Thursday, August 24, 2017

Precedential No. 24: Yellow Cheerios Box Lacks Acquired Distinctiveness, Fails to Function as a Trademark

Affirming a refusal to register the color yellow appearing on packaging for "toroidal-shaped, oat-based breakfast cereal," the TTAB found that the alleged mark lacks acquired distinctiveness and therefore fails to function as a trademark. Although Applicant General Mills submitted voluminous evidence to support its claim of acquired distinctiveness, the Board was convinced by proof of third-party use of yellow packaging for cereal products, that consumers "do not perceive the color yellow as having source significance for the goods." In re General Mills IP Holdings II, LLC, Serial No. 86757390 (August 22, 2017) [precedential] (Opinon by Judge Anthony R. Masiello).

Of course, a single color can never be inherently distinctive as a source indicator. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Prods. Co., 34 USPQ2d 1161, 1162-3 (1995). Moreover, "[b[y their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character." In re Owens-Corning Fiberglas Corp., 227 USPQ 417, 424 (Fed. Cir. 1985)

In light of the evidence of staggering promotional and sales revenues, the Board recognized that General Mills "has worked assiduously to create an association between the color yellow and its 'regular' CHEERIOS brand cereal." The Board observed, however, that "no matter how hard a company attempts to make an inherently nondistinctive word or symbol serve as a unique source identifier, it is proof of results—that consumers so perceive the purported mark—that is the touchstone of our inquiry into acquired distinctiveness. E.g., Plastilite Corp. v. Kassnar Imps., 508 F.2d 824, 184 USPQ 348, 350 (CCPA 1975)."

Examining Attorney Tasneem Hussain based the refusal to register primarily on a lack of substantially exclusive use of the color yellow by General Mills. The evidence showed that General Mills "is not alone in offering oat-based cereal, or even toroidal-shaped, oat-based cereal, in a yellow package." Moreover, the presence in the market of yellow-packaged cereals from various sources – even cereals that are not made of oats or are not toroidal in shape – further undermined any possible source significance for the color yellow.

When customers see a color appearing on products from many different sources, they are less likely to expect the color to point to a single source of goods. Instead, customers are likely to perceive the color on packages as a device designed to make the packages attractive and eye-catching. This is especially true of a primary color, like yellow, which is used by many merchants and is not 'a color that in context seems unusual.' Qualitex, 34 USPQ2d at 1162-63.

General Mills pointed to its survey evidence purporting to show that 48.3% of respondents associated the yellow box with the CHEERIOS brand. The Board, however, saw a hole in the survey, namely that the wording of the survey questions suggested that the respondents could name only one brand: after being shown a drawing of the applied-for mark, the respondents were asked, "If you think you know, what brand of cereal comes in this box?"

Because General Mills failed to demonstrate that the yellow background has acquired distinctiveness under Section 2(f), the Board found that the applied-for mark fails to function as a trademark for applicant's cereal.

Read comments and post your comment here.

TTABlog comment: What do you think? Did General Mills recognize the problem of different types of cereals using a yellow background, which caused it to identify goods as toroidal and oat-based?

Text Copyright John L. Welch 2017.

Wednesday, August 23, 2017

Divided TTAB Panel Rejects Website Specimen of Use for Fabric

A divided Board panel affirmed a refusal to register the mark CASALANA for "knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories," on the ground that applicant failed to submit a proper specimen of use. Applicant contended that its website qualified as a display associated with the goods, but the panel majority disagreed. In re Siny Corp., Serial No. 86754400 (August 17, 2017) [not precedential] (Majority opinion by Judge Anthony R. Masiello).

Applicant's webpage depicts the CASALANA mark adjacent one of eleven choices of fabrics, and it includes an explanation of the nature of applicant's goods. It also provides an informational link and, near the bottom of the webpage under the heading "For sales information" a phone number and an email address. The Board assumed that the phone number would connect a prospective customer with sales personnel.

