Friday, February 12, 2016

TTAB Test: Which One of these Three Section 2(d) Refusals Was Reversed?

I once heard a TTAB judge say that the outcome of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Well, try your luck on these three appeals. Which one resulted in a reversal? [Answer in first comment.]

In re PTT, LLC, Serial No. 86203092 (January 21, 2015) [not precedential]. [Refusal to register WHAT I LIKE ABOUT YOU for computer game software for "machines, namely, slot machines and video lottery terminals," in view of the identical mark for "entertainment services in the nature of live-action, comedy, drama and animated television series" and "digital versatile discs featuring music, comedy, drama, action, adventure, and/or animation"].

In re Epic Naturals, LLC, Serial Nos. 85762427 and 85762380 (February 8, 2016) [not precedential]. [Refusals to register the marks THE EPIC SEED in standard character and design form, for "yogurt, strained yogurt, and probiotic yogurt-based beverages not for medical purposes" on the ground of likelihood of confusion with the registered mark EPIC for cheese].

In re Fivepals, LLC, Serial No. 85924540 (February 9, 2016) [not precedential]. [Refusal to register ALICE for "Mobile communication downloadable software platform allowing hotel customers to remotely access and reserve hotel services through smartphones, and allowing hotels to track and analyze customer preferences and characteristics," in view of the registered mark KATIE ALICE for "Hotel reservation services; restaurant reservation services; hotel restaurant reservation services; on-line booking of restaurant places (seats), including hotel restaurant places (seats); information about restaurants provided on-line from a computer data base or from the Internet; restaurant menus, including hotel restaurant menus; provided on-line from a computer data base or from the Internet; telephone booking services in respect of restaurants and hotel restaurants; information, advice and consultancy services in respect of the above; providing information via a global computer network in relation to the aforesaid services"

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Thursday, February 11, 2016

Precedential No. 41: TTAB Refuses Reconsideration of its Denial of Rule 12(b)(6) Motion to Dismiss

Once in a great while, a precedential interlocutory ruling of the TTAB slips through the TTABlog crack. Here's one from December 2015 (although I can't understand why it earned the precedential label). The Board had denied (here) Respondent Knowluxe's FRCP 12(b)(6) motion to dismiss Guess?'s petition for cancellation of a registration for the mark shown below, for caps and t-shirts. On this request for reconsideration of that ruling, respondent likewise had no luck. Guess? IP Holder L.P. v. Knowluxe LLC, 116 USPQ2d 2018 (TTAB 2015) [precedential].

In its 12(b)(6) motion, Knowluxe argued that Guess?'s claims of likelihood of confusion and dilution were implausible and that the asserted trademark rights in a triangle design "conflict with the doctrine of aesthetic functionality and the prohibition against claims of trademark rights in gross."

The Board pointed out that "[a] motion to dismiss for failure to state a claim concerns only one issue: the legal sufficiency of the pleaded claims." It concluded that the motion had been properly considered.

The Board’s denial of the motion to dismiss set forth the legal standard for determining the sufficiency of the pleadings, the requirements for properly pleading likelihood of confusion and dilution, and the allegations in the petition to cancel which satisfied those requirements. Nothing more was necessary to explain that Petitioner properly pleaded its likelihood of confusion and dilution claims. Respondent’s further arguments regarding matters other than the legal sufficiency of the claims were superfluous.

Respondent’s arguments were in the nature of defenses, but the standard for considering a Rule 12(B)(6) motion is whether the complaint states a plausible claim for relief. The petition here met that standard.

The Board noted that respondent will have "the opportunity to assert any appropriate defense, develop the record, and argue the merits of its case, but consideration of the merits is premature at this juncture."

Read comments and post your comment here.

TTABlog comment: Pretty basic, don't you think?

Text Copyright John L. Welch 2016.

