Thursday, February 06, 2025

TTAB Finds MENTCHEES Generic for .... Guess What?

The Board sustained on opposition to registration of the proposed mark MENTCHEES "for Toy figures; Modeled plastic toy figurines; Molded toy figures," on the ground of genericness. Alternatively, the Board found MENTCHEES to be merely descriptive of the goods and lacking in acquired distinctiveness. Chazak Kinder Inc. v. Mitzvah Kinder, Inc., Opposition No. 91272685 (January 28, 2025) [not precedential] (Opinion by Judge Angela Lykos)

The determination of the issue of genericness requires a two-step inquiry as set forth by the CAFC in Marvin Ginn: "First, what is the genus of goods or services at issue? Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services?"

The Board found the genus to be the identification, "Toy figures; Modeled plastic toy figurines; Molded toy figures," noting that this is "sufficiently broad to encompass the subgenus or narrower category of toy figures, modeled plastic toy figurines, and molded toy figures dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles." See, e.g.In re Empire Tech, Dev. LLC, 123 USPQ2d 1544 (TTAB 2017) (COFFEE FLOUR held generic for a type of flour made from coffee cherry skins, pulp, and pectin).

The Board next found the relevant public to be comprised of ordinary consumers who purchase toy figures, including those "seeking toy figurines dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles."

The question, then, was "whether the designation MENTCHEES is understood by the relevant purchasing public as primarily referring to toy figures, modeled plastic toy figurines, molded toy figures dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles."

There were no English or Yiddish dictionary definitions of MENTCHEES, or its phonetic equivalent, in the record. However, third-party websites of retailers such as Walmart, Eichlers, Judaica Plaza, Toys4You, Judaica Place and Binyan Blocks showed "use of the term 'mentchees,' or the phonetic equivalent thereof, as a designation for the subcategory of toy figures, modeled plastic toy figurines, molded toy figures dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles."

[T]he evidence shows that “mentchee” or its phonetic equivalent is now part of the U.S. English vernacular to denote a subtype of “toy figure; modeled plastic toy figurines; molded toy figure.” The fact that some of the usage is in the singular as opposed to the plural form of the word that Applicant seeks to register is of no significance.

And so, the Board concluded that the relevant consuming public "primarily views the proposed mark MENTCHEES as a generic designation for 'Toy figures; Modeled plastic toy figurines; Molded toy figures' which includes the subgenus of such items dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles."

For completeness, the Board considered the alternative ground of mere descriptiveness and lack of secondary meaning. [The genericness issue was not raised in the pleadings but was tried by implied consent]. The Board wasted no time in finding the term to be "highly descriptive" of the goods.

Applicant submitted no Section 2(f) evidence, but argued that Section 2(f) "does not apply because its application was not filed under this basis." The Board was unmoved. "As a legal matter, merely descriptive marks can only be registered on the Principal Register upon a showing of acquired distinctiveness."

The evidence discussed above showing third-party use of the term “mentchees” or its phonetic equivalent to refer to Applicant’s goods satisfies Opposer’s initial burden of showing that Applicant has not made substantially exclusive use of its mark. The burden therefore shifts to Applicant to come forward with evidence of acquired distinctiveness. Because Applicant submitted no evidence to support a finding of acquired distinctiveness, we are compelled to sustain Opposer’s alternate claim that Applicant’s mark is merely descriptive and lacks acquired distinctiveness.

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TTABlogger comment Suppose a term is generic within one small geographic area, say South Boston. Is that enough for a finding of genericness?

Text Copyright John L. Welch 2025.

Wednesday, February 05, 2025

Three Recent Inter Partes Proceedings: The Bigger They Are ....

Here for your consideration are three recent Board decisions in David v. Goliath inter partes proceedings. David hung in there and won each time. Are there any lessonse to be drawn?

