Tuesday, January 23, 2018

What is the Likelihood of TTAB Affirmance of a Section 2(d) Refusal?

As I do every year since Hector was a pup, I have reviewed the TTAB's FOIA page in an attempt to estimate the percentage of Section 2(d) likelihood-of-confusion refusals that were affirmed by the Board during the last calendar year (2017). I counted 239 Section 2(d) refusals, of which 209 were affirmed and 30 reversed. That's an affirmance rate of about 87.4%. So the odds are almost 9 out of 10 for affirmance. [Slightly lower than last year's 91% rate, but then this is not an exact science].

Only one of the Section 2(d) decisions was precedential: In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790 (TTAB 2017) (Opinion by Judge Bergsman). In USA Warriors, The Board affirmed a Section 2(d) refusal of the mark shown below left, for "arranging and conducting ice hockey programs for injured and disabled members and veterans," finding it confusable with the mark shown below right, for entertainment and association services related to hockey. Applicant did not dispute that the marks are similar and the services related. Instead it contended that the registrant had consented to registration of the applied-for mark, and that under In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012), the 13th du Pont factor should be considered in light of applicant’s ownership of a registration for a slightly different color logo for the same services. Consent: Applicant pointed to the display of its registered mark on opposer’s website; however, there was no written consent agreement, and the Board will not infer that the registrant consented to registration based on its apparent knowledge of the previously-registered, slightly different mark. 13th du Pont Factor: In Strategic Partners the Board reversed a Section 2(d) refusal based on applicant’s ownership of a substantially similar mark that had co-existed with the cited registered mark for more than five years. Here, however, the involved marks had co-existed for less than five years, and applicant’s registration is still subject to possible cancellation under Section 2(d). This three-and-one-half year co-existence was a relevant consideration, but it did not outweigh the other du Pont factors

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

Monday, January 22, 2018

TTAB Grants Summary Judgment Re Bogus Fraud Counterclaim

The Board granted Opposer Kastle's motion for summary judgment, dismissing Applicant Lee's counterclaim alleging fraud in the procurement of one of Kastle's pleaded registrations. Applicant claimed that opposer made arguments in these proceedings that are contradictory to arguments opposer made to the USPTO in obtaining the pleaded registration, and therefore perpetrated fraud on the Board and on the USPTO. Kastle Systems International LLC v. Lee Strategy Group LLC, Oppositions Nos. 91227930 and 91236247 (December 21, 2017) [not precedential].

The Board observed that applicant's motion was more in the nature of a motion to dismiss for failure to state a claim on which relief can be granted (i.e., FRCP 12(b)(6)). However, because the motion was filed after opposer's answer, and because there was no need to consider matters outside the pleadings, the Board construed the motion as one seeking judgment on the pleadings.

As noted, the ground for Applicant’s counterclaim of fraud consisted of statements made by Opposer Kastle during its successful ex parte appeal of a refusal to register on of its pleaded marks. [The statements concerned purchaser sophistication and the strength of the term CASTLE or KASTLE]. Applicant Lee alleged that those statements "were contradictory to claims currently being made by Opposer in support of this opposition proceeding."

The found appplicant's fraud claim to be procedurally flawed and substantively meritless: "Applicant has failed to allege any facts that would, if proven, demonstrate the materiality of the allegedly false representations, Opposer’s knowledge of the falsity of its representations and Opposer’s intent to deceive the USPTO."

The Board pointed out that the Federal Rules of Civil Procedure explicitly allow for the pleading of inconsistent claims or defenses in a proceeding (see Fed. R. Civ. P. 8(d)(3) (“party may state as many separate claims or defenses as it has, regardless of consistency”)), and the Board has consistently recognized a party’s right to plead in the alternative.

Moreover, the Board observed, Applicant Lee’s counterclaim "is fundamentally flawed because it necessarily assumes that Opposer’s legal arguments in the ex parte proceeding were false, material and relied upon by the Board in rendering its decision in favor of Opposer; in other words, the Board would not have rendered its decision favoring Opposer but for the false arguments made by Opposer in support of registration."

The Board concluded that Lee "misapprehends the nature of legal advocacy and improperly accords Opposer’s legal argument the weight of evidence."

In short, "a claim of fraud based simply on a perceived inconsistency in legal argument before the Board is legally insufficient to plead a claim of fraud in the procurement."

