Friday, March 27, 2015

TTAB Test: Are These Two Marks For Overlapping Goods/Services Confusingly Similar?

The USPTO refused registration of the mark shown first below, finding it likely to cause confusion with the mark shown second below, for goods/services that "perform overlapping functions, namely, the promotion of goods and services of others via the Internet by way of offering coupons and discounts in exchange for product and/or service reviews." So it all came down to the first du Pont factor. How do you think this appeal came out? In re Hy-Vee, Inc., Serial No. 86105555 (March 25, 2015) [not precedential].

The marks are obviously similar in that they share the words DIGITAL COUPONS or its phonetic equivalent. However, those terms have "descriptive, if not generic, significance" with respect to the involved goods and services. It is therefore more likely that consumers will "equate" those term with the goods and services rather than viewing them as source indicators.

The letters DQ in the cited mark play a dominant role due to their size and location, and the comprise the portion most likely to be remembered by consumers. In addition, the "computer mouse" design element in applicant’s mark is "dissimilar enough from Registrant’s mark to distinguish Applicant’s goods and services." The Board concluded that the marks engender "substantially different commercial impressions."

The Board acknowledged, as the examining attorney contended, that the words in a word+design mark usually predominate. However, that is not always the case. The Board also acknowledged that when the involved goods/services are legally identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Here, however, given the highly descriptive or generic meaning of DIGITAL COUPONS, the marks are so different that confusion is not likely.

And so the Board reversed the refusal to register.

Read comments and post your comment here

TTABlog note: Well, how did you do?

Text Copyright John L. Welch 2015.

Thursday, March 26, 2015

TTAB Reverses 2(d) Refusal Due to Specific Differences in Involved Software

The Board affirms 90% of the Section 2(d) refusals it gets its hands on, but here's one that it reversed. The applicant sought to register the mark MISTORE for "Computer software for use in connection with retail point of sale and inventory management." The examining attorney maintained that the mark was confusingly similar to the registered mark shown below, for "computer e-commerce software to allow users to perform electronic business transactions via a global computer network." In re Micros Systems, Inc., Serial No. 85826131 (March 6, 2015) [not precedential].

The marks: The Board found applicant’s mark MISTORE to be the phonetic equivalent of the dominant portion of the cited mark, MYSTORE. Applicant’s argument regarding the descriptiveness of the term "mystore," although not supported evidence, persuaded that Board that the term "is not arbitrary, which does somewhat narrow the scope of protection afforded the cited mark." On the other hand, applicant’s misspelling of the term "MY STORE" does not make "MI STORE" a "coined term," as applicant argued. Accordingly, the Board found the marks in their entireties to be similar in appearance, sound, connotation and commercial impression.

The goods: The examining attorney relied on dictionary definitions of “business transactions,” “point-of-sale,” and “e-commerce,” and information about applicant’s software from applicant’s
brief. However, two of the dictionaries existed only online and not in print, and so the Board refused to take judicial notice of them. The third definition was from a dictionary published in the United Kingdom, but was obtained from the dictionary’s American English database and so was eligible for judicial notice.

The definition of e-commerce from the third dictionary requires that the business be conducted on the Internet. There was no evidence that applicant’s software relates to any business transaction conducted on the Internet. "To the contrary, access and use of the electronic data is restricted to store personal and not the general public." [Moreover, the examining attorney’s position was contradicted by one of the rejected definitions, for a business transaction in electronic commerce, which is a “monetary transaction that is made between consumers or businesses via the Internet.”]

The Board concluded that the sparse record in the case failed to establish that the goods are related.

Channels of trade: Because the goods are not related, the Board could not presume that they travel in the same channels of trade to the same classes of consumers. There was no evidence regarding the actual channels of trade, and so this factor was deemed neutral.

And so the Board concluded that the differences in the goods outweighed any similarity between the marks, and it therefore reversed the refusal.

Read comments and post your comment here

TTABlog note:

Text Copyright John L. Welch 2015.

Wednesday, March 25, 2015

Supreme Court Rules that TTAB Decision May Have Preclusive Effect

In an attention-grabbing decision, at least in trademark circles, the Supreme Court ruled yesterday that, in an action for trademark infringement, "[s]o long as the other ordinary elements of issue preclusion are met, when the uses adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply" to the issue of likelihood of confusion. The Court reversed the decision of the Eight Circuit that held that the TTAB decision in favor of B&B was not entitled to preclusive effect because, inter alia, the TTAB and the Eighth Circuit use different factors to evaluate the issue. B&B Hardware, Inc. v. Hargis Industries, Inc., 113 USPQ2d 2045 (2015).

