Wednesday, November 30, 2022

TTAB Posts December 2022 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled five (5) oral hearings for the month of December 2022. Only the fifth one will be in person, the first four being held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

December 1, 2022 - 1 PM:
Eden Foods, Inc. v. The Ethnic Group LLC dba Edenic Blends, Opposition No. 91267822  [Section 2(d) opposition to EDENIC BLENDS & Design for "Vitamin and mineral supplements; none of the foregoing containing CBD" in view of the registered mark EDEN and an alleged family of EDEN-formative marks, for natural and organic food and beverage products, including dietary food supplements.]

December 6, 2022 - 10 AM: In re Disciplina Excellentiae, LLC, Serial Nos. 90426395 and 90426435 [Section 2(d) refusals to register HIPE FIT and HIPE FITNESS for health club services [FIT and FITNESS disclaimed] in view of the registered marks HIP in standard character form for "Arranging and conducting youth sports programs in the field of football; Educational services, namely, providing classes, seminars, and workshops in the fields of sports; Entertainment in the nature of football games," and HIP in standard character and stylized from for "Education services, namely, training high school students to provide health education and health information resources to their peers, and providing curricula and course materials in connection therewith."]

December 7, 2022 - 11 AM: In re International Fruit Genetics, LLC, Serial No. 88710987 [Refusal to register COTTON CANDY for various food products on the ground of mere descriptiveness and, as to some of the identified goods, likelihood of confusion with the  identical mark registered for bubble gum and ice cream.]

December 8, 2022 - 10 AM: In re Panini America, Inc., Serial No. 90004362 [Section 2(d) refusal of KABOOM! for "Collectible trading cards; Sports trading cards," in view of the registered marks KABOOM COMICS & COLLECTIBLES & Design for "Retail store services featuring comic books," and KABOOM! for "Comic books; magazines featuring printed stories in illustrated form and comic book stories and artwork, namely, comic magazines; printed periodicals in the nature of magazines in the field of comic book stories and artwork; series of comic book style novels; series of non-fiction books in the field of comic books."]

December 13, 2022 - 10 AM (In Person): Hyde Park Storage Suites Daytona, LLC v. Man Cave, LLC, Cancellations Nos. 92076317 and 92076375 [Petitions for cancellation of registrations for the marks MAN CAVE and MAN CAVE GARAGES for "Providing self-storage facilities for others; Provision of car parking facilities" and for "Social club services, namely, arranging, organizing, and hosting social events, get-togethers, and parties for club member" [GARAGES disclaimed], on the grounds of mere descriptiveness and likelihood of confusion with petitioner's common law mark ULTIMATE MAN CAVE for the same or highly related services.]

Read comments and post your comment here.

TTABlog comment: Any predictions? See any WYHAs or WYHPs?

Text Copyright John L. Welch 2022.

Tuesday, November 29, 2022

Precedential No. 35: In a Real Snoozer, TTAB Rules on Several Discovery-Related Issues

In a dubiously precedential Order, the Board ruled on several discovery-related motions in this opposition to registration of the mark GROMEO for "Planters for flowers and plants; Self-watering planters for flowers and plants." Opposer OMS claimed likelihood of confusion with, and likely dilution of, its registered marks MIRACLE GRO and GRO-formatives for fertilized, soil, pots, and containers. OMS Investments, Inc. v. Habit Horticulture LLC, 2012 USPQ2d 1074 (TTAB 2022) [precedential] (Intelocutory Attorney Mary B. Miles).

Applicant Habit [actually, applicant's name is Habitat Horticulture, but Opposer OMS misspelled it in the notice of opposition - ed.] moved to compel a deposition and to extend its time to respond to OMS's discovery requests. When Habit filed it reply brief, OMS claimed the reply should be stricken as untimely. OMS served its opposition on December 10, 2021 and claimed that the reply filed on December 31 was one day too late. Not so, said the Board. The opposition was not filed until December 11, so the reply was timely. See Island, LLC, 2021 USPQ2d, at *4 n.9, and see Trademark Rule 2.127(a).

