Precedential No. 19: Does Eastern Standard Time Control the Timeliness of Discovery Requests? TTAB Says No.

The Board faced head on the scintillating issue of the timing of service of discovery requests, and more particularly whether Eastern Standard Time (EST) controls the timeliness thereof, regardless of the location of the serving party. Defendant JBX contended that Plaintiff Island's discovery requests were served too late because they were after midnight EST of the last day for written discovery. Island disagreed because it served the requests before midnight Pacific Standard Time (PST). That peskyhree-hour difference between EST and PST was the cause of the problem. Island, LLC v. JBX Pty Ltd, 2021 U.S.P.Q.2d 779 (T.T.A.B. 2021) [precedential].

Discovery requests must be served in time to require responses prior to the close of discovery. See Rule 2.120(a)(3). Here, discovery was set to close on January 2, 2021, and since a receiving party must respond in thirty days, the deadline for Plaintiff Island to serve written discovery requests was December 3, 2020. Island served its requests by email from California at 11:43 PM PST on December 3rd, which translated to 2:43 AM EST on December 4th. Defendant JBX responded to the discovery requests by objecting to their timeliness. Island than filed the subject motion to compel.

Although Eastern Time governs documents that are filed with and received by the USPTO (Rule 2.194(a)), nothing in the Trademark Rules of Practice or in the TBMP discusses the applicability of Eastern Time in the context of documents served between parties. For discovery requests, timeliness is based on when a document is served, not received. See Rule 2.120(a)(3). 

The Board noted that, under Rule 2.119(b), a party who, because of technical problems or extraordinary circumstances, cannot serve discovery by email may serve in a manner described in Rule 2.119(b)(1) - (b)(4) [(b)(5)? - ed.], including first-class mail, Priority Mail Express®, or overnight courier. "When service is made by first-class mail, Priority Mail Express®, or overnight courier, the date of mailing or of delivery to the overnight courier will be considered the date of service." Rule. 2.119(c). [When service is made by first-class mail, does the receiving party get any extra days for responding?  Apparently not. - ed.].

Accordingly, a party who meets the requirements to serve discovery requests by, for example, overnight courier will have timely served its discovery requests if it delivers them to the overnight courier thirty-one days before the close of discovery. And this is so even though the responding party would receive the discovery requests thirty (rather than thirty-one) days before the close of discovery. In such a situation the responding party’s responses are still due based on the date of service, even though it does not have the benefit of additional time to respond due to the manner of service. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016); see also TBMP § 403.03.

The Board brushed aside Defendant JBX's argument that if PST applied, it (JBX) would not be afforded a full thirty-day period to respond. "The Board's rules are clear that the time to respond to discovery requests is measured in days, not hours."

And so, the Board granted Island's motion to compel discovery responses and allowed JBX thirty days to respond to Island's discovery requests.

Read comments and post your comment here.

TTABlogger comment: Does this ruling disadvantage parties located on the east coast? If so, how? Would a foreign party be wise to hire an attorney in Hawaii, where Hawaii–Aleutian Standard Time (HST) applies, three hours behind PST? 

Text Copyright John L. Welch 2021.

TTABlog Test: Is "BEAUTY SG" Primarily Geographically Descriptive of Cosmetics and Supplements?

The USPTO refused to register the proposed mark BEAUTY SG for cosmetics and dietary and nutritional supplements [BEAUTY disclaimed as to cosmetics], on the ground that the mark is primarily geographically descriptive of the goods under Section 2(e)(2). Examining Attorney Chioma (Bata) Oputa contended that BEAUTY is descriptive of the goods and SG is "substantially synonymous" with Singapore. Applicant Shim Phyau Min argued that BEAUTY merely suggests a desired outcome from use of the supplements, and SG is an abbreviation for many terms besides Singapore. How do you think this came out? In re Shim Phyau Min, Serial Nos. 88255234 and 88258789 (July 21, 2021) [not precedential] (Opinion by Judge Michael B. Adlin].

A mark is primarily geographically descriptive under Section 2(e)(2) if  "(1) the primary significance of the term is the name of a place known generally to the public; (2) the public would make a goods/place association, i.e. believe that the goods for which Applicant seeks registration originate in that place; and (3) the source of the goods is the geographic region named in the proposed mark."

The examining attorney relied on various reference works that state that SG is an abbreviation for Singapore, dictionary definitions of "cosmetics," third-party website pages using the word "beauty" to describe their cosmetics and supplements, and evidence that a number of Singapore companies offer cosmetics and other beauty products, with some of them using names, marks, or descriptors that include BEAUTY or SG, or both.

Applicant pointed out that SG may also refer to the chemical element Seaborgium, Specific Gravity, Solicitor General and surgeon. She claimed that she uses SG in her mark not to refer to Singapore, but instead as an acronym for "serums and gels." Finally, she maintained that Singapore is a tiny country, not generally known to relevant American consumers. 

The Board found that the primary significance of SG in Applicant’s proposed mark is Singapore. Although SG may have other meanings, none of the meanings in the record related to cosmetics or supplements. "Thus, we find that relevant consumers will perceive the SG element of Applicant’s mark as referring to Singapore, Applicant’s domicile and the term’s first meaning according to reference works." In fact, Applicant's Facebook page makes clear that SG refers to Singapore. And the abbreviation SG for Singapore is "widely used by many Singapore websites, the domain name system generally, the United Nations and ISO, news organizations, and, significantly, Applicant’s competitors in, and media reporting on, the Singapore beauty industry."

The evidence showed that a substantial number of relevant United States consumers are familiar with Singapore, "as they likely would be with any of the 'world’s greatest commercial centers.'"

The Board had not doubt that "beauty" is descriptive of supplements The record evidence showed that "'beauty supplement' is essentially a term of art in the industry to refer to dietary and nutritional supplements intended to improve skin, hair or nails or otherwise enhance one’s beauty."

As to the second element of the Section 2(e)(2) test, because the applicant resides in Singapore, the Board presumed that relevant consumers would believe that the involved goods originate in Singapore. The evidence "bolstered this presumption" because it revealed "not only that Singapore’s beauty industry is 'thriving' and 'lucrative,' but that 'SG beauty brands' also use the terms SG and BEAUTY for their hair, nail and skincare goods."

Finally, Singapore is the actual source of the applicant's goods, satisfying the third element of the test.

The record leaves no doubt that Singapore, often referred to by the recognized abbreviation SG, is known generally to Americans; and Applicant’s beauty focused supplements, and cosmetics and hair, nail and skincare products originate there. Other providers of beauty products that compete with Applicant have a "legitimate interest … in truthfully being able to use [the geographic abbreviation SG] to inform the public of the origin of their similar products."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2021.

Current Roster of TTAB Judges (July 2021)

Here is the current roster of Administrative Trademark Judges at the TTAB. There are 26 judges, including Chief Judge Gerard F. Rogers and Deputy Chief Judge Mark A. Thurmon.

Rogers, Gerard F. (Chief Judge): Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D. magna cum laude, New England School of Law.

Thurmon, Mark A. (Deputy Chief Judge): Appointed to TTAB in 2019; Prior Professional Experience: Private Practice; Adjunct Professor of Law, University of Texas School of Law; Assistant Professor of Law, Levin College of Law, University of Florida; Professor of Law at the Southern University Law Center, Southern University; Education: B.S., Louisiana State University; J.D. with high honors, Duke University School of Law.