And so the Board granted Opposer Kastle's motion for summary judgment as to the fraud claim.

Read comments and post your comment here.

TTABlog comment: Not even close.

Text Copyright John L. Welch 2018.

Saturday, January 20, 2018

USPTO Seeks Candidates for Deputy Chief Judge at the TTAB

In view of the upcoming retirement of Deputy Chief Judge Susan M. Richey at the TTAB, the USPTO has posted a vacancy announcement for the position (here).

The Deputy Chief Administrative Trademark Judge (Deputy CATJ) serves as a full voting member of the Trademark Trial and Appeal Board (Board) as provided by Title 15 U.S.C. § 6, and exercises full administrative, legal, and technical authority over the Board, as supervised by the Chief Administrative Trademark Judge (CATJ). The Deputy CATJ also is responsible for working with the Chief Judge to develop and deploy the strategic and policy initiatives of the Board, as needs may be identified by the Board or as strategic initiatives may be required by the Office of the Under Secretary and Director of the USPTO, to which the Board reports.

Friday, January 19, 2018

CC & Design for Accounting Services Dilutes Chanel's Famous CC Monogram, says TTAB

In a rare Section 43(c) dilution decision, the Board sustained Chanel's opposition to registration of the mark shown below left, for accounting services, finding the mark likely to cause dilution by blurring of Chanel's famous CC Monogram mark, shown below right. Applicant Camacho & Comacho, appearing pro se, submitted no evidence or testimony and did not file a brief. The Board found that Chanel's Monogram mark is a "household name" synonymous with high fashion and style, and that the two marks are "highly similar" in appearance and commercial impression. Chanel, Inc. v. Camacho & Camacho, LLP, Opposition No. 91229126 (January 12, 2018) [not precedential] (Opinion by Judge Christopher Larkin).

In order to prove dilution, Opposer Chanel was first required to show that its Monogram mark became famous before applicant's first use date of January 8, 2002. Applicant submitted numerous pre-2002 advertisements for fashion and cosmetic products in which the Monogram mark appears. Its advertising and promotional expenditures were very substantial. The Monogram mark has been used for more than 90 years on Chanel's products, and many millions of units have been sold.

Although Chanel offered no probative evidence regarding the extent of actual recognition of the Monogram mark, the Board found that the Monogram mark became famous prior to 2002. The evidence persuaded the Board that the Monogram mark "enjoys widespread recognition among the general public and is a 'household name' synonymous with high fashion and style for the products and services identified in the pleaded registrations, and is therefore famous for dilution purposes."

As to the marks, the Board found their differences "insignificant," pointing out that side-by-side comparison is not the relevant test. Concluding that the marks are "highly similar in appearance and commercial impression," it found that "the appearance of the marks overall is sufficiently similar that Applicant's mark 'will trigger consumers to conjure up' Opposer's famous mark."

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: I'm not convinced. The marks are too dissimilar in my view. I can't imagine the Camacho mark calling to mind the Chanel logo. And I have doubts about the "household name" finding in view of the lack of survey evidence or any other evidence of consumer recognition.

Text Copyright John L. Welch 2018.

Thursday, January 18, 2018

Precedential No. 1: TTAB Okays Service Mark Specimen of Use Thanks to Applicant's Clarifying Information

In the first precedential decision of the new year, the Board reversed the USPTO's refusal to register the mark shown below, for various mailing services, overturning the Examining Attorney's rejection of applicant's specimen of use. The Examining Attorney maintained that applicant's webpage specimen described a self-service kiosk that consumers use to mail and ship items, but did not clearly indicate that applicant itself provides the subject services. The Board, however, ruled that "Applicant's explanation of the specimen and how Applicant provides the outsourced mailing services referenced on the specimen resolved the ambiguity, and the refusal should not have been maintained." In re Pitney Bowes, Inc., Serial No. 86502157 (January 10, 2018) [precedential] (Opinion by Judge Cynthia C. Lynch).

Applicant's specimen of use displayed the applied-for mark next to the wording “pitney bowes” in the upper left corner of a webpage, directly above the wording “Outsourced Mailing Services.” The webpage text states that the postal kiosk pictured and described on the webpage “allows users to mail bills [and] ship packages.”

