Precedential No. 35: TTABang! SMART SERIES Merely Descriptive of Firearm Safes

The Board affirmed a Section 2(e)(1) refusal to register the mark SMART SERIES, finding the mark to be merely descriptive of "metal safes specifically designed to store firearms." The Board agreed with Examining Attorney Susan Leslie DuBois that the mark describes applicant's safes as "belonging to a larger product line" and featuring "a particular level of  technology, such as microcomputers or microprocessors." In re Cannon Safe, Inc., 116 USPQ2d 1348 (TTAB 2015) [precedential].

Applicant feebly argued that even if SMART SERIES conveys some information about applicant's goods using "some sort of technology and that they are part of some sort of line of products," such information is vague and not conveyed with sufficient particularity to invoke a Section 2(e)(1) bar. Moreover, Applicant asserted, even if the words "smart" and "series," standing by themselves, would each be descriptive, the phrase SMART SERIES is registrable because it is a combination mark with an incongruous meaning. [And what meaning is that? - ed.].

Applicant indicated that its safes will be equipped with microprocessors and microcomputers. The Board therefore concluded that the goods have a "smart" component, and applicants identification of goods is broad enough to include gun safes with microprocessors. Moreover, the evidence showed that the word "smart" in the field of safes has been used to describe those that include microprocessors to provide safety. In fact, contemporary gun safes include built-in microprocessors for such features as fingerprint recognition and tampering protection.

The Board found that consumers will readily understand from the word SMART that applicant's gun safes contain automated, technological devices such as microprocessors that make them "smart."

As to the word SERIES, applicant uses the word "series" for several other lines of gun safes. Moreover, it is not uncommon [litotes?! - ed.] in the industry to consider safes as a "series." For example, Liberty Safes offers the "Lincoln Series."

The combination of SMART and SERIES "does not result in a mark which as a whole has a nondescriptive or incongruous meaning." Each component retains its merely descriptive significance, resulting in a mark that is merely descriptive. Consumers will understand SMART SERIES as identifying "another of Applicant's various series of safes, i.e., a line of safes offering enhanced capabilities made possible by the use of microprocessors."

The Board therefore affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? My goodness, the "precedential" tag is certainly thrown around loosely these days. If these safes did not contain microprocessors, would the mark be deceptive under Section 2(a)?

Text Copyright John L. Welch 2015.

Precedential No. 34: MMMBop! TTAB FInds C.H. HANSON Confusable with HANSON for Hand Tools

In a real yawner, the Board affirmed a Section 2(d) refusal to register the mark C.J. HANSON for "Hand tools, namely, chalk line reels; Hand tools, namely, squares; Hand-operated sharpening tools and instruments; Hand-operated tin snips; Pliers; Snips," in Class 8, finding the mark likely to cause confusion with the mark HANSON registered for "Die taps and die sets, taps and tap sets, all the foregoing for use with machine tools," in Class 7, and for "hand tools, namely, wrenches, and accessories for wrenches, namely, die taps and die sets, taps, and tap sets," in Class 8. The Board rejected Applicant's puzzling interpretation of Registrant's class 8 identification of goods, which interpretation would limit the goods to specialized tools used to create thread in a piece of metal, and would exclude ordinary wrenches. In re C. H. Hanson Company, 116 USPQ2d 1351 (TTAB 2015) [precedential].

The Marks: The Board observed that the mere addition of "C.H." to registrant's mark "does not obviate the similarity between the marks because consumers would be likely to believe that the marks HANSON and C.H. HANSON refer to the same person." It concluded that the marks are similar in appearance, sound, and meaning, and highly similar in commercial impression.

The Goods: Applicant chose to ignore the phrase "Hand tools, namely" in the class 8 identification of goods in the cited registration. It contended that, absent a semicolon after "wrenches," the phrase "Hand tools, namely, wrenches" merely modifies the remaining class 8 goods. [Huh? - ed.]. According to applicant, the term "wrenches" by itself is indefinite, and therefore "the punctuation should be interpreted as limiting Registrant's wrenches to the drives and stocks related to its taps and dies."

Applicant pointed to a brochure of registrant's to illustrate the specialized nature of registrant's wrenches, but of course the Board pointed out that its determination of the issue of likelihood of confusion must be based on the goods as identified in the cited registration, not on extrinsic evidence of actual use.

It is true that when an identification is technical or vague, it may require clarification via extrinsic evidence, but here there was nothing vague or technical about the phrase "hand tools, namely, wrenches." That very phrase appears in the USPTO's Trademark Acceptable Identification of Goods and Services (Trademark ID Manual). The Board also took judicial notice of several dictionary definitions of the word "wrench."

The Board concluded that registrant's Class 8 identification of goods includes ordinary wrenches, including wrenches that are "hand tools," and is not limited to specialized tools known as "drives" and "stocks" used solely with taps and dies.

Although a semicolon would have been better than a comma, the comma nonetheless separates "wrenches" from the phrase "die taps and die sets, taps and tap sets" that modifies "accessories for wrenches." To the extent that use of the comma creates any ambiguity [I don't see it - ed.], any doubt must be resolved in favor of the prior registrant, given the presumptions accorded a registration.

Examining Attorney Meghan Reinhart submitted website evidence showing that wrenches and tap and die sets, on the one hand, and applicant's goods, on the other, may emanate from the same source as hand tools, under the same mark. Third-party registration evidence also demonstrated the relatedness of the goods. The Board concluded that the registration evidence, considered in conjunction with the Internet evidence, supported the conclusion that the goods are related.

The Board therefore affirmed the Section 2(d) refusal to register.

Read comments and post your comment here.

TTABlog comment: Zzzzzzzzzzzzzzzzzzz! Was this decision worthy of the "precedential" tag?

Text Copyright John L. Welch 2015.

Precedental No. 33: North Face Gets Split Decision In Multi-Class Section 2(d) Opposition

In a decision issued exactly one year after oral argument, the Board sustained in part North Face's Section 2(d) opposition to registration of the mark shown below left, for a variety of goods and services in classes 7, 11, 12, 16, 25, 35, and 37, including motorcycles, electric bicycles, various clothing items, and auto repair services, in view of the registered mark shown below right, for footwear, backpacks, sleeping bags, and clothing. The North Face Apparel Corp. v. Sanyang Industry Co., Ltd., 116 USPQ2d 1217 (TTAB 2015) [precedential].

Applicant's Motion to Amend: The Board first dealt with Applicant Sanyang's motion to amend its answer to assert as an affirmative defense that, if the Board should find that Applicant was not entitled to registration with respect to some but not all of the goods or services listed in its two applications, then Sanyang should be allowed to amend its two applications to conform to the Board’s findings. The Board denied the motion, pointing out that Sanyang failed to specify the particular goods or services that it would delete from its applications.

Applicant’s motion would essentially impose on Opposer the requirement to prove likelihood of confusion with respect to each of the numerous goods and services identified in the seven classes of Applicant’s applications, as opposed to showing likelihood of confusion with respect to one or more (but not necessarily all) goods or services in each class of the applications. ***This would also require the Board to decide the issue of likelihood of confusion with respect to each of the hundreds of goods and services, a decision that Applicant would then effectively obviate as far as the goods or services for which likelihood of confusion was found.

The Marks: North Face contended that Sanyang's mark is merely North Face's mark turned on its side, and it pointed to the statement that Sanyang made in its application that its mark is a stylized "S". Sanyang asserted that its mark has a "a textured or three-dimensional effect"and that the orientation of its mark changes the visual impression so that the mark resembles "a forward-moving arrow, or a wheel over which an arrow is superimposed, to suggest a wheel in motion."