Tuesday, February 09, 2016

IP Cases on Supreme Court Docket: October 2015 Term

Wolters Kluwer, in its IP Law Daily newsletter, provided a chart here listing the current "U.S. Supreme Court Docket, October 2015 Term — Intellectual Property Cases," with links to the docket sheet, the lower court ruling, and many of the pertinent briefs. Patent cases overwhelm the trademark cases in number. We will note below the few of the latter variety that concern TTAB-related matters.

Shammas v. Hirschfeld, formerly known as Shammas v. Focarino: Pending petition for a writ of certioriari from a ruling of the Fourth Circuit that in a Section 1071(b) civil action for review of an ex parte TTAB decision, the plaintiff/applicant must pay the PTO's expenses (including attorney and paralegal fees), win or lose (allegedly contrary to the "American Rule"). [TTABlogged here]. The USPTO filed is brief in response to the petition on February 3, 2016.

New Millennium Sports, S.L.U. v. Jack Wolfskin Ausrustung fur Draussen GmbH & Co. KGaA: Petition for certioriari denied on January 5, 2016. Sought review of a CAFC decision [TTABlogged here], which held that evidence of third-party use is "powerful on its face" even when the specific extent and impact of the usage has not been proven. The CAFC reversed a TTAB decision that had found the marks shown below to be confusingly similar for clothing items.

Couture v. Playdom: Petition for certioriari denied on October 5, 2015. David Couture sought review of the CAFC's ruling [TTABlogged here] that his application to register a service mark for certain entertainment services was void ab initio because he had not "rendered" the services prior to the date of filing his use-based application.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

Monday, February 08, 2016

WYHA? "HEALTHY HEMP" Merely Descriptive of Hemp-Containing Baked Goods, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register HEALTHY HEMP, finding it merely descriptive of "bakery goods; breads; tortillas; all of the foregoing containing hemp" [HEMP disclaimed]. Applicant argued that the mark as a whole "has no meaning," and that "the Board has approved marks that convey more about the respective goods or services than does Applicant's mark." Would You Have Appealed? In re French Meadow Organic Bakery, LLC, Serial No. 86243820 (February 4, 2016) [not precedential].

Examining Attorney Robert J. Struck relied on dictionary definitions of "healthy" ("conducive to health") and "hemp" ("a tall widely cultivated Asian herb (Cannabis sativa of the family Cannabaceae, the hemp family) that has a tough bast fiber used especially for cordage ...."), and on Internet pages referring to "healthy hemp" in the context of food (e.g., "7 Healthy Hemp Foods to Try"). The Board was convinced:

Based on this evidence, we find that the mark HEALTHY HEMP directly conveys to consumers that the bakery products, breads and tortillas are healthful products, and that they are hemp-based products. Therefore, the proposed mark HEALTHY HEMP is a combination of two adjectives which describe Applicant’s products (e.g., a healthy, hemp tortilla).

Applicant maintained that its mark "as a whole has no meaning and thus, is not descriptive of any goods.... [C]ombining the terms has no known significance and creates a unique impression which is inventive [sic]." The Board was unmoved.

As to third-party registrations of other marks, the Board once again observed: "It is well settled that the Board must address each case on its own merits," based on the record before it. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2016.

Friday, February 05, 2016

Precedential No. 2: TTAB Denies Protective Order Motion and Sanctions Movant

The Board was not pleased with Applicant Rani Sachdev's motion for a protective order, filed on the day her discovery responses were due. It denied the motion as deficient and meritless, ordered Sachdev to show cause why sanctions should not be imposed, and barred her from from filing any unconsented or unstipulated motion without Board permission. Emilio Pucci International BV v. Rani Sachdev, Opposition No. 91215100 (January 20, 2016) [precedential].

Opposer Emilio Pucci opposed Sachdev's application to register the mark St. Pucchi, in the stylized form shown above, for women's clothing, on the grounds of likelihood of confusion, dilution, and lack of ownership. It served a first set of discovery requests comprising 27 numbered interrogatories, 31 numbered document requests, and 83 numbered requests for admission. Applicant's counsel, on the day her discovery responses were due, sent three emails to Opposer's counsel requesting extensions of time (of decreasing length), but Opposer's counsel responded that she was unable to obtain instructions from Opposer. Applicant then filed a motion for protective order under FRCP 26(c), claiming that the discovery requests were overly broad and burdensome.

