Matthew Swyers (The Trademark Company) Excluded from Practice Before USPTO
Michael E. McCabe, Jr. reports (here), at his IP Ethics and Insights blog, that Matthew Swyers, owner of The Trademark Company, has entered into an "exclusion on consent" agreement with the USPTO, by which Mr. Swyers has voluntarily given up the ability to provide U.S. trademark-related legal services for a minimum of five (5) years.
Although Mr. Swyers denied engaging in any wrongdoing, his exclusion on consent comes with a significant caveat: if he ever seeks reinstatement to practice again before the USPTO (which he cannot do for at least five years), the OED Director will conclusively presume for purposes of considering his reinstatement petition both: (1) the allegations in the disciplinary complaint are true; and (2) Mr. Swyers could not have defeated those allegations.
TTAB Dismisses 2(d) Opposition to ANTARCTIC ICE MARATHON Due to Failure to Prove Priority
The Board dismissed this opposition to registration of the mark shown below, for clothing and event services [ANTARCTIC ICE MARATHON & 100K and the geographic representation of Antarctica disclaimed], finding that, as to Opposer Marathon Tours' Section 2(d) claim, opposer failed to prove priority for its alleged mark ANTARCTICA MARATHON, and as to its fraud claim, opposer failed to prove, or even allege, an intent to deceive the USPTO. Marathon Tours, Inc. v. Richard Donovan, Opposition No. 91214916 (February 14, 2017) [not precedential].
Opposer Marathon Tours created and organized the Antarctica Marathon in 1995, held in the Shetland Islands. Due to environmental restrictions, only one or two hundred runners participated in any year. Revenues were about $1.3 million in 2007, and about $1.9 million in 2015. Unsolicited media coverage has been limited and sporadic.
Applicant Donovan has been organizing his event since 2006. His races occur in the interior of the Antarctic, and his event has been featured on American media.
Section 2(d) Priority: Marathon Tours relied on its alleged common law rights to prove priority. It therefore had to prove that its mark was distinctive, either inherently or via acquired distinctiveness, and that it had priority of use. The Board noted that opposer had applied to register ANTARCTICA MARATHON and had claimed acquired distinctiveness under Section 2(f). [The application was blocked by Mr. Donovan's application]. That was an admission by Marathon Tours that its alleged mark was not inherently distinctive.
As to acquired distinctiveness, the Board found ANTARCTICA MARATHON to be highly descriptive, and therefore opposer had a higher burden to show acquired distinctiveness. [Note: the Shetland Islands are not in Antarctica, but the Board declined to consider the misdescriptiveness issue].
Although Marathon Tours began offering the relevant services in 1995, the ANTARTICA MARATHON race did not become a regular and annually-recurring event until 2008. Media recognition consisted of four media articles during the period 1995-2007, all before the race became an annual event. Applicant Donovan, on the other hand, began offering his race in 2006 and has been offering it annually and regularly ever since. It attracted unsolicited media attention from the git-go, and the attention has continued to the present at a scale that far outpaces the media attention for opposer's race.
The Board concluded that Marathon Tours had failed to show both that use of its mark is substantially exclusive and that the mark had acquired distinctiveness. Thus opposer cannot show priority, and its Section 2(d) claim must fail.
Fraud: Marathon Tours alleged that applicant Donovan never operated or conducted its marathon races "in commerce regulated by the United States," and he therefore made a knowingly false statement upon with the USPTO relied.
However, Marathon Tours failed to allege, nor did it offer any proof, that applicant's statements (even if false) were made with the intent to deceive the USPTO. [Applicant Donovan testified that he targets US customers and offers his services in the USA]. Therefore, opposer's fraud claim failed as well.
TTABlog comment: Looks like we have two entities using similar, descriptive marks for nearly the same services. Sounds like the recent CHICAGO STAGEHAND case. But at least there the stagehands were in Chicago.
TTAB Affirms Rejection of New Drawing, Reverses Geographical Refusal of OAK PARK Design Mark for Beer
The Board rejected applicant's attempt to amend the drawing of the mark shown below to delete the words "SACRAMENTO CA," finding that such an amendment would be a material alteration of the mark as filed. However, the Board reversed a Section 2(e)(2) refusal of the original mark for beer because Oak Park of Sacramento, California, is too obscure a location. In re Oak Park Brewing Company, Inc., Serial No. 86329948 (February 14, 2016) [not precedential].