The Board then denied Habit's motion to compel because it was filed prematurely (OMS had not "clearly or unequivocally stated that it would not designate or produce a witness for the noticed deposition") and because Habit failed to make the required good faith effort to resolve the dispute prior to filing its motion. The parties were ordered to meet and confer forthwith in a good faith effort to resolve any disputes regarding the topics for examination (under FRCP 30(b)(6)), the designated witnesses, and/or the date and location of the deposition.

Finally the Board denied Habit's motion to extend the time for responding to OMS's discovery requests. Habit contended that is should not have to response to the requests until after the Rule 30(b)(6) deposition of Habit in order to "maintain the status quo," i.e., Habit noticed its deposition first. The Board rejected that argument, since discovery is not governed by the concept of priority and one party's discovery obligations are independent of the actions of the other party. [As a general proposition, okay, but that should not be an ironclad rule - ed.]

The Board then issued a new scheduling order.

Read comments and post your comment here.

TTABlogger comment: I don't understand how an order issued by a single interlocutory attorney, with no statement that it is issued "By the Board," can be precedential.

Text Copyright John L. Welch 2022.

Monday, November 28, 2022

Precedential No. 34: "IFG" Fails to Function as a Trademark For Live Plants Because It's a Varietal Name

In a decision of importance to trademark practitioners who labor in the varietal plant field, the Board held that "proposed marks that constitute the prominent portion of a varietal denomination are unregistrable under Trademark Act Sections 1, 2, and 45 because they are generic for the varietals they identify" and therefore "incapable of functioning as a trademark." And so, the Board refused to register the proposed mark IFG for "Fresh fruits and vegetables; live plants; live trees; live grape vines; live plant material, namely, live grape vine material, live plant material and live tree material." In re International Fruit Genetics, LLC, 2022 USPQ2d 1119 (TTAB 2022) [precedential] (Opinion by Judge Angela Lykos).

The CAFC in In re Pennington Seed Co., 466 F.3d 1053, 80 USPQ2d 1758, 1761-62 (Fed. Cir. 2006), upheld the USPTO’s long-standing precedent and practice of treating varietal names as generic, affirming the Board’s ruling that the term “Rebel,” as a varietal name for a type of grass seed failed to function as a mark. The CAFC explained that an entity that is the source of a varietal may use a particular term as a trademark for its specific varietal, but it must be clear that there is also a generic name for the varietal. "This notion reflects the Board’s earlier decisions that if the term is used as a designation of source (i.e., a trademark) and there is a different varietal designation, the term may be registrable."

The Board agreed with the applicant that IFG, by itself, is not the entire varietal name for applicant's identified goods. However, the USPTO's evidence established that the initialism IFG is the first component of numerous varietal names for grapes, grapevines, grapevine plants, sweet cherry trees and cherries, goods that are encompassed within the scope of Applicant’s identified goods.

Thus, the questions before us are: (1) is the prominent portion of a varietal name barred from registration under Trademark Act Sections 1, 2, and 45 because varietal names are the equivalent of generic designations; (2) if so, does the record show that IFG is a prominent portion of the varietal names of record for the identified goods; and (3) does this constitute an absolute bar to registration given Applicant’s prior valid and subsisting trademark registration of the same mark for “Live plants, namely, table grape vines, cherry trees” where such registration issued prior to the application filing dates of any of the plant patents or plant breeder’s rights (i.e. PVP certificates under U.S. law) and purported prior trademark use?

As to the first question, the Board followed Pennington Seed in concluding that "[g]ranting an applicant a trademark registration for the prominent portion of a varietal name would be anticompetitive since it would be allowing one entity to have exclusive trademark rights in a generic term." Moreover, "[t]o hold otherwise would be a breach of U.S. obligations under the UPOV convention."