The panel majority framed the question thusly: "whether the purported point of sale display provides the potential purchaser with the information normally associated with ordering products of that kind." In re Anpath Group, Inc. 95 USPQ2d 1377, 1381  (TTAB 2010).

The Board cited In re U.S. Tsubaki, Inc., 109 USPQ2d 2002 (TTAB 2014), for the proposition that "a simple invitation to call applicant to get information - even to get quotes for placing orders - does not provide a means for ordering the product." Only after obtaining such information could the purchaser place an order.

Here, the panel majority found it implausible that the business representative of a manufacturer would be prepared to place an order on the basis of the information on the specimen of use. "It would be impossible for a customer to make an informed decision to choose the CASALAN brand from among the other goods offered on the webpage." Moreover, there was no pricing information, or information regarding weight and thickness, or the minimum order size, or how a purchaser would pay, or how the goods would be shipped. The majority found it unlikely that customers would be prepared to buy the goods without inspecting a sample. In short, customers would need a great deal more information in order to make a purchasing decision.

The majority distinguished In re Valenite, Inc., 84 USPQ2d 1346 (TTAB 2007), where substantial technical information was provided at the website and where a telephone call was the final step in the purchasing process. There the applicant provided a verified statement that orders were indeed placed over the phone. [The majority noted that an applicant would be "well advised" to provide the Office with additional information on how purchases are actually made through a website].

Judge Angel Lykos dissented, urging that a more flexible approach be taken in light of the "increasing prevalence in the marketplace of direct-to-consumer e-commerce sites." In her view, sufficient information was provided, as well as a mechanism for placing an order. In this situation, one would expect prices to be negotiable depending on the quantity and quality of the fabric.

Read comments and post your comment here.

TTABlog comment: I agree with the dissent. Let's get real here.

Text Copyright John L. Welch 2017.

Tuesday, August 22, 2017

Precedential No. 23: MEDICAL EXTRUSION TECHNOLOGIES Lacks Aquired Distinctiveness, Says TTAB

In an enervating, yet precedential decision, the Board sustained an opposition to registration of the mark MEDICAL EXTRUSION TECHNOLOGIES, in standard character form, for polyurethanes for use in the manufacture of medical devices, finding applicant's evidence inadequate to support its Section 2(f) claim of acquired distinctiveness for this highly descriptive term. Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc., Opposition No. 91219435 (August 18, 2017) [precedential] (Opinion by Judge Jeffrey T. Quinn).

By seeking registration under Section 2(f) of the Trademark Act, applicant conceded that its mark was not inherently distinctive. An applicant who resorts to Section 2(f) bears the ultimate burden to prove by a preponderance of the evidence that the applied-for mark has acquired distinctiveness. Moreover, "the applicant’s burden of showing acquired distinctiveness increases with the level of descriptiveness; a more descriptive term requires more evidence of secondary meaning." In re, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005).

Degree of Descriptiveness: Dictionary definitions of the constituent words, numerous examples of third-party use of wording such as "medical extrusion," "extrusion technolog(y/ies)," "medical extrusion industry" and "medical extrusion technolog(y/ies)"in connection with similar goods, applicant's own use of the phrase, and applicant's testimony regarding the descriptiveness of the phrase, convinced the Board that the applied-for mark is highly descriptive of applicant's goods. "Clearly, no thought or imagination is required to immediately understand that medical extrusion products sold under the designation MEDICAL EXTRUSION TECHNOLOGIES are just that, namely, medical extrusion goods produced by using medical extrusion technologies (or methods or processes)."

Acquired Distinctiveness: The Examining Attorney accepted applicant’s claim of acquired distinctiveness based solely on a declaration of continuous use of the purported mark in commerce since 1990. Of course "the Board is not bound by the Examining Attorney’s decision to allow publication of the mark."