The Board observed once again that the proper test for assessing two marks is not a side-by-side comparison of the marks, since "consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections."

Sanyang's description of its mark as an "S" design was not considered an admission, but rather merely "illuminative of shade and tone" in connection with the Board's determination as to the meaning and commercial impression of the mark.

The Board found that, on the whole, the similarities between the marks outweighed the dissimilarities. It noted the lack of evidence of third-party use of "S" design marks; such evidence would have made the differences in the marks more significant. It concluded that the first du Pont factor, the similarity or dissimilarity between the involved marks, weighed in favor of North Face, but it noted that “that similarity is not a binary factor but is a matter of degree.”

The Goods and Services: Because some of Sanyang's Class 25 goods were identical to the goods in North Face's pleaded registrations, the Board sustained the opposition as to Class 25. See Tuxedo Monopoly (likelihood of confusion must be found as to the entire class if there is likely to be confusion with respect to any item that comes within the identification of goods or services in that class).

Sanyang acknowledged that its retail stores featuring clothing, textiles, and clothing accessories "are related to [Opposer’s] class 25 goods." The Board therefore sustained the opposition as to Class 35.

The relatedness of the remaining goods and services of Sanyang to North Face's goods was not so clear, and opposer's contentions regarding their complementary nature were "not very specific." North Face maintained that Sanyang's clothing and equipment are designed for outdoor activities, including biking or riding a scooter, and that the riders are likely to wear clothing designed for outdoor activities, or carry backpacks and duffel bags (North Face's goods).

As to Sanyang's class 7 goods (lawnmowers, boat engines, and mechanical parts), North Face did not explain how any of those goods were related to its goods, and so the Board dismissed the opposition as to Class 7. As to class 11, the differences between Sanyang's goods (e.g., vehicle reflectors and vehicle headlights), coupled with the differences in the marks, led the Board to conclude that confusion was not likely.

As to class 12, there was no evidence to that consumers would believe that Sanyang's electric bicycles would emanate from or be sponsored by North Face. The evidence did show that clothing and backpacks, on the one hand, and Sanyang's electric scooters, mopeds, and motorcycles, on the other, may be sold through the same channels of trade. Although this du Pont factor favored North Face, the differences in the goods and the marks resulted in the Board dismissing the opposition as to this class of goods.

As to Sanyang's class 16 goods, there was no evidence showing how these goods (e.g., stickers) are related to North Face's goods.

Finally, as to Sanyang's class 37 services (e.g., automobile and motorcycle maintenance and repair), the difference between the involved goods and services was dispositive.

In sum, the Board sustained the opposition as to Sanyang's class 25 goods and its class 35 services, but dismissed the opposition as to classes 7, 11, 12, 16, and 37.

Read comments and post your comment here.

TTABlog comment: So North Face batted about .284 in this one. That's well above the Mendoza line, but hardly a Hall of Fame number. By the way, Sanyang's two applications were based on Section 1(a) actual use, despite the "laundry list" of goods and services.

Text Copyright John L. Welch 2015.

TTAB TEST: Is a Coupon an Acceptable Specimen of Use for Baby Lotion?

The USPTO refused registration of the mark EARNING TRUST WITH EVERY BOTTLE for "facial and skin cleansers; facial and body washes soaps; shampoos; body lotions," deeming Applicant Johnson & Johnson's specimen of use unacceptable. J&J maintained that its coupon functions as a point-of-sale display that is given to the customer at the cash register and can be redeemed in the same store. How do you think this came out? In re Johnson & Johnson, Serial No. 85286071 (September 22, 2015) [not precedential].

The coupon specimen states that 75 cents may be saved "on any JOHNSON'S Baby Wash or Lotion product" and depicts two bottles of the goods, with the mark adjacent the bottles. The examining attorney contended that the coupon is merely advertising, not a point-of-sale display.

It is well established that mere advertising is not a proper specimen for registration of a trademark. Most of the pertinent cases concern webpages. In re U.S. Tsubaki directs that the Board consider whether "the coupon has a 'point of sale nature' and if it is designed to catch the attention of the purchasers as an inducement to consummate a sale."

In Lands' End Inc. v. Manbeck, the E.D. Va. district court ruled that a catalog that depicted the product with a description thereof, along with ordering information and a sales form, constituted a display "associated with the goods," in satisfaction of the Section 45 definition of "use" of a trademark.

In In re Anpath Group, Inc., the TTAB rejected a pamphlet and a flyer as specimens of trademark use because they lack a sales form and ordering information that would enable the purchaser to place an order.

In In re Shipley Co., the Board reversed a refusal of a specimen comprising a photo of a booth at a technical trade show because not only were sales materials available in the booth, but sales personnel were available to take orders.

Here the coupon displays an image of the goods with the applied-for mark adjacent the goods. It identifies the retailer where the goods can be purchased and the coupon is dispensed "in the very store where the goods are located and offered for sale." As in Shipley, sales personnel are directly available to answer questions regarding pricing, quantities, or location in the store. "In fact it is the cashier who hands the coupon to the customer, and the cashier, by presenting the coupon to the consumer, begins the association of the mark with the goods." The customer may be enticed by the coupon to "turn around and pick up the product ... and make the purchase."

The temporal separation between the customer's receiving the coupon, then perceiving the mark on the coupon, and then purchasing the goods, does not preclude the coupon being a display associated with the goods. In the same sense that the infomercial in In re Hydron served as a point-of-sales specimen of use, even though two minutes passed between the display of the mark and the display of ordering information for the goods, applicant's coupon functions as a point-of-purchase display.

In our view, the customer will associate the mark with the goods once presented with the coupon that contains the mark and a depiction of the goods by the cashier, in the very store in which the goods are offered for sale. Because the coupon is dispensed when the customer is in the store, and prior to his or her departure from the store, the coupon is intended to consummate a sale.

The Board therefore reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Seems like there was a lot of attorney argument regarding how the coupon would be used, rather than actual proof. Was the Board essentially taking judicial notice of that?

Text Copyright John L. Welch 2015.

TTAB Test: Are Jams and Jellies Related to Beer for Section 2(d) Purposes?

Allagash Brewing Company opposed an application to register the mark ALLAGASH WILD for "jellies and jams; marmalades; preserved fruits and vegetables" [ALLAGASH disclaimed]. alleging a likelihood of confusion with the registered mark ALLAGASH for beer. The marks are pretty close, aren't they? But what about the goods? How do you think this came out? Allagash Brewing Company v. Cathie A. Pelletier, Opposition No. 91214028 (September 22, 2015) [not precedential].

The marks: Allagash is the name of a town and a river in Maine, and for Applicant Pelletier's goods it is geographically descriptive. Although ALLAGASH is the first portion of applicant's mark, and the first portion of a mark is more likely to remembered by consumers, the word's descriptiveness may result in the word WILD "overcom[ing] its secondary position." However, WILD is at least suggestive of jams and jellies since Pelletier intends to make them from wildflowers and berries. So even if WILD has more source-identifying significance than ALLAGASH, that was not enough to distinguish the marks. [The Board also noted that "wild" is a type of Belgian-style beer and is brewed by Opposer].

The Board concluded that the marks are "very similar in appearance, sound, meaning and overall commercial impression."

There was no evidence of third-party use of ALLAGASH by other food or beverage companies. Opposer is listed in the top 50 craft brewing companies by sales, and the evidence indicated that Opposer's mark "has attained commercial strength in the craft beer market."

