKSCAPE Registration for Landscaping Stone

Delaware Quarries opposed PlayCore's application to register the mark ROCKSCAPE for "playground equipment, namely, climbing units," claiming a likelihood of confusion with its identical, registered mark for "stone, gravel or similar products, namely boulders, stone veneer, and crushed stone for use in landscaping, building construction, and paving." PlayCore counterclaimed for cancellation on the grounds of genericness and mere descriptiveness. The Board dismissed the opposition and granted the counterclaim petition, confirming the old adage that people who live in glass houses .... Delaware Quarries, Inc. v. PlayCore IP Sub, Inc., Opposition No. 91190282 (July 2, 2013) [not precedential].

Likelihood of confusion: The crucial question was, of course, the relatedness of the goods. PlayCore admitted that its products are "themed to look more or less like rocks," and could be integrated with landscaping. The Board, however, found the relationship between the involved goods, if any, to be insufficiently clear. There was no evidence that the goods travel in the same trade channels in a manner that would likely cause source confusion. The purchasers of PlayCore's products would be bought after some forethought, and not on impulse. [But what about Delaware's goods? - ed.]. Finally, unauthorized, third-party usage of the term "rockscape" for similar products showed that Delaware's mark is weak.

And so the Board dismissed the opposition.

Genericness: It was not disputed that the genus of Delaware's goods was set out in its identification of goods. PlayCore submitted evidence showing dozens of websites using the term "rockscape" in connection with landscaping with rocks, stones, etc. The Board concluded that these uses "clearly establish" that "rockscape" would be understood by relevant consumers as a generic term for Delaware's identified goods.

For the sake of completeness the Board ruled that Delaware's mark was at least merely descriptive, and since Delaware did not claim acquired distinctiveness, the Board sustained the petition for cancellation on that alternative ground as well.

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Text Copyright John L. Welch 2013.

Test Your TTAB Judge-Ability: Are Prepared Alcoholic Cocktails Related to Beer?

The PTO refused registration of the mark BATTLEFIELD BLUE 'RITA for "prepared alcoholic cocktail[s]" [BLUE disclaimed], finding the mark likely to cause confusion with the registered mark BATTLEFIELD for "beer." The Board deemed the marks to be "highly similar," since applicant "has essentially appropriated the registrant's entire arbitrary mark." But what about the goods? Are they sufficiently related for Section 2(d) purposes? In re Genghis Grill Franchise Concepts, LP, Serial No. 85372951 (July 2, 2013) [not precedential].

The Board noted that on many occasions different types of alcoholic beverages have been found by its reviewing court and by the Board to be sufficiently related in a likelihood of confusion analysis, because the beverages may share common uses, channels of trade, and consumers. For example: beer and ale related to tequila; malt liquor related to tequila; beer to wine; whiskey to gin and vodka; cognac to malt liquor, beer and ale; distilled spirits to wine; wine to whiskey; and Scotch whisky to rum.

Examining Attorney Linda E. Blohm submitted evidence that beer and alcoholic cocktails may be offered in the same channels of trade to the same customers: specifically, she provided retail store advertisements and restaurant menus where beer and alcoholic cocktails appear alongside each other. News articles, advertisements, and recipes demonstrated that beer may be used as an ingredient of alcoholic cocktails.

The Board disregarded applicant's arguments that its prepared cocktails will be served only in restaurants and that registrant's beer will be offered at registrant's brewery, pubs, and the like, since there are no such restrictions on channels of trade in the application and cited registration.

And so the Board affirmed the refusal.

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TTABlog note: Remember, there is no per se rule that ....

Text Copyright John L. Welch 2013.

Sale to Single Foreign Customer Sufficient for Priority, Says TTAB

The Board granted a Section 2(d) petition for cancellation of a registration for the mark ULTRACLEAN for "raw cotton," finding it likely to cause confusion with the previously-used, identical mark for "specially cleaned raw cotton." On the crucial issue of priority, petitioner proved that it shipped its products to a customer in Israel before respondent's earliest first-use date (its filing date). Barnhardt Manufacturing Company v.Wildwood Gin, Inc., Cancellation No. 92053237 (June 17, 2013) [not precedential].

