Tuesday, October 06, 2015

TTAB Test: Is "F**K PROJECT" Scandalous for Handbags and Clothing?

The USPTO refused registration of the mark shown below, for "Leather and imitations of leather; leather and imitation leather goods, namely bags, suitcases, backpacks, traveling bags, purses, key-cases of leather and skins, wallets, briefcases for documents; umbrellas" (in class 18), and "Clothing, namely, T-shirts, shirts, jumpers, trousers, skirts, jeans, jackets, underclothes, bathing suits, hats and caps, footwear" (in class 25), deeming the mark to be immoral or scandalous under Section 2(a) of the Lanham Act. Applicant Giorgio S.R.L. appealed, arguing that "f**k" is an accepted euphemism employed as a substitute for "fuck," the latter being too vulgar for use in written media. How do you think this came out? In re Giorgio S.R.L., Serial No. 79141996 (September 30, 2015) [not precedential].

The Board's opinion includes a main opinion, a concurring opinion, and a dissent, and runs for 22 pages That in and of itself makes this case rather extraordinary. I will hit only the high points here.

Judge Shaw wrote the main opinion, finding the applied-for mark to be immoral or scandalous and thus barred from registration by Section 2(a). Because this is a family blog, I will not repeat the dictionary definitions of "fuck" (you know them anyway), which established that the word "fuck" is considered vulgar and obscene. The examining attorney submitted Internet evidence showing that F**K is commonly used in place of "fuck," Therefore, "the former may be considered equivalent to the latter, particularly in meaning and commercial impression." The asterisks in F**K "serve as a typographical 'fig leaf' to protect readers from the visual vulgarity of the word 'fuck' but the terms are nonetheless equivalents."

Credulity was strained by applicant's argument that the term F**K could refer to an infinite number of socially acceptable words, such as "fork" of "flack." [How about FINK or FOLK? - ed.] Writers use asterisks in the term F**K precisely because the asterisks mask the vulgar appearance of the word 'fuck' in its entirety, while at the same time leaving no doubt in the reader's mind of the meaning."

Judge Adlin concurred, under different reasoning, noting that "if we were writing on a clean slate," he would join the dissent. In cases involving euphemisms or alternative spellings of "bad words," the Board has generally found these terms to be scandalous. He also noted that the PTO has been consistent in refusing registration of marks analogous to F**K PROJECT.

Unless and until a court or a larger panel of the Board adopts a new course in situations such as this, it is not appropriate to disturb the settled expectations resulting from the Office’s prior and relatively consistent treatment of this type of mark.

If serving on a larger panel, however, Judge Adlin would view the evidence as does the dissent. He would not agree that F**K is vulgar, but rather he would find it to be a euphemism used precisely because it is not vulgar. The evidence showed that "public, for-profit websites, and book, movie, and clothing sellers use alternative spellings of 'fuck' in an apparent effort to not offend, or at least to reduce the level of offense arising out of calling to mind the word 'fuck.'"

Judge Seeherman dissented, emphasizing that the mark at issue is not FUCK PROJECT, which she would find scandalous, but F**K PROJECT. The judge did not agree with the conclusion that if a term would be readily understood as offensive, a substitute term is also offensive.

In Judge Seeherman's view, F**K is a non-offensive way of depicting the word FUCK. "F**K is a sanitized version of the vulgar word 'fuck,' but because it is sanitized by the fig leaf asterisks, it should not be treated as being the same as the vulgar word that the fig leaf asterisks are obscuring."

At the very least, the record shows that there is some question about whether "f**k" would be perceived as an offensive or vulgar word, or as a euphemism for the offensive word “fuck.” This is enough to show that there is doubt as to whether the applied-for mark, F**K PROJECT in stylized form, is scandalous and, accordingly, such doubt should be resolved in favor of publishing the mark for opposition.

Read comments and post your comment here.

TTABlog comment: I've read enough F-bombs for one night, thank you. What do you think about the outcome?

Text Copyright John L. Welch 2015.

Monday, October 05, 2015

Precedential No. 37: TTAB Affirms Functionality Refusal of Hot Bonder Product Design

The Board affirmed a refusal to register the product configuration shown below, comprising the arrangement of various components on a portable interface unit for "hot bonders," finding the purported mark to be functional under Section 23(c). The Board concluded that the "overall design of Applicant's configuration is 'essential to the use or purpose of the article'" [TrafFix] and therefore that the configuration as a whole is functional and not registrable. In re Heatcon, Inc., Serial No. 85281360 (September 29, 2015) [precedential].