Monster Energy Company v. Country Innovation & Supply LLC, Opposition No. 91270179 (January 30, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor) [The Board dismissed this Section 2(d) opposition to registration of the mark BEAST HACK (standard characters) and the two word-and-design marks shown below, for hats, clothing, baseball and softball training aids, and hand grips, in view of the mark UNLEASH THE BEAST! and several other BEAST-FORMATIVE marks for apparel and accessories. The Board found the term "BEAST" to be "both conceptually and commercially weak in the fields of apparel and sports/fitness" and the marks dissimilar in appearance, sound, connotation and commercial impression.]

Monster Energy Company v. Howard Vernick and Coulter Ventures, LLC d/b/a Rogue Fitness, Cancellation No. 92072010 (January 30, 2025) [not precedential] (Opinion by Judge Cynthia C. Lynch) [The Board denied Monster Energy's petition for cancellation of a 2013 registration for the mark shown below, for "Athletic training services; Consulting services in the fields of fitness and exercise; Personal fitness training services and consultancy; Physical fitness training of individuals and groups; Training services in the field of sport specific movement." Monster claimed that the mark had been abandoned, but the Board found that the mark "remained in bona fide use in the ordinary course of Vernick’s trade during the alleged period of nonuse." Moreover, the Board noted that "even if Vernick were deemed to have discontinued use during the alleged period of nonuse, we would find that he retained the requisite intent to resume use to avoid abandonment."]

Audemars Piguet Holding S.A. v. Tenegroup Ltd, Opposition No. 91244316 (January 31, 2025) [not precedential] (Opinion by Judge Wendy B. Cohen) [The Board dismissed this six-year-old opposition to registration of the mark OAK AND LUNA for jewelry and retail clothing store services. Opposer Audemars Piquet claimed likelihood of confusion with its registered mark ROYAL OAK for watches and clocks, likelihood of dilution, and fraud. The Board construed the fraud claim as one for nonuse with respect to some of applicant's goods and services, and granted that nonuse claim. As to the likelihood of confusion claim, the dissimilarity of the marks was dispositive. As for dilution, the Board found that Audemars failed to prove its mark famous even for its Section 2(d) claim, and so it could not meet the more stringent test for fame vis-a-vis dilution.]

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TTABlogger comment: How many defendants have the wherewithal to withstand an attack by Goliath? The poorest defendants may get pro bono assistance. But what about the smaller companies that can't qualify for such assistance?

Text Copyright John L. Welch 2025.

Tuesday, February 04, 2025

Porn Star Name GIGI DIOR Dilutes-by-Blurring Famous DIOR Mark

The Board sustained an opposition to registration of the mark GIGI DIOR for “Entertainment services, namely, personal appearances by a porn star; Entertainment services, namely, providing a web site featuring non-downloadable adult-themed photographs and videos," finding that the proposed mark is likely to dilute by blurring the famous mark DIOR for clothing, jewelry and bags. The Board declined to reach opposer's likelihood of confusion or dilution-by-tarnishment claims. This blog post will attempt to hit the highlights. Christian Dior Couture, S.A. v. Gramkey Investments, Modeling and Consulting, Opposition No. 91281244 (January 31, 2025) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

The name GIGI DIOR identifies adult entertainment actress Stephanie Hodge, the President and sole owner of Applicant Gramkey Investments. 

Opposer, in order to prove its dilution-by-blurring claim, was required to show that: (1) it owns a famous mark that is distinctive; (2) Applicant is using a mark in commerce that allegedly dilutes Opposer’s famous mark; (3) Applicant’s use of its mark began after Opposer’s became famous; and (4) Applicant’s use of its mark is likely to cause dilution by blurring.

Opposer substantial evidence established the fame of the DIOR mark. Opposer owns several decades-old registrations for DIOR. It demonstrated "decades of consistently large numbers of DIOR goods sold each year and high revenues based on those sales. Opposer documented "decades of promotional efforts through multiple outlets and featuring celebrities and high profile events" It has received media attention via articles describing its promotional relationships with celebrities. And opposer was "recently recognized for its brand strength by a third-party brand valuation study." The Board concluded that "DIOR is a household name, and for the purposes of dilution, a famous mark."