The Board first pointed out that filing a motion for a protective order, instead of responding and/or objecting to discovery requests, is generally not the proper course of action. See TBMP Sections 405.04(b), 406.04(c), and 410. With regard to interrogatories in particular, if the receiving party believes that the number exceeds the seventy-five interrogatory limit of Rule 2.120(d)(1), that party may serve a general objection. The purpose of the Rule is to "advance the discussion" between the parties and to "encourage them to discuss" their differences. Allowing a party to seek a protective order when there has been insufficient effort to resolve the dispute "is an entirely unworkable and impracticable approach that reflects a disregard for the affirmative duty to cooperate in the discovery process."

However, a party  may seek a protective order where it is "readily apparent that the discovery requests are so oppressive as to constitute clear harassment." Domond v. 37.37, Inc., 113 USPQ2d 1264, 1266 (TTAB 2015). Rule 2.120(f) provides, in pertinent part, that the Board may "make any order which justice requires to protect a party from annoyance, embarrassment, oppression, or undue burden or expense ...." In such case, the movant must establish good cause for the issuance of a protective order, i.e., "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements." The Phillies v. Philadelphia Consol. Holding Corp., 51 USPQ2d 1759, 1761 (TTAB 2013); and see FRCP 26(c)(1).

Applicant Sachdev made no effort to resolve the disputed issues before filing her motion. That lack of good faith effort was alone a sufficient basis for denial of the motion.

As to whether a protective order was warranted, the Board expects the parties to apply the principles of proportionality with regard to discovery. Domond at 1268; and see TBMP Section 402.01 and FRCP 26(b)(1) (as amended on December 1, 2015). The Federal Rule now states:

[u]nless otherwise limited by court order ... [p]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.

Applying the principle of proportionality here, the Board found no basis for concluding that Opposer's discovery requests would cause annoyance, embarrassment, oppression or undue expense. The discovery requests were standard and typical for this type of proceeding, and were tailored to seek relevant information. The interrogatories, under any counting method, did not exceed seventy-five in number.

Moreover, Applicant's motion lacked any legal citation or supporting argument, but rather contained  conclusory, "boilerplate" statements, with no explanation as to why the requests were burdensome or oppressive. The fact that Applicant filed her motion on the very day her responses were due was also troubling to the Board. She could have requested an extension of time prior to, or even on, the due date. Her unfounded and improper motion "calls into question whether Applicant had any objective for filing it other than to stall the proceeding."

The Board therefore denied the motion. Furthermore, exercising its inherent power to impose any sanction provided for by FRCP 37(b)(2), the Board allowed Applicant 15 days within which to show cause as to why the Board should not sanction her by finding that (1) she has forfeited her right to object on the merits to Opposer's discovery requests, and (2) Opposer's requests for admissions are deemed admitted  pursuant to FRCP 36(a)(3).

In addition, the Board barred Applicant from filing any unconsented or unstipulated motion in this proceeding without first requesting and receiving the Board's permission to do so.

Read comments and post your comment here.

TTABlog comment: Hard to understand why applicant did not simply file a request for extension even without Opposer's consent.

Text Copyright John L. Welch 2016.

Thursday, February 04, 2016

WYHA? CARBON ELIMINATOR Merely Descriptive of Fuel Additive, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark CARBON ELIMINATOR, finding it to be merely descriptive of "non-chemical enzyme fuel additive" [CARBON disclaimed]. Applicant's own specimen of use stated that the product "removes tough carbon deposit." Would You Have Appealed? In re Star-Brite Distributing, Inc., Serial No. 86344788 (February 2, 2016) [not precedential].