The goods: Opposer submitted several use-based third-party registrations that cover beer and jam or jellies. Moreover, opposer's president testified that "it is common for brewing companies to make and sell food products." For example, Belgian breweries have traditionally made cheese. [What about American breweries? - ed.]. Other breweries sell mustard, pickles, and sausage. Furthermore, he asserted, craft beer is commonly associated with food. [So beer is related to all food? ed.]. Examples of goods sold under the same mark included beer and cheese, beer and clam chowder, beer and hot sauce, beer and ice cream, and beer and peanut brittle. [What is the extent of sales of these products? - ed.]. The record also included online recipes using beer as an ingredient. [One could probably find a recipe on line for anything at all as an ingredient - ed.].

Opposer's president further testified that it is "very common ... for breweries to extend their brands into lots of different kinds of foods; and you'll commonly find these foods, you know, not only in their stores, but in retail stores like grocery stores." [Where is the corroboration for this obviously self-serving testimony? - ed.].

The Board concluded that at least craft beers, which fall within opposer's broad identification of goods, are "sufficiently commercially related to jams and jellies such that consumers could be confused as to source."

There were no limitations on channels of trade in the pleaded registration of opposed application. The involved goods are all sold in retail food and beverage stores, including grocery stores in some states. And even if purchasers of craft beer are careful consumers, consumers are not immune to source confusion.

The Board concluded that confusion is likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Well, how did you do?

Text Copyright John L. Welch 2015.

Finding Lack of Use in Commerce, TTAB Orders Cancellation of "ADD A ZERO" Registrations

The Board granted the petition of adidas AG for cancellation of two registrations owned by the Christian Faith Fellowship Church for the mark ADD A ZERO, in standard character and design form, for "clothing, namely shirts and caps," finding that the Church had not used the marks in commerce prior to the filing date of the underlying applications. adidas AG v. Christian Faith Fellowship Church, Cancellation No. 92053314 (September 14, 2014) [not precedential].

Respondent operates a church in Zion, Illinois, near the Wisconsin border, and its members come from both states. In 2004, it began selling shirts and caps bearing the subject marks, purchasing the items from an Illinois company. The items were sold only in the church bookstore (in Illinois), prior to the filing of the underlying applications in March 2005. The Church submitted evidence of two sales transactions in an effort to counter Petitioner's claims of non-use. The sales were made at the bookstore to two different individuals.

The Board observed that an application filed under Section 1(a) is void ab initio if the mark was not in use in commerce in connection with the identified goods prior to the filing date of the application. It noted that "commerce" includes intrastate transactions that affect interstate or foreign commerce. The Church maintained that the two sales at its bookstore in Illinois, together with its ability to sell the goods to out-of-state parishioners who cross state lines to attend the church, were sufficient to satisfy the "in commerce" requirement because they have an effect on interstate commerce.

As to the first transaction, it was not clear whether the purchaser was a resident of Illinois. The second purchaser, however, paid with a check having a Wisconsin address, and the Board concluded that she crossed state lines when she made her purchase of two caps at the church bookstore.

The Board concluded that the Church's activities did not have an effect on interstate commerce. It distinguished the three cases cited by the Church: Gastown, Silenus Wine, and Larry Harmon.

In Gastown, the CCPA held that a gas station that provided services to customers traveling interstate on federal highways had a direct effect on interstate commerce, noting that the involved vehicles "[o]bviously ... could not travel at all without the gasoline."

In Silenus Wines, the CCPA allowed registration of a mark used on imported wine sold intrastate because "were it not for the intrastate sales anticipated by the appellant-importer, the foreign commerce that occurred ... would probably not have occurred - unquestionably a direct effect."

And in Larry Harmon, the CAFC held that a single-location restaurant that served interstate travelers was using its mark "in commerce."

Here, the Board found, "the sale of two ADD A ZERO caps at a minimal cost within the state of Illinois to Ms. Howard [the second purchaser], who resides outside the state, does not affect interstate commerce that Congress can regulate such that the transaction would constitute use in commerce for purposes of registration."

The Church provided no support for the proposition that merely offering the goods in the bookstore to parishioners who reside out of state, combined with the aforesaid two sales, constituted use of the marks in commerce. "Respondent cannot rely on the fact that its goods could have been purchased by people who reside out of state." The sale in Illinois of two caps to a Wisconsin resident "is de minimis and, under the circumstances shown here, is insufficient to show use that affects commerce."

The Board therefore ordered cancellation of the two registrations on the ground of non-use.

Read comments and post your comment here.

TTABlog comment: Holy mackerel. That is harsh, isn't it? If the Church had purchased the goods from out-of-state, would that have made a difference? I think not.

Text Copyright John L. Welch 2015.

Latest Version of TTAB's "Advanced Practice Tips"

Here is the latest version of "Advanced Practice Tips From the TTAB." Be aware, however, that this compilation of practical tips is not a substitute for the TBMP. Nonetheless it provides useful guidance on how to navigate many of the procedural issues/hurdles faced by the TTAB practitioner.


I offer a few TTAB tips off the top of my head (some duplicative of the TTAB's tips):

• As soon as the proceeding is commenced, start thinking about what you have to prove, and planning how you will prove it.
• Mid-way through the discovery period, check your initial disclosures to make sure that you named the individuals that you expect to call as witnesses.
• Authenticate the documents produced by the other side, either via discovery deposition or admissions.
• Study the rules and the TBMP so that your pleaded registrations are properly made of record.
• Be reasonable in dealing with the other side. The Board and its interlocutory attorneys appreciate advocates who are reasonable (and respectful), which can benefit you in the short and the long run.

Read comments and post your comment here.

TTABlog comment: Any tips of your own?

Text Copyright John L. Welch 2015.

Precedential No. 32: Orange Bang Wins "OLÉ" Section 2(d) Beverage Bullfight

In this consolidated proceeding, Plaintiff Orange Bang, Inc. opposed one application and petitioned to partially cancel two registrations owned by Ole Mexican Foods, Inc. Defendant counterclaimed under Section 18 to partially restrict Plaintiff’s pleaded registration and simultaneously to restrict the identification of goods in its two challenged registrations. The Board dispensed a ruling in flavor of Plaintiff on all claims. Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102 (TTAB 2015) [precedential].

Plaintiff's petitions for partial cancellation: While the proceedings were pending, Defendant filed its Section 8 Declarations of Use for the two challenged registrations, eliminating several of the goods at which Plaintiff’s petitions for partial cancellation were aimed (yogurt-based beverages and herbal teas). Defendant then claimed that Plaintiff’s petitions for partial cancellation were moot. The Board disagreed. Rule 2.134(b) provides that if the respondent in a cancellation proceeding permits its registration to be cancelled under Section 8, the Board may issue a show cause order as to why the cancellation should not be treated as a request for cancellation by the respondent which should result in entry of judgment against respondent. In other words, the Rule is designed to prevent a respondent from mooting the proceeding and avoiding judgment by deliberately failing to file its Section 8 declaration.

Here the deletion of goods from the Section 8 declarations was deliberate. Although Defendant was not seeking to cancel its registrations in their entireties, but only specific items, the Board found that Rule 2.134(b) applies to the current situation, and it therefore entered a final judgment as to Plaintiff's pleaded claims for partial cancellation.

