Recommended Reading: The Trademark Reporter, May-June 2024 Issue

The May-June 2024 (Vol. 114 No. 3) issue of the Trademark Reporter has arrivede. [pdf here]. Willard Knox, Editor-in-Chief, summarizes the contents as follows (and below): "This issue offers readers an article on how the constitutional-avoidance doctrine allows courts to accommodate free speech concerns when applying the Rogers v. Grimaldi test in the wake of the U.S. Supreme Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, an article on how surveys can help brand owners facing “failure to function” refusals to register their trademarks, and a book review on the intersection of intellectual property and sustainability."

Constitutional Avoidance and Standards of Proof in Trademark Infringement Litigation: A Comment on Post–Jack Daniel’s Applications of the Rogers Test for Liability, by Theodore H. Davis Jr. - With the U.S. Supreme Court’s 2023 decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC leaving open the question of whether the Rogers v. Grimaldi test should apply in cases involving an artistic or expressive work where a defendant’s allegedly infringing use of a plaintiff’s trademark is not as a designation of source for defendant’s own goods and services, the author of this article argues that the constitutional-avoidance doctrine allows courts to accommodate free speech considerations when determining whether defendant’s use explicitly misleads consumers as to the source or content of such artistic or expressive work.

Survey Methodologies to Overcome “Failure to Function” Refusals in the U.S. Patent and Trademark Office, by R. Charles Henn Jr. - Brand owners sometimes face United States Patent and Trademark Office “failure to function” refusals to register their trademarks. The author of this article offers brand owners practical advice on how to design surveys that can provide empirical evidence showing whether an applied-for term functions as a mark.

Book Review: Intellectual Property and Sustainable Markets by Ole-Andreas Rognstad and Inger B. Orstavik, eds. Reviewed by Gabriele R. Fougner.

Read comments and post your comment here.

TTABlog comment: This issue of the TMR is Copyright © 2024, the International Trademark Association, and is made available with the permission of the Trademark Reporter®.

Introductory Text Copyright John L. Welch 2024.

TTABlog Test: Is HOLLYWOOD COFFEE CO. for Retail Store Services Confusable with HOLLYWOOD CAFÉ for Restaurant Services?

The USPTO refused to register the mark HOLLYWOOD COFFEE CO. for "Retail store services featuring packaged coffee and packaged foods" [COFFEE CO. disclaimed], finding confusion likely with the registered mark HOLLYWOOD CAFÉ, in standard character form, for "Mobile restaurant services; restaurant and café services; restaurant services featuring coffee, coffee products, other hot and cold beverages, desserts, pastries and snacks" [CAFÉ disclaimed]. There must be a lot of "Hollywood" marks, right? How do you think this came out? In re USA Innovations, Inc., Serial No. 97441814 (June 25, 2024) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

Applicant included in its brief, a list of third-party registrations for HOLLYWOOD-formative marks, but they were not previously made of record. Examining Attorney Bridgett Smith objected and the Board sustained the objection. "Only evidence filed during examination is timely, Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), and it should not be submitted on appeal."

The Board, not surprisingly, found HOLLYWOOD to be the dominant element of the involved marks. "While there are some specific differences between HOLLYWOOD CAFÉ and HOLLYWOOD COFFEE CO., when the marks are viewed in their entireties, they are similar in appearance, sound and connotation, and they convey similar commercial impressions, due to the common presence of the identical arbitrary term HOLLYWOOD." [I think they look and sound different and have different connotations - ed.]

As to the services, the Examining Attorney submitted the third-party website printouts from Black Acres Roastery, Zeke’s Coffee, Starbucks and Dunkin’, "all of which offer under their own names restaurant services featuring coffee like those identified in the cited registration, and packaged coffee through a retail component like the retail store services identified in the application." She also submitted seven third-party, use-based registrations "covering the types of restaurant and café services identified in the cited registration as well as retail store services featuring packaged coffee of the type identified in the application."

This same evidence sufficed to establish the overlap in channels of trade and classes of consumers.

And so, the Board affirmed the refusal to register

Read comments and post your comment here.

TTABlogger comment: What do you think? Is it worth seeking review by way of civil action, where the applicant could submit additional evidence?

Text Copyright John L. Welch 2024.

TTAB Summarily Dismisses Monster Energy's Opposition to PREDATOR & Design: No Lack of Bona Fide Intent and No Abandonment

Frequent TTAB litigant Monster Energy lost another one at the TTAB, this time on summary judgment. It sought cancellation of a registration for the mark PREDATOR & Design, issued in 2017, for soft drinks and energy drinks made with natural ingredients, claiming lack of bona fide intent and abandonment. The registration was blocking Monster's application to register PREDATOR for energy drinks, soft drinks, and sports drinks. The Board granted respondent's summary judgment motion, finding no genuine disputes of material fact. Monster Energy Company v. Golden Global Innovations Besloten Vennootschap and Golden Global Group BV, Cancellation No. 92078934 (June 20, 2024) [not precedential].

The application underlying the challenged registration was filed as a Madrid Protocol request for extension of protection under Section 66(a). That provision includes a requirement that an applicant declare that it has a bona fide intent to use the mark in commerce. "To prove intent to begin use, Respondent must produce evidence showing that, under its particular circumstances, its activities are those that a reasonable business with a bona fide intent to use the mark in United States [('U.S.')] commerce would have undertaken." The three-year statutory abandonment period began no earlier than May 2, 2017, the issue date of the registration (the “Abandonment Period”).

Respondent submitted declarations, testimony, and exhibits, while Monster submitted no contradictory evidence. Instead, Monster argued that none of respondent's activities demonstrated use in commerce during the Abandonment Period because they were “token” uses and/or were internal rather than “open” uses of the mark. Monster contended that these activities did not demonstrate an intent to resume or commence use because the activities were “sporadic” and “half-hearted,” and not the activities of a reasonable business.

The Board, however, found that "Respondent’s activities are the type that would be undertaken by a reasonable business under Respondent’s particular circumstances with a bona fide intent to use the mark in U.S. commerce in association with beverage goods both as of the application filing date and during the Abandonment Period."

As a relatively small operation consisting of only the two Co-Founders based in the Netherlands, prior to the application filing date Respondent created globally accessible social media pages and began producing its goods using a production facility that was registered with the U.S. FDA. Following the application filing date and continuing through and after the registration date, Respondent, inter alia, sponsored U.S.-based athletes, engaged in various negotiations with U.S. distributors, suppliers, retailers, and marketing/business strategists, pitched its goods and provided many samples at various exhibitions, conferences, and festivals, actively pursued the proper labeling, registration, and licensing to sell its goods in the U.S., created a U.S. entity, and, ultimately, entered into contracts for U.S. marketing strategies, U.S. distribution, and sale of its goods bearing the mark in U.S. retailers. Furthermore, the activities following the Abandonment period in which Respondent began selling its goods through U.S. distributors and retailers support the declarations, testimony, and evidence regarding Respondent’s intent to commence use during the Abandonment Period.