Heatcon sought registration of the design on the Supplemental Register, for "equipment for controlling and recording the application of heat and pressure in a process for fabricating bonded composite materials, namely, woven glass, aramid fibers and carbon fabric, and adhesives bonds to composite or metallic components." It described the mark as a "three dimensional configuration of the arrangement of the HCS9200M Composite Repair Set's (Hot Bonder's) user interface components."

Section 23(c) permits registration on the Supplemental Register, of a mark that "may consist of any ... configuration of goods ... that as a whole is not functional ... but such mark must be capable of distinguishing the applicant's goods or services." However, the Board observed, "the case law applying Section 2(e)(5) and addressing functionality prior to the 1998 amendments to the Trademark Act, which added Section 2(e)(5) and amended Section 23(c), remains equally applicable because the issue, functionality, is the same."

The Board applied that old favorite, the CCPA's Morton-Norwich test, in assessing functionality.

Under the first Morton-Norwich factor, a utility patent that claims the features of a product design is "strong evidence that those features claimed therein are functional." Third-party patents may be relied on as evidence; ownership of the patent is irrelevant. [i.e., no hearsay problem. But why not? - ed.]. Examining Attorney Tracy Cross cited a third-party utility patent for a "Portable Curing System for Use with Vacuum Bag Repairs and the Like," which claimed a carrying case and various components. She pointed out that both the patented device and Heatcon's unit locate "the display screen and printer opposite the power input port and vacuum connector ports [so that] [t]operator can connect cords, cables and/or wires away from the user and avoid entangling the connections or hindering access to the other sensors, buttons and components of the panel."

Heatcon argued that the utility patent was irrelevant because the patent claims did not reference the arrangement of the components, and the patent figures showed "one possible arrangement of a virtually infinite number of possible arrangements." However, the Federal Circuit has pointed out that a utility patent may be relevant even though it does not claim "the exact configuration for which trademark protection is sought." A patent's specification "illuminating the purpose served by a design may constitute equally strong evidence of functionality." Citing In re Becton, Dickinson and Co.. [See comment below]. Here, the specification of the cited patent explained the utilitarian advantages of the particular arrangement of the features.

Figure from cited patent

The Board therefore found that the cited patent "discloses the utilitarian advantages of the various parts ... of an interface for a portable hot bonder. In view of the "strong weight" to be accorded patent evidence under TrafFix, the Board found the cited patent to be sufficient to establish a prima facie case of functionality. [Utility patent = game over - ed.].

As to the second Morton-Norwich factor, Heatcon's advertising references to "ergonomic design," "convenient hook up," and "circuit breakers on front panel" were probative as to the functionality of Heatcon's applied-for mark. Third parties touted Heatcon's display, and competitor's promoted the convenience of similar arrangements. The Board concluded that the advertising evidence supported a finding of functionality.

Turning to the third Morton-Norwich factor, Heatcon submitted several third party products as evidence of alternative designs. The examining attorney pointed out, however, that these designs do not necessarily provide the same utilitarian benefits of Heatcon's design: hot bonders lacking a raised display are not alternatives for hot bonders with a raised display, and single zone bonders that have a display screen on the side are not dual zone hot bonders. The examining attorney also pointed out that industry and safety standards play a roll in the arrangement of the components for Heatcon's product.

Noting that there is no need to consider alternative designs if functionality is found based on other considerations, the Board concluded that the alternative examples proffered by Heatcon did not support a finding of non-functionality.

As to the fourth Morton-Norwich factor, there was insufficient evidence for the Board to make a determination as to the comparative costs of different designs. In any case, even if Heatcon's interface is not comparatively simple or inexpensive to manufacture (as Heatcon asserted), that does not mean that the design is not functional.

Heatcon argued that, although the arrangement of its interface is composed completely of functional parts, the arrangement by itself is not functional. Not so, said the Board.

[T]he functional features far outweigh any nonfunctional aspect of the arrangement which is incidental and hardly discernible as a separate element from the functional parts. While we do not foreclose the possibility, it is difficult to imagine a situation where the sum of a configuration’s entirely functional parts adds up to a design capable of indicating the source of the product. In any event, the case before us presents no such exception.

