Wednesday, July 23, 2014

Test Your TTAB Judge-Ability on This 2(d) Refusal of DASH DOG WASH & Design

The PTO refused registration of the mark DASH DOG WASH and Design, shown first below, for various pet-related services, including dog washing and grooming [DOGWASH disclaimed], deeming the mark likely to cause confusion with the registered mark SPLASH AND DASH FOR DOGS & Design, second below, for dog grooming services [FOR DOGS disclaimed]. Applicant appealed from the refusal, claiming that the marks are too different. Was it barking up the wrong tree? In re The Franchise Group Pty Ltd., Serial No. 79122789 (July 2, 2014) [not precedential].

The Board found the involved services to be, in part, legally identical, and it therefore presumed that the those services are offered in the same channels of trade to the same classes of consumers.

The Examining Attorney maintained that the marks are similar because they each contain the word 'DASH' along with a 'dog' formative term, and further because each includes a water drop design. Applicant argued that the marks contain different words and different designs, thereby creating different commercial impressions. Moreover, according to applicant, "the matter common to the two marks is weak, and should be accorded a narrow scope of protection." The Board noted that the word "dog" is generic for the involved services and the word "dash" suggests that the dog grooming services are provided quickly. [To me, "dash" suggests "daschund" - ed.].

Applicant pointed to third-party website evidence showing use of the word "dash" in several trademarks for dog grooming services: K-9 SPLASH & DASH, DOGGY DASH, DOGGIE BATH & DASH, BATH & DASH, and BATH N DOGGIE DASH LLC. The Board found this to be persuasive evidence, under the 6th du Pont factor, that "dash" is a weak term in the dog-washing field. And so the Board concluded that the scope of protection to be accorded the common portion of the marks is narrow.

Looking at the marks in their entireties, the Board found the design portions to be very different overall. Moreover, the literal portions - which are the portions of the marks most likely to be remembered - have very different commercial impressions: "the word DASH versus the phrase SPLASH AND DASH which consumers would not likely abbreviate to just the word DASH." Given the weakness of the word "dash," consumers may be expected to look to other portions of the marks to distinguish source.

The Board concluded that the differences in the marks create different commercial impressions sufficient to distinguish the marks, and this first du Pont factor was pivotal in the reversal of the refusal.


Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

Tuesday, July 22, 2014

Fame of "POST-IT" Mark Yields 2(d) Opposition Victory over "FLAG-IT!"

Opposer 3M stuck it to Applicant Professional Gallery, Inc. in this opposition to registration of the mark FLAG-IT! for "adhesive-backed labels; adhesive-backed plastic film designating signatory action." The Board found the applied-for mark likely to cause confusion with the registered mark POST-IT for various stationery products, including note pads containing adhesive on one side of the sheets for attachment to surfaces. The fame of the POST-IT mark was the dominant factor, with the Board rejecting applicant's principal argument that the marks are not confusingly similar. 3M Company v. Professional Gallery, Inc., Opposition No. 91173411 (July 17, 2014) [not precedential].

Fame: 3M began using the mark POST-IT for sticky note pads in 1980, expanding the product line in 1987-88 to include adhesive flags. Annual sales of these products have been substantial and 3M is the market leader in both product areas. It spends millions of dollars per year in promoting these products and the brand has often been mentioned in unsolicited media coverage. The Board had no doubt that POST-IT is a famous mark for sticky notes, and it concluded that because sticky flags are so similar, that fame "spills over onto POST-IT for flags." Of course, the fame factor carried heavy weight in the du Pont analysis.

The Marks: Because the goods of the parties were found to be legally identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. Furthermore, the Board must presume that the goods travel in the same, normal channels of trade to the same classes of consumers.

Applicant adhered to the argument that the differences in the marks make confusion unlikely, particularly in view of the weakness of the "IT" suffix. It (applicant) pointed to more than 100 third-party applications and more than 1,200 registrations for marks containing the element "IT." The Board found most of this evidence "not particularly probative" because applicant did not prove that the marks are in use or that the public is familiar with them. Moreover, few of those registrations involved goods similar to the products involved here, and even when the products were similar the Board was unable to conclude that "it" has any significance with regard to the involved goods "other than as an indefinite pronoun that, when combined with a verb, indicates that 'it' is the recipient of the action."