Defendant's counterclaim: Defendant sought to restrict Plaintiff's pleaded registration for the mark OLÉ to beverages for "use in the preparation of fountain drinks sold through beverage dispensers," while offering to restrict its own goods in its applications and registrations to "pre-mixed, ready-to-drink" beverages "sold off-the-shelf in individual or multi-serving containers."

The Board observed that, in order to succeed in restricting a registration under Section 18, a party must show that the entry of the proposed restriction will avoid a finding of likelihood of confusion and that the registrant is not using the mark on the excluded goods.

The Board found that Plaintiff's mark and those of Defendant (the standard character mark OLÉ, the design mark shown above, and a second design mark shown below), are identical or substantially identical, the word OLÉ being dominant in the two design marks. The evidence established that Plaintiff sells concentrates for beverages, rather than ready-to-drink beverages, and that the finished beverages are dispensed to consumers. The Board noted, however, that Plaintiff's mark appears on the spigot of the beverage dispensers, and thus consumers will likely regard the fountain dispenser as just another form of "packaging" for the beverage. The evidence showed that companies sell both fountain drinks and canned or bottled beverages under the same marks. Accordingly, the Board found that Defendant's proposed amended regarding the form of the involved beverages would not avoid likely confusion

Defendant also proposed, if the restriction as to the goods were not sufficient, that the channels of trade be restricted. However, it failed to show that Plaintiff does not sell its goods through some of the same channels of trade as Defendant proposed to exclude from Plaintiff's registration. Moreover, the proposed restriction as to Defendant's own channels of trade would limit them "primarily" to certain retail outlets, but did not expressly exclude trade channels that Plaintiff would be allowed. In any case, even if the restrictions to trade channels were approved, the same consumers would likely encounter the involved products.

The Board therefore dismissed Defendant's Section 18 counterclaim, and it proceeded with its determination of Plaintiff's claims based on Defendant's unrestricted identifications of goods. The Board noted, however, that even if Defendant's amendment to its own goods were entered, the outcome of Plaintiff's Section 2(d) claims would not be altered.

Plaintiff's claims: The remaining issues involved Plaintiff's petition to cancel "yogurt-based beverages" from Defendant's two registrations, and the opposition to the OLÉ MEXICAN FOODS & Design mark for "dairy and fruit based non-alcoholic food beverages," all three claims being based upon Section 2(d) likelihood of confusion.

Priority was not an issue in the opposition as to the goods identified in Plaintiff's pleaded registration: "rice and milk-based beverages, namely horchata" and "non-alcoholic and non-carbonated fruit juice beverages." As to the cancellation proceeding, Plaintiff had the burden to prove priority, and the evidence was clear that Plaintiff had prior use of its mark.

The Board agreed with Plaintiff that the word OLÉ is the dominant element of Defendant's design marks, and it therefore found the marks to be legally identical to Plaintiff's pleaded mark. The Board pointed out for the umpteenth time that when the involved marks are legally identical, a lesser degree of similarity between the goods is necessary to support a finding of likelihood of confusion.

The goods of both parties are dairy-based beverages. In fact, Defendant once sold packaged horchata and horchata concentrate, thus demonstrating that both horchata and yogurt-based beverages may emanate from a single source. Thus this du Pont factor favored Plaintiff. There are no restrictions on trade channels in the pleaded registration or in Defendant's application or registrations, and so the Board must presume that these goods travel in all appropriate channels of trade for such goods. Defendant acknowledged that its yogurt-based beverages may be sold in some of the same outlets as Plaintiff's goods. In addition, the goods may be sold to the same classes of consumers, including the general public. Therefore this du Pont factor favored Plaintiff.

The involved goods are relatively inexpensive and maybe purchased on impulse. This du Pont factor also favored Plaintiff.

As to the strength of Plaintiff's mark, Defendant pointed to several consent agreements that Plaintiff had entered into. The Board noted, however, that the agreements concerned use of certain marks for coffee and coffee-related products, in contrast to the Defendant's products, which have a close relationship to those of Plaintiff. The mark OLÉ, albeit somewhat laudatory, is distinctive enough to warrant protection against the identical mark for closely related goods, or for a substantially similar mark for legally identical goods.

The Board therefore found a likelihood of confusion and it sustained Plaintiff's opposition and granted its petition for partial cancellation.

Read comments and post your comment here.

TTABlog comment: OLÉ cow! That is one complicated case.

Text Copyright John L. Welch 2015.

TTAB Test: Which One of these Three Refusals Was Reversed?

Here are three decisions issued on Friday, September 11th. Two involve product shapes or features, and the third a telephone number. One refusal was reversed. How would you decide them? [Correct answer in first comment].



In re Foamation Inc.., Serial No. 85690391 (September 11, 2015) [not precedential]. [Refusal to register the mark shown below, comprising "the color yellow/gold and a pattern of pock marks which are circular or oval-shaped depressions applied to the entire circular or oval-shaped depressions applied to the entire surface of the goods in a manner evoking the appearance of cheese," for, inter alia, hats, ties, and belts, on the ground that the mark forms part of the shape of the products and therefore cannot be registered on the Principal Register without proof of acquired distinctiveness].

In re Michelin North America, Inc., Serial No. 85077031 (September 11, 2015) [not precedential]. [Refusal to register the mark 1-800-TIRE-911 for vehicle tire repair services and roadside assistance services, on the ground that the mark fails to function as a service mark: i.e., the mark is merely informational and would not be seen as an indicator of source but merely as the means by which customers can contact Applicant].

In re Paul Adam’s Trademarks and Patents LLC, Serial No. 85851688 (September 11, 2015) [not precedential]. [Functionality refusal of the product configuration shown below (in three views) for "multi-use stone retaining wall blocks," the mark comprising "a three-dimensional configuration of a stone retaining wall block having a top side that features three horizontal grooves, one vertical groove, and angled grooves at each corner and each side having a center vertical groove, a vertical groove adjacent to one of the angled grooves at one of the corners, and a vertical groove adjacent to the other one of the angled grooves at the other one of the corners"].

Read comments and post your comment here.

TTABlog comment: Well, how did you do?

Text Copyright John L. Welch 2015..

TTABlogger Article: "The Top Ten TTAB Decisions of 2014-2015" - Plus 40% Discount on "The IP Book"

Here is a link to my chapter in the 2015 edition of The IP Book, published by The Midwest Intellectual Property Institute and Minnesota Continuing Legal Education: "The Top Ten TTAB Decisions of 2014-2015." The IP Book provides a collection of updates on case law and emerging issues in all major areas of intellectual property law. Once again, I thank Steve Baird for the opportunity to contribute to this useful and readable reference. [E-mail recipients of this posting may have to surf to the blog to download the article].

Table of Contents for this, the 13th Edition:

• CHAPTER 1. Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.: Supreme Court Clarifies Standard of Review for Claim Construction
• CHAPTER 2. Kimble v. Marvel Entertainment, LLC: Royalty Payments After Term Patent Expiration
• CHAPTER 3. Commil USA, LLC v. Cisco Systems, Inc., Patent Validity and Induced Infringement
• CHAPTER 4. Federal Circuit Year in Review 2014-2015: Patentees Take a Beating
• CHAPTER 5. The PTAB's Post-Grant Practice Case Summaries 2014-2015
• CHAPTER 6. Developments in the Law of Patent Remedies 2014-2015
• CHAPTER 7. Copyright Highlights 2014-2015
• CHAPTER 8. Trade Secrets 2015: Key Developments and Takeaways
• CHAPTER 9. Top Ten Trademark Decisions of 2014-2015
• CHAPTER 10. Supreme Court Tackles Trademarks: B&B Hardware, Inc. v. Hargis Industries and Hana Financial, Inc. v. Hana Bank
• CHAPTER 11. The Top Ten TTAB Decisions of 2014-2015
• CHAPTER 12. Top Ten UDRP Decisions for 2014-2015

TTABlog readers interested in purchasing the 2015 edition of The IP Book (list $75) may do so here. For a 40% discount, enter this code when prompted: 2015IPBook.