Applicant Gramkey claimed that the word DIOR is widely used, including in the adult entertainment industry, but it provided "zero evidence tying the Internet materials in the record to views by the public," and so the Board viewed those uses al "minor." "In short, while Applicant has collected many instances of webpages featuring the term 'Dior,' Applicant has failed to demonstrate the impact of any one of these uses on the public perception of Opposer’s famous mark DIOR."

Gramkey further contended that Opposer failed to show that "the DIOR mark is widely recognized by the general consuming public rather than the narrow niche of wealthy couture consumers." The Board was unmoved: "DIOR goods do not have to be purchased by the general public for the DIOR mark to be recognized by the general public. The duration, extent, and geographic reach of the advertising and publicity of Opposer’s DIOR mark is exceptional, and has resulted in the DIOR mark remaining in the eye of the general public for decades."

The Board then considered the similarity of the marks, i.e., whether applicant’s GIGI DIOR mark "is sufficiently similar to Opposer’s famous DIOR mark as to 'trigger consumers to conjure up' Opposer’s mark." It found that "DIOR connotes Opposer’s DIOR, and its founder, the fashion designer Christian Dior. While the prefatory term GIGI makes the marks different, it does not change the connotation of DIOR or the strong similarity created by Applicant adopting Opposer’s famous mark in its entirety."

There was no evidence of actual association of the GIGI DIOR with opposer. Applicant admitted promoting GIGI DIOR with adult-themed photographs and videos that depict one or more of the DIOR marks. [see picture above]. However, there was no evidence of the extent of such use, and so the Board deemed this factor neutral.

Conclusion: "There is no question that DIOR is a famous mark, that DIOR goods are widely used and recognized by a large percentage of the United States population, and that Opposer’s DIOR mark is distinctive. This was the case prior to Applicant’s proven date of first use of its mark. This impairs the distinctiveness of Opposer’s previously registered mark. In view thereof, we find dilution by blurring."

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TTABlogger comment: How about "Versace Dior?" Dissimilar or double-dilution?

Text Copyright John L. Welch 2025.

Monday, February 03, 2025

TTAB Posts February 2025 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled eleven (11) oral hearings for the month of February 2025. All will be held virtually, except for the February 25th hearing, which will be "conducted in a hybrid format, allowing for both in-person and virtual participation." The in-person portion will be held at the USPTO's Madison East Building in Alexandria, Virginia. Briefs and other papers for each case may be found at TTABVUE via the links provided.

February 5, 2025 - 11 AM [Virtual]: Kiss Nail Products, Inc. v. Thank Nature LLC, Opposition No. 91257144 [Opposition to registration of the mark ECOKISS for "Body butter; Cosmetics; Facial scrubs; Facial washes; Hair conditioner; Hair shampoo; Moisturizing creams; Bar soap; Cosmetic mud masks; Facial moisturizers; all of the foregoing made with natural and/or environmentally friendly ingredients," on the ground of likelihood of confusion with the registered mark KISS and various KISS-formative marks, for cosmetics, skincare, and other beauty and personal care products].

February 11, 2025 - 11 AM [Virtual]: Texas Department of Transportation v. El T Mexican Restaurants, Inc., Opposition No. 91264923 [Section 2(d) opposition to registration of DON'T MESS WITH TEX-MEX for restaurant services in view of the registered mark DON'T MESS WITH TEXAS for various goods and services (not including restaurant services), which mark has been licensed to restaurants].

February 12, 2025 - 2 PM [Virtual]: Mobilemoney, Inc. v. Reverse ATM LLC, Opposition No. 91284555 [Opposition to registration of REVERSE ATM for "Credit card and debit card services, namely, pre-paid purchase card services in the nature of processing electronic financial transactions by issuing and reloading stored value cards by converting money into pre-paid debit cards and gift card provided through individual kiosks" [ATM disclaimed] on the ground that the proposed mark is generic or, alternatively, merely descriptive and lacking in acquired distinctiveness.]"