The Board therefore concluded that Respondent "[c]arried its burden of proving that there are no genuine disputes of material fact that it had a bona fide intent to use its mark in U.S. commerce as of the application filing date and an intent to commence use in U.S. commerce during the three-year statutory period of nonuse." And so, it denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: The Board did not reach the issue of whether respondent's activities during the Abandonment Period constituted actual use in commerce; it was enough to show that there was no intent not to commence use.

Text Copyright John L. Welch 2024.

Five Amicus Briefs in Support of Chestek PLLC Petition for Writ of Certiorari

Five amicus briefs have been submitted in support of the petition for writ of certiorari filed by Chestek PLLC [TTABlogged here], seeking Supreme Court review of the CAFC's decision [TTABlogged here] upholding the TTAB's affirmance [TTABlogged here] of a refusal to register the mark CHESTEK LEGAL for "legal services," based on Applicant Chestek PLLC's failure to provide its "domicile address." Chestek PLLC v. Vidal, No. 223-1217 (filed May 13, 2024). Pdfs of the amicus briefs may be found at the links below.

Readers will recall that the rule in question, requiring an applicant to state its domicile address, was adopted in 2019 so that the USPTO could require applicants outside the United States to retain an attorney inside the U.S. in order to reduce the number of fraudulent applications emanating from abroad. The issue here is whether this domicile address rule is merely procedural, or whether it is substantive and therefore required a notice-and-comment period before adoption by the USPTO.

• Cato Institute and Ethics and Public Policy Center: here.

• Bar Association for the District of Columbia: here.

• International Game Developers Association and Codemiko Project, LLC: here

• IEEE-USA: here.

• New Civil Liberties Alliance: here

Read comments and post your comment here.

TTABlogger comment: This domicile address requirement is referred to by some as the "where do you sleep at night?" rule.

Text Copyright John L. Welch 2024.

Recommended Reading: Fromer and McKenna, "Amazon's Quiet Overhaul of the Trademark System"

Despite all the hoopla about the Supreme Court's rulings in Tam, Brunetti, and Elster, how much do those rulings affect the everyday practice of trademark law? One could argue that Amazon and its Brand Registry have had much more of an impact.As Professors Fromer and McKenna argue: " In combination, Amazon’s business model and Brand Registry have overhauled the American trademark system, and they have done so with very little public recognition of the consequences of Amazon’s business approach." Fromer, Jeanne C. and McKenna, Mark P., "Amazon's Quiet Overhaul of the Trademark System" (June 19, 2024), California Law Review, Volume 113, forthcoming 2025. Available here

Abstract

Amazon's dominance as a platform is widely documented. But one aspect of that dominance has not received sufficient attention-the Amazon Brand Registry's sweeping influence on firm behavior, particularly in relation to the formal trademark system. Amazon's Brand Registry serves as a shadow trademark system that dramatically affects businesses' incentives to seek legal registration of their marks. The result has been a dramatic increase in the number of applications to register, which has swamped the U.S. Patent and Trademark Office and created delays for all applicants, even those that previously would have registered their marks. And the increased value of federal registration has drawn in bad actors who fraudulently register marks that are in use by others on the Amazon platform and use those registrations to extort the true owners.

Amazon's policies also create incentives for businesses to adopt different kinds of marks. Specifically, businesses are more likely to claim descriptive or generic terms, advantageously in stylized form or with accompanying images, and to game the scope limitations that would ordinarily attend registration of those marks. And the same Amazon policies have given rise to the phenomenon of "nonsense marks"-strings of letters and numbers that are not recognizable as words or symbols. In the midst of these systemic changes, Amazon has consolidated its own branding practices, focusing on a few core brands and expanding its use of those marks across a wide range of products. In combination, Amazon's business model and Brand Registry have overhauled the American trademark system, and they have done so with very little public recognition of the consequences of Amazon's business approach.

Amazon's impact raises profound questions for trademark law, and for law more generally. There have been powerful players before, and other situations in which private dispute resolution procedures have affected parties' behavior. But Amazon's effect on the legal system is unprecedented in scale and scope. What does (and should) it mean that one private party can so significantly affect a legal system? Do we want the trademark system to have to continually adapt to Amazon's rules? If not, how can the law disable Amazon from having such a profound impact? In this regard, we explore the ways in which Amazon's practices might both help and hurt competition, be harmful to the trademark system, and reshape how we think about trademark law at its foundation.

Read comments and post your comment here.

Introductory text Copyright John L. Welch 2024.

On Remand, TTAB Again Dismisses I-FIT FLEX Opposition Due to Difference in Goods and Services

On May 3, 2024, the CAFC remanded to the Board its decision in iFit's opposition to registration the mark I-FIT FLEX for safety eyewear. iFit claimed likely confusion with its registered mark IFIT for exercise equipment and related services. The Board originally dismissed the opposition, finding that the first DuPont factor favored iFit, but deeming the second factor dispositive: "Opposer has failed to show that the parties’ goods and services are related, or that they travel in the same channels of trade to the same classes of consumers." The Board has again dismissed the opposition. Icon Health & Fitness, Inc. v ERB Industries, Inc., Opposition No. 91264855 (June 13, 2024) [not precedential] (Opinion by Judge Michael B. Adlin).

After Applicant ERB failed to appear in the appeal, the CAFC invited the USPTO Director to intervene. The Director did so and then filed a motion for remand. [TTABlogged here]:

The TTAB's decision does not provide complete factual findings as to whether the personal training services in Appellant's registrations and the goods in ERB's application are related under the second DuPont factor. Further, the TTAB did not have the benefit of this Court's recent decision in Naterra [TTABlogged here], which held that the TTAB erred in not weighing the similarity of the marks heavily in favor of a likelihood of confusion when it found the marks were "more similar than dissimilar."

On remand, the Board quickly took care of the "weigh heavily" issue: "Here, because we found the parties’ marks “highly similar,” we now clarify pursuant to Naterra that the similarities between IFIT and I FIT FLEX weigh heavily in favor of finding a likelihood of confusion."

As to the goods and services, the Board found "no persuasive evidence in the record that sources of fitness training services or exercise equipment also offer safety glasses, much less that consumers would perceive safety glasses, which they purchased separately from exercise equipment or fitness training services, as emanating from the same source."

The Board again concluded that the dissimilarity of the goods and services and their channels of trade and classes of consumers was dispositive. "despite: (1) the marks being highly similar, which weighs heavily against finding a likelihood of confusion; and (2) Opposer’s IFIT mark being commercially strong.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2024.

TTABlog Test: Three More Section 2(d) Refusals For Your Review

And the hits keep coming on Radio TTAB. Here are three recent Board decisions in Section 2(d) appeals. How do you think they came out? [Answers in first comment.]