Examining Attorney Vivian Micznik First relied on a dictionary definition of "eliminate" - "to remove or take out, get rid of." Applicant's product description proclaimed that the product "uses enzyme technology to remove carbon, gum and varnish deposits."

The Board declared that "it is settled that where marks describe the intended purpose of the goods in connection with which they are used, they are merely descriptive."

Applicant's double-entendre argument was both unavailing, since the supposed second meaning of the mark was also descriptive of the goods. Finally, Applicant pointed to allegedly similar third-party marks, but the Board pointed out once again, quoting In re Datapipe, Inc., that "each application must be examined on its own merits. Neither the Trademark Examining Attorney nor the Board is bound to approve for registration an Applicant’s mark based solely upon the registration of other assertedly similar marks for other goods or services having unique evidentiary records."

The Board had no doubt as to the descriptiveness of CARBON ELIMINATOR, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Any thoughts?

Text Copyright John L. Welch 2016.

Wednesday, February 03, 2016

TTAB Renders Split Decision in MONSTER v. MONSTERFISHKEEPERS Double-Header

The Board sustained Monster Energy's opposition to registration of the M Design mark shown below left, finding it likely to cause confusion with Monster Energy's registered design mark shown below right, for overlapping clothing items. However, the Board dismissed Monster Energy's opposition to registration of MONSTERFISHKEEPERS, in standard character form, finding it not likely to cause confusion with opposer's common law mark MONSTER, both for clothing items. Monster Energy's dilution-by-blurring claim directed at the MONSTERFISHKEEPERS mark failed utterly. Monster Energy Company v. Li-Wei Chih, Consolidated Oppositions Nos. 91205893 and 91205924 (February 1, 2016) [not precedential]

Evidence of third-party use of MONSTER-formative marks led the Board to find that the mark MONSTER is "somewhat weak for clothing." The letter M, however, was not shown to be similarly weak.

As to the marks, the Board found the two design marks to be "overall quite similar."

We do not ignore the design elements in the marks unique to each mark, particularly Applicant’s use of devil horns and tail and Opposer’s mark appearing to be a three-pronged claw mark. However, we must further keep in mind that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather the focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. *** Under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections

As to the word marks MONSTER and MONSTERFISHKEEPERS, "the additional matter in Applicant’s mark plays a significant role in helping to create a commercial impression that is quite different from Opposer’s mark, MONSTER."

That is, consumers encountering Applicant’s mark will quickly discern the three recognizable words, MONSTER and FISH and KEEPERS. Applicant introduced evidence showing that the first two terms or “monster fish” may be used to describe an extremely large fish kept as a pet or a gigantic fish that might be described fantastically as a “monster."

The Board therefore found the marks to be different in appearance and sound and, "most importantly," in their meanings. "The similarity of the marks based on Applicant’s incorporation of Opposer’s mark is outweighed by the differences, especially the connotation of MONSTERFISHKEEPERS versus that of MONSTER. Accordingly, this factor weighs against finding a likelihood of confusion."

The Board therefore dismissed the Section 2(d) claim.

As to the dilution claim (involving only the word mark MONSTERFISHKEEPERS), Opposer did not prove that its MONSTER mark was famous prior to 2010, Applicant's first use date. Moreover, the marks MONSTER and MONSTERFISHKEEPERS have little similarity, and in any case Opposer is not the sole user of the mark MONSTER. There was no direct evidence of the level of recognition of the MONSTER mark, little evidence of an intent on the part of Applicant to associate his mark with the MONSTER mark, and no proof of actual confusion.

Read comments and post your comment here.

TTABlog comment: It seems to me that Applicant was trying to suggest Opposer's marks without copying them exactly. What do you think? BTW, note that Applicant was represented by Eve Brown of the Boston University Law School Clinic, and formerly of the Suffolk University Law School Clinic.

Text Copyright John L. Welch 2016.

