Monday, October 16, 2017

TTAB Rejects 5-Year Acquired Distinctiveness Claim Due To Lack of Continuous Use

In a rare opposition based on the ground of Section 2(e)(2) geographical descriptiveness, the Board rejected applicant's Section 2(f) claim of acquired distinctiveness based on five years of use, finding that applicant's use had not been continuous during that period. John Edward Guzman d/b/a Club Ed Surf School and Camp v. The New Santa Cruz Surf School, LLC, Opposition No. 91220843 (October 13, 2017) [not precedential] (Opinion by Judge Albert Zervas).


Applicant New Santa Cruz sought to register the mark SANTA CRUZ SURF SCHOOL for surfing instruction and related website services [SURF SCHOOL disclaimed]. Applicant overcame the Section 2(e)(2) refusal when the USPTO accepted its claim of acquired distinctiveness based solely on a statement of substantially exclusive and continuous use of the mark for at least the prior five years.

Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), provides that “proof of substantially exclusive and continuous use” of a designation “as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made” may be accepted as prima facie evidence that the mark has acquired distinctiveness as used in commerce with the applicant’s goods or services. Applicant's declaration under Section 2(f) was dated November 25, 2014.

The Board pointed out that when the term at issue is "highly descriptive," a statement of five years’ use alone will be deemed insufficient to establish acquired distinctiveness. Here there was no evidence that SANTA CRUZ SURF SCHOOL is highly descriptive of applicant' services, and so the Board found that "the designation has an ordinary level of descriptiveness and that a declaration attesting to substantially exclusive and continuous use of a designation as a mark in commerce for the five years before the date on which the claim of distinctiveness is made may establish acquired distinctiveness of Applicant’s designation."

Exclusive Use: Dylan Greiner, owner of applicant's predecessor-in-interest testified that no other entity was using the applied-for mark after his company acquired the mark in 2000 or 2001. In December 2013, Applicant New Santa Cruz acquired the mark from Greiner's company. Opposer Guzman provided no probative evidence to show use of the phrase by others, and so opposer did not carry its burden on this point.

Continuous Use: Dylan Greiner owned and operated Santa Cruz Surf School, Inc. in Santa Cruz, California from 2009 to approximately August 16, 2013, when he was arrested and imprisoned. As to the acquisition of the business by applicant in December 2013, "the Business Sale Agreement provides insight into the condition of the business purchased by Mr. Meyberg:"

The business has not been operating for several months. The business currently does not have a physical business  location due to cancellation of the commercial lease. The insurance policy which is required to operate the business was cancelled. The website is not operating and has an outstanding bill. Numerous independent contract[or]s who taught lessons were never paid their last pay check. The business operating permit will expire at the end of December 2013 and the City of Santa Cruz’s Parks and Recreation Department’s Heads have expressed their intent to not renew the operating permit. The vehicle trailer is not registered. The business’ reputation and good will has been substantially diminished.

The Board found this document admissible under an exception to the hearsay rule for "Statements in Documents That Affect an Interest in Property." Fed. R. Evid. § 803(15).

The Board concluded that the Santa Cruz Surf School was not in operation from at least the time of Mr. Greiner’s arrest until the purchase of the surf school by Applicant, a period of four months in the fall of 2013. Moreover, there was no documentary evidence that applicant’s predecessor and applicant offered surfing lessons or the rental of surfboards for more than than one year period after Mr. Greiner’s arrest. The Board concluded that the mark was not used from approximately August 16, 2013 until after November 5, 2014 for the identified services.

As to the website services, the Business Sale Agreement states that the website was not operating and had an outstanding bill. The Board therefore concluded that the applied-for mark was not in continuous use for five years preceding the date of the Meyberg declaration.


Other Evidence: Putting aside the Section 2(f) declaration, the Board looked to the evidence of record to see whether it supported a claim of acquired distinctiveness. "At best, Applicant’s evidence reflects use of SANTA CRUZ SURF SCHOOL from approximately 1997until trial, with an interruption of more than one year from late 2013 through 2014. The passages of time, by itself, may be insufficient to support the Section 2(f) claim.

The Board concluded that "Applicant and its predecessors-in-interest have provided the services identified in the involved application to only a limited number of customers on an irregular basis. We therefore conclude that Applicant has not satisfied its burden of demonstrating that SANTA CRUZ SURF SCHOOL has acquired distinctiveness."