The Board found that the "nature and number of third-party descriptive uses in the record" demonstrate that applicant use has not been "substantially exclusive" as is required for a Section 2(f) showing. "Non-exclusive use presents a serious problem for Applicant in obtaining trademark rights in a designation that is not inherently distinctive, because it interferes with the relevant public’s perception of the designation as an indicator of a single source."

Applicant claimed that it is unaware of anyone else in the industry using the specific wording MEDICAL EXTRUSION TECHNOLOGIES as a trademark. The Board pointed out, however, that even if applicant were the first and only user of MEDICAL EXTRUSION TECHNOLOGIES as a purported mark in the industry, that would not overcome the highly descriptive nature of the wording nor suffice to establish acquired distinctiveness in this case.

The fact that this wording has been used repeatedly by unrelated entities in the industry is inconsistent with the requirement of acquired distinctiveness that the word indicate a single source. Given the number of third-party uses, consumers are likely to perceive the word “medical extrusion technologies” when used for medical extrusion goods, not as a trademark for one company, but rather as common terminology used by different entities in the industry to describe those goods.

The Board concluded that Applicant’s use of MEDICAL EXTRUSION TECHNOLOGIES has not been substantially exclusive as required under Section 2(f).

The Board noted that the record was devoid of any sales figures whatsoever, and that applicant's promotional expenditures are "hardly impressive, falling far below levels deemed persuasive in other cases involving the acquired distinctiveness of marks that may be highly descriptive." There was no evidence regarding the number of visitors to applicant’s trade show booths or to its website, nor regarding the circulation of the trade magazines in applicant advertised. "In sum, the record falls far short of establishing that Applicant’s promotional efforts have borne fruit with respect to acquired distinctiveness."

Given that the proposed mark is highly descriptive, much more evidence, especially in the quantity of direct evidence from the relevant purchasing public, than what Applicant has submitted would be necessary to show that the designation MEDICAL EXTRUSION TECHNOLOGIES has become distinctive for Applicant’s medical extrusion goods.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Why is this precedential? BTW, I always try to use the term "acquired distinctiveness" rather than  "secondary meaning" because the latter applies only to word marks. How can a design mark or a sound mark have "meaning," let alone "secondary" meaning?

Note that applicant did not appeal from the examining attorney's Section 2(e)(1) mere descriptiveness refusal, and its mark was published only on the basis of its 2(f) claim.

Text Copyright John L. Welch 2017.

Monday, August 21, 2017

Precedential No. 22: Breast Cast Design Fails to Function as a Mark for Cancer Awareness Services

The TTAB affirmed three refusals to register the design shown below, comprising a "three-dimensional cylindrical cast of female breasts and torso," for associational, educational, and fund-raising services related to breast cancer awareness, finding that (1) applicant's specimens of use fail to show the applied-for-mark in use with the recited services, (2) the design fails to function as a service mark, and (3) assuming arguendo that the first two refusals were overcome, it constitutes nondistinctive trade dress that lacks acquired distinctiveness. In re Keep A Breast Foundation, Serial No. 85316199 (August 7, 2017) [precedential] (Opinion by Judge Peter W. Cataldo).

Specimens of Use: "A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage." In re DSM Pharm., Inc., 87 USPQ2d 1623, 1624 (TTAB 2008). Applicant's original specimen of use, shown immediately below, gave no indication of the services involved.

Its first substitute specimen, shown in part immediately below, does not display the breast cast depicted in the application drawing, but rather six different breast casts. Applicant's own promotional materials state that these breast casts are "one-of-a-kind plaster forms of the female torso ... given to the castee to document a specific point in their breast cancer journey." The casts are individual works that lack uniformity and thus they fail to depict a "substantially exact representation of the mark." See Rule 2.51.

Furthermore, although this specimen refers to the services, it appears to identify the services by the more traditional word mark "The Keep A Breast Foundation:" i.e., the presence of other readily perceived source identifiers "makes in impossible to conclude that the public would perceive the casts themselves as source identifiers."

