Friday, October 15, 2021

TTAB Publishes Form for Nominating a Decision for Designation as "Precedential"

A number of trademark practitioners believe that the TTAB should be issuing more precedential decisions.The Board has recently made available a form for nominating a Board decision as precedential. (link here).

This submission form allows nomination of an issued decision of the Board for designation as precedential. A nomination may be anonymous. Please provide all required identifying information for any nominated decision, and set forth a brief description of the reasons for the requested designation. A person nominating a decision may also enter a name and email address. The Board may use this information to contact the nominating person if there are questions regarding the nomination.

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Text Copyright John L. Welch 2021.

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

The TTAB (Tee-Tee-Ā-Bee) recently decided the appeals from the three Section 2(d) refusals described below. No hints today. How do you think they turned out?  [Answer in first comment].

In re Quantgene Inc., Serial No. 88720359 (October 12, 2021) [not precedential] (Opinion by Judge Robert H. Coggins) [Section 2(d) refusal of QUANTGENE for medical diagnostic testing for cancer and other diseases and disorders, in view of the registered mark QUANTIGEN for "consulting services in the fields of biotechnology, pharmaceutical research and development, clinical laboratory testing, clinical diagnostics, and pharmacogenetics."]

In re Destino Xcaret S.A.P.I. de C.V., Serial No. 88622747 (October 13, 2021) [not precedential] (Opinion by Judge Elizabeth A. Dunn) [Section 2(d) refusal of the mark shown below for, inter alia, "hotel accommodation services" [HOTEL XCARET MEXICO disclaimed] in view of the registered mark HOTELXCARETRESORT.COM for "making hotel and temporary lodging reservations for individuals and groups via a global computer network lists" [on the Supplemental Register].]

In re Alderwood Surgical Center, Serial No. 88427822 (October 12, 2021) [not precedential] (Opinion by Judge Christopher Larkin) [Section 2(d) refusal of ZOMBIE BBL for "Surgery; Cosmetic surgery services; Cosmetic and plastic surgery; Plastic surgery; Plastic surgery services" [BBL disclaimed as an abbreviation for "Brazilian Butt Lift"] in view of the registered marks ZOMBIE BRACES and ZOMBIE TEETH for "dentist services" (BRACES and TEETH disclaimed).

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2021.

Thursday, October 14, 2021

CAFC Vacates and Remands TTAB's IBKÜL Decision: The KÜHL Registration It Relied On Was Cancelled

In its decision (here) finding likelihood of confusion between the mark IBKÜL (stylized) and the mark KÜHL, both for clothing items, the Board considered only one of four of Alfwear's registered marks. [TTABlogged here]. After the Board's decision, and while this appeal was pending, "the KÜHL mark was cancelled" (sic!) because Alfwear failed to file a Section 8 Declaration of Use. The parties agreed that this development "necessarily impacts the Board's finding." And so, the CAFC vacated and remanded "for the Board to reconsider its findings in light of the cancellation." IBKUL UBROT LTD. v. Alfwear, Inc., Appeal No. 2020-2120 (Fed. Cir. October 13, 2021).

Note that although the CAFC said "the KÜHL mark was cancelled," we all know that registrations are cancelled, not marks. It appears that Alfwear retains common law rights in that mark. Its other pleaded registrations are for the marks KUUL, KUHL, and KÜHL (in stylized form), all for various clothing items.

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TTABlogger comment: Will the Board allow more briefing? Oral argument?

Text Copyright John L. Welch 2021.