And so the Board sustained the opposition on the ground that SANTA CRUZ SURF SCHOOL is primarily geographically descriptive under Section 2(e)(2) and has not acquired distinctiveness.

Read comments and post your comment here.

TTABlog comment: Note that the 15-month period of nonuse was not considered as abandonment abandonment of the mark, presumably because it was too short a time, and there was an intent to resume use.

Text Copyright John L. Welch 2017.

Friday, October 13, 2017

GREATER OMAHA Not Confusable With OMAHA STEAKS for Meat, Says TTAB

In a 74-page opinion, the Board dismissed an opposition to the mark GREATER OMAHA & Design, shown below left, finding the mark not likely to cause confusion with the registered mark OMAHA STEAKS, both for meat. However, it sustained petitions to cancel registrations for the marks shown below center and right, finding the marks to be confusable with the registered marks OMAHA STEAKS and OMAHA STEAKS ANGUS, respectively. Omaha Steaks International, Inc. v. Greater Omaha Packing Co., Inc., Consolidated Opposition No. 91213527 and Cancellations Nos. 92059629 and 92059455 (September 30, 2017) [not precedential] (Opinion by Judge Jyll Taylor).


GREATER OMAHA & Design: Plaintiff Omaha Steaks, Inc. claimed that its OMAHA STEAKS mark is famous, but its evidence lacked context and failed to convey the extent to which customers recognize the mark. It sales figures were impressive, but there was no indication as to how they translate into market share. The Board was uncertain as to which of the OMAHA STEAKS marks was being advertised and how they are perceived by customers.

In view of the extreme deference accorded to famous marks, a party claiming fame must "clearly prove it." Plaintiff demonstrated a "reasonable degree of recognition," but the evidence was insufficient to support a finding that the marks are famous, "particularly in light of the fact that Petitioner's OMAHA STEAKS marks are not inherently distinctive."

Defendant asserted that the OMAHA STEAKS marks are extremely weak due to third party use and registration of marks and names in which the first word is OMAHA, for beer or food services. Moreover, the city of Omaha, Nebraska, is widely known as a geographic source of beef. In addition, defendant has used the GREATER OMAHA mark for 96 years, has sold its products to plaintiff since the 1950s, and its sales have increased to nearly $1.7 billion in 2015. Therefore, defendant contended, consumers have been conditioned to associate GREATER OMAHA with defendant, further proving the weakness of the OMAHA STEAKS mark.

Citing Jack Wolfskin and Juice Generation, the Board found that the designation OMAHA, when used in a mark, "may be perceived as an indication of the geographic location of the producer of the goods or the geographic origin of the goods themselves. Because many companies may be located in OMAHA, the power of this term to indicate a single commercial source is reduced." Consequently, a mark comprising the word OMAHA for the involved goods and/or services is entitled to only a narrow scope of protection.


Turning to the marks, defendant's mark is dominated by the phrase GREATER OMAHA, while plaintiff's is dominated by OMAHA, since STEAKS has been disclaimed. Even though defendant disclaimed all of the words in its mark, the words cannot be ignored, and the words GREATER OMAHA can still be dominant.

The Board found the word GREATER to be a "prominent point of difference that causes Defendant's marks to differ in appearance and sound from Plaintiff's mark." The additional wording in each mark also contributes to the differences between the marks.

In short, although there are similarities between the marks, the marks are specifically different in sound, appearance and meaning. When the geographically descriptive term “Omaha” is viewed with the evidence of third-party uses of OMAHA trademarks and trade names, these differences outweigh the similarities, resulting in different overall commercial impressions.

The Other Two: The Board found that defendant's registered marks are dominated by the words OMAHA HEREFORD and OMAHA NATURAL ANGUS, respectively. Although the word OMAHA in plaintiff's marks is weak, the Board did not find any elements to distinguish defendant's marks form plaintiff's marks.

Laches: Plaintiff delayed for 46 months before filing its petition for cancellation of the OMAHA NATURAL ANGUS registration. However, the Board found laches inapplicable for two reasons: first, plaintiff's delay was excusable because defendant had not been in the retail market space until it recently contemplated a move in that direction; and second, confusion between the marks is inevitable.