February 13, 2025 - 1 PM [Virtual]: Graham Bonnet v. James Richard Waldo, Opposition No. 91281101 [Opposition to registration of the mark ALCATRAZZ for "Entertainment services, namely, live performances by a musical band; musical recordings; production of sound recording and music sound recordings" on the grounds of fraud and nonownership.]

February 19, 2025 - 11 AM [Virtual]: Fuente Marketing Ltd. v. ShenZhen Woody Vapes Technology Co., Ltd., Opposition No. 91282965 [Section 2(d) opposition to DRAG X for, inter alia, cigarettes; Lighters for smokers, in view of the registered mark X for cigars, cigar cutters, ashtrays, and lighters.]

February 20, 2025 - 11:30 AM [Virtual]: In re ThreatLocker, Inc., Serial No. 97156251 [Section 2(e)(1) mere descriptiveness refusal (including lack of acquired distinctiveness) of RINGFENCING for, inter alia, "Downloadable anti-piracy software; Downloadable cloud-based software for controlling application access to data; Downloadable computer software for authorising access to data bases; Downloadable computer software for controlling and managing access server applications; Computer hardware, namely, firewalls; Downloadable computer software for the creation of firewalls, "

February 20, 2025 - 12 PM [Virtual]: In re ThreatLocker, Inc., Serial No. 97214203 [Section 2(e)(1) mere descriptiveness refusal  (including lack of acquired distinctiveness) of RINGFENCING for "Software as a service (SAAS) services featuring software for cyber security, namely, software that, disables the access of user defined programs to other programs in a user device; Software as a service (SAAS) services featuring software in the field of cyber security, namely, software that, disables the access of user defined programs to other programs in a user device"

February 20, 2025 - 1 PM [Virtual]: In re Saint George Atelier LLC, Serial No. 98160447 [Section 2(d) refusal of SAINT GEORGE ATELIER for "Backpacks, book bags, sports bags, bum bags, wallets and handbags" in view of the registered mark ST. GEORGE & Design for "[c]lothing, namely, t-shirts, tank tops, sweatshirts, and sweatpants," and requirement that applicant disclaim ATELIER.]

February 20, 2025 - 1:30 PM [Virtual]: In re Saint George Atelier LLC, Serial No. 98044168 [Section 2(d) refusal of SAINT GEORGE ATELIER for "Clothing, namely, shirts, pants, tee shirts, sweaters, sweatshirts, sweatpants, socks, shoes, sneakers, boots, sandals, jackets, coats, vests, hats and caps," and for "on-line retail services featuring clothing," in view of the registered mark ST. GEORGE & Design for "[c]lothing, namely, t-shirts, tank tops, sweatshirts, and sweatpants," and requirement that applicant disclaim ATELIER.]

February 25, 2025 - 10 AM [Virtual in part]: SawStop, LLC v. Felder KG, Opposition No. 91255905 [Section 2(d) opposition to PCS for "Stationary woodworking systems comprising circular saws, band saws, table saws, panel saws, electric sanders, spindle motors, shapers, drilling machines, and safety devices attended thereto; stationary sliding table saw systems comprising band saws, table saws, panel saws, electric sanders, spindle motors, shapers, drilling machines, and safety devices attended thereto, all of the foregoing for use in woodworking and for cutting off finished plastics" in view of the identical mark for table saws and table saws with active injury mitigation technology.]


February 27, 2025 - 11 AM [Virtual]: Chris Galati v. Herer Media & Publishing, Inc., Oppositions Nos. 91264518, 91264520, 91265414, and 91271537 [Consolidated opposition to registration of the mark JACK HERER for pipes for smoking, t-shirts, and online and retail store services featuring a variety of consumer articles, on numerous grounds, including nonownership, fraud, likelihood of confusion, likelihood of dilution, mere descriptiveness, deceptive misdescriptiveness, and lack of bona fide intent].

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TTABlog comment:  Any predictions? 

Text Copyright John L. Welch 2025.

