Wednesday, August 27, 2014

TTAB Reverses ENTERPRISE Phantom Mark and Mutilation Refusals

The Board reversed a refusal to register the mark shown below for vehicle rental and leasing and fleet management services, rejecting the PTO's contention that applicant's mark is a "phantom mark" and overruling the Examining Attorney's objection to the specimens of use. In re Enterprise Holdings, Inc., Serial No. 85675437 (August 25, 2014) [not precedential].

Phantom mark: The examining attorney contended that applicant was trying to register more than one mark, because applicant "inserts changeable merely descriptive wording" in the blank space below the word ENTERPRISE. As such, the mark is a phantom mark.

The CAFC has defined a phantom mark as "one in which an integral portion of the mark is generally represented by a blank of dashed line acting as a placeholder for a generic term of symbol that changes depending on the use of the mark." Registration of a phantom mark is prohibited because one cannot conduct a proper search of the mark and fails to give proper notice to other trademark users. [Example: HERBAL ESSENCE OF xxxx, where xxxx may be one of a number of fruit names, such as HERBAL ESSENCE OF APPLE, HERBAL ESSENCE OF KUMQUAT, etc.].

Applicant's description of its mark was as follows: "The mark consists of a green square to the left of a black rectangle. The letter "e" is white and positioned within the green square. The letters "nterprise" are white and positioned within the black rectangle. The foregoing elements are positioned over a barrel-shaped shield design that is white outlined in black."

The Board pointed out that this description does not indicate that there are missing elements or elements that will change. Moreover, the application drawing depicts a single mark. The Board therefore reversed the phantom mark refusal.

Specimens of use: Applicant's specimen brochures are depicted immediately below:

The Examining Attorney maintained that the specimens display the mark as ENTERPRISE FLEET MANAGEMENT and design and ENTERPRISE COMMERCIAL TRUCKS and design, whereas ; and the drawing shows the mark as ENTERPRISE and design without any additional wording. Therefore, he concluded, the mark in the drawing is not a substantially exact representation of the mark as used on the specimen, as required by Rule 2.51.

The question, then, was whether applicant had mutilated its mark, which reduced to this basic query: what exactly is a trademark? It is something that creates a separate and distinct commercial impression that indicates the source of the goods or services. The examining attorney argued that, since FLEET MANAGEMENT and COMMERCIAL TRUCKS are not generic for any particular service, the addition of this merely descriptive language clearly changes the impression of the mark.

The Board disagreed. FLEET MANAGEMENT is generic for fleet management services, and COMMERCIAL TRUCKS is at least highly descriptive of leasing and rental services. These terms not only cannot function alone as marks for applicant's services, but they also are separable from the rest of the mark. Therefore, their deletion does not change the commercial impression of the mark.

Consequently the Board found the specimens of use to be acceptable and it overruled this objection.

Read comments and post your comment here.

TTABlog note:  In support of its ruling on the specimens of use issue, the Board pointed to the ridiculous TINEL-LOCK decision, which held that a specimen of use displaying the term TR06AI-TINEL-LOCK-RING supported registration of the term TINEL-LOCK for metal rings.

Text Copyright John L. Welch 2014.

Tuesday, August 26, 2014

"PAGOS DEL REY" and "PradoRey" Confusable for Wine, Says TTAB

The Board sustained a Section 2(d) opposition to registration of PAGOS DEL REY for wine in view of the registered mark PradoRey for wine. Applicant argued that Spanish-speaking Americans would perceive the difference in meaning between the two marks, but the Board observed that even if that were so, customers who are not familiar with Spanish must also be considered, and they would find the marks similar in appearance and sound. Real Sitio de Ventosilla, S.A. v. Pagos del Rey, S.L., Opposition No. 91201741 (August 22, 2014) [not precedential].

