Wednesday, June 13, 2018

Precedential No. 21: TTAB Extends Safer Requirements to Internet Evidence Submitted by Applicants

In yet another decision involving the admissibility of Internet evidence, the Board made clear that its recent ruling in In re Mueller Sports Medicine [TTABlogged here] extends to trademark applicants as well as examining attorneys. In Mueller, the Board held that Internet evidence submitted by an examining attorney that did not include the date of access and the pertinent URL was objectionable. Here, the evidence at issue was submitted by the applicant. However, since this applicant's faulty submission occurred prior to issuance of the Mueller decision, the Board decided to consider the evidence. Nonetheless, the Board affirmed Section 2(d) refusals of the mark INDIGO in standard character form and in the design forms shown below [AR disclaimed] for "optical lenses, namely, corrective lenses sold through eye care professionals," in view of the registered mark INDIGO for "ski glasses, ski goggles, goggles for sports, protective sport helmets; sunglasses, bags specifically adapted for protective helmets.” In re I-Coat Company, LLC, 126 USPQ2d 1730 (TTAB 2018) [precedential] (Opinion by Judge Peter W. Cataldo).

Internet evidence: In the past, the Board preferred, but did not require, that a webpage submitted by an applicant "be identified by the full address (url) for the web page, and the date it was downloaded, either by the information printed on the web page itself, or by providing this information in an Office action or an applicant's response." TBMP Section 1208.03; see also In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 n.6 (TTAB 2010). [The Board noted that the better practice is to print or otherwise display the URL and access date on the documents themselves. Alternatively, the URL and access date may be provided by declaration].

Website evidence submitted without the URL and access date "lacks authenticity and cannot be readily verified by the non-offering party." In In re Mueller Sports Medicine, Inc., 126 USPQ2d 1584, 1587 (TTAB 2018), the Board ruled that "to properly make such website evidence of record, a trademark examining attorney must include the URL and the date when the material was accessed, and . . . if an examining attorney fails to do so, and the applicant objects, the material will not be considered. According to the Board, it there "stated [its] intention" to hold applicants to the same standard. [In Mueller, the Board did not merely state its intention to extend the Safer requirements to applicants. It said: "we further extend these requirements to both examining attorneys and applicants in ex parte proceedings." - ed.].

In accordance with our decision in Mueller Sports Medicine, we will no longer consider Internet evidence filed by an applicant in an ex parte proceeding to be properly of record unless the URL and access or print date has been identified, either directly on the webpage itself, or by providing this information in a response, except where the examining attorney does not object.

Here, because applicant submitted its evidence during prosecution of the subject applications (with its request for reconsideration), prior to the Mueller decision, the Board chose to consider the website evidence submitted by Applicant .

Likelihood of confusion: The Board's Section 2(d) analysis was straightforward. Applicant I-Coat, in an effort to show the weakness of the word "INDIGO," submitted three third-party registrations and Internet evidence from three websites. The Board again recognized that, in determining the degree of weakness of the shared terms, it must “adequately account for the apparent force of [third-party use and registration] evidence,” regardless of whether “specifics” pertaining to the extent and impact of such use have been proven. Juice Generation, Inc. v. GS Enters. LLC, 115 USPQ2d 1671, 1674-5 (Fed. Cir. 2015). “[E]xtensive evidence of third-party use and registrations is ‘powerful on its face,’ even where the specific extent and impact of the usage has not been established.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (2016) (citing Juice Generation v. GS Enters., 115 USPQ2d at 1674).

As to the three websites, the Board found that this evidence fell "well short of the volume of evidence found convincing in Jack Wolfskin and Juice Generation." The three registrations involved marks (GREAT NORTHWEST INDIGO, INDIGOFERRA, and INDIGO SCHUY) significantly different from the marks at issue. Moreover, only two of the registrations recited goods identified in the cited registration, and none of the marks are as similar to the cited mark INDIGO as are applicant's marks.

In sum the totality of applicant's evidence failed to show that INDIGO is significantly weak in connection with the involved goods.

As to the two word + design marks, the Board found the word INDIGO to be the dominant feature. The evidence established that the disclaimed term "AR" is an acronym for "anti-reflective" and identifies a feature of the goods. In addition, "AR" is displayed in much smaller type than INDIGO. The rectangle-with-folded-corner design does not create a commercial impression separate from the wording but rather serves merely as a frame therefor. Of course, it is settled that the literal portion of a word + design mark will likely be the dominant portion. And so the Board concluded that the differences between the cited mark INDIGO and applicant's word + design marks were outweighed by the similarity in appearance sound and meaning.

Third-party website and registration evidence established that registrant's sunglasses and applicant's optical lenses travel in the same channels of trade. Although applicant's goods are limited to sale "through eye care professionals," there are no limitations in the cited registration. Examining Attorney Jonathan Ryan O'Rourke submitted evidence that both corrective lenses and sunglasses are sold on the same webpages.

Assuming that the purchasers of the involved goods will be more careful purchasers - seeking vision correction and vision enhancement by eye protection - the Board observed once again that even careful, sophisticated consumers are likely to believe that such goods emanate from the same source when sold under identical or similar marks.

Conclusion: The Board found confusion likely and it affirmed the refusals to register.

Read comments and post your comment here.

TTABlog comment: The Board called applicant's evidence of third-party use and registration, "modest." I sometimes use the word "feeble" in such circumstances.

Text Copyright John L. Welch 2018.


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