The Top Ten TTAB Decisions of 2024 (Part I)

The TTABlogger has once again gone out on a limb to chose 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 (2024). This is the first of two (2) posts; the first five (5) selections are set out below. 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).

Look Cycle International v. Kunshan Qiyue Outdoor Sports Goods Co., Ltd., 2024 USPQ2d 1424 (TTAB 2024) [precedential] (Opinion by Judge Karen S. Kuhlke). [TTABlogged here]. Findings of fraud are few and far between, but here the Board ruled that, in the underlying application for the mark BLOOKE for bicycles, parts, and accessories, respondent’s false statements regarding use of the mark were made either with the intention to deceive the USPTO or with reckless disregard for the truth, and therefore constituted fraud. Respondent’s specimen of use included purported invoices from three transactions but the addresses for the three purchasers were non-existent. It also produced documents during discovery supposedly disclosing an event held prior to April 2021 in the United States but shown to be referencing a 2023 event in Shanghai China. The Board found that the evidence demonstrated “knowing intentional deception,” but “even if the evidence were not sufficient to reveal such intention directly, at a minimum, the facts of this case demonstrate reckless disregard for the truth from which we infer the requisite intent.”

DoorDash, Inc. v. Greenerside Holdings, LLC, 2024 USPQ2d 935 (TTAB 2024) [precedential]. [TTABlogged here]. Trademark bullies breathed a sigh of relief when, in this opposition to registration of the mark shown below for delivery of medical cannabis via car service, the Board rejected Applicant Greenerside’s affirmative defense of unclean hands. Opposer DoorDash alleged likelihood of confusion with eight registered DOORDASH marks for various goods and services, including food delivery. Greenerside asserted that DoorDash has misused its trademarks in a “longstanding and habitual practice of trademark bullying” by opposing a “significant number of applications” on “dubious, weak or exaggerated” grounds. The Board granted DoorDash’s motion to strike that defense. “The Trademark Act does not refer to ‘trademark bullying’ explicitly or even implicitly.” The Board has previously considered assertions of “unclean hands” based on “overzealous enforcement” but found that this defense does not apply to a registrant “seek[ing] to protect its rights in its registered marks, and preclud[ing] the registration of what it believes to be a confusingly similar mark.” Here, the Board found that DoorDash was “merely exercising its right to protect its marks.”

In re Gail Weiss, 2024 USPQ2d 1376 (TTAB 2024) [precedential] (Opinion by Judge Peter W. Cataldo). [TTABlogged here]. The Board upheld a refusal to register the mark GABBY’S TABLE for “Computerized on-line retail store services in the field of food, cooking utensils, cookware, culinary arts cookbooks, magazines and videos, and lifestyle books, magazines and videos” because the specimen of use showed that Applicant Weiss (an online influencer) “provides referrals of products for sale by third parties on their websites” and not the services recited in the application. Weiss’s specimen comprised a webpage displaying a list of items that “Gabby’s Table Recommends” for purchase. A picture of each item is displayed, along with a product description and a “buy now” button that re-directs the consumer to a third-party website where the item may be purchased (e.g., Amazon). The recommended items cannot be purchased directly via Weiss’s website: “Applicant’s specimen does not display, for instance, a virtual ‘shopping cart’ pricing, shipping information, or any other indicia of online retail store services.” Weiss provided no evidence that “consumers clicking the ‘BUY NOW’ buttons on her website, upon being re-directed to a product description on a third-party vendor website where they may then purchase the product from that vendor, will perceive that Applicant herself is providing online retail store services.”

Keystone Consolidated Industries, Inc. v. The Franklin Investment Corp. DBA Franklin Industries, 2024 USPQ2d 2025 (TTAB 2024) [precedential] (Opinion by Judge Cheryl S. Goodman). [TTABlogged here]. Inter partes proceedings involving two color marks are as rare as a traffic cop in Boston. The Board denied this petition for cancellation of a supplemental registration for the color mark (red-white-and-blue) shown on the left below, finding confusion unlikely with the registered color mark (red top) shown on the right, both for metal fence posts. In a 69-page decision, the Board found the first DuPont factor — the similarity or dissimilarity of the marks — to be dispositive. The Board pointed out that the issue must be decided “primarily on the basis of visual similarity, which has been described as a ‘subjective eyeball test.’” The Board deemed the marks dissimilar: “[t]he commercial impression of Petitioner’s Red Top Fence Post Mark, is a ‘red top,’ and the color red.” On the other hand, consumers would perceive respondent’s Red, White, and Blue Fence Post Mark as referring to “the national colors of the United States of America, or the flag of the United States of America.”

Blizzard Entertainment, Inc. v. Ava Labs, Inc. , 2024 USPQ2d 1299 (TTAB 2024) [precedential]. [TTABlogged here]. In this opposition to registration of the mark BLIZZARD for various business services, Applicant Ava Labs, Inc., counterclaimed to cancel two pleaded registrations owned by Opposer Blizzard Entertainment for online retail store and mail order services. Ava asserted that the registered marks BLIZZARD and BLIZZARD ENTERTAINMENT had never been used or had been abandoned because the offering of one’s own goods does not constitute a service done primarily for the benefit of others and therefore does not qualify as service mark use. The Board disagreed. The question was “whether, as a matter of law, online retail store or mail order activities featuring only a party’s own goods are ‘services’ as contemplated in the Trademark Act.” The Board observed that “it has long been recognized that gathering various products together, making a place available for purchasers to select goods, and providing any other necessary means for consummating purchases constitute the performance of a service.” Furthermore, the Board has implicitly recognized that retail store activities featuring one’s own goods are services, acknowledging that “if a retail store also uses the name of the store on the goods themselves, the same mark can serve both a trademark and service mark function.” The Board concluded that Blizzard’s activities under the marks constitute use of the marks that satisfies the requirement of the Trademark Act.

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Text Copyright John L. Welch 2024.