Adlin, Michael B.: Appointed to TTAB in 2012; Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University; J.D., Boston University School of Law.

Bergsman, Marc A.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.

Cataldo, Peter W.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Coggins, Robert H.: Appointed to TTAB in 2017; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.S., Davidson College; J.D., Wake Forest University School of Law.

Dunn, Elizabeth A.: Appointed to TTAB in 2019; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Boston University; J.D., American University Washington College of Law.

English, Christen M.: Appointed to TTAB in 2019; Prior Professional Experience: Private Practice; TTAB Interlocutory Attorney; Education: B.A., Boston College; J.D. Catholic University Columbus School of Law.

Goodman, Cheryl S.: Appointed to TTAB in 2014; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State College of Law.

Greenbaum, Cindy B.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Heasley, David K.: Appointed to TTAB in 2015; Prior Professional Experience: Private Practice (Washington, D.C.); Education: B.A., The Johns Hopkins University; J.D., University of Maryland School of Law.

Hudis, Jonathan: Appointed to TTAB in 2019; Prior Professional Experience: Private Practice (Washington, D.C. and Alexandria, Virginia); Education: B.A., State University of New York at Albany; J.D., Brooklyn Law School.

Johnson, Melanye K.: Appointed to TTAB in 2020; Prior Professional Experience: Corporate Counsel; Senior Counsel, Office of General Counsel at the U.S. Department of Health and Human Services (HHS); Education: B.A., University of Michigan; J.D., Ohio State University Moritz College of Law.

Kuczma, Linda A.: Appointed to TTAB in 2011; Prior Professional Experience: Private Practice (Chicago, Illinois); Education: B.S., St. Mary's University; J.D., Loyola University Chicago School of Law.

Kuhlke, Karen: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Larkin, Christopher: Appointed to TTAB in 2016; Prior Professional Experience: Private Practice (Los Angeles, CA; New York, N.Y.); Education: B.A., Stanford University; J.D., Columbia Law School.

Lebow, Mark: Appointed to TTAB in 2020; Prior Professional Experience: Private Practice (Alexandria, Virginia); Education: B.A., Florida Atlantic University; J.D., Hofstra University School of Law; LL.M., John Marshall Law School.

Lykos, Angela: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., The Johns Hopkins University; J.D., Duke University Law School.

Lynch, Cynthia C.: Appointed to TTAB in 2015: Prior Professional Experience: Private Practice; Attorney-Advisor at the International Trade Commission; USPTO Assistant Solicitor: USPTO Administrator for Trademark Policy and Procedure; Education: B.A., University of North Carolina; J.D., University of Virginia School of Law.

Mermelstein, David: Appointed to TTAB in 2006: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Supervisory Interlocutory Attorney; Education: B.A., New College, Hofstra University; J.D., American University.

Pologeorgis, George C: Appointed to TTAB in 2015; Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Attorney in the Office of Trademark Quality Review and Training; Trademark Examining Attorney; Private Practice; Education: B.A., University of Pennsylvania; J.D., George Washington University National Law Center.

Shaw, Thomas: Appointed to TTAB in 2011; Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.

Taylor, Jyll: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of North Carolina at Chapel Hill; J.D., Howard University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Wolfson, Frances: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., U.C. Santa Barbara; J.D., U.C.L.A.

Zervas, Albert: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.

Text Copyright John L. Welch 2021.

TTAB Denies Motion for Relief From Default Judgment Issued in December 2018

In this cancellation proceeding targeting two registrations for the mark BLEU ICE for clothing, the Board entered judgment by default on December 19, 2018, after Respondent Davoudzadeh failed to file an answer or respond to the notice of default. Two applications owned by Petitioner that had been blocked by the registrations then proceeded to registration on June 14, 2019. On February 4, 2020, Davoudzadeh filed a motion for relief from the default judgment, but it was denied as untimely because it was not filed within one year of the entry of judgment, as required by FRCP 60(c)(1). On March 14, 2020, Davoudazdeh moved for reconsideration, asserting that his motion was based on FRCP 60(b)(6), which has no time limit. The Board has now denied that motion for reconsideration. Blue Ice Mountain Works SA v. Massoud Davoudzadeh, Cancellation No. 92069506 (July 19, 2021) [not precedential].

   

Whether the time of filing a motion under FRCP 60(b) is "reasonable" depends on the facts of the case, including "the length and circumstances of delay in filing, any prejudice to the opposing party by reason of the delay, and the circumstances warranting equitable relief." Since Davoudzadeh's Rule 60(b)(6) motion was filed 13-and-one-half months from entry of default, the Board deemed the motion timely.

As to the merits of the motion, the Board noted that relief from a final judgment is an extraordinary remedy, but default judgments based on a failure to timely answer are generally treated more liberally than motions for relief from other types of judgments.

 

Factors to be considered in a motion to vacate a default judgment for failure to answer are 1) whether the plaintiff will be prejudiced, 2) whether the default was willful, and 3) whether the defendant has a meritorious defense to the action.

Davoudzadeh asserted that he never received the petition for cancellation, nor the "notice of cancellation." He claimed limited facility with the English language, and he "may have assumed it was related to the renewal process rather than a petition to cancel." The Board noted that the institution order was never returned as undeliverable, and Davoudzadeh did not say that the Board had the wrong address. So, presumably, he received the petition.

As to the language issue, Davoudzadeh was on notice that proceedings are conducted in English. He signed and submitted his trademark application for one of the registrations, in English. Many of the documents he submitted are in English, and he executed his affidavit in English. Moreover, he has operated his business in this country for more than 30 years, which suggests that he has some proficiency in English. 

The Board concluded that the evidence does not support his claim that he could not understand trademark documents. "In sum, while the record does not show a willful disregard for this proceeding, Respondent's explanations are either ill-supported or are not of such a nature that they demonstrate extraordinary circumstances."

As to the meritorious defense factor, Davoudzadeh indicated in his motion papers that he "wishes and is able to address and defend against Petitioner's allegations" (abandonment and fraud).

Finally, as to prejudice to the petitioner, the Board observed that Davoudzadeh's delay resulted not only in the cancellation of his two registrations, but also the issuance of two registrations to the petitioner, the benefits of which the petitioner has enjoyed for more than two years. "A change in economic position can be presumed under these circumstances." Thus, this factor weighed in favor of the petitioner.

The Board found that Respondent Davoudzadeh failed to demonstrated extraordinary circumstances that warrant granting him relief from judgment under FRCP 60(b)(6).

Read comments and post your comment here.

TTABlogger comment: Hat Tip to FOB Pamela Chestek.

Text Copyright John L. Welch 2021.

GOYA Fails to Submit Evidence On Time, TTAB Dismisses Opposition to GOLA FOODS for Health Food Supplements

The Board dismissed this Section 2(d) and 43(c) opposition to registration of the mark GOLA FOODS for "health food supplements" because opposer Goya Foods failed to submit its evidence on time. The Board, however, went on to decide Goya's likelihood of confusion and dilution claims on the merits, in case a reviewing court disagrees with the Board's finding that all of Goya's evidence was not timely submitted. Goya Foods, Inc. v. George Lage de Assis Rocha, Opposition No. 91247918 (July 19, 2021) [not precedential] (Opinion by Judge Albert Zervas). 

Untimely evidence: The only evidence in the record consisted of the pleadings and the opposed application, automatically of record pursuant to Rule 2.122(b)(2). Applicant did not submit any evidence or testimony, while all of Opposer Goya's evidence was submitted late.