As to the second question, the Board followed In re Delta & Pine Land Co., 26 USPQ2d 1157 (TTAB 1993) (upholding a refusal to register DELTAPINE, which was a portion of the varietal names Deltapine 50, Deltapine 20, Deltapine 105 and Deltapine 506 for cotton and soybean plants) in finding that IFG is the prominent portion of each of applicant's varietal names (for example, "IFG Cher-seven"). "Consumers are likely to focus on the initial letter string 'I-F-G' and pronounce it as such in calling for the goods."

As to the third question, the Board concluded that applicant's ownership of a registration for IFG for partly identical goods ("live plants, namely, table grape vines, cherry trees") did not alter the result here. After filing the underlying application for that prior registration, applicant selected IFG as the initial term in subsequently filed applications for plant patents with the USPTO, and for PVP protection with the Plant Variety Protection Office of the Department of Agriculture.

Thus, when a purchaser asks for any of Applicant’s patented or PVP protected goods, it “has no other name to use but its designated name.” Pennington Seed, 80 USPQ2d at 1762. Applicant could have chosen a designation other than IFG to associate as a brand name and file for trademark protection. Instead, cognizant that such varietal denominations would eventually become the generic designations upon the expiration of plant patent and PVP certificate protection, Applicant risked the integrity of its IFG trademark by using IFG to name new varietals. Applicant cannot now inhibit current and future public use of these varietal denominations because of its decision-making.

The Board brushed aside applicant's patently erroneous assertion that because its prior registration is "incontestable" [i.e., more than five years old - ed.] it is immune from a genericness attack. Under Section 14(3), genericness claims are not time-barred and can be brought "any time if the mark becomes the generic name for the goods." 

The Board showed no sympathy for the applicant: "By making a deliberate decision to select IFG as the prominent portion of the varietal names of the identified goods, Applicant self-abrogated its own trademark rights, exposing its prior trademark registration to potential cancellation in an inter partes proceeding."

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TTABlogger comment: Why doesn't the same logic apply to expired design patents when a trademark registration is obtained for the design?

Text Copyright John L. Welch 2022.

Friday, November 25, 2022


The annual meeting of the Boston Patent Law Association will be held on December 7th from 11:30 to 1PM at The State Room, 60 State Street, Boston. (register here). A key item on the agenda will be a vote to amend the By-Laws to change the name of the Association to the BOSTON INTELLECTUAL PROPERTY LAW ASSOCIATION. (Amendment here). If you cannot attend the meeting, you may vote by proxy via the form found at the first link above.

This name change is long overdue. I joined the BPLA nearly 50 years ago, and watched the enormous growth of the trademark and copyright community in Boston. I also witnessed the refusal to change the name of the organization because of "tradition." It's time to step into the 21st century, folks.

Read comments and post your comment here.

Text Copyright John L. Welch 2022.

Wednesday, November 23, 2022

USPTO Refuses to Institute Reexamination of Registration, But Allows Petitioner to Re-file

One doesn't hear much about the outcome of reexamination petitions. I came across this denial of a petition involving alleged nonuse of the mark shown below, for pet accessories (Reg. No. 5,795,3480) [pdf here]. The literal portion of the mark reads ""OPPOSITION TO TYRANNY BEGINS WITH CONTEMPT FOR DICTATORS" at the top, and "BUNS WILL CERTAINLY REVEAL THEIR FILLINGS." on the bottom. Petitioner failed to provide evidence that established a "reasonable predicate to support a conclusion that the mark was not in use as of the relevant date on or in connection with the identified goods." [pdf here]

The petition for reexamination was filed by Zhejiang Import & Export Pet Food and Product Industry Association (a Chinese trade association), who has petitioned to cancel the registration (Cancellation No. 92076309) on various grounds. The cancellation proceeding has been suspended pending the outcome of the reexamination petition. After reexamination was denied, Petitioner was allowed to re-file its petition for reexamination with additional evidence, which it did yesterday. The relevant documents regarding the petition for reexamination can be found on TSDR.

Read comments and post your comment here.