Respondent did not question the distinctiveness of the ULTRACLEAN mark, and so the Board found  the mark to be distinctive. Petitioner submitted three invoices showing sales of its product, the invoices bearing the ULTRA-CLEAN mark, [The hyphen was deemed immaterial - ed.] and respondent admitted that the goods were shipped in three separate shipments in December 2006. The earliest date on which respondent could rely was May 9, 2008, the filing date of the application that issued as the subject registration.

Respondent pointed to the lack of evidence that petitioner's goods were labeled with the mark, but petitioner's testimony established that the packaging for the goods was so labeled, and it provided a label of the type that had been used.

Respondent also claimed that the sale to a single, foreign customer did not demonstrate such "market penetration" as would suffice for establishment of trademark rights, but instead constituted a mere "token use." The Board, however, noted petitioner's lack of cited authority for the proposition that a single sale is not sufficient to establish priority. Instead the Board pointed out that petitioner's shipment of product to a company in Israel "was clearly a sale of product in commerce," which satisfies the definition of "use" in Section 45 of the Trademark Act.

The "market penetration" test applies in the concurrent use context, for the purpose of determining the geographic extent of common law rights; it does not apply here. "Our precedent does not require use in commerce or any particular degree of market penetration in order to establish priority." Petitioner needed to show only that it made a bona fide use of the mark in the ordinary course of trade, and not merely to reserve a right in the mark. Here, there was an arms-length, legitimate commercial transaction, and nothing suggested that the transaction was not genuine.

Respondent also argued that petitioner's use of the mark was not continuous. The Board observed, however, that a party is required to show only prior use to establish priority, absent a claim of abandonment. Respondent made no such claim, and in any event, the non-use by petitioner was less than three years.

And so the Board ruled that petitioner established priority by a preponderance of the evidence, and it granted the petition for cancellation.

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Text Copyright John L. Welch 2013.

Precedential No. 27: TTAB Rejects Genericness and Fraud Claims, But Cancels "ANNAPOLIS TOURS" Section 2(f) Registration for Mere Descriptiveness

In a 58-page decision, the Board granted a petition for cancellation of a registration for ANNAPOLIS TOURS for "conducting guided tours of historic districts and other areas of cities" [TOURS disclaimed], finding the mark to be merely descriptive and lacking in acquired distinctiveness. The Board dismissed petitioner's claims of genericness and fraud, but it ruled that by showing the mark to be "highly descriptive," the petitioner overcame the presumption arising from registration under Section 2(f) and the burden shifted to respondent to "defend its registration." Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc. dba Watermark Cruises, 107 USPQ2d 1750 (TTAB 2013) [precedential].

Evidentiary rulings: The first 24 pages of the decision deal with various evidentiary and procedural issues. Perhaps of most interest was the Board's ruling, under FRE 702, that petitioner's expert witness was not qualified to testify as to "actual consumer perception." The expert, a travel writer, did not conduct any formal surveys, but instead based her proposed opinion of "the average American consumer of travel" from casual conversations about "visiting Annapolis." However, she did not record any of the data regarding those conversations.

Genericness: The Board found that the genus of services at issue was adequately defined by respondent's recitation of services: "conducting guided tours of historic districts and other areas of cities." The relevant consumers included leisure travelers, travel agencies, tour providers, and resellers. It was petitioner's burden to show by a preponderance of the evidence that ANNAPOLIS TOURS is understood by the relevant purchasing public as primarily referring to "conducting guided tours of historic districts and other areas of cities."

Petitioner relied on dictionary definitions, newspaper and magazine articles, and third-party testimony, including that of competitors of respondent. The Board examined the evidence "up through the time of trial." But petitioner "submitted no evidence of use from a printed publication of the phrase 'Annapolis tours' per se as a generic designation for respondent's services." A few articles showed use of "Annapolis tour" to describe a tour of the city of Annapolis.

The documents together with the testimony presented "at best a mixed record of use of the phrase both generically and as part of what appears to be trademarks or trade names." [This appears to contradict the statement that there were no generic uses - ed.]. Following In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 4 USPQ2d 1141, 1144 (Fed. Cir. 1987), the Board ruled that petitioner failed to prove genericness by a preponderance of the evidence.

Fraud: Petitioner's fraud claim was based on the allegedly false statements made in respondent's Section 2(f) declaration regarding substantially exclusive and continuous use. Petitioner asserted that the signatory took no action to verify whether respondent's predecessor had made such use of the mark, and furthermore she knew that the predecessor was not using "Annapolis Tours" as a source indicator. Petitioner also contended that the declarant was aware of third-party usage. According to petitioner, "the requisite intent to deceive the PTO can be inferred" from the declarant's "conduct in this proceeding," and that at a minimum her execution of the Section 2(f) evidenced a "reckless disregard" for the truth.