Moreover, the Board observed, even if it did not weigh the functional features against the asserted non-functional arrangement, the record established that "the arrangement of significant functional features is directed by utilitarian concerns to make the device easier, safer, and more efficient."

The Board concluded that the examining attorney satisfied her burden to make out a prima
case. Heatcon failed to submit sufficient evidence to overcome that prima facie case by a preponderance of the evidence. It found that the "overall design of Applicant's configuration is "essential to the use or purpose of the article" [TrafFix and therefore the configuration as a whole is functional and not registrable.

The Board also affirmed a refusal to register on the ground of Applicant Heatcon's failure to comply with the examining attorney' requirement for a new drawing. Although the finding of functionality rendered the drawing issue moot, the Board chose to discuss the issue. It agreed with the examining attorney that, "in view of the functionality of the individual components, the requirement to depict them in broken lines is appropriate." It disagreed with Heatcon's assertion that such a depiction would be "unclear."

[t]o the extent it would be “unclear” the requirement to insert a statement in the description of the mark identifying these elements and declaring that these elements are not part of the mark and that they serve only to show the position of the mark on the goods is also appropriate.

Read comments and post your comment here.

TTABlog comment: Quite a job by Examining Attorney Tracy Cross in gathering evidence, don't you think?

The Board noted that, according to the TMEP, the terms de jure functional and de facto functional were "retired" at the USPTO in 2002. Apparently the CAFC did not get the message, since it used those terms, and explained the differences, in In re Becton, Dickinson and Co., 102 USPQ2d 1372 (Fed. Cir. 2012). I found those two terms useful in this March 2015 TTABlog posting entitled "Some Thoughts on de facto and de jure Functionality."

Text Copyright John L. Welch 2015.

Sunday, October 04, 2015

CAFC Hears En Banc Oral Argument in THE SLANTS Appeal

On Friday, October 2nd, the CAFC heard oral argument en banc in in re Tam, the issue being whether "the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate[s] the First Amendment?" You too can hear the argument by going to this link and typing in the date of 2015-10-02 and the appeal number 2014-1203. Prior TTABlog postings regarding this case may be found here [TTAB], here [CAFC], and here [CAFC].


Read comments and post your comment here

Text Copyright John L. Welch 2015.

Saturday, October 03, 2015

TTABlog Quarterly Index: July-September 2015

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 blog on Twitter (here). And don't forget to leave your comments! [Note that E-mail subscribers may have to surf to the blog to see comments]. Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at wolfgreenfield.com.

Section 2(a) - Disparagement:
Section 2(d) - Likelihood of Confusion:

Section 2(e)(1) - Mere Descriptiveness:
Section 2(e)(1) - Deceptive Misdescriptiveness:
Section 2(e)(2) - Geographical Descriptiveness:
Section 2(f) - Acquired Distinctiveness:

Failure to Function/Specimen of Use:
Lack of Bona Fide Intent:
Concurrent Use:

CAFC Decisions:
Recommended Reading:
Text and photos Copyright John L. Welch 2015.

Friday, October 02, 2015

Precedential No. 36: TTAB Gives the Boot to Nike's Inadequate Section 2(a) and 2(c) Claims

The Board granted Applicant Palm Beach Crossfit's motion to dismiss two of Nike's four claims in this opposition proceeding, finding that Nike had inadequately pleaded claims under Section 2(a) and 2(c) of the Lanham Act. Nike asserted that applicant's design mark shown below left, for athletic clothing and athletic training services, would falsely suggest a connection with former hoopster Michael Jordan, and further that the mark comprises a portrait of a living individual (Jordan) without his consent. Nike, Inc. v. Palm Beach Crossfit Inc. d/b/a Crossfit CityPlace, Opposition No. 91218512 (September 11, 2015) [precedential].

Nike's Section 2(d) and 43(c) (dilution-by-blurring) claims, which were based on Nike's ownership of registrations for the mark shown above right, survived the motion to dismiss. Applicant argued that the marks are so dissimilar that, as a matter of law, these two claims must be jettisoned, but the Board disagreed. The Board ruled that applicant's services are not so unrelated to Nike's sporting goods that the issue can be determined on a motion to dismiss.

Turning to the Section 2(a), the "initial and critical requirement" for a false association claim is that the identity allegedly being misappropriated is unmistakably associated with the person or institution identified. Nike alleged that applicant's "handstand" mark falsely suggests a connection not with Nike, but with Michael Jordan - but the hoop star is not a party to the proceeding.