Wednesday, October 13, 2021

CAFC Upholds TTAB: GM's "SUPER CRUISE" Driving System Not Related to "SUPERCRUISE" Computer Components for Section 2(d) Purposes

In a non-precedential ruling, the CAFC upheld the TTAB's decision (here) denying a petition for cancellation of a General Motors registration for the mark SUPER CRUISE for "computer software, cameras, ultrasonic sensors, global positioning system and radar object detectors fro the semi-autonomous driving of motor vehicles." The Board concluded that Petitioner Micro Mobio failed to prove a likelihood of confusion with its registered mark SUPERCRUISE for "“Semiconductor devices, computer hardware, and computer software for use in design, simulation and control of electronic circuits and antenna, receiving and transmitting signals, and modulation, demodulation and media access control in voice and data communications." Appellant Micro Mobio raised seven issue in its appeal, but the court found that none of them had merit. Micro Mobio Corporation v. General Motors LLC, Apeal No. 2021-1591 (Fed. Cir. October 12, 2021) [not precedential].

Micro Mobio argued that the Board should have found its mark SUPERCRUISE arbitrary or fanciful, rather than highly suggestive. The Board found that the mark indicated that the goods "facilitate the extremely quick and smooth receipt and transfer of signals." Micro Mobio insisted that General Motors should have been stuck with the definition of cruise that it "used in its registration" (sic): "to sail from place to place, as for pleasure or in search of something." The court was unmoved. A finding of suggestiveness can be based on any of several definitions of a term, and GM was not prohibited from advocating a different one from that stated in its application.

As to the goods, the court found no legal error in the Board's test for determining whether the involved goods are related: goods are related if the are likely to be encountered by the same purchasers who would be led to believe that the goods came from the same source.

Micro Mobio argued that the Board made a factual error in not finding the goods related, since GM's product contains and depends on computer hardware and software. That is the wrong question. The correct question is stated in the paragraph above. Furthermore, Micro Mobio was wrong in claiming the goods are complementary simply because GM's SUPER CRUISE system uses goods like those of Micro Mobio in order to function.


Since the involve goods are not identical, the Board was correct in not presuming that they travel in the same trade channels. Rather, the Board found the goods to be quite dissimilar. GM's products are sold through their own dealers, while Micro Mobio's are sold to original equipment manufacturers or individual engineers in the wireless and mobile phone industry. Thus the channel of trade and classes of consumers do not overlap.

The court found no error in the Board's conclusion that there is no likelihood of post-sale confusion, since Micro Mobio's goods are not auto parts, and there was no evidence that Micro Mobio sells system parts that would be used to repair or service vehicles featuring GM's SUPER CRUISE system. 

Finally, Micro Mobius claimed that the Board was mistaken in finding the extent of potential confusion to be de minimis, since every sale of a GM system involves a sale of a connectivity module as part of the system. The Board, however, found that substantial evidence supported the Board's finding. Just because computer components are found in all sorts of products, such as washing machines, watches, and toys, does not mean that the computer components are complementary goods to those products for purposes of trademark law.

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TTABlogger comment:

Text Copyright John L. Welch 2021.

Tuesday, October 12, 2021

TTABlog Test: Which of These Three Section 2(d) Refusals Was Reversed?

Among the flurry of opinions issued by the Board on September 30th, the last day of the USPTO's fiscal year, were the three listed below, all involving appeals from Section 2(d) refusals. One of the refusals was reversed. How do you think these came out? [Answer in first comment].

In re GK Legacy Foundation, Serial No. 88449012 (September 30, 2021) [not precedential] (Opinion by Judge Jyll Taylor) [Section 2(d) refusal of KEEP YOUR CHIN UP SCHOLARSHIP FUND and Design for "Charitable foundation services, namely, providing fundraising activities, funding scholarships and/or financial assistance for adults returning to college" [SCHOLARSHIP FUND disclaimed] in view of the registered mark THE CHIN UP FOUNDATION and Design for "Charitable services, namely, coordination of non-monetary contributions to charities and non-profits" [FOUNDATION disclaimed]

In re Hangover Zero, Serial No. 90083241 (September 30, 2021) [not precedential] (Opinion by Judge Albert Zervas) [Section 2(d) refusal of HANGOVER ZERO for dietary and nutritional supplements, in view of the registered mark ZERO HANGOVER THE LAST DEFENSE & Design for dietary supplements [HANGOVER disclaimed in both marks].