The Court held that issue preclusion can be grounded on the decision of an administrative agency. Both Supreme Court precedent and the Restatement (Second) of Judgments "make clear that issue preclusion is not limited to those situations in which the same issue is before two courts." [The Court did not address the question of whether this application or issue preclusion is constitutional because that Article III issue was not properly raised.] The Court found nothing in the Lanham Act that bars application of issue preclusion in this type of case.

Nor is there any categorical reason why TTAB decisions on registration can never meet the ordinary elements of issue preclusion. The Court agreed with Professor McCarthy that issue preclusion applies when "the issues in the two cases are indeed identical and the other rules of collateral estoppel are carefully observed."

The Court found that, despite some differences in the factors applied by the TTAB and the Eight Circuit in assessing likelihood of confusion, the test were not fundamentally different. The standard for purposes of registration is the same as for purposes of infringement. Because the TTAB considered the mark as shown in the application for the goods identified in the application, its determination regarding likelihood of confusion may not resolve the issue as to usages that are not disclosed. However, that is not a reason for concluding that issue preclusion may never apply.

If a mark owner uses its mark in ways that are materially the same as the usages included in its registration application, then the TTAB is deciding the same likelihood-of-confusion issue as a district court in infringement litigation. By contrast, if a mark owner uses its mark in ways that are materially unlike the usages in its application, then the TTAB is not deciding the same issue. Thus, if the TTAB does not consider the marketplace usage of the parties’ marks, the TTAB’s decision should “have no later preclusive effect in a suit where actual usage in the marketplace is the paramount issue.” 6 McCarthy §32:101, at 32–246.

The Court remanded the case to the Eight Circuit, directing it to apply the following rule: "So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply."

Justice Ginsburg concurred in the majority opinion, on the understanding that "for a great many registration decisions issue preclusion will obviously not apply," because the decisions often involve "a comparison of the marks in the abstract and apart from their marketplace usage."

Justices Thomas and Scalia dissented, finding inadequate support for the proposition that common law principles of preclusion should apply to decisions of administrative tribunals, or that Congress implicitly authorized the decisions of the TTAB to have preclusive effect.

Read comments and post your comment here

TTABlog note: When a losing TTAB party seeks review by way of civil action under Section 1071, it is entitled to a trial de novo. Often infringement claims are added to the action. If additional or new evidence is submitted, it would seem that preclusion goes out the window. Is B&B v. Hargis a rare case where the opposition and civil action are simultaneous, with no appeal from the TTAB ruling?

Text Copyright John L. Welch 2015.

Tuesday, March 24, 2015

TTAB Denies Request for Reconsideration of REDNECK RIVIERA Decision

The Board denied Applicant's request for reconsideration of its January 6, 2015 decision [TTABlogged here] affirming a refusal to register the marks REDNECK RIVIERA and REDNECK RIVIERA FEST for entertainment services and hotel and restaurant services [FEST disclaimed]. The Board found no error in its original ruling that the mark is primarily geographically descriptive of the services under Section 2(e)(2). In re Rich Marks, LLC, Serial Nos. 85789873, 85789870, and 85784407 (on reconsideration, February 25, 2015) [not precedential].

The Board's original decision was based not only on collaborative website sources like the Urban Dictionary, as applicant contended, but also on national, regional and specialty periodicals and major broadcast networks, including ABC New, CBS News, the New York Times, and others. The Board reaffirmed its finding that "Redneck Riviera" is "a real, significant geographical place along the northeast coastline of the Gulf of Mexico ... and the term 'Redneck Riviera' has been an important part of the Southern vernacular for decades." That some individuals may derive from the ordinary meaning of the words, a pop-culture, slang meaning that reflects "any beautiful beach having inhabitants displaying the 'redneck' habits of poor, lower-class persons, thus evocative of a lifestyle beyond any particular zip code," "that possibility does not overcome the historical, primary geographical significance of the term 'Redneck Riviera.'"

Applicant also pointed to the recent CAFC decision reversing the TTAB's affirmance of a Section 2(e)(2) refusal of NEWBRIDGE HOME for "silverware, jewelry, and kitchen goods," and arguing that here, too, substantial evidence was lacking for the Board refusal. [TTABlogged here]. The Board, however, distinguished that case, which involved a foreign place name and a mixed record of evidence (including atlases that did not list the place). In contrast, here the overall evidence submitted by the examining attorney "cannot be said to be evenly 'mixed.'" In short, there is "a consistent showing of 'Redneck Riviera' as naming a specific geographical region by serious news outlets."