In re Sellersfunding Corp., Serial No. 97231564 (June 17, 2024) [not precedential] (Opinion by Judge Peter W. Cataldo) [Section 2(d) refusal of the mark COMMERCEPAY for "Providing working capital financing to small businesses and small business owners; Accounts receivables financing; financing services" in view of the registered mark COMMERCEPAYMENTS for, inter alia, "banking services" and various financial services.]

In re Soil Basics Corporation, Serial No. 97183502 (June 18, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande) [Section 2(d) refusal to register SBC SOBEC CLUTCH for "Fertilizers for use in the field of commercial agriculture" in view of the registered mark CLUTCH for "Insecticides for use in agriculture."]

In re FWREF II Rochester, LLC, Serial No. 97343258 (June 18, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin) [Section 2(d) refusal of ROYAL PARK HOTEL for, inter alia, provision of facilities for conventions, special event planning services, recreational planning services, entertainment services, namely, wine tasting. and restaurant services [HOTEL disclaimed]. in view of the registered mark PARK ROYAL HOTELS & RESORTS & design (shown below) for "Travel club services; travel agency services, namely, arranging and booking air, ground and sea transportation, arranging and booking cruises; arranging of transportation for travel tours" and for "Restaurant services; Providing online reservations and bookings for temporary lodging and accommodations; Travel agency services, namely, making reservations and booking for temporary lodging"[HOTELS & RESORTS disclaimed].]

Read comments and post your comment here.

TTABlog comment: Predictions? See any WYHA?s? PS: the CLUTCH opinion is worth reading for its down-to-earth discussion of the DuPont factors.

Text Copyright John L. Welch 2024.

"ECOPRENEUR" Merely Descriptive of Environmental Awareness Software and Services, Says TTAB

The Board wasted little Time in upholding the USPTO's Section 2(e)(1) mere descriptiveness refusal of the proposed mark ECOPRENEUR for software and services relating to environmental awareness, including educational and research services. Applicant Time USA, Inc. feebly argued that the word "ecopreneur" does not appear in the Merriam-Webster dictionary, that it is merely suggestive because "understanding of the goods and services in connection with the Mark is not instantaneous,” but requires “several mental steps, and that the term is incongruous because it refers to a type of person, not to goods or services. In re Time USA, LLC, Serial No. 90493176 (June 17, 2024) [not precedential] (Opinion by Judge Michael B. Adlin).

Examining Attorney Salvatore Angotti submitted several dictionary definitions of "ecopreneur" (e.g., "an entrepreneur focused on creating and selling environmentally friendly products and services). Another reference stated "Ecopreneurs are entrepreneurs who have spotted opportunities in the environment to start businesses which supports sustainability." Various magazine article used the term in the same vein.

Based on this evidence, the Examining Attorney maintained that “ecopreneur” describes “the characteristics and intended audience of” Applicant’s goods and services," and specifically "people who are currently providing environmentally friendly businesses," "goods and services which can help providing environmentally friendly businesses," "goods and services which can help a person to become" an ecopreneur , and “people, businesses, and new business models" focused on environmental concerns. 

The Board had no doubt that ECOPRENEUR is merely descriptive "because it "immediately conveys knowledge of a quality, feature, function, or characteristic' of one or more of Applicant’s identified goods and services in each Class.: The Board observed that terms that describe the intended user or purchaser of a product or service are often found to be merely descriptive (e.g., SYSTEMS USER merely descriptive of a trade journal for systems users). Therefore, the Board found nothing incongruous about Applicant’s proposed mark.  

Furthermore, Applicant’s argument that the proposed mark is a “general term” and “so broad” that consumers would not know what the goods and services are misapprehends the applicable test. “The question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” 

And so, the Board affirmed the refusal. 

Read comments and post your comment here.

TTABlogger comment: WYHA? PS: Mere descriptiveness as a "guessing game" is one of my top ten losing TTAB arguments.

Text Copyright John L. Welch 2024.

TTABlog Test: Three Recent Section 2(d) Appeals For Your Consideration

The rate of affirmance for Section 2(d) refusals is running at about 93% so far this year, a tad higher than usual. Here are three recent TTAB decisions. How do you think they came out? [Answers in first comment.]

In re Alex Avila, Serial No. 97253987 (June 11, 2024) [not precedential] (Opinion by Judge Michael B. Adlin) [Section 2(d) refusal of the mark LOVE UNIVERSITY for “educational services, namely, conducting seminars, lectures, teleseminars, teleclasses, and workshops in personal awareness; entertainment services, namely, providing video podcasts in the field of psychology/spirituality/self help" [UNIVERSITY disclaimed], in view of the registered mark LUV YOUNIVERSITY for "education services, namely, providing mentoring, tutoring, classes, seminars and workshops in the field of self improvement, relationships, health and wellness, business; entertainment services, namely, providing podcasts in the field of self improvement, relationships, health and wellness, business; entertainment services, namely, providing video podcasts in the field of self improvement, relationships, health and wellness, business; publishing of books, e books, audio books, music and illustrations."]

In re Freeway Music, LLC, Serial No. 97421483 (June 12, 2024) [not precedential] (Opinion by Judge Christen M. English) [Section 2(d) refusal to register FREEWAY MUSIC for “Instruction in the nature of music lessons" [MUSIC disclaimed] in view of the registered mark FREEWAY for "audio and video recordings featuring musical entertainment."]

In re Red Toro Clothing Inc., Serial No. 97192675 (June 13, 2024) [not precedential] (Opinion by Judge Mark Lebow) [Section 2(d) refusal of RED TORO for "hats; headwear; pants; shirts; shorts; sweatshirts; bottoms as clothing; jackets; tank tops; tops as clothing; hooded sweatshirts" in view of the registered marks RED BULL and TORO ROSSO for overlapping clothing items.]

Read comments and post your comment here.

TTABlog comment: Predictions? See any WYHA?s

Text Copyright John L. Welch 2024.

Fourth Circuit Rules that Bacardi May Challenge USPTO's Renewal of HAVANA CLUB Registration via Civil Action Under the APA

In another chapter of the long-running battle over the HAVANA CLUB trademark for rum, the U.S. Court of Appeals for the Fourth Circuit has ruled that Bacardi's challenge to the USPTO's renewal of the registration for that mark may be heard in the federal courts. The EDVA district court had dismissed the case, reasoning that the Trademark Act precludes such an action, but the court of appeals held that the Administrative Procedure Act (APA) permits judicial review. Bacardi & Co. v. Vidal, Appeal No. 22-1659 (4th Cir. June 13, 2024) [published].

In 2006, Cubaexport was barred from paying the renewal fee for the HAVANA CLUB registration due to a trade embargo. It then sought a "special license" to overcome that problem while it petitioned for a reversal of the USPTO's denial of renewal. In 2016, while the petition remained pending, Cubaexport obtained the required special license, and it then paid the renewal fee. Its application for renewal was then accepted.