Material alteration: In an application under Section 1(b), an applicant may amend the drawing of the mark if "[t]he proposed amendment does not materially alter the mark." Rule 2.72(b)(2). The general test is whether the mark would have to be republished after the alteration. In short, the new and old versions must create the same commercial impression.
The evidence showed that there are several locations named "Oak Park" in the United States, including Oak Park, Illinois, known for the large collection of homes designed by Frank Lloyd Wright. It is also the birthplace of Ernest Hemingway and contains three homes of writer and Tarzan creator Edgar Rice Burroughs.
The Board concluded that removal of "SACRAMENTO CA" changes the commercial impression of the mark because it no longer refers to Oak Park of Sacramento, California, but may refer to another Oak Park. Or OAK PARK may simply be seen as an arbitrary designation of a park dominated by trees, with no geographical reference.
And so the Board affirmed the rejection of the proposed new drawing.
Geographical Descriptiveness The first prong of the Section 2(e)(2) test requires that the mark (or portion thereof) be a place generally known to the public. The USPTO's evidence showed that Oak Park is located within the Sacramento city limits. The population of Sacramento is about 400,000. Newspaper stories established "[a]t best" that a former mayor of Sacramento, who played in the NBA, grew up in Oak Park of Sacramento. [Can you name him?]
Considering the evidence as a whole, the Board was not persuaded that "Oak Park" identifies a geographic location generally known to the American purchasing public for beer. Oak Park in Sacramento is minor and obscure. At one time it was an important suburb of Sacramento, but fell into decline. Although Sacramento is not an insignificant city, nothing in the record indicated that the specific area of Oak Park has any significance outside of Sacramento. "At best, the record showed that one professional basketball player grew up there, a fact probably not generally known to the American beer-drinking public."
Because the USPTO failed to satisfy the first prong of the Section 2(e)(2) test, the Board reversed the refusal.
TTABlog comment: Talk about obscure? That's what the words SACRAMENTO CA are in the applied-for mark. I think the USPTO should have allowed the amendment of the drawing and then refused registration under Section 2(e)(3).
TTAB Denies NEW YORK FAIR AND LOVELY Cancellation Petition - Abandonment not Proven
The Board denied Unilever's petition for cancellation, in whole or in part, of a registration for the mark NEW YORK FAIR AND LOVELY for "Skin soaps, skin cleansers, cosmetics," in International Class 3, and for "Medicated skin creams and medicated skin lotions," in International Class 5. Unilever claimed that respondent had abandoned the mark as to some or all of the identified goods, but Unilever failed to carry its burden of proof. Unilever PLC v. Technopharma Limited, Cancellation No. 92056654 (January 20, 2017) [not precedential].
Grounds for cancellation: Unilever argued that the registration should be cancelled in its entirety because respondent's Section 8 Declaration failed to establish continued use. The Board pointed out, however, that because respondent's registration is more than five years old, Section 1064 limits cancellation to certain enumerated grounds, and filing a faulty Section 8 Declaration is not one of them. Nor is alleged error by the Director's office in the examination of the Section 8 Declaration.
Abandonment: The Board chose to consider Unilever's claim regarding the Section 8 Declaration as a claim of abandonment. Unilever was required to show, by a preponderance of the evidence, that use of the mark "has been discontinued with intent not to resume such use." 15 U.S.C. § 1127.
Reviewing the skimpy record, the Board concluded that Unilever had failed to meet its burden of proof.
Overall, the issue of the actual cessation of use of Respondent’s mark was insufficiently developed at trial to persuade us that an abandonment occurred. The amount of documentation of Respondent’s sales is indeed scant, and Mr. Farah’s testimony is not compelling. However, the burden of demonstrating abandonment is on Petitioner. The evidence of record is consistent with modest ongoing commercial activity under the mark. Even if use of the mark on some or all of the goods was not continuous, there is evidence of record that helps refute any notion of an intention not to resume use ....
Lawful use: Unilever also contended that any use of respondent’s mark did not qualify as "lawful use" because respondent did not comply with federal labeling laws. However, this claim was not mentioned in the petition for cancellation and was "only lightly touched upon at trial." Therefore, the Board agreed with respondent that the issue was not tried by consent, and further that respondent did not have adequate notice of the claim.