Respondent pointed to the fact that respondent sought advice of counsel before executing the declaration, but the Board observed that such seeking legal advice is not an impenetrable defense to a claim of fraud. However, it is up to the fraud claimant to establish a factual basis for the inapplicability of the advice-of-counsel defense by, for example, eliciting further testimony regarding the advice received and the extent to which the advice was taken. M.C.I. Foods, Inc. v. Bunte, 96 USPQ2d 1544 (TTAB 2010) [precedential].

Examining the declarant's testimony (which did not trespass into the privileged area of the nature of the advice given), the Board concluded that petitioner had failed to prove fraud "'to the hilt' with clear and convincing evidence." [quoting In re Bose Corp., 91 USPQ2d 1938, 1939 (Fed. Cir. 2009). Her testimony demonstrated that, even if her statements were false, they were not made with an intent to deceive the PTO. She testified that she "believed" that her statements regarding continuous and substantially exclusive use were true based on her observations, and that she did not merely rely on advice of counsel.

Furthermore, her testimony demonstrated that she did not act with recklessness, and therefore the Board found no need to decide whether a "reckless disregard for the truth" is sufficient to support a finding of fraud.

Mere descriptiveness: The subject registration was issued under Section 2(f) based upon a 5-year declaration of continuous and substantially exclusive use, with no actual evidence of acquired distinctiveness. The registration enjoys a presumption that the registered mark has acquired distinctiveness, and the party seeking to cancel must "produce sufficient evidence for the Board to conclude in view of the entire record ... that the party has rebutted the mark's presumption of acquired distinctiveness by a preponderance of the evidence." See The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 92 USPQ2d 1626, 1630 (Fed. Cir. 2009). According to Cold War Museum, the ultimate burden of persuasion remains on the petitioner.

Petitioner argued that ANNAPOLIS TOURS is "highly descriptive" and therefore a heightened showing of acquired distinctiveness is required. Respondent maintained that because the Examining Attorney did not require additional evidence of acquired distinctiveness, the mark should not be considered "highly descriptive," and further that petitioner must show that the subject mark was not in continuous and substantially exclusive use in order to meet its burden to overcome the presumption.

The Board ruled against respondent, holding that "[t]he fact that respondent’s mark was registered pursuant to Section 2(f) based solely on a declaration of use does not preclude petitioner from introducing evidence that the mark is so highly descriptive as to require actual evidence of acquired distinctiveness in order to satisfy its initial burden of proof." To hold otherwise would unduly restrict a plaintiff in its proofs and would fail to take into account changes in the marketplace. "Essentially, this would amount to substituting the examining attorney’s determination, based on the limited record adduced during ex parte examination, in lieu of a more expansive record that may be shown in an inter partes proceeding." Once petitioner meets its initial burden, "the burden of proof shifts to respondent to defend its registration." [Shouldn't that be the burden of producing evidence, not the "burden of proof"? - ed.].

Applying those standards, the Board found that petitioner had "amply" demonstrated that the subject mark is "highly descriptive." [By the way, where is the line to be drawn between "descriptive" and "highly descriptive"? - ed.]. The Board's explanation of why it applied the "highly descriptive" label consisted solely of this statement: "See discussion, Genericness Claim, supra."

Given the highly descriptive nature of the mark and the fact that the only evidence that respondent offered at the time of registration was the five year period of use we find that petitioner has satisfied its initial burden of making a prima facie showing of lack of acquired distinctiveness.

The burden therefore shifted to respondent to "now prove acquired distinctiveness based on any 'additional evidence or argument' ..., keeping in mind that petitioner bears the ultimate burden of proof by a preponderance of the evidence."

The Board found respondent's sales figures to be "quite low." Proof of media recognition was lacking. And respondent's evidence of continuous use since 1992 was "problematic," the testimony of its witnesses was "mixed," and petitioner's rebuttal testimony cast further doubt on the issue.

The Board concluded that, given the highly descriptive nature of the term ANNAPOLIS TOURS, respondent's evidence was insufficient to rebut the prima facie case of descriptiveness established by petitioner, and that petitioner met its ultimate burden of proof. The Board therefore granted the petition to cancel on the ground of mere descriptiveness.

