Friday, December 09, 2022

TTABlog Test: Is "SMALL WINS" Confusable with "BIG WIN" for Candy?

The USPTO refused to register the mark SMALL WINS for "sweets and candies, namely, gummies and soft candies," finding confusion likely with the registered mark BIG WIN for "candy." The goods are legally identical, and so the Board presumed that they travel in the same trade channels to the same classes of consumers. But what about the marks? How do you think this came out? In re Sugar Free Specialties, LLC, Serial No. 90706411 (December 7, 2022) [not precedential] (Opinion by Judge Jonathan Hudis).

There was no evidence to suggest that the cited mark is conceptually or commercially weak, and so it merited "the typical scope of protection afforded a mark registered on the Principal Register pursuant to Trademark Act Section 7(b), 15 U.S.C. § 1057(b)."

Comparing the marks, the Board observed that "while the terms WINS and WIN are highly similar, the terms SMALL and BIG appear and sound different." It noted, however, that the marks have "the same format, structure, and syntax." Moreover, the marks "have similar cadences and intonation," and so the Board found them to be "more similar than they are different in appearance and sound."

As to meaning and commercial impression, the Board found that WINS and WIN are the dominant elements in the respective marks, despite the fact that SMALL and BIG are the first words in the marks, because those words are "more common and less distinctive terms."

Applicant Sugar Free argued, inter alia, that "BIG WIN could mean large victory, but it could also mean pretentious victories, chief victories or magnanimous victories. . . . SMALL WINS could mean little victories, or it could mean petty victories, weak victories or inconsequential victories." The Board was unmoved, agreeing with Examining Attorney William Verhosek that consumers are more likely to attribute to the marks positive meanings and commercial attributes rather than "the negative connotations and marketing traits ascribed to them by Applicant." Moreover, applicant’s LITTLE WINS candies "could be thought of by consumers as a line extension of Registrant’s BIG WIN candies, offered by the same company."

The Board concluded that "SMALL and BIG, when combined to form a part of each of the marks SMALL WINS and BIG WIN, even though are antonyms, are insufficient to differentiate the marks in meaning and overall commercial impression."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I dissent. BTW, I find the "line extension" argument to be pretty meaningless. It seems like one could nearly always say that when the marks have a word in common.

Text Copyright John L. Welch 2022.

Thursday, December 08, 2022


Stepping into the 21st Century, the Boston Patent Law Association yesterday approved by an overwhelming vote, an amendment to its By-Laws to change the name of the Association to the BOSTON INTELLECTUAL PROPERTY LAW ASSOCIATION. Congratulations to President Keith Toms for making this a priority.

Read comments and post your comment here.

TTABlogger comment: Now, will the Association adopt an updated logo, like the New England Patriots did when they dropped the squatting colonial soldier in favor of the current Flying Elvis logo?

Text Copyright John L. Welch 2022.

TTAB Grants Petitions for Cancellation of Registrations for the Color Pink for Hip Joint Implants on the Ground of Functionality

In an exhaustive 107-page opinion, the Board granted petitions for cancellation of two registrations on the Supplemental Register for the color pink applied to the entire surface of hip joint implants, on the ground of Section 2(e)(5) functionality. This blog post will make no similarly exhaustive attempt to summarize the decision, but instead will repeat the conclusions along with some of the reasoning. C5 Medical Werks, LLC v. CeramTec GmbH, Cancellations Nos. 92058781 and 92058796 (December 6, 2022) [not precedential] (Opinion by Judge Jonathan Hudis).

The challenged registrations cover only the color pink, not the product configurations shown in the drawings above. Respondent’s expired patent, as well others of its patents, disclose the utilitarian advantages of adding Cr3+ ions to ZTA ceramic hip replacement component materials with respect to the toughness, hardness, stability and suppression of brittleness of the ZTA ceramic. As a natural byproduct, this addition of chromium oxide (chromia) in its ionic form turns the chemical compound pink

The advertising and public statements made by Respondent and its OEM customers on its behalf touted the utilitarian advantages of adding chromium oxide to Respondent’s ZTA ceramic compounds; some statements were made in conjunction with the comment that the addition turns the material pink.

As to the availability of alternative "designs" (i.e., colors), there was a dearth of relevant evidence, and so that factor was neutral. In view of the parties’ testimony that the use of chromium oxide either does not affect the cost of a ZTA ceramic or makes the product more expensive, "whether the addition of chromia (turning the product pink) results from a comparatively simple or inexpensive method of manufacture is also a neutral factor."

The Board concluded that the registered marks are de jure functional:

In sum, we find that the color pink (caused by the addition of chromia) of the compound used to make ceramic hip implant components, as shown in Respondent’s trademark registrations, is functional based on utilitarian considerations.