Text Copyright John L. Welch 2015.

Precedential No. 31: "THCTea" Deceptively Misdescriptive of Tea-Based Beverages, Says TTAB

In this tempest in a teapot, the Board affirmed a refusal to register the mark THCTea, in standard character form, for "tea-based beverages," deeming the mark to be deceptively misdescriptive of the goods under Section 2(e)(1). The Board found that tea-based beverages could contain THC, the chief intoxicant in marijuana, that THCTea is merely descriptive of tea-based beverages that contain THC, that applicant's goods (concededly) do not contain THC, and that consumers are likely to believe the misrepresentation made by the mark. In re Christopher C. Hinton, 116 USPQ2d 1051 (TTAB 2015) [precedential].

The test for deceptive misdescriptiveness under Section 2(e)(1) has two parts: (1) the mark must misdescribe the goods or services, and (2) consumers must believe the misdescription. [Unlike for a Section 2(a) deceptiveness refusal, the misdescription need not be material to the purchasing decision.]

The record evidence established that the term THC means either of two physiologically active isomers from hemp plant resin, especially one that is the chief intoxicant of marijuana. Examining Attorney Robert J. Struck introduced ample evidence to demonstrate that "it is plausible for tea-based beverages to contain THC," including online chatroom printouts discussing recipes for making such tea. Applicant Hinton admitted that the evidence established the significance of "THC" and showed that some individuals refer to tea made from marijuana as "THC tea."

The Board therefore found that "THCTea" is merely descriptive of tea containing THC as a significant ingredient. Applicant admitted that his goods do not contain THC. Therefore, the Board concluded that "THCTea" misdescribes the goods.

The next question was whether reasonably prudent consumers are likely to believe the misrepresentation that applicant's beverages contain THC. Applicant Hinton contended that THC is intended to stand for "Tea Honey Care" or "the Honey Care Tea," pointing to two if his advertisements. But the Board observed that it must consider the mark as applied for, and it cannot assume that the mark will be accompanied by some additional wordings such as "Tea Honey Care." In fact, applicant's specimen of use (shown above) displayed the mark without any accompanying wording, and there was no evidence that consumers would interpret "THC" in the manner applicant contended.

Hinton maintained that consumers would know that marijuana is illegal under federal law, and that even in states having "medical marijuana" laws, use is strictly regulated. He asserted that only an uniformed, gullible consumer would believe that a bottle of THCTea available in a grocery store would contain an illegal substance.

The Board observed, however, that marijuana possession is considered legal in certain circumstances, under the law of nearly half the states. Furthermore, there was some evidence in the record that teas containing THC are commercially available for medicinal use. Nothing in the subject application restricts sales of applicant's products to states where marijuana is illegal, nor does the application indicate that the goods will not be offered through medical dispensaries.

And so the Board affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog comment: The Board also observed that "whether Applicant's products feature the intoxicant THC would be highly relevant to a consumer's purchasing decision." But it pointed out that the issue of Section 2(a) deceptiveness was not before it. Apparently the Board thought that a Section 2(a) refusal should have been made. What difference would it make? A deceptive mark is unregistrable, whereas a mark that is only deceptively misdescriptive is still eligible for registration under Section 2(f) via proof of acquired distinctiveness. So what will happen if Hinton files a new application claiming acquired distinctiveness?

Text Copyright John L. Welch 2015.

Recommended Reading: Alexandra Bistline, Trademark LItigation After B&B v. Hargis

The latest issue of The Trademark Reporter includes a terrific article by Alexandra H. Bistline, entitiled "Raising the Stakes: Trademark Litigation in the Wake of B&B Hardware, Inc. v. Hargis Industries, Inc." Ms. Bistline's povides a comprehensive, highly-readable review of the issues involved in, and the ramifications of, the Supreme Court's decision.

Alexandra H. Bistline
Ms. Bistline discusses the state of the doctrine of issue preclusion before B&B v. Hargis, details the "labyrinthine" history of the case, suggests why litigants (and Congress) should agree with the dissent, and points out some of the difficulties to be expected when the courts try to implement the ruling.

In light of the fundamental procedural and substantive differences between the determinations made in Federal courts and those made before the TTAB, this article suggests that the Supreme Court’s decision is at least partially incorrect and should be remedied by congressional action. In the meantime, however, trademark owners and practitioners must assess and address the decision and its impact on trademark practice. While the Supreme Court provided little guidance on when these ordinary factors of issue preclusion would be met, the typical procedures followed by the TTAB suggest that preclusion is likely to apply to TTAB decisions unless the issue is likelihood of confusion. This threat of preclusion, even if rarely realized in likelihood-of-confusion determinations, significantly raises the stakes (and the corresponding costs) of an opposition or cancellation proceeding before the TTAB. Although as of yet unclear, it seems likely that this decision will drive more litigants directly to federal court rather than to the TTAB, where they risk the adjudication of issues concerning both registration and use of a trademark in a forum with significant evidentiary and procedural limitations.

Read comments and post your comment here

TTABlog comment: Once again, I thank The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2015 the International Trademark Association and is reprinted with permission from The Trademark Reporter®, 105 TMR 867 (July-August 2015).

Text Copyright John L. Welch 2015.

Precedential No. 30: Finding Lack of Bona Fide Intent, TTAB Sustains SWISS GRILLS Opposition

In a case decided under the TTAB's Alternative Case Resolution (ACR) procedure, the Board sustained an opposition to registration of the mark SWISS GRILLS for "barbecue and outdoor grills," finding that applicant Wolf Steel Ltd. lacked the necessary bona fide intent to use the mark for the identified goods when it filed its Section 1(b) application to register. The Board also sustained opposers' Section 2(d) claim, ruling that opposers had established prior use of its mark SWISS GRILL & Design for the same goods, based upon opposers' shipment of products bearing the mark to its U.S. distributor. Swiss Grill Ltd., John Hartwig, Christopher Hartwig and Matthew Hartwig v. Wolf Steel Ltd., 115 USPQ2d 2001 (TTAB 2015) [precedential].

Bona Fide Intent: A party may establish a prima facie case of lack of bona fide intent by demonstrating that the other party lacks any documentary evidence demonstrating such intent. Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993). Here, none of the documents provided by applicant was dated prior to its filing date, and none related to its intention to use the SWISS GRILLS mark in the United States. Although a party may rely on documentary evidence dated after its filing date to establish its bona fide intent at the time of filing, there was no evidence - other than the application itself - that applicant ever intended to use the SWISS GRILLS mark in the United States.

There was evidence that Applicant Wolf Steel offered typical outdoor grills in other countries prior to its filing date, but here applicant claimed that in the United States it intended to sell "specialty grills" for indoor use, and not the typical outdoor grill. Applicant Wolf Steel also claimed that it had conducted a trademark search prior to its filing, but it never produced the documentation relating to that search. In any case, the Board pointed out, "[n]either the application itself nor the unproduced trademark search suffice[s] to establish Applicant's intent." See M.Z. Berger & Co. v. Swatch AG, 215 USPQ2d 1892, 1898 (Fed. Cir. 2015).