The purpose of a request for reconsideration, the Board noted, is to point out errors made by the Board in reaching its decision. After careful review of its decision, the Board found no error, and it denied the request for reconsideration.

Read comments and post your comment here

TTABlog note: Requests for reconsideration are almost never granted. They typically do nothing more than give the Board the opportunity to pound a few more nails into the coffin.

Text Copyright John L. Welch 2015.

Monday, March 23, 2015

USPTO Seeks Applicants for TTAB Administrative Trademark Judge

The USPTO has invited applications for the position of Administrative Trademark Judge on the Trademark Trial and Appeal Board. [Details here]. "The judges of the Trademark Trial and Appeal Board (TTAB) are responsible for hearing and deciding adversary proceedings involving oppositions to applications, petitions to cancel registrations, and concurrent use proceedings; and for hearing and deciding appeals from final refusals by trademark examiners to allow the registration of trademarks. Each appeal and adversary proceeding shall be heard and decided by at least three judges of the TTAB."


WYHA? Precedential No. 8: TTAB Affirms Section 2(a) Disparagement Refusal of PORNO JESUS

Not surprisingly, the Board affirmed a Section 2(a) disparagement refusal of PORNO JESUS for DVDs and video recordings "featuring music videos, adult themed content, glamour photography, and adult entertainment." The Board found it clear that the applied-for mark would have the "likely meaning" of Jesus Christ being associated with pornography, a meaning that may be disparaging to a substantial composite of Christian-Americans. In re Matthew Beck, Serial No. 85767380 (March 19, 2015) [precedential].

Section 2(a) of the Lanham Act prohibits registration of a mark consisting of matter which may disparage, inter alia, “persons,” “institutions,” or “beliefs.” The Board applies the following two-part test to determine whether a mark is disparaging:

1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and

2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.

Examining Attorney John M. Gartner relied on numerous dictionary definitions and encyclopedia entries regarding the terms comprising the mark, as well as on Internet materials providing membership statistics for various Christian denominations in this country, and materials discussing the views of certain denominations toward pornography. [They don't like it - ed.].

Applicant Beck submitted articles from various Internet sources discussing shifting views among Christians on issues involving pornography, including material from a website disseminating and supporting Christian pornography, as well as several third-party registrations for marks containing the word "Jesus:" HOOKERS FOR JESUS for charitable services, REDNECK JESUS for entertainment and informational services, JESUS FREAK for clothing, THE DAY JESUS SPOKE HIP HOP for entertainment services featuring Christian music, and WHO WOULD JESUS SUE? for printed publications in the field of faith-based advocacy.

There was no dispute that "Jesus" in the applied-for mark refers to Jesus of Nazareth, upon whom the Christian faith is based, and there was agreement that "porno" means - you know what. Thus the Board found that the likely meaning of PORNO JESUS is "Jesus of Nazareth partaking of acts related to pornographic or sexually explicit materials."

Although the Board opined that PORNO JESUS would be "potentially disparaging regardless of applicant's goods or services, actual use or intent," it proceeded to consider the manner of use of the mark. Because applicant Beck's goods feature "adult-themed content," which applicant acknowledged includes pornographic films, it was clear that PORNO JESUS would have the "likely meaning" of "Jesus Christ associated with pornographic acts and sexually explicit materials."

Next the Board considered whether the meaning of the mark would disparage a substantial component of the referenced group, which the Board found to be Christian-Americans. The examining attorney's evidence from the websites of several Christian denominations indicated that these denominations oppose pornography, believing it to be harmful and not in conformance with the tenets of Christianity.

With regard to the third-party registrations cited by Applicant Beck, the Board once again observed that it is not bound by the determinations of examining attorneys in other cases, but must apply the statute to the fact record before it. In any case, none of the third-party registrations associated Jesus Christ with pornography and none involved adult-themed materials.

The existence of a sub-genre of Christian-themed pornographic movies (featuring married couples portraying married couples engaged in sex acts intended to be instructional and reflecting the beliefs of some Christians) suggests that the larger body of pornography does not reflect Christian beliefs. Moreover, Mr. Beck's identification of goods was not restricted to a type of pornography that may theoretically be acceptable to certain Christians. In any case, the examining attorney is not required to show that all members of the referenced group would find the mark disparaging.