While Opposer alleges generally its relationship with Michael Jordan has led to a close association between the two in the minds of the public, Opposer does not assert that the public would recognize Applicant’s marks as pointing uniquely to Opposer (or to Michael Jordan), or that Applicant’s Handstand marks are a close approximation of Opposer’s (or Michael Jordan’s) identity or “persona,” an element necessary to a false suggestion of a connection claim.

The Board therefore dismissed Nike's Section 2(a) claim.

As to the Section 2(c) claim, a plaintiff must allege that the marks "consists of or comprises" the name, image, likeness, or signature of a particular living individual, and that "he or she is so well known that the public would that the public would reasonably assume a connection between the mark and the individual, or that, because the individual is publicly connected with the business or field of the identified goods or services, such connection would be assumed."

Section 2(a) may be invoked by an entity, but Section 2(c) requires reference to "a particular living individual." Opposer alleged that it has a licensing relationship with Michael Jordan and that it has developed and used trademarks comprising Jordan's image, giving Nike a monetary interest in the image of Michael Jordan. However, Nike did not assert that the "licensing relationship" gives in a proprietary right to assert a Section 2(c) claim on Jordan's behalf.

Accordingly, the Board dismissed the Section 2(c) claim for insufficient pleading.

The Board allowed Nike 20 days within which to file an amended notice of opposition, if it "believes sufficient grounds exist to re-plead its Section 2(a) and 2(c) claims."

Read comments and post your comment here.

TTABlog comment: Seems like the 2(a) claim may be easily fixed, but what about 2(c)? I suppose you'd have to look at the licenses.

Text Copyright John L. Welch 2015.

Thursday, October 01, 2015

TTAB Posts October 2015 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled five (V) oral hearings for the month of October, as listed below. The first four hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The fifth will be held "off-site" (at the AIPLA annual meeting in Washington, D.C.) The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner). Briefs and other papers for these cases may be found at TTABVUE via the links provided.

October 7, 2015 - 2 PM: In re Apple, Inc., Serial No. 77078496 [refusal to register the mark IPHONE for various services in International Classes 41 (providing online information and entertainment) and 42 (computer consulting services) on the ground that the specimens of use do not show the mark in use with the recited services].

October 13, 2015 - 11 AM: In re Caliburger, Serial No. 85810919 [Alternative refusals of CALIBURGER for restaurant services, on the grounds that the mark is of primarily geographically descriptive under Section 2(e)(2) of the Trademark Act, or merely descriptive under Section 2(e)(1)].

October 21, 2015 - 2 PM: In re Neato Robotics, Inc. , Serial No. 85751529 et al. [Mere descriptiveness refusal of BOTVAC, and requirement of disclaimer of BOTVAC in the mark NEATO BOTVAC for, inter alia, robotic vacuum cleaners and parts therefor].

October 22, 2015 - 11 AM: In re PACCAR, Inc., Serial No.85769536 [Section 2(e)(4) refusal to register KENWORTH for transmission fluids, motor vehicle lubricants, and all-purpose lubricants, on the ground that the mark is primarily merely a surname].

 October 22, 2015 - 2PM: Balance Bar Company v. GFA Brands, Inc., Opposition Nos. 912142477 et al. [Opposition to registration of EARTH BALANCE and SMART BALANCE for various food items, including  "nut and seed-based snack bars" and "meal replacement bars," on the ground of likelihood of confusion with the registered marks BALANCE and BALANCE BAR, and various BALANCE-formative marks, for snack bars].

Read comments and post your commenthere.

TTABlog note: Any predictions? See any WYHA?s here?

Text Copyright John L. Welch 2015.

Wednesday, September 30, 2015

Precedential No. 35: TTABang! SMART SERIES Merely Descriptive of Firearm Safes

The Board affirmed a Section 2(e)(1) refusal to register the mark SMART SERIES, finding the mark to be merely descriptive of "metal safes specifically designed to store firearms." The Board agreed with Examining Attorney Susan Leslie DuBois that the mark describes applicant's safes as "belonging to a larger product line" and featuring "a particular level of  technology, such as microcomputers or microprocessors." In re Cannon Safe, Inc., Serial No. 85651960 (September 24, 2015) [precedential].