Third-party website pages likewise failed to convince the Board that consumers will distinguish the mark FLAG-IT! from POST-IT when used on identical adhesive flags. Many of the goods were not similar to the goods involved here, and some of the marks themselves were not similar to applicant's and opposer's marks.

Although Applicant has submitted hundreds of webpages from various websites, in point of fact there are only a very few webpages that can be regarded as showing the use of similar marks on even arguably similar goods. Further, there is no evidence of third-party marks ending in IT for sticky notes or flags.

The Board also noted that 3M has had some success in policing its mark vis-a-vis a number of third-party marks.

And so the Board concluded that applicant "has not demonstrated that the 6th du Pont factor [the strength of the mark] should weigh in its favor." [Doesn't opposer have the burden of proof here? - ed.].

Comparing the marks in their entireties, the Board found that consumers would consider POST-IT and FLAG-IT! to be similar in appearance and pronunciation. "The beginning elements, POST and FLAG, rather than being seen as identifying separate sources for the goods, will be understood as merely identifying different activities that can be done with the goods." Moreover, 3M has frequently used the word "flag" in advertising its POST-IT products, which "reinforces the connection of its mark with flag."

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

Read comments and post your comment here.

TTABlog note:  I wonder how the FLAG-IT! mark got past the examining attorney? I note that the Board pooh-poohed applicant's computer search results because the results depend on the "logarithm by which the results are depicted." (p.21). Shouldn't that be "algorithm"?

Text Copyright John L. Welch 2014.

Monday, July 21, 2014

ABA IP Section: TTAB Hot Topics, Boston, August 7th

Yours truly will be a panelist at the "TTAB Hot Topics" session of the ABA Annual Meeting in Boston, on August 7th from 8:30 to 10:00 AM at the Boston Marriott Copley Place Hotel. Register here. The session is hosted by the ABA Section of Intellectual Property Law. A brochure detailing the entire IP program may be downloaded here.

This session will feature a lively discussion, among experienced TTAB practitioners, on a variety of recent hot topics before the Board, including disparagement and the Washington Redskins case, procedural tips, functionality, accelerated case review, fraud after Bose, dilution, appeals to the Court of Appeals for the Federal Circuit and the District Courts, and more.

Erik M. Pelton, of Erik M. Pelton & Associates PLLC, Falls Church, VA, will serve as panel moderator.

Panelists are:
  • Phillip Barengolts, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, LLP, Chicago, IL 
  • Rebeccah Gan, Young & Thompson, Alexandria, VA
  • Elizabeth King, Conley Rose, Houston, TX
  • John L. Welch, Lando & Anastasi LLP, Cambridge, MA

Test Your TTAB Judge-Ability on These Three Section 2(d) Refusals

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 three appeals that were decided late last week - keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board.

In re Jorge Alvarez, Serial No. 85529354 (July 18, 2014) [not precedential]. [Refusal to register PAYITAWAY for consumer lending services, in view of the registered marks
PAYAWAY and PAYAWAY PRIME [PRIME disclaimed] for credit and loan services].

In re Green Supreme, Inc., Serial No. 85502207 (July 18, 2014) [not precedential]. [Refusal to register BARLEY POWER GREEN SUPREME and Design shown below, for "dietary supplements also containing organically grown barley plants" [BARLEY disclaimed] in view of the registered mark GREEN SUPREME for "vitamin and mineral supplements, dietary supplements with herbs and natural ingredients"].

In re In re MAC Mode GmbH & Co. KGaA, Serial Nos. 79099041 and 79101237 (July 17, 2014) [not precedential].[Refusal to register the DREAM JEANS in the two design forms shown below left, for "clothing, namely, pants, jeans," in light of the registered marks DREAM JEANNE’S in standard character and design form, shown below right, for "women’s apparel, namely, jackets, jeans, skirts and shorts"].

Read comments and post your comment here.

TTABlog note: Well, what do you think? See any WYHA's here?

Text Copyright John L. Welch 2014.