Because the goods are identical, the Board presumed that applicant's wine and opposer's wine travel through the same, normal channels of trade to the usual classes of consumers. Applicant contended that consumers, when faced with walls or rows of wine, are "forced to choose a wine off the shelf in order to read the label to find out what they have the option of purchasing." Opposer, on the other hand, maintained that lower-priced wine is frequently bought on impulse, and further that when wine is sold in the "chaotic" conditions of a bar or restaurant, customers may not be able to inspect the bottle of wine. The Board found opposer's position more persuasive.

As to the marks, the evidence showed that opposer's mark PradoRey consists of two Spanish words meaning "meadow" and "king," whereas the three Spanish words in opposer's mark mean "the king's estate" or "the king's vineyards." According to applicant the tens of millions of people of Hispanic descent in this country would recognize the different meanings of the two marks. The Board pointed out, however, that it must also be concerned with consumers who do not understand Spanish. "For them, the marks may have no meaning and the visual and phonetic aspects of the marks, as well as the overall commercial impression created by the marks, will be the critical elements in forming their impressions of the marks."

Non-Spanish speaking consumers would likely have difficulty in determining how to pronounce the marks, increasing the likelihood that they would be confused by the similarities in the marks: the initial P, the assonance of the vowels of PRADO- and PAGOS, and the final syllable REY. The sharing of seven letters, in similar order, in marks beginning with "P" and ending in "REY," with the marks having no meaning for many, would likely result in confusion when the marks are used on identical goods.

Applicant claimed that third-party uses and registrations of marks containing the word REY have a diluting effect on the cited mark, but the Board was unimpressed. The evidence of such usage lacked specificity, and the third-party registered marks were entitled to no probative weight because of a lack of evidence as to the nature and extent of their use.

Finally, applicant pointed to the absence of proof of actual confusion, but the Board noted that opposer's sales have been low and limited geographically. Applicant's assertion that the marks have co-existed peacefully in other countries was irrelevant here. And applicant's claim that it adopted its mark in good faith was likewise irrelevant because good intent does not avoid a finding of likely confusion.

Balancing the relevant duPont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog note:  I don't think the marks are all that similar.

Text Copyright John L. Welch 2014.

Monday, August 25, 2014

Test Your TTAB Judge-Ability: Is GOOD BOX Merely Descriptive of Wine?

Switzerly, Inc. sought to register the mark GOOD BOX for wine, but the USPTO refused registration, deeming the mark merely descriptive of the goods under Section 2(e)(1). On appeal, applicant argued that its mark does not describe the wine itself, but at most the packaging for the wine. How do you think this came out? In re Switzerly, Inc., Serial No. 85720234 (August 20, 2014) [not precedential].

Examining Attorney Karen K. Bush relied on dictionary definitions of, not surprisingly, "good" and "box," and on several Internet website printouts referring to "good wine in a box," "box wines," "boxed wines," and "good boxed wine." The Board concluded that in the context of wine, "box" and "boxed" refer to wine sold in a box, that "good" box wine is increasingly common, and that consumers seek out "good" box wine.

The evidence also established that the combination of "good" and "box" does not convey any commercial impression beyond the meaning of the individual terms.

Switzerly urged that GOOD BOX at most describes the packaging, not the wine itself, but it conceded that "[wines] may be categorized by type of packaging." The Board observed that because wine is a liquid, it typically is sold in some type of container or package, and applicant's mark must appear on the package.

[T]he predecessor to our primary reviewing court has held that a mark which is merely descriptive of the packaging of goods may be found merely descriptive for the goods themselves. J. Kohnstam, Ltd. v. Louis Marx & Co., Inc., 280 F.2d 437, 126 USPQ 362 (CCPA 1960). There, the Court found MATCHBOX SERIES merely descriptive of “toy model vehicles and toy model machines” sold in matchboxes.

Finally, Switzerly pointed to a number of registrations for marks in which the word "good" is not disclaimed, but the Board pooh-poohed that argument. First, applicant failed to submit this evidence prior to the filing of its appeal, and second, each application must be considered on its own merits and the PTO and the TTAB are not bound by the prior actions of individual examining attorneys in other cases.