Read comments and post your comment here.

TTABlogger comment: Lots of technical discussion and expert testimony.

Text Copyright John L. Welch 2022.

Wednesday, December 07, 2022

TTABlog Test: Is CUSHION COMFORT for Footwear Confusable With DIAMOND CUSHION COMFORT for Socks?

The USPTO refused to register the mark CUSHION COMFORT, on the Supplemental Register, for footwear and various clothing items, but excluding socks, in view of the registered mark DIAMOND CUSHION COMFORT for socks [CUSHION COMFORT disclaimed]. Despite the exclusion, the goods are closely related, but what about the marks? Surely, CUSHION COMFORT is a descriptive and weak element in the cited mark, but it's the entirety of the proposed mark. How do you think this came out? In re Boot Royalty Company, L.P., Serial No. 88787993 (December 5, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman).

Analyzing the strength of the cited mark, the Board noted the lack of evidence regarding commercial strength. As to inherent strength, the Board unsurprisingly found the term CUSHION COMFORT to be descriptive of the goods. It then observed that "[w]here a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights."

The cited mark, as a whole, "suggests that Registrant’s socks provide high quality cushioning and comfort and, therefore, it is inherently distinctive and entitled to the breadth of protection normally accorded an inherently distinctive mark." 

Turning to the first DuPont factor, the Board deemed the word DIAMOND to be the dominant element of the cited mark. Both registrant's disclaimer of the term CUSHION COMFORT and the appearance of DIAMOND as the first word in the cited mark supported that finding.

Since CUSHION COMFORT is descriptive, "the scope of protection to which that portion of the mark in the cited registration is entitled is quite limited." As a result, the Board found that the addition of the word "Diamond" in the cited  mark "is sufficient to render Applicant’s mark CUSHION COMFORT distinguishable from DIAMOND CUSHION COMFORT. In other words, the strength or weakness of the mark in the cited registration is the most important factor." 

The Examining Attorney argued that purchasers and prospective purchasers will perceive applicant's mark as a shortened form of the cited mark. The Board pointed out that "there is no express rule that we must find marks similar where the Registrant’s mark encompasses Applicant’s entire mark although, under such circumstances, we often have found marks to be similar." However, here the common portion of the marks is a descriptive term that is entitled to only a narrow scope of protection. "Because of the descriptive nature of the term “Cushion Comfort,” customers and prospective customers will perceive DIAMOND as the source indicating part of Registrant’s mark and, therefore, distinguish it from Applicant’s CUSHION COMFORT mark."

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: This is the 13th Section 2(d) reversal of this year. By my count, there have been 175 affirmances.

Text Copyright John L. Welch 2022.

Tuesday, December 06, 2022

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

So far this year, the TTAB has affirmed 172 of the 184 Section 2(d) refusals on appeal (about 93.5%). Here are three decisions that came down recently. How do you think they came out? [Results in first comment].

In re Derrick Coleman, Serial No. 90231251 (December 2, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington) [Section 2(d) refusal of the mark GREAT LAKES DISTRIBUTION in slightly stylized form for "distribution services, namely, delivery of third party goods" [DISTRIBUTION disclaimed], in view of the registered marks (separately owned) GREAT LAKES FABRICS for "distributorship in the field of upholstery fabrics and textiles; distributorship in the field of upholstery supplies" [FABRICS disclaimed], GREAT LAKES PETROLEUM for “fuel delivery services; storage, distribution, and transportation of liquefied petroleum gas" [PETROLEUM disclaimed], GREAT LAKES TIRE for "distribution services, namely, delivery of new and retread tires" [TIRE disclaimed], and GREAT LAKES PIPE AND SUPPLY COMPANY & Design for "distribution services, namely, delivery of pipe, fittings, and valves used for the conveyance of liquid, gas, and electricity" [GREAT LAKES PIPE AND SUPPLY COMPANY disclaimed].

In re OEC, LLC, Serial Nos. 90274429 and 90350840 (December 2, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson) [Section 2(d) refusal of the mark HOLIDAY ROAD, in standard and in logo form (below), for "Online retail store services featuring bags, backpacks, blankets, holiday and seasonal decorations and ornaments, holiday lights, toys, baskets, cups" [HOLIDAY disclaimed], in view of the registered mark HOLIDAY LANE for "musical figures and figurines made of plastic,' "musical figures and figurines made of glass," "Christmas figures and figurines made of plastic," and "Christmas tree ornaments and decorations; Christmas garlands," and "electric Christmas tree lights," [HOLIDAY disclaimed].]

