The Top Ten TTAB Decisions of 2020 (Part I)

What a year! Despite the tumult, the TTABlogger has once again bravely (?) 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., 2020). 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). 

 

The Brooklyn Brewery Corporation v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 460354 (TTAB 2020) [precedential] (Opinion by Judge Thomas Shaw). [TTABlogged here]. The Board denied a petition for cancellation of a registration for the mark BROOKLYN BREW SHOP, and dismissed an opposition to that mark in stylized form, for a “beer making kit,” ruling that laches and acquiescence barred the plaintiff’s Section 2(d) claims. Plaintiff admitted that it was aware of defendant’s use of the word mark for more than four years before filing the petition for cancellation, and during that time the parties collaborated on a co-branded beer-making kit. The Board found that confusion between defendant’s marks and plaintiff’s marks BROOKLYN and BROOKLYN BREWERY for beer was not inevitable: "If Plaintiff’s CEO has 'no problem' with Defendant’s use of BROOKLYN BREW SHOP on beer-making kits, confusion is not inevitable as to the kits." The Board considered defendant’s word mark and stylized mark to be substantially the same, and so laches applied in the opposition proceeding as well. The Board found plaintiff’s delay unreasonable, rejecting plaintiff’s progressive encroachment argument, and it concluded that defendant suffered material prejudice because of the delay. As to acquiescence, the Board found that, in view of the parties’ collaboration, plaintiff actively represented that it would not assert its rights against defendant.

In re Medline Industries, Inc., 2020 USPQ2d 10237 (TTAB 2020) [precedential] (Opinion by Judge Christopher Larkin). [TTABlogged here]. In a rare Section 2(d) refusal involving color marks, the Board reversed a refusal to register, on the Supplemental Register, the color green (left) as applied to “medical examination gloves” in view of the registered mark shown on the right (also on the Supplemental Register), for the color green as applied to the exterior of “gloves for medical use; protective gloves for medical use.” As to the sixth du Pont factor, the strength of the cited mark, the Board’s decision in Cook Medical teaches that what is relevant is “the existence of third-party marks, not simply the presence in the marketplace of third-party goods bearing some shade of the color at issue.” (emphasis added). The Board observed that none of the third-party green medical gloves proffered by Medline were displayed in a way that identified or referred to green or a particular shade of green as a trademark, and so “it is very unlikely that the colors or shades of green used by third parties on medical gloves would be perceived as marks.” Nonetheless, under the 13th du Pont factor, this evidence of third-party use of the color green “corroborates the weakness of the cited mark and its limited potential scope of protection,” and “weighs against a likelihood of confusion.” The Board found that the two shades of green “would be viewed and remembered, at most, as distant relatives in the green family,” and it concluded that confusion as to source is “not likely.”

In re Guild Mortgage Company, 2020 USPQ2d 10279 (TTAB 2020) [precedential] (Opinion by Judge Lorelei Ritchie). [TTABlogged here]. On remand from the CAFC, the Board again affirmed a Section 2(d) refusal to register the mark GUILD MORTGAGE COMPANY & Design for “mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans” [MORTGAGE COMPANY disclaimed] in view of the registered mark GUILD INVESTMENT MANAGEMENT for “Investment advisory services” [INVESTMENT MANAGEMENT disclaimed]. In January 2019, the CAFC vacated the Board’s earlier decision because the Board had “failed to consider pertinent evidence and argument under DuPont factor 8,” which looks to “the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” The Board looked to the actual marketplace conditions – which the Board pointed out, are irrelevant to some DuPont factors — and found a lack of evidence that would allow it to make a finding under the eighth factor. It therefore deemed that factor to be neutral. Although consumer sophistication weighed slightly against a finding of likely confusion, the similarity of the marks, the relatedness of the services, and the overlap in channels of trade and classes of consumers led the Board to uphold the refusal.

Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611 (TTAB 2020) [precedential] (Opinion by Judge David K. Heasley). [TTABlogged here]. The Board dismissed this opposition to registration of SOCK IT UP for “socks,” rejecting opposer’s claim of likelihood of confusion with the registered mark SOCK IT TO ME for “socks and stockings” [SOCK disclaimed] due to the dissimilarity in the marks. Perhaps more importantly, the Board first denied opposer’s claim that Applicant Aiping Fan was not the owner of the mark at the time of filing of the opposed application. The opposer contended that the mark SOCK IT UP was used in the United States not by Applicant Fan, but by JY Instyle, and therefore JY Instyle owned the mark, not Fan. The Board, however, deemed the informal arrangements between Fan and JY Instyle (a company run by Fan’s son and daughter-in-law) to be sufficient to qualify JY Instyle as a related company under Section 5 of the Trademark Act, and therefore its use of the mark inured to Fan’s benefit. “Sufficient control by a licensor may exist despite the absence of any formal arrangements for policing the quality of the goods sold or services rendered under the mark by its licensee(s).” “This holds true especially where the licensor and licensee have a close working relationship, such as a familial relationship."

In re Stanley Brothers Social Enterprises, LLC, 2020 USPQ2d 10658 (TTAB 2020) [precedential] (Opinion by Judge Frances Wolfson). [TTABlogged here].  In a blow to the cannabis industry, the Board found that use of the mark CW for “Hemp oil extracts sold as an integral component of dietary and nutritional supplements” constitutes a per se violation of the Food, Drug & Cosmetics Act (“FDCA”), and so it affirmed the USPTO’s refusal to register under Sections 1, 2, and 45 of the Trademark Act. The evidence showed that applicant’s goods contain cannabidiol (CBD), an extract of the cannabis plant that is regulated under the FDCA as a drug. The FDCA prohibits “[t]he introduction or delivery for introduction into interstate commerce of any food to which has been added … a drug or biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public ….” 21 U.S.C. § 331(ll). The examining attorney maintained that Applicant’s “hemp oil extracts” are food to which CBD has been added, and that CBD was the subject of clinical investigations during prosecution of the involved application. The Board agreed, noting that under 21 U.S.C. § 321(ff) “a dietary supplement shall be deemed to be a food within the meaning of this chapter.” The exception in the 2014 Farm Bill that permitted the cultivation of “industrial hemp” under limited circumstances did not override the FDCA’s prohibition.

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Text Copyright John L. Welch 2020-2021.