Applicant feebly argued that even if SMART SERIES conveys some information about applicant's goods using "some sort of technology and that they are part of some sort of line of products," such information is vague and not conveyed with sufficient particularity to invoke a Section 2(e)(1) bar. Moreover, Applicant asserted, even if the words "smart" and "series," standing by themselves, would each be descriptive, the phrase SMART SERIES is registrable because it is a combination mark with an incongruous meaning. [And what meaning is that? - ed.].

Applicant indicated that its safes will be equipped with microprocessors and microcomputers. The Board therefore concluded that the goods have a "smart" component, and applicants identification of goods is broad enough to include gun safes with microprocessors. Moreover, the evidence showed that the word "smart" in the field of safes has been used to describe those that include microprocessors to provide safety. In fact, contemporary gun safes include built-in microprocessors for such features as fingerprint recognition and tampering protection.

The Board found that consumers will readily understand from the word SMART that applicant's gun safes contain automated, technological devices such as microprocessors that make them "smart."

As to the word SERIES, applicant uses the word "series" for several other lines of gun safes. Moreover, it is not uncommon [litotes?! - ed.] in the industry to consider safes as a "series." For example, Liberty Safes offers the "Lincoln Series."

The combination of SMART and SERIES "does not result in a mark which as a whole has a nondescriptive or incongruous meaning." Each component retains its merely descriptive significance, resulting in a mark that is merely descriptive. Consumers will understand SMART SERIES as identifying "another of Applicant's various series of safes, i.e., a line of safes offering enhanced capabilities made possible by the use of microprocessors."

The Board therefore affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? My goodness, the "precedential" tag is certainly thrown around loosely these days. If these safes did not contain microprocessors, would the mark be deceptive under Section 2(a)?

Text Copyright John L. Welch 2015.

Tuesday, September 29, 2015

Precedential No. 34: MMMBop! TTAB FInds C.H. HANSON Confusable with HANSON for Hand Tools

In a real yawner, the Board affirmed a Section 2(d) refusal to register the mark C.J. HANSON for "Hand tools, namely, chalk line reels; Hand tools, namely, squares; Hand-operated sharpening tools and instruments; Hand-operated tin snips; Pliers; Snips," in Class 8, finding the mark likely to cause confusion with the mark HANSON registered for "Die taps and die sets, taps and tap sets, all the foregoing for use with machine tools," in Class 7, and for "hand tools, namely, wrenches, and accessories for wrenches, namely, die taps and die sets, taps, and tap sets," in Class 8. The Board rejected Applicant's puzzling interpretation of Registrant's class 8 identification of goods, which interpretation would limit the goods to specialized tools used to create thread in a piece of metal, and would exclude ordinary wrenches. In re C. H. Hanson Company, Serial No. 77983232 (September 23, 2015) [precedential].

The Marks: The Board observed that the mere addition of "C.H." to registrant's mark "does not obviate the similarity between the marks because consumers would be likely to believe that the marks HANSON and C.J. HANSON refer to the same person." It concluded that the marks are similar in appearance, sound, and meaning, and highly similar in commercial impression.

The Goods: Applicant chose to ignore the phrase "Hand tools, namely" in the class 8 identification of goods in the cited registration. It contended that, absent a semicolon after "wrenches," the phrase "Hand tools, namely, wrenches" merely modifies the remaining class 8 goods. [Huh? - ed.]. According to applicant, the term "wrenches" by itself is indefinite, and therefore "the punctuation should be interpreted as limiting Registrant's wrenches to the drives and stocks related to its taps and dies."

Applicant pointed to a brochure of registrant's to illustrate the specialized nature of registrant's wrenches, but of course the Board pointed out that its determination of the issue of likelihood of confusion must be based on the goods as identified in the cited registration, not on extrinsic evidence of actual use.

It is true that when an identification is technical or vague, it may require clarification via extrinsic evidence, but here there was nothing vague or technical about the phrase "hand tools, namely, wrenches." That very phrase appears in the USPTO's Trademark Acceptable Identification of Goods and Services (Trademark ID Manual). The Board also took judicial notice of several dictionary definitions of the word "wrench."

The Board concluded that registrant's Class 8 identification of goods includes ordinary wrenches, including wrenches that are "hand tools," and is not limited to specialized tools known as "drives" and "stocks" used solely with taps and dies.

Although a semicolon would have been better than a comma, the comma nonetheless separates "wrenches" from the phrase "die taps and die sets, taps and tap sets" that modifies "accessories for wrenches." To the extent that use of the comma creates any ambiguity [I don't see it - ed.], any doubt must be resolved in favor of the prior registrant, given the presumptions accorded a registration.