A second substitute specimen (above) displays five breast casts of different sizes and shapes on a table with other paraphernalia. Again there is no mention of or association with the recited services. This specimen neither depicts the design shown in the application drawing, nor does it associate the supposed mark with any services such that the breast casts would be perceived as a source indicator.

And so the Board affirmed the refusal on the ground that applicant's specimens fail to show use of the applied-for designation as a source indicator for the recited services.

Failure to Function: The USPTO is statutorily constrained, by Section 1, 2, 3, and 45 of the Trademark Act, "to register matter on the Principal Register only if its functions as a mark." The critical determination is how the proposed mark is perceived by relevant consumers.

The Board agreed with Examining Attorney Marlene Bell that applicant's proposed mark fails to function as a service mark. The specimens of use fail to associate the design with the services, "thus making it unlikely that the relevant consumers will perceive the casts as indicating source."

If anything, the applied-for mark appears to be created as part of the educational and associational services offered under the designation “Keep A Breast Foundation Treasured Chest Program.” As stated in Applicant’s pamphlet, "The Keep A Breast Foundation’s Treasured Chest Program strives to gives women that are newly diagnosed with breast cancer a unique opportunity to document their body and their feelings at a specific time in their treatment by turning their casted torso into a beautiful piece of art."

The evidence also showed that other charitable organizations similarly make breast/torso casts as part of their support services. The Board concluded that the cast will be perceived as part of applicant's services rather than as a source indicator.

Acquired Distinctiveness: If a term or design fails to function as a mark, no amount of evidence of acquired distinctiveness can overcome such a refusal. [Seems like a nonsequitur - ed.]. Nonetheless, for the sake of completeness, and assuming arguendo that the design serves as a source indicator and that the specimens of use are acceptable, the Board considered applicant's Section 2(f) claim.

Given that the alleged mark is not Applicant’s main identifier (Keep A Breast Foundation is), and given that it is in the form of a product, which consumers do not tend to view as marks but as what they are (products), we find Applicant’s use since April 2000 is insufficient, in itself, to demonstrate that consumers perceive the breast/torso cast as an indicator of source.

Applicant pointed to more than $1 million dollars in donations and $100,000 spent on advertising for its services, but that evidence was of minimal probative value because applicant failed to indicate what amounts were raised and spent in connection with the mark at issue. Applicant displays its breast/torso casts along with other potential source identifiers, and promotes its services under the name "Treasured Chest Program." Thus the Board could not infer that, from applicant's advertising, consumers will infer that the breast/torso cast is a source identifier.

Applicant provided declarations attesting that the 1,500 breast casts it has developed include those of numerous celebrities, musicians, and professional athletes, and that media outlets have published stories about "The Keep A Breast Foundation's Breast Casts and the organization's services associated with the Breast Cast campaigns." But there was no indication that the breast cast was displayed or discussed as a source indicator, for example, by way of "look for" advertising. Moreover, the fact that the breast casts differ from one another make it more unlikely that applicant could show that such individualized casts serve as a mark.

In addition, Section 2(f) requires that an applicant's use of a proposed mark be "substantially exclusive." The fact that third parties offer breast casting as part of breast cancer awareness programs "strongly undercuts Applicant's claim that it is making substantially exclusive use of its proposed breast cast configuration as a service mark or trade dress." Therefore, applicant's claim of acquired distinctiveness fails on that basis also.

Conclusion: The Board affirmed the three refusals to register.

Read comments and post your comment here.

TTABlog comment: WYHA? Is this like a phantom mark? Is it an attempt to register an idea (breast casting) as a service mark? Applicant called it "akin to packaging," but isn't it some "tertium quid" that is neither product shape nor packaging?

Text Copyright John L. Welch 2017.

Friday, August 18, 2017

TTAB Test: Is UHAI (Swahili) Confusable with LIFE FOR HAIR & Design for Hair Care Products?

