Thursday, January 19, 2017

Fame of adidas 3-Stripes Mark Yields Section 2(d) Summary Judgment

That Board entered judgment summarily in this opposition to registration of the mark shown below left, for "Athletic footwear; Bowling shoes; Footwear; Footwear for track and field athletics; Golf shoes; Headwear; Jackets; Pants; Running shoes; Shirts." The Board found confusion likely with the registered mark shown below right, for "footwear." The fame of the adidas 3-stripes mark, acknowledged by applicant, was a key to victory. In other words, 3-stripes and you're out! adidas AG and adidas America, Inc. v. Etonic Holdings, LLC, 121 USPQ2d 1188 (TTAB December 22, 2016) [not precedential].



Opposers relied on several registrations as well as on common law rights, but the Board focused on the registered mark shown above, which it found to be the closest of the registered marks. Standing and priority were not in issue, nor was there any dispute that the involved goods are in part identical. The Board must presume that these identical goods are marketed in the same channels of trade to the same classes of consumers. The applicant and registration have no limitations as to cost of the goods, and so they include relatively inexpensive footwear bought on impulse.

As we know, fame plays "a dominant role" in the du Pont analysis. "A famous mark has extensive public recognition and renown and enjoys a broad scope of protection or exclusivity of use."

The evidence established that the 3-stripes mark has been in use on footwear since 1952, that products bearing the mark are sold in more than 300 retailers, that opposers sold billions of dollars worth of footwear in the period 2006-2013, the vast majority of which bore the 3-stripes mark. Advertising expenditures have been very substantial.

Opposers sponsor various sporting events, including the World Cup, and the Boston Marathon. They outfit the NBA as well as various college sports teams. Such stars as Justin Bieber, Kay Perry, and David Beckham have been featured in advertising. The mark has been noted in media coverage and is co-branded with other high profile brands. Opposers have vigorously enforced their rights in the mark.

The Board therefore found no genuine dispute that the 3-stripes mark is famous for opposer's footwear and is entitled to a broad scope of protection.

As to the marks, the Board noted that applicant's mark may appear anywhere on its footwear, including the sides thereof. The three stripes in applicant's mark may be displayed at the same direction and angle as the adidas mark. Because two of the stripes in applicant's mark are not connected to the perpendicular element, "the overall impression of Applicant's mark is one of three stripes, rather than the letter 'E.' The perpendicular element "does not distinguish the parties' respective marks in a significant manner."

The Board found no genuine dispute that the overall commercial impressions created by the marks are highly similar.

The Board found that the relevant du Pont factors favor opposers, and no genuine dispute of material fact remained for trial. Therefore it granted opposers' motion for summary judgment under Section 2(d). The Board declined to reach opposers' dilution claim, lack of bona fide intent, and contract claims.

Read comments and post your comment here.

TTABlog comment: If the goods are in part identical, what's the need for a dilution claim? The test for similarity of the marks is the same under dilution and Section 2(d) anyway.

Text Copyright John L. Welch 2017.

Wednesday, January 18, 2017

TTAB Test: Is BEACH HUGGY for Pillows Confusable With HUGGY PETS for Decorative Pillowcases?

The USPTO refused registration of the mark BEACH HUGGY for "pillows," finding the mark likely to cause confusion with the registered mark HUGGY PETS for "decorative pillowcases for children." The examining attorney also required disclaimer of the word "BEACH." How do you think this appeal came out? In re Comfort Revolution, LLC, Serial No. 86564232 (January 13, 2017) [not precedential].


Disclaimer requirement: The evidence showed that applicant's goods are pillows for use at the beach. The Board rejected applicant's nebulous contention that the word BEACH merely conveys a level of comfort and relaxation that may be attained at the beach, and it found the disclaimer requirement appropriate.

Likelihood of confusion The Board found the involved goods to be "related on their face" as complementary products, confirmed by third-party registration evidence and third-party websites where pillows and pillowcases are offered for sale under the same trademark. The channels of trade include the same stores, both online and brick and mortar. Applicant's goods, which are broadly identified, encompass pillows for children. In any case, adults are ultimately the consumers for pillows marketed to appeal to children.

As to the marks, the words BEACH and PETS are conceptually weaker than the word HUGGY because each of those two words describes or suggests the purpose or a feature of the goods.


Applicant argued that the differences in the wording and the placement of the words suffice to distinguish the marks, but the Board was not persuaded in view of the dominance of the word HUGGY.