Examining Attorney Meghan Reinhart submitted website evidence showing that wrenches and tap and die sets, on the one hand, and applicant's goods, on the other, may emanate from the same source of hand tools under the same mark. Third-party registration evidence also demonstrated the relatedness of the goods. The Board concluded that the registration evidence, considered in conjunction with the Internet evidence, supported the conclusion that the goods are related.

The Board therefore affirmed the Section 2(d) refusal to register.

Read comments and post your comment here.

TTABlog comment: Zzzzzzzzzzzzzzzzzzz! Was this decision worthy of the "precedential" tag?

Text Copyright John L. Welch 2015.

Monday, September 28, 2015

Precedental No. 33: North Face Gets Split Decision In Multi-Class Section 2(d) Opposition

In a decision issued exactly one year after oral argument, the Board sustained in part North Face's Section 2(d) opposition to registration of the mark shown below left, for a variety of goods and services in classes 7, 11, 12, 16, 25, 35, and 37, including motorcycles, electric bicycles, various clothing items, and auto repair services, in view of the registered mark shown below right, for footwear, backpacks, sleeping bags, and clothing. The North Face Apparel Corp. v. Sanyang Industry Co., Ltd., Opposition No. 91187593 (September 18, 2015) [precedential].

Applicant's Motion to Amend: The Board first dealt with Applicant Sanyang's motion to amend its answer to assert as an affirmative defense that, if the Board should find that Applicant was not entitled to registration with respect to some but not all of the goods or services listed in its two applications, then Sanyang should be allowed to amend its two applications to conform to the Board’s findings. The Board denied the motion, pointing out that Sanyang failed to specify the particular goods or services that it would delete from its applications.

Applicant’s motion would essentially impose on Opposer the requirement to prove likelihood of confusion with respect to each of the numerous goods and services identified in the seven classes of Applicant’s applications, as opposed to showing likelihood of confusion with respect to one or more (but not necessarily all) goods or services in each class of the applications. ***This would also require the Board to decide the issue of likelihood of confusion with respect to each of the hundreds of goods and services, a decision that Applicant would then effectively obviate as far as the goods or services for which likelihood of confusion was found.

The Marks: North Face contended that Sanyang's s mark is merely North Face's mark turned on its side, and it pointed to the statement that Sanyang made in its application that its mark is a stylized "S". Sanyang asserted that its mark has a "a textured or three-dimensional effect"and that the orientation of its mark changes the visual impression so that the mark resembles "a forward-moving arrow, or a wheel over which an arrow is superimposed, to suggest a wheel in motion."

The Board observed once again that the proper test for assessing two marks is not a side-by-side comparison of the marks, since "consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections."

Sanyang's description of its mark as an "S" design was not considered an admission, but rather merely "illuminative of shade and tone" in connection with the Board's determination as to the meaning and commercial impression of the mark.

The Board found that, on the whole, the similarities between the marks outweighed the dissimilarities. It noted the lack of evidence of third-party use of "S" design marks; such evidence would have made the differences in the marks more significant. It concluded that the first du Pont factor, the similarity or dissimilarity between the involved marks, weighed in favor of North Face, but it noted that “that similarity is not a binary factor but is a matter of degree.”

The Goods and Services: Because some of Sanyang's Class 25 goods were identical to the goods in North Face's pleaded registrations, the Board sustained the opposition as to Class 25. See Tuxedo Monopoly (likelihood of confusion must be found as to the entire class if there is likely to be confusion with respect to any item that comes within the identification of goods or services in that class).

Sanyang acknowledged that its retail stores featuring clothing, textiles, and clothing accessories "are related to [Opposer’s] class 25 goods." The Board therefore sustained the opposition as to Class 35.

The relatedness of the remaining goods and services of Sanyang to North Face's goods was not so clear, and opposer's contentions regarding their complementary nature were "not very specific." North Face maintained that Sanyang's clothing and equipment are designed for outdoor activities, including biking or riding a scooter, and that the riders are likely to wear clothing designed for outdoor activities, or carry backpacks and duffel bags (North Face's goods).

As to Sanyang's class 7 goods (lawnmowers, boat engines, and mechanical parts), North Face did not explain how any of those goods were related to its goods, and so the Board dismissed the opposition as to Class 7. As to class 11, the differences between Sanyang's goods (e.g., vehicle reflectors and vehicle headlights), coupled with the differences in the marks, led the Board to conclude that confusion was not likely.