Read comments and post your comment here.

TTABlog comment: Hat tip to Friend of the Blog and fellow Bostonian, Steve Samuels, for his efforts on behalf of Greater Omaha.

Text Copyright John L. Welch 2017.

Thursday, October 12, 2017

Precedential No. 32: TTAB Defers Decision on Motion to Strike Testimony Declaration

In this consolidated proceeding concerning the mark LEHMAN BROTHERS, Tiger Lily Ventures Ltd. moved to strike certain testimony and evidence submitted by Barclays Capital Inc. during the latter's case-in-chief, on both procedural and substantive grounds. The Board struck some of Barclays' evidence but refused to rule regarding the admissibility of two testimonial declarations, deferring that question until trial.  Barclays Capital Inc. v. Tiger Lily Ventures Ltd., Oppositions Nos. 91219477, 91219478, and 91219549 (September 20, 2017) [precedential].


The Board found that Tiger Lily's procedural objections were timely, since they were promptly raised after the close of Barclays' initial testimony period, while there was still an opportunity to cure. Tiger Lily objected to the descriptions of the evidence included in four notices of reliance. Rule 2.122(g) requires that a notice of reliance indicate generally the relevance of the evidence and associate it with one or more of the issues in the proceeding. 

The Board found two of Barclays' notices of reliance to be acceptable, but the other two to be inadequate in part because they failed to indicate which pages of certain exhibits related to which du Pont factor, or which element of Barclays' dilution claim, or which element of its false association claim, or which defense to a particular claim made by Tiger Lily. And so the motion to strike was granted in part, but with leave to amend the notices of reliance within 20 days.

The Board also granted Tiger Lily's motion to strike from the record certain press releases of Barclays (not publications in general circulation), but denied a motion to strike several financial reports downloaded from the LEXIS/NEXIS online database, noting however that such reports have limited probative value and cannot be used to prove the truth of facts stated therein.

Substantive Ruling: Tiger Lily objected to the admissibility of two testimonial declarations, but the Board pointed out that such objections are considered by the Board only at final hearing. In particular, Tiger Lily contended that the declarations of Barclays' in-house counsel and of a paralegal at its outside counsel's firm should be stricken because of bias and lack of credibility. Tiger Lily suggested that the testimony is inappropriate under 37 C.F.R. Section 10.63 (now Section 11.307) which states that an attorney must withdraw from representation of a party if it appears that the attorney is likely to appear as a witness or becomes a witness for that party.

Tiger Lily maintained that the issue should be decided now because, under Rule 2.123(c), a "cost-shifting burden" has been imposed on the party who wishes to cross-examine the declarant. In the face of clear precedent against an attorney giving evidence, Tiger Lily argued, it would unnecessarily burden the cross-examining party by inflating the costs of the deposition process, costs that could be saved by an early ruling.

The Board was unmoved. It noted that even with oral testimony, the cross-examining party must pay its own travel expense and attorney fees. Thus the new costs to the cross-examining party are the court reporter and the cost of the venue. This minor cost-shifting was determined "to support the goal of the final rule to create litigation efficiencies by 'minimiz[ing] the ability of a party seeking cross-examination to thwart the other party's efforts to rein in the cost of litigation by opting for testimony by affidavit.'"

Moreover, Tiger Lily need not cross-examine the declarants in order to lodge its objections. It could forego cross examination and still raise the matter in its final brief. "Thus there is not necessarily a cost-shifting burden incurred solely for raising substantive objections."

The fact that a party may choose to submit its testimony by way of declaration or affidavit does not affect how evidence is presented to the Board: outside its presence followed by submission to a panel of judges for decision.

Rule 2.123(f) states that "[o]bjections to the competency of a witness or to the competency, relevancy, or materiality of testimony ... may not be considered until final hearing." Accordingly the Board deferred until final hearing the decision on the motion to strike the two declarations. 

Read comments and post your comment

TTABlog comment: The cost-shifting of Rule 2.123(c) was also the subject of the recent precedential decision in United States Postal Service v. RPost Communication Limited, Opposition No. 91210479 (August 31, 2017) [TTABlogged here].

Text Copyright John L. Welch 2017.