(click on photo for larger image)

According to the Examining Attorney, the specimen does not show that applicant actually provides the mailing and shipping services. It shows only that applicant provides a kiosk where a purchaser may purchase postage, weigh letters and packages and compare rates. "The Examining Attorney infers from the webpage reference to third-party services, such as those of USPS (the U.S. Postal Service), that the only services provided through the kiosk are not Applicant’s."

Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a service mark is used in commerce “when it is used or displayed in the sale or advertising of services.” See also Trademark Rule 2.56(b)(2). “To determine whether a mark is used in connection with the services described in the [application], a key consideration is the perception of the user.” Relevant to Applicant’s specimens in this case, the webpage must show the mark used or displayed as a service mark in advertising the services.

For advertisement specimens such as Applicant’s webpage, “[i]n order to create the required ‘direct association,’ the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source.” Thus, an acceptable specimen must show “some direct association between the offer of services and the mark sought to be registered therefor.”

Both precedent and examination guidance make clear that in assessing the specimens, consideration must be given not only to the information provided by the specimen itself, but also to any explanations offered by Applicant clarifying the nature, content, or context of use of the specimen that are consistent with what the specimen itself shows.

In the response submitted and signed by Applicant’s in-house counsel, Applicant stated that “[t]hese kiosks are furnished by Applicant and are placed in different locations for use by consumers. Consumers use the kiosk to place postage on a letter or package, and then place that [letter or package] in the receptacle that is part of the kiosk system for Applicant to pick up the letter or package and place it in the mail stream for delivery.”

The response signed by Applicant’s in-house counsel clarified the specimen’s direct reference to “Mailing Services.” Cf. In re U.S. Tsubaki, Inc., 109 USPQ2d 2002 (TTAB 2014) (disregarding outside counsel’s conclusory unverified statements made without proper foundation regarding marketing of goods).

The Board found that applicant's webpage specimen "supports Applicant’s identified 'postal delivery services for letters and packages,' given the proximity of Applicant's mark to the reference to 'Outsourced Mailing Services,' along with the other explanatory text on the webpage (e.g., 'Kiosk allows users to mail bills [and] ship packages').

While the Examining Attorney reasonably found the specimen unclear as to whether Applicant, rather than a third party, provides the services, Applicant’s explanation of the specimen and how Applicant provides the outsourced mailing services referenced on the specimen resolved the ambiguity, and the refusal should not have been maintained.

The Board concluded that the webpage specimen "demonstrates use of the mark in a manner that creates in the minds of potential consumers a direct association between the mark and at least some of the services in the class, and the explanation corroborates this in a manner that removes any doubt."

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Rather fact-specific for a precedential decision, I think. Breaks no new ground as far as I can see. Apparently an in-house counsel's explanation is more probative than an outside counsel's representations (Tsubaki).

Text Copyright John L. Welch 2018.

Tuesday, January 16, 2018

Precedential No. 38: TTAB Excuses Failure to Plead Compulsory Counterclaim in Answer

Here's another 2017 precedential interlocutory ruling that slipped under the TTABlog radar. In this consolidated opposition and cancellation proceeding, the Board considered whether an answer may be amended to add an omitted counterclaim "when justice so requires," or whether under FRCP 15 a compulsory counterclaim must be pleaded in the original answer (unless based on newly discovered grounds). The Board ruled that the failure to plead a compulsory counterclaim in an original answer is not a per se bar to its later assertion in the same proceeding. Jive Software, Inc. v. Jive Communications, Inc., 125 USPQ2d 1175 (TTAB 2017) [precedential].

This proceeding began with an opposition filed on October 14, 2014. Applicant Jive Communications filed its answer on November 5, 2014, without any counterclaim. Beginning on December 12, 2014, the parties sought and obtained numerous suspensions of the opposition in view of settlement negotiations, and the proceeding remained in suspension until May 11, 2017.

Each of the parties then filed two petitions for cancellation. Shortly thereafter, Applicant Jive Communications also filed a motion for leave to amend its answer in the opposition to add a counterclaim for cancellation, and it also sought to amend its answer as a matter of course in one of the cancellation proceedings brought by opposer, to add a counterclaim for cancellation of two of opposer's registrations. Applicant also moved to consolidate all five proceedings.