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TTABlog comment: The key ruling was obviously that the mark ANNAPOLIS TOURS is "highly descriptive," yet there is no explanation of what the test is for "high descriptiveness," and little discussion of why petitioner's insufficient evidence regarding genericness was deemed sufficient to meet the "highly descriptive" test.

Curiously, at page 5 of the decision, the Board states that petitioner "has not argued the descriptive [claim] in its brief," and so that claim was waived.

On the fraud issue, what were the statements that were false? Registrant's use of ANNAPOLIS TOURS as a mark appeared, on this record, to be continuous and substantially exclusive. If there weren't any false statements, why get into a discussion of intent?

The Board's citation of the Neapco decision in connection with the burden of proof, is more confusing than helpful. Neapco did not concern a Section 2(f) registration, and the quotation from Neapco has no applicability here.

Copyright 2013 John L. Welch.

Test Your TTAB Judge-Ability: Are "THE TEAM, THE TEAM, THE TEAM" And "TEAM" Confusable for Athletic Footwear?

Schembechler Enterprises sought to register the mark THE TEAM, THE TEAM, THE TEAM for various items of clothing, including athletic footwear and uniforms. Examining Attorney Kristina Morris refused registration on two grounds: (1) likely confusion with the registered mark TEAM for "athletic shoes and sandals for men and boys; dress shoes, sandals, and slippers for women and girls," and (2) as to athletic uniforms, mere descriptiveness. Applicant appealed. How do you think this came out? In re Schembechler Enterprises, LLC, Serial No. 85314616 (June 12, 2013) [not precedential].

Likelihood of Confusion: The goods in the application and registration overlap as to athletic footwear, and so the Board must presume that those goods travel through the same, normal channels of trade to the same classes of consumers. But what about the marks?

Of course, the proper test is not a side-by-side comparison. Moreover, since the goods are legally identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. The Board observed that applicant’s mark "simply repeats the entire prior registered mark three times and adds the definite article "the." "Mere repetition does not necessarily create a new and different meaning or commercial impression of a mark as compared to its separate components." And the article “the” has no significance as a source-identifier.

Schembechler argued that its mark creates a different overall commercial impression from that of the cited mark, relying on two existing registrations for the mark PIZZA!PIZZA! for “restaurant services” and “pizza for consumption on or off the premises.” The Board pointed out for the umpteenth time that it is not bound by the decisions of Examining Attorneys in other cases. "Each case must be decided on its own facts, based on the particular mark, the particular goods or services, and the particular record in each application. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)."

 The Board concluded that applicant's triple repetition, even considering the addition of the word “THE,” did not create a mark with a "different meaning or significantly different commercial impression from the cited registered mark TEAM." It found the marks to be similar in sight, sound, connotation, and commercial impression, and so it affirmed the Section 2(d) refusal.

Mere Descriptiveness: The Board reversed the mere descriptiveness refusal vis-a-vis applicant's "athletic uniforms," reasoning as follows:

Athletic uniforms are worn by teams. To our knowledge, there is no use or purpose for athletic uniforms other than to be worn by members of athletic teams. For that reason, applicant’s mark THE TEAM, THE TEAM, THE TEAM conveys no information about applicant’s athletic uniforms.

Read comments and post your comments here.

TTABlog comment: I don't understand the Board's reasoning as to the mere descriptiveness issue. Would the term BASEBALL not be descriptive of baseball gloves because there is no other use or purpose for a baseball glove?

Text Copyright John L. Welch 2013.

TTAB Grants Two Summary Judgment Motions Due To Lack of Bona Fide Intent

In a pair of decisions issued the same day, the Board granted two motions for summary judgment on the ground of lack of bona fide intent. In the first, the applicant sought to register his mark for "retail grocery stores," but his intent was to sell his products for purchase by grocery stores. In the second, the applicant had no business plan or other documentary support for his alleged bona fide intent.

Pacific Poultry Company, Limited v. George D. Stirling, Jr., Opposition No. 91204620 (June 12, 2013) [not precedential]. Stirling applied to register the mark SWEET G'S HULI CHICKEN MARINADE, SAUCE, GLAZE for "retail grocery stores." He admitted that he had no intention to operate any retail stores, but instead intends "to sell his products to retail grocery stores for the distribution of his products at retail." In short, he claimed that the sale to stores is "in fact, a 'retail grocery store service.'"