In re Knitpro International
, Serial No. 90064151 (November 30, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of THE MANDALA COLLECTION for "Buttons; Needles; Hooks and eyes; Sewing pins; all the foregoing not for use in making craft jewelry, and excluding knitting and crocheting yarns, cords, cordage, ropes, twines and hemp thread" [COLLECTION disclaimed], in view of the registered mark MANDALA for "“knitting and crocheting yarn, not for use in making craft jewelry."].


Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

Monday, December 05, 2022

Precedential No. 36: TTAB Sustains Section 2(c) Opposition to DANA DESIGN Due to Lack of Consent

The Board sustained an opposition to registration of the mark DANA DESIGN in the form shown below, for backpacks, hiking equipment, tents, and related goods, on the ground that the mark comprises the name of a living individual, Dana Gleason, without his consent and is therefore barred from registration by Section 2(c) of the Trademark Act. However, the Board rejected Opposer Mystery Ranch, Ltd.'s Section 2(a) false connection claim because the opposed mark js not a close approximation of Opposer's name or identity, nor does it point uniquely or unmistakably to Opposer. Mystery Ranch, Ltd. v. Terminal Moraine Inc. dba Moraine Sales, 2022 USPQ2d 1151 (TTAB 2022) [precedential] (Opinion by Judge Frances S. Wolfson).

Entitlement to a Statutory Cause of Action: In 1985, Dana Gleason founded Dana Design Ltd. to manufacture backpacks. In 1992, the company registered the mark DANA DESIGN and in 1997 it registered the silhouette design shown above. In 2000, the marks were assigned to another company, and the registrations were cancelled in 2016 and 2018, respectively. However, the evidence showed that DANA DESIGN-branded backpacks are currently being offered for sale on the secondary market. Opposer Mystery Ranch, co-owned by Dana Gleason. has been making and selling backpacks since 2000, but apparently not under the DANA DESIGN mark.

Applicant Terminal Moraine Inc. was formed in 2015 for the specific purpose of selling backpacks and tents under the (allegedly abandoned) DANA DESIGN word mark. In 2018, it applied to register the word-plus-design mark here opposed.

The Board observed that Mystery Ranch need not have a proprietary interest in a term for purposes of its Section 2(a) claim; "rather, a Section 2(a) plaintiff has standing by virtue of who the plaintiff is, that is, the plaintiff's personality or persona." Rejecting the argument that the company's interest coincided with that of Dana Gleason, the Board found that Mystery's Ranch's interest "is in protecting Dana Gleason's persona in order to preserve Opposer's right, as a direct competitor of Applicant, to use the DANA name in promoting backpacks, tents and related goods."

The Board concluded that Mystery Ranch "demonstrated its personal stake in preventing registration of a mark in the backpack field that allegedly appropriates the persona of one of its owners promoted in connection with the business, and a reasonable belief in resultant damage." Moreover, having established its entitlement under Section 2(a), Mystery Ranch may rely on any other ground set forth in Section 2 of the Lanham Act that negates the applicant's right to registration.

Section 2(a) - False Suggestion of a Connection: Mystery Ranch is not the legal successor to Dana Design, Ltd. or its successors. However, despite the transfer of the goodwill of the DANA DESIGN trademark, the Board found that Dana Gleason did not abandon "whatever rights he may have in his 'persona.'" Moreover, the evidence showed that, in the field of backpacks and hiking gear, "the name 'Dana' is recognized as a nickname for Dana Gleason."

However, the Board found that "although consumers associate Dana Gleason and Mystery Ranch ... they are not perceived as each other's alter ego. There is no merger of the two such that the 'Dana' in DANA DESIGN refers interchangeably to either entity." The Board therefore concluded that the opposed mark is not a "close approximation" of Mystery Ranch's name or identity, and this failure to meet the first element of the Section 2(a) test was alone enough to sink its Section 2(a) claim.

Furthermore, the opposed mark does not point "uniquely and unmistakably" to Mystery Ranch, another requirement of the Section 2(a) test. The DANA DESIGN mark may point to Mystery Ranch, Dana Gleason, the defunct Dana Design Ltd., or the assignees of that company's marks.

Section 2(c) - Lack of Consent: Applicant Terminal Moraine contended that Mystery Ranch has no right to invoke Section 2(c) on behalf of Dana Gleason. The Board observed that, in order to rely on Section 2(c), an entity "must assert that it has a 'cognizable or proprietary right' in the name, image, likeness or signature, such as through a 'linkage or relationship' with that particular individual sufficient to assert the third party’s rights." (Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1195 (TTAB 1994).  

In Nike, Inc. v. Palm Beach Crossfit, 116 USPQ2d 1025 (TTAB 2015), the Board held that an entity must prove a "privity relationship with the particular individual in order to demonstrate a cognizable right through its 'linkage or relationship' with the person."