Because consumers seek out good box wine, competitors have a need to use that term. The Board therefore affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

Friday, August 22, 2014

TTAB Affirms PTO Refusal: Specimens Fail to Show Use for Live Entertainment Services

The Board affirmed a refusal to register the mark FAB AGAIN for "entertainment in the nature of visual and audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances," on the ground that applicant failed to submit an acceptable specimen of use. Specimens evidencing use of the mark on recordings or in connection with music streaming are not sufficient to support a registration for the recited services: the specimens must relate to a live performance before an audience. In re Titan Music, Inc., Serial No. 77344197 (August 20, 2014) [not precedential].

Applicant first submitted a webpage from the website, offering for sale a music CD having the cover shown above. Examining Attorney Andrew Rhim rejected that specimen of use because it made no reference to any services.

Applicant then submitted a printout from Last FM's internet website (a streaming service), showing the album cover with a link to allow streaming audio from the album. The Examining Attorney again refused to accept the specimen because "performances captured on a musical sound recording constitute goods and are not the same as the service of providing or conducting visual and audio performances."

"Performance" in the context of services involves the act of performing and is done in front of an audience. *** [T]he Trademark Manual of Examination Procedure Section 1402.11(g) states that "For entertainment services in the nature of performances, such as those rendered by a musical group, the performances must be live."

The TMEP goes on to say that "[t]he recording of a live concert or studio performance is not considered a service of the performing group." [The production of a recording by another entity of a performance by a musical group would be a service of the other entity.] Recorded entertainment usually takes the form of goods in Class 9, such as videotapes, audio cassettes, DVDs, CDs, etc.

The Board agreed with the Examining Attorney that applicant's specimens may show use of the mark for goods (compact discs) or services (streaming), but they did not show use of the mark with the recited services.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Who's that in the middle of the Fab Four?

Text Copyright John L. Welch 2014.

Thursday, August 21, 2014

Test Your TTAB Judge-Ability on this Section 2(d) Refusal of WINSTON CHURCHILL LANCASTER for Cigars

Applicant Randolph Leonard Spencer Churchill sought to register the mark shown below left, for cigarillos and cigars, but was refused registration in view of the registered mark shown below right, for chewing tobacco. On appeal, Applicant Churchill argued that the cited mark would be seen as referring to a place, whereas his mark refers to the famous British Prime Minister. How do you think this came out? In re Randolph Leonard Spencer Churchill, Serial No. 85446588 (August 19, 2014) [not precedential].

(click on drawings for larger picture)

Examining Attorney Anne Madden submitted numerous third-party registrations that each included both cigars and chewing tobacco, which registrations served to suggest that these goods are of a type that may emanate from a single source. Because there were no limitations on channels of trade in the application or cited registration,the Board presumed that the goods travel through the same, normal channels of trade to the same classes of consumers. Moreover, third-party website evidence demonstrated that chewing tobacco and cigars are frequently marketed together.

Turning to the marks, the cited mark contains the phrase LIMITED-RESERVE CHEWING TOBACCO in a small font. [LIMITED RESERVE CHEWING TOBACCO was disclaimed in the registration]. Applicant's mark includes a crest containing Latin and Spanish wording in so small a font "as to be illegible to the extent it would be noticed at all by consumers." Both marks include the word LANCASTER, but in the cited registration it is plainly the dominant term.

Considered in their entireties, "the marks do not look or sound much alike." However, the Board must also consider their connotations and overall commercial impressions.

Applicant asserted that LANCASTER gives the connotation and commercial impression of a place, while his mark would be understood to refer to British Prime Minister Winston Churchill.

The Board acknowledged that LANCASTER "may be understood by some as referring to a place." But LANCASTER may engender the same understanding in applicant's mark, despite being preceded by WINSTON CHURCHILL. In such a situation, it has been found that consumers are likely to believe that "applicant is offering a new line of cigars under its LANCASTER mark." [Or perhaps that registrant is offering a new line under its LANCASTER mark - ed.].

The design element in the cited mark does little to change its commercial impression, which is dominated by the word LANCASTER. In applicant's mark, the words WINSTON CHURCHILL LANCASTER dominate.