Applicant’s mark gives the commercial impression of a pillow that is useful for hugging at the beach, while the mark in the cited registration conveys a huggable pet in the form of a stuffed pillowcase. Consumers are thus drawn to the "huggable" element of the respective pillows/pillowcases.

Applicant's use of the word HUGGY could lead consumers to believe that the registrant has expanded its product line to include different themes and uses. Viewing the marks in their entireties, the Board found that the similarities outweigh the differences.

The Board therefore concluded that confusion is likely, and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: I would have reversed the 2(d) refusal. Isn't the word "huggy" suggestive and weak for a pillow?

Text Copyright John L. Welch 2017.

Tuesday, January 17, 2017

Last Call for Free Webinar: A Guide to TTAB Practice for Foreign Trademark Owners - January 19th, 10-11 AM EST

Yours truly, The TTABlogger, will present a webinar entitled "Friendly Shores: A Guide to TTAB Practice for Foreign Trademark Owners," on Thursday, January 19th from 10 to 11 AM EST, sponsored by Wolf, Greenfield & Sacks, P.C. "Admission" is free. Register here.


The webcast will emanate from the Federal Reserve Building in beautiful downtown Boston. Among the topics to be covered are the following:

  • The requirement of “use” in U.S. Trademark law.
  • Vulnerability of U.S. registration based on foreign rights
  • Ex parte appeals before the TTAB
  • TTAB jurisdiction in inter partes proceedings
  • The four phases of oppositions and cancellations
  • Court review of TTAB decisions

If you have questions, send them to me at jwelch at wolfgreenfield dot com.
.

TTAB Orders Cancellation of PORTÓN Registration, Confusable with PATRON

The TTAB sustained a petition for cancellation of the mark PORTÓN for "Distilled spirits; brandy; pisco," finding the mark likely to cause confusion with the registered mark PATRON for tequila and distilled spirits. The Board found that "a substantial number of non-Spanish speakers will perceive both terms, in the context of the goods that include tequila and pisco, as Spanish words, and any recognition of the English word 'patron' will not sufficiently distinguish the marks." Patron Spirits International AG v. Pisco Porton, LLC, Cancellation No. 92059527 (January 4, 2016).


The involved goods are legally identical and presumably sold through the same channels of trade to the same classes of consumers. As to conditions of purchase, since there are no pertinent limitations in the identifications of goods, the Board must consider all purchasers, even the less discerning.


As to the marks, the similarities in structure and spelling create similarity in sound. The aural similarity "is significant because both parties’ beverages are sold in the sometimes noisy atmosphere of a bar or crowded restaurant."

As to connotation, Petitioner argued that to the vast majority of Americans, the marks would have no meaning “other than as a trademark with a Spanish-language overtone” and “will leave identical commercial impressions.” Respondent asserted that Spanish-speaking customers would recognize the differences in meaning between “patron” (customer or guess) and “portόn” (gate), and others would perceive “portόn” “as a foreign looking and foreign sounding word but would not perceive it in a manner similar to how they would perceive the ordinary English word ‘patron.’” Petitioner replied that in the context of tequila, “patron” would be perceived as a Spanish word.

The Board agreed with petitioner. It found that “a substantial number of non-Spanish speakers will perceive both terms, in the context of the goods that include tequila and pisco, as Spanish words, and any recognition of the English word “patron” will not sufficiently distinguish the marks.”

The Board concluded that marks are similar in appearance, sound, meaning and overall commercial impression, and that this similarity, where the goods are legally identical, outweighs the dissimilarities.

The Board did not accept petitioner’s claim of fame but, based on media articles referring to PATRON tequila, it did find that PATRON has commercial strength for tequila and is entitled to a “broader scope of protection.”

Balancing the relevant du Pont factors, the Board found confusion likely and it granted the petition to cancel.

Read comments and post your comment here.

TTABlog comment: What if the registration had been limited to distilled spirits sold in quiet bars and restaurants?

Text Copyright John L. Welch 2017.

Friday, January 13, 2017

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

Supposedly one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods. Here are four (IV) recent Section 2(d) appeals. Which one resulted in a reversal? [Answer will be found in first comment].


In re SBE Licensing, LLC, Serial No. 86135841 (January 5, 2017) [not precedential]. [Section 2(d) refusal of THE PERQ and Design (below left) for "restaurant, café, coffee, tea, and juice bar services," in view of the registered mark PERQS, in standard character and design form (below right), for "coffee supply services for offices"].