The USPTO refused registration of the mark UHAI for "Hair care products, namely, shampoo, conditioner, oil, gel, foam, spray, styling custard, hair regrowth kits comprised primarily non-medicated exfoliating scrub, scalp serum and temple balm for promoting hair growth," finding the mark likely to cause confusion with the registered mark LIFE FOR HAIR & Design (shown below), for "hair care product, namely, shampoo used to strengthen the hair [HAIR disclaimed]." Applicant contended that the Examining Attorney failed to prove that Swahili is a "common modern" language in this country, and thus failed to show that customers are likely to be confused as to the source of Applicant’s goods under Section 2(d). How do you think this came out? In re S Squared Ventures, LLC, Serial No. 86813357 (August 16, 2017) [not precedential] (Opinion by Judge Linda A. Kuczma).

Since the goods overlap, the Board presumed that they travel through the same, normal channels of trade to the same classes of customers.

Turning to the marks, Applicant translated its mark from the Swahili to English as the word "life." Under the doctrine of foreign equivalents, a mark in a foreign language may be found confusingly similar to a mark that is its English equivalent. The doctrine applies when an ordinary American purchaser would "stop and translate" the foreign term into its English equivalent. The ordinary American purchaser includes all purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.

Applicant did not dispute that the Swahili language is spoken by people in the United States, but it argued that the USPTO's evidence did not show that Swahili is a "common modern" language in this country such that consumers are likely to be confused.

The Examining Attorney relied on evidence that Swahili, also called Kiswahili, is a "lingua france" and is the primary or secondary language of approximately 80-100 million people around the world. Major universities in this United States offer classes and programs covering the Swahili language, and several have student Swahili clubs. Numerous media excerpts referred to Swahili broadcasts, religious gatherings, cultural awareness, and education.

Nonetheless, applicant, pointing to a survey showing that 88,685 individuals speak Swahili at home, contended that it is unlikely that purchasers would stop and translate the mark. [Seems like a nonsequitur to me - ed.. The Board pointed out, however, that people may speak English at home but still may have studied another language in school; others may immigrate to a home where English is spoken. None of these people would be included in applicant's data.

The Board concluded that Swahili is not dead, obscure, or unusual. It is a common modern language for purposes of applying the doctrine of equivalents.

Because UHAI directly translates to the word "life" in English, it is similar to Registrant's mark, and this factor favors a likelihood of confusion.

The absence of "FOR HAIR" in applicant's mark does not create a separate and distinguishable commercial impression from Registrant's mark, since that phrase is descriptive of the goods. Moreover, that wording is displayed in smaller and less stylized letters.

The Board noted that applicant's standard character mark could be displayed in the same manner as the registered mark. The leaf design in the registrant mark is minimal and does not distinguish the marks.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: When I first saw the registered mark, I thought it featured the letters LHE.

Text Copyright John L. Welch 2017.

Thursday, August 17, 2017

TTAB Test: Is BON BON & Design Confusable With BON O BON for Candy?

Arcor S.A.I.C. opposed an application to register the mark BON BON in the design form shown below, for "Confectionery made of sugar, namely, candy, sweets, caramels" [BON BON disclaimed] in view of its registered mark BON O BON in standard character form, for "Chocolates, pastries filled with sweet fillings, alfojores, and wafers." Applicant "ROT FRONT" argued that consumers will distinguish the marks due to the "extreme weakness of the term 'BON BON.'" How do you think this came out? Arcor S.A.I.C. v. "ROT FRONT" Open-Type Joint Stock Co., Opposition No. 91222153 (August 15, 2017) [not precedential]. (Opinion by Judge Peter W. Cataldo).

After the Board denied cross-motions for summary judgment, the parties agreed to proceed under the ACR regime, streamlining procedures and stipulating to certain facts: that the goods are closely related and travel through similar channels of trade. Applicant introduced dictionary definitions of "bon bon" as candy, third-party registrations for candy with BON BON disclaimed, and screenshots of various websites advertising candies identified as "bonbons" or "bon bons." Opposer submitted third-party registrations and website pages showing the use of purple backgrounds in packaging and advertisements for candy.