Bacardi, taking the position that the registration had expired by operation of law in 2006, brought suit in the EDVA under the APA, 5 U.S.C. Section 702(a), to set aside the allegedly illegal action of the USPTO. The district court dismissed for lack of subject matter jurisdiction, believing that the Trademark Act precluded judicial review under the APA. The district court relied on the provision of Section 1071(b)(2) of the Act that shields the Director of the USPTO from being named a party to an inter partes proceeding.

The Fourth Circuit, however, concluded that Section 1071 neither expressly nor impliedly precludes judicial review of registration renewal decisions under the APA.

Although the Lanham Act’s scheme for resolving competing claims over the registration of a trademark may be so comprehensive as to preclude APA review of decisions to initially register a mark or cancel it, that is not the type of claim Bacardi has brought here. And any preclusive reach of the cancellation provisions does not extend so far as to foreclose judicial review of allegedly unlawful agency action during the statutorily distinct registration renewal process.

The APA states that "[a]gency action made reviewable by statute and final agency action for which there is no other adequate remedy in a court are subject to judicial review." Section 704. The appellate court pointed out that the TTAB has explicitly ruled that an allegedly unlawful renewal cannot be challenged in a petition for cancellation under Section 14. See Bonehead Brands, LLC v. Direct Impulse Design, Inc., No. 9206833, 2019 WL 646461, at *4 (T.T.A.B. Feb. 13, 2019). Thus, cancellation proceedings are not an "adequate remedy" for the USPTO's allegedly illegal review. 

In sum, the Lanham Act does not, in express or implied terms, preclude judicial review of the PTO’s compliance with statutes and regulations governing trademark registration renewal. Nor does the Lanham Act provide an adequate remedy in court for PTO renewal orders that allegedly disregard statutory and regulatory limits. The presumption favoring judicial review of administrative action remains unrebutted, thus Bacardi may seek review of the PTO’s action under the APA.

And so, the Fourth Circuit reversed and remanded.

Read comments and post your comment here.

TTABlogger comment: Bacardi's 2004 lawsuit against Cubaexport, challenging the TTAB's denial of Bacardi's petition for cancellation of the HAVANA CLUB registration based on other grounds, remains pending in the U.S. District Court for the District of Columbia. The history of this dispute is explained in Expropriation of Intellectual Property Rights: The HAVANA CLUB Trademark, Pablo Balañá-Vicente, The Trademark Reporter, May-June 2021 (Vol. 11 No. 3). [pdf here].

Text Copyright John L. Welch 2024.

Supreme Court Upholds Constitutionality of the Trademark Act’s “Names Clause” in Affirming Refusal to Register TRUMP TOO SMALL.

Here is a Trademark Alert published by Wolf Greenfield regarding the Supreme Court's decision in Vidal v. Elster (the TRUMP TOO SMALL case).

Yesterday, in Vidal v. Elster, the Supreme Court rejected a challenge to the constitutionality of Section 2(c) of the Trademark Act, which prohibits registration of a mark that "[c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his [sic] written consent.” . . . ." Steve Elster’s application to register the mark TRUMP TOO SMALL for “shirts,” was rejected by the USPTO under Section 2(c). The Trademark Trial and Appeal Board affirmed that refusal, but the U.S. Court of Appeal for the Federal Circuit reversed, ruling that, as applied to a public figure like Mr. Trump, Section 2(c) violated the freedom of speech clause of the First Amendment.

Over the past seven years, the Supreme Court has held two provisions of the Trademark Act to be unconstitutional abridgements of the freedom of speech. In Matal v. Tam, involving the mark THE SLANTS for a music group, the Court struck down the "disparagement" provision of Section 2(a) and in Iancu v. Brunetti, which concerned the mark FUCT for various clothing items, it axed that Section’s "immoral or scandalous" provision. But in those two cases, the Court was dealing with the issue of “viewpoint discrimination” because those provisions blocked registration of marks expressing acceptable viewpoints but not unacceptable ones.

In Vidal v. Elster, however, the Court faced a statutory provision, referred to in the Court’s opinion as the “names clause,” that did not discriminate based on viewpoint but rather is directed to the content of the mark. The names clause “turns on the content of the proposed mark: whether it is a person’s name.” “No matter the message a registrant wants to convey, the names clause prohibits marks that use another person’s name without consent.”

Viewpoint-discriminatory provisions are subject to heightened First Amendment scrutiny but the Court concluded that, in view of the “uniquely content-based nature of trademark regulation and the longstanding coexistence of trademark regulation with the First Amendment,” heightened scrutiny does not apply to a content-based provision like Section 2(c).

The Court then considered the history of the “names clause,” observing that the clause has “deep roots:” “Our courts have long recognized that trademarks containing names may be restricted. And these name restrictions served established principles.” The consistent rationale for the “names clause” is the concept that one has a right to his or her own name. This clause “reflects this common law tradition by prohibiting a person from obtaining a trademark of another living person’s name without consent, thereby protecting the other’s reputation and goodwill.

In light of this history and tradition, the Court concluded that the names clause of Section 2(c) is compatible with the First Amendment. The Court described its ruling as “narrow,” declining to set out a “comprehensive framework” for assessing the constitutionality of viewpoint-neutral trademark restrictions.

Notably, although Applicant Elster’s attempt to register TRUMP TOO SMALL has reached a dead end, nothing in these rulings prohibits Elster from continuing to use the phrase to market his shirts. Only a court has that power. It would seem, however, that Elster’s First Amendment right to comment on, criticize, or mock a public figure like Mr. Trump might well immunize him from such a court ruling.

Although the Vidal v. Elster decision failed to poke another hole in the Trademark Act, it is likely not the end of challenges to the constitutionality of the Act’s provisions. There are rumblings in the trademark community regarding whether the dilution-by-tarnishment provision of Section 43(c) is viewpoint discriminatory and thus vulnerable to a First Amendment attack.

Read comments and post your comment here.

Text Copyright Wolf Greenfield 2024.

J. Michael Keyes:: "Just Do It" Doesn't Fly When Submitting Survey Evidence to the TTAB"

Nike, Inc. was recently victorious in an opposition to registration of the mark DON’T JUST DO IT, GET IT DONE for various clothing items. The Board found likelihood of confusion with and likelihood of dilution of the famous JUST DO IT mark for overlapping clothing items. [TTABlogged here]. Nike submitted the results of a fame survey, but the Board refused to consider that evidence. Mike Keyes, a consumer survey expert and IP litigator at Dorsey & Whitney LLP, provides his comments below.

"Just Do It" Doesn't Fly When Submitting Survey Evidence to the TTAB

Nike recently opposed the trademark application "Just Don't Do It, Get It Done" for various apparel products alleging that it would infringe and dilute Nike's "Just Do It" trademark. Nike, Inc. v. Lorenzo, 2024 TTAB LEXIS 201 (Trademark Trial & App. Bd, May 21, 2024). Nike submitted a massive amount of evidence to support its claims. The TTAB held that Nike ran away with this one. Just about all of the DuPont confusion factors and the dilution factors favored Nike. It clearly lived up to its Greek Goddess origins ("Nike" is the Greek Goddess of victory, as you may recall).