Opposer Jive Software challenged applicant's amendments and its two petitions for cancellation on the ground that the new claims were compulsory counterclaims that should have been raised in applicant's original answer and therefore were time barred.

The Board observed that, under Trademark Rule 2.106(b)(3)(i),  a "defense attacking the validity of a registration pleaded in an opposition is a compulsory counterclaim if grounds for the counterclaim exist at the time when the answer is filed or are learned during the course of the opposition proceeding."

The purpose of the compulsory counterclaim rule is to avoid multiple proceedings. The Rule states that "[i]f grounds for a counterclaim are known to the applicant when the answer to the opposition is filed, the counterclaim shall be pleaded with or as part of the answer. If grounds for a counterclaim are learned during the course of the opposition proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned." The Board observed that the language of the Rule "does not suggest that the answer may never be amended to include an omitted counterclaim."

The Trademark Rules explicitly provide that “[p]leadings in [Board proceedings] may be amended in the same manner and to the same extent as in a civil action in a United States district court.” Trademark Rule 2.107(a) (oppositions), 2.115 (petitions for cancellation). Federal Rule 15(a), made applicable to inter partes proceedings by Trademark Rule 2.116(a), further provides that “leave [to amend a pleading] shall be freely given when justice so requires.”

The Board has ruled on motions to amend to add an omitted compulsory counterclaim under the Trademark Rules, in view of the flexible standard of Fed. R. Civ. P. 15(a), allowing amendment when justice so requires, even in cases where the counterclaim was not included in the original answer and was not based on newly discovered evidence. [see cited cases].

To be clear, Trademark Rules 2.106(b)(3)(i) and 2.114(b)(3)(i) do not require that, after a defendant’s initial answer, amendment to add an omitted compulsory counterclaim must be denied where the movant has not demonstrated that the counterclaim is based on newly-acquired evidence.

* * * * * * * *

The rules require compulsory counterclaims to be pleaded in the answer, if known, but under Fed. R. Civ. P. 15(a), where justice requires, answers may be amended to add an omitted compulsory counterclaim, subject to the same rules applicable to other amendments to pleadings.

Turning to the circumstance of this case, the Board found that Applicant Jive Communications did not unduly delay by waiting two years after filing its answer to introduce the counterclaim. Applicant’s delay in attempting to amend its answer and assert its counterclaim was limited to the brief period of time during which the case was not suspended. Neither party pointed to any evidence of prejudice caused by the short delay.

Although it would have been better practice for Applicant to plead the counterclaim with its original answer, Applicant’s forbearance from filing an amendment as a matter of course, or later with a motion for leave to amend was not unreasonable.

Moreover, the Board observed, it would be unfair to deem Applicant’s motion to amend untimely just because a few weeks passed after the answer was filed and before proceedings were formally suspended. Opposer Jive Software would not be prejudiced by the amendment, whereas a refusal to allow a compulsory counterclaim "could preclude Applicant from raising those claims in any subsequent proceeding between these parties."

Taking all circumstances into account, and applying the liberal standards of Rule 15, the Board ruled in favor of applicant on the subject motion to amend and it deemed the its two petitions for cancellation to be timely. The Board also ordered consolidation of the proceedings in view of their common claims of priority and likelihood of confusion as to the parties’ marks.

Read comments and post your comment here.

TTABlog comment: Lack of prejudice seems to be the key, provided one doesn't wait too long.

Text Copyright John L. Welch 2018.

Friday, January 12, 2018

Precedential No. 37: Applying Revised Rules, TTAB Denies Motion for Judgment on the Pleadings as Untimely

Here's a 2017 ruling that slipped under the TTABLog radar. In this precedential order, the Board denied an FRCP 12(c) motion for judgment on the pleadings, directed at applicant's counterclaims, because the motion was untimely. The Board followed its established practice of applying to motions for judgment on the pleadings the same deadline applicable to summary judgment motions under recently amended Rule 2.127(e)(1). Shared, LLC v. SharedSpaceofAtlanta, LLC, 125 USPQ2d 1143 (TTAB 2017) [precedential].

A motion for judgment on the pleadings, like a summary judgment motion, is "a pretrial device intended to save the time and expense of a full trial when a party is able to demonstrate, prior to trial, that there is no genuine dispute of material fact to be resolved, and the moving party is entitled to judgment on the substantive merits of the controversy as a matter of law."