In re Boot Royalty Company, L.P., Serial No. 88727081 (September 30, 2021) [not precedential] (Opinion by Judge Elizabeth A. Dunn) [Section 2(d) refusal of R2G ROOM 2 GROW and Design for "insoles, footwear," in view of the registered mark ROOM TO GROW for "charitable services, namely the collection and distribution to the needy of clothing and other usable goods."]

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TTABlog comment: How did you do? See and WYHAs here?

Text Copyright John L. Welch 2021.

Friday, October 08, 2021

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

The TTAB recently ruled on the appeals from the three Section 2(e)(1) mere descriptiveness refusals summarized below. No hints this time. Let's see how you do with them. Answer will be found in the first comment.

In re JHO Intellectual Property Holdings LLC, Serial No. 88784575 (September 10, 2021) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Mere descriptiveness refusal of COGNITIVE CANDY for dietary supplement drinks, nutritional energy bars, and the like. Applicant maintained that "the lofty connotations of 'cognitive' are in stark contrast to the literal and colloquial connotations of 'candy,' creating an incongruous commercial impression."]

In re Commonwealth Care Alliance, Inc., Serial No. 88661627 (September 29, 2021) [not precedential] (Opinion by Judge George C. Pologeorgis). [Mere descriptiveness refusal of EL CUIDADO EXCEPCIONAL for consulting services in the field of health care insurance and for managed healthcare services. The English translation of the mark is UNCOMMON CARE. Applicant contended that consumers would not stop and translate the mark and, in any case, the translated phrase UNCOMMON CARE is registered by Applicant for the same services.]

In re Vans, Inc., Serial No. 88677016 (September 29, 2021) [not precedential] (Opinion by Judge Linda A. Kuczma). [Mere descriptiveness refusal of THE ORIGINAL CHECKERBOARD CO. ESTABLISHED SINCE SIXTY-SIX for "Belts; Bottoms as clothing; Footwear; Headwear; Jackets; Pants; Shirts; Shorts; Socks; Sweat Pants; Sweat Shirts; Tops as clothing." Applicant conceded that “ESTABLISHED SINCE SIXTY-SIX” is descriptive, but contended that “THE ORIGINAL CHECKERBOARD CO.” does not convey qualities or characteristics of Applicant’s clothing goods to consumers, but rather is a playfully suggestive unitary phrase that consumers will perceive as referring to Applicant’s “specific and distinct brand identity” involving the “thrills and excitement associated with action sports and skate culture.”]

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TTABlog comment: How did you do? See any WYHAs here?

Text Copyright John L. Welch 2021.

Thursday, October 07, 2021

District Court Finds Lack of Personal Jurisdiction Over Defendant in TTAB Appeal, Transfers Case Rather Than Dismissing It

In February 2020, the TTAB ordered cancellation of two registration for certain trash bag trade dress, one registration owned by each party to the proceeding, on the grounds of genericness and functionality [TTABlogged here]. Poly-America then brought a civil action in the U.S. District Court for the Eastern District of Texas for review of the Board's decision, under 15 USC Section 1071(b). Defendant API moved to dismiss for lack of personal jurisdiction. The court agreed that personal jurisdiction was lacking, but because Poly-America's time for appeal from the Board decision had expired, the court declined to dismiss the case and instead transferred it to the Southern District of New York. Poly-America, L.P. v. API Industries, Inc., Civil No. 4:20-CV-837-SDJ (September 30, 2021).

The court first concluded that it did not have "general jurisdiction" over API, a Delaware corporation headquartered in New York. A court has general jurisdiction when the defendant's "affiliations with the state are so continuous and systematic as to render them essentially at home in the forum State." Both parties recognized that it is an exceptional case when a corporation's operations in a forum other than its place of incorporation or the location of its principal place of business will satisfy the general jurisdiction standard. 