Although Nike's evidence may have been the size of a mini Mt. Olympus, the TTAB refused to consider a consumer survey Nike proffered. Why?

Because when a party submits survey evidence to the TTAB, it needs to establish that the survey was conducted according to generally accepted scientific principles.

Here, Nike simply submitted the results of an "historic events survey" from 1999. No testimony established important first-hand details such as: (1) the identity of the individual who conducted the research and his or her professional bona fides; (2) what sampling procedure was used; (3) how the data was collected; or (4) a myriad of other principles that are hallmarks of valid and reliable survey research.

Although the submission appeared to include a page of "data results" and a copy of the survey questionnaire, those are not proxies for a fulsome, detailed explanation of how the survey was conducted in the first instance.

The Takeaway. As the TTAB reminds us, survey research "is not a freestanding piece of evidence, but instead is offered as the basis for expert opinion testimony." Nike, 2024 TTAB LEXIS 201, *14. If you are going to do it, just do it with a proper witness who can testify with first-hand knowledge as to how the study was conducted and the significance of the data set. Only then will the survey gods be pleased with your offering.

Read comments and post your comment here.

TTABlogger comment: You may subscribe to Mike Keyes newsletter, "Lanham Act Surveys for Lawyers" here).

Text Copyright John L. Welch and Michael Keyes 2024.

TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

So far this year, the Board has affirmed about 90% of the Section 2(e)(1) mere descriptiveness refusals reviewed on appeal. Here are three more. How do you think they came out? [Results in first comment].

In re Skechers U.S.A., Inc. II, Serial No. 90701471 (June 10, 2024) [not precedential] (Opinion by Judge Peter W. Cataldo). [Mere descriptiveness refusal of WORKOUT WALKER for footwear and a host of apparel items. Applicant argued that the mark is incongruous because walking is not perceived as exercise.]

In re The Vita Coco Company, Inc., Serial No. 97081204 (June 7, 2024) [not precedential] (Opinion by Judge Christen M. English) [Refusal to register THE HANGOVER SHOP for “On-line retail store services featuring drinks, beverages, snack foods, prepared meals, and headache treatment preparations" (SHOP disclaimed). Applicant argued  that the Examining Attorney conducted a “multistep reasoning process to conclude that the term ‘hangover’ in Applicant’s mark actually means ‘hangover relief,” pointing to the evidence showing that “the vast majority of the actual terms being used are ‘hangover relief,’ ‘hangover cure,’ and ‘hangover remedy’ – and not ‘hangover’ alone.]

In re Ralph Birchard Lloyd, Serial No. 97464017 (May 31, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington) [Mere descriptiveness refusal of the proposed mark DISINFECTION AS A SERVICE for "Providing automated disinfection and sanitization services for medical devices, rooms, plumbing fixtures, and laundry, such services using chemical disinfectants, UV radiation, air filtration, and combinations." Applicant argued that "the mark cannot describe the function or purpose of Applicant’s services with any degree of precision, because the terms DISINFECTION and SERVICE are capable of several different possible meanings, such that the meaning of the mark cannot immediately be ascertained."]

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TTABlog comment: How did you do? See any WYHA?s

Text Copyright John L. Welch 2024.

Precedential No. 12: TTAB Rejects Sovereign Immunity Claim in Opposition to Virginia College System Marks

In this opposition to registration of the mark MOUNTAIN GATEWAY COMMUNITY COLLEGE for educational services and various clothing items, Applicant Virginia Community College Systems moved for summary judgment, asserting that the Board lacked subject matter jurisdiction due to state sovereign immunity. The Board denied the motion, ruling that sovereign immunity does not apply to opposition proceedings. Mountain Gateway Order, Inc. v. Virginia Community College System, Opposition Nos. 91283412 (parent) and 91283416 (June 6, 2024) [precedential].

Opposer did not dispute that applicant is a state agency, and so the question was "whether Applicant enjoys sovereign immunity."

State sovereign immunity sometimes applies "when 'a private party [] haul[s] a State in front of an administrative tribunal' within a federal agency in an adversarial proceeding bearing strong similarities to civil litigation." Fed. Maritime Comm’n v. S.C. State Ports Auth., 535 U.S. 743, 760 n.11, 63 USPQ2d 1321 (2002)

However, States may not assert sovereign immunity where a federal agency exercises its superior sovereignty in agency enforcement actions instituted upon information supplied by a private party to ensure State compliance with federal law, even if some aspects of civil litigation procedure are applied. Regents of Univ. of Minn. v. LSI Corp., 926 F.3d 1327, 2019 USPQ2d 219331 (Fed. Cir. 2019).

The Board observed that states that apply for trademark registration "are subject to the same registration provisions of the Trademark Act as any other applicant, including that a State’s application is subject to opposition proceedings." 

It noted that state sovereign immunity does not apply to Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). Regents of Univ. of Minn. v. LSI Corp., 926 F.3d 1327, 2019 USPQ2d 219331 at *1-(Fed. Cir. 2019).

While opposition proceedings may have some procedural attributes different from IPR proceedings, their salutary purpose is comparable. Oppositions protect the public interest in the integrity of the federal trademark register by providing a means to consider and decide the right to registration, a matter of public interest. Traditional civil action-type remedies are unavailable in opposition proceedings. Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1591 (TTAB 2011).

The Board reasoned that, if state entities were not subject to opposition proceedings, the USPTO would be precluded from exercising “ample means of ensuring that [States] comply with the [Trademark] Act and other valid federal rules governing [trademark registrability]."

Applicant chose to apply for federal trademark registrations that would evidence its presumed nationwide exclusive rights to use marks in commerce, 15 U.S.C. § 1057(b), a choice with consequences for the public. Applicant’s status as a juristic person under the Trademark Act, and the public interest in the integrity of the trademark registration system, dictate that Applicant is subject to opposition proceedings and that sovereign immunity does not apply to opposition proceedings.

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TTABlogger comment: FWIW: MGCC's sports teams are nicknamed the "Roadrunners." They ran off the road in this one.

Text Copyright John L. Welch 2024.

Precedential No. 11: TTAB Upholds 2(a) False Connection Refusal of LEATHERNECKS for Motorcycle Club Membership

The Leathernecks Motorcycle Club was thwarted in its attempt to register the collective membership mark LEATHERNECKS in the design form shown immediately below. The Board found that the mark, which indicates membership in a motorcycle club, falsely suggests a connection with the United States Marine Corps in violation of Section 2(a) of the Trademark Act. In re Leathernecks Motorcycle Club International, Inc., 2024 USPQ2d 1023 (TTAB 2024) [precedential] (Opinion by Judge Cindy B. Greenbaum).