According to TBMP § 504.01 (June 2017), a motion for judgment on the pleadings should be filed "[a]fter the pleadings are closed, but within such time as not to delay the trial." More significantly, FRCP 12(c) states that "After the pleadings are closed — but early enough not to delay trial — a party may move for judgment on the pleadings." The Board’s "established practice" has been to apply to such motions the deadline that applies to summary judgment motions as set forth in Trademark Rule 2.127(e)(1).

Before January 14, 2017, the deadline for filing a summary judgment was, according to Rule 2.127(e)(1), "prior to the commencement of the first testimony period, as originally set or as reset." That Rule was amended as of January 14, 2017, and clarified on July 21, 2017, to provide that a summary judgment motion "must be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset." [Emphasis supplied].

Applying the new summary judgment deadline to the subject FRCP 12(c) motion, the Board ruled that a motion for judgment on the pleadings must likewise be filed before the day of the deadline for pretrial disclosures for the first testimony period, as originally set or as reset.

Here, the deadline for opposer’s pretrial disclosures, as reset in the Board’s July 26, 2017 order, was August 7, 2017 (fifteen days before the opening of opposer's testimony period on August 22). Opposer’s motion filed August 19, 2017 was therefore untimely, and so the Board denied the motion.

Read comments and post your comment here.

TTABlog comment: Well, that's a neatly wrapped little package.

Text Copyright John L. Welch 2018.

Wednesday, January 10, 2018

TTAB Test: Are These Two Stylized "P" Marks Confusingly Similar for Cigars?

The USPTO refused registration of the mark shown below left, finding it likely to cause confusion with the mark shown below right, both for cigars. On appeal, applicant argued that the customers for its "high-end" cigars are sophisticated and selective, and furthermore that four third-party registrations for marks containing the letter "P" demonstrate that the cited mark is weak. How do you think this came out? In re Plasencia 1865, LLC, Serial No. 87147187 (January 9, 2018) [not precedential] (Opinion by Judge Karen Kuhlke).

Of course, because the goods in the application and cited registration are identical, the Board must presume that they travel in the same channels of trade to the same classes of consumers. Applicant's argument regarding the nature of its cigars and the sophistication of its consumers was irrelevant, since no such limitations appear in the application at issue. Moreover, the was no evidence that consumers of cigars, in general, are sophisticated or careful in selecting these products, and in any event the Board must consider the "least sophisticated potential purchasers" in making its determination.

As to the marks, both include a conventional typeface that is "not particularly distinctive." The most significant distinction is the slightly different position of the letter P within the circle, but the Board found the overall visual differences to be minor. The marks are similar in pronunciation and, to the extent they have any meaning, the meanings would be the same. Any differences in how the marks are actually used - i.e, always with another trademark - are irrelevant.

The four registered marks cited by applicant different from the marks at issue in significant ways because they included design or additional lettering or words, and are not for the letter P by itself or in a design. (see opinion, page 7). Without evidence of actual use, these four registrations have no impact on the issue of the weakness of the cited mark

Applicant submitted photographs showing that two cigar brands use the term "SERIES P," but there was no evidence that the letter P has any significance or meaning in connection with cigars. The cited mark, on this record, is apparently arbitrary and therefore inherently distinctive for cigars.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: My favorite cigar brand is "It's a Girl!"

Text Copyright John L. Welch 2018.

TTAB Issued 36 Precedential Rulings in 2017

The TTAB issued three dozen (36) precedential opinions in calendar 2017. Among the more interesting ones, the Board considered the registrability of the color yellow for a cereal box, again deemed PRETZEL CRISPS generic for pretzel crackers, and affirmed two refusal under the flag/insignia prohibition of Section 2(b). It rejected three product configuration marks due to functionality under Section 2(e)(5), continued to downplay the rareness factor in Section 2(e)(4) surname refusals, and dealt with two phantom mark refusals, affirming one and reversing one.

Section 2(a) - Deceptiveness:
Section 2(b) - Flag, Coat of Arms, or Other Insignia:
Section 2(d) - Likelihood of Confusion:

Section 2(e)(1) - Mere Descriptiveness
    Section 2(e)(4) - Primarily Merely a Surname::
    Section 2(e)(5) - Functionality::
    Section 2(f): Acquired Distinctiveness:

    Application Requirements/Lawful Use/Specimen of Use:
    Certification Mark Control:

    Failure to Function/Phantom Mark:

    Text Copyright John L. Welch 2017-2018.