TTABlogger comment: The mark allegedly "features a depiction Xi Jin Ping, President of the People’s Republic of China with a popular nickname for Xi Jin Ping: “xi da da” written on the cartoon’s head and cheeks."

Text Copyright John L. Welch 2022.

Tuesday, November 22, 2022

TTABlog Test: Is THREEGUN Confusable With THERAGUN For Massage Apparatus?

Therabody, Inc. opposed an application to register the mark THREEGUN (in slightly stylized form) for various medical devices and products, including massage apparatus, on the ground of likelihood of confusion with its registered mark THERAGUN for various medical devices, including massage apparatus. So, the goods overlap, but what about the marks? How do you think this came out? Therabody, Inc., by change of name from Theragun, Inc. v. Shanghai Three Gun (Group) Co., Ltd., Opposition No. 91264121 (November 17, 2022) [not precedential] (Opinion by Judge Jyll Taylor).

Motion to Amend I.D.: After the close of Opposer's testimony period, Applicant Shanghai Three Gun moved to amend its identification of goods but the Board deemed the motion untimely. "Because Applicant failed to file its motion early enough to provide Opposer with sufficient notice of its proposed change before trial, as is apparent by Opposer’s attempt to supplement its record with the untimely submissions appended to its brief, Applicant’s motion to amend must be denied."

Likelihood of Confusion: With regard to the overlapping goods, massage apparatus, the Board presumed that they travel in the same trade channels to the same classes of consumers. The purchasers of the goods include ordinary consumers.Since there were no limitations as to classes of purchasers or price of products, the Board based its decision on the least sophisticated potential purchasers. It found the purchaser sophistication and care factor to be neutral.

As to actual confusion, since Shanghai has not exported any massage apparatus to the United States, "there has been no opportunity for actual, or potential, confusion to occur." And so, the Board found this DuPont factor to be neutral in its analysis.

The evidence showed that the term GUN is often used to describe certain types of massage apparatus, and "the THERA portion of Opposer’s THERAGUN mark may be perceived by consumers as a shortened form of the word 'therapy.'" The Board concluded that THERAGUN is "somewhat suggestive of the identified massage apparatus." As to commercial strength, in light of "Opposer’s advertising presence across multiple social media platforms and the unsolicited exposure in the written press and online, as well as the various industry accolades," the Board found that "Opposer has established that its pleaded registered THERAGUN mark has garnered some renown, which is not offset by its somewhat suggestive nature." The Board concluded that the THERAGUN mark "is entitled to a slightly broader scope of protection than that to which marks with inherently distinctive terms are entitled."

Turning to the marks, the Board found them to be more dissimilar than similar, "[p]rincipally because Applicant’s mark begins with the clearly recognizable English word 'three' and Opposer’s mark begins with what is likely to be recognized by consumers as a shorted form of the word 'therapy,' given that Applicant’s devices are touted and recognized as 'percussive therapy devices.'"

The Board found the marks to be dissimilar in appearance and sound. As to connotation and overall commercial impression, "[c]onsidering the plain meanings of the words and terms that comprise the two marks, even when viewed against the backdrop of identical massage apparatus, [the marks] would likely be perceived by consumers as conveying different connotations and commercial impressions."

Concluding that the first DuPont factor weighed heavily in Shanghai's favor, the Board dismissed the notice of opposition.

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2022.

Monday, November 21, 2022

Finding Lack of Bona Fide Intent, TTAB Sustains Opposition to NEW YORKER FINE LAGER BEER & Design for Beer-Based Cocktails

The Board sustained an opposition to registration of the mark shown below, for "Beer-based cocktails; Essences used in the preparation of liqueurs; Malt extracts for making beer; Non-alcoholic rice-based beverages not being milk substitutes; Smoothies; Soy-based beverages not being milk substitutes; Soya-based beverages, other than milk substitutes; Syrups for beverages; Syrups for making beverages," on the ground of lack of bona fide intent. Although Applicant Jose Ramon was experienced in the branding and marketing of beers, he was never in the business of producing the goods identified in his application, and the only step he took to use the mark was the formation of a company to market beers. D & P Holding S.A.. v. Jose Ramon Ortiz Monasterio DBA Jose Ramon, Opposition No. 91246728 (November 16, 2022) [not precedential] (Opinion by Judge Christopher Larkin).