The court found that API's manufacturing facility and seventy employees in Texas, comprising "only fifteen percent of its workforce," were not enough to make API "essentially at home" in Texas.

Turning to the question of "specific jurisdiction," the court found that API "purposely directed its activities" toward Texas. However, the TTAB proceeding did not arise out of those activities. Rather, "the underlying controversy is the TTAB cancelling [Poly-America's] registration," which has "nothing to do with" API's manufacturing of plastic trash bags in Texas.

And so the court concluded that it did not have personal jurisdiction over API.

Poly-America asked, as an alternative to dismissal, that the court transfer the case under 28 U.S.C. 1361 to the US District Court for the Southern District of New York. It pointed out that if the case were dismissed outright, it would lose its right to appeal under Section 1071, which imposes a sixty-day time limit for appeal. API agreed that the court has the discretion to transfer the case. Section 1361 provides that if a court finds a “want of jurisdiction, the court shall, if it is in the interest of justice, transfer such action or appeal to any other such court . . . in which the action or appeal could have been brought at the time it was filed or noticed.”

The court concluded that the interests of justice supported transfer of the case.

API requested reimbursement for its attorney fees in connection with the motion to dismiss, but the board tossed out that request: "Section 1631 makes no mention whatsoever of attorney’s fees. Thus, the 'American Rule' governs, and Poly-America and API each pay their own attorney’s fees."

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TTABlogger comment: Sooner or later, we'll have the definitive answer to the nagging question of whether the color orange is de jure functional for trash bag draw strings.

Text Copyright John L. Welch 2021.

Wednesday, October 06, 2021

Precedential No. 26: Claim Preclusion Inapplicable in Concurrent Use Proceeding After Cancellation or Opposition Proceeding

Applicant Haider Capital sought a concurrent registration for the mark SKIN DEEP for beauty salon and health spa services, naming registrant Skin Deep Laser as an excepted user. Skin Deep Laser filed a motion for summary judgment on the ground of claim preclusion in light of an earlier petition for cancellation brought by Haider against Skin Deep Laser and dismissed with prejudice. The Board denied the motion, ruling that because the transactional facts relevant in a concurrent use proceeding are different from those involved in a cancellation (or opposition) proceeding, claim preclusion is inapplicable. Haider Capital Holding Corporation LLC v. Skin Deep Laser MD, LLC, 2021 USPQ2d 991 (TTAB 2021) [precedential].

Issue Preclusion: The Board first considered the issue of collateral estoppel (a/k/a issue preclusion). Registrant Skin Deep Laser argued that Haider had an opportunity to prove priority in the prior proceeding and "should not now have a second bite at the apple." The Board pointed out, however, that the cancellation proceeding was dismissed with prejudice for failure to prosecute under Section 2.132(a). Therefore the issue of priority was not actually litigated, and so issue preclusion cannot apply.

In any case, "priority" in the context of a concurrent use proceeding presents a different issue than "priority" in an opposition or cancellation proceeding. In a concurrent use proceeding, the only way in which priority is considered is in determining whether the concurrent use applicant can establish the jurisdictional requirement for institution of the proceeding: i.e., can the applicant show use in commerce prior to the defendant's (registrant's) application filing date? In an opposition or cancellation proceeding, priority may be established constructively, but not so in a concurrent use proceeding, where "constructive use has little (if any) significance" because the applicant must prove actual use of its mark.

New Application Required?: Registrant Skin Deep Laser argued that, according to TBMP Section 1112, Haider was required to file a new application for concurrent use when its petition for cancellation was dismissed, rather than merely convert its pending application. The Board disagreed. [N.B.: The TBMP is not the law. - ed.].

The "requirement" of TBMP Section 1112 that a new application must be filed applies only in two circumstances. First, when an application for an unrestricted registration was opposed successfully, the applicant must file a new application. Second, when a registrant whose unrestricted registration is cancelled, the registrant must file a new concurrent use application. In both cases, the party required to file a new concurrent use application was an unsuccessful defendant in the prior proceeding. 