Friday, January 31, 2025

TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?

The TTAB affirmance rate for Section 2(d) appeals last year fell just under 90%. Here are three recent Board decisions, at least one of which reversed the refusal. How do you think they came out? [Answer in first comment].

In re Life At Home US Corp., Serial No. 97268381 (January 24, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of LAH KITCHEN for "Pizza cutters, non-electric; Spreader in the nature of a small knife for butter or cheese; Table cutlery; Butter knives; Fruit knives; Kitchen knives; Non-electric can openers; Non-electric garlic choppers" [KITCHEN disclaimed] in view of the registered mark LAH. WARM for "Drapery; Quilts; Baby blankets; Bath linen, except clothing; Bed linen; Lap blankets; Mattress covers; Pet blankets; Pillow covers; Shower curtains of textile or plastic; Sleeping bags; Table cloth of textile; Tablecloths, not of paper; Textile fabrics for home and commercial interiors; Textile place mats; Textile wall hangings; Towels; Unfitted fabric furniture covers; Upholstery fabrics; Woollen blankets."]

In re SCU Community Foundation, Serial No. 97848911 (January 24, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.). [Section 2(d) refusal of CLIMB COMMUNITY FOUNDATION for "charitable foundation services, namely, providing financial assistance for programs and services of others" [COMMUNITY FOUNDATION disclaimed] in view of the registered marks KEEP CLIMBING FOUNDATION, KEEP CLIMBING, and the mark shown below [“FOUNDATION” disclaimed)] for, inter alia, "Charitable fundraising services."]

In re Clearview Systems, LLC, Serial No. 98288775 (January 27, 2025) [not precedential] (Opinion by Judge Jennifer L. Elgin). [Section 2(d) refusal of FITSYNC for "Athletic footwear; Athletic shoes" in view of the identical mark registered for, inter alia, "Computer software in the field of fitness consultation capable of communicating with portable devices such as hand held communication devices to design individualized fitness programs, recommend vitamins and nutritional supplements, and record exercise routines."]

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2025.

Thursday, January 30, 2025

TTAB Reverses Section 2(d) Refusal of "12 & Design" for Cosmetics Due to Third-Party Registration Evidence

The Board deep-sixed a Section 2(d) refusal to regsiter the mark shown below for "Non-medicated skin care preparations" and for on-line retail store services featuring cosmetics, finding confusion not likely with the registered mark TWELVE COSMETICS for “cosmetics; private label cosmetics" [COSMETICS disclaimed]. In re Metabeauty, Inc., Serial No. 97492557 (January 28, 2025) [not precedential] (Opinion by Judge Karen S. Kuhlke).

The Goods and Services: Tird-party websites showed Applicant MetaBeauty’s goods and services, and Registrant’s goods at issue, marketed and sold under a single trademark in the same trade channels and offered to the same classes of consumers.

Weakness of the Number 12: MetaBeauty submitted 10 probative third-party registrations for marks that contain 12 or TWELVE for cosmetics, skin care preparations, or hair care preparations [e.g., TWELVE SPRINGS, 12S, TWELVE12BEAUTE, 12Months Soaps]. "We find these registrations probative of conceptual weakness of the number 12 and TWELVE. Spireon, 71 F.4th at 1363-4 (third-party composite marks relevant to show common segment weak)."

The number 12 or TWELVE suggests a form of measurement: days, months, hours, amount. These various marks with the element 12 or TWELVE coexist for the same or similar goods with varying levels of other elements to distinguish them. Even if we do not count the mark in Chinese characters [in one of the marks] (which creates further distinction), the remaining nine marks tend to show the common element 12, or TWELVE, to be conceptually weak, so we accord it a restricted scope of protection. This factor weighs against likely confusion.

The Marks:Unsurprisingly, the Board found the number 12 to be "more memorable than the green colored curved octagon because it is the name by which consumers will call for the goods." Nonetheless, the Board concluded that "[t]aking the marks in their entireties, . . . the dissimilarities are sufficient to distinguish the marks given the weak nature of the numeral 12 and the word TWELVE in connection with cosmetics, including skin lotion."