The Board sided with opposer, observing that "a service must be performed primarily for the benefit of others, and promoting the sale of one's own goods is not a service." Applicant's potential sale of sauces to grocery stores "is promoting the sale of his own goods. It is not a registrable services, and not a grocery store service." And so the Board entered judgment summarily, declining to reach the Section 2(d) claim.

Diageo North America, Inc. v. Captain Russell Corp., Opposition No. 92103745 (June 12, 2013) [not precedential]. This applicant sought to register CAPTAIN RUSSELL CUBA LIBRE for rum and cola mixes, but Captain Morgan stood in the way. After discovery closed, the Board granted opposer's motion to add the ground of lack of bona fide intent.

Applicant admitted that it did not have a business plan or a budget, and it had no market research, recipe development, or discussions with advertising or design agencies. It had no potential advertising or plans to advertise, and had not partnered with any investors. It stated that it did not have money to produce the product. In short, there was no objective evidence to support its alleged bona fide intent. This absence of documentary evidence established a prima facie case of lack of bona fide intent. See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993).

Applicant testified that it is a start-up company "with limited resources but great idea for product." In order to attract investors, "it is imperative to those investors to know that CAPTAIN RUSSELL CUBA LIBRE trademark is granted to the Applicant."

The Board concluced that applicant did not come forth with evidence to adequately explain its lack of documentation or otherwise rebut opposer's prima facie case. Therefore it granted the summary judgment motion.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

TTAB Affirms Refusal to Register Non-Distinctive Product Design/Packaging for Clothing

Finding the purported mark shown below - whether deemed product design or packaging - to be non-distinctive and therefore unregistrable under Sections 1, 2, and 45, the Board affirmed the PTO's refusal to register the mark for various clothing items. According to applicant, the purported mark comprises "packaging for sleepwear that consists of a transparent bag enclosing a book positioned behind matching sleepwear so that the cover of the book remains partially visible from the front of the packaging,together with a ribbon positioned directly above the book and sleepwear tying the neck of the bag. The matter in dotted lines is not part of the mark and serves only to show the position of the mark." In re Book to Bed, Inc., Serial No. 85262093 (June 21, 2013) [not precedential].

Examining Attorney Mark Rademacher maintained that the applied-for mark is more akin to product design than packaging, since the book is part of what is offered to and purchased by consumers. Of course, if the mark is a product design, then under Wal-Mart v. Samara it cannot be inherently distinctive. If it is considered packaging it could be inherently distinctive. This difference was potentially important because applicant made no attempt to prove acquired distinctiveness. In other words, its only hope was to convince the Board that its mark is inherently distinctive packaging.

Assuming, without deciding, that the mark constitutes product packaging, the Board applied the CCPA's Seabrook test to determine whether it is inherently distinctive. The record evidence showed use of transparent plastic wrap fastened with a bow for various gift baskets, as well as children's gift sets comprising books and other child-friendly products, including hats and booties. The Board concluded that "consumers are familiar with such arrangements and the placement of a book in a gift set with other items would not serve a source distinguishing purpose." In short, applicant's applied-for mark is a "mere refinement of commonly adopted and well-known product and packaging arrangements." Despite being unique in the marketplace, it is not inherently distinctive.

The Board noted that it need not make "an absolute determination" whether the proposed mark is product packaging or product configuration (or some "tertium quid" that is akin to packaging), because the particular categorization does not affect the outcome of the case. Without proof of acquired distinctiveness, the mark cannot be a registrable product configuration, and because it also lacks inherent distinctiveness, the mark cannot be registrable packaging trade dress.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note: I think this decision should be precedential. Good explanation and application of the law.

Maybe I'm being pedantic, but I don't like to use the term "secondary meaning" in connection with trade dress. I think the term makes sense for word marks, because words have meanings. But otherwise, I prefer to use the term "acquired distinctiveness." What do you think about that?

Text Copyright John L. Welch 2013.