The Board had set October 5, 2020, as the closing date for Goya's testimony period. Goya did not submit any testimony. It filed its first notice of reliance on October 6th, which document included a certificate of service dated October 5th. The second and third notices of reliance were filed and served on October 7th. 

Rule 2.121(a) states: "No testimony shall be taken or evidence presented except during the times assigned by the Board, unless by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board."

Goya missed the October 5th deadline for filing its proofs. The Board concluded that, "[b]ecuase there is no admission by Applicant nor proof to support Opposer's claims, Opposer's claims must fail." It Board therefore dismissed Goya's claims of likelihood of confusion and dilution.

Goya's Claims:  Nonetheless, the Board proceeded to consider Goya's claims on the merits, as if Goya had introduced its evidence on time. Goya alleged likelihood of confusion with, and likely dilution of, its registered marks GOYA and GOLLA and its common law mark GOYA FOODS, for various food items, including black beans, hot peppers, coffee, and fruit drinks, and for retail and wholesale food services. However, Goya did not submit any evidence regarding it GOYA FOODS mark, and thus failed to prove priority, and so the Board gave that mark no consideration.

Rumbling through the DuPont factors, the Board found GOLA FOODS to be similar in sound, appearance, and commercial impression to the GOYA and GOLLA marks. However, as to the involved goods and services, the Board was not able to locate "a shred of evidence" supporting Goya's arguments that the involved goods are "complimentary" (sic) because they are often purchased together at a grocery store or supermarket and are taken together at meals. "Attorney argument is no substitute for evidence." The Board therefore considered this factor to be neutral. Likewise, there was no probative information in the record about the parties' respective trade channels, and so this factor was also deemed neutral.

As to the strength of opposer's marks, the Board found both GOYA and GOLLA to be inherently distinctive and conceptually strong; as to commercial strength, Goya alleged that its marks are famous, but its evidence was limited, particularly after the Board rejected much of the evidence as hearsay. The Board concluded that opposer's marks are entitled to the "normal scope of protection accorded to inherently distinctive marks," and this factor slightly favored a finding of likelihood of confusion.

In sum, despite the similarity of the marks and the overlap in classes of consumers, opposer did not establish that the involved goods and services are related or that their marketing channels overlap or are related. The Board concluded that Goya failed to carry its burden to prove likelihood of confusion by a preponderance of the evidence, and so it dismissed the Section 2(d) claim.

As to Goya's dilution-by-blurring claim, Goya's evidence fell "far short" of proving that its marks are famous for dilution purposes. And so, the Board also dismissed the dilution claim.

Read comments and post your comment here.

TTABlogger comment: Oh boy! The bigger they are, the harder they fall.

Text Copyright John L. Welch 2021.

District Court Grants Stay of Recently-Filed Infringement Suit in Favor of TTAB Proceeding Nearing Completion

The United States District Court for the Northern District of Georgia granted Defendant HMW's motion to stay Primerica's civil action pending resolution of a TTAB cancellation proceeding involving the mark HOW MONEY WORKS for financial services. The TTAB proceeding, commenced by Primerica in August 2019, was entering the trial testimony stage when, in April 2021, Primerica filed its complaint for unfair competition, trademark dilution, and deceptive trade practices. The court concluded that "a stay pending a decision in the TTAB Proceeding is warranted pursuant to the Court's inherent discretion, and that such a stay would not be immoderate." Primerica, Inc. v. How Money Works, LLC, Civil Action No. 1:21-CV-01613-ELR (N.D.Ga July 7, 2021).

At the TTAB, the parties had completed discovery and the Board had set a trial schedule with all briefing to be completed by November 2021. When Primerica filed its federal complaint, the TTAB suspended the cancellation proceeding at Primerica's request, but the Board noted that "if the district court suspends the civil action to allow the [TTAB Proceeding] to go forward, the Board will entertain a motion to resume the [TTAB Proceeding].

 

Defendant HMW then moved to stay the civil action, contending that Primerica would not be prejudiced by a stay, but that HMW would be harmed by having to re-litigate the case after nearly two years of proceedings before the Board. In addition, any TTAB decision would likely simplify or dispose of Primerica's civil claims. Primarica argued that granting the motion to stay would be "immoderate" and therefore an abuse of the court's discretion.

Eleventh Circuit precedent dictated that, in exercising its discretion to stay a proceeding pending resolution or related proceedings in another forum, "the district court must properly limit the scope of the stay. A stay must not be 'immoderate.'"

“When deciding whether to grant a stay, courts generally consider the following factors: (1) whether a stay would unduly prejudice or present a tactical disadvantage to the nonmovant; (2) whether a stay will simplify the issues in the case; and (3) whether discovery is complete and a trial date has been set.” Collegiate Licensing Co. v. Am. Cas. Co. of Reading, Pa., 842 F. Supp. 2d 1360, 1369 (N.D. Ga. 2012) (internal citation omitted).

The court recognized that the TTAB proceeding was near completion, but the exact length of the proposed stay was unknown. Nonetheless, the court found that a stay of the civil action was appropriate. The TTAB proceeding involves the same mark and the same parties, who have expended significant time and resources in that proceeding. The lengthy discovery process has been completed and the final aspects of the proceeding have been scheduled. In contrast, the civil action is in its infancy, no scheduling order has been entered, and no discovery has occurred. 

Primerica argued that it would be prejudiced by the stay because it could not get full relief from the Board: i.e., injunctive relief or determination of its common law claims. The district court was unmoved. Primerica could have brought suit in 2019 when it learned of HMW's alleged infringement but it chose the TTAB forum despite the limited relief available there. This initial choice undermined Primerica's claim for immediate injunctive relief to prevent irreparable harm.

The court concluded that a TTAB decision regarding underlying issues - priority, likelihood of confusion, and defendant's use of the mark - will aid in resolution of the civil action. Primerica asserted that awaiting a TTAB decision would be "pointless" because the decision would be subject to de novo review, but HMW pointed out that Primerica had offered no new evidence on the issue of priority, and that any district court review of issues untouched by new evidence would be subject to the substantial evidence standard. 

 

The court observed that a TTAB decision, even if subject to de novo review, would be likely to simplify at least some of the issue in the civil action. And so it granted the Defendant HMW's motion for a stay.

Read comments and post your comment here.

TTABlogger comment: Perhaps it finally dawned on Primerica that it was facing defeat in the TTAB  proceeding?

Text Copyright John L. Welch 2021.

TTAB Gives District Court Judgment Only Partial Res Judicata Effect, Strikes 8 of 10 Affirmative Defenses in EASYLING Cancellation Proceeding

Having successfully defeated an action for unfair competition brought in the Massachusetts federal court, Respondent Skawa Innovation moved for summary judgment in this cancellation proceeding that had been suspended pending the outcome of the litigation. Petitioner Smartling sought cancellation of a registration for the mark EASYLING (standard form) for a wide range of services, including language interpreter services, on the grounds of likelihood of confusion with its registered mark SMARTLING, abandonment, and lack of bona fide intent. Skawa asserted that claim and issue preclusion barred Smartling's claims. The Board agreed as to abandonment and lack-of-bona-fide-intent, but not as to likelihood of confusion. Smartling, Inc. v. Skawa Innovation Kft., Cancellation No. 92063654 (June 25, 2021) [not precedential.].