Friday, July 18, 2014

Test Your TTAB Judge-Ability On These Three Section 2(d) Refusals of "EK" for Hats

New Era Cap Co. applied to register the mark EK in standard character form for "headwear, hats, caps, knit hats and baseball caps," but the PTO refused registration under Section 2(d) in view of three registered marks, depicted below. The first cited mark, owned by the Sigma Kappa Sorority, covers clothing items, including hats, the second is for footwear, and the third for t-shirts, knit tops, shirts and jackets. How do you think this came out? In re New Era Cap Co., Inc., Serial No. 85515684 (July 7, 2014) [not precedential].

As to the first registration, Examining Attorney David Yontef contended that the cited mark is a stylized version of the letters "EK" and would be so perceived and pronounced by customers. However, the record evidence showed that the mark consists of the Greek letters Sigma and Kappa, and that Sigma Kappa is a college sorority in the USA. [Note: the registrations is limited to clothing sold in connection with the sorority - ed.]. The registration stated that the mark consists of the two Greek letters. [But the consuming public doesn't know what statements appear in the registration - ed.]. The Board found the marks so dissimilar that confusion was unlikely, and it reversed that refusal.

As to the other two cited marks, applicant pointed to its ownership of two registrations for the mark EK in stylized form, which co-exist with the cited marks. The Board, however, noted that the instant application is for the letters EK in standard character form, and "if registered, Applicant would have the right to use the mark in any font, style, size, or color, including versions identical to either of the registered marks." The Board therefore agreed with the examining attorney that applicant's mark is virtually identical ... in appearance, sound, connotation and commercial impression, to the registered marks."

As to the goods it the second and third registrations, applicant lamely asserted that they are unrelated to its goods because they would, respectively, be found in different sections of a store or website. The Board, however, pointed out that goods may be related for Section 2(d) purposes even if not identical, and regardless of whether they are displayed together or far apart in the same store. The examining attorney submitted third-party use-based registrations that cover shirts, hats, and shoes under a single mark. Internet evidence also showed that third parties offer the same goods as applicant and these registrants under the same brand name.

And so the Board affirmed the second and third refusals.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.

Thursday, July 17, 2014

WYHA? CAFC Affirms TTAB's Dismissal of STONSHIELD v. ARMORSTONE Opposition

The CAFC affirmed the Board's ruling in StonCor Group, Inc. v. Specialty Coatings, Inc. (Opposition No. 91187787), dismissing on opposition to registration of the mark ARMORSTONE for, inter alia, epoxy coating for use on concrete industrial floors. The Board found the applied-for mark not likely to cause confusion with the registered mark STONSHIELD [as well as the registered marks STONCLAD and STONHARD] for goods that include epoxy hardeners; and it also found the applied-for mark not merely descriptive of applicant's epoxy coatings. Would you have appealed? Stoncor Group, Inc. v. Specialty Coatings, Inc., Appeal No. 2013-1448 (Fed. Cir. July 16, 2014) [precedential].

On appeal, StonCor raised only two issues: likelihood of confusion with its STONESHIELD mark, and mere descriptiveness.

As to the Section 2(d) issue, the Board found that the first du Pont factor, the similarity or dissimilarity of the marks, weighed against Stoncor. The CAFC ruled, however, that the Board erred in considering the pronunciation of the "STON-" prefix. The Board concluded that "STON-" would be pronounced by prospective consumers "according to the spelling" of 'STON,' with a short 'o' sound." According to the Board, StonCor had not provided any evidence to support the argument that "STON" would be pronounced with a long "o" sound - i.e., like "stone."

The CAFC ruled that the Board’s pronunciation analysis was not supported by substantial evidence. The Board improperly failed to credit StonCor’s evidence that consumers would pronounce “STON” as “stone.”

There is no correct pronunciation of a trademark that is not a recognized word. See In re Belgrade Shoe Co., 411 F.2d 1352, 1353 (CCPA 1969). “STON” is not a word in English. Neither party argues that “STON” is a word in any other language. Where a trademark is not a recognized word and the weight of the evidence suggests that potential consumers would pronounce the mark in a particular way, it is error for the Board to ignore this evidence entirely and supply its own pronunciation.

The Board's error, however, was harmless, because its other findings under the first du Pont factor were each supported by substantial evidence and together provided substantial evidence in support for the Board's weighing of that factor in favor of applicant.

The CAFC gave short shrift to the mere descriptiveness issue. StoneCor submitted definitions of "armor" and "shield," but no evidence that the combination conveyed "an immediate idea of the ingredients, qualities or characteristics of" the products.