Section 2(a), in pertinent part, prohibits registration of “matter which may … falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols." The U.S. government, as well as government agencies and instrumentalities, are considered juristic persons or institutions within the meaning of Section 2(a). See Section 45 of the Act. The USMC, a service within the U.S. Department of the Navy, "is one such juristic person or institution." See In re Cotter & Co., 1985 TTAB LEXIS 50, at *8 (T.T.A.B. 1985) (finding the United States Military Academy is an institution and West Point "has come to be solely associated with and points uniquely to the United States Military Academy”).

In determining whether the subject mark runs afoul of Section 2(a), the Board applied the Notre Dame test, requiring the USPTO to prove that:

1. the term “Leathernecks” in Applicant’s mark is the same as, or a close approximation of, the USMC’s name or identity, as previously used by or identified with the USMC:
2. the term “Leathernecks” in Applicant’s mark would be recognized as such because it points uniquely and unmistakably to the USMC; 
3. the USMC is not connected to or otherwise affiliated with Applicant; and 
4. the USMC is of sufficient fame or reputation that, when the term “Leathernecks” is used to indicate membership in a motorcycle club, a connection with the USMC would be presumed.

The Club argued that Section 2(a) does not apply to collective membership marks but the Board disagreed. Section 4 of the Act, which provides for registration of collective marks, states that "Applications and procedures under this section shall conform as nearly as practicable to those prescribed for the registration of trademarks." Nothing in Section 4 exempts collective membership marks from Section 2(a). The Board pointed to Section 1304.03 of the TMEP [not the law - ed.], which states that an application for registration of a collective service mark "must meet all the criteria for registration of other marks on the Principal Register."

Turning to the elements of the Notre Dame test, the Club did not contest the first element, conceding that "Leatherneck" is a nickname for a member of the USMC.

Examining Attorney Kevon L. Chisolm submitted a dictionary definition and a Wikipedia entry for the term "leatherneck," along with various other items of evidence to show that the word "leathernecks" points uniquely and unmistakably to the USMC. The Club argued that "leatherneck" is also a slang term referring to the British Royal Marines, submitted several third-party registrations for Leatherneck marks, and asserted that many companies unrelated to the USMC are using the Leatherneck name.

The Board pointed out, however, that "[t]he requirement that 'Leathernecks' point uniquely and unmistakably to the USMC does not mean 'Leathernecks' must be exclusively used to identify the USMC. Jackson Int’l Trading, 2012 TTAB LEXIS 246, at *6; Hornby v. TJX Cos., 2008 TTAB LEXIS 19, at *55 (TTAB 2008)."

Rather, the question is whether, as used to identify membership in Applicant’s motorcycle club, the relevant public would view the term “Leathernecks” as pointing only to the USMC, or whether they would perceive it to have a different meaning.

For a collective membership mark, the relevant public comprises the persons for whose benefit the mark is displayed: here, "at a minimum, current and prospective members of Applicant, including individuals and entities associated with the U.S. military." The Board found that "the relevant public would understand the term 'Leathernecks' to point uniquely and unmistakably to the USMC, especially when all of Applicant’s present members 'are active duty or honorably discharged U.S. Marines, or U.S. Navy Corpsman who have served with the Fleet Marine Force."

The Club's evidence of third-party use and registration was not probative because they involved goods and services unrelated to a motorcycle club. See, for example, Hornby, 2008 TTAB LEXIS 19, at *55-56 (finding evidence of third-party registrations of the term “TWIGGY” for goods unrelated to children’s clothing had “no probative value”).

As to the third Notre Dame element, The Club did not claim any connection or affiliation with the USMC. As to the fourth, the Board found that "the USMC is of sufficient fame or reputation that, when the term 'Leathernecks' in Applicant’s mark is used to indicate membership in a motorcycle club, a connection with the USMC would be presumed."

First, Applicant’s name, “Leathernecks,” is a nickname adopted by the USMC and recognized by the relevant public to refer to the USMC. Second, Applicant’s members affix the mark to their vests, above other USMC indicia (the EGA, which Applicant refers to as the “Semper Fi” banner, and the letters “USMC”). Third, Applicant’s display of the collective membership mark in the colors gold and scarlet closely resembles the marks in ten registrations with the USMC listed as the owner where the marks are for gold and red rocker patches with other U.S. Marine indicia, all of which are meant to be affixed to clothing (including vests and jackets worn by motorcycle clubs). And fourth, Applicant’s entire membership presently consists of active duty and honorably discharged U.S. Marines and U.S. Navy Corpsman. Indeed, creating a connection with the USMC appears to be Applicant’s intent in adopting “Leathernecks” as the name of its club.

The four horsemen elements of the Notre Dame test having been met, the Board affirmed the Section 2(a) refusal.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2024.

Precedential No. 10: TTAB Denies Section 18 Petition to Restrict Beer Registration to Micro-Brewed Craft Beer

In an attempt to side-step a Section 2(d) refusal of the mark shown below, for "gin," Petitioner Iron Balls International petitioned to restrict Respondent Bull Creek's registration for the mark IRON BALLS for "beer" to "“micro-brewed craft beer." The Board concluded that the proposed restriction would not avoid a likelihood of confusion, and so it denied the petition. Iron Balls International Ltd. v. Bull Creek Brewing, LLC, 2024 USPQ2d 1004 (TTAB 2024) [precedential] (Opinion by Judge David K. Heasley).

Section 18 of the Trademark Act, in pertinent part, gives the Director of the USPTO the authority to "modify the application or registration by limiting the goods or services specified therein, [and] otherwise restrict or rectify with respect to the register the registration of a registered mark." See Embarcadero Techs., Inc. v. RStudio, Inc., 2013 WL 2365029, at *2 (TTAB 2013).

A party seeking to restrict a registrant’s broadly worded identification of goods under Section 18 must plead and prove “(1) that the registrant is not using its mark on goods or services that would be excluded by the limitation, and (2) that the limitation would result in the avoidance of a finding of a likelihood of confusion.”

Issue Preclusion?: An earlier application filed by petitioner for the same mark, also for gin, was refused registration in view of the same registration at issue here, and the TTAB affirmed that refusal. The Board agreed with Bull Creek that, as a result, issue preclusion applied to the issue of the similarity of the marks; however, petitioner’s proposed restriction of goods "raises new issues as to other DuPont factors."

In assessing Petitioner’s Section 18 claim, we must consider precisely the issue we did not decide in the ex parte proceeding, namely, whether “gin” is related to “micro-brewed craft beer.” As Petitioner argues, its proposed restriction from “beer” to “micro-brewed craft beer” could also affect other DuPont factors, such as the channels of trade, the relevant consumers’ sophistication and care, the commercial strength of Respondent’s mark, and the extent of potential confusion. The doctrine of issue preclusion does not bar litigation of these issues.

Micro-brewed Craft Beer?: The Board next turned to the question of whether Respondent Brew Creek's goods are micro-brewed craft beer. Sifting through the evidence, the Board found significant the fact that Bull Creek represented itself as a "craft brewery" and displayed the "Independent Craft Brewer Seal" on its labels. The Board concluded that relevant purchasers would see respondent as a "brewer with a limited, small batch output" and would consider it to be a "craft microbrewery" and its goods "micro-brewed craft beer."