Affirmative Defenses: The Board found that Respondent Skawa had sufficiently pleaded its affirmative defenses of claim preclusion and issue preclusion, but eight others failed to pass muster. Neither failure to state a claim nor lack of "standing" is an affirmative defense. Likewise, "no likelihood of confusion" and the alleged weakness of petitioner's mark are not affirmative defenses. Skawa's affirmative defenses of "laches, waiver, estoppel, and/or acquiescence" and "inequitable conduct, unclean hands, and fraud" were stricken because they were not supported by any factual allegations. Finally, the purported defense that Smartling's registration could be restricted under Section 18 to avoid confusion, was stricken because Skawa did not plead a Section 18 claim in its answer or file a motion to restrict. Finally, the Board rejected Skawa's assertion that it was reserving the right to add additional defenses.

 

Claim Preclusion: In the civil action, Smartling had claimed unfair competition under Section 43(a), alleging infringement of Smartling's mark and name. Smartling had also asserted a claim for cancellation of Skawa's registration under Section 18. The jury found that Smartling did not prove that Skaw "engage[d] in unfair competition by infringing on [Petitioner's] trademark" and the court entered judgment in favor of Skawa "on all counts."

 

The Board found that Smartling could have raised the claims of abandonment and lack of bona fide intent in the civil action, and therefore those claims were barred by claim preclusion. Those claims are based on the same transactional facts as were available in the civil action. And so the Board granted Skawa's motion for summary judgment as to those claims.

As to Smartling's Section 2(d) claim, however, the Board declined to enter judgment summarily because the trademark infringement claim before the court "involves different transactional facts than the likelihood of confusion claim or the issue of registrability before the Board in a cancellation proceeding." See Jet, Inc. v. Sewage Am. Sys., 55 USPQ2d 1854, 1856 (Fed. Cir. 2000) (“Th[e] array of differences in transactional facts conclusively demonstrates that claim preclusion cannot serve to bar a petition for cancellation based upon an earlier infringement proceeding.”).

Issue Preclusion: Issue preclusion was inapplicable because the "neither the jury verdict nor the court's judgment explained the basis for the finding of likelihood of confusion in the context of the Section 43(a) claim, and it is not apparent what specific facts were litigated and decided as necessary to entering judgment in Respondent's favor on the claim." And so, the Board denied Skawa's issue preclusion defense.

Conclusion: The Board allowed Skawa one month to file an amended answer in which it may attempt to adequately re-plead the stricken affirmative defenses of laches, waiver, estoppel, acquiescence, inequitable conduct, trademark misuse, unclean hands,  and fraud, and its Section 18 defense based on a proposed amendment and restriction of its registration.

Read comments and post your comment here.

TTABlogger comment: Do you think these two marks are confusingly similar?

Text Copyright John L. Welch 2021.

TTAB Denies Petition to Cancel "ONEPACKET" Registration: Failure to Prove Nonuse

Respondent's rope-a-dope defense proved to be successful in this cancellation proceeding aimed at a registration for the mark ONEPACKET (standard form) for computer-related services. The Board concluded that petitioner Equinix failed to establish a prima facie case of abandonment. Respondent did not submit any testimony or evidence and did not file a brief. The record consisted only of circumstantial evidence of abandonment; Equinix did not take the testimony of respondent regarding its use or nonuse of the mark, and respondent did not respond to Equinix's discovery requests. Equinix, Inc. substituted for Packet Host, Inc. v. OnePacket LLC, Cancellation No. 92069714 (July 2, 2021) [not precedential] (Opinion by Judge Linda A. Kuczma).

 

The sole issue, according to the Board, was "whether Respondent abandoned its registered mark ONE PACKET by failing to use, or cease using of, the mark in the United States in connection with the services listed in its registration without an intent to resume use." [Emphasis supplied.]. 

[Actually, Section 45 says "with intent not to resume such use." Is the lack of intent to resume use the same as an intent not to resume use? I think not. Proving an intent not to resume use seems like a higher burden than proving no intent to resume use. What if the registrant has no intent one way or the other? Then registrant wins. - ed.]

Petitioner Equinix's evidence of nonuse consisted of a visit to respondent's address in New York City, where respondent could not be found, a copy of respondent's website having a 2014 copyright notice and failing to list any employees or officers of respondent or provide any other indication that the mark was in use, and copies of Internet search results showing no trace of respondent other than its website. The Board was not impressed by this showing:

Although this evidence is relevant, it does not establish Respondent’s lack of use of its mark for a three-year period. While use in commerce of a service mark requires rendering the services, it does not require updates to a website, location at a specific address, or advertising in any specific venue. Abandonment is a question of fact; thus, any inference of abandonment must be based on proven fact

Under Section 45, proof of nonuse for a three-year period would have triggered a presumption of abandonment and would have shifted the burden to respondent. Equinix failed to make a prima facie showing of abandonment because it failed to prove nonuse of the subject mark.

Read comments and post your comment here.

TTABlogger comment: At a minimum, petitioner should have moved to compel discovery responses. And, as the Board pointed out, it could have taken respondent's testimony.

Text Copyright John L. Welch 2021.

Ted Davis Article: "Recent Developments in Trademark and Unfair Competition Law"

Thank you, Ted Davis, for permitting me to post a link (here) to your article "Trademark Case Decisions: The Past Year in the Courts & at the TTAB," This article is a companion to the webinar presentation of July 13th sponsored by the New York Intellectual Property Law Association.

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

TTABlog Test: Must AQUACHAR be Disclaimed in AQUACHAR & Design for Water Filtration Products?

The USPTO refused to register the mark shown below for "water filtration products, namely, carbon-based filtration media for use in water treatment, aquariums, and other devices, and systems," absent a disclaimer of the term "AQUACHAR." The Examining Attorney relied on, inter alia, definitions of "aqua" (water") and "char" (a charred substance: "CHARCOAL") in maintaining that AQUACHAR describes a characteristic of the products. Applicant submitted negative dictionary evidence showing no definition for AQUACHAR. How do you think this came out? In re Acquachar, LLC, Serial No. 88539430 (July 9, 2021) [not precedential[ (Opinion by Judge Albert Zervas).

The Board first observed that consumers are likely to perceive "AquaChar" as two individual components, "aqua" and "char." The first term will connote "water," given the unequivocal definition, the reference to water in the tag line, and the fact that the goods are used for water filtration. As to the word "char," the Board found that three definitions were relevant.

The first defined "char" as "charcoal," and two websites discussed "activated charcoal" for water filtration. However, there is a difference between activated charcoal and charcoal. Special manufacturing techniques must be applied to turn charcoal into activated charcoal. The Board therefore found that "charcoal" is not "a term that would immediately come to mind when considering Applicant's goods which make use of activated charcoal."

Applicant does not refer to "char" in its advertising, but to "activated charcoal." "A vague suggestion of a feature or characteristic of Applicant's goods is insufficient to establish mere descriptiveness." 

 

A second definition of "char" is "a charred substance." Some webpages use "char" in the context of filtration, but they make clear that the char is further treated to create activated charcoal. "Because the char itself is not used in filtration, . . . any association of CHAR meaning 'a charred substance' in the context of Applicant's goods requires thought or conjecture."

The third definition refers to "char" as a verb meaning "to convert to charcoal or carbon usually by heat: BURN." There was no evidence of use of "char" as a verb in the context of water filtration.