Wednesday, October 11, 2017

TTABlog Road Trip: AIPLA Annual Meeting, Washington, D.C., October 21st

Yours truly, the TTABlogger, will be heading down to our Nation's Capital for the 2017 Annual Meeting of the American Intellectual Property Law Association (AIPLA) in Washington, D.C. (Register here). The "Year In Review" will be presented on Saturday morning, October 21st. My topic? Wait for it .............. TTAB Developments! (Brochure here).


Read comments and post your comment here.

Text Copyright John L. Welch 2017.

TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?

It has been said that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the goods or services. Presented for your contemplation are three recent TTAB decisions in Section 2(d) appeals. One was reversed. What do you think? [Answer in first comment].


In re Nikon Corporation, Serial No. 86828751 ((October 6, 2017) [not precedential] [Section 2(d) refusal to register the mark MMD (in standard characters) for “laser scanners for industrial inspection and for geometrical measurement, and not for use with land surveying equipment; software for collection and interpretation of data in the operation of laser scanners, not for use with land surveying equipment,” in view of the registered mark shown below for "levelling rods; surveying chains; surveying compass needles; surveying instruments; surveying machines and instruments; transits; tripods”].


In re Ruby A. Bacardi, Serial No. 86809072 (October 3, 2017) [not precedential] [Section 2(d) refusals of the marks THIRTEEN 1330 and 1330 for "Clothing, namely, dresses, skirts, blouses, shirts, pants, and jackets," in view of the registered mark LOGAN 1330 for various clothing items].


In re Benchmark Brewing LLC, Serial No. 86586142 (September 29, 2017) [not precedential] [Section 2(d) refusal of the mark BENCHMARK BREWING COMPANY for "taproom services" [BREWING COMPANY disclaimed] in view of the word + design mark shown below for "restaurant services [RESTAURANT disclaimed]].


Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

Tuesday, October 10, 2017

TTAB Test: Is "PERSON" Merely Descriptive of Wearable Electronic Devices?

The USPTO refused registration of the applied-for mark PERSON, finding it merely descriptive of  wearable computers, wearable electronic devices, smart watches, and other goods. The examining attorney maintained that the term "describes a significant feature of these goods for wear on the human body, distinguishing them from a wearable device for, for example a dog or horse." How do you think this appeal came out? In re Caleb Suresh Motupalli, Serial No. 86573858 (October 2, 2017) [not precedential] (Opinion by Judge Thomas W. Wellington).


The examining attorney's evidence of mere descriptiveness was minimal. She submitted two examples of third-party use of the term "person" in connection with wearable electronic devices, and dictionary definitions of "person" (a human being) and "consumer" (a person who buys goods and services). Internet excerpts showed the term "wearable computing" to mean "electronic devices that are worn on the body or clothes."  From this evidence the examining attorney concluded that the applied-for mark "describes the intended use of the goods."

Applicant Motupalli, appearing pro se, argued that the examining attorney took too broad an approach; "if PERSON is descriptive for this reason then it is descriptive of virtually all goods, as long as the goods are used by humans." The examining attorney agreed that "Applicant has correctly stated the policy."

On the scant evidence of record, the Board found that PERSON, by itself, does not "convey any meaningful information regarding a quality, feature, function, characteristic or purpose of the identified goods." The term is extremely broad: a "person" will be the consumer for all goods and service imaginable.

There is insufficient evidence demonstrating that consumers would readily understand it in connection with the identified goods as conveying the information that the intended end user is a human being. The “immediate idea” of a quality, feature, function, or characteristic of the goods or services conveyed by a descriptive term “must be conveyed forthwith with a ‘degree of particularity.’”

The Board found that PERSON does not convey such an "immediate idea" with "a degree of particularity." The term is "too vague as to what or how a "person" is being referred to - whether it is the consumer, the end user of the goods, or if the term is somehow an expression of the goods being worn 'on the person' - rendering the mark at least suggestive, not merely descriptive, of the goods and thus registrable on the Principal Register."

And so the Board reversed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

Friday, October 06, 2017

Precedential No. 31: TTAB Dismisses Section 2(d) Claim Due to Lack of Use of Opposer's Foreign Mark in USA

Because opposer failed to allege use of her mark SULBING in the United States, the Board dismissed her claim of likelihood of confusion under Section 2(d). The Board observed that the "well known mark" doctrine does not provide a basis for a Section 2(d) claim, nor does the United States-Korea Free Trade Agreement. However, opposer's claim that the opposed application was void ab initio due to non-use survived the motion to dismiss. Sun Hee Jung v. Magic Snow, LLC, Opposition No. 91226056 (September 20, 2017) [precedential].