In re MT Enterprises LLC, Serial No. 86420598 (January 6, 2017) [not precedential]. [Section 2(d) refusal to register (on the Supplemental Register) the mark The No Pull Harness & Leash in One, in standard character form, for "Animal harnesses for dogs; Animal leashes; Dog leashes; Leashes for animals; Pet products, namely, pet restraining devices consisting of leashes, collars, harnesses, restraining straps, and leashes with locking devices" [HARNESS & LEASH disclaimed], in view of the registered mark NO-PULL for "halters for domesticated animals”].


In re Clipper City Brewing Co., LP, Serial No. 86353682 (January 10, 2017) [not precedential]. [Section 2(d) refusal of BLACKBEARD’S BREAKFAST for "beverages, namely, beers, ales, and malt liquors," in view of the registered mark shown below, for "beers" ["Ale", "Virgin Islands Ale Co.", "St. Thomas", "Tortolas", "St. John", "St. Croix" and "Caribbean Sea" disclaimed.].


In re Eyefluence, Inc., Serial No. 86249068 (January 10, 2017) [not precedential]. [Section 2(d) refusal of EYEOS for "Computer hardware and software for providing a user interface involving eye tracking and/or eye movement for wearable devices," in view of the identical mark registered for various eyewear products, including eyeglasses, sunglasses, and frames].


Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

Thursday, January 12, 2017

Current Roster of TTAB Administrative Trademark Judges

With the appointment of Robert H. Coggins to the Trademark Trial and Appeal Board and the retirement of Judge Ellen J. Seeherman, the Board’s membership remains at twenty-six (26) Administrative Trademark Judges. The current roster is set forth below, beginning with Chief Judge Gerard F. Rogers and Deputy Chief Judge Susan M. Richey, and then proceeding alphabetically.


Rogers, Gerard F. (Chief Judge): Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D. magna cum laude, New England School of Law.

Richey, Susan M. (Deputy Chief Judge): Appointed to TTAB in 2014; Prior Professional Experience: Professor and Associate Dean, Univ. of New Hampshire School of Law, 1996-2014; Private practice (Los Angeles, California, 1983-1996); Education: B.A., University of Baltimore; B.S., College of William and Mary; J.D., University of Maryland.

Adlin, Michael B.: Appointed to TTAB in 2012; Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University; J.D., Boston University School of Law.

Bergsman, Marc A.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.

Cataldo, Peter W.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Coggins, Robert H.: Appointed to TTAB in 2017: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.S., Davidson College; J.D., Wake Forest University School of Law.

Goodman, Cheryl S.: Appointed to TTAB in 2014: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State College of Law.

Gorowitz, Francie R.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Los Angeles, California); Trademark Examining Attorney; Education: B.A., State University of New York at Cortland; J.D., Albany Law School.

Greenbaum, Cindy B.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Heasley, David K.: Appointed to TTAB in 2015; Prior Professional Experience: Private Practice (Washington, D.C.); Education: B.A., The Johns Hopkins University: J.D., University of Maryland School of Law.

Hightower, Susan J.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Austin, Texas); Education: B.A., Austin College; M.A., University of Texas; J.D., Stanford Law School.

Kuczma, Linda A.: Appointed to TTAB in 2011; Prior Professional Experience: Private Practice (Chicago, Illinois); Education: B.S., St. Mary's University; J.D., Loyola University Chicago School of Law.

Kuhlke, Karen: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Larkin, Christopher: Appointed to TTAB in 2016; Prior Professional Experience: Private practice (Los Angeles, CA; New York, NY); Education: B.A., Stanford University: J.D., Columbia Law School.

Lykos, Angela: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., The Johns Hopkins University; J.D., Duke University Law School.

Lynch, Cynthia C.: Appointed to TTAB in 2015: Prior Professional Experience: Private Practice; Attorney-Advisor at the International Trade Commission; USPTO Assistant Solicitor: USPTO Administrator for Trademark Policy and Procedure; Education: B.A., University of North Carolina; J.D., University of Virginia School of Law.

Masiello, Anthony R.: Appointed to TTAB in 2012; Prior Professional Experience: Trademark Examining Attorney; Private Practice (Boston, New York, and Washington, D.C.); Education: Harvard College; J.D., Harvard Law School.

Mermelstein, David: Appointed to TTAB in 2006: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Supervisory Interlocutory Attorney; Education: B.A., New College, Hofstra University; J.D., American University.