The Board had no doubt that "bonbon" or "bon bon" is, at best, highly descriptive of the involved goods, if not generic. Thus the wording "BON BON" in applicant's mark has little, if any, source-identifying significance. The evidence showed that the highly descriptive term BON BON, combined with a purple background, is "quite weak."

Opposer's mark BON O BON has no recognized meaning, other than a suggestion of "good." Applicant pointed to ten registrations and numerous third-party uses of BON BON in connection with candies. In particular BON BON BON for chocolates is quite similar to opposer's mark. Accordingly, the Board found, BON O BON is entitled to "a narrower scope of protection than would be accorded an arbitrary mark."

As to the marks, the Board found that, because BON BON is at least highly descriptive of the goods, consumers are likely to look to the stylized font and the purple background as the distinguishing features of applicant's mark.

Since opposer's standard character mark could be displayed in a fond identical to that of applicant's mark, the Board considered the marks to be similar in appearance. The meaning of applicant's mark is a chocolate-covered candy, while BOB O BON has no known meaning, but it suggests that the goods are "good." Thus the marks differ in connotation.

"[W]hile there are similarities between the marks, differences in appearance and connotation leads the marks to convey overall commercial impressions that are more dissimilar than similar." Therefore the Board found that confusion is not likely between the involved marks, and it dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: What do you think? Should Arcor have opposed on the ground of mere descriptiveness?

Text Copyright John L. Welch 2017.

Wednesday, August 16, 2017

GOLDEN DOODLE Merely Descriptive of Retail Gifts Shops, Says TTAB

In a six-page opinion, the Board affirmed a Section 2(e)(1) refusal of GOLDEN DOODLE, finding the proposed mark merely descriptive of "On-line retail gift shops; On-line retail store services featuring apparel and accessories; Retail store services featuring apparel, accessories and gifts." Applicant acknowledged that among the many dogs represented in its designs is the "goldendoodle," a cross between poodle and a golden retriever. In re GoldenDoodle LLC, Serial No. 86717500 (August 11, 2017) [not precedential] (Opinion by Judge Albert Zervas).

The evidence submitted by Examining Attorney Tracy Whittaker-Brown established that the goods offered in applicant's retail stores may feature goods with images, slogans or information regarding the goldendoodle breed. The Board therefore agreed that the proposed mark merely describes a feature of applicant's services.

Applicant GoldenDoodle argued that GOLDEN DOODLE does not convey an immediate idea of the qualities or characteristics of its services with any degree of particularity because "goldendoodle" is only one of 56 breeds found at its website. The Board found that applicant's argument had more bark than bite. The Board noted that it considers the proposed mark in view of the services for which registration is sought, regardless of how applicant actually uses its proposed mark.

Applicant has crafted its recitation of services in a manner to allow for retail services offering apparel, accessories and gifts that feature wording or images pertaining to goldendoodles, even to the exclusion of other dog breeds.

Applicant pointed out that the USPTO has published for opposition a divisional application for goods [e.g., clothing, bumper stickers] that were divided out from this application but the Board pointed out once again that it is not bound by decisions of examining attorneys.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? WYHA not? BTW, where did the second "d" in "goldendoodle" come from? Should it be "goldenoodle?" Or does that look too much like "golden noodle?" On the other hand, who cares?

Text Copyright John L. Welch 2017.

