Tuesday, January 28, 2020

The Top Ten TTAB Decisions of 2019 (Part I)

The TTABlogger has once again fearlessly (?) chosen the ten (10) TTAB (Tee-Tee-Ā-Bee) decisions that he considers to be the most important and/or interesting from the previous calendar year (i.e., 2019). 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). Nine of the ten decisions are precedential.

Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 USPQ2d 460354 (TTAB 2019) [precedential] (Opinion by Judge Thomas Shaw). [TTABlogged here]. In what appears to be the first TTAB decision finding a color to be generic, the Board granted a petition for partial cancellation of a registration for the mark shown first below (lined for the color red) for, inter alia, saw blades, and it also granted a petition for cancellation of a registration for the mark shown second below (“the color red as applied to substantially the entire surface of the goods”), for “blades for reciprocating power saws.” The question faced by the Board was “whether the color red is generic for the identified goods and thus unregistrable under Trademark Act Sections 1, 2 and 45 because it cannot function as a mark.” The CAFC has stated that the term “generic name” under Section 14 of the Lanham Act encompasses anything that “potentially can but fails to serve to indicate source, including trade dress.” Since color is a form of trade dress, a single color applied to goods may be generic for those goods if it “fails to serve as an indicator of source.” The Board found that the extensive evidence of use of the color red on saw blades by petitioner and by numerous others “is incompatible with a finding that the ‘primary significance of the registered mark to the relevant public’ of the color red is as a source-indicator pointing solely to Freud.”

Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355 (TTAB 2019) [precedential] (Opinion by Judge Michael B. Adlin). [TTABlogged here]. Declining to apply the doctrine of foreign equivalents to a given name, the Board dismissed this opposition to registration of the mark RICHARD MAGAZINE for online services in the fields of fashion, beauty, and lifestyle, concluding that opposer had failed to prove a likelihood of confusion with its mark RICARDO for services in the culinary field. Although the involved services are related, the first du Pont factor, the dissimilarities between the marks, was dispositive. Considering the marks in their entireties, the Board found them more dissimilar than similar. The principal disagreement between the parties concerned whether the doctrine of foreign equivalents applied here. The Board observed that the doctrine “should generally not apply to first names such as RICHARD and RICARDO that are widely recognizable to American consumers, unless there is evidence that consumers would ‘translate’ the names.” The Board found no such evidence. “[G]enerally consumers would be unlikely to ‘stop and translate’ personal name marks, because doing so would point to not only a different person or people (whether real or fictional), but also to a different source, and to the mark losing any ‘instant recognizability.’”

In re DePorter, 129 USPQ2d 1298 (TTAB 2019) [precedential] (Opinion by Judge Linda A. Kuczma). [TTABlogged here]. Finding that the term #MAGICNUMBER108 fails to function as a trademark for shirts, the TTAB affirmed a refusal to register under Sections 1, 2, and 45 of the Lanham Act. The Board concluded that the term conveys an informational message referring to the Chicago Cubs winning the World Series in 2016 after a 108-year drought, and does not serve as a source identifier. The evidence showed that numerous third parties have used #MAGICNUMBER108 as part of messages posted on social media during and after the 2016 World Series, expressing support for the Cubbies. “This evidence is competent to suggest that upon encountering Applicant’s ‘mark,’ prospective purchasers familiar with such widespread non-trademark use are unlikely to consider it to indicate the source of Applicant’s goods.” The presence of the hash mark in applicant’s proposed mark reinforced the Board’s finding. “In the social media context, a hashtag “is a word or phrase preceded by a hash mark (#), used within a message to identify a keyword or topic of interest and facilitate a search for it.” The Board observed that a hashtag, when used as part of an online social media search term, generally serves no source-identifying function. It “merely facilitate[s] categorization and searching within online social media.” TMEP Section 1202.18. “Therefore, the addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable term typically will not render the resulting composite term registrable.”

Harry Caray's image on applicant's specimen t-shirt

In re Broken Arrow Beef and Provision, LLC, 129 USPQ2d 1431 (TTAB 2019) [precedential] (Opinion by Judge Christopher Larkin). [TTABlogged here]. Reversing a Section 2(e)(2) refusal to register the mark BA BEEF for “beef; flavored nuts; frozen fish; pork; poultry; preserved fish; processed pecans; seasoned nuts; chicken” [BEEF disclaimed], the Board ruled that the USPTO had failed to prove the mark to be primarily geographically descriptive of the goods. The examining attorney contended that “BA” is an abbreviation for Broken Arrow, Oklahoma, where applicant is located, but the record evidence was insufficient to show that “BA” would be recognized as identifying “a place known generally to the beef-purchasing public in the United States.” “Even assuming that BA ‘is likely a well-known geographic term to the more than 1 million people in the Tulsa metropolitan area,’ as the Examining Attorney claims, . . . and that the articles in the non-Oklahoma publications have exposed the abbreviation BA to some beef consumers outside Oklahoma,” the Board agreed with applicant that BA “is no NYC, LA, or even ATL,” particularly in view of the multiple non-geographic meanings of BA. In sum, based on the record evidence, “‘BA’ is ‘a relatively obscure term which would not be perceived as a geographic reference to’ Broken Arrow, Oklahoma by beef consumers outside Broken Arrow.”

In re TrackFin GmbH, Application Serial No. 86175623 (June 17, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman). [TTABlogged here]. In one of the more interesting cases in recent memory, the Board rendered a split decision regarding registrability of the “design” shown below, for snow groomers. The mark consists of the particular pattern made in the snow by the groomers. The Board found the design not to be de jure functional, but it upheld the refusals to register based on Applicant TrackFin’s failure to submit an acceptable specimen of use, and on lack of acquired distinctiveness. The Board reviewed one utility patent and two patent applications for snow groomer equipment but found that they did not disclose any utilitarian advantage arising from the use of the applied-for mark. The Board recognized that grooming the snow makes it easier to see and to traverse snow, but it found no evidence that this particular pattern offered any benefit over other patterns. As to acquired distinctiveness, the examining attorney identified patterns of groomed snow produced by applicant’s competitors, including ones with an equally sized and spaced “corduroy” design. In light of these designs, the Board concluded that TrackFin’s use of the proposed mark was not substantially exclusive: “consumers are not likely to perceive the snow track to be anything other than a non-source identifying design the grooming vehicle leaves behind.”

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Text Copyright John L. Welch 2019-2020.


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