Conclusion: And so, the Board reversed the refusal.

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TTABlogger comment: At first blush, I thought this would be affirmed, but on second blush, not so much.

Text Copyright John L. Welch 2025.

Wednesday, January 29, 2025

TTAB Chief Judge Gerard F. Rogers Retires; Thomas V. Shaw Appointed Acting Chief Judge

Judge Thomas V. Shaw was appointed to the position of Acting Chief Judge of the TTAB in December 2024. He had been deemed Deputy Chief Judge in August of 2024. Judge Shaw succeeds Gerard F. Rogers, who served as Chief Judge since November 2010 after a one-year stint as Acting Chief Judge.

Before taking on responsibility as Deputy Chief Judge and Acting Chief Judge, he spent 13 years serving as one of the TTAB’s Administrative Trademark Judges, sitting on panels to hear appeal and trial cases, and authoring final decisions.

Judge Shaw began his career at the USPTO as a Trademark Examining Attorney, later serving as a Senior Attorney and a Managing Attorney. He also served as an Associate Solicitor in the Office of the Solicitor before joining the TTAB as an Administrative Trademark Judge.

A graduate of the George Washington University, Judge Shaw earned his Juris Doctor degree from the University of Miami School of Law.

Judge Rogers began his career at the USPTO in December 1987 as a Trademark Examining Attorney, served as a staff attorney for the Assistant Commissioner for Trademarks, and joined the TTAB as an Interlocutory Attorney in 1992. He was named a judge of the TTAB in 1999.

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TTABlogger comment: On a personal note,I wish all the best for ex-Judge Rogers. Always approachable and friendly, and a highly capable judge and admininstrator.

Text Copyright John L. Welch 2025.

Tuesday, January 28, 2025

TTAB Reverses USPTO's Section 2(d) Refusal of PBE AWARDS & Design for Marketing Award Services

The Board tossed out the USPTO's refusal to register the mark PBE AWARDS & Design (shown first below) for "Educational services, namely, providing incentives to students to demonstrate excellence in the field of marketing and product packaging design through the issuance of awards; Providing recognition and incentives by the way of awards and contests to demonstrate excellence in the field of marketing and product packaging design" [AWARDS disclaimed], finding confusion unlikely with the registered mark PBE PROJECT BEAUTY EXPO (Stylized), shown second below, for "Providing a forum for companies to showcase, display, demonstrate and promote new and innovative ideas, products and services in the convention/meeting management arena" [PROJECT BEAUTY EXPO disclaimed]. In re The Spearhead Group, Inc., Serial No. 97891908 (January 24, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).

The Marks: The Board found the marks to be "more dissimilar than similar when considered in their entireties." The Examining Attorney contended that the initialism PBE dominates both marks, but the Board disagreed.

We find that a consumer with a general rather than specific impression of the cited mark is just as likely, if not more likely, to remember the words PROJECT BEAUTY EXPO than just the background letters PBE alone. Accordingly, in the required comparison of the marks in their entireties, we will give as much weight to the words PROJECT BEAUTY EXPO as to their abbreviation PBE.

As to appearance, "the marks share the letters PBE, but otherwise bear little or no resemblance to one another, even assuming that Applicant’s mark is depicted in the pink, white, and gray colors shown and claimed in the cited registration." As to sound, "the marks will sound much more dissimilar than similar if they are verbalized in their entireties." As to meaning, it is unlikely that a consumer would understand the letters PBE in Applicant’s mark to mean PROJECT BEAUTY EXPO.

The Services: The Board began by noting that the services in the cited registration are limited to "the convention/meeting management arena" while the two services identified in the subject application are limited to "the field of marketing and product design." "[T]here is nothing on the faces of the identifications to suggest that the services are intrinsically related."

