Wednesday, January 29, 2020

The Top Ten TTAB Decisions of 2019 (Part II)

This is the second of two posts; the first five selections were posted here yesterday. Additional commentary on each case may be found at the linked TTABlog post. The cases are not necessarily listed in order of importance (whatever that means).

Schiedmayer Celesta GmbH v. Piano Factory Group, Inc. and Sweet 16 Musical Properties, Inc., 2019 USPQ2d 341894 (TTAB 2019) [precedential] (Opinion by Judge Michael B. Adlin). [TTABlogged here]. The Board granted a petition for cancellation of a registration for the mark SCHIEDMAYER for “pianos, namely, upright pianos, grand pianos, and digital pianos,” finding that the mark falsely suggests a connection with petitioner in violation of Section 2(a). Rejecting respondents’ laches defense, the Board found that although petitioner’s delay of nearly seven and one-half years before filing its petition for cancellation was unreasonable, respondents failed to prove any material damage resulting from the delay. As to the false connection claim under Section 2(a), petitioner had to show that SCHIEDMAYER is “unmistakably associated with a particular personality or ‘persona.’” The record evidence, including encyclopedia entries, Internet search results, and media mentions, demonstrated that “Petitioner and its instruments are known to and by the public as ‘Schiedmayer.’” Indeed, SCHIEDMAYER is famous in the United States in connection with keyboard musical instruments. Thus the mark SCHIEDMAYER points uniquely and unmistakably to petitioner. The Board found that, in fact, petitioner is the only entity that SCHIEDMAYER could possibly identify.

Double Coin Holdings, Ltd. v. Tru Development, Cancellation No. 92063808 (October 1, 2019) [precedential] (Opinion by Judge Jonathan Hudis). [TTABlogged here]. Denying Respondent Tru’s abandonment counterclaim, the Board granted a petition for cancellation of a registration for the mark ROAD WARRIOR for tires, finding a likelihood of confusion with the registered mark WARRIOR, in the stylized form shown here, for automobile tires. Tru was unable to prove nonuse of the WARRIOR mark for three consecutive years, which would have triggered the Section 45 presumption of abandonment, and it failed to carry its burden to establish that Petitioner Double Coin intended not to resume use of the mark during the two-and-one-half year period of nonuse. The question for the Board was “whether Double Coin's decision to discontinue sales in the United States in response to the imposition of tariffs, in-and-of-itself, was ‘excusable,’ that is, a reasonable business judgment under the circumstances.” The Board found Double Coin’s efforts to be sufficient to show that its cessation of use of the WARRIOR mark was “unaccompanied by any intent not to resume use.” Double Coin announced that it intended to find an alternative source of manufacture, including possibly in the United States and it followed through by building a factory in Thailand. Its expert Ms. Coates explained, “[t]hese are not the statements and acts of an entity that intended to leave the U.S. market permanently, never to return.”

In re Odd Sox LLC, 2019 USPQ2d 370879 (TTAB 2019) [precedential] (Opinion by Judge Karen Kuhlke). [TTABlogged here]. The TTAB upheld a refusal to register the packaging design shown here, for “socks,” finding the design to be generic for the goods. The Board also considered and rejected Applicant Odd Sox’s alternative claim of inherent distinctiveness. The subject application described the alleged mark as a “three-dimensional configuration of product packaging for displaying a single pair of socks hanging side by side.” The socks, two fasteners, and the hook are shown in dashed lines and are not part of the mark. The Board found it clear that “rectangular packaging enabling the hanging of a single pair of socks side-by-side is at most a minor variation of the common form of packaging.” The evidence further showed that the placement of socks side-by-side and front-to-back may be useful to sellers and appealing to consumers. For example, the socks may be placed together to form a single image. The Board found that consumers of socks would primarily regard applicant’s design as a common type of packaging rather than as a source indicator, and so the design is generic. As to the claim of inherent distinctiveness, the Board reiterated that the configuration at issue is a common basic shape or design and is not unique or unusual in this field. Therefore, under Seabrook, it is not inherently distinctive.

Laverne J. Andrusiek v. Cosmic Crusaders LLC, 2019 USPQ2d 222984 (TTAB 2019) [precedential] (Order by Interlocutory Attorney Yong Oh (Richard) Kim). (TTABlogged here). In this cancellation proceeding involving a registration for the mark CAPTAIN CANNABIS for comic books, the Board faced the question of whether a witness located in the United States, whose testimony was submitted by affidavit or declaration under Rule 2.123(a)(1), may be cross-examined by written questions. No, said the Board, only by oral cross-examination. “Where, as here, testimony is presented by affidavit or declaration, Trademark Rules 2.123(a)(1) and (a)(2) make clear that the methods of cross-examination permitted depend on where the witness is located. “[I]f such witness is within the jurisdiction of the United States,” any adverse party may “take ... oral cross-examination of that witness ....” Trademark Rule 2.123(a)(1). “[I]f such witness is outside the jurisdiction of the United States,” any adverse party may “conduct cross-examination by written questions as provided in § 2.124 ....” The Board noted that the Rules do not require that oral cross-examination be conducted in person. It may be conducted by telephone or other remote means either through stipulation or on motion for good cause. Finally, the Board pointed out that respondent will bear the expense of producing the witness, but petitioner must schedule and bear the expense of the court reporter. Redirect or re-cross must be taken at the same time as the cross-examination.

In re Twenty-Two Desserts, LLC, 2019 USPQ2d 292782 (TTAB 2019) [precedential] (Opinion by Judge Frances Wolfson). (TTABlogged here).Finding that relevant consumers would understand the term MALAI to refer to a key aspect of ice cream and frozen desserts, the Board affirmed a refusal to register on the ground of genericness. There was no dispute that applicant’s identification of goods adequately defined the genus at issue. The relevant consuming public comprised ordinary consumers who purchase and eat ice cream products. The question, then, was how does the relevant public perceive the term MALAI in the context of applicant’s goods? The Board agreed with the Examining Attorney that “‘malai’ has an independent meaning in English for a specific cooking ingredient, cream.” Moreover, “malai” has been used to identify a creamy food principally made from malai, including items that fall within – i.e., are a sub-group or type of – the goods broadly identified in the subject application: for example, “malai kulfi,” a type of Indian ice cream. The Board found clear evidence that consumers would understand MALAI to refer to a type of ice cream made principally with malai. It agreed with applicant that there is no per se rule that the name of any ingredient in a product will necessarily be generic; but where, as here, the public understands the ingredient name “to refer to a key aspect or category of the genus of the goods, it is generic for those goods.”

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Text Copyright John L. Welch 2020.


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