Friday, March 19, 2021

TTAB Affirms Bifusal of Design Mark for Training Services: Faulty Specimens and Likelihood of Confusion with "KF" Mark

Brian Aquart fell victim to a USPTO bifusal and the TTAB did not come to his rescue. The Board affirmed two refusals to register the gray-and-orange design mark shown below, for "teaching and training in business, industry and information technology," deeming the specimens of use to be inadequate and finding a likelihood of confusion with the standard character mark KF for "educational services, namely, conducting classes, workshops, and conferences in the field of human resources and distributing course materials in connection therewith; executive coaching." In re Brian Aquart, Serial No. 88245504 (March 17, 2021) [not precedential] (Opinion by Judge Cynthia Lynch).

Faulty Specimens: Aquart's original specimens of use consisted of "stationery" (letterhead, envelopes, and business cards) displaying the grey-and-orange mark. Unfortunately the specimens made no reference to his services, and so Examining Attorney Luke Cash Browning rejected them. As the Board observed, "The specimen must show a direct association between the mark and the services." Aquart submitted a substitute specimen (shown below), but that was in black-and-white, not in the claimed colors, and so it too was rejected.

"Given the absence of an acceptable specimen showing use of Applicant’s mark in connection with the applied-for services, we affirm the refusal to register under Sections 1 and 45 of the Trademark Act."

Likelihood of Confusion: For completeness, the Board considered the Section 2(d) refusal. It found that Aquart's broadly worded recitation of services encompassed the more narrow executive coaching services of the registrant. The evidence also showed that the registrant’s human resources classes and workshops are a type of training in business and industry. The Board presumed that these overlapping services travel through at least some of the same channels of trade to the same classes of purchasers.

Turning to the marks, the Board noted that the cited mark KF is registered in standard character form, and could appear in any font style or color, including the same colors as in applicant’s mark. Moreover, the Board found that the circle around applicant's mark is a mere background design for the letters.

Aquart argued that the letters in his mark are "barely recognizable as lettering" [I agree - ed.], but the Board seized on his own statement describing his mark as a “circular design in orange and grey formed by a stylized letter ‘K’ and letter ‘F.’” [Isn't consumer perception what counts? not what an applicant says in a statement buried in the prosecution history that consumers never see? - ed.].

The Board also noted that the letters K and F appear with the words "Kingswood Forest" on Aquart's specimens of use, a fact that may be taken into account in interpreting Aquart's mark. [But he's not trying to register "Kingswood Forest & Design." Just the design. - ed.].

As to the marks’ connotations and commercial impressions, the Board found them to be similar. "Consumers would attribute the same meaning to, and derive the same impression from, the shared lettering KF in Applicant’s marks as they would in the cited mark."

And so the Board affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlogger comment: Is the "F" in Aquart's mark all in orange? or is it part orange and part gray? If I looked at the design by itself (not with KF already in mind), I might think it was "CFD" in orange with an abstract gray character representing something leaning on its own tail.

Text Copyright John L. Welch 2021.


At 8:41 AM, Blogger Gene Bolmarcich, Esq. said...

I've lost three cases just like this in the last five years. I'm waiting for one in which the applicant does NOT shoot herself in the foot by describing the mark in a way that dooms it from the start. If there was no description of this wherein the letters K and F were used, would it be fraud to "hide" evidence of what it is intended (intent not being relevant of course) to represent? Can an examining attorney nonetheless look at the applicant's website to make this determination (note that the two cases the Board referred to only refer to "evidence", and the first one refers to "evidence in the record"...does that include material that is not in the record?)

At 12:44 PM, Blogger Miriam Richter, Esq. said...

Looking at for more than a minute, I still have difficulty seeing the letters! I also had the thought that if it was described as an abstract design it would have gone thru. It seems to me the same situation where people can make the word TOYOTA out of its logo! Does anyone know if that was intended by Toyota?

At 4:21 PM, Blogger Gene Bolmarcich, Esq. said...

It is so maddening that the Board consistently shoots down arguments about the meaning of a cited registered mark in a 2(d) case based on extrinsic evidence (see e.g. In re MIQ Digital Limited Serial No. 88257267 Dec.16, 2020 where the Board would not accept applicant's argument that registrant's mark 'MiQ' meant "Made in Queens") with this case where the Board USED extrinsic evidence to prove that applicant's mark would be perceived a "meaning" KF (forget that it was described that way...the description has ABSOLUTELY NO BEARING on how the mark is actually perceived by consumers or on how the Board should consider its impact on consumers)...just like they don't see disclaimers, they don't see the description in an application or registration.


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