Finally, the Board noted that in meeting its burden of proof, the PTO may, in the absence of direct evidence, extrapolate from the evidence of record to show that a substantial composite of Christian-Americans find the mark PORNO JESUS for the identified goods to be disparaging.

And so the Board affirmed the refusal to register.

Read comments and post your comment here

TTABlog note: Well, would you have appealed?

Text Copyright John L. Welch 2015.

Friday, March 20, 2015

TTABlog Road Trip: "The Trademark Office Comes to California," April 14 and 16

Yours truly, the TTABlogger, will be heading to the West Coast to speak at "2015 Trademark Office Comes to California," presented by the Intellectual Property Law Section of the State Bar of California. This awesome event will be held in Los Angeles on April 14, and in San Francisco on April 16. Registration and details here. Brochure here.

Speakers will include Commissioner for Trademarks Mary Boney Denison and Deputy Commissioner Sharon Marsh. The TTAB contingent comprises TTAB Chief Judge Gerard F. Rogers (San Francisco), Deputy Chief Judge Susan M. Richey (LosAngeles), and Judges Ellen J. Seeherman and Lorelei Ritchie.

Beth M. Goldman, Partner at Orrick, Herrington & Sutcliffe, LLP, and  Bob Samuelson, VP Business Development, Donuts Inc. "will offer practical advice and share strategies based on their extensive legal and industry experience in trademark protection, domain portfolio management, and digital marketing."

Dr. E. Deborah Jay, President/CEO, Field Research Corporation,  and Dr. Gerry Ford, Partner, Ford, Bubala & Associates, "will provide an overview of surveys and some practical tips for using them in trademark disputes."

The TTABlogger will be discussing ........ wait for it!.......... TTAB developments!

Read comments and post your comment here

Text Copyright John L. Welch 2015.

Thursday, March 19, 2015

Some Thoughts on de facto and de jure Functionality

Section 2(e)(5) of the Lanham Act bars registration of a proposed mark that “comprises any matter that, as a whole, is functional.” The shape of a product or a feature of a product may have a function – i.e., it may have utility – but still be registrable as a trademark. In other words, the product or feature may be de facto (in fact) functional but not de jure (in law) functional.

Confusion over these concepts sometime arises when, in considering the registrability of a product shape, the TTAB or a court encounters design patents or utility patents that are related to the product. Utility patents, as the name indicates, concern things that have utility: “any new and useful process, machine, manufacture, or composition of matter.” Design patents concern the ornamental features of useful objects: the way things look rather than the way they work. Thus both utility and design patents are directed to things that are useful (or de facto functional).

A particular device may be the subject of a both a utility patent, because it incorporates a useful invention – say, a corkscrew that operates in a new way – as well as a design patent, because the device has a novel and nonobvious shape – suppose the corkscrew is shaped like a kangaroo.

In the trademark realm under Section 2(e)(5), when one considers whether a product configuration or feature may be registrable as a trademark, one must first determine whether it has utility – i.e., whether it is de facto functional. A purely ornamental feature (i.e., purely non-functional) – such as the decorations on a monster truck (for entertainment services) – by definition has no utility and is therefore eligible for registration as a trademark.

What about a shape or feature that does have utility? For example, in our corkscrew, the tail of the kangaroo, which functions as the handle or lever that operates the corkscrew? It has utility, it performs a function, and therefore it is de facto functional in a trademark sense. But is it de jure functional and therefor unregistrable? That’s where the Inwood and Morton-Norwich decisions come in play.

One approach to assessing the registrability of product shape or feature is to ask the following questions:

1. Does the configuration or feature have utility? If yes, proceed to the next question. If no, the feature is ornamental and may be registrable. A showing of acquired distinctiveness is required, says Wal-Mart, unless the feature may be considered product packaging (or, as in the recent monster truck case, trade dress for services). Product packaging and other trade dress may be inherently distinctive, but first it must pass the Seabrook test.

2. If the configuration or feature has utility (for example, the kangaroo tail), is the shape the only one that will work? No it is not, for the kangaroo tail. The handle of the corkscrew, and the corkscrew itself, could take on many shapes. What, then, is an example of a design that can be useful in only one shape? Patent attorneys point to a case involving the blade or shank (the business end) of a key, which had to be in the particular shape in order to operate the corresponding lock. So that design patent was held to be invalid because the shape was "functional" in a design patent sense, not ornamental. If question 2 is answered yes, then the configuration or feature is not eligible for a design patent (or a trademark registration).

