Tuesday, January 15, 2019

The Top Ten TTAB Decisions of 2018 (Part II)

This is the second of two posts; the first five selections were posted here. 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).

Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (December 28, 2018) [not precedential]. [TTABlogged here]. In a controversial nonprecedential ruling, the Board denied the Rule 12(b)(6) motion of Applicant United Trademark Holdings to dismiss this opposition to registration of the mark RAPUNZEL for dolls and toy figures. Opposer Rebecca Curtin, a professor at Suffolk University Law School in Boston, alleged that United's mark fails to function as a trademark under Sections 1, 2, and 45 of the Trademark Act on the grounds that it is purely informational and highly descriptive, if not generic, of the goods. United asserted that Professor Curtin lacked standing because she is not a competitor and "has not used the mark in connection with the manufacture or sale of dolls." Professor Curtin maintained that, as a consumer of dolls, "she has purchased and continues to purchase said goods, and that registration of the applied-for mark by Applicant would constrain the marketplace of such goods sold under the name 'Rapunzel,' raise prices of  'Rapunzel' dolls and toy figures, and deny consumers, such as herself, the ability to purchase 'Rapunzel' dolls offered by other manufacturers." The Board deemed these allegations sufficient to establish that she has a direct and personal interest in the outcome of the proceeding, meeting the "liberal threshold" established in Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). The Board observed that "[c]onsumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain."

In re Peace Love World Live, LLC, 127 USPQ2d 1400 (TTAB 2018) [precedential] (Opinion by Judge Marc A. Bergsman). [TTABlogged here]. The Board showed no ♥ for this applicant, affirming a refusal to register the mark I LOVE YOU, in standard character form, for bracelets, finding that phrase is merely ornamental and therefore fails to function as a trademark. The crucial question, of course, was whether the applied-for mark would be perceived as a source indicator. In assessing a failure-to-function refusal, and particularly whether a mark is merely ornamental, the Board may consider whether the mark is a common expression. Moreover, the size, location, dominance and significance of the mark are relevant to the determination. The Board found that the phrase I LOVE YOU is "essentially the bracelet itself." It "conveys a term of endearment comprising the bracelet and, thus, it is ornamental. It does not identify and distinguish the source of the bracelet, especially where there is so much jewelry decorated with the term I LOVE YOU in the marketplace." To add insult to injury, the Board also affirmed a Section 2(d) refusal on the ground of likelihood of confusion with the registered mark I LUV U for "jewelry, namely, necklaces, bracelets, rings and charms; pendants; earrings."

Applicant's specimen of use

In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181 (TTAB 2018) [precedential] (Opinion by Judge Frances Wolfson; concurring opinion by Judge Lorelei Ritchie). [TTABlogged here]. The Board affirmed a Section 2(d) refusal to register the mark shown below, for "Wine of French origin protected by the appellation of the origin Cité de Carcassonne" [CITÉ DE CARCASSONNE disclaimed], finding it likely to cause confusion with the registered mark CHATEAU LAROQUE for "Wines having the controlled appellation Saint-Emilion Grand Cru" [CHATEAU disclaimed]. The Board concluded, not surprisingly, that both the applied-for mark and the cited mark are dominated by the word LAROQUE. Applicant Aquitaine and the examining attorney jousted over whether the Board must consider only "reasonable variations" of the cited, standard character mark. The Board held that "when we are comparing a standard character mark to a word + design mark for Section 2(d) purposes, we will consider variations of the depictions of the standard character mark only with regard to 'font style, size, or color' of the 'words, letters, numbers, or any combination thereof.'" Judge Ritchie concurred in the result but disagreed with the majority’s rationale. Specifically, Judge Ritchie found "the pronouncement of the majority that it will not consider ‘design features’ to be both unnecessary and ultimately unhelpful." "Given the definition of 'chateau,' consumers may certainly expect a picture or design of a house or chateau to be depicted with Registrant’s CHATEAU LAROQUE."

In re FCA US LLC, 126 USPQ2d 1214 (TTAB 2018) [precedential] (Opinion by Judge Anthony R. Masiello). [TTABlogged here]. The Board affirmed a Section 2(d) refusal to register the mark MOAB for “Motor vehicles, namely, passenger automobiles, their structural parts, trim and badges’” finding it likely to cause confusion with the registered mark MOAB INDUSTRIES for “Automotive conversion services, namely, installing specialty automotive equipment” [INDUSTRIES disclaimed]. While the subject application was pending (and suspended), the federal court in Arizona ruled in favor of Applicant FCA US LLC (f/k/a Chrysler Group LLC) in a trademark infringement and unfair competition action brought by the cited registrant, but the Board found that the court rulings had no estoppel effect on the Board’s determination of this ex parte appeal. At the district court, registrant failed to prove that FCA's use of the mark MOAB in connection with its "JEEP WRANGLER MOAB Special Edition" vehicles "was likely to cause confusion on the part of reasonably prudent customers for [Registrant’s] upfitted vehicles." FCA here argued that “The Board … should defer to the more fulsome record upon which the District Court relied to draw its conclusions.” The Board, however, observed that "although there is some overlap between Applicant’s defense and counterclaims in the federal court action and the basis of refusal of Applicant’s application, they also raise discrete issues. In other words, the issues are not identical."

In re Pitney Bowes, Inc., 125 USPQ2d 1417 (TTAB 2018) [precedential] (Opinion by Judge Cynthia C. Lynch). [TTABlogged here]. Overturning the examining attorney’s rejection of Pitney's specimen of use, the Board reversed a refusal to register the mark shown here , for various mailing services. The examining attorney maintained that Pitney’s webpage specimen described a self-service kiosk that consumers use to mail and ship items but did not clearly indicate that applicant itself provided the subject services. The Board, however, ruled that "Applicant’s explanation of the specimen and how Applicant provides the outsourced mailing services referenced on the specimen resolved the ambiguity, and the refusal should not have been maintained." For advertisement specimens such as applicant’s webpage, "[i]n order to create the required 'direct association,' the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source." "Both precedent and examination guidance make clear that in assessing the specimens, consideration must be given not only to the information provided by the specimen itself, but also to any explanations offered by Applicant clarifying the nature, content, or context of use of the specimen that are consistent with what the specimen itself shows."

(click on photo for larger image)

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Text Copyright John L. Welch 2018-19.


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