    Monday, January 08, 2018

    The Top Ten TTAB Decisions of 2017 [Part II]

    This is the second of two posts; the first five selections were posted here. Additional commentary on each case may be found at the linked TTABlog postings. The cases are not necessarily listed in order of importance (whatever that means).

    Estudi Moline Dissey, S.L. v. BioUrn Incorporated, Cancellation No. 92061508, 123 USPQ2d 1268 (TTAB 2017) [precedential] [TTABlogged here]. Addressing the revised Trademark Rules of Practice that came into effect on January 14, 2017, the Board found that petitioner had served its discovery requests too late. Rule 2.120(a)(3) now requires that written discovery requests be served early enough in the discovery period that responses will be due no later than the close of discovery. A responding party must serve its responses (by email) within 30 days of service of the requests. Here, the last day to serve discovery (31 days before the end of the discovery period, not counting the day of service) was February 19, 2017. Because that was a Sunday, petitioner concluded that, under Rule 2.196, it had until the next business day, Monday, February 20, to timely serve its discovery requests. Not so, said the Board. In light of the revision of Rule 2.120(a)(3), Rule 2.196 no longer applies to the deadline for service of written discovery requests. Nonetheless, because this case was commenced under the old rules, the current dispute arose during the transition to the new rules, and the dispute involves a scheduling matter, the Board exercised its discretion to reopen discovery for the limited purpose of allowing respondent time to respond to petitioner’s (tardy) written discovery requests.

    In re United Trademark Holdings, Inc., 122 USPQ2d 1796 (TTAB 2017) [precedential] (Opinion by Judge Marc A. Bergsman). [TTABlogged here].  Affirming a Section 2(e)(1) refusal of LITTLE MERMAID, the Board found the mark merely descriptive of “dolls,” concluding that consumers will not perceive LITTLE MERMAID as a source identifier but instead will “understand the mark to describe the public domain character in the Hans Christian Andersen fairy tale, as well as a young or little mermaid.” The Board observed that its case law draws a distinction between “situations where the character is in the public domain and where the applicant owns intellectual property rights in the work from which the character arose.” [E.g., SUPERMAN]. A fictional public domain character like the Little Mermaid is not necessarily linked to a specific entity. “[P]rospective purchasers expect dolls labeled as LITTLE MERMAID to represent the fairy tale character and, thus, [the mark] describes the purpose or function of the goods (i.e., to represent the Little Mermaid of the fairy tale).” Other doll makers have a competitive need to use the name LITTLE MERMAID to describe their products.

    In re Shabby Chic Brands LLC
    , 122 USPQ2d 1139 (TTAB 2017) [precedential] (Opinion by Judge Thomas Shaw) [TTABlogged here]. The TTAB affirmed a Section 2(b) refusal of the mark shown below left, for various goods including furniture, dinnerware, and fabrics, on the ground that the mark comprises a design that simulates a governmental insignia of the United Kingdom, namely, the Prince of Wales’ emblem, shown below right. Section 2(b) bars registration of a mark that “[c]onsists of or comprises the flag or coat of arms or other insignia ... of any foreign nation, or any simulation thereof.” The Government of the United Kingdom identified the emblem as “[t]he official emblem of the Prince of Wales” when it notified WIPO in 2005, under the Paris Convention, that this emblem is a ‘state emblem’ of the United Kingdom. The emblem is included in the USPTO database and may form the basis of a Section 2(a) or 2(b) refusal. The Board concluded that the Prince of Wales’ emblem is an “insignia of national authority” on a par with a coat of arms. In determining whether the mark is a “simulation” of the emblem, the Board must consider the “first impression gathered from a view of such mark without a careful analysis and side-by-side comparison ....” The Board concluded that that the similarities in the commercial impressions of the marks outweighed their differences and it found that the applied-for mark is a simulation of the Prince of Wales’ emblem. Applicant also asserted that its mark has co-existed with the Prince of Wales' emblem for 13 years without objection or confusion, but the Board pointed out that absence of objection or confusion is irrelevant, since Section 2(b) is an absolute bar, and confusion plays no part in the analysis.