Opposer Sun Hee Jung alleged, in a second amended notice of opposition, that she filed applications with the USPTO to register her marks (containing the word SULBING) under Sections 1(b) or 66(a) of the Trademark Act, and that her marks had become famous to Korea-Americans in the United States and had acquired secondary meaning by means of her website, social media, and persons traveling between Korea and this country. However, she did not allege that her marks were in use in the United States. [Note: here applications were filed after applicant's filing date, and so her applications could not provide priority].

Section 2(d) expressly requires that an opposer establish either a mark registered in the United States or "a mark or trade name previously used in the United States." Opposer was relying on the so-called "well-known mark" doctrine, under which "a party asserts that its mark, while yet unused in the United States, has become so well known here that it may not be registered by another." Fiat Grp. Autos. S.p.A. v. ISM Inc.,  94 USPQ2d 1111, 1113 (TTAB 2010).

The Board pointed out, however, that this doctrine "provides no basis for a Section 2(d) ground for opposition because it does not establish use of the mark in the United States as required by the statutory language of the section." See Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d1587, 1592 n.4 (TTAB 2009). The Board does not recognize the well known marks doctrine as a basis for establishing priority in inter partes proceedings, and so opposer's pleading of priority under Section 2(d) was insufficient.

The Board therefore dismissed the Section 2(d) claim with prejudice, observing that further attempts to plead the claim would be futile.

Opposer also invoked the United States-Korea Free Trade Agreement ("KORUS"), but it was not clear whether she meant to assert an independent cause of action, or whether this was part of her claim of priority and likelihood of confusion under the "well known mark" doctrine. In any event, KORUS (like the Paris Convention) is not self-executing and does not provide an independent cause of action in Board proceedings. If KORUS was invoked in support of opposer's Section 2(d) claim, it failed, for the reasons discussed above, to establish priority.

Finally, turning to opposer's non-use claim, the Board observed that an application may be opposed on the basis that the mark was not in use in commerce on the identified goods or services at the time that the use-based application was filed, or at the time an allegation of use was filed in a Section 1(b) application.

Opposer alleged that applicant Magic Snow had only one store, located in Virginia, at the time it filed its allegation of use, that applicant's sales were made in person to individuals at its store, and that such use was not in regulable commerce: i.e., applicant's use was intrastate and not in "commerce" as defined by the Trademark Act.

The Board, however, pointed out that goods need not cross state lines in order that Congress may regulate that activity under the Commerce Clause. Christian Fellowship Church v. adidas AG, 120 USPQ2d 1640, 1646 (Fed. Cir. 2016). Similarly, services need not be rendered in more than one state to satisfy the use-in-commerce requirement. Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 18 USPQ2d 1292, 1295 (Fed. Cir.  1991).

Opposer alleged that Magic Snow's services are limited to intrastate commerce, but it failed to allege that "Applicant's rendering of its services, in the aggregate, does not have an effect on commerce that is regulable by Congress." Therefore, the Board found that opposer had failed to adequately plead her non-use claim, and it granted the motion to dismiss.

However, the Board allowed applicant twenty days within which to re-plead her non-use claim.

Read comments and post your comment here.

TTABlog comment: Does opposer have a claim under Section 43(a)? The Fourth Circuit ruled that Bayer had such a claim even though its mark FLANAX is not used in the United States.

BTW, even if properly pleaded, opposer's non-use claim seems doomed to failure on the merits. What do you think?

Text Copyright John L. Welch 2017.

Thursday, October 05, 2017

Precedential No. 30: Party that Cross-Examines Testimony Declarant Bears The Expenses

In this opposition to registration of the mark CERTIFIED EMAIL for various email services, Opposer USPS submitted the testimony declarations of four witnesses, all located in the Washington, D.C. area. Applicant RPost served a notice to take oral cross-examination of these witnesses at its attorney's offices in Santa Monica, California. USPS moved to quash the notice of election and to require RPost to conduct the oral cross-examinations in Washington, D.C. The Board granted the motion. United States Postal Service v. RPost Communication Limited, Opposition No. 91210479 (August 31, 2017) [precedential].


