Monday, January 14, 2019

The Top Ten TTAB Decisions of 2018 (Part I)

The TTABlogger has once again bravely (?) chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year (i.e., 2018). This is the first of two posts; the first five selections are set out below. Additional commentary on each case may be found at the linked TTABlog posting. The cases are not necessarily listed in order of importance (whatever that means).

In re American Cruise Lines, Inc., 128 USPQ2d 1157 (TTAB 2018) [precedential] (Opinion by Judge Marc A. Bergsman). [TTABlogged here]. Giving “great weight” to two consent agreements, the Board reversed a Section 2(d) refusal of AMERICAN CONSTELLATION, finding the mark not likely to cause confusion with the registered mark CONSTELLATION, both for cruise ship services. The examining attorney maintained that these were “naked” consents because they did not state the steps the parties would take to avoid confusion, but the Board pointed out that such terms, although preferred, are not essential for the consents to have probative value. “[N]o authority requires that parties explicitly agree to make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future as a prerequisite to giving some weight to a consent agreement.” The Board found that the second consent agreement was “clothed” because it included four reasons why applicant and registrant believed confusion was not likely. “Clothed”‘ consent agreements in which “‘competitors have clearly thought out their commercial interests’ should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.”

In re Serial Podcast, LLC, 126 USPQ2d 1061 (TTAB 2018) [precedential] (Opinion by Judge David K. Heasley]. [TTABlogged here]. The Board affirmed a refusal to register the term SERIAL in standard character form, finding it to be generic for "entertainment in the nature of an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling." However, the Board reversed refusals to register two design forms of the mark, shown below, finding that these two marks had acquired distinctiveness, but requiring a disclaimer of the word "SERIAL" in each mark. Applicant argued that use of the term “serial” as a noun is antiquated and archaic, and that the term in modern usage is an adjective describing a characteristic of audio programs. The Board, however, rejected the noun/adjective distinction, pointing out that both nouns and adjectives may be generic. Even though some articles refer to applicant’s podcast by its name Serial, "that amounts, at most, to 'de facto secondary meaning'’ in a generic term," and does not entitle applicant to registration. Because the applied-for mark is at best highly descriptive, "more substantial evidence" than media references was required to establish acquired distinctiveness. As to the word + design marks, the Board found, based on evidence of parodying and copying by third parties, that the composite logos have achieved public recognition as source indicators for applicant’s services.

Stawski v. Lawson, 129 USPQ2d 1036 (TTAB 2018) [precedential] (Opinion by Judge David K. Heasley). [TTABlogged here]. Concluding that Applicant Scott Stawski was not entitled to concurrent use registrations for the marks PROSPER ESTATE and PROSPER RIDGE for wines, the Board dissolved this concurrent use proceeding. Stawski claimed rights to his marks in nine states, as an exception to John Gregory Lawson's registration for the mark PROSPER for wines, but Stawski failed to show prior, lawful use of his marks (and he also failed to prove that confusion is not likely). Stawski had to prove "technical use of his trademarks" in commerce prior to Registrant Lawson’s February 29, 2012 filing date: i.e. use sufficient to support a trademark registration. The Lanham Act's concurrent use provision expressly requires "lawful use in commerce" prior to the filing date of an excepted user’s application or registration. 15 U.S.C. § 1052(d). “Use in commerce” means “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127. Applicant Stawski failed to establish that his use satisfied the "in commerce" requirement, and he also failed to prove that, if his use was in commerce, it was lawful. Thus he did not satisfy the jurisdictional requirement of Section 2(d). The Board squarely ruled, for the first time, that failure to obtain a Certificate of Label Approval (COLA) from the Alcohol and Tobacco Tax and Trade Bureau (TTB) renders the use of a mark unlawful and thus insufficient to support a trademark registration.

In re Forney Industries, Inc., 127 USPQ2d 1787 (TTAB 2018) [precedential] (Opinion by Judge Linda A. Kuczma). [TTABlogged here]. In a case of first impression, the Board ruled that a color mark consisting of multiple colors applied to product packaging cannot be inherently distinctive. Consequently, since Applicant Forney Industries did not seek registration under Section 2(f) in the alternative, the Board affirmed a refusal to register the mark shown below, comprising the colors “red into yellow with a black banner located near the top as applied to packaging” for applicant’s metal hardware, welding equipment, safety goods, and marking products. Forney maintained that the applied-for mark is not a “color mark” but should be treated as product packaging. The Board disagreed: reviewing applicant’s drawing, which showed the mark surrounded by dashed lines, the Board concluded that the mark should be treated as a color mark, consisting of multiple colors applied to product packaging. The Board noted that Qualitex (green press pad) and Owens-Corning (pink insulation) involved a single color applied to a product. The question here was whether multiple colors applied to product packaging can be inherently distinctive. Citing Wal-Mart and In re General Mills, and finding no legal distinction between a single color mark and one consisting of multiple colors "without additional elements, e.g., shapes or designs,” the Board said no: although a “color applied to a product or its packaging may function as a trademark . . . color can never be inherently distinctive as a source indicator."

In re Minerva Associates, Inc., 125 USPQ2d 1634 (TTAB 2018) [precedential] (Opinion by Judge Linda A. Kuczma). [TTABlogged here]. Reversing a refusal to register the mark AWLVIEW for, inter alia, warehouse inventory management software, the Board overturned the USPTO’s rejection of applicant’s specimen of use. Because the mark appears on the login and search screens of applicant’s downloadable software when the software is in use, the Board concluded that the specimen “shows the applied-for mark used in connection with the goods . . . and would be perceived as a trademark identifying the source of those goods.” According to Section 904.03(e) of the Trademark Manual of Examining Procedure (Oct. 2017), an acceptable specimen for software “might be a photograph or printout of a display screen projecting the identifying trademark for a computer program.” The Board noted that, again according to Section 904.03(e), “[i]t is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce. See, e.g., In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (holding that stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, is sufficient use)."

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Text Copyright John L. Welch 2018-19.


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