And so the CAFC affirmed the Board's decision.

Read comments and post your comment here.

TTABlog note:  Well, WYHA?

Text Copyright John L. Welch 2014.

Wednesday, July 16, 2014

Precedential No. 32: TTAB Finds CLOUDTV Generic for ... Guess What?

The Board affirmed a refusal to register the purported mark CLOUDTV for software and software-based services relating to the provision of video-on-demand, finding the term to be generic. The Board also affirmed an alternative refusal on the ground of mere descriptiveness under Section 2(e)(1), concluding that applicant's proof of acquired distinctiveness was insufficient for this at least highly descriptive term. In re ActiveVideo Network, Inc., Serial No. 77967935 (July 9, 2014) [precedential].

Applicant did not contest the examining attorney's contention that the term TV is generic for its goods and services, all of which involve streaming images to an electronic device having a screen. As to the word "cloud," the definitions submitted by the examining attorney demonstrated that the word "cloud," in the context of applicant's goods and services, will "immediately be seen as generic for packet-switched computer networks that link distant servers to one's TV, computer or other smart devices having screens." Applicant's own press releases and promotional materials repeatedly use the word "cloud" in reference to its products.

Applicant pointed to a number of third-party registrations for marks containing the word "cloud," but the examining attorney pointed out that those registrations presented "different circumstances on their face." In some the word "cloud" was disclaimed, while in others the marks were slogans (where disclaimers are not required). Moreover, the Board is not bound by decisions of trademark examining attorneys in other cases on other records. And, the Board noted, the rapidly changing nomenclature in this field requires that the USPTO have the freedom to consider meanings anew when appropriate.

Articles from trade publications discuss cloud TV's threat to traditional cable and satellite television, and the record demonstrated that the largest competitors in the entertainment business are involved in "cloud TV wars" as each adopts its own approach, based on applicant's proprietary technology.

Turning to the issue of genericness, applicant feebly argued that because it coined the term CLOUDTV, the term cannot be generic. The Board pointed out, however, that the first user is not entitled to register a generic term as a mark.

The Board found the genus of applicant's goods and services to be captured by various phrases, including "video on-demand," "interactive television," "streaming video online," and "cloud-based television programming services to Internet-connected TVs." The relevant consuming public consists of a very broad group of persons, from ordinary consumers to executives of multi-system operators.

The Board agreed with the examining attorney that the combination of the generic words CLOUD and TV is itself generic, since no new meaning beyond the individual meanings of the components is created by combining them. The compound term merely refers to a software platform for broadcasting multi-media content via video-on-demand.

In short, the examining attorney established by clear evidence that the wording "Cloud TV" is a compound term that names the "central focus" or "key aspect" of applicant's goods and services, and therefore CLOUDTV is a generic term.

Implicit in the Board's holding on genericness was a finding that CLOUDTV is at least merely descriptive of applicant's goods and services. The Board rejected applicant's contention that CLOUDTV is an imaginative play on words, instead finding that the term is highly descriptive.

As to applicant's claim of acquired distinctiveness, its evidence consisted of conclusory declarations from its Vice President of Marketing that recounted applicant's commercial success but failed to establish that the public views the term CLOUDTV as a source indicator. Applicant did not provide contextual information about its sales volume, such as market share, polling data, etc. The Board would "need to see a great deal more evidence (especially in the form of direct evidence from the relevant classes of purchasers that they view the term 'CloudTV' as a source-identifier, or other circumstantial evidence) than what Applicant has submitted."

And so the Board affirmed the genericness refusal, as well as the alternative mere descriptiveness refusal under Section 2(e)(1).

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

Tuesday, July 15, 2014

Precedential No. 31: Fame of HARRY WINSTON Mark Crushes Son's BRUCE WINSTON Application for Jewelry

In a 71-page opinion, the Board sustained a Section 2(d) opposition to registration of the mark BRUCE WINSTON for gemstones and fine jewelry, finding the mark likely to cause confusion with the mark HARRY WINSTON and the registered mark WINSTON for jewelry. The strength of the WINSTON mark and the fame of the HARRY WINSTON mark, coupled with the overlap in goods, carried opposer to this gem of a victory. This summary will not discuss every facet of the decision, but rather will reflect only the high points. Harry Winston, Inc. and Harry Winston S.A. v. Bruce Winston Gem Corp., Opposition No. 91153147 (July 9, 2014) [precedential].