    In re Empire Tech. Dev. LLC, 123 USPQ2d 1268 (TTAB 2017) [precedential] (Opinion by Judge Christopher Larkin) [TTABlogged here]. Affirming a refusal to register COFFEE FLOUR on the Supplemental Register, the Board found the term to be generic for “flour made by processing and blending together coffee cherry skins, pulp, and pectin for use, alone or in combination with other plant and milk based products, as a dry ingredient in food and beverage products for consumer use.” After an exhaustive review of the evidence, the Board concluded that relevant consumers understand the term to refer to flour made from the skin, pulp, and pectin of the coffee cherry portion of the coffee plant. “Applicant itself has communicated this meaning of the term ‘coffee flour’ to the public, and the articles in the record, from which we can infer the public’s understanding of the term, show that this message has been received and understood.” The Board noted that this appeal involves the rare situation in which an applicant has created a new genus of goods by being the first (and apparently the only) producer and seller of a new product. Professor McCarthy has noted the branding challenges involved: “If the public adopts as the generic name of the thing the word that the seller thinks is a mark, then it is no longer a mark at all....” He suggests that the creator adopt two new words - the mark and the generic name.

    Tao Licensing, LLC v. Bender Consulting Ltd. d/b/a Asian Pacific Beverages, 125 USPQ2d 1043 (TTAB 2017) [precedential] (Opinion by Judge Cynthia C. Lynch) [TTABlogged here]. The Board granted a petition for cancellation of a registration for the mark TAO VODKA for “alcoholic beverages except beer” (VODKA disclaimed) on two grounds: nonuse and likelihood of confusion with petitioner’s registered and famous mark TAO for restaurant and nightclub services. Nonuse: Respondent conceded that, prior to filing its Statement of Use, it had not sold any goods under the mark TAO VODKA, but it contended that the distribution of samples to three entities – a restaurant, a distributor, and a shareholder of a related entity – sufficed. The Board concluded that the “sharing of these samples ... was more in the nature of a preliminary advisory consultation than bona fide use of the TAO VODKA mark in the ordinary course of trade.” Likelihood of confusion: The Board found the “something more” required to establish that alcoholic beverages and restaurant services are related, in the facts that Petitioner uses its TAO mark to promote alcoholic beverages and sometimes engages in joint promotional efforts with vodka manufacturers, and in respondent’s “eyebrow-raising activities” in choosing its mark after petitioner refused to purchase its vodka, including adoption of a font very similar to the font used by petitioner, showing that respondent itself “believed that consumers would view respondent’s vodka and petitioner’s services as related.”

    Read comments and post your comment here.

    TTABlog comment: Do you have other cases to suggest?

    Text Copyright John L. Welch 2017-18.

    Friday, January 05, 2018

    The Top Ten TTAB Decisions of 2017 [Part I]

    The TTABlogger has once again chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year (i.e., 2017). This is the first of two posts, the first five selections being set out below. Additional commentary on each case may be found at the linked TTABlog postings]. The cases are not necessarily listed in order of importance (whatever that means).

    In re General Mills IP Holdings II, LLC, 124 USPQ2d 1016 (TTAB 2017) [precedential] (Opinion by Judge Anthony R. Masiello). [TTABlogged here]. Affirming a refusal to register the color yellow appearing on packaging for "toroidal-shaped, oat-based breakfast cereal" (i.e., CHEERIOS®), 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 Section 2(f) claim, 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." The Board pointed out that, "[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). The presence in the market of yellow-packaged cereals from various sources – including cereals that are not made of oats or are not toroidal in shape –undermined any possible source significance for the color yellow. 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.

    Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184 (TTAB 2017) [precedential] (Opinion by Judge Lorelei Ritchie). [TTABlogged here]. On remand from the CAFC, the TTAB again ruled that PRETZEL CRISPS is generic for pretzel crackers. In a May 2015 ruling, the CAFC vacated the Board’s earlier decision with instructions to apply the correct legal standard, namely the two-part test set forth in the Marvin Ginn decision. The CAFC concluded that the Board had failed to consider evidence of the relevant public’s understanding of the term PRETZEL CRISPS as a whole. Furthermore, the Board was directed to give “appropriate consideration to the proffered survey evidence.” The Board weighed the dictionary definitions of “pretzel” and “crisp,” results of LexisNexis database searches of “pretzel crisps,” media references, negative dictionary evidence, and consumer feedback. The “Teflon” survey results submitted by the parties were deemed irrelevant because the Teflon format is not appropriate for a term that is not inherently distinctive, and in any case the survey methods were flawed. The Board found that Frito-Lay had proven by a preponderance of the evidence that PRETZEL CRISPS is generic for “pretzel crackers.” Assuming arguendo that PRETZEL CRISPS is not generic, the Board also found Princeton Vanguard’s evidence of acquired distinctiveness insufficient under Section 2(f).