Here, Haider was the plaintiff in the cancellation proceeding and its application remained pending. Therefore, when its petition for cancellation failed, it needed only to amend its application to seek concurrent use.

Claim Preclusion: The Board held that "claim preclusion does not apply to a concurrent use proceeding when the prior proceeding is either an opposition or cancellation proceeding between the parties." 

In opposition and cancellation proceedings based on likelihood of confusion, the issue is whether a party is entitled to a geographically unrestricted registration when the involved marks are used in the same geographic area. In a concurrent use proceeding, however, the Board must consider the likelihood of confusion when the marks are used "under conditions and limitations as to the mode or place of use of the marks, i.e., different geographic areas."

Thus, a critical element for determining whether claim preclusion applies to a later concurrent use proceeding cannot be satisfied in a concurrent use proceeding. Specifically, to establish claim preclusion, the movant must show that “the second claim is based on the same set of transactional facts as the first.” Jet Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1857 (Fed. Cir. 2000).

In short, the facts on which the Board must decide a concurrent use proceeding are not the same as those considered in a prior opposition or cancellation proceeding. Therefore, claim preclusion cannot apply.

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TTABlogger comment: Surprised that this issue never came up before.

Text Copyright John L. Welch 2021.

Tuesday, October 05, 2021

Precedential No. 25: TTAB Rejects Proposed Modification of Standard Protective Order, Refuses to Apply EU Privacy Regulation

In a precedential order, the Board denied a motion to modify the Standard Protective Order (SPO) to permit in-house counsel to view documents designated as "Confidential - Attorney's Eye's Only" (trade secret and commercially sensitive) ("AEO"), and it ruled that the European Union General Data Protection Regulations (GDPR) does not apply in Board proceedings. As to the motion, Opposer Chicago Mercantile Exchange (CME) failed to show good cause for modification of the SPO. As to the GDPR, the Board found that the SPO adequately protected any personal information that Intercontinental Exchange (ICE) sought to redact from its discovery responses. Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc. and Chicago Mercantile Exchange, Inc. v. Intercontinental Exchange Holdings, Inc., 2021 USPQ2d 988 (TTAB 2021) [precedential] (Order by M. Catherine Faint, Interlocutory Attorney).

Modification of the SPO: Under the SPO, which is automatically entered in all inter partes proceedings, only outside counsel have access to confidential material and information that is designated as AEO. However, under Rule 2.116(g), the SPO may be modified by stipulation approved by the Board, or upon a motion granted by the Board. CME sought to designate either of two individuals as an in-house counsel with access to AEO.

To establish good cause to allow disclosure of AEO material to in-house counsel, the movant must provide "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements," based on "the factual circumstances surrounding each individual counsel's activities, association and relationship with a party."

The Board applied a three-element test to determine "whether, to whom and under what circumstances a protective order may be amended to allow release of AEO to in-house counsel:

  • (1) consideration of a party’s need for the confidential information in order to adequately prepare its case, 
  • (2) the harm that disclosure would cause the party submitting the confidential information, and 
  • (3) the forum’s interest in maintaining the confidentiality of the information sought.
Akzo N.V. v. U.S. Int’l Trade Comm’n, 808 F.2d 1471, 1483-84, 1 USPQ2d 1241, 1249 (Fed. Cir. 1986).

The Board "must be able to balance the risk of inadvertent disclosure of trade secrets or commercially sensitive matter against the risk that protection of those trade secrets will impair CME's prosecution of [its] claims."