3. If the answer to question 2 is no, then a design patent is available. An invention is functional in the design patent sense only if the design is the only one that will work: think key blade. But functionality for trademarks requires a different standard. Even if there are alternative designs that will work, a product configuration or feature may be unregistrable as a trademark – i.e., de jure functional – if the design meets the Inwood test: if it is "essential to the use or purpose of the device or ... affects the cost or quality of the device." The CCPA’s Morton-Norwich factors are meant to assist in the determination of trademark functionality. In the recent "bladeless" fan decision, the Board found that the shape of the product met the Inwood test.
The Board and the courts sometimes go astray when utility patents are involved. It is tempting to conclude that any feature discussed in a utility patent must ipso facto be de jure functional and therefore unregistrable as a trademark. But the Supreme Court in TrafFix was careful to limit the effect of utility patents as follows: it said that if a feature is claimed in a patent (not merely discussed in the specification), that is strong evidence that the feature is de jure functional. Not conclusive evidence, but strong. That is because even if a feature is claimed in a patent (for example, the lever on the cork screw), it still may be possible to design that element in a number of shapes that work equally well (the kangaroo tail being one).

Some of these principles were discussed in two recent TTAB decisions: the monster truck case, in which the Board found the decorations on a monster truck to be ornamental trade dress that was inherently distinctive under Seabrook, and the “bladeless” fan case, in which the Board applied Inwood and Morton-Norwich in affirming a Section 2(e)(5) functionality refusal of the shape of the fan elements.

The next time you read a decision in a product configuration case or trade dress case, look closely to see how the court or the Board applies these principles and makes these distinctions. Of course, if you don't agree with my understanding, let me know.

Read comments and post your comment here

Text Copyright John L. Welch 2015.

Wednesday, March 18, 2015

TTAB Test: Are Tequila and Wine Related for Section 2(d) Purposes?

Proximo Spirits applied to register the mark COCOMO for "tequila; tequila based prepared cocktails," but Examining Attorney Tamara Hudson refused registration under Section 2(d), deeming the mark likely to cause confusion with the registered mark KOKOMO for wine. Applicant contended that its mark suggests coconuts,  while the cited mark references Kokomo, Indiana. As to the goods, applicant pointed out that registrant is a winery, and that wineries produce only wine. How do you think this came out? In re Proximo Spirits, Inc., Serial No. 85865962 (March 16, 2015) [not precedential].

The Board found the marks similar in appearance and pronunciation, the latter factor being particularly important because the goods may be requested verbally without prior reference to a menu. As to meaning, there was nothing in the record to suggest that consumers would associate registrant's KOKOMO wine with Kokomo, Indiana, nor was there any evidence to show that applicant's mark, when used with tequila, has anything to do with coconut.

As to the goods, the Board acknowledged that not even an unsophisticated purchaser would mistakenly buy wine expecting tequila, or vice versa. [At least while sober - ed.]. But the issue is not whether consumers would confuse the goods, but whether they would be confused as to the source of the goods.

The Board presumed that the involved goods would be sold in all normal channels and to all normal classes of purchasers for such goods. The trade channels for both would include liquor stores, bars and restaurants, and the alcoholic beverages sections of retail outlets. Thus the channels of trade are the same, and the customers include unsophisticated purchasers.

The Board observed that the CAFC and the Board "have repeatedly held spirits and wine to be related."

"[a] typical consumer of alcoholic beverages may drink more than one type of beverage and may shop for different alcoholic beverages in the same liquor store. Moreover, a person may serve more than one kind of alcoholic beverage before or during a meal or at a party."

Applicant argued that it is "common knowledge" that wineries sell only wine, but the Board concluded that, even if true, that does not rebut the examining attorney's showing that consumers would assume a connection between wine and tequila sold under very similar trademarks. The examining attorney submitted third-party registrations covering both wine and tequila, and Internet evidence that some entities distribute and sell both wine and tequila. Moreover, restaurants and bars offer wine and tequila pairings, and wine may be mixed with tequila in drink recipes.

This evidence corroborated the Board's finding that wine and tequila are related. It also showed that the goods are complementary products (like the pepper sauce and agave in In re Davia, 110 USPQ2d 1810 (TTAB 2014) [precedential]).

The Board therefore found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here

TTABlog note: It seems likely that every alcoholic beverage would be found related to every other one, because they can be purchased in the same stores, etc., appear together in some third-party registrations, and may be mixed together. In other words, there is a de facto per se rule that all alcoholic beverages are related. Right?