The Board therefore concluded that the similarities in connotation and commercial impression outweigh the differences and sound and appearance between the two marks.

Finally, Applicant Churchill asserted that he has enjoyed "some degree of success" with his products, but the Board pointed out that commercial success does not negate a likelihood of confusion, and may even cause reverse confusion.

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

Wednesday, August 20, 2014

TTAB Sustains Section 2(d) Opposition: VS vs. VS for Skin Moisturizers

The Board sustained an opposition to registration of the mark shown below left for various organic hair and skin care products, including skin moisturizers, finding it likely to cause confusion with the registered mark shown below right for various personal care products, including body lotions. Both parties stumbled a bit with their proofs, but the similarity of the marks and the overlap in the goods proved to be an insurmountable obstacles for applicant. Victoria's Secret Stores Brand Management, Inc. v. Yael Mamroud/Cummins, Opposition No. 91201001 (August 7, 2014) [not precedential].

Applicant argued that her products are different from opposer's because they are "made in Canada, vegan, cruelty free, hypoallergenic, fragrance free, free trade" and furthermore are not unisex, whereas opposer's products are for women only. The Board pointed out, however, that no such limitations appear in the opposed application or cited registration. The Board found the goods to be legally identical, in part: applicant's "skin moisturizers" encompass registrant's "body lotions." Of course, the Board then presumed that the legally identical goods travel in the same channels of trade to the same classes of consumers.

Applicant next argued that her goods are more expensive than opposer's and therefore would be purchased with extra care, but again that argument failed because there were no such limitations as to price in the opposed application or cited registration.

Turning to the marks, both contain the letters "V" and "S," and in strikingly similar fonts. However, the Board noted that its must consider the marks in their entireties. Applicant argued that the inclusion of an ampersand in her mark "changes the sound, appearance, connotation, and overall commercial impression to 'vee' and 'ess,'" thus avoiding a likelihood of confusion. But the Board agreed with opposer that the ampersand in applicant's mark "looks like an afterthought."

[G]iven the relatively small size of the ampersand in relation to the letters "V" and "S," it is more likely that prospective consumers encountering Applicant’s stylized mark will overlook the ampersand, and perceive and pronounce the mark as the acronym "VS" as opposed to "V and S."

The Board consequently found that the letters "V" "S" are the dominant feature of applicant’s mark, and so the involved marks "are far more similar than dissimilar in sound, appearance, connotation and commercial impression."

Opposer pointed to the fame of its VICTORIA'S SECRET mark, asserting that consumers would likely see VS as a shortened version thereof, but applicant correctly pointed out that opposer did not plead ownership of any of its VICTORIA'S SECRET trademarks and so the fame of that mark was irrelevant. Applicant, in turn, claimed that the cited mark is weak in view of numerous VS marks used on similar goods, but she failed to provide any supporting evidence.

Because all of the relevant duPont factors were either neutral or favored opposer, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog note:  After reading this decision, I think VS stands for very soporific.

Text Copyright John L. Welch 2014.

Tuesday, August 19, 2014

Pro-Football Seeks Section 1071 Review of TTAB's "REDSKINS" Decision in E.D. Va. District Court

On August 14th, Pro-Football, Inc. filed a complaint in the U.S. District Court for the Eastern District of Virginia, seeking Section 1071(b)(1)  review of the TTAB's "REDSKINS" decision of June 18, 2014 [TTABlogged here]. As you know, a divided Board panel granted a petition for cancellation of six registrations owned by Pro-Football for marks comprising or containing the word REDSKINS, for entertainment services, finding that the marks, at their respective dates of registration, disparaged Native Americans. A pdf of the complaint may be downloaded here.

In its complaint, Pro-Football argues that the TTAB's decision " is replete with errors of fact and law, including its failure to restrict its analysis to the relevant time frame of 1967-1990, when the registrations were first issued." Pro-Football also claims that the decision violates the First and Fifth Amendments of the Constitution, and that laches bars the claims of the petitioners.