Marilyn Monroe in "Gentlemen Prefer Blondes"

Mr. Harry Winston, the founder of opposer Harry Winston, Inc., was a master at promotion of both himself and his jewelry business. In 1947, Cosmopolitan magazine called him the "King of Diamonds," in 1975 he was dubbed the "Wizard of Rocks," and in 1978, "Ace of Diamonds." He purchased the Hope Diamond and donated it to the Smithsonian Institution, an act that has generated enormous publicity. He loaned his jewelry to many celebrities for public appearances, including Lady Diana and the wife of the Shah of Iran. Marilyn Monroe sang the song, "Diamonds Are a Girl's Best Friend" in the 1953 movie "Gentlemen Prefer Blondes," a song that included the lyric, "Talk to me, Harry Winston, tell me all about it," a line that Winston continued to use in his advertising.

Opposers submitted voluminous examples of advertising and promotional materials. Its sales figures and advertising expenditures were "extremely substantial." In short, through extensive public relations efforts, the mark HARRY WINSTON has become famous in the field of jewelry, for purposes of the Board's likelihood-of-confusion analysis.

Although the evidence did not focus on the mark WINSTON by itself, the record demonstrated that the press often uses WINSTON as an abbreviated reference to the HARRY WINSTON brand, leading the Board to conclude that WINSTON is a very well-known source indicator in the jewelry field.

Applicant's chairman, Bruce Winston, is the son of Harry Winston. That relationship, the Board found, "interacts with the fame of the mark HARRY WINSTON in a way that is significant in this case." The press has incessantly promoted the connection between the two, and the evidence demonstrated that the public "may draw conclusions, not always entirely accurate, regarding the association between the members of the Winston family on one hand and Harry Winston and opposers' business on the other." The Board considered this evidence, under the 13th du Pont factor, as demonstrating "a strong proclivity among the press and other third parties to spontaneously perceive and promote an association between applicant's founder and opposers' founder and a connection between their two businesses."

The Board perceptively noted that BRUCE WINSTON is not identical to either WINSTON or HARRY WINSTON, but each mark comprises or consists of the word WINSTON. Comparing the applied-for mark to the registered mark WINSTON, the Board observed that the addition of a given name to a distinctive surname "has limited distinctive capability." The mark BRUCE WINSTON might well be seen as a "more specific reference to a person or company that is otherwise identified by the designation WINSTON." [E.g., JOSE GASPAR GOLD found confusingly similar to GASPAR'S ALE]. In view of the strength of opposers' WINSTON mark, the Board found that this first du Pont factor weighted heavily in favor of opposers.

As to the marks BRUCE WINSTON and HARRY WINSTON, the Board pointed out once again that when identical goods are involved, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. Moreover, a famous mark like HARRY WINSTON "casts a long shadow which competitors must avoid." The Board consequently found that the two marks are sufficiently similar that this factor weighs in favor of opposers.

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

Read comments and post your comment here.

TTABlog note:  Hat tip to FOBs Joe Dreitler and Mary True, counsel for opposer.

Text Copyright John L. Welch 2014.

Monday, July 14, 2014

Precedential No. 30: YOUR CLOUD Merely Descriptive of Cloud Computing-Related Services, Says TTAB

Despite the existence of numerous third-party registrations for two-word "YOUR" marks without disclaimer of the word YOUR, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of YOUR CLOUD for cloud-computing related services. The immediacy with which YOUR CLOUD describes applicant Datapipe's personalized services distinguished the applied-for mark from the other registered marks. In re Datapipe, Inc., Serial No. 85173828 (July 7, 2014) [precedential].

Examining Attorney Sung Hyun In maintained that "cloud" is the common descriptive name for a type of computer network in which data or software is stored and accessed remotely, rather than on one's own computer. Third-party website evidence demonstrated that Applicant is a provider of data center infrastructure and managed services in the fields of public and private cloud computing. The Board found that applicant's cloud storage services "provide customers with a viable alternative to capital expenditures for procuring new hardware - namely, providing, instead, infinitely scalable capacity at steadily decreasing prices." In short, the word "cloud" is descriptive of applicant's services.