The Board concluded that applicant's assertions amounted to "little more than subjective claims of intention, rather than objective evidence." Moreover, applicant's discovery responses and its evidence included inconsistencies that undermined the credibility of even its subjective claim of a bona fide intent.

To be blunt, the record as a whole reveals that Applicant is unable to get its story straight. *** In fact, its evolving and internally inconsistent story lines read more as after-the-fact rationalizations, than as credible evidence of a bona fide intent to use SWISS GRILLS in the United States for the identified barbeques and outdoor grills. These inconsistencies, combined with “the general lack of documentary support” or other objective evidence of its bona fide intent to use the mark leads us to find that Applicant’s intent at the time it filed the application was not a bona fide intent to use the mark in commerce.

Therefore, the Board sustained opposers' claim that applicant lacked a bona fide intent to use the mark SWISS GRILLS for the identified goods when it filed its application to register.

Likelihood of Confusion: There was no dispute that there is a likelihood of confusion between the marks at  issue. Therefore, opposers' Section 2(d) claim "boils down to priority."

Prior to applicant's filing date (its priority date), opposers had sold and shipped 322 barbeque grills bearing the SWISS GRILL mark to its United States distributor. The Board observed that "the sale and shipment of products bearing a trademark to one's distributor is clearly sufficient to establish trademark rights." Raintree Publishers, Inc. v. Brewer, 218 USPQ 272, 274 (TTAB 1983). Applicant provided nothing to contradict the record evidence that opposers and its U.S. distributor have an arms-length, independent relationship.

And so the Board sustained opposers' Section 2(d) claim as well.

Read comments and post your comment here.

TTABlog comment: Pretty straightforward, don't you think?

Text Copyright John L. Welch 2015.

ASHCON Confusable With ASHCORE AND ASHCOLITE for Ash-Hauling Goods and Services, Says TTAB

The Board sustained an opposition to registration of the mark ASHCON for consulting services concerning bottom ash dewatering systems, finding the mark likely to cause confusion with the registered marks ASHCORE and ASHCOLITE for pipes and fittings for ash hauling systems. The Board deemed applicant's third-party registration evidence to be of little probative value as to the strength of opposer's marks. Diamond Power International, Inc. v. Clyde Bergemann, Inc., Opposition No. 91201996 (September 9, 2015) [not precedential].

Mere descriptiveness: The Board first dismissed opposer's claim that the mark ASHCON is merely descriptive of applicant's services. Although ASH is clearly descriptive of the services, there was no evidence that CON has an established meaning in the industry or that it is a known abbreviation for "conveyor." Nor was there any evidence that ASHCON as a whole is merely descriptive.

Likelihood of confusion: Opposer claimed to own a family of "ash" marks for various ash-conveying equipment, but it failed to show that it "used and promoted together a group of ASH marks." Nor did it show that the ASH component of its several marks was used "in a consistent manner, as a prefix, as a suffix, or in some other uniform way." Mere registration of a number of ASH-formative marks was not enough.

As to the involved goods and services, the parties stipulated that they share common customers. Opposer's various ASH marks are associated by these common customers with a wide variety of complementary goods and services. Applicant's ASHCON consulting services "could be rendered to place Applicant's ASHCON remote dewatering unit as the last part of an ash conveying system that includes Opposer's line of goods bearing the ASH Marks." Thus, according to the Board, applicant's services and opposer's goods are complementary and therefore related for Section 2(d) purposes.

The customers for the respective good and services are likely to be sophisticated, but consumers who are knowledgeable in a particular field are not necessarily knowledgeable about trademarks, nor are they immune to source confusion when related goods and services are involved. So this du Pont factor was deemed neutral.

Turning to the marks, the Board found them to be similar in sound and appearance, since they are single terms that begin with "ash" followed by a hard "c."

Applying a variant of the 9th du Pont factor, which concerns the variety of goods on which a prior mark is used, the Board found that opposer's use of two marks having the same construction as applicant's mark makes it likely that consumers would assume that applicant's services come from, or are sponsored by, Opposer. [Huh? - ed.].

Finally, Applicant contended that the extensive use of ASH-formative marks in the industry weakens opposer's marks and limits their scope of protection. The Board, however, pooh-poohed applicant's evidence due to the lack of proof of actual use the differences in the goods and services. Only three of five third-party registrations involved marks having the same structure as the marks at issue, and there was no evidence that those marks are in use. Three of the marks comprised two words rather than one - ASH KLEEN, ASH*FLUX, and ASH PUMP. [so what? ed.]. The other two marks, ASHSCAN (equipment for measuring ash content in coal) and ASHFLOW (machines for forming metal billets) are registered for different products from those at issue here. In sum, principally in light of the lack of evidence regarding use, the third-party evidence had little probative value.

Balancing the relevant du Pont factors, the Board found confusion likely, and it sustained the opposition on the Section 2(d) ground.

Read comments and post your comment here.

TTABlog comment: I am not going to make any stupid "ash" puns, like "opposer kicked ash." I'll leave that sort of sophomoric nonsense to other bloggers. At least for today. Anyway, this case was argued before the Board on October 3, 2014, at Northeastern School of Law, during the (nearly) annual "TTAB Comes to Boston" symposium. The consensus at the time seemed to be that opposer would win.

Text Copyright John L. Welch 2015.

Recommended Reading: Ted Davis, Federal Registration and the Constitutional Right to Petition

Ted Davis, in his latest article entitled "Content-Based Prohibitions on Federal Registration and the Constitutional Right to Petition," provides a different "slant" on the role of the First Amendment in the application of Section 2(a) in the REDSKINS case, Pro Football, Inc. v. Blackhorse. He points out that the courts have considered Pro Football's argument that the loss of its registrations violated the Free Speech Clause of the First Amendment, but none have considered the completely separate right to petition the government for redress of grievances. Mr. David argues that the Petition Clause "may be a more promising mechanism that its Free Speech counterpart for mark owners seeking to challenge the Lanham Act's content based prohibitions on registration."

Ted Davis
Mr. Davis observes that "[c]ontent neutrality is ... as important to the right to petition as it is to other rights guaranteed by the First Amendment." The Government can violate the Petition Clause even if it has not suppressed speech in violation of the Free Speech Clause.

[I]n light of the disadvantages visited upon mark owners denied registration under Section 2(a)’s content-based prohibitions, the Amendment’s Petition Clause merits attention in litigation challenging the prohibitions’ constitutionality, even if that attention has not been forthcoming to date.

Read comments and post your comment here.

TTABlog comment: Again I thank The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2015 the International Trademark Association and is reprinted with permission from The Trademark Reporter®, 105 TMR 852 (July-August 2015).

Text Copyright John L. Welch 2015.

TTAB Test: Is This Display of "SmartDGA" Inherently Distinctive?

The USPTO refused registration of the mark SmartDGA, in the design form shown below [SmartDGA disclaimed], for dissolved gas conditions monitors for electrical power transformers, on the ground that the mark is merely descriptive of the goods. The question was whether the design components of the mark - the colors black and gold, the polygon shape, and the stylized lettering - create a distinctive commercial impression apart from the meaning of the words SmartDGA, that would warrant registration on the Principal Register. What do you think? In re LumaSense Technologies Holdings, Inc., Serial No. 86004595 (September 3, 2015) [not precedential].

The Board noted that is decision is "necessarily a subjective one" that must be made "based on a viewer's first impression." It found that the design components of the applied for mark failed to create a commercial impression separate and apart from the verbal component.