In sum, while the term “char” has three meanings relevant to Applicant’s goods, none of them immediately describe, without thought or conjecture, a feature or characteristic of Applicant’s identified goods.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Do you agree with the Board's decision? BTW, there's a fish called the Arctic Char. So what, you might ask.

Text Copyright John L. Welch 2021.

Two Prior Registrations and DuPont Factor 13 Save "ELDORADO RESORT CASINO RENO" From a Section 2(d) Refusal

The USPTO refused to register the mark ELDORADO RESORT CASINO RENO (in standard characters) for “Bar services; Hotel services; Restaurant services; Resort hotel services,” finding confusion likely with six registered marks containing the term EL DORADO for overlapping services. On this appeal, the Board found the marks to be confusingly similar and the channels of trade and classes of consumers presumably identical. But Applicant owns prior registrations for ELDORADO HOTEL CASINO RENO in standard character and design forms, and the Board concluded that, as in Strategic Partners, the thirteenth duPont factor "tipped the scale" and outweighed the other factors, "making confusion unlikely under the facts of this case." In re Eldorado Resorts LLC, Serial No. 88514634 (July 8, 2021) [not precedential] (Opinion by Judge Melanye K. Johnson).

Under the 13th DuPont factor, the Board must consider "any other established fact probative of the effect of use." Cases involving an applicant's prior registrations "customarily determine whether substantially similar marks should be allowed to coexist on the register because of an applicant's prior registration of a similar mark for the involved goods or services."

Applicant pointed to its ownership of registrations for ELDORADO HOTEL CASINO RENO in standard character form and in the word-plus-design form shown below, for cabaret shows and hotel and restaurant services. It argued that this is the type of situation contemplated by Strategic Partners, which involved an application for the mark ANYWEARS and a prior registration for the mark ANYWEAR, the latter registration having coexisted with the blocking registration for more than 5 years. [TTABlogged here].

In applying the 13th factor, the Board considered whether there was any meaningful difference between applicant's proposed mark and its prior registered marks, whether the services are identical, and the length of time the prior registrations had co-existed with the cited registrations. 

The Board acknowledged that, in contrast to Strategic Partners, the registrations involved here had not co-existed for more than five years, but it observed that more than just the length of the co-existence must be considered. It observed that the proposed mark and the prior standard character mark differ only by the disclaimed terms "RESORT" and "HOTEL," and the proposed mark does not differ meaningfully from the word-plus-design mark. 

The Board further noted that "not one of the examining attorneys who examined the cited registrations refused registration of those marks based on a likelihood of confusion with the marks of applicant's prior registrations." The prior registrations were issued in 1999 and 2000 and so were not vulnerable to a Section 2(d) challenge.

Thus, although the first, second, and third DuPont factors weigh in favor of finding a likelihood of confusion, we find, as in Strategic Partners, that the thirteenth factor tips the scale and outweighs them all, making confusion unlikely under the specific facts of this case.

And so the Board reversed the refusal to register

Read comments and post your comment here.

TTABlogger comment: Hat tip to FOB Bill McGrath.

P.S.: The Morehouse defense, applicable in inter partes proceedings, is not interpreted so liberally.

Text Copyright John L. Welch 2021.

TTABlog Article: "Decisions of the Federal Circuit and the Trademark Trial and Appeal Board on Registrability Issues July 2020 to June 2021"

Tomorrow I will be presenting a webinar, along with Ted Davis, for the New York Intellectual Property Law Association, on recent trademark cases in the courts and at the TTAB. Here (pdf) is an article I prepared, briefly summarizing the precedential decisions of the CAFC and the TTAB over the past twelve months.

The CAFC issued four precedential opinions: an important decision on the registrability of color packaging (Forney), a mundane Section 2(d) case (QuikTrip), and two involving what used to be called "standing," but is now referred to as "entitlement to a statutory cause of action" (Australian Therapeutic and Corcamore). On the TTAB side, there's a rare Section 14(3) misrepresentation of source decision (THUMS UP and LIMCA), an interesting twist on the application of Lexmark (ADVENTIST), a dilution decision (Coca-Cola), a half-dozen failure-to-function rulings (e.g., GOD BLESS THE USA), and a new surname case (tapio).

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

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

The TTAB recently decided the appeals from the three Section 2(d) likelihood of confusion refusals summarized below. At least one of the three refusals was reversed. Let's see how you do in foreseeing the results. [Answer will be found in the first comment.]

In re SUMESA S.A., Serial No. 88584024 (July 2, 2021) [not precedential] (Opinion by Judge Frances S. Wolfson). [Section 2(d) Refusal of the mark SUMESA RANCHERITO & Design (shown below) for "soup, namely, chicken broth, chicken bouillon concentrates, and soup concentrates” and “seasonings for soups” in view of the registered mark RANCHERO for "food products and ingredients, namely, bouillon and soup mixes” and for “seasonings, food ingredients, sauces, and blends of spices, namely, liquid seasoning, Worcestershire sauce, soy sauce and chicken flavoring." Applicant argued that consumers will perceive the literal portion of its mark as a unit: SUMESA RANCHERITO, and that “the proximate arrangement of the two terms leads the reader to view the two terms in combination and to read the two as a single entity with the term ‘SUMESA’ coming first, which negates any potential assumption of weight assigned to the second term.”]

In re Forage Holdings LLC, Serial No. 87561681 (July 2, 2021) [not precedential] (Opinion by Judge Thomas W. Shaw). [Section 2(d) refusal of FORAGE KITCHEN (in standard character form) for restaurant services [KITCHEN disclaimed], in view of the registered mark PHORAGE for bar and restaurant services. Applicant submitted third-party website and registration evidence for marks containing the word FORAGE for restaurant services and food products, in arguing the FORAGE is a weak term as a source indicator, and it further asserted that “PHORAGE is a coined term that is a play on the trendiness of the Vietnamese soup, PHO.]

In re Pili Naturals USA Corp. Application Serial No. 87517538 (July 1, 2021) [not precedential] (Opinion by Judge David K. Heasley). [Section 2(d) refusal of the mark PILI ANI & design (below left) for, inter alia, facial creams and moisturizers, all of the goods containing Pili oil [PILI disclaimed], in view of the mark PILI in the stylized form shown below right, for, inter alia, body creams and lotions. Applicant focuses on the marks’ commercial impressions. Applicant maintained that the marks differ in connotation because its mark is descriptive or suggestive of its principal ingredient: pili oil, from the pili tree native to the Philippines, whereas Registrant’s mark is arbitrary.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2021.

Recommended Reading: The Trademark Reporter, May-June 2021 Issue

Here's a bit of beach reading for your summer vacation: the May-June 2021 (Vol. 11 No. 3) issue of The Trademark Reporter (TMR). [pdf here]. Editor-in-Chief Willard Knox summarizes the contents, below.

  

In this issue, we offer readers a remembrance of former TMR Editor-in-Chief Clifford W. Browning; an article by two survey experts on Eveready surveys, with original research; and an article exploring the long-running dispute over the HAVANA CLUB trademark. 

In Memoriam: Clifford W. Browning (1951–2020). This issue of the TMR is dedicated to former Editor-in-Chief Clifford W. Browning, who is memorialized by his fellow former Editor-in-Chief, Theodore C. Max. 

When to Conduct an Eveready Survey: The Importance of Aided Awareness, Dr. Bruce Isaacson and Dr. Keith A. Botner. This article by two survey experts on the evergreen topic of Eveready surveys revives a TMR tradition of our authors engaging in a robust and respectful dialogue about issues of importance. 