As to class 12, there was no evidence to that consumers would believe that Sanyang's electric bicycles would emanate from or be sponsored by North Face. The evidence did show that clothing and backpacks, on the one hand, and Sanyang's electric scooters, mopeds, and motorcycles, on the other, may be sold through the same channels of trade. Although this du Pont factor favored North Face, the differences in the goods and the marks resulted in the Board dismissing the opposition as to this class of goods.

As to Sanyang's class 16 goods, there was no evidence showing how these goods (e.g., stickers) are related to North Face's goods.

Finally, as to Sanyang's class 37 services (e.g., automobile and motorcycle maintenance and repair), the difference between the involved goods and services was dispositive.

In sum, the Board sustained the opposition as to Sanyang's class 25 goods and its class 35 services, but dismissed the opposition as to classes 7, 11, 12, 16, and 37.

Read comments and post your comment here.

TTABlog comment: So North Face batted about .284 in this one. That's well above the Mendoza line, but hardly a Hall of Fame number. By the way, Sanyang's two applications were based on Section 1(a) actual use, despite the "laundry list" of goods and services.

Text Copyright John L. Welch 2015.

Friday, September 25, 2015

TTAB TEST: Is a Coupon an Acceptable Specimen of Use for Baby Lotion?

The USPTO refused registration of the mark EARNING TRUST WITH EVERY BOTTLE for "facial and skin cleansers; facial and body washes soaps; shampoos; body lotions," deeming Applicant Johnson & Johnson's specimen of use unacceptable. J&J maintained that its coupon functions as a point-of-sale display that is given to the customer at the cash register and can be redeemed in the same store. How do you think this came out? In re Johnson & Johnson, Serial No. 85286071 (September 22, 2015) [not precedential].

The coupon specimen states that 75 cents may be saved "on any JOHNSON'S Baby Wash or Lotion product" and depicts two bottles of the goods, with the mark adjacent the bottles. The examining attorney contended that the coupon is merely advertising, not a point-of-sale display.

It is well established that mere advertising is not a proper specimen for registration of a trademark. Most of the pertinent cases concern webpages. In re U.S. Tsubaki directs that the Board consider whether "the coupon has a 'point of sale nature' and if it is designed to catch the attention of the purchasers as an inducement to consummate a sale."

In Lands' End Inc. v. Manbeck, the E.D. Va. district court ruled that a catalog that depicted the product with a description thereof, along with ordering information and a sales form, constituted a display "associated with the goods," in satisfaction of the Section 45 definition of "use" of a trademark.

In In re Anpath Group, Inc., the TTAB rejected a pamphlet and a flyer as specimens of trademark use because they lack a sales form and ordering information that would enable the purchaser to place an order.

In In re Shipley Co., the Board reversed a refusal of a specimen comprising a photo of a booth at a technical trade show because not only were sales materials available in the booth, but sales personnel were available to take orders.

Here the coupon displays an image of the goods with the applied-for mark adjacent the goods. It identifies the retailer where the goods can be purchased and the coupon is dispensed "in the very store where the goods are located and offered for sale." As in Shipley, sales personnel are directly available to answer questions regarding pricing, quantities, or location in the store. "In fact it is the cashier who hands the coupon to the customer, and the cashier, by presenting the coupon to the consumer, begins the association of the mark with the goods." The customer may be enticed by the coupon to "turn around and pick up the product ... and make the purchase."

The temporal separation between the customer's receiving the coupon, then perceiving the mark on the coupon, and then purchasing the goods, does not preclude the coupon being a display associated with the goods. In the same sense that the infomercial in In re Hydron served as a point-of-sales specimen of use, even though two minutes passed between the display of the mark and the display of ordering information for the goods, applicant's coupon functions as a point-of-purchase display.

In our view, the customer will associate the mark with the goods once presented with the coupon that contains the mark and a depiction of the goods by the cashier, in the very store in which the goods are offered for sale. Because the coupon is dispensed when the customer is in the store, and prior to his or her departure from the store, the coupon is intended to consummate a sale.

The Board therefore reversed the refusal to register.

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TTABlog comment: Seems like there was a lot of attorney argument regarding how the coupon would be used, rather than actual proof. Was the Board essentially taking judicial notice of that?

Text Copyright John L. Welch 2015.