First, the typeface is a simple sans-serif font. The capitalization and slight bolding of DGA do not contribute to the mark's commercial impression.

Second, the background shape is a simple polygon. Although elongated, the shape is a nondistinctive geometric figure that consumers would not regard as a trademark for the goods.

Third, the gold color does not "change the standard by which these types of marks are judged." Anyway, color can never be inherently distinctive. [What about green-gold, like a certain press-pad? - ed.].

Considering the design elements together, the Board concluded that the non-literal portions of applicant's mark primarily serve as a mere background for the term "SmartDGA" and not as a designation of source.

And so the Board affirmed the refusal.


Read comments and post your comment here.

TTABlog comment: DGA stands for "Dissolved Gas Analysis", the study of dissolved gases in transformer oil. "Insulating materials within transformers and electrical equipment break down to liberate gases within the unit. The distribution of these gases can be related to the type of electrical fault, and the rate of gas generation can indicate the severity of the fault. The identity of the gases being generated by a particular unit can be very useful information in any preventative maintenance program." [Wikipedia].

Text Copyright John L. Welch 2015.

TTAB Test: Are Airline Services Related to Model Airplanes Under Section 2(d)?

The USPTO refused to register the two marks shown immediately below, for "air transportation of passengers and freight," finding the mark likely to cause confusion with the registered marks TWA (in standard character form) and three design marks featuring the term TWA, for model airplanes. The marks are legally identical or similar, but what about the goods and services. Would a consumer expect a model airplane maker to run an airline? In Re TriStar History and Preservation Inc., Serial Nos. 86078454 and 86111943 (September 3, 2015) [not precedential].

The marks: Applicant's stylized mark is, of course, virtually identical to the registered TWA mark, and its second mark is dominated by the letters TWA and "looks similar to TWA in typed form, sounds identical and convey a highly similar meanings." With regard to the three cited design marks (shown below), TWA is the dominant element of two of them. As to the third, the words "TRANS WORLD" merely indicates what TWA stands for. Is short, while there are differences between the involved marks, they "are still more similar than different, in how they look and sound and in the meaning they convey."

 

Given the close similarity between applicant's marks and the cited typed mark TWA, this first du Pont factor weighed heavily against applicant. Moreover, the proximity of the marks also reduced the degree of similarity between the involved goods and service necessary to support the Section 2(d) refusal.

The goods and services: Examining Attorney Caitlin Watts-Fitzgerald introduced Internet evidence showing that United Airlines, US Airways, and American Airlines (which the Board recognized, without evidence, as well-known, major airlines) not only sell model airplanes, but on the same websites sell their respective air transportation services under the same respective marks.

The Board acknowledged that a mere three examples of third-party use usually might not be persuasive evidence, but the Board took notice that "by its nature, aviation is exceedingly difficult and expensive," and "there are a small number of major airlines."  Therefore, three examples was enough vis-a-vis the "oligopolistic airline industry."

Consumers aware that major airlines sell model planes and familiar with Registrant’s cited marks will be likely, upon seeing that the TWA in Applicant’s marks is presented in the same manner as the TWA on the tails of Registrant’s design marks, to assume a connection between the sources of Applicant’s services and Registrant’s goods. See Monogram Models, Inc. v. Ford Motor Company, 176 USPQ 498 (TTAB 1972) (finding likelihood of confusion from use of same mark for full-sized automotive vehicles and scale model assembly kits for automobiles).

Thus the evidence established that the involved goods and services are related and travel through the same channels of trade.

Applicant argued that it intends to transport passengers and freight "for the purposes of education and historical preservation." Applicant will be "intimately involved in interaction with its customers," and therefore there would be no source confusion. The Board was unmoved, noting for the zillionth time that the question of registrability is determined based upon the recitation of services set forth in the subject application, regardless of actual marketplace conditions.

Finally, applicant contended that confusion is not likely because its customers are sophisticated and careful. The Board acknowledged that consumers of airline transportation will exercise some care, but here the marks are very similar and consumers are accustomed to seeing airlines providing these services and model airplanes at their websites. In sum, this particular factor was outweighed by the similarities between the marks and the relatedness of the goods and services.

And so the Board affirmed the refusals to register.

Read comments and post your comment here.

TTABlog comment: Well, what do you think?

Text Copyright John L. Welch 2015.

Opposer Fails to Prove Acquired Distinctivess in MATTRESS OVERSTOCK, TTAB Dismisses Opposition

The Board dismissed this opposition to registration of the mark shown immediately below, for "retail store and on-line retail store services featuring furniture and sleep products" [MATTRESS OVERSTOCK disclaimed], finding that Opposer Allure Furniture had failed to establish prior common law rights in the term MATTRESS OVERSTOCK. Allure Furniture & Mattress, Inc. v. J. Becker Management, Opposition No. 91203625 (Sept. 1, 2015) [not precedential].

Opposer Allure claimed that it extensively used MATTRESS OVERSTOCK for furniture and sleep products, from a date long prior to Applicant Becker's first use date. However, in order to prevail on its Section 2(d) claim, Allure had to prove that the term was distinctive, either inherently or otherwise, as well as priority of use of that distinctive term. Otto Roth & Co. v. Universal Foods Corp. 209 USPQ 40 (CCPA 1981).

Applicant Becker contended that Allure's purported mark was not distinctive. It pointed to the lack of evidence regarding Allure's sales or number of customers, and lack of proof that the purchasing public had perceived an association between the term and Allure's goods and services.

Allure pointed to its use of the term since 1995, the 134,483 visitors to its website, and its state trademark registrations as proof of acquired distinctiveness.

The Board found that MATTRESS OVERSTOCK is merely descriptive of the involved services. Indeed, because MATTRESS OVERSTOCK "so clearly and readily conveys information about the goods being sold," the Board deemed the term "highly descriptive." The question, then, was whether Opposer Allure had proven acquired distinctiveness.

Bearing in mind the greater evidentiary burden on Opposer in connection with a "highly descriptive" term, the Board found Allure's evidence of acquired distinctiveness to be insufficient. Allure "remarkably" did not provide sales figures, and there was no evidence showing the breadth of any advertising campaign. Nor was there evidence as to how the term was displayed: whether to identify source, or to provide information. Allure's state registrations are not accorded the same presumptions as a federal registration. As to the website visitors, there was no way to determine whether or how these visitors perceived MATTRESS OVERSTOCK as a source indicator. Finally, Allure's registration of the domain name www.mattressoverstock.com did not establish trademark rights in the term.

Allure claimed "ample evidence of actual confusion," and the Board acknowledged that verifiable incidents of actual confusion may evidence the awareness of a term as a source indicator. However, the incidents provided by Allure amounted to nothing more than misdirected emails resulting from the similarity of Allure's web address to that of Applicant Becker (@mattressoverstockusa.com). Apparently some senders lopped off the "usa" portion of Becker's address, resulting in emails being misdirected to Opposer Allure. But this was not evidence of actual trademark confusion. There was no evidence that consumers confused the source of the involved goods and services as the result of exposure to trademark usage of MATTRESS OVERSTOCK.

Under the rule of Otto Roth, Allure could not prevail because it did not demonstrate that the term MATTRESS OVERSTOCK is distinctive.

Read comments and post your comment here.

TTABlog comment: Note that in June, Becker survived another Section 2(d) opposition to the same mark, in a case involving the registered mark OVERSTOCK.COM [briefly TTABlogged here]

Text Copyright John L. Welch 2015.