As to the word "your," applicant pointed to a provision in a "nonpublic, internal examination guide that apparently directs Trademark Examining Attorneys to treat the word MY differently from the word YOUR on the issue of mere descriptiveness." According to applicant, this "'examination guide' produce[d] an unanticipated rejection" of its YOUR CLOUD mark. The Board was unmoved. The proffered document had "none of the hallmarks" of a genuine Examination Guide, and in any case, "the Board is not bound by Examination Guides, or the TMEP, etc." [Likewise, as I frequently say, the TBMP is not the law! - ed.].

The Examining Attorney relied on a dictionary entry indicating that "your" is "almost an equivalent to the definite article the <your typical teenager>." Applicant submitted several third party registrations for marks containing the word YOUR without disclaimer, including YOUR CHURCH (church management guidebooks), YOUR TUBE (condoms), YOUR CHEF (seasoning mixes), and YOUR NUTS! (pecan nuts). The Board, however, observed once again that it is not bound by by decisions of Examining Attorneys in other cases, nor is it privy to the evidence and arguments made in those cases. Moreover, most of those marks lacked the "stark immediacy" with which the word cloud conveys information about applicant's services.

Datapipe particularly relied on a prior Board decision reversing a mere descriptiveness refusal of YourDVD for DVD players, but since that decision was not precedential, the Board declined to discuss it in detail. It merely noted that there is a fine line between suggestiveness and mere descriptiveness, and in that case the Board panel apparently had a doubt about where to place the mark on the continuum of distinctiveness, and so it gave that applicant the benefit of the doubt (as it must). Here the Board had no such doubt.

Finally, the Board distinguished the YOUR CLOUD mark from several registered slogan marks - including two owned by applicant: THIS IS YOUR CLOUD and YOUR CLOUD MANAGED - because slogans are treated differently from two-word descriptors. And various third-party registered marks in which the second word was disclaimed, but not the first word YOUR, did not have the "immediate descriptiveness that is, by contrast, apparent in the content of Applicant's proposed mark, given the personalization of services that Applicant provides."

Applicant’s own website uses "you" and "your" four times in a single sentence. Additionally, the involved term points specifically to "your" (the customer’s) customized, unique, secured, backed-up, encrypted piece of the "cloud." When enterprises need cloud computing platforms and infrastructure, this personalized formulation is quite believable. By contrast, retailers of security products are unlikely to feel the same ownership of a brick-and-mortar warehouse, for example, when their wholesale distributor adopts as a service mark, YOUR WAREHOUSE.

The Board therefore found that YOUR CLOUD is merely descriptive of applicant's services, and it affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog note:  So what are YOUR THOUGHTS?

Text Copyright John L. Welch 2014.

Friday, July 11, 2014

Precedential No. 29: After Partnership Breakup, TTAB Declares FAIRWAY FOX Application Void Ab Initio

In this ownership dispute between former business partners over the mark FAIRWAY FOX for golf clothing, the parties invoked the Board's Accelerated Case Resolution (ACR) procedure. Nine months later, they had their decision. Opposer Conolty claimed that she was the prior user and owner of the mark. Applicant Conolty O'Connor LLC asserted that Ms. Conolty lacked standing and was barred from opposing the application by "unclean hands" as a result of "acting in bad faith," and by the doctrines of waiver and estoppel. The Board sided with opposer, deeming the opposed application void ab initio. Kristin Marie Conolty d/b/a Fairway Fox Golf v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302(TTAB 2014) [precedential].

In mid-2008, Kristin Marie Conolty and Kathryn O’Connor began preparations to offer a line of upscale, fashionable golf clothing. Conolty designed the clothing and worked with vendors, while O'Connor assisted with or consulted in the design efforts. O'Connor provided most or all of the funds for the business, and had some responsibility for the business side of the endeavor, but Conolty had input into that side of the business as well. Some documents named the two as "founders" or "co-owners" of the business, and vendors and others viewed both as being associated with the Fairway Fox business.

In 2011, Applicant Conolty O'Connor LLC was formed, with O'Connor as the sole shareholder. However, there was no evidence that Conolty agreed that O’Connor should or would be applicant’s sole shareholder. It was not clear from the record whether Conolty was involved in applicant’s formation, other than proposing names for the entity and titles for herself and O’Connor, nor was it clear whether Conolty transferred, or intended to transfer, any part of the business to applicant.