In any event, the claim would fail because there had been no final determination of noncompliance by any competent court or agency regarding the sale of respondent's goods. Nor was this a per se violation of applicable law. Unilever failed to adduce the required clear and convincing evidence of a violation.
And so the Board denied the petition for cancellation.
HONEYFILE Merely Descriptive of Security Software, Specimen Unacceptable, Says TTAB
The Board affirmed a Section 2(e)(1) refusal of the mark HONEYFILE, finding it merely descriptive of "computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intelligence" and for related computer security services. The Board also affirmed the USPTO's rejection of applicant's specimen of use for the software because it constituted mere advertising. In re Bitvoyant, Serial No. 86693221 (February 9, 2017) [not precedential].
Mere Descriptiveness: The evidence established that, in the cybersecurity industry, a "honeyfile" is a "bait file that is intended for hackers to open, and when the file is opened, an alarm is set off." Applicant's specimens confirmed this finding: "We design HONEYFILES to attract adversaries with feasible mock assets." Thus the applied-for mark immediately informs consumers of a "quality, feature, function or characteristic" of applicant's goods and services. Despite applicant's arguments, the Board failed to find any incongruous meaning in the mark when considered in the context of security software and services.
Class 9 specimen of use: Applicant's specimens of use consisted of screenshots of its website, but the Examining Attorney maintained that the specimens were merely advertising materials and did not constitute a "display associated with the goods" because there was no means for ordering the software.
The Board looked to Section 904.03(e) of the TMEP (Jan. 2017), which states that for downloadable software an applicant may submit a specimen showing use of the mark on an Internet website. Such a specimen is acceptable if it "creates an association between the mark and software and provides sufficient information to enable the user to download or purchase the software from the website." *** If the website simply advertises the software without providing a way to download, purchase, or order it, the specimen is unacceptable."
The Board agreed with the examining attorney that applicant's specimens of use were unacceptable.
None of Applicant’s proffered specimens includes a "download" or similar link to put the consumer on notice that the identified goods are indeed available for download or the equivalent thereof. As such, the specimens cannot qualify as a display associated with the goods on this basis.
As noted above, a display of a mark on a screen that appears when computer software is in use is a suitable display associated with the goods. Here, there is no evidence to indicate that that is the nature of the specimens. The specimens merely provide a description of Applicant's products, in the nature of mere advertising. This, however, is not enough.
The Board concluded that applicant's specimens of use failed to show use of the mark in commerce with applicant's class 9 goods.
Effective Date of New Post-Registration Proof-of-Use Rule Delayed Until March 21st
The USPTO has announced (here) that the effective date of the final rule entitled "Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases," has been re-set to March 21, 2017. Under the new rule, briefly discussed here, the USPTO may require additional information to verify that a mark is in use in commerce in connection with particular goods/services identified in the registration, unless excusable nonuse is claimed.
In accordance with the memorandum of January 20, 2017, from the Assistant to the President and Chief of Staff, entitled "Regulatory Freeze Pending Review," this action delays the effective date of that final rule 60 days from the date of the January 20, 2017 memo. The effective date of the January 19, 2017 final rule, which would have been February 17, 2017, is now March 21, 2017. The 60-day delay in the effective date is necessary to give agency officials the opportunity for further review of the issues of law and policy raised by the rule.
Precedential No. 2: TTAB Affirms Rejection of Specimen of Use for CONEY ISLAND BOARDWALK CUSTARD
The Board affirmed a refusal to register the mark CONEY ISLAND BOARDWALK CUSTARD, in standard character form, for frozen custards [CONEY ISLAND and CUSTARD disclaimed] due to applicant's failure to submit an acceptable specimen of use. Applicant contended that its specimen qualified as a display closely associated with the goods offered for sale in a Boardwalk stand. The Board, however, concluded that consumers would not be likely "to associate the mark with the goods such that the specimen serves as an inducement to the sale of the goods. In re Kohr Brothers, Inc., Serial No. 85430114 (February 9, 2017) [precedential].
Section 45 of the Trademark Act states that a mark is deemed to be used in commerce on goods when "(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce." Because Section 45 does not define the term "displays associated therewith," the Board must determine on a case-by-case basis whether a particular specimen qualifies as a "display" adequate to demonstrate use in commerce. The Board observed that "mere advertising" does not suffice. A display must catch the attention of the consumer, who will associate the mark with the goods and be induced to buy them.