CME did not provide declarations from the two individuals as to their specific duties. The Board could not find that the individuals are not involved in competitive decision making, since they are involved in "legal issues related to intellectual property," which include licensing agreements. In any case, CME did not provide any evidence regarding the first element of the test: the need for its in-house counsel to have the information. As to the second factor, the Board found that potential disclosure of ICE's competitive information "may provide a competitive advantage to CME and such disclosure would harm ICE." As to the third factor, the Board noted that "sensitive business information is central to the Board's fact-finding process," that the scope of discovery is narrower in Board proceedings that in civil cases, and that the Board provides a Standard Protective Order as a means to protect such information. In short, the Board has an interest in "protecting confidential information and protecting against its inappropriate release."

The Board concluded that CME failed to demonstrate good cause and a need for in-house counsel to have access to ICE's confidential information, and so it denied the motion for amendment of the protective order

Applicability of the EU Privacy Regulation: CME raised the issue of whether ICE may redact names, addresses, and other information from its documents and ESI originating in the EU on the basis that the GDPR requires such redaction. ICE argued that forcing it to produce such information could subject it to monetary penalties under the GDPR.

The GDPR is an EU regulation that seeks to protect the privacy of EU citizens' personal data by limiting transfer of such information among EU member states as well as between EU countries and the United States. The Board noted that the GDPR does not per se bar disclosure of protected information when "the transfer is necessary for the establishment, exercise or defence of legal claims," provided that the information is "relevant and necessary" to the litigation.

The Supreme Court has set out five factors to be considered in balancing the interests of the United States and the party seeking discovery, on the one hand, and the foreign state's interest in secrecy, on the other hand:

  • (1) the importance to the litigation of the documents or other information requested;
  • (2) the degree of specificity of the request;
  • (3) whether the information originated in the United States;
  • (4) the availability of alternative means of securing the information; and
  • (5) the extent to which noncompliance with the request would undermine important interests of the United States, or compliance with the request would undermine important interest of the state where the information is located. 

Societe Nationale Industrielle Aerospatiale v. U.S. Dist. Court, 482 U.S. 522, 544 n.28 (1987).

As to the first element, the Board concluded that the identity and contact information of current or former employees and others is directly relevant to the claims in dispute, in order to authenticate documents, identify parties who may have discoverable information, and determine how the involved mark is used. ICE failed to show why "basic discoverable information" submitted under the SPO should be redacted.

As to the second element, CME narrowed its requests to seek only "representative documents." That was sufficiently specific since it seeks business records commonly produced in U.S. litigation and is not unduly burdensome.

As to the third, although some of the requested information is stored on servers in the EU, discovery is normally permitted, "particularly where the documents, even if located in foreign countries, are in the possession or control of the U.S. company."

Under the fourth element, ICE argued that it will produce information regarding U.S-based personnel and so EU-materials will be unnecessary. The Board, however, concluded that this approach was not acceptable because it is not the same as supplying the basic, discoverable information regarding the names of those who have sent or received communications.

As to the fifth element, sometimes considered the most important, the Board pointed out that the United States has a "strong interest in ensuring parties in proceedings before the Board have access to the information they need to litigate their claims and for the Board to fully and fairly adjudicate them." 

As to ICE's assertion that it was at risk of "substantial monetary penalties" under the GDPR, ICE did not identify how disclosure of the information would violate the GPDR when a protective order is in place, nor did it show that there has been any enforcement of the GPDR when information has been produced under a protective order in U.S. litigation.

Weighing all the factors, the Board found that ICE is sufficiently protected by the SPO. Therefore ICE was ordered to produce the requested information in unredacted form under the appropriate tier of confidentiality.

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TTABlogger comment: Will this strong language about the importance of discovery in TTAB proceedings encourage the weaponization of discovery - i.e., the use of sweeping discovery demands as a bludgeon?

Text Copyright John L. Welch 2021.