Pologeorgis, George C: Appointed to the TTAB in 2015; Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Attorney in the Office of Trademark Quality Review and Training; Trademark Examining Attorney; Private Practice; Education: B.A. University of Pennsylvania; J.D., George Washington University National Law Center.

Quinn, T. Jeffrey: Appointed to TTAB in 1988; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Tulane University; J.D., Tulane University School of Law.

Ritchie, Lorelei: Appointed to TTAB in 2008; Prior Professional Experience: Private Practice; Arbitrator and judge pro tem, Orange and Los Angeles Counties, California; Intellectual Property Manager, UCLA; Adjunct Professor of Law, Loyola Law School, Los Angeles; Assistant Professor, Florida State University School of Law; Education: A.B., Stanford University; J.D., Columbia University.

Shaw, Thomas: Appointed to TTAB in 2011; Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.

Taylor, Jyll: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of North Carolina at Chapel Hill; J.D., Howard University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Wolfson, Frances: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., U.C. Santa Barbara; J.D., U.C.L.A.

Zervas, Albert: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.

Text Copyright John L. Welch 2017.

Robert H. Coggins Appointed As TTAB Administrative Trademark Judge; Ellen J. Seeherman Retires

Robert H. Coggins has been appointed to the position of Administrative Trademark Judge at the Trademark Trial and Appeal Board. Judge Ellen J. Seeherman retired from government service in December 2016. With the appointment of Mr. Coggins and the retirement of Judge Seeherman, the number of TTAB judges remains at 26 (including the Chief Judge and Deputy Chief Judge).


Mr. Coggins served as an Interlocutory Attorney at the TTAB for more than ten years, prior to which he served for eight years as an Attorney-Advisor for the USPTO’s Trademark Examining Operation. During his tenure as an examining attorney, Mr. Coggins completed a three-month career development detail at the TTAB, and a six-month work detail in Patent Technology Center 2100 assisting in the review of international patent applications.

Mr. Coggins earned a Bachelor of Science degree in Biology from Davidson College and a Juris Doctor degree from Wake Forest University School of Law.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

Wednesday, January 11, 2017

TTAB Test: Which Of These Three Mere Descriptiveness Refusals Was Reversed?

By my recent estimation, somewhere around 90% of all Section 2(e)(1) mere descriptiveness refusals that reached the TTAB in 2016 were affirmed on appeal. Well, here are three appeals that were decided within the past month. One refusal was reversed. Which one, pray tell? [Answer will be found in first comment].


In re GMR, LLC, Serial No. 86338948 (January 9, 2017) [not precedential]. [Refusal of BLACKJACK CHAT for "Computer game software; computer game programs; electronic game programs and for "Etertainment services, namely, providing online computer and electronic games through a social networking website."


In re Panasonic Avionics Corp., Serial No. 86499954 (January 5, 2017) [not precedential]. [Refusal of FLIGHTLINK for "Meteorological forecasting; providing meteorological information; providing weatherinformation; weather forecasting; weather information services; weather reporting"].


In re Watered Up, LLC, Serial Nos. 86310513; 86310537; 86310550 (December 30, 2016) [not precedential]. [Refusal of AQUA CRISPS, in standard character and design forms, "for tapioca-based snack foods; tapioca chips"].


Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Tuesday, January 10, 2017

In 2016, How Often Did the TTAB Affirm Section 2(d) Refusals? 2(e)(1) Mere Descriptiveness Refusals?

I reviewed the TTAB's FOIA page in an attempt to determine, or at least estimate, the percentage of Section 2(d) likelihood-of-confusion refusals and Section 2(e)(1) mere descriptiveness refusals, that were affirmed/reversed by the Board during the calendar year 2016. The highly unscientific results are set out below.


Section 2(d): I counted 249 Section 2(d) refusals, of which 228 were affirmed and 21 reversed. That's an affirmance rate of about 91.5%. [A high water mark for the last few years].

Four of the opinions were deemed precedential, all affirmances: TIME TRAVELER BLONDE; JAWS; HOUSEBOAT BLOB; and MT. RAINIER Logo;

NB: Some cases involved an applied-for mark in standard character and stylized or design form, and I counted that situation as one refusal.

Section 2(e)(1) mere descriptiveness: Of the 91 Section 2(e)(1) mere descriptiveness refusals, 82 were affirmed and 9 reversed, for an affirmance rate of approximately 90%, again on the upper end of the spectrum for recent years.