Expropriation of Intellectual Property Rights: The HAVANA CLUB Trademark, Pablo Balañá-Vicente. In this article based on his 2020 Ladas Memorial Award-winning entry (Student Category), the author explores the long-running dispute (in multiple countries and forums) over the HAVANA CLUB trademark and argues for respect for cultural identity in intellectual property.

Read comments and post your comment here.

TTABlog comment: Once again, I thank The Trademark Reporter for allowing me to provide this issue to you all. This issue of the TMR is Copyright © 2021, the International Trademark Association, and is made available with the permission of The Trademark Reporter®.

Text Copyright John L. Welch 2021.

TTABlog Test: Must "BARK" Be Disclaimed in "BIG BARK" for Tree Care Services?

The USPTO refused to register the mark BIG BARK for tree care services, unless the applicant disclaimed the word BARK. Applicant Corporate Green contended that a disclaimer is not required because BIG BARK is a unitary mark. Was applicant barking up the wrong tree? How do you think this appeal came out? In re Corporate Green, LLC, Application Serial No. 87519612 (June 30, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Board had no doubt that "bark" is descriptive of tree care services, and Corporate Green didn't contend otherwise. [Personally, I have my doubts - ed.]. So the Board turned to the question of whether BIG BARK is a unitary mark.

A mark is unitary if its elements are unseparable. A unitary mark "has a distinct meaning of its own independent of the meaning of its constituent elements." It must create "a single and distinct commercial impression." [In short, I know it when I see it. - ed.].

The Board looked to applicant's specimen of use (depicted above).

It is apparent that, in order to determine whether what applicant seeks to register constitutes a single composite or unitary mark, one must look to the specimens filed with an application because they show the mark as used on or in connection with the goods and therefore how the average purchaser would encounter the mark under normal marketing of such goods and also suggest what the reaction of the average purchaser would be to this display of the mark.

The Board observed that the term "Big Bark" does not have a well-known or common meaning.

[T]he Examining Attorney did not submit any evidence showing the term “Big Bark” has any meaning or is used in connection with trees or tree care services. Thus, the combination of “Big” and “Bark” forming the composite mark BIG BARK has a distinct meaning of its own independent of the meaning of its constituent elements; that is, BIG BARK engenders a commercial impression separate and apart from the word “Bark.”

The Board found BIG BARK to be an incongruous term because "the combination of 'Big' and 'Bark' is illogical, out of place, or unexpected." BIG BARK is an imaginary thing, and thus the mark is incongruous. "Applicant’s clients and prospective clients will refer to Applicant’s services as BIG BARK tree services, not 'Big' tree services or 'Bark' tree services." 

The alliteration of BIG and BARK reinforces the unitary nature of the mark. See, e.g., In re Kraft, 218 USPQ 571, 573 (TTAB 1983), where the Board found LIGHT ‘N LIVELY for reduced calorie mayonnaise unitary based not only on the “alliterative lilting cadence” of the wording but also on the fact that the mark as a whole “has a suggestive significance which is distinctly different from the merely descriptive significance of the term ‘LIGHT’ per se” and that “the merely descriptive significance of the term ‘LIGHT’ is lost in the mark as a whole.”

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: What if the applicant works only on big trees? If the applicant advertises on the Internet, is their byte and good as their bark, I wonder?

Text Copyright John L. Welch 2021.

Precedential No. 18: TTAB Orders Cancellation of Two Registrations Under Section 14(3) Due to Registrant's Misrepresentation of Source

Section 14(3) cases are as rare as a White Sox fan in Boston. Not since the FLANAX case (Bayer v. Belmora) had the TTAB tackled this issue, and here it reached the same outcome: cancellation of two registrations on the ground that Registrant Meenaxi used its registered marks THUMS UP and LIMCA to misrepresent the source of its soft drink products. Petitioner Coca-Cola proved that it owns those two marks in India and has sold soft drinks in the United States under the marks, and therefore was entitled to bring a statutory cause of action under Section 14(3). The Board found that Meenaxi deliberately caused consumers to believe that its products were licensed or produced by the same source as the products sold in India. The Coca-Cola Company v. Meenaxi Enterprise, Inc., 2021 U.S.P.Q.2d 709 (T.T.A.B. 2021) [precedential] (Opinion by Judge Cynthia C. Lynch).

Section 14(3) provides that a registration is subject to cancellation if, inter alia, "the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used." The Board observed that the misrepresentation "must involve a respondent deliberately passing off its goods as those of another."

The claim “refers to situations where it is deliberately misrepresented by or with the consent of the respondent that goods and/or services originate from a manufacturer or other entity when in fact those goods and/or services originate from another party.” Belmora, 110 USPQ2d at 1632 (quoting Osterreichischer Molkerei-und Kasereiverband Registriete GmbH v. Marks & Spencer Ltd., 203 USPQ 793, 794 (TTAB 1979) and citing Global Maschinen GmbH v. Global Banking Sys., Inc., 227 USPQ 862, 864 n.3 (TTAB 1985)). The respondent’s use must be a “blatant misuse of the mark … in a manner calculated to trade on the goodwill and reputation of petitioner.” Otto Int’l Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007).

Laches: Meenaxi asserted a defense of laches based on the 3-and-1/2 year gap between issuance of the registrations and Coca-Cola's filing of its petition for cancellation. The Board, without deciding whether laches is an available defense to a Section 14(3) claim, and assuming arguendo that the delay was unreasonable, found that Meenaxi failed to provide any evidence that it suffered prejudice resulting from the delay. See, generally, Ava Ruha Corp. v. Mother’s Nutritional Ctr., 113 U.S.P.Q.2d 1575 (T.T.A.B. 2015). 

Entitlement to a Statutory Cause of Action: A party may petition to cancel a registration when the cause of action is within the zone of interests protected by Section 14 and when the party has a reasonable belief in damage proximately caused by the continued registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 U.S.P.Q.2d 11277, at *6-7 (Fed. Cir. 2020), cert. denied, ___ U.S. ___ (2021).

Coca-Cola submitted evidence of its ownership of the marks THUMS UP and LIMCA in India for soft drinks, where the marks are well known. The reputation of those products extends to the United States, "at least among the significant population of Indian-American consumers." The beverages are imported and sold in the United States, and Coca-Cola plans to market THUMS UP and LIMCA beverages more widely in this country. 

The Board observed that in Bayer v. Belmora, "a factual scenario similar to the one in this case," the Board found that Bayer had the requisite entitlement to a cause of action, even though Bayer acknowledged that it did not use the mark FLANAX in the United States. Here, in contrast, Coca-Cola proved that its products are sold by third-party importers in the United States.

As to its belief in damage caused by Meenaxi's misrepresentations, Coca-Cola pointed to the "upset expectations" of consumers and to Meenaxi's attempts to block importation of Coca-Cola's beverages into the United States.

The Board unsurprisingly concluded that Coca-Cola "is not a mere intermeddler" and was entitled to bring its Section 14(3) cause of action.

Section 14(3): The evidence showed that Coca-Cola's THUMS UP and LIMCA brands are well known in India and their reputation extends to the Indian-American population in the United States. Meenaxi is a purveyor of food products made in India and distributed primarily to Indian grocers in the United States. 