Contractual Estoppel: Applicant Ramon asserted the affirmative defense of contractual estoppel. The Board considered what body of law was to be applied to the contract, "which is in English and mentions the United States (together with Canada and Mexico), but is between a Spanish individual and a Swiss corporation, and has as its subject matter the assignment of [a] CTM Registration from Applicant in Spain to Opposer in Switzerland in exchange for consideration paid in Euros." The Board noted that the parties ignored conflict-of-laws principles, and so it "deemed their arguments as manifesting their assent that we may interpret the 2015 Contract as if it were governed by United States contract law principles."

The Board then agreed with opposer that, "under the plain language of the 2015 Contract, Opposer agreed that Applicant would have rights in the United States, Canada, and Mexico to the mark shown in [Applicant's] CTM Registration but nothing more. Opposer is thus not estopped from opposing Applicant’s registration of the mark shown in the Opposed Application because that mark is not the mark shown in the CTM Registration."

Lack of Bona Fide Intent: The Board found that Opposer established a prima facie case of lack of bona fide intent based on Applicant Ramon's interrogatory responses: "Applicant's interrogatory responses establish that in the more than three years after the filing of the Opposed Application, he did nothing to bring any of the goods identified in the Opposed Application to market in the United States under the applied-for mark." The burden of production then shifted to Applicant Ramon.

Ramon’s evidence "boil[ed] down to his testimony regarding his 'extensive knowledge and experience in the branding and marketing of beers'" his assertion that he has continuously had a bona fide intention to use the mark for the identified goods, and his formation of a Delaware corporation to manufacture and market beers. Not good enough, said the Board.

And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: Of course, Ramon's mere statement that he had a bona fide intent is meaningless. Every Section 1(b) applicant could say that, and lack of bona fide intent could never be proven.

Text Copyright John L. Welch 2022.

Friday, November 18, 2022

TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?

So far this year, the Board has affirmed 158 of the 170 Section 2(d) refusals on appeal (just about 93%). Here are three decisions that came down recently. How do you think they came out? [Results in first comment].

In re Robert Green Hospitality, LLC
, Serial No. 90065535 (November 10, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington) [Section 2(d) refusal of the mark LYDIA for "Hotel services, namely, high end boutique resort hotel services" in view of the registered mark LIDIA’S KANSAS CITY for restaurant services (KANSAS CITY disclaimed)].


In re Uri Charles, Serial No. 90235507 (November 10, 2022) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) refusal of FLVSH for "Downloadable mobile application software for use in text messaging, in-app messaging, location-based messaging, chatting, sharing and transmitting of photos, images, pictures, videos, audio content, multimedia content, electronic files, information and data, and storing contacts," in view of the registered mark FLASH for "Computer software, software applications and mobile applications for picture sharing"].

In re Blake Farms Hard Apple Cider, Serial No. 90567569 (November 16, 2022) [not precedential] (Opinion by Judge Mark Lebow) [Section 2(d) refusal of BLAKE’S BACK 40 for beer, in view of the registered mark BACK 40, also for beer].


Read comments and post your comment here.

TTABlog comment: How did you do? See any non-WYHAs?.

Text Copyright John L. Welch 2022.

Thursday, November 17, 2022

TTABlog Test: Is BEST KNIGHT GAMES Merely Descriptive of Board Games?

The USPTO refused to register the proposed mark BEST KNIGHT GAMES for "board games; card games; checkers games; chess games; dice games; equipment sold as a unit for playing board games; go games; parlor games; puzzle games; strategy games; tabletop games; chess equipment and accessories; chess clocks; chess timers," finding the mark to be merely descriptive of the goods. Applicant argued that the mark is "suggestive in relation to the applied-for goods and suggests that the products can be enjoyed at night and derive from a source that prides itself as being honorary, fun, excellent, and entertaining." How do you think this came out? In re Portland Chess Shop LLC, Application Serial No. 90433730 (November 15, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman).