Two of the opinions were deemed precedential, both affirmances: IMÁGENES ESCONDIDAS and HOUSEBOAT BLOB.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

Monday, January 09, 2017

Judge Seeherman Offers Different Approach to Section 2(e)(4) Surname Refusals

The Board affirmed a Section 2(e)(4) surname refusal of BUTTERFIELDS for auction and appraisal services. Applying the Benthin factors, the Board found that the applied-for mark is not a rare surname, that it has no recognized non-surname significance, and that it has the structure and pronunciation of a surname. Judge Ellen J. Seeherman agreed with the result, but took the opportunity, in a seven-page concurrence, to explain her view of the proper approach to Section 2(e)(4), an approach that focuses on the rareness of the surname. In re Bonhams & Butterfields Auctioneers Corp., Serial Nos. 85443480 and 85443485 (December 29, 2016) [not precedential].


Judge Seeherman set out her view of Section 2(e)(4) in In re "Baik" [TTABlogged here]. On occasion, a Board panel has followed her approach. Here, however, the panel hewed to its recent line of Section 2(e)(4) rulings:

The majority follows the reasoning of several decisions recently handed down by the Board, namely In re Integrated Embedded, In re Eximius Coffee and In re Adlon, cited in the majority opinion. In those decisions, the Board makes it clear that a mark will be found to be primarily merely a surname as long as there is evidence that some people have that surname, no matter how rare the surname is, as long as it is perceived as a surname. The opinions now use the language whether the term is “encountered” as a surname, rather than “the degree of a surname’s rareness,” the language quoted in Benthin.

In Judge Seeherman's evolving view, the degree of rareness of the surname should be the first consideration:

I think the Board must first determine whether there are a sufficient number of people with a particular surname for the mark to even rise to the level of a surname. That is, there must first be a showing that there is some threshold number of people with that surname to make out a prima facie case for refusal under Section 2(e)(4).

The analysis relied upon by the majority, according to Judge Seeherman, ignored the purpose of the Section 2(e)(4) surname prohibition:

"The purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses, in the same manner that merely descriptive terms are prohibited from registration because competitors should be able to use a descriptive term to describe their own goods or services." Binion, 93 USPQ2d at 1540.

If the surname is rare, there is no need to keep it available for anyone with that surname just because there is a theoretical possibility that another might wish to use the surname for goods or services related to those of the applicant.

The Lanham Act has never been as rigidly interpreted with respect to other grounds of refusal as Section 2(e)(4) is now interpreted under the Board's current approach. Now, a mark that is a rare surname may be refused registration even if the surname has little exposure to the public, as long as it has no other meaning, or looks and sounds like a surname, or articles can be found referring to a few people having the surname.

Accordingly, in my view, the rareness of a surname must be part of the threshold question of whether there is sufficient evidence of surname use for the mark to qualify as being a surname, and only if the answer to that question is “yes” should the analysis reach a consideration of whether the mark will be recognized as a surname.

Read comments and post your comment here.

TTABlog comment: Postscript: Judge Seeherman retired from government service at the end of December 2016.

Text Copyright John L. Welch 2017.

Friday, January 06, 2017

CAFC Reverses TTAB's "DOTBLOG" Mere Descriptiveness Decision

In a non-predecential opinion, the CAFC reversed the Board's decision (TTABlogged here) that found the mark DOT BLOG to be merely descriptive of the service of "providing specific information as requested by customers via the Internet." Appellant Driven Innovations did not challenge the Board's procedural ruling regarding application of the "clear error" standard. [The Board held that an applicant may not separately challenge that determination of "clear error," either by petition to the Director or on appeal to the Board. Applicant’s only recourse is to appeal the substantive refusal.] In re Driven Innovations, Inc., Appeal No. 2016-1094 (January 4, 2017) [not precedential].


The Board reasoned that "blog" refers to an online journal, and applicant's specimen of use showed that it provides information that may be derived from or used for blogs. The word "dot" represents the punctuation mark in an internet address, and the combination of "dot" and "blog" has the same meaning as the component parts. According to the Board, "[c]onsumers will immediately understand the term DOTBLOG, when used in association with Applicant’s services of ‘providing specific information as requested by customers via the Internet,’ as describing a website that may feature information for blogs, or be related to blogs, regardless of the domain in which the blogs reside."

Alternatively, the Board found that consumers are likely to perceive the mark as "related to information gleaned from the '.blog' domain" because ICANN’s activation of the .blog generic top-level domain.