The evidence established that Dana Gleason "is publicly connected with the business in which Applicant’s mark is intended for use; consumers would make an association between Gleason and Applicant’s mark." The Board therefore found that Dana Gleason "was in privity with Dana Design Ltd and is currently in privity with Mystery Ranch." Consequently, Mystery Ranch "has a cognizable right to assert Gleason’s rights under Section 2(c) to prevent the use of his first name DANA without his written consent.

Applicant Terminal Moraine argued that Dana Gleason sold his interest in the DANA DESIGN marks decades ago and the marks were abandoned. The Board pointed out, however, that "[i]t is one thing to permit another to use one's name as a mark, quite another to 'relinquish all ownership rights in one's name and agree to allow another to register one's name." Gleason's actions in setting up Mystery Ranch in 1999, honoring Dana Design Ltd.'s warranties, continuing to interface with the public as the designer of backpacks, and promoting himself as the owner and designer, demonstrated his intent to keep using his name.

And so, the Board sustained the Section 2(c) claim.

Read comments and post your comment here.

TTABlogger comment: Seems reasonable: just because you stop using your name as a trademark doesn't mean other are free to adopt is as a mark.

Text Copyright John L. Welch 2022.

Friday, December 02, 2022

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

So far this year, the TTAB has affirmed 162 of the 174 Section 2(d) refusals on appeal (about 93%). Here are three decisions that came down recently. How do you think they came out? [Results in first comment].

In re Biztug LLC, Serial No. 90166759 (November 23, 2022) [not precedential] (Opinion by Judge Michael B. Adlin) [Section 2(d) refusal of the mark BIZTUG for, inter alia, marketing services, in view of the registered mark TUGG (in standard form) for overlapping marketing services.]

In re Anton Anisimov, Serial No. 88149531 (November 29, 2022) [not precedential] (Opinion by Judge Karen Kuhlke) [Section 2(d) refusal of the mark INVOODOO for "Computer software consulting, not including game software; Software design and development, not including gaming software" in view of the registered mark VOODOO for "Designing and developing downloadable electronic game software"].

In re Bowery Farming Inc., Serial No. 88873491 (November 29, 2022) [not precedential] (Opinion by Judge David K. Heasley). [Section 2(d) refusal of THE MODERN FARMING COMPANY for "[f]resh produce, namely, fresh vegetables, fruits, and unprocessed grains" (FARMING and COMPANY disclaimed), in view of the registered mark MODERN FARMS for processed mushrooms, and for fresh, raw, and unprocessed mushrooms (FARMS disclaimed].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.

Thursday, December 01, 2022

"TACO TUESDAY" Fails to Function as a Trademark for Beer, Says TTAB

The Board upheld a refusal to register the proposed mark TACO TUESDAY for beer, finding that the term fails to function as a source indicator under Sections 1, 2 and 45 of the Trademark Act. Applicant Monday Night Ventures unsuccessfully argued that the refusal was "illogical and incongruous" because TACO TUESDAY "is not informational at all as it relates to the goods in the application" and the use of the term by restaurants in connection with the sale of tacos on Tuesday is irrelevant. In re Monday Night Ventures LLC, Serial No. 88817107, [not precedential] (Opinion by Judge Cynthia C. Lynch).

Examining Attorney Ashley Albano's supporting evidence was "voluminous" and fell into two general categories: first, evidence reflecting general use of the phrase "Taco Tuesday to refer to a regular Tuesday evening event incorporating tacos and drinks; and second, use of "Taco Tuesday" on or in connection with beer: for example, North Country Brewing Company's "Taco Tuesday" Brown Ale, and Shades Brewing's "Taco Tuesday" Sour "American-Style Ale."

The evidence makes clear that “Taco Tuesday” is a very commonplace term that refers to having tacos and drinks on that particular day of the week. See Texas With Love, 2020 USPQ2d 11290, at *3 (“It is clear from how the term is used by multiple third parties that [the term] merely conveys a well-recognized concept or sentiment.”). The record also shows that “Taco Tuesdays” commonly involve beer consumed along with tacos, and “Taco Tuesday” events often feature beer specials. “[T]he marketplace is awash” in use of the term for events and specials including beer. See D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d at 1716.

Noting that applicant's own website promotes its beer as "the ultimate pairing for tacos," the Board found that consumers would perceive TACO TUESDAY "as an informational indication that the beer is suitable or intended for drinking at such 'Taco Tuesday' events."

Although Applicant provided a menu specimen and evidence of TACO TUESDAY on its cans of beer, showing use in a non-informational manner, we remain unconvinced that the term actually functions as a mark because of the environment in which it is perceived by consumers.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: I'm going to have to disagree with the Board on this one.

Text Copyright John L. Welch 2022.

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."

Read comments and post your comment here.

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.