USPS contended that Santa Monica is not a "reasonable time and place" for the depositions, pointing to Rule 2.123(c), due to the expense, inconvenience, and lost time. RPost pointed out that, although Rule 2.120(b) requires that discovery depositions be taken in the Federal judicial district in which the individual resides, Rule 2.123(c) does not contain such a provision.

The Board noted that rule 2.123(a)(1), effective on January 14, 2017, allows testimony in declaration or affidavit form, subject to the right of an adverse party to "elect to take and bear the expense of oral cross-examination of that witness." The witnesses must be made "available" for cross-examination.

In its Notice of Final Rule making prior to implementation of the new rules, the Board stated that the phrase "reasonable time and place" in Rule 2.123(c) must be read in conjunction with Rule 2.123(a)'s edict that the deposing party "bear the expense of oral cross-examination." The intent of that provision was to add "no burden" on the proferring party in terms of additional travel or attorney expense in connection with producing its witness for oral cross-examination. However, the cross-examining party bears the expense of the court reporter and any accommodations for the taking of the deposition.

Here, opposer's witnesses would each miss two or more days of work to travel to Santa Monica. Had the direct testimony of these witnesses been taken in Washington, D.C., RPost's counsel would have had to travel there to conduct cross-examination. Thus conducting its elected cross-examination in Washington, D.C. would not impose any additional burden on RPost. Therefore Santa Monica is not a "reasonable ... place" for the cross-examination.

The Board further noted that RPost could accept opposer's proposal that the cross-examination be conducted by videoconference or telephone, which would satisfy some of RPost's concerns.

The Board therefore granted the motion to quash and allowed RPost ten days to file a new notice of election of cross-examination of the declarants in Washington, D.C. or any place mutually agreed upon.

Read comments and post your comment here.

TTABlog comment: Currently, a party cannot automatically conduct cross-examination by telephone or videoconference, but must either obtain the other party's consent or file a motion with the Board for permission to do so. Perhaps the rules should be changed to allow cross-examination by phone or videoconference as of right if the party so chooses.

Text Copyright John L. Welch 2017.

Wednesday, October 04, 2017

TTAB Posts October 2017 Hearing Schedule

The Trademark Trial and Appeal Board (TTAB) has scheduled four (4) oral hearings for the month of October 2017. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. Briefs and other papers for these cases may be found at TTABVUE via the links provided.



October 4, 2017 -11 AM: In re Brats Berlin, Inc., Serial No. 87955289 [Section 2(d) refusal of CREPES BONAPARTE for "food truck services; mobile catering services," in view of the registered mark CAFÉ BONAPARTE & Design for "restaurant services"].


October 5, 2017 - 11 AM: In re Nikon Corporation, Serial No. 86828751 [Section 2(d) refusal of MMD for "laser scanners for industrial inspection and for geometrical measurement, and not for use with land surveying equipment; software for collection and interpretation of data in the operation of laser scanners, not for use with land surveying equipment" in view of the registered mark MMD & Design for "Levelling rods; surveying chains; surveying compass needles; surveying instruments; surveying machines and instruments; transits; tripods"].


October 10, 2017 - 10 AM: In re Mikko Tapio, Serial No. 85722660 [Refusal of the applied-for mark SOCIAL SHOPPING NETWORK for various business services in Class 35 on the grounds of mere descriptiveness under Section 2(e)(1), unacceptability of  the applicant’s U.K. registration certificate, and indefiniteness as to applicant’s legal entity].


October 19, 2017 - 11 AM:  In re HRHH IP, LLC, Serial Nos. 86525431 and 86525425. [Refusals to register THE JOINT for "Restaurant, bar and catering services" and for "Entertainment services, namely, live musical performances, shows, and concerts; and nightclub services," on the ground of genericness or, alternatively, mere descriptiveness].


Read comments and post your comment here.

TTABlog note: Any predictions? See any WYHA?s?

Text Copyright John L. Welch 2017.