Monday, October 04, 2021

Precedential No. 24: TTAB Rules that Reckless Disregard for the Truth Is Sufficient for Proving Fraud

In the seminal fraud case of In re Bose, the CAFC left open the question of whether "reckless disregard" for the truth is sufficient for a finding of fraud on the USPTO. The Board has now answered that question in the affirmative, granting a petition for cancellation of a registration for the mark DANTANNA'S for "steak and seafood restaurant" on the ground of fraud. By no longer requiring proof of an intent to deceive the USPTO, the Board has significantly lowered the bar for proof of fraud. In a much less consequential ruling, the Board also sustained Plaintiff Chutter's opposition to registration of the marks DANTANNA'S for "spices and spice rubs" and DANTANNA'S TAVERN for "restaurant and bar services" in view of Chutter's previously used mark DAN TANA'S for restaurant services and marinara sauce. Chutter, Inc. v. Great Management Group, LLC and Chutter, Inc. v. Great Concepts, LLC, 21 USPQ2d 1001 (TTAB 2021) [precedential] (Opinion by Judge Marc A. Bergsman).
Fraud: Plaintiff Chutter's fraud claim was founded on Defendant Great Concepts' filing of a Section 15 Declaration of Incontestability in which its counsel, Mr. Taylor, stated that there were no civil actions or USPTO proceedings pending against the DANTANNA'S mark and registration. Chutter alleged that this statement was knowingly false (because there were pending a cancellation proceeding and a civil action involving the DANTANNA'S mark) and was made with intent to deceive the USPTO into "accepting" the declaration.

The Board observed that it is "well-settled that inclusion of false statements in a Section 15 affidavit/declaration is material, and if made with the relevant degree of intent constitutes fraud warranting cancellation of the involved registration under Section 14(3) of the Trademark Act."

A false Section 15 affidavit/declaration, when relied on by the USPTO, allows a registrant to obtain a new right which it would not otherwise have, specifically, the right to have its registration, in litigation, accepted as conclusive evidence, rather than merely prima facie evidence, of the registrant’s exclusive right to use the registered mark in commerce. See Trademark Act Section 33, 15 U.S.C. § 1115(b).

The Board noted that the USPTO does not "accept" a Section 15 affidavit or declaration, but merely reviews the documents for compliance with the statute and rules (signature, timeliness, and proper terminology) and then acknowledges receipt.

It was undisputed that, at the time the declaration was filed, Mr. Taylor knew of the pending legal proceedings involving the DANTANNA'S mark and registration, that he was not aware of the legal requirement for filing a Section 15 declaration, and that the USPTO acknowledged receipt of his declaration. Mr. Taylor testified that he did not review the document "carefully enough to see that the statement is in [t]here incorrectly." Neither he nor Great Concepts ever notified the USPTO about the false statement, though they were aware of same since 2015. Great Concepts admitted that the statement was false.

Chutter charged that the false statement was made with "willful blindness" as to the contents of the declaration or, alternatively, with "reckless disregard" as to the truth of the declaration because Mr. Taylor did not know what he was signing and failed to inquire as to its accuracy. The Board agreed with the latter allegation.

“Reckless disregard” is defined as the “conscious indifference to the consequences of an act.” See BLACK’S LAW DICTIONARY (11th ed. 2019) under “Disregard.” The Board observed that "[a] declarant is charged with knowing what is in the declaration being signed, and by failing to make an appropriate inquiry into the accuracy of the statements the declarant acts with a reckless disregard for the truth."

Mr. Taylor paid little, or no, attention to the document he was signing under oath and thereby disregarded the significance of the benefits he was obtaining for his client. By failing to ascertain and understand the import of the document he was signing, far from conscientiously fulfilling his duties as counsel, Mr. Taylor acted in reckless disregard for the truth; nor did he take any action to remedy the error once it was brought to his attention.

If the Board were to find that Mr. Taylor's conduct did not constitute fraud, that could "encourage declarants to conclude that such disregard carries no consequences and they can fail to read documents they are signing without penalty. 'Statements made with such degree of solemnity clearly are or should be investigated thoroughly prior to submission and signature to the USPTO.'"