Precedential No. 29: TTAB Dissolves Concurrent Use Proceeding, Plaintiff Fails to Prove Prior Use

Concurrent use cases usually give me a headache, but this one wasn't too painful. The Board dissolved this proceeding because the plaintiff/concurrent use applicant failed to prove that its use of the applied-for mark commenced before the filing date of the application underlying defendant's registration. Bad Boys Bail Bonds, Inc. v. William Lee Yowell, 115 USPQ2d 1925 (TTAB 2015) [precedential].

Applicant Bad Boys sought to register the mark shown above, for bail bond services, advertising and marketing services, and various ancillary goods. Its application was refused in view of the registered mark BAD BOYZ BAIL BONDS 'IN JAIL, WE BAIL' for "providing bail bonds for persons under arrest in the state of Missouri." Bad Boys amended its application to seek a concurrent use registration claiming California, Arizona, and Nevada. The application was published for opposition and after the opposition period closed without a challenge, the Board instituted this proceeding.

As a condition precedent to issuance of a concurrent use registration, the applicant must show use of its mark in commerce prior to the applicable date specified in Section 2(d) of the Lanham Act: i.e., prior to the filing date of the application underlying the defendant's registration.

Bad Boys claimed a first use date of August 28, 1998, more than a year before Defendant Yowell's December 29, 1999 filing date. Yowell moved for summary judgment, asserting that Bad Boys' first use of the applied-for mark did not occur prior to that critical date. Yowell's motion was based upon certain documents that Bad Boys had provided during settlement discussions between the two entities.

Bad Boys objected to the admission of those documents under Federal Rule of Evidence 408(a), asserting that they constituted statements made during settlement negotiations. The Board, however, overruled the objection, pointing out that the documents existed independently of the discussions and did not include any statements made during the settlement discussions.

Bad Boys had provided the documents to Yowell in an attempt to demonstrate the former had used the name or mark BAD BOYS BAIL BONDS prior to the critical date. Yowell, in his summary judgment motion, asserted that the documents did not show use of the applied-for mark, but only the literal portion thereof, and that Bad Boys had failed to provide any additional documents when asked. Bad Boys argued that the design element of its mark was irrelevant, since the refusal to register in view of Yowell's mark had been based only on the word portion of the applied-for mark.

The Board, however, pointed out that the mark at issue in this proceeding is the combined word plus logo mark. The submissions by Yowell established a prima facie case that Bad Boys did not use the applied-for mark prior to the critical date. Bad Boys failed to provide evidence rebutting that case. The Board therefore considered it undisputed that Bad Boys did not use the applied-for mark prior to the critical date.

Finding no genuine issue of material fact, the Board granted the motion for summary judgment and dissolved the proceeding.

Read comments and post your comment here.

Text Copyright John L. Welch 2015.

"INDICES" Not Deceptively Misdescriptive of Healthcare Data Reporting, Says TTAB

The Board reversed a Section 2(e)(1) refusal to register the mark INDICES, finding it not deceptively misdescriptive of "business analysis services in the field of healthcare data, namely, the collection, reporting and analysis of healthcare data for business purposes." In re Inovalon, Inc., Serial No. 85351975 [Section 2(e)(1) deceptive misdescriptiveness refusal of  .

The test for deceptive misdescriptiveness under Section 2(e)(1) has two parts: (1) the mark must misdescribe the goods or services, and (2) consumers must believe the misdescription. Unlike for a Section 2(a) deceptiveness refusal, the misdescription need not be material to the purchasing decisions of reasonably prudent consumers.

The Examining Attorney argued that "companies providing informatics and data aggregation may present data in the form of 'indices;' that consumers encounter 'indices' in the analysis and presentation of large sets of data; that Applicant provides datasets in the field of healthcare; and that Applicant’s datasets in the field of healthcare may be analogous to indexes or "indices.''"

The Board rejected applicant's argument that INDICES is an acronym for INSIGHTS DATA INTELLIGENCE SOLUTION, since there was no evidence that the mark was so intended or understood. [What does intent have to do with it? - ed.].

Applicant stated that its INDICES services do not provide information to customers in the form of an index.

The Board concluded that the Examining Attorney had failed to carry her burden of proof to show that INDICES "may plausibly describe a characteristic" of applicant's services. The proffered definition of "index" as a reference table having keys that allow one to address data items was specific to computers. Other evidence regarding indexes of data in certain industries was "too speculative" to be applicable here.

Simply put, the Examining Attorney’s evidence requires several steps from the use of “indices” to present and organize data in various industries to the interpretation of Applicant’s services as providing datasets in the healthcare field to analogizing such datasets as “indices” for us to find that the mark INDICES merely describes a function, feature or characteristic of the recited services. At best, the evidence indicates that INDICES may be suggestive thereof.

The Board therefor found it unnecessary to address the issue of whether the supposed misrepresentation was likely to be believed by consumers, since it found no misrepresentation.

Read comments and post your comment here.

TTABlog comment:

Text Copyright John L. Welch 2015.

Reminder: TTABlog Road Trip: 2015 Midwest IP Institute - Minneapolis, September 17-18th

Yours truly, the TTABlogger, will be back on the road in September, heading the Blogmobile west and north to Minneapolis for the 2015 Midwest Intellectual Property Institute on September 17 and 18, 2015. Details and registration information may be found in this brochure.

On the trademark side, the program will feature TTAB Chief Judge Gerard F. Rogers, who will discuss recent TTAB-related developments such as the B&B v. Hargis decision and possible rule changes. Judge Rogers will also appear on a panel with Carrie Hefte of Wells Fargo, Scott Johnston of Merchant & Gould, and yours truly, of Wolf, Greenfield & Sacks in Boston.

Fellow Blogger Steve Baird of Winthrop and Weinstine will team up with me to discuss "the year in trademark law," including some insights into the REDSKINS and FLANAX cases now wending their way through the appeal process, and a rundown of the more interesting and/or impactful recent decisions of the TTAB.

Read comments and post your comment here.

Text Copyright John L. Welch 2015.

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

Allegedly, one may predict the outcome of a Section 2(d) appeal, nine times out of ten, by simply looking at the marks and the identified goods or services. Here are three recent appeals from Section 2(d) likelihood of confusion refusals. One was reversed. Which one? [Answer in first comment].



In re Thriveon, Serial No. 86178339 (August 27, 2015) [not precedential] [Refusal to register THRIVEON for 'computer services, namely, remote and on-site management of information technology (IT) systems of others," in view of the registered mark shown below for "Information technology technical support services and consulting, namely, troubleshooting in the nature of diagnosing of computer hardware and software problem ...." [NETWORKS disclaimed]].

In re Dretzka, Serial No. 86396440 (August 28, 2015) [not precedential] [Refusal to register INSPIRED GRIT for "education services, namely, providing live and on-line coaching, training, seminars, courses, retreats, camps,and workshops in the field of personal development as it relates to helping people identify, set, and achieve personal life goals; providing live and on-line coaching in the field of personal development, namely, life coaching services in the field of self-realization, talent utilization, and finding personal satisfaction in one’s life," in view of the registered mark GRIT 
for "educational services, namely, developing and conducting seminars and workshops in the field of leadership, teamwork and customer service"].

In re Fourstar Group USA Inc., Serial No. 86248063 (August 28, 2015) [not precedential] [Refusal to register FUNOVATIONS for “Mechanical toys; Wind-up toys", in view of the registered mark shown below, for, inter alia, "Action skill games"].

Read comments and post your comment here.

TTABlog comment: Well, how did you do?

Text Copyright John L. Welch 2015.