TTABlog Uncorked: Collection of Section 2(d) Cases Involving Wine (Updated)

I have put together a collection of TTABlogged Section 2(d) decisions involving involving wine. A few of the decisions are precedential, but even the non-precedential ones may provide some ideas and possible arguments: like the SAURUS/LAURUS decision, in which the Board panel agreed with opposer that "imbibing consumers may have even less ability than the general consuming public at large to make distinctions between or among such similar marks." The Board found wine to be related to beer, tequila, soft drinks, gelatin shots, sauces, vinegar, and other food items. What about water and wine? Two decisions: one says they are related, and in the other the opposer failed to put in evidence of their relatedness. Wine and restaurant services? Yes, if the proofs are goods. bouillon cubes, soft drink mix, baking soda, and seasoning (MSG)? Not so much.

wine and wine

• Precedential No. 23: CHEMIN DES PAPES Not Confusable with CHATEAUNEUF-DU-PAPE CONTROLE for Wine, Says TTAB
• MERLO'S MERLOT for Wine is Primarily a Surname, Confusable with LAGO DI MERLO, Says TTAB
• TTAB Dismisses 2(d) Opposition: TAMAYA Not Confusable With MAYA, Both For Wine
• CHAMPARTY Not Confusable With CHAMPAGNE for Sparkling Wine, Says TTAB
• Applicant’s Prior Use of PARLAY for Wine Was Not Unlawful Despite Lack of COLA Approval, Says TTAB
• Finding CORVUS and CORVO Confusingly Similar for Wine, TTAB Sustains 2(d) Opposition
• Test Your TTAB Judge-Ability: Are "LES COLLINES" and "HILLS VINEYARD" Confusingly Similar for Viticulture Services? [Answer: No]
• Another Test of Your TTAB Judge-Ability: Are CLOUDBANKS and FOGBANK Confusingly Similar for Wine? [Answer: Yes]
• Parties Go ACR: TTAB finds "FREDERICK WILLIAM" and "FREDERICK WILDMAN logo" Not Confusingly Similar for Wine
• TTAB Reverses 2(d) Refusal, Finds "PORTIA SUMMA" and "SUMMA VINEYARDS" Not Confusingly Similar for Wine 
• TTAB FInds "LUZ DE ESTRELLA" and "STARLITE WINERY" Confusingly Similar for Wine
• "CINQUANTE-CINQ" and "55" Confusingly Similar for Wine, Says TTAB, Equivalently
• TTAB Grants 2(d) Summary Judgment: "MEIER'S" and "MEYER VINEYARD" for Wine Confusingly Similar 
• Finding Wine-Imbibing Consumers More Susceptible to Confusion, TTAB Deems "SAURUS" and "LAURUS" Confusingly Similar 
• In a Non-Precedential Ruling, CAFC Affirms TTAB's Uncitable "TORRE MUGA" Decision 
• TTAB Query: "QUINTUS" and "QUANTUM" Confusingly Similar for Wine?
• Third-Party Uses Lead TTAB To Find "TORRE MUGA" And "TORRES" For Wine Not Confusingly Similar [Answer: No]
  
• Heard Through The TTAB Grapevine: "WESTSIDE RED" Confusingly Similar to "WESTSIDE BLUE" For Wine
  
• TTAB Affirms 2(d) Refusal Of Afrikaans "SONOP" For Wine

wine and beer

• Precedential No. 9: Finding Wine and Beer Related, TTAB Affirms 2(d) Refusal of "HB" over "HB & Crown Design"
• Test Your TTAB Judge-Ability: Two Cases of Beer and Wine [2(d) refusals affirmed].
• Finding "BELL HILL" for Wine and "BELL'S" for Beer Too Dissimilar, TTAB Dismisses 2(d) Opposition
• Finding Wine and Beer Related, TTAB Affirms 2(d) Refusal of "BEAR REPUBLIC" over "BEAR REPUBLIC RICARDO'S RED ROCKET ALE & Design"

wine and tequila

• ATELIER for Tequila Confusable with ATELIER WINERY for Wine, Says TTAB
• Test Your TTAB Judge-Ability: Are GRAN SOL for Tequila and GRAN VINÃ SOL for Wine Confusingly Similar? [Answer: Yes]

wine and soft drinks

• TTAB Sustains 2(d) Opposition, Finding Wine and Soft Drinks Related

wine and water

• Precedential No. 26: FInding Wine and Water Related, TTAB Sustains 2(d) Opposition
• Opposer Fails to Prove Water and Wine Related; TTAB Dismisses 2(d) Opposition

wine and gelatin shots

• Test Your TTAB Judge-Ability: Is JOTS for Gelatin Shots Confusingly Similar to TOTT'S for Sparkling Wine? [Answer: Yes].