The Board pointed out that in Bose the CAFC held that the intent to deceive must be willful. The Supreme Court and various circuit courts of appeal have ruled that "willful" includes reckless behavior. Therefore, the Board held:

In matters of trademark registration and maintenance, where the USPTO relies on declarations to be complete, accurate, and truthful ... reckless disregard is equivalent to intent to deceive and satisfies the intent to deceive requirement. [Emphasis supplied].

And so. the Board granted the petition for cancellation of the DANTANNA'S registration on the ground of fraud. 

Likelihood of Confusion: The Board's likelihood of confusion analysis was straightforward: the marks are highly similar; the goods are related and travel in the same trade channels to the same classes of consumers; and the services are identical in part and are offered in the same trade channels to the same classes of consumers. 

Therefore, the Board sustained the opposition to both applications. 

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TTABlogger comment: So will we see more allegations of fraud? It seems that, to prove reckless disregard, one would need to take the testimony of the declarant, just as in the straight "intent to deceive" case. Are we in effect back to the old "knew or should have known" standard of Medinol?

Does this ruling make the failure to delete goods of services in a Section 8 Declaration a more serious problem? Can it be "fraud" to sign a Section 8 declaration that includes "unused" goods and services?

Text Copyright John L. Welch 2021.

Friday, October 01, 2021

Three Recent TTAB Inter Partes Decisions Among the End-of-Fiscal-Year Flurry

The end of the USPTO fiscal year (September 30) yields a flurry of TTAB decisions. Among them are the three briefly described below. The Board held oral argument in each of these cases. The three opinions total a whopping 258 pages, so I will merely summarize the issues and link to the opinions.

STX Financing, LLC v. Stacey Michelle Terrazas, Opposition No. 91240829 (September 22, 2021) [not precedential] (Opinion by Judge Christopher Larkin) [Sustaining in part and dismissing in part this opposition to registration of the marks BAD MOMS UNLIMITED and BAD MOMS BIBLE for audio books, printed matter, clothing, and charitable foundation services, on the ground of lack of bona fide intent, and likelihood of confusion and dilution of opposer's allegedly famous BAD MOMS mark for various goods and services.]

Theragun, LLC v. Theragen, Inc.
, Opposition No. 91250143 (September 24, 2021) [not precedential] (Opinion by Judge Marc Bergsman) [Sustaining opposition to registration of THERAGEN and THERAGEN & Design for "Medical devices, namely, electrostimulatory devices for tissue, bone and/or joint treatment, medical treatment apparel, and a kit comprising an electrostimulatory device and medical treatment apparel" in view of the registered mark THERAGUN for massages apparatus and "vibrating apparatus used to stimulate muscles and increase strength and physical performance for health and medical purposes."]

Lisbeth W. Roy, DO, PA v. Charles E. Runels, Jr., Cancellation No. 92065804 (September 30, 2021) [not precedential] (Opinion by Judge Elizabeth A. Dunn) [Granting in part and denying in part a petition for cancellation of registrations for the marks VAMPIRE FACELIFT, VAMPIRE BREASTLIFT, VAMPIRE NIPPLELIFT, VAMPIRE M SHOT, VAMPIRE O SHOT, VAMPIRE FACIAL, PRIAPUS SHOT, O-SHOT, and ORGASM SHOT for various medical procedures, on the grounds of fraud, genericness, functionality, and mere descriptiveness.]

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

TTABlog Quarterly Index: July - September 2021

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Section 2(a) - False Suggestion of a Connection:

Section 2(d) - Likelihood of Confusion:
Section 2(e)(1) - Mere Descriptiveness:

Section 2(e)(2) - Primarily Geographically Descriptive:

Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive: Section 2(e)(5) - Functionality:

Section 14(3) - Miserpresentation of Source:

Abandonment/Nonuse: Dilution: Fraud:
Genericness: Unlawful Use: Procedural Issues: CAFC Rulings: Recommended Reading: Other: Text Copyright John L. Welch 2021.