The Top Ten TTAB Decisions of 2023 (Part II)

The TTABlogger has once again chosen the ten (10) TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year (2023). This is the second of two posts; the first five (5) selections are posted here. 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).

Adamson Systems Engineering, Inc. v. Peavey Electronics Corp., 2023 USPQ2d 1293 (TTAB 2023 [precedential] (Opinion by Judge David K. Heasley). [TTABlogged here]. The Board granted a petition for cancellation of a registration for the mark CS for "amplifiers," finding that Respondent Peavey had discontinued use of the CS mark with intent not to resume use. Peavey’s de minimis domestic sales of amplifiers under the CS mark between 2016 and 2021 were "insufficient to constitute bona fide use of that mark in the ordinary course of trade," and there was no evidence "showing any intention to resume use of the mark, much less evidence excusing Respondent’s extended period of nonuse." "[L]ooking at the evidence as a whole, as if each piece were part of a puzzle to be fitted together," the Board found that Peavey’s use of the CS mark was "sporadic, casual, and nominal" from 2016 through 2021, and "would not even meet the lower, pre-TLRA standard of use in commerce, much less the current higher standard of bona fide use made in the ordinary course of trade." Although there was bona fide use of the CS mark on amplifiers from 2012 through 2015, sales then plummeted, "dwindling to single digits and then zero at some points in the critical 2016-2021 time frame."

Software Freedom Law Center v. Software Freedom Conservancy, Cancellation No. 92066968 (TTAB November 8, 2023) [not precedential]. [TTABlogged here]. [NB: The TTABlogger represents the respondent in this proceeding.]. In what appears to be a case of first impression at the TTAB, the Board granted a motion for a protective order under FRCP 26(c)(1)(E), excluding Professor Eben Moglen (Columbia Law School), petitioner's executive director, from taking or attending the discovery depositions of two witnesses, due to past harassment. "Respondent's evidence indicates the likely harm to Mr. Kuhn and Ms. Sandler should Mr. Moglen be present at their depositions, let alone take their depositions. This would present significant prejudice to Respondent’s ability to defend the cancellation." Respondent submitted declarations from the two witnesses relating the incidents of harassment, and another from Mr. Kuhn’s therapist regarding the likely harm to Mr. Kuhn that would result from Moglen’s attendance and participation at the depositions. Petitioner asserted that Mr. Moglen should be allowed to take part in the depositions because he has "a good knowledge of the background and the record" and as an employee of petitioner, is "inexpensive." The Board found these assertions to be entitled to little weight, concluding that respondent had established "good cause" for barring Mr. Moglen from attending the depositions in order to prevent intimidation of the witnesses.

Instagram, LLC v. Instagoods Pty Ltd and Instagoods Pty Ltd v. Instagram, LLC, 2023 USPQ2d 1185 (TTAB 2023) [precedential]. [TTABlogged here]. The Board granted Instagram’s motion for leave to take the discovery depositions of two Australia-based officers of Instagoods by oral examination via videoconference. Instagoods refused to consent to the request, but the Board found that Instagram established “good cause” under Trademark Rule 2.120(c)(1). It noted that the witnesses are the only individuals with knowledge regarding issues pertinent to the pleaded claims. Moreover, oral depositions “are likely to aid in the furtherance of discovery in this proceeding, particularly where Instagram has had difficulty obtaining information regarding [former Instagoods employee] Ms. Willis’ role with Instagoods and her prior-filed applications through written discovery.” The fact that the depositions may be conducted without the need for translations and Instagram’s willingness to coordinate the depositions according to the schedules of the witnesses further supported a finding of good cause. The Board also found that videoconference was an appropriate method for taking the deposition since it “will promote flexibility and reduce costs to the parties, particularly where the parties may elect to break up the depositions into segments to accommodate the witnesses’ schedules.”

In re Black Card LLC, 2023 USPQ2d 1376 (TTAB 2023) [precedential] (Opinion by Judge Jonathan Hudis). [TTABlogged here]. In a somewhat rare reversal of a failure-to-function refusal, the Board found the USPTO’s evidence insufficient to establish that the phrase FOLLOW THE LEADER is incapable of serving as a source indicator for credit card incentive program, credit card financial, travel information, ticket reservation, travel advisory, salon and spa reservation, and concierge services. The Board observed that “[t]he record need not necessarily include evidence of third-party use in connection with the specific services at issue for the evidence to support the failure to function refusal.” However, the evidence must demonstrate that the proposed mark “would convey a generally understood sentiment or meaning to the consumers of [Black Card’s] services such that they would not perceive it as signifying the source of the services.” The Board found that the phrase FOLLOW THE LEADER, though in common use, may convey different meanings depending on context. Based on the record evidence, the Board was unable to “reasonably infer” that FOLLOW THE LEADER “has a commonly understood meaning applicable to Applicant’s services" that would prevent the phrase from identifying the applicant as the source of the services. that would render it incapable of being perceived as a source indicator for those services.”

In re Duracell U.S. Operations, Inc., 2023 USPQ2d 861 (TTAB 2023) [precedential] (Opinion by Judge Michael B. Adlin). [TTABlogged here]. Overturning a refusal to register Duracell’s sound mark consisting of three musical notes for batteries, the Board rejected the Office’s position that the specimens of use (.mp3 files, example here) constituted mere advertising material. The Board ruled that transmission of the sound mark in retail locations where the goods are sold is “equivalent to” a display associated with the goods. Section 45 of the Trademark Act provides that, for goods, a mark is in use in commerce if “it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto” and “the goods are sold or transported in commerce.” Duracell's specimens of use were accompanied by a declaration stating that the sound mark was included as part of “audio messaging” played in stores where Duracell’s batteries are sold. The three-note sound, referred to as the “slamtone,” typically appears near the end of each advertisement and is broadcast “as an inducement to purchasers to buy DURACELL batteries while shopping in the store.” The Board agreed with Duracell that the audio messaging is analogous to a traditional “shelf talker,” since the messages featuring Duracell’s sound mark have been played “in tens of thousands of stores where Applicant’s batteries are sold, often multiple times per hour, and in total the ads in question, and the slamtone, aired more than 100 million times.”

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Text Copyright John L. Welch 2023-2024.