Avoid Likely Confusion?: The final and key question was whether the requested restriction of the goods identified in the registration would avoid a finding of likelihood of confusion. As stated above, issue preclusion barred re-litigation of the first DuPont factor: the similarity of the marks. 

Turning to the strength of Bull Creek's registered mark, the Board found the term IRON BALLS to be arbitrary and conceptually strong. As to commercial strength, petitioner failed to provide evidence of any weakness in the mark but, the Board noted, "even if strong that does not appreciably affect the likelihood of confusion analysis." The Board concluded that the mark is "entitled to the normal scope of protection to which inherently distinctive marks are entitled."

As to the goods, the Board observed that the proposed restriction to micro-brewed craft beer "does not affect the nature of the beer Respondent produces; it simply means that it is provided by a small producer." "Even with the restriction, an average consumer encountering Petitioner’s and Respondent’s similarly-branded alcoholic beverages in overlapping channels of trade could still mistakenly assume that the goods had a common origin."

Furthermore, the proposed restriction would not "change the class of customers for the parties' goods: adult members of the general public who purchase and consume alcoholic beverages," nor would it alter the trade channels for the goods. The respective identifications of goods do not set any price points, so there is no basis on which to conclude that consumers of the goods "will be particularly sophisticated, discriminating, or careful in making their purchases."

Conclusion The Board concluded that "even if Respondent’s goods could be characterized as 'micro-brewed craft beer,' and even if its identification of goods were so restricted, the restriction would not avoid a likelihood of confusion."

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TTABlogger comment: Although the Board referred to the petition as one for partial cancellation, I think that is a misnomer: a petition under Section 18 seeks restriction of a registration, not removal (or cancellation) of any items from the registration. See the TTABlog post here. - ed.].

Text Copyright John L. Welch 2024.

TTAB Deems STUDENT ALLY Generic for . . . . Guess What?

You probably guessed it, didn't you? I once knew a student named Ally, so that threw me off. The Board, in a 35-page opinion, upheld a refusal to register, on the Supplemental Register, the proposed mark STUDENT ALLY, finding the term to be generic for "Providing training for University administration on compliance with governmental regulations, claims investigations, evidence collection and location-based student safety emergency alert systems." It concluded that "STUDENT ALLY would be understood by the relevant consumers to refer a key aspect of Applicant’s services: that is, training to foster support for students, particularly those who are targets of discrimination or are otherwise marginalized." In re Student Ally, Inc., Serial No. 90046632 (June 5, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Examining Attorney Michael Eisnach submitted dictionary definitions and a raft of examples of Applicant’s own use and of third-party use. The Board found that “[n]othing is left for speculation or conjecture in the alleged trademark,” because the phrase “immediately and unequivocally describes the purpose, function and nature” of Applicant’s services.

Applicant argued that these materials show use of the phrase STUDENT ALLY in a “trademark sense.” The Board observed, however, that such use does not render the phrase non-generic. "Applicant’s intent to exclusively appropriate the phrase as its trademark is not at issue. The issue is whether STUDENT ALLY is recognized as a trademark for the identified training services by the relevant public."

Applicant’s generic uses strongly imbue its trademark uses with an overall generic meaning, and are strong evidence that the relevant public of university administrators views STUDENT ALLY, as a whole, to refer to a key aspect or function of Applicant’s services.

Applicant also attempted to distinguish its services from those reflected in the USPTO's evidence, asserting that "[t]he term 'Student Ally' and 'student ally' as cited are used for very different student programs by universities and colleges, and have no common meaning." It pointed out that “there is no competition between the various cited ‘Student Ally’ programs and Applicant’s services of providing training for university administration in the specified areas.”

The Board was not moved, noting that applicant's services are identified broadly, and include training on "governmental regulations, claims investigations, evidence collection and location-based student safety emergency alert systems.” 

The evidence indicates that at least six of these universities offered training on governmental legislation and regulations as part of their services.  The evidence also shows that Title IX investigators may be known as “student allies.” And almost all of the third party university evidence, broadly speaking, concerns student safety and well-being.

The Board pointed out that the “fact that there is no evidence of third-party use of the precise term” STUDENT ALLY for applicant’s precise training services “is not, by itself, necessarily fatal to a finding of genericness.” Mecca Grade Growers, 2018 TTAB LEXIS 64, at *24; see also In re Empire Tech. Dev. LLC, 2017 TTAB LEXIS 232, at *60 (TTAB 2017) (it is a “well-settled principle that being the first and only user of a generic term even if the public associates it with the first user does not make an otherwise generic term non-generic.”).

“To allow trademark protection for generic terms, i.e., names which describe the genus of goods [or services] being sold, even when these have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods [or services] as what they are.” In re Pennington Seed, Inc., 466 F.3d 1053, 1058 (Fed. Cir. 2006) (quoting Merrill Lynch, 1828 F.2d at 1569).

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TTABlogger comment: The Board declined to address the USPTO's failure-to-function refusal, but then genericness is a type of failure-to-function, isn't it?

Text Copyright John L. Welch 2024.

TTAB Reverses Section 2(d) Refusal of "CREATIVE HOME IDEAS" in view of Weakness of Two Cited Marks

In a dubious decision, the Board reversed a Section 2(d) refusal of the mark CREATIVE HOME IDEAS for various home decor products, including pillows, curtains, and rugs [HOME Disclaimed], finding confusion unlikely with the registered marks CREATIVE HOME [HOME disclaimed] and HOMEIDEAS for overlapping and related goods. In light of applicant's third-party registration evidence and the ordinary meanings of CREATIVE, HOME, and IDEAS, the Board accorded the cited registrations an "attenuated scope of protection." In re YMF Carpets, Inc., Serial No. 90822795 (June 4, 2024) [not precedential] (Opinion by Judge Karen S. Kuhlke).

The Board observed that "[g]enerally, the existence of third-party registrations cannot justify the registration of another mark that is so similar to a previously registered mark as to create a likelihood of confusion, or to cause mistake, or to deceive." However, under Jack Wolfskin and Juice Generation, a large number of registrations may indicate "that a mark or a portion of a mark has a normally understood descriptive or suggestive connotation, leading to the conclusion that the term or mark component is relatively conceptually weak."

Here, the Board considered 18 third-party registrations for various combinations of the terms CREATIVE or IDEAS. However, only three included the word CREATIVE for goods that are similar to the goods in the registrations and two included the word IDEAS for goods that are similar to those goods. Nonetheless, the Board noted that the word HOME describes the nature of the goods and is disclaimed in both applicant's mark and one of the cited registrations. Furthermore, CREATIVE and IDEAS are general terms that "suggest an attribute (creative) or recommendations (ideas) for home decoration."