Applicant stated that its specimen of use, shown below, is located at eye level on a wall facing the customer as he or she approaches the counter to purchase the goods. It contended that this presentation qualified as a display associated with the goods because (1) the sign includes a picture of the goods and (2) the goods are "in close proximity to the specimen sign as displayed."
The Board, however, noted that most cases concerning a picture of the goods involve a catalog display or a webpage that includes information about the goods to allow a customer to place an order. Here, applicant does not provide information about the goods, portion sizes, flavors, cost, etc. The stylized drawing of a cone, in conjunction with the depiction of a Ferris wheel, is likely to be seen as evoking the Coney Island amusement park in Brooklyn. [Did you know that the Ferris wheel was invented by a man named George Ferris for the 1893 World's Columbian Exhibition in Chicago?] In short, Thus, the depiction of a cone "is more likely to be perceived as part and parcel of a composite word and design mark than as an unmistakable indication of the nature of Applicant’s goods."
Moreover, the mark in the specimen "is not displayed at the point of purchase in such a way that the customer can easily and directly associate the mark with the goods, which are said to be in proximity but not shown to be so." The sign is small - about the size of an envelope - and is located next to a business license and a certificate from the Delaware Health and Social Services Division of Public Health, "hardly a place where a merchant would place material intended 'to catch the attention of purchasers and prospective purchasers as an inducement to make a sale.'" TMEP Section 904.03(g).
In any event, while a consumer might look for a menu posted on a wall facing prospective customers, a consumer would not regard a sign placed together with certificates from the health department and a regulatory agency to be a trademark for the goods. Hence, the sign cannot be considered a display associated with the goods.
Even if, as applicant contended, it was not practical to place the mark on the goods, applicant's sign does not display the mark in such a way as to serve as an inducement to customers to buy the goods. In short, "the specimen is not a display that is easily and directly associated with the goods and cannot serve to support the required showing of use."
And so the Board affirmed the refusal under Section 1 and 45 of the Trademark Act,
TTAB Test: Is DEEP SOUTH Geographically Descriptive of Movie Studio Services?
The USPTO refused registration of the mark DEEP SOUTH STUDIOS, in standard character and design form, for "movie studio services," finding the term "DEEP SOUTH" to be primarily geographically descriptive of the services under Section 2(e)(2). Applicant, located in New Orleans, argued that "Deep South" is "amorphous" and is not the mark’s primary significance. How do you think this came out? In re Deep South Studios LLC, Serial Nos. 86896313 and 86896327 (February 9, 2017) [not precedential].
The Board found that the primary significance of "Deep South" is a place generally known to the public. Reference works discuss the Deep South as including Louisiana. The Board presumed that the public would believe that applicant's services emanate from the Deep South because applicant is based in Louisiana. Finally, there was no dispute that applicant's service emanate from the Deep South.
Applicant argued that New Orleans is not part of the Deep South, but the Board found that the evidence relied upon by applicant merely differentiate New Orleans culturally and in other ways from other parts of the Deep South. It did not say that New Orleans is not part of the Deep South.
"The purpose of the proscription in Section 2(e)(2) of the Act against registration of primarily geographically descriptive terms is to leave place names free for all businesses operating in particular areas to inform customers where the goods or services originate. It would be completely inconsistent with the objectives of the Trademark Act" to register DEEP SOUTH for Applicant’s movie studio services rendered in the Deep South unless applicant had claimed and proved that the term has acquired secondary meaning. In re MCO Properties, 38 USPQ2d at 116.
And so the Board affirmed the refusal of the standard character mark, and affirmed the refusal of the design mark for failure to disclaim DEEP SOUTH.
TTAB Test: Is 100 PERCENT WINE Confusable with CENTO PER CENTO for Wine?
The USPTO refused registration of the mark 100 PERCENT WINE, finding it likely to cause confusion with the registered mark CENTO PER CENTO, both for wine. The English translation of the Italian term is '100 percent.' Applicant argued that 99.7% of Americans who are old enough to purchase wine do not speak Italian, and therefore the average American purchaser would not stop and translate the mark into English. How do you think this came out? In re Big Heart Wine, LLC, Serial No. 86376188 (January 20, 2017) [not precedential].