Precedential No. 29: TTAB Refuses to Disqualify Itself in TRUMP-Related Cancellation Proceeding

The Board denied petitioner's motion to disqualify the Board from this cancellation proceeding involving several registration for the mark TRUMP. Petitioner contended that because President Trump owns an interest in the challenged registrations, the Board was incapable of fairly adjudicating the issues before it, since the Board's judges are appointed by the Secretary of Commerce, who is hired and fired by the President. The Board also denied petitioner's motion to transfer the case to a federal district court in California, and it denied Respondent's motion for default judgment, as explained below. Prospector Capital Partners, Inc. v. DTTM Operations LLC, 123 USPQ2d 1832 (TTAB 2017) [precedential].


The Board had granted respondent's motion to dismiss the petition for cancellation because petitioner did not properly plead standing or its abandonment claim. However, the Board allowed petitioner twenty days to file an amended petition. Instead, petitioner filed its motion to qualify and to "transfer" venue to the US District Court for the Central District of California.

Disqualification: Chief Judge Gerard F. Rogers authored the portion of the opinion dealing with disqualification. The Board found no basis for petitioner's assertion that it lacks the independence necessary to make unbiased decisions in this cancellation proceeding.

First, the judicial qualification provision of 28 USC Section 455, which petitioner invoked, is inapplicable because the Board is not a "court" as defined in Section 451 and therefore the Board's administrative trademark judges are not "judges" under that statutory provision.

Second, a "presumption of regularity attaches to the procedure of government agencies," and to any order issued by an agency. Petitioner provided no facts to support its asserted suspicions that the President or the Secretary of Commerce has or will assert improper influence on the Board. Thus, the Board found, the motion to disqualify was entirely without merit.

The Board observed that it has the authority to determine cancellation proceedings involving all registrations, irrespective of the owners thereof, and regardless of whether a party is directly or indirectly connected to the United States Government.

Finally, the Board pointed out that to the extent petitioner is dissatisfied with any final decision of the Board, it may seek judicial review of the decisions, either before the Federal Circuit or by way of civil action in a federal district court. These courts are part of the judicial branch of our government, which is independent of the executive and legislative branches.

And so the Board denied the motion to disqualify.


Motion to Transfer: The Board pointed out that, to the extent petitioner's motion for transfer seeks judicial review of the Board's decision on the motion to dismiss, such a request is premature because the Board's ruling was only interlocutory. To the extent petitioner sought to have the district court adjudicate the entire cancellation proceeding, the Board has no statutory authority to "transfer" a proceeding to a district court.

Therefore, petitioner's motion to transfer was denied.

Cross-Motion for Default Judgment: Respondent sought a default judgment because petitioner did not amend its petition for cancellation within the Board's deadline for doing so. Petitioner did not contest the motion. The Board, however, exercised its discretion to not consider the motion as conceded.

The Board noted that petitioner's motion to disqualify was filed within the twenty-day deadline for amending the petition for cancellation. "Petitioner apparently concluded, although incorrectly, that the pendency of its motion to disqualify and request for transfer meant it did not need to file an amended petition to cancel, as allowed by the Board's order, to avoid dismissal of the petition."

In view of that misunderstanding, the Board chose not to enter judgment by default, but instead gave petitioner a second opportunity to file an amended petition for cancellation.

Read comments and post your comment here.

TTABlog comment: Petitioner has filed a request for reconsideration with the Board, essentially re-arguing its motion. Good luck with that! Looks like this case will be heading to a court some day. But for now, the decision is merely interlocutory.

Text Copyright John L. Welch 2017.

Tuesday, October 03, 2017

APPARATUS Not Generic But Merely Descriptive of Lighting Fixtures and Related Services

The Board affirmed a refusal to register the mark APPARATUS in the stylized from shown below, finding it merely descriptive of lamps and lighting fixtures, candles, electrical repair services, and lighting design services, and rejecting applicant's claims of acquired distinctiveness. However, the Board reversed the USPTO's genericness refusal. In re Apparatus LLC, Serial No. 86443209 (September 28, 2017) [not precedential] (Opinion by Judge Frances Wolfson).


Mere Descriptiveness: Dictionary definitions led the Board to conclude that the term "apparatus" refers to "an item or a collection of items forming a unified whole to accomplish a single purpose."

The Board found APPARATUS to be merely descriptive of lamps and lighting stands because it describes the nature or function of the goods. Likewise as to candle holders, which are devices for a particular purpose: to hold candles! As to applicant's services, a term that describes a product is considered merely descriptive of a service providing that product. [For a generic term, I can buy this. But for a descriptive term, not always. - ed.].