In September 2011, the America Invents Act changed the applicable venue for Section 1071(b)(1) actions, when adverse parties reside in a plurality of districts. Previously, the U.S. District Court for the District of Columbia was the proper venue, but the AIA amended that to the Eastern District of Virginia. Of course, the previous round of litigation over the REDSKINS trademark had involved the District of Columbia district court (the Harjo decisions).

Ron Coleman, prominent trademark blogger and attorney for THE SLANTS in its appeal from another TTAB disparagement ruling [TTABlogged here], provides his interesting comments on Pro-Football's complaint and the REDSKINS case in general, here at his Likelihood of Confusion blog.

Read comments and post your comment here.

TTABlog note:  If you were a betting person, where would you put your money?

Text Copyright John L. Welch 2014.

Monday, August 18, 2014

Test Your TTAB Judge-Ability on these Four Section 2(d) Refusals

Okay, you know the drill: I once heard a TTAB judge state 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, your would-be honor, try your skills on these four appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board. [Answers will be found in first comment].

In re Gavin McNeill, Serial No. 85461532 (August 11, 2014) [not precedential]. [Refusal to register the design mark shown below, comprising "a black outline of a baseball hat and the word 'Cool' beneath the hat that resembles a face," for "Caps; Hats; Headwear; Jackets and socks; Sweatshirts; T-shirts; Tank tops; Tops," in view of the registered mark COOL!, in standard character form, for various clothing items, including t-shirts].

In re Hearst Communications, Inc., Serial No. 85704221 (August 11, 2014) [not precedential]. [Refusal of METROPOLITAN HOME for "case goods, namely, chests, night stands, cabinets, dining tables, coffee tables, end tables, desks, bed and headboards; upholstered furniture; all the foregoing not relating to furniture for use in patient rooms and waiting areas of healthcare facilities" [HOME disclaimed], in view of the registered mark METROPOLITAN for "furniture for use in patient rooms and waiting areas of healthcare facilities"].

In re Federacion Regional de Sociedades Cooperativas de la Industria Pesquera, Baja California, F.C.L., Serial No. 85835945 (August 14, 2014) [not precedential]. [Refusal to register the mark REY DEL MAR and Design, shown below, for "Abalones; Ark-shells; Lobsters; Oysters" [The English translation of REY DEL MAR is KING OF THE SEA], in view of the registered mark KING OF THE SEA for seafood].

In re Forshaw, Serial No. 85797042 (August 15, 2014) [not precedential]. [Refusal of CALI FO$HO for "Hats; pants; shirts" in view of the registered mark SOFOSHO for "clothing – namely-shirts, sweatshirts, shorts, T-shirts, jackets"].

Read comments and post your comment here.

TTABlog note:  See any WHYA?s here?

Text Copyright John L. Welch 2014.

Friday, August 15, 2014

TTAB Finds MYUNDIES Registration Void Ab Initio: Mark Not in Use As Of Filing Date

The Board summarily granted a petition for cancellation of a registration for the mark MYUNDIES for various clothing items, finding the registration to be void ab initio because Respondent was not using the mark on any of the goods at the time he filed the application to register. Respondent asserted that he is using the mark and has no intention to abandon it, but that did not cure the initial, fatal error. MeUndies, Inc. v. Drew Massey dba myUndies Inc., Cancellation No. 92055585 (August 13, 2014) [not precedential].

A registration may be found void ab initio under Trademark Act Section 1(a) when the mark in the underlying use-based application was not in use in commerce as of the application filing date.

Respondent Drew Massey admitted that he did not use the registered mark as of the filing date of the underlying application. He stated that he was "pro se and should have filed as ‘intend to use’ versus referring to ‘first known use’ which was done by a prior separate company."

The founder and owner of a company called ", Inc," which existed from 1999 to 2001, had used the mark MYUNDIES in connection with online retail services, but Respondent was not involved in
his company. Respondent contacted him regarding Respondent’s possible use of the mark, but the mark MYUNDIES had been abandoned for nearly eight years.