Tuesday, February 02, 2016

TTABlog Road Trip: Beverly Hills Bar Association, February 11th

Yours truly, the TTABlogger, will share the podium with TTAB Judge Lorelei Ritchie at a luncheon gathering of the Beverly Hills Bar Association, for a presentation entitled "The TTAB Comes to the BHBA." The event is hosted by the BHBA's IP, Internet & New Media Section, on Thursday, February 11, 2016, from 12:00 to 2:00 PM. Registration here.

Judge Ritchie will present tips on best practices for making your case before the TTAB, including trial and briefing, as well as tips for ex parte appeals. Yours truly will discuss ......... wait for it........ recent developments at the TTAB (and in the courts)!

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

How Often Did the TTAB Affirm a Section 2(d) Refusal in 2015? a 2(e)(1) Mere Descriptiveness Refusal?

This weekend I went to the TTAB's FOIA page in an attempt to determine, or at least estimate, the percentage of Section 2(d) likelihood-of-confusion refusals and Section 2(e)(1) mere descriptiveness refusals that were affirmed/reversed by the Board during the calendar year 2015. The highly unscientific results are set out below. 

Section 2(d): I counted 223 Section 2(d) refusals, of which 188 were affirmed and 35 reversed. That's an affirmance rate of about 85%. [Down from a whopping 91% last year and more in line with the past few years].

Seven of the opinions were deemed precedential. The HUGHES FURNITURE, HOUSE BEER, MARAZUL, C.J. HANSON, and I AM refusals were affirmed. The TERRAIN and ALLEGIANCE STAFFING refusals were reversed.

NB: Some cases involved a mark in standard character and stylized form, and I counted that situation as one refusal.

Section 2(e)(1) mere descriptiveness: Of the 97 Section 2(e)(1) mere descriptiveness refusals, 84 were affirmed and 13 reversed, for an affirmance rate of approximately 86%. That is consistent with estimates that I and others have made in past years.

The only precedential opinion, in the SMART SERIES case, was affirmed.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Monday, February 01, 2016

TTAB Posts February 2016 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled five (5) oral hearings for the month of February, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. Briefs and other papers for these cases may be found at TTABVUE via the links provided.

February 10, 2016 - 10 AM: In re Summit Entertainment, Inc., Serial Nos. 77921983, 77921986, 77921988, 77921992, and 77921993. [Section 2(d) refusals to register the mark ECLIPSE for various goods relating to motion pictures and entertainment, in classes 9, 14, 18, 24, and 25, in view of, respectively, several class 9 registrations for the identical mark, a registration of the identical mark for watches in class 14, three registration in class 18 for ECLIPSE, ECLIPZE, and ECLIPS & Design, a class 24 registration of ECLIPSE for curtains, and a class 25 registration of the identical mark for footwear].

February 17, 2016 - 10 AM: Smart Closets LLC v. Produits Forestiers Direct Inc./Direct Forest Products Inc., Opposition No. 91210215 [Opposition to registration of SMART CLOSET for "modular storage systems, namely, shelves units, cabinets, rails, doors, shelves, poles, clothes bars, drawers and drawer units, being installed in wardrobes or any other room of a house, office or garage," on the ground of lack of bona fide intent to use the mark in commerce].

February 23, 2016 - 2 PM: In re Fullscreen, Inc., Serial No. 85951468 and 85951513 [Refusal to register the mark FULLSCREEN, in standard character and design form, for various services relating to development, distribution and production of advertisements and digital content].

February 23, 2016 - 3 PM: In re United States Steel Corporation, Serial No. 86174180 [Section 2(a) deceptiveness refusal to register COPPER-10 for prepainted coated sheet steel, namely, coated sheet steel prepainted to simulate naturally weathered copper"].

February 24, 2016 - [Time to be determined]: In re Loggerhead Tools, LLC, Serial No. 85598798 [Refusal to register a motion mark "depicting the product configuration of a hand tool in which six rectangular-shaped jaw-like elements of the circular head of a hand tool radially move in and out," for "Hand tools, namely, gripping tools in the nature of wrenches and wire crimpers for sale through mass merchandisers to retail consumers," on the ground of Section 2(e)(5) functionality]. [Video specimen of use here].