The Internet webpages cited by the Examining Attorney did not show the offering of services that fall within both sets of identifications. "[T]he Examining Attorney repeatedly claims that these websites show that the same businesses provide awards for excellence in marketing and a forum to showcase new marketing ideas. “That is not the issue.” OSF Healthcare Servs., 2023 WL 6140427, at *12." The Board pointed out that it must determine whether the services recited in the application are related to the specific services of the registration.

The Examining Attorney effectively broadened and generalized [those] identification[s] of services and submitted evidence addressed to the broader identification[s], not the actual one[s].” Id. The Examining Attorney provided no evidence that the types of services identified in the application and in the cited registration originate from the same source, or would be perceived as originating from the same source under the same mark.

Conclusion: And so, the Board reversed the refusal.

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TTABlogger comment: I think that if applicant's mark were in the same pink and gray colors as the cited mark (under the "nose-of-wax" approach), the first DuPont factor might favor the USPTO. 

Text Copyright John L. Welch 2025.

Monday, January 27, 2025

E.D. Va. Reverses TTAB's Precedential Decision in HME Opposition, Orders USPTO to Issue Registration

In a precedential decision in September 2023, the Board sustained an opposition to registration of the mark HME in the stylized form shown below, for various types of pipes and other building products, finding confusion likely with opposer's mark KME for overlapping goods. [TTABlogged here]. Applicant Zhejiang Hailiang Co., Ltd. then commenced a civil action in the U.S. District Court for the Eastern District of Virginia, for review of the Board's decision. On January 10, 2025, the District Court reversed the TTAB's ruling and ordered the USPTO to issue a registration for the opposed trademark. Zhejiang Hailiang Co., Ltd. v. KME Germany GmbH, 1-23-cv-1606 (LMB/LRV) (E.D. Va. Jan. 10, 2025).

The district court granted Zhejiang's motion for summary judgment because "among other things, the Court finds that in its opposition to plaintiff's registration of the mark at issue, the defendant engaged in inequitable conduct before the Trademark Trial and Appeal Board."

On January 24, 2025, Zhejiang filed a motion for an award of attorney's fees (pdf here). According to the motion brief, KME's witnesses gave false testimony before the Board, concealing the fact that KME "approved and helped develop the HME name."

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TTABlogger comment: So now what's the use/impact of the precedential Board decision?

Text Copyright John L. Welch 2025.

Friday, January 24, 2025

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

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal about 95% of the time just by looking at the marks and the goods/services. Of course, if you just said "affirmed" you'd be right about 89.5% of the time. Anyway, here are three Board decisions issued two days ago. No hints this time. How do you think they came out? [Answer in first comment].

In re Eastside Food Cooperative, Serial No. 97253512 (January 22, 2025) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of the mark EASTSIDE FOOD CO-OP & Design for "retail grocery store services, namely, cooperative grocery store services provided by a food distribution outlet organized as a cooperative owned and governed by its members" [FOOD CO-OP disclaimed] in view of the registered mark EASTSIDE MARKETPLACE for "supermarkets" [MARKETPLACE disclaimed].]

In re ADCO Global, Inc., Serial No. 97452377 (January 22, 2025) [not precedential] (Opinion by Judge David K. Heasley) [Section 2(d) refusal of the mark SOIL SWITCH for "plant growth nutrients" [SOIL disclaimed] in view of the registered mark GREENSWITCH for, inter alia, "fertilizers, liquid fertilizers; phosphates; biostimulants being plant growth stimulants for use on plants or in soils for the regulation of physiological processes in plants, including growth, for crop improvement."]

In re Unanimous Media LLC, Serial No. 97529322 (January 22, 2025) [not precedential] (Opinion by Judge Karen S. Kuhlke). [Section 2(d) refusal of the mark UNANIMOUS PUBLISHING & Design for "Book publishing; Publishing of books, e-books and audio books" [PUBLISHING disclaimed] in view of the registered mark UNANIMOUS GAMES for, inter alia, "development, creation, production and post-production services of multimedia entertainment content” and for e-sport gaming services. [GAMES disclaimed]].

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

Text Copyright John L. Welch 2025.