Overall, we find these marks are comprised of weak terms, and the combination of the terms in various forms does not measurably increase their distinctiveness. We therefore accord these registrations an attenuated scope of protection.

Comparing the marks, the Board found their connotations and commercial impressions to be "sufficiently different." CREATIVE HOME connotes a place, whereas CREATIVE HOME IDEAS "focuses on what kind of ideas are being offered for the home." "In the case of HOMEIDEAS, that mark presents as a single word or, even viewed as separate words, as a single thought, in contrast to the CREATIVE HOME IDEAS mark that is a phrase modified by the word CREATIVE."

The Board concluded that, "despite the identical and closely related goods, in view of the weakness of the marks, Applicant’s mark is sufficiently different so as to obviate likely confusion."

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TTABlogger comment: The third-party registration discussion was rather murky. BTW, I don't know why, but I've grown to hate the word "obviate."

Text Copyright John L. Welch 2024.

TTAB Sustains Nike's Confusion and Dilution Claims Against "DON'T JUST DO IT, GET IT DONE" for Clothing

Footwear behemoth Nike, Inc. ran roughshod over Applicant Barbara Lorenzo in her attempt to registered the mark DON’T JUST DO IT, GET IT DONE for various clothing items. The Board sustained Nike's likelihood of confusion and likelihood of dilution claims based on the famous JUST DO IT mark for overlapping clothing items. One may wonder how this application got past the examination stage. Nike, Inc. v. Barbara Lorenzo, Opposition No. 91286066 (May 21, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Likelihood of Confusion: A claim of fame under Section 2(d) must be clearly proven. Nike's evidence established use of the JUST DO IT mark since 2018, with staggering sales figures and advertising expenditures, substantial interactions on social media, and frequent unsolicited media attention. The Board concluded that the mark JUST DO IT "is not only famous, but remarkably so. It is entitled to the highest level of protection against confusion. This factor weighs heavily in favor of finding a likelihood of confusion." 

The overlap in goods and the presumed overlap in channels of trade and classes of consumers "not only weigh heavily in favor of finding a likelihood of confusion under these factors, but also reduces the degree of similarity between the marks necessary to find a likelihood of confusion."

Not surprisingly, Applicant Lorenzo focused her argument on the differences between the marks, but the Board was not impressed.

We are not persuaded by Applicants’ argument that the differences between the numbers of words, letters, syllables, vowels, consonants and spaces are sufficient to distinguish the marks. A determination of likelihood of confusion is not made on a purely mechanical basis, counting the number of words, syllables, or letters that are similar or different.

The Board concluded that the marks are more similar than dissimilar. Thus, all the DuPont factors favored a finding of likelihood of confusion, and so the Board sustained that claim.

Likelihood of Dilution: Usually the Board declines to reach a dilution claim if it has already found confusion likely. Not this time.

The Board found that the testimony and evidence "are more than sufficient to prove that JUST DO IT is famous for purposes of dilution," and establish that the mark became famous "well before Applicant’s 2022 filing date."

All of the factors in regard to the Section 43(c) dilution by blurring claim weigh in Opposer’s favor or are neutral. Accordingly, we find that Applicant’s mark is likely to dilute Opposer’s JUST DO IT Mark under Trademark Act 43(c)(2)(B), 15 U.S.C. § 1125(c)(2)(B).

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TTABlogger comment: Nike submitted the results of a fame survey, but the Board refused to consider them. More about that in an upcoming blog post.

Text Copyright John L. Welch 2024.

Precedential No. 9: TTAB Denies HOLLYWOOD HOTEL Summary Judgment Motion, Finding No Claim Preclusion

The Board denied Applicant Zarco Hotels' FRCP 12(b)(6) motion to dismiss this opposition to registration of the mark HOLLYWOOD HOTEL for hotel and restaurant services, ruling that claim preclusion, based on an earlier opposition, did not apply. The Board first construed the motion as one for summary judgment and then concluded that Opposers' claims of likelihood of confusion and geographical descriptiveness were not decided in the prior opposition (which was sustained on the ground of nonownership) [TTABlogged here], and therefore those claims could be brought in this proceeding. Hollywood Casinos, LLC and Penn Entertainment, Inc. v. Zarco Hotels Inc., 2024 USPQ2d 985 (TTAB 2024) [precedential].

The parties relied on matters outside the pleadings and "clearly treated the motion as one for summary judgment," and so the Board so treated it as well. See FRCP 12(d); Haider Cap. Holding Corp. v. Skin Deep Laser MD, LLC, 2021 USPQ2d 991, at *1-2 (TTAB 2021) (construing motion to dismiss as motion for summary judgment where basis is claim preclusion and moving party relies on matter outside of pleadings); Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1410 n.5 (TTAB 2015) (motion to dismiss considered as one for summary judgment where it asserts claim preclusion)./

The "Prior Opposition" was based on a claim of likelihood of confusion with two registered marks. The opposer moved to amend the notice of opposition to add a geographical descriptiveness claim but the Board denied the motion as untimely. The Board ultimately sustained the opposition on the ground that the applicant was not the owner of the mark at the time the opposed application was filed; it did not reach the likelihood of confusion claim. The CAFC affirmed.

Under the doctrine of claim preclusion, a second action is barred by if (1) the parties (or their privies) are identical; (2) there has been an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the first. Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000). Furthermore, if a party cannot appeal the outcome of an earlier action, then the second action is not barred by claim preclusion. See AVX Corp. v. Presidio Components, Inc., 923 F.3d 1357, 2019 USPQ2d 171683, at *4-5.

Opposer Hollywood Casinos was successful in asserting the nonownership claim in the Prior Opposition and obtained the relief it requested (denial of the application). Because the Board did not decide the likelihood of confusion claim, Hollywood could not cross-appeal on that issue, nor on the issue of the attempted geographical descriptiveness claim. Consequently, Opposer Hollywood Casinos "lacked statutory entitlement to appeal the prior decision of the Board."

Applicant Zarko conceded that the likelihood of confusion claim was not barred in its entirety, but argued that this claim should be limited to the two registered marks in the Prior Opposition. The Board disagreed. 

Because Opposers’ original likelihood of confusion claim is not extinguished, Opposers’ amended likelihood of confusion claim based upon their additional registrations and common law rights that could have been raised in the Prior Opposition also is not extinguished. There is no reason why claim preclusion would apply to only the latter claim and not the former.

As to the geographical descriptiveness claim, although the Board refused to add that claim in the Prior Proceeding, there was no decision on the merits regarding that claim. That refusal was not appealable since Hollywood Casinos obtained all the relief it sought, and so claim preclusion cannot apply.

The Board therefore denied Zarko's construed motion for summary judgment.

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TTABlogger comment: The Board said that, because Hollywood Casino was the victor in the prior proceeding, it could not appeal any adverse ruling because it lacked "statutory entitlement" to appeal. Should that be "Article III standing" rather than statutory entitlement?

Text Copyright John L. Welch 2024.