In response to Petitioner's summary judgment motion,Respondent merely argued that he has been and is using the mark MYUNDIES and has no intention to abandon the mark, and did not commit fraud when he filed the underlying application. The Board was unmoved.

Whether Respondent is currently using the registered mark or whether he has any current intent to resume use is not the issue. *** Similarly, it is irrelevant that Respondent represented himself and possibly misunderstood the law when he filed his use-based application. A use-based application is void if the mark is not in use on the identified goods at the time of filing, regardless of whether the applicant understood the statutory requirement for use or intended to mislead the USPTO.

The Board therefore granted Petitioner's summary judgment motion and granted its petition for cancellation.

Read comments and post your comment here.

TTABlog note: Petitioner did not claim fraud. Too bad. We are approaching the fifth anniversary of the post-Bose "no fraud" era, and this case might have opened the door.

Text Copyright John L. Welch 2014.

Wednesday, August 13, 2014

Finding Chickpeas Related to Restaurants, TTAB Sustains PITA PAL Opposition

The Board sustained a Section 2(d) opposition to registration of the mark PITA PAL - THE ART OF HEALTHY EATING & Design for "falafel; processed chickpeas; processed garbanzo beans," finding the mark likely to cause confusion with the registered mark THE ART OF EATING HEALTHY for "restaurants." Although opposer's survey evidence failed to pass mustard, the Board found the goods and services related, the marks similar, and the channels of trade overlapping. Pita Jungle – Tempe, Inc. v. Pita Pal Foods, LP, Opposition No. 91204422 (July 24, 2014) [not precedential].

The Board observed the there is no per se rule holding that restaurant services and food items are related for purposes of a likelihood of confusion determination. One claiming likelihood of confusion must show “something more.” Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982).

Opposer’s restaurant’s offers food “based upon a Mediterranean diet and … includes substantial amounts of hummus, falafel, chick peas and garbanzo beans as well as a lot of grains, olive oil, vegetables, fish, chicken and pita pocket bread.” The Board found that opposer had satisfied the “something more” requirement in two ways. First, “pita” describes a type of food often eaten with applicant’s goods and a type of food served at applicant’s restaurants. Thus there is an “undeniable connection” between applicant’s goods and opposer’s services. Second, Opposer’s restaurants offer takeout and catering services that feature the same food items for which Applicant seeks registration: “Applicant’s processed chickpeas and garbanzo beans (essentially hummus) and falafel are related to Opposer’s restaurant services which offer all of those foods, as well as the pita identified in Applicant’s mark, for takeout.”

The normal channels of trade for applicant’s goods and Opposer’s restaurants “are likely to overlap, as both parties would be expected to market their respective goods and services through the same advertising channels to consumers interested in hummus, falafel and related products.”

As to the marks, applicant’s mark is comprised of a slight variation of Opposer’s mark (THE ART OF HEALTHY EATING rather than THE ART OF EATING HEALTHY) combined with the term PITA PAL, in which PITA is disclaimed. In Applicant’s mark, the slogan THE ART OF HEALTHY EATING makes a separate commercial impression from the rest of the mark. Moreover, the term PITA PAL is at best suggestive of applicant’s goods.

Opposer offered the results of a survey involving the interviews of 26 or 27 customers in each of its 17 PITA JUNGLE locations, for a total of 446 interviews. Opposer’s expert concluded that applicant’s mark caused 30% of survey respondents to be confused by applicant’s mark.

The Board, however, did not find the survey to be reliable. The survey did not include any control, i.e., the survey expert did not use a “test cell” and a “control cell.” The universe of interviewees was skewed because it included only customers who were leaving opposer’s restaurant, and they were questioned immediately after being exposed to Opposer’s marks. Moreover, the extent of the expert’s experience with trademark surveys was unclear, and his qualifications were not impressive. And the key question in the survey was leading.

Giving the benefit of any doubt to the registrant, the Board found confusion likely, and it sustained the opposition.

Read comments and post your comment here.

TTABlog note:  So what do you think?

Text Copyright John L. Welch 2014.