wine and sauces

• Test Your TTAB Judge-Ability: Are Wine and Sauces Related Goods? [Answer: Yes]

wine and restaurant services

• WYHA? TTAB Affirms 2(d) Refusal of BRIX CELLARS over BRIX for Restaurant Services
• TTAB Affirms 2(d) Refusal: "MY BIG FAT GREEK WINE" Confusingly Similar to "MY BIG FAT GREEK RESTAURANT"
• TTAB Reverses "ANDIAMO" 2(d) Refusal: Insufficient Proof that Wine and Restaurant Services are Related
• PTO Proves Wine and Restaurant Services Related, TTAB Affirms 2(d) Refusal of "BRICKSTONE CELLARS"
• Finding Wine and Restaurant Services Related, TTAB Affirms 2(d) Refusal of "SEVEN SISTERS NAKED EYE"

wine and vinegar, soft drink mix, baking soda, bouillon cubes, and seasoning

• Simi Winery's Glass One-Fifth Full Following TTAB Fracas

TTABlog comment: Of course, there is no per se rule that wine is related to every other beverage. It just works out that way almost all the time.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.

Precedential No. 26: FInding Wine and Water Related, TTAB Sustains 2(d) Opposition

The Board sustained a Section 2(d) opposition to registration of the word-and-design mark shown below [LIGHT disclaimed], for bottled water (and other related goods), finding a likelihood of confusion with the registered marks GOTT and JOEL GOTT for wine. Marketplace evidence and third-party registrations demonstrated that wine and water are of the type of goods that may emanate from a single source. Along the way, the Board granted opposer's motion to strike applicant's supplemental disclosures submitted during its testimony period. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424 (TTAB 2013) [precedential].

Evidentiary issues: Applicant submitted a declaration with accompanying exhibits during its testimony period, but the Board observed that a declaration cannot be submitted in lieu of testimony unless the parties so stipulate. See Rule 2.123(b) and TBMP Section 703.01(b). Even if the declaration could be viewed as operating like a notice of reliance, the exhibits to the declaration were not the type of documents that would be admissible by that route: they were advertising materials generated by applicant. In short, neither the declaration nor the exhibits were admissible.

Moreover, that fact that applicant was required to supplement its discovery responses does not mean that the responses were thereby made of record in the proceeding. And in any case, the advertising materials were apparently available only in Peru and therefore had no probative value.

Likelihood of Confusion: The Board viewed the design elements of applicant's mark as "insignificant background elements," concluding that "applicant has essentially appropriated registrant's mark GOTT without adding any other distinguishing features."  The word LIGHT, disclaimed in the application, provides descriptive information regarding applicant's products. The wave design "merely reinforces the connection to applicant's goods as water beverages and related goods."

The Board found  applicant's mark and the mark GOTT to be similar in sight, sound, meaning, and commercial impression. Likewise, applicant's mark is similar to the registered mark JOEL GOTT. The inclusion of the first name JOEL in opposer's mark merely underscores the fact that GOTT connotes a person's name.

As to the goods, opposer's evidence showed that wine and water are related goods. Opposer's witness testified that she purchased or obtained bottled water at several wineries, the water being sold under the same brand name as the wine. Use-based third party registrations also suggested that these goods may emanate from a single source under a single mark. This evidence "strongly favors a finding of likelihood of confusion."

As to channels of trade, opposer proved that the involved goods will be marketed in similar venues, like grocery stores and "big box" stores. Opposer sells to Safeway, Wal-Mart, and Costco; applicant's witness testified that  it intends to sell its water in supermarkets.

The fact that the goods will be sold in the same large store does not necessarily support a Section 2(d) claim, but here there was testimony that both water and wine are sold at wineries, and further Mr. Gott himself testified that he has seen water and wine sold in the same section of stores. [I guess you've Gott to believe him - ed.]. Menus from restaurants included water and wine in the same menu section. Website printouts described mixing wine and water to make wine spritzers and other popular drinks, as well as the pairing of wine and water. Thus opposer established that the involved goods are related products sold through the same trade channels to the same classes of consumers.

Balancing the duPont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Why is this case precedential? Seem rather straightforward to me. As I've said before, although there is no per se rule that all beverages are related for Section 2(d) purposes, it does seem to work out that way.

Text Copyright John L. Welch 2013.