Read comments and post your comment here.

TTABlog note: See any WYHA?s here?

Text Copyright John L. Welch 2016.

Friday, January 29, 2016

Divided TTAB Panel Dismisses Oppositions: No Priority Based on Title of SIngle Work

The Board, in a split decision, granted Applicant BOL Enterprise's motion for summary judgment, dismissing Opposer Independent Media's likelihood of confusion and fraud claims. Opposer's  alleged priority was based use of the mark BOL as the title of a single creative work, which the Board held was not a trademark use. Opposer's fraud claim was based on Applicant BOL's statements that it had exclusive rights in the applied-for marks despite its knowledge of Opposer's rights; however, since Opposer had no rights, those statement were not false let alone fraudulent. Independent Media Corporation (PVT.) Ltd. v.BOL Enterprise (PVT.) Ltd., Oppositions Nos. 91216909, 91216942, and 91219384 (January 14, 2016) [not precedential].

Priority: Opposer claimed prior use of the mark BOL for movies and films, pre-recorded DVDS, and the like, and for audio production services. Applicant asserted that Opposer's prior claim was based solely on a Pakistani motion picture entitled "Bol," which briefly appeared in US theaters in 2011. Applicant maintained that under the applicable precedents, use of a term as the title of a single work did not create any trademark rights, and therefore Opposer did not have priority of use.

The Board observed that the title of a single creative work is not a trademark. See, e.g., Herbko Int'l Inc. v. Kaplan Books, Inc. The name of a series of books, however, may be registered as a trademark. In re Cooper. A book title identifies a specific literary work, whereas the name of a series "has a trademark function in indicating that each book of the series comes from the same source as the others."

Opposer asserted that it used BOL not only as a movie title, but also on soundtracks from the movie [see photo above]. The panel majority found, however, that "[b]ecause of the soundtrack's association with the BOL film, and because only songs from the BOL Film are in the soundtrack or compilation of songs, Applicant has established that the soundtrack or compilation of songs is based on or derived from the same creative work, namely, the BOL Film."

In the absence of evidence demonstrating that BOL is used on at least two different creative works, we conclude as a matter of law that BOL is simply the title of essentially a single creative work. Cf., In re Arnold, 105 USPQ2d 1953, 1956 (TTAB 2013) (requiring evidence that a title is used on at least two different creative works). See also, Trademark Manual of Examining Procedure (“TMEP”) § 1202.08(c) (October 2015).

Opposer also claimed secondary meaning in the term BOL, but the Board pointed out that titles of single creative works are incapable of any trademark significance, even if proof of acquired distinctiveness is proffered.

Because Opposer could not establish priority, the Board granted applicant's motion for summary judgment motion on the Section 2(d) claim.

Fraud: As to the fraud claim, since Opposer had no rights in the mark BOL, there was nothing fraudulent, or even false, about applicant's statements that it owned exclusive rights in the mark.

Dissent: Judge Wolfson dissented, urging that the "title of a single work" doctrine should not apply when there exists a creative work and and a derivative work that varies substantially in content from the original. Since Opposer used the mark BOL on multiple works, and also used the term as a trade name, it should have the opportunity to show that the term has acquired distinctiveness. It is error to hold as a matter or law that in such a case a party cannot establish priority. The standard of proof may be high, but Opposer should have the opportunity to make its case.

Judge Wolfson would also not summarily dismiss the fraud claim because, contrary to the majority's view, Opposer did properly make of record a temporary injunction order from a Pakistani court, and therefore a genuine issue of material fact existed as to the impact of that order on this case.

Read comments and post your comment here.

TTABlog comment: The Board made no mention of its November 2014 nonprecedential decision in In re King [TTABlogged here], which held that the title of a single DVD was registrable as a trademark under Section 2(f), with proof of acquired distinctiveness. Judge Quinn was a panelist on both cases.

Text Copyright John L. Welch 2016.