Text Copyright John L. Welch 2015.

Tuesday, March 17, 2015

TTAB Test: Is FLAT IRON TACO Deceptively Misdescriptive of Tacos?

William R. Nyborg applied to register the mark FLAT IRON TACO for tacos, but Examining Attorney Tracy Cross refused registration on the ground that the mark is deceptively misdescriptive of the goods under Section 2(e)(1). Mr. Nyborg appealed. He admitted that his tacos do not contain "flat iron" steak, but argued that the USPTO failed to show that consumers would believe the supposed misrepresentation: "if a consumer were to order a shredded chicken variant of Applicant’s ‘FLAT IRON TACO’ it would be hard to believe that the consumer in question would expect ‘flat-iron steak’ to be contained therein." How do you think this came out? In re William R. Nyborg, Serial No. 85661044 (February 27, 2015) [not precedential].

The test for deceptive misdescriptiveness is two-pronged: (1) does the term in question misdescribe a characteristic, quality, function, composition, or use of the goods, and if so (2) will prospective purchasers likely believe that the misdescription actually describes the goods?

The examining attorney established that "flat iron" is a type of steak, and that flat iron steak is a primary ingredient in prepared taco dishes. Moreover, the phrase "flat iron tacos" is used to describe tacos having a filling of flat iron steak! The Board therefore concluded that FLAT IRON TACO is "merely descriptive of a significant aspect of the goods which the goods could plausibly possess."

Applicant Nyborg feebly argued that "flat iron" may be used to describe items other than steak, like a hair straightener. Irrelevant, said the Board, because for Section 2(e)(1) purposes a mark must be considered in the context of the involved goods.

Mr. Nyborg's argument that a consumer would not believe the misrepresentation because he or she would not expect flat-iron steak after ordering shredded chicken, was a misapplication of the 2(e)(1) test.

Clearly if a customer orders a chicken taco he or she will not be expecting to get a steak taco. However, a consumer might well order a FLAT IRON TACO believing that he or she would be getting a taco filled with flat iron steak, and therefore the mark will misrepresent a characteristic of the goods.

And so the Board affirmed the refusal.

Read comments and post your comment here

TTABlog note: Well how did you do? What about Section 2(a) deceptiveness? Wouldn't the misrepresentation be material to many consumers?

Text Copyright John L. Welch 2015.

Monday, March 16, 2015

WYHM? TTAB Denies Summary Judgment Motion, Says Opposer Has Standing

Nearly three years into this opposition proceeding, Applicant TGN Services moved for summary judgment on the ground that Opposer Jeanette K. Daniels lacked standing to oppose TGN's application to register the mark PROGENEALOGISTS for, inter alia, providing research services in the field of genealogy. Ms. Daniels alleged that the applied-for mark is generic, or alternatively, merely descriptive and lacking in secondary meaning. Jeanette K. Daniels v. TGN Services, LLC, Opposition No. 91204462 (February 18, 2015) [not precedential].

As we know, standing is a threshold issue in every inter partes proceeding. The CAFC in Ritchie v. Simpson established a low threshold for standing: "namely, whether a plaintiff's belief in damage has a reasonable basis in fact and reflects a real interest in the case." A plaintiff who challenges on the ground of mere descriptiveness or genericness has standing if she has a competitive need or equal right to use the term in a descriptive manner.

Opposer Daniels alleged that she is a professional genealogist and an instructor at a genealogy college. In that connection, she has conducted research work for clients since 1977, and she uses the words “pro,” “professional,” “genealogy,” “genealogists,” and “genealogist” in her genealogic business.

In support of her allegations, Opposer submitted a copy of her certification as an “Accredited Genealogist,” issued by The Genealogical Department of The Church of Jesus Christ of Latter-day Saints, and she testified that she was president of the local Association for Professional Genealogists. Opposer also submitted evidence that she uses the phrases “Where Genealogists Become Professionals,” “Professional Genealogy,” and “Professional Genealogical Research Courses” on the college website.

In light of this evidence, the Board concluded that Ms. Daniels "demonstrated a real interest, that is to say, 'a direct and personal stake' in the outcome of this proceeding, and a reasonable basis for belief that she may be damaged by registration of the applied-for mark."

And so the Board denied the summary judgment motion.

Read comments and post your comment here

TTABlog note: WYHM? Would You Have Moved for summary judgment?

Text Copyright John L. Welch 2015.