The Board found no need to determine whether Italian is familiar to an appreciable segment of American consumers. The doctrine of equivalents applies to "words from common, modern languages." The doctrine has been applied to Italian terms in a number of Board rulings. In any case, applicant's own evidence showed that Italian is a common, modern language. As of 2007, nearly 800,000 Americans spoke Italian.
Applicant next argued that consumers will translate a familiar foreign word only when the word is descriptive of the goods. However, it cited no authority for that proposition, and the Board found none.
The Board observed that applying the doctrine of equivalents to discern the meaning of the foreign term is only part of the Du Pont analysis. The Board must also consider the similarity or dissimilarity of the marks in appearance, sound, and all other Du Pont factors.
Here, the Board found applicant's mark 100 PERCENT WINE to be similar in appearance and sound to CENTRO PER CENTO, since PERCENT sounds like PER CENTO. CENTO PER CENTO is conceptually strong as a trademark. Of course, the goods are identical and the Board must presume that they travel through the same channels of trade to the same classes of consumers.
Finally, applicant argued that the goods would be purchased by sophisticated consumers, but the identifications of goods were not limited to fine wines offered at high prices to consumers with specialized knowledge and discerning palates.
And so the Board affirmed the refusal to register.
New Post-Registration Proof-of-Use Rule Goes Into Effect February 17th
Effective February 17, 2017, the USPTO is amending its rules concerning the examination of affidavits or declarations of continued use or excusable nonuse filed under Section 8 or Section 71 of the Trademark Act. Under the new rule, the USPTO may require additional information to verify that a mark is in use in commerce in connection with particular goods/services identified in the registration, unless excusable nonuse is claimed. [See Federal Register announcement of January 19, 2017 (here)].
In order to assess and promote the accuracy and integrity of the Trademark Register, the United States Patent and Trademark Office (USPTO or Office) amends its rules concerning the examination of affidavits or declarations of continued use or excusable nonuse filed pursuant to section 8 of the Trademark Act, or affidavits or declarations of use in commerce or excusable nonuse filed pursuant to section 71 of the Act. Specifically, under the regulations enacted herein, the USPTO may require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in commerce in the United States for all the goods/services identified in the registrations, unless excusable nonuse is claimed in whole or in part. A register that does not accurately reflect marks in use in commerce in the United States for the goods/services identified in registrations imposes costs and burdens on the public. The amended rules will allow the USPTO to require additional proof of use to verify the accuracy of claims that a trademark is in use in commerce in connection with particular goods/services identified in the registration.
In a two-year study conducted by the USTPO, the owners of approximately 50% the 500 randomly-chosen registrations in which Section 8 or 71 declarations had been filed, were unable to verify that the involved marks were still in use on the identified goods/services.
Recommended Reading: Jeanne C. Fromer, "The Unregulated Certification Mark(et)"
The recent TTAB decision regarding the TEQUILA certification mark [TTABloggedhere] may have whet (or wet) your appetite for a more extensive discussion of certification marks. Professor Jeanne C. Fromer of New York University School of Law will slake your thirst with her recent article entitled "The Unregulated Certification Mark(et)," 69 STAN.L.REV.121 (2017) [pdf here].
Abstract: Certification mark law—a branch of trademark law—itself enables consequences that undermine the law’s own goals through inadequate regulation or oversight. Because the law allows certification standards to be kept vague, high-level, and underdeveloped, a certifier can choose to exclude certain businesses inconsistently or arbitrarily, even when those businesses’ goods or services would seem to qualify for the certification mark (particularly to consumers). Moreover, even when a certification standard is clear and complete, certifiers can wield their marks anticompetitively. They can do so through redefinition—something certification mark law currently allows without oversight—to ensure that certain businesses’ goods or services will not qualify for the mark. Both of these forms of certification mark manipulation undermine the goals of certification marks: to protect consumers by providing them with succinct information on goods’ or services’ characteristics and to promote competition by ensuring that any businesses’ goods or services sharing certain characteristics salient to consumers qualify for a mark certifying those characteristics. The law should be restructured to curb this conduct. I advocate for robust procedural regulation of certification standardmaking and decisionmaking that would detect and punish poor certification behavior. Moreover, for anticompetitive behavior that nonetheless slips through the regulatory cracks, I suggest that attentive antitrust scrutiny be arrayed to catch it.