Monday, January 23, 2017

The Top Ten TTAB Decisions of 2016 [Part 1]

The TTABlogger has once again chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year (i.e., 2016). This is the first of two posts, the first five selections being set out below. Additional commentary on each case may be found at the linked TTABlog postings]. The cases are not necessarily listed in order of importance (whatever that means).

In re Morgan Brown, 119 USPQ2d 1350 (TTAB 2016) [precedential] and In re JJ206, LLC, dba JuJu Joints, 120 USPQ2d 1568 (TTAB 2016) [precedential]. [TTABlogged here and here]. This pair of decisions may prove to be the opening gambits in an evolving area of trademark law. In Brown, the Board snuffed out an application to register the mark HERBAL ACCESS for “retail store services featuring herbs” because the mark was being used in connection with the sale of a substance (marijuana) that is illegal under the federal Controlled Substances Act (CSA). The Board observed that, "to qualify for a federal service mark registration, the use of a mark in commerce must be 'lawful.' *** Thus, any goods or services for which the mark is used must not be illegal under federal law." In JJ206, the Board affirmed refusals to register POWERED BY JUJU and JUJU JOINTS for "smokeless marijuana or cannabis vaporizer apparatus," rejecting applicant's defense that the goods are sold only in states where marijuana is legal. Citing Brown, the Board ruled that if the goods on which the mark is intended to be used are unlawful, there can be no bona fide intent to use the mark in lawful commerce. Applicant pointed to the Department of Justice's "Cole Memo," which sets out government priorities in the federal enforcement of the CSA against marijuana-related conduct, but the Board asserted that the Cole Memo "does not and cannot override the CSA."

In re Eximius Coffee, LLC, 120 USPQ2d 1276 (TTAB 2016) [precedential]. [TTABlogged here]; In re Integrated Embedded, 120 USPQ2d 1504 (TTAB 2016) [precedential]. [TTABlogged here]; and In re Adlon Brand GmbH & Co. KG c/o FUNDUS FONDS-Verwaltungen GmbH, 120 USPQ2d 1717 (TTAB 2016) [precedential]. [TTABlogged here]. In these three decisions, the Board charted a new course for Section 2(e)(4) surname refusals, focusing on consumer perception rather than applying a more mechanical approach under the traditional Benthin factors. Finding the marks ALDECOA and THE BARR GROUP to be primarily merely surnames, the Board emphasized the fact that persons with the surnames at issue were active in the involved businesses. In the third case, a divided Board panel affirmed a refusal of the mark ADLON for hospitality services. Although ADLON is a rare surname, the panel majority observed that it has no meaning or significance other than as a surname. Judge Quinn dissented, contending that ADLON is an extremely rare surname that consumers would perceive as a coined term having no meaning. Recently, retiring Judge Seeherman suggested a different approach in her concurring opinion in In re Bonhams & Butterfields Auctioneers Corp., Serial Nos. 85443480 and 85443485 (December 29, 2016) [not precedential], where she urged that the degree of rareness of the surname should be the first consideration in the Section 2(e)(4) analysis. [TTABlogged here].

In re Hodgdon Powder Company, Inc., 119 USPQ2d 1254 (TTAB 2016) [precedential]. [TTABlogged here]. In a rare “color mark” decision, the Board reversed a refusal to register a mark comprising the color “white” for “preformed gunpowder charges for muzzleloading firearms,” finding that Applicant Hodgdon Powder had proven acquired distinctiveness under Section 2(f). Of course, under Wal-Mart and Qualitex, single color marks are never inherently distinctive. Hodgdon stated that the color white for its gunpowder served no purpose other than to identify Hodgdon’s products, that the color white is not a natural by-product of the manufacturing process, and that no one else in the industry uses the color white for gunpowder. The Board concluded that the color white “is an anomaly contrary to consumers' expectations regarding the appearance of the product.” Hodgdon filed a declaration attesting to substantially exclusive and continuous use of the color white for at least the five years preceding the filing date of its application. Its advertising stated that the products, sold under the mark WHITE HOTS, is “The Only White Gunpowder.” The Board found Hodgdon’s advertising to be “effective ‘look for’ advertising.” Reviewing the totality of the evidence, the Board concluded that the color white for Hodgdon’s products had acquired distinctiveness.

In re Loggerhead Tools, LLC, 119 USPQ2d 1429 (TTAB 2016) [precedential]. [TTABlogged here]. The Board affirmed a refusal to register a motion mark “depicting the product configuration of a hand tool in which six rectangular-shaped jaw-like elements of the circular head of a hand tool radially move in and out,” for “hand tools, namely, gripping tools in the nature of wrenches and wire crimpers for sale through mass merchandisers to retail consumers,” on the ground of Section 2(e)(5) functionality. The Supreme Court has stated that a product feature is functional, and thus cannot serve as a trademark, if “it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” See TrafFix and Inwood. Treating the mark like a product configuration mark, the Board applied the ever-popular four-part test of Morton-Norwich. Reviewing Loggerhead’s utility patent for an “Adjustable Gripping Tool” and its design patent for a “Hydrant Tool,” the Board found that the design patent did not cover the motion described in the trademark application and so did not overcome the “strong conclusion” that the utility patent’s disclosure of the utilitarian advantages of the proposed mark indicated functionality. The USPTO pointed to numerous examples of advertising touting the utilitarian advantages of the tool. The Board found Loggerhead’s evidence of alternative designs unpersuasive, and a conclusory statement by its president that its device “was not the most cost-effective combination among the various alternatives available” to be unavailing. Concluding that the mark affects the quality of the tool, the Board affirmed the refusal.

In re Bay State Brewing Company, Inc., 117 USPQ2d 1958 (TTAB 2016) [precedential]. [TTABlogged here]. Although consent agreements are frequently entitled to great weight in its du Pont analyses, the Board was unmoved by such an agreement in its affirmance of a Section 2(d) refusal of the mark TIME TRAVELER BLONDE for “beer” (BLONDE disclaimed), in view of the registered mark TIME TRAVELER for “beer, ale and lager.” The Board found that the agreement between applicant and registrant “does not comprise the type of agreement that is properly designed to avoid confusion and does not fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods.” The agreement required that each party use its mark in connection with its house mark, that applicant use TIME TRAVELER or the word TRAVELER only in the mark TIME TRAVELER BLONDE, that the word BLONDE be displayed in at least equal prominence with TIME TRAVELER, and that each party use a trade dress not confusingly similar to the trade dress of the other. Particularly troublesome was the “Geographical Limitation” provision, stating that applicant will not use its applied-for mark “outside of New England and the State of New York,” while registrant’s use was not geographically limited.

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Text Copyright John L. Welch 2016-17.


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