Tuesday, August 15, 2017

TTAB Rejects Shape of Printed Label as a Phantom Mark

The Board affirmed a refusal to register, on the Supplemental Register, the product configuration mark shown below, for "printed paper labels; paper identification tags; printed paper labels; adhesive labels; paper die cut shapes; paper labels; paper tags; placards of paper or cardboard; printed paper labels; coupons," finding that "the changeable elements in Applicant’s proposed mark result in multiple marks that cannot be protected in a single registration." In re MPT, Inc., Serial No. 86316207 (August 9, 2017) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The supposed mark consists of "four rounded, convex corners and the call-out indicator of a generally rectangular speech bubble, with the call-out indicator located at the bottom of the speech bubble and formed by an extended pointed portion connected to the lower right corner by a concave line and connected to the lower left corner by a sloped line. The broken lines in the drawing are used to show the placement of the mark and are not part of the mark." During prosecution, applicant explained that "These unclaimed portions comprise portions of the straight walls at the four sides of the label that would fix their length."

A “phantom” trademark “is one in which an integral portion of the mark isgenerally represented by a blank or dashed line acting as a placeholder for a genericterm or symbol that changes, depending on the use of the mark.” In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513, 1515 n.1 (Fed. Cir. 1999).

A trademark application may seek to register only one mark, and a phantom mark is more than one mark. Phantom marks encompass too many possibilities to make effective searching possible, and thus do not provide proper notice to others.

Here, significantly different shapes could be created by varying the lengths and widths of the sides of this shape, demonstrating the unacceptable phantom nature of the proposed mark. (See examples below).

While Applicant’s proposed variations all may be talk bubbles, with three-dimensional configurations of the goods such as these, the form and shape of them are the essence of the mark, and Applicant’s proposed forms and shapes could diverge too much to be considered the same mark. *** More importantly, under the circumstances, Applicant’s use of broken lines in this drawing impermissibly opens the door to multiple marks, regardless of Applicant’s extraneous assurances to the contrary.

The Board also affirmed a requirement that the applicant submit a proper drawing and description of the proposed mark, because both encompass more than one mark.

Read comments and post your comment here.

TTABlog comment: WYHA? Did applicant stand a ghost of a chance here?

Text Copyright John L. Welch 2017.

Monday, August 14, 2017

Reversing a Surname Refusal, TTAB Finds BROE (Stylized) Has Acquired Distinctiveness

Although finding that the term BROE is primarily a surname, and that the stylization shown below does not make the mark inherently distinctive, the Board reversed this Section 2(e)(4) refusal because applicant established acquired distinctiveness under Section 2(f). In re Broe Management Company, LLC d/b/a The Broe Group, Serial No. 86715987 (August 11, 2017) [not precedential] (Opinion by Judge Michael B. Adlin).

Surname?: The evidence established that applicant is named for its founder and chief executive officer, Pat Broe. On its website, applicant describes itself as a "family-owned business." Negative dictionary evidence indicated that "broe" has no non-surname meaning and a Wikipedia entry for "broe" states that the word is a surname. Other evidence identified individuals with the surname BROE, and the website list 1,250 persons with that surname.

Even though BROE is a rare surname, the record evidence established that it is still primarily a surname. In re Eximius Coffee, LLC, 120 USPQ2d 1276 (TTAB 2016) (finding ALDECOA primarily merely a surname).

Stylization?: As to the distinctiveness of of applicant's stylized version of BROE, the Board noted that surnames are typically displayed with an initial upper case letter. Neither the particular font nor the green letter "o" alters the primary significance of BROE given the other evidence in the record. Cf. In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995) (stating that were it not for the marks “highly stylized” form, “we would find that the service mark BENTHIN … would be perceived as primarily merely a surname,” based on highly similar evidence to that presented here and in Eximius Coffee).

In short, the record leaves no doubt that when the purchasing public considers [the applied-for mark] in relation to Applicant’s investment and financial asset disposition services, it will primarily signify a surname, specifically that of Pat Broe whose family owns Broe Management Company d/b/a The Broe Group.

Acquired Distinctiveness? Although the applied-for mark had been in use for significantly less than five years, Applicant claimed acquired distinctiveness as to the word BROE, without regard to font or stylization, which mark had been in use for substantially more than five years (in fact, for more than forty years).