The stylization of the applied-for mark is so minimal that it does not create a separate and distinct commercial impression apart from the word APPARATUS.


Genericness: There was insufficient evidence to allow the Board to determine whether APPARATUS is commonly understood as the name of the class of goods or the class of services to which the identified goods and services belong. And so the Examining Attorney failed to meet the difficult burden of proving genericness.

Acquired Distinctiveness: To support its Section 2(f) claim, applicant pointed to its five-year declaration as well as to the results of a Google brand search purportedly showing that applicant is the only entity using the term APPARATUS as a source indicator for its goods and services.

The Google search results, however, were skeletal and failed to provide sufficient information to enable the Board to make any determination regarding distinctiveness. As to the declaration, because applicant's mark is highly descriptive, a declaration alone is insufficient to establish acquired distinctiveness. And so the Board concluded that applicant failed to meet is burden to prove acquired distinctiveness.

Conclusion: The Board reversed the genericness refusal and affirmed the mere descriptiveness refusal.

Read comments and post your comment here.

TTABlog comment: I think the term "apparatus" when used in connection with services is too vague to be descriptive.

Text Copyright John L. Welch 2017.

Monday, October 02, 2017

TTABlog Quarterly Index: July - September 2017

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz.


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:
Rule 2.61 Request for Information:


Specimen of Use/Failure to Function/Nonuse/Phantom Mark:
Dilution:
Fraud:
Genericness:
Ownership:
Concurrent Use: Intent:
Procedural Issues:
CAFC Decisions:
Other:
Text Copyright John L. Welch 2017.

TTAB Test: Are These Two Design Marks Confusable for T-Shirts?

The USPTO refused registration of the mark shown below left, for "T-shirts," finding the mark likely to cause confusion with the mark shown below right, for "clothing, namely hats and shirts." The goods are legally identical, but what about the marks? How do you think this came out? In re Khalid Akil White DBA BLKMPWR, Serial No. 86644303 (September 29, 2017) [not precedential] (Opinion by Judge Linda A. Kuczma).


Applicant maintained that the dominant portion of his design is the map of Africa, while in the cited mark the map of the United States is dominant, that the cited design suggests that Africa dominates the United States, and that the alteration of his design to fit the United States outline within the map of Africa profoundly changes the commercial impression of his mark as compared to the cited mark.

Contending that his mark conveys a strong historical context which cannot be divorced from the overall likelihood of confusion analysis with the cited mark, Applicant argues that the “use of historical and cultural symbolism [in his mark] creates a unique commercial impression of Pan-African unity and signifies the  repatriation of Americans of African ancestry to Africa,” and that the “inclusion of the United States, a world superpower and historically-imperialist nation, confined within the interior area of a continent (which was subjected to colonialization by imperialist nations) is rather peculiar and would most likely create a distinct and memorable commercial impression to reasonably prudent purchasers. Applicant also contends that the “applied-for-mark’s inclusion of the United States’ map element within the central area of the African continent signifies the African-American race is a critical set within the African Diaspora and therefore vital to the repatriation of all persons of African descent to repatriate to Africa in mind, body, and soul. As such, those of African descent which consider themselves members of the African Diaspora would be drawn to Appellant’s applied-for-mark as it signifies repatriation or return to their ‘motherland.’”

The Board, however, pointed out that applicant's intended interpretation of the two marks is not necessarily how consumers will perceive the marks. Although applicant maintained that African-Americans would understand his meaning, the Board observed that the identification of goods is not limited to African-American consumers. [Would such a limitation be permitted? effective? - ed.].

Applicant argued that his color scheme is a significant difference, but the Board pointed out that the cited mark is registered without a color claim and could be used in the same colors as the applied-for mark.

Both marks include overlaid maps of Africa and the United States. Inasmuch as Registrant’s mark is not restricted to the use of black and white colors, it can appear in the red, black and green colors shown in Applicant’s mark creating a similar commercial impression to Applicant’s mark.

Noting that when the involved goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion, the Board found that "the minor differences between them are insufficient to outweigh the remaining factors that favor refusal of the registration in this case."

Read comments and post your comment here.

TTABlog comment: What do you think?

Text Copyright John L. Welch 2017.