    In re Beds & Bars Limited, 122 USPQ2d 1546 (TTAB 2017) [precedential] (Opinion by Judge T. Jeffrey Quinn). [TTABlogged here]. In yet another decision downplaying the surname rareness factor, the Board affirmed a Section 2(e)(4) refusal of the mark BELUSHI’S for various travel, hotel, and restaurant services, finding it to be primarily merely a surname. Although BELUSHI is an “exceedingly rare” surname (only five people in the U.S. are named BELUSHI), “the celebrity of John Belushi and the continuing media attention on Jim Belushi support a finding that a substantial portion of Americans know BELUSHI to be a surname.” Applicant focused on the rarity of the surname, arguing that “because there are only five people in the entire United States with the surname Belushi, substantially no one will be adversely affected by the registration of Applicant’s mark BELUSHI’S.” The examining attorney pointed to the fame and publicity of the Belushi brothers, John and Jim, in the television and film industries, which greatly increases the public’s awareness of BELUSHI as a surname. The Board observed that that “[e]ven a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname.” It found that BELUSHI “is so well-known as a result of media publicity that it would be immediately recognized as a surname.”

    In re University of Miami, 123 USPQ2d 1075 (TTAB 2017) [precedential] (Opinion by Judge Susan J. Hightower). [TTABlogged here]. The Board reversed two refusals to register the mark shown below, for various products and services, finding that the design comprised neither a mutilation of the mark as actually used, nor a phantom mark. The applied-for mark, which “consists of an ibis wearing a hat and a sweater,” depicts the mascot of the University of Miami, Sebastian the Ibis. Mutilation: An applicant must submit a drawing that is a “substantially exact representation of the mark” as used. See Rule 2.51(a). Here the mark in the drawing differed from the mark as used in several ways: in use, a stylized letter “U” appeared in the center of the hat; the word “Miami” was displayed on the front of the sweater, and the sweater had striping along the side and shoulders. The Board found that the applied-for design mark creates a separate and distinct commercial impression from the letter “U” and the word “Miami” that appear on the specimens of use, and further that the stripes on the sweater are merely a minor alteration. The Board concluded that “the overall display on the specimens creates the commercial impression of a personified ibis.” Phantom Mark: Neither the drawing nor the mark description identified a changeable or missing element. The extra elements that appear within the ibis design on the specimens of use are not “integral to Applicant’s mark.” In short, applicant was not seeking to register multiple marks.

    Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477 (TTAB 2017) [precedential] (Opinion by Judge Karen Kuhlke). [TTABlogged here]. Because Opposer Luxco failed to prove its claims of genericness, lack of legitimate control, and fraud, the Board dismissed this opposition to registration of the mark TEQUILA as a certification mark for “distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant.” A certification mark that certifies regional origin as well as the qualities and characteristics associated with that origin “will not be deemed to have become a generic term as applied to particular goods unless it has lost its significance as an indicator of origin for those goods.” Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1887 (TTAB 2006). The Board reviewed dictionary definitions of “tequila,” encyclopedia and website references, several expert reports, advertising and bottle labels for Tequila, recipes, news articles, retail signage, and consumer survey results. It found that the record evidence was, at best, mixed, and “tends to show that Tequila has significance as a designation of geographic origin.” In short, Luxco did not meet its burden to prove genericness by a preponderance of the evidence, and so the Board dismissed that claim. It further found that CRT exercised legitimate control over the mark, and there was nothing in the record - “not one iota of evidence” - to support the claim that CRT made a false statement or intended to deceive the USPTO.

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    TTABlog comment: Thoughts? Should I go to 11 instead of 10?

    Text Copyright John L. Welch 2017-18.