The CAFC disagreed because the definitions of "dot" and "blog" did not provide sufficient support for the Board’s finding, under the applicable substantial evidence standard.

The word “dot” does not “immediately convey” a meaning of the punctuation mark used in an internet address, nor does it immediately describe the online nature of Driven Innovations’ services. See Chamber of Commerce, 675 F.3d at 1300. Instead, it merely suggests the online nature of Driven Innovations’ services because it “requires some operation of the imagination” to connect the term “dot” to the online nature of Driven Innovations’ services. Abcor Dev. Corp., 588 F.2d at 814. Similarly, the word “blog” at most establishes some form of relation between the services rendered and blogs generally, without any description as to how the services rendered relate to blogs. The use of “blog” in the mark is not descriptive because it does not immediately convey knowledge of a feature of the services. See Chamber of Commerce, 675 F.3d at 1300.

Finding the applied-for mark to be merely suggestive of applicant's services, the Board reversed the Section 2(e)(1) refusal and remanded the case for further proceedings.

Read comments and post your comment here.

TTABlog comment: FWIW, at the TTAB, the case was heard by an augmented panel of five judges, including the Chief Judge and Deputy Chief Judge.

Text Copyright John L. Welch 2016.

Thursday, January 05, 2017

TTAB Issued 36 Precedential Opinions in 2016

The TTAB issued three dozen (XXXVI) precedential opinions in calendar 2016. Among the more interesting ones, the Board considered the registrability of a rare “motion mark,” concluding that the gripping, in-and-out movement of the jaws of a hand tool was functional under Section 2(e)(5). In an almost-as-rare color mark case, the Board reversed a refusal to register the color white for gunpowder charges because applicant’s look-for advertising convinced the Board that the mark had acquired distinctiveness.

Although the Board usually gives significant weight to concurrent use agreements when assessing likelihood of confusion, it refused to do so in a case involving two marks for beer because the agreement did not “fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods.” The Board was particularly unhappy with the provision that would limit applicant’s use to New England and New York, while registrant’s use was not geographically limited.

In what may prove to be the opening gambits in an evolving area of trademark law, the Board snuffed out an application to register a mark for “retail store services featuring herbs” because the mark was being used in connection with the sale of a substance (marijuana) that is illegal under the federal Controlled Substances Act. And it likewise affirmed a refusal to register two marks for “smokeless marijuana or cannabis vaporizer apparatus,” rejecting applicant’s defense that the goods are sold only in states where marijuana is legal.

In a flurry of Section 2(e)(4) rulings, the Board focused on consumer perception rather than the more mechanical application of the traditional Benthin factors in finding the marks ALDECOA and THE BARR GROUP to be primarily merely surnames. The Board emphasized the fact that persons with the surnames at issue were prominently active in the businesses involved.

In failure-to-function cases, the Board affirmed a refusal to register a repeated diamond pattern applied to “electronic hookahs,” deeming it to be a non-distinctive, merely ornamental design that lacked acquired distinctiveness. And it upheld a challenge to two design marks comprising “I ♥ DC” on the ground that the term is ubiquitous and informational and failed to function as a trademark for clothing and assorted goods.

In the inter partes arena, the Board promptly complied with a federal district court order to vacate its precedential opinion in the HOUNDSTOOTH MAFIA case. The parties had settled the Section 1071 civil action seeking review of the Board’s decision, and as part of the settlement agreed to vacatur. The Board at first refused to do so on a motion by the University of Alabama, but the federal judge then insisted, in no uncertain terms, upon vacatur.

In a reversal of the usual situation, the Board granted a petition for cancellation of a registration owned by a wholly-owned subsidiary because the mark was used only by its parent company and the subsidiary did not control the parent’s use of the mark. In another successful cancellation proceeding, the Board confirmed that the U.S. distributor of a product was the owner of the mark in question, not the foreign manufacturer who made the product to petitioner’s order.

Finally, another fraud claim bit the dust as the Board rejected a petitioner’s allegation due to its failure to prove an intention to deceive the USPTO when respondent, in its underlying application, made its allegedly false declaration regarding the lack of third-party prior rights in a similar mark.


Section 2(d) - Likelihood of Confusion:


Section 2(e)(1) - Mere Descriptiveness


Section 2(e)(3) - Geographically Deceptively Misdescriptive:
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:
Dilution:


Failure to Function:
Family of Marks:
Fraud:
Ownership:

Discovery/Evidence/Procedure:
Text Copyright John L. Welch 2016-2017.