Meenaxi claimed, incredibly, that it came up with the brand names on its own, although it was clear that Meenaxi's founders were familiar with the products sold in India. Meenaxi developed logos that "strongly resemble" those used by Coca-Cola.

Respondent’s adoption of logos essentially identical to both the older and updated versions of Petitioner’s logo reflects an effort to dupe consumers in the United States who were familiar with Petitioner’s THUMS UP cola from India into believing that Respondent’s THUMS UP cola was the same drink. See E.E. Dickinson Co. v. T.N. Dickinson Co., 221 USPQ 713, 715 (TTAB 1984) (properly pleaded claim of misrepresentation of source alleged that in addition to use of the same mark as plaintiff, registrant marketed its goods using trade dress similar to plaintiff’s).

Moreover Meenaxi adopted the same tagline, "Taste the Thunder," that Coca-Cola used in India to market the THUMS UP beverage.

The evidence also showed that Meenaxi has engaged in a pattern of adopting marks that were essentially identical to those owned by others.

We find that Respondent participated directly in a pattern of copying for use in the United States third-party marks with which Respondent was familiar from products in India, and a further pattern of creating similar logos, which pattern includes the marks at issue here. See L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1442 (TTAB 2012). (“Applicant’s demonstrated pattern of filing applications to register various well-known marks convinces us that applicant’s adoption of the L’OREAL PARIS mark was in bad faith, with the intention to trade off of opposer’s famous L’OREAL and L’OREAL PARIS marks”).

Meenaxi maintained that it has priority of use in the United States, but it acknowledged that Coca-Cola "need not establish priority for its misrepresentation of source claim in the United States."

As the Fourth Circuit Court of Appeals held, “neither § 14(3) nor Lexmark mandate that the plaintiff have used the challenged mark in United States commerce as a condition precedent to its claim.” Belmora, 819 F.3d at 715 (citing Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 1278 (Fed. Cir. 2014) (“In the proceedings before the Board, however, Cubatabaco need not own the mark to cancel the Registrations under [Section 14(3)].”)).

The Board concluded that Meenaxi "intended to cause consumers exposed to Respondent’s use of the THUMS UP and LIMCA marks to draw the logical conclusion that Respondent’s products in the United States are licensed or produced by the source of the same types of cola and lemon-lime soda sold under these marks for decades in India."

Therefore, the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Note that in Belmora, the Fourth Circuit stated the Belmora owns the FLANAX mark, despite the order to cancel the FLANAX registration and despite Bayer's claim of unfair competition. Here, Meenaxi asserted that it is the prior user of the marks in the USA. Does that mean that Meenaxi owns these two marks in this country? 

For a discussion of U.S. law vis-a-vis trademark protection based on reputation without use, see Martin B. Schwimmer and John L. Welch, "U.S. Law Inches Towards Protecting Trademark Reputation Without Use," 81 World Trademark Review (Autumn 2019). [pdf here].

Text Copyright John L. Welch 2021.

NYIPLA Webinar July 13th: Davis and Welch Review The Past Year in Trademarks

On Tuesday, July 13th at 12:30 PM, Ted Davis and Yours Truly will provide a review of recent trademark cases in a webinar aptly titled "Trademark Case Decisions: The Past Year in the Courts and at the TTAB," sponsored by the New York Intellectual Property Law Association. Register (with a fee) here.

As usual, Ted will cover the courts. Yours truly will follow up with a review of developments and decisions at the TTAB.

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

TTABlog Quarterly Index: April - June 2021

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the TTABlog on Twitter: @TTABlog.

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

• Gilead Science Loses Opposition to GILEAD CAPITAL: No Section 2(d) Likelihood of Confusion and No 2(a) False Connection

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Is QUARRY VINEYARD Confusable with PEDRERA for Wine?
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• Failure to Prove "Standing" and Priority Dooms Section 2(d) Cancellation of CHUBB TRAVEL SMART Registration for Mobile Apps
• Catch-all Thirteenth DuPont Factor Saves HANA BANCORP & Design from Section 2(d) Refusal
• Precedential No. 13: TTAB Affirms Section 2(d) Refusal of NBA Star Joel Embiid's "TRUST THE PROCESS" For Shoes
• TTABlog Test: Which of These Three Section 2(d) Refusal Was/Were Reversed?
• TTABlog Test: Are These Two "Bull" Designs Confusingly Similar For Auto Parts?
• In a Six-Year TTAB Tussle, Monster Energy and Toronto Raptors Claw Their Way to a Dismissal of All Section 2(d) Claims and Counterclaims
• Gilead Science Loses Opposition to GILEAD CAPITAL: No Section 2(d) Likelihood of Confusion and No 2(a) False Connection
• TTAB Test: Which of These Three Section 2(d) Refusal Was/Were Reversed?
• Apple, Inc. Survives Section 2(d) Opposition Challenge to APPLE MUSIC by Tacking On Prior Use of APPLE by Apple Corps

• Fourth Circuit Affirms E.D.Va.: VAGISAN Confusable With VAGISIL for Feminine Hygiene Products
• TTABlog Test: Is CHROMAFUSION for Plastic Sleeves for Trading Cards Confusable WIth CHROME for Trading Cards? [No]
• M.D. Florida District Court Upholds TTAB Decision Affirming Section 2(d) Refusal of VIVE HEALTH for Retail Medical Suply Services
• TTABlog Test: Are These Marks Confusingly Similar for Waterpark Services? [No]

Section 2(e)(1) - Mere Descriptiveness:

• TTABlog Test: Must "HAUS" Be Disclaimed in "GRAVITY HAUS" for Social Club Services? [Yes]
• TTABlog Test: Must "DANK" be Disclaimed in DANK TANK for Ale and Beer? [Yes]
• TTABlog Test: How Did These Three Mere Descriptiveness Appeals Turn Out?

Section 2(e)(1) - Deceptive Misdscriptiveness:

• TTABlog Test: How Did These Three Appeals from 2(e)(1) Mere Descriptiveness Refusals Turn Out?
• Precedential Nos. 9 and 10: TTAB finds "CLEAR" Deceptively Misdescriptive of Non-Transparent Clothing and Handbags

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

• TTABlog Test: Is MALIBU SUPPER CLUB Primarily Geographically Descriptive of Restaurant Services? [Yes]

 

 

 

Section 2(e)(4) - Primarily Merely a Surname:

• TTABlog Test: Is BREAUXS for Barbecue Grills Primarily Merely a Surname [Yes]?
• TTABlog Test: Is "SOUND ART CREATION NASH STUDIO" Primarily Merely a Surname [Yes]?
• TTABlog Test: Is BARSKI Primarily Merely a Surname for Glassware and Related Goods? [No]

Section 2(e)(5) - Functionality

• TTAB Affirms Refusal to Register Canned Fish Packaging on the Supplemental Register: Functional and Generic
• Precedential No. 12: TTAB Grants Petition to Cancel Registration for Gun Barrel Trade Dress Due to Section 2(e)(5) Functionality
• E.D. Va. District Court Upholds TTAB Affirmance of Functionality of Bathtub Overflow Drain Cap

Section 2(f) - Acquired Distinctiveness

• Precedential No. 16: WYHA? TTAB Affirms Mere Descriptiveness Refusal of ONLINETRADEMARKATTORNEYS.COM as Claim of Acquired Distinctiveness Fails
• Timberland Boot Design Lacks Acquired Distinctiveness, Says TTAB
  
  

Abandonment/Nonuse:

• Precedential No. 8: TTAB Orders Cancellation of "NT-MDT" Registration Due to Nonuse

Dilution:

• TTAB Sustains Coca-Cola's Dilution Claim Against "Conceal-Carry Registered Handgun" Stylized Mark

Genericness

• TTAB Sustains Opposition to Apple's "LIVE PHOTOS," Finding it Generic or Merely Descriptive
• TTAB Affirms Refusal to Register Canned Fish Packaging on the Supplemental Register: Functional and Generic
• TTAB Affirms Genericness Refusal of PICKLESHOT for .... Guess What?
• Precedential No. 15: On Remand, TTAB Reverses COOKINPELLETS.COM Genericness Ruling, But Affirms Mere Descriptiveness and Lack of Acquired Distinctiveness
• North Carolina District Court Finds PRETZEL CRISPS Generic, Orders Cancellation of Registration
• TTABlog Test: Is "SWISS MILITARY" Generic for Watches of Swiss Origin? [No]
  
• TTAB Finds DENVER MIX Generic for ..... Guess What?
• TTAB Finds ARTESANO Generic for Bread, but if not Generic, Registrable Under Section 2(f)
• TTAB Finds CERTIFIED BISON Generic for . . . . Guess What?

Failure to Function/Specimens of Use/Nonuse:

• TTAB Affirms Failure-to-Function Refusal of NIGGA for Clothing
• Llama Design Mark Fails to Function as a Trademark for Video Game Software, Says TTAB
• "DEHYDRATION RELIEF FAST" Incapable of Functioning as a Trademark for Hydration Solution Products, Says TTAB
• Precedential No. 11: Specimen Webpages Fail the "Display-Associated-With-the Goods" Test, Says TTAB
• TTAB Affirms Refusal of ELECTRONIC PAYMENTS: Providing Independent Sales Reps is Not a Registrable Service
• "INVENTORY IS EVIL" Fails to Funtion as a Trademark for Business Consulting Services, Says TTAB

Prosecution Issues:

• Precedential No. 14: Indefinite Recitation of Services and Failure to Adequately Respond to Information Request Sink SHIFTMAG Application

Procedural Issues:

• TTAB Dismisses MANDALAEVERYWEAR Opposition; Opposer Proved Prior Advertisement But Not Prior Rendering of Services
• Precedential No. 17: TTAB Dismisses ADVENTIST Cancellation Petition Due to Failure to Maintain "Standing"
• Turn Back the Clock! TTAB Designates 2019 COKE ZERO Decision Precedential

CAFC Decisions:

• CAFC Affirms TTAB: FOCUSVISION Confusable With FOCUS for Data Management Software
• CAFC Affirms TTAB: "BLUE INDUSTRY" Not Confusable with, or Dilutive of, "INDUSTRY" for Clothing
• CAFC Upholds TTAB: Affirms Order for Cancellation of MOBILEBLACKBOX Registration for Audio Speakers on the Ground of Nonuse

Recommended Reading:

• Recommended Reading: Zerounian and Thiele, "An Introduction to the Trademark Moderization Act"
• Recommended Reading: "The Role of Consumer Uncertainty in Trademark Law: An Experimental and Theoretical Investigation"
• Schwimmer and Welch: "Where to appeal a TTAB decision? The choice is complicated"
• Recommended Reading: Prof. Lorelei Ritchie, "What is 'Likely to be Confusing' About Trademark Law: Reconsidering the Disparity Between Registration and Use"">/a>

Other:

• TTAB Posts June 2021 (Video) Oral Hearing Schedule
• USPTO Issues Notice of Proposed Rulemaking to Implement Provisions of the Trademark Modernization Act of 2020, Plans Two Roundtables
• INTA Pro Bono Legal Clinic (Virtual): June 15th, 11AM to 12PM
• California Lawyers Association Webinar June 15: "Trademark Cases To Remember From A Year To Forget"
• TTAB Posts May 2021 (Video) Oral Hearing Schedule
• IP Talk, Episode 2: "Keeping Tabs on the TTAB." The TTABlogger Speaks!
• TTAB Posts April 2021 (Virtual) Hearing Schedule

Text Copyright John L. Welch 2021.

TTAB Posts July 2021 (Video) Oral Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled seven (VII) oral hearings for the month of July 2021. The hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

July 13, 2021 - 1  PM: In re Cuup, Inc., Serial No. 88326435 [Section 2(d) refusal of CUUP BODY TALK for “Providing a website featuring non-downloadable articles in the fields of women's apparel, undergarments, fitness, nutrition and wellness” and “Computer services, namely, creating an on-line community for registered and unregistered users to participate in discussions, get feedback from their peers, form virtual communities, upload photographs, and engage in social networking services in the fields of women's apparel, fitness, nutrition and wellness” in view of the registered mark BODYTALK, in standard character and design form, for "“providing information through an electronic communications network in the fields of holistic and alternative healing technique."]

 
July 14, 2021 - 3 PM: Smokey Island Grille LLC v. The Tai Walker Company LLC and Ty Walker, Inc., Opposition No. 91241481 [Section 2(d) opposition to registration of the mark SMOKEY ISLAND GRILLE JAMAICAN STYLE for "on-line ordering services in the field of restaurant take-out and delivery" and "restaurant, bar and catering services" [GRILLE JAMAICAN STYLE disclaimed], in view of opposer's alleged common law rights in the mark SMOKEY ISLAND GRILLE and an identical logo for restaurant services.]

July 15, 2021 - 1 PM: In re L-Nutra, Inc., Serial No. 87635652 [Section 2(e)(1) mere descriptiveness refusal of FAST DRINK for "Nutritional meal replacement drinks adapted for medical use; herbal teas for medical treatments."]

July 20, 2021 - 1 PM: In re Joy Tea Inc., Serial No. 88640009 [Refusal to register FOR JOY for, inter alia, tea-based beverages containing CBD, on the ground that the goods are per se violations of both the Controlled Substances Act (CSA) and the FDCA, and therefore applicant lacks the required bona fide intent to lawfully use the mark in commerce under Sections 1 and 45.]

 

 

 

 

July 21, 2021 - 10 AM: In re Signa ES Karim Omega LLC DBA Signa Es Limited Liability Company, Serial No. 88671022 [Refusal to register SIGNA ES for "Advising others concerning investments in intellectual property assets and intangible business assets, both directly and indirectly through other entities" on the ground of failure to provide an acceptable specimen of use.]

 

 

July 22, 2021 - 12 PM: Laverne J. Andrusiek v. Cosmic Crusaders LLC, Cancellation No. 92064830 [Petition for cancellation of a registration for the mark CAPTAIN CANNABIS for comic books, on the grounds of nonuse, failure to function as a trademark, fraud, and likelihood of confusion with petitioner's alleged common law rights in the identical mark for comic books.]

July 29, 2021 - 12 PM: In re Edward Kwak, Serial No [Section 2(d) refusal of KINDSKIN for "Cosmetic skin care services; Health spa services, namely, cosmetic body care services; Medical spa services, namely, minimally and non-invasive cosmetic and body fitness therapies," in view of the registered mark KIND HEALTH GROUP for "Medical spa services, namely, minimally and non-invasive cosmetic and body fitness therapies."]
 

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TTABlog comment: Since TTAB hearings are supposed to be public, shouldn't these video hearings be available for everyone to (at least) hear?

Text Copyright John L. Welch 2021.