After the LLC was formed, the two individuals continued to work together, even regarding the filing of the application here opposed. In January 2012 they both participated in the PGA Merchandise Show, where the first FAIRWAY FOX branded goods were sold. In May 2012, the two stopped working together. O'Connor apparently offered Conolty a 20% share of the business, but Conolty rejected that proposal. O'Connor suggested that they "continue to work on the day-to-day deliveries of the product so as not to damage the brand we have developed."

The parties then went on their separate ways, each selling clothing under the FAIRWAY FOX mark. The mark was never assigned, transferred, or licensed, and there were no documents addressing the disposition of the assets upon dissolution of their partnership or joint venture.

The decision: There was no question that opposer had standing, since she clearly had a real interest in this proceeding beyond that of a mere intermeddler, and a reasonable basis for her belief of damage. Although opposer pleaded only priority and likelihood of confusion, the Board found that the issue of ownership, which was the real crux of the case, was tried by the consent of the parties.

The Board concluded that the opposed application was void ab initio because applicant was not the sole owner of the mark. Prior to the first use of the mark in January 2012, Conolty and O’Connor were "by any practical measure, partners, who jointly controlled the quality of FAIRWAY FOX products and who were both, together, perceived as the source of FAIRWAY FOX products." Applicant is controlled by O'Connor, but she had only a joint interest in the mark with Conolty.

If the case is analyzed as a priority dispute, the result is "effectively the same." Any activities of the individuals prior to their break-up inured to the benefit of the jointly-owned business, not to either individual.

As to the asserted defenses, applicant did not pursue the bad faith/unclean hands defense. The claims of waiver and estoppel were not supported by the evidence, since any actions of Conolty vis-a-vis use of the mark or filing the application to register were undertaken in the context of the partnership, not with the intention that O'Connor should enjoy sole ownership of the mark and any registration.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog note:  Somehow I sense a lawsuit somewhere.

Text Copyright John L. Welch 2014.

Thursday, July 10, 2014

Recommended Reading: "Who Owns Blue? An Examination Of The Functionality Doctrine in University Sports Colors"

Here's a fine article by Michelle Gallagher on the protectability of university sports colors. Ms. Gallagher first provides a review of the law of color trademarks, reminding us of the parameters of the aesthetic functionality doctrine in that context (discussing the Second Circuit's Louboutin red sole decision and the TTAB's FTD black floral wrapping case). She then reviews several recent litigation battles over school colors (Louisiana, Texas Tech, Alabama). After that refresher course, Ms. Gallagher turns a critical eye to the "unduly broad" protection afforded Boise State University by its registration of the color blue for entertainment services (i.e., its football field). Gallagher, Who Owns Blue? An Examination Of The Functionality Doctrine in University Sports Colors, 104 Trademark Reporter 765 (May-June 2014).

Ms. Gallagher raises many interesting questions. For example, as to Boise State's policing and licensing of its mark to several colleges and high schools, what does quality control mean in that context? As to functionality, is the color blue functional in a utilitarian sense because a blue field provides certain "telegenic benefits" - i.e., it looks better on tv? Is color depletion a problem here, when so few colors are reasonably available? Is there a competitive need to use the color blue?

The author suggests that Boise State's rights in the color blue should be cut back, just as the Section Circuit cut back Louboutin's rights in (and registration of) the color red. Maybe the registration should be limited to an all blue field (no contrasting color in the end zones), or limited to a blue field with the Boise State insignia in the middle? [I note that Section 18 may be available as an avenue to restrict the Boise State registration to a particular shade of blue, or to add other restrictions like those suggested.]

In sum, a job well done by Michelle Gallagher, an LLM Candidate at Suffolk University Law School in Boston.

Read comments and post your comment here.

TTABlog notes:  I thank The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2014 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 104 TMR 765 (2014).

FWIW: for this blog I adopted the orange-and-blue school colors of my undergraduate alma mater, the University of Illinois. When George Halas, also an Illinois alum, founded the Chicago Bears, he chose the Illinois colors. It worked for him.

Text Copyright John L. Welch 2014.