The Board observed that the USPTO has "a longstanding practice of allowing registration of surnames under Section 2(f) upon a showing of substantially exclusive and continuous use for five years. In re Adlon Brand GmbH & Co., KG, 120 USPQ2d 1717, 1722 n.33 (TTAB 2016). The Board found no reason not to follow that practice here, since it had already found that the applied-for mark creates the same commercial impression as the word BROE.

Judge Massielo, in the briefest of concurring opinions, agreed with the result but he would have found the stylization alone sufficient to avoid the surname refusal.

Read comments and post your comment here.

TTABlog comment: Since the stylization does not change the pronunciation or meaning of the term, I side with Judge Adlin.

Text Copyright John L. Welch 2017.

Friday, August 11, 2017

CAFC Affirms TTAB: In Context, FIRST TUESDAY Merely Descriptive of Lottery Services

In an eight-page opinion, the CAFC upheld the TTAB's decision in In re North Carolina Lottery, Serial No. 86411401 (July 12, 2016) [TTABlogged here], finding the mark FIRST TUESDAY to be merely descriptive of "lottery cards; scratch cars for playing lottery games" and of "lottery services." The court ruled that the Board did not err in considering the explanatory text appearing on applicant's specimens of use (see below) in determining the issue of descriptiveness. In re North Carolina Lottery, Appeal No. 2016-2558 (Fed Cir. August 10, 2017) [precedential].

North Carolina's specimens of use included explanatory text such as "[n]ew scratch-offs the first Tuesday of every month." The examining attorney found that, in the context of applicant's promotional materials, the mark "merely describes a feature of [its] goods and services, namely, new versions of the goods and services are offered the first Tuesday of every month." The Board agreed, concluding that "[n]o mental thought or multi-step reasoning is required to reach a conclusion as to the nature of the involved goods and services."

North Carolina argued that that the Board's reliance on the explanatory text of the specimens to supplement the meaning of the mark was improper, and that the inquiry should be limited to what a consumer with "only general knowledge" of the goods and services, and without additional context from the explanatory text, would immediately understand the mark to mean. Accordingly, the applicant maintained, the mark is merely suggestive because nothing in the mark itself conveys the understanding that the USPTO assigns to the mark, and therefore some imagination is needed to connect the mark to the goods and services.

North Carolina conceded that the USPTO is allowed to consider the specimens of use to discern how a mark is used, but it argued that explanatory text on the specimens cannot supply additional meaning when the mark itself does not convey that meaning." When pressed, North Carolina "had difficulty articulating the significance of the explanatory text in this case if not to serve as evidence of the significance of FIRST TUESDAY in the commercial context." The court declined to "carve out" explanatory text from the USPTO's consideration of the commercial context in which a mark is used.

That is not to say, however, that the use of explanatory text with a mark necessarily renders that mark merely descriptive. “Placement of a term on the continuum [of distinctiveness] is a question of fact.” In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001). The distinctiveness of a mark in the context of explanatory text remains a case-specific analysis. As a legal matter, however, the TTAB did not err by considering the explanatory text of the specimens in the descriptiveness inquiry.

North Carolina further argued that the fact that it had to explain the meaning of the mark showed that the mark is not descriptive. The court, distinguishing several decisions from other circuits, found that the connection between the explanatory text, the mark, and the goods/services was not complicated: "That text simply uses the same two words as the mark—'first Tuesday'—along with words like 'new' and 'every month' to describe the relevant feature or characteristic of N.C. Lottery’s scratch-off lottery games."

The commercial context here demonstrates that a consumer would immediately understand the intended meaning of FIRST TUESDAY. In other words, the evidence shows that the mark is less an identifier of the source of goods or services and more a description of a feature or characteristic of those goods or services. Substantial evidence therefore supports the TTAB’s finding that FIRST TUESDAY is a merely descriptive mark.

And so the CAFC affirmed the Board's decision.

Read comments and post your comment here.

TTABlog comment: Would you categorize this as a "failure-to-function" case?

Text Copyright John L. Welch 2016.