Examining Attorney Andrea Cornwell relied, unsurprisingly, on dictionary definitions of "best," "knight," and "games," leading the Board to conclude that "when used in connection with the products in Applicant’s description of goods listed above, consumers will perceive BEST KNIGHT GAMES as superior activities involving a medieval, mounted soldier in armor." Third-party websites using the terms "knight games" and "best night games" confirmed that meaning.

The Board pooh-poohed applicant's argument that the proposed mark is suggestive of the goods and "does not immediately convey information about the quality, feature, function, or characteristic of Applicant’s goods to the average consumer." The Board found that "when the mark BEST KNIGHT GAMES is used in connection with board games, parlor games, or strategy games, consumers immediately understand that the activity (game) involves medieval mounted solders wearing armor (i.e., knights)."

Applicant also argued that its use of "Best" makes the mark BEST KNIGHT GAMES registrable because "Best" does not specify what aspects, if any, are better than other similar goods. The Board was unmoved. "Applicant’s use of the word 'Best' is laudatory. Laudatory terms, those that attribute quality or excellence to goods or services, such as Applicant’s use of 'Best' in BEST KNIGHT GAMES, are merely descriptive under Section 2(e)(1) of the Trademark Act."

And so, the Board affirmed the refusal to register.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.

Wednesday, November 16, 2022

TTAB Sustains DUTCH BROS. Section 2(d) Opposition to DUTCH4LIFE Marks for Energy Drinks and Alcoholic Beverages

In a 74-page opinion, the Board sustained oppositions to registration of the marks shown below, for "energy drinks containing caffeine; energy drinks not for medical purposes" and for "alcoholilc beverages" on the ground of likelihood of confusion the registered mark DUTCH BROS. for coffee and energy drinks. FWIW, the Board rejected opposer's claim of a family of "DUTCH" marks, and found that opposer's "conjoint use" claim (the mark DUTCH and a windmill design mark) was not pleaded, was not tried by implied consent, and was not proven. Dutch Bros., LLC v. Denco Horeca Beheer B.V., Oppositions Nos. 91253828 and 91264452 (November 14, 2022) [not precedential] (Opinion by Judge Martha B. Allard).

After the rejection of opposer's family of marks and conjoint use claims, the case boiled down to a likelihood of confusion analysis between the two proposed marks and the word mark DUTCH BROS.  

The Board found the involved goods to be in part identical and otherwise related, as evidenced by third-party registrations and uses. The goods are sold in the same channels of trade to the same classes of consumers. The parties’ goods are both relatively inexpensive products that may be purchased on impulse rather than selected with careful consideration.

The Board found the DUTCH BROS mark, registered under Section 2(f), to be conceptually weak but commercially strong. Opposer began using the mark in 1992 and has over 400 locations, "making it the largest, privately held, drive-through coffee company in the country at the time of trial." It has spent substantial sums on promotion of the mark and has received extensive media coverage.

Finally, as to the marks, the Board found that literal element DUTCH4LIFE to be the dominant element in each of applicant's marks. The term "Anno 2018," which means "in the year 2018," is merely descriptive and is disclaimed, and therefore carries less weight than DUTCH4LIFE.

[W]e find that the parties’ marks are similar in sight and sound to the extent that they both share the DUTCH element. Although Applicant’s mark includes the “4LIFE” component, this component reinforces the element DUTCH. Because the Applicant’s marks are used with legally identical and related goods, there is no reason to conclude that the term DUTCH would have a different meaning or connotation and, indeed, neither party offers any evidence along this line. Accordingly, this factor weighs in favor of a likelihood of confusion.

And so, the Board sustained both oppositions.

Read comments and post your comment here.

TTABlogger comment: I've never been to Portland and never heard of Dutch Bros. coffee. So what?, you may ask.

Text Copyright John L. Welch 2022.