Monday, December 11, 2017

Precedential No. 34: TTAB Orders Cancellation of TAO VODKA Registration for Nonuse and Likelihood of Confusion With TAO Restaurants

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. 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, factored into the Board's Section 2(d) ruling. Tao Licensing, LLC v. Bender Consulting Ltd. d/b/a Asian Pacific Beverages,Cancellation No. 92057132 (December 7, 2017) [precedential] (Opinion by Judge Cynthia C. Lynch).

Nonuse: Under Section 45 of the Trademark Act, a trademark is in "use" when the goods bearing the mark "are sold or transported in commerce." Here, the Board considered whether the importation or distribution of samples of the goods met the use in commerce requirement. Respondent conceded that, prior to filing its Statement of Use on April 24, 2012, it had not sold any goods under the mark TAO VODKA, but it contended that the distribution of samples sufficed. It appeared to concede that mere importation of the goods from the Vietnamese manufacturer did not constitute use in commerce. See Avakoff v. Southern Pacific Co., 765 F.2d 1097, 226 USPQ 435, 436 (Fed. Cir. 1985) (shipment of goods from the manufacturer to the trademark owner did not satisfy the use or transportation in commerce requirement, as "it was a shipment of the goods in preparation for offering the goods for sale. It did not make the goods available to the purchasing public").

Turning to the issue of distribution of samples, the Board first observed that alcohol is distributed in a three-tiered system: a manufacturer may sell only to a distributor, who may sell only to a retailer, who may sell only to the public. The Board also noted that the testimony of Respondent's witness showed a lack of knowledge of the underlying facts and the lack of corroborating documentation. Cf. Research in Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926 (TTAB 2009) (lack of documentation contributes to finding lack of bona fide intent to use a mark)

Respondent testified that it distributed samples to three entities. The first, J.M. Stevens, was not a distributor of alcohol but rather was a shareholder of Kai Vokda, an entity related to respondent. There was no evidence as to the disposition of those samples.

The second was a restaurant called Tango Cafe, but Tango was not a distributor. The testimony indicated that this activity was "preliminary and exploratory, and Respondent was not yet ready to introduce the product in the ordinary course of trade."

The third was a distributor named Northern Wine & Spirits who, according to respondent, "were going to review [the product] and see if they had interested parties in their market." There was no written follow-up and so sales were ever made to or by Northern.

None of the three entities purchased or sold any TAO VODKA. In fact the first sale did not occur until two and one-half years later. The Board found that "the record as a whole reflects that Respondent was not yet using or even ready to use the mark in the ordinary course of trade, but was merely exploring such use at some point in the future." 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."

Therefore the Board concluded that respondent did not use the mark TAO VODKA in commerce prior to the Statement of Use deadline (September 20, 2012).

Likelihood of Confusion: Petitioner's evidence of customer volume and revenue, advertising expenditures, unsolicited media coverage, and industry awards convinced the Board that TAO is a famous mark for restaurant services. The Board noted, however, that even if the mark were of "average strength," its conclusion under Section 2(d) would be the same. [Note that the Board cited the CAFC's Phelps decision for the proposition that the 5th du Pont factor "involves assessing the mark "'along a spectrum from very strong to very weak.'" In other words, fame for Section 2(d) purposes is not an all-or-nothing determination. - ed.].

Respondent argued that, based on third-party registration and use, TAO is weak and diluted. The Board, however, discounted the third-party use evidence [two dozen or so restaurants] because it was somewhat outdated, because it lacked specifics regarding the extent of use [So much for Juice Generation and Jack Wolfskin - ed.], because respondent's witness did not collect the information, and because petitioner successfully challenged some of the restaurants. The third-party registrations submitted by respondent were mostly for unrelated goods or services. Only one related to alcoholic beverages.

The third-party evidence did show, however, that "tao" suggests that the restaurant has an Asian theme or serves Asian food. Nonetheless, in light of the "compelling evidence" of the fame of petitioner's mark, the third-party evidence did not convince the Board that TAO is weak of entitled to a limited scope of protection. "The commercial strength of Petitioner's TAO mark outweighs any conceptual weakness." [I thought the Board just said that the fame of the TAO mark didn't matter? - ed.].

Not surprisingly, the Board found the marks to be similar in look, sound, meaning, and commercial impressions. As to the involved goods and services, the Board recognized that it is not enough to show that restaurants serve food and beverages: "something more" is required to establish that alcoholic beverages and restaurant and nightclub services are related.

The evidence showed that petitioner uses its TAO mark to promote alcoholic beverages, that its restaurants offer drinks, including at least one vodka drink, that bear TAO-formation names (e.g., Tao-love potion #9), that it sometimes engages in joint promotional efforts with vodka manufacturers, and that it advertises "Vodka Open Bars" at events in its venues. The evidence also showed that "private-label" bottling is an industry trend, and the Board concluded that "consumers on a widespread basis must be aware of it." [If private label bottling is widely recognized - which is news to me - then are all bottled alcoholic beverages related to restaurant services? - ed.].

Moreover, respondent's own actions "show that it believed that consumers would view Respondent's vodka and Petitioner's services as related." The record showed that respondent rebranded an existing vodka product, Kai Vodka, as TAO VODKA after its unsuccessful attempt to sell its Kai Vodka to TAO venues. Respondent also initially displayed the mark in a stylized font very similar to petitioner's font. It then sought an agreement to sell its registration to petitioner at a "high price" and to supply petitioner with large volumes of vodka. From this evidence, the Board found that "Respondent anticipated a benefit from implying a connection to Petitioner, a benefit that could only exist if Respondent believed that consumers would actually see Respondent's products as related to Petitioner's restaurant services."

The Board therefore concluded that consumers would likely infer that respondent's goods "emanate from the same source as Petitioner's services, or are sponsored by Petitioner."

Because respondent's goods may be sold to individual consumers in restaurants and nightclubs, the channels of trade and classes of consumers overlap. As to the lack of actual confusion evidence, the Board agreed with petitioner that because of respondent's limited use of its mark, there was little opportunity for actual confusion to occur.

Finally, under the catch-all 13th du Pont, petitioner maintained that respondent's bad faith weighed in favor of a finding of likely confusion. The Board agreed that respondent's "more eyebrow-raising activities," discussed above, were further evidence that confusion is likely.

And so the Board found confusion likely and it ruled that Section 2(d) is a second, independent ground for granting the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: Suppose someone independently came up with the mark TAO VODKA and got a registration. Same result?

NB: Petitioner also argued that the distribution of samples to Tango and Northern was merely intrastate (in Hawaii) and therefore could not be use in commerce. The Board, however, pointed out that the CAFC in Christian Faith Fellowship v. Adidas AG, "noted that the appropriate inquiry should focus on whether the general category of such transactions would cause a substantial effect on interstate commerce." Congress may regulate activity under the Commerce Clause even if the goods do not cross state lines, and "there is likewise no such per se condition for satisfying the Lanham Act's 'use in commerce' requirement.'" Id. 120 USPQ2d a6 1647.

Text Copyright John L. Welch 2017.

Friday, December 08, 2017

WYHA? CROME Confusable with CHROME GIRL for Hair Care Products, Says TTAB

The USPTO refused registration of the mark CROME for various hair care products, finding the mark confusingly similar to the registered mark CHROME GIRL for, inter alia, hair care products [GIRL disclaimed]. Would you have appealed? In re Azam, Serial No. 85863664 (December 6, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman).

Because the goods in the application and cited registration are, in part, identical, the Board presumed that those goods travel in the same channels of trade to the same classes of consumers.

As to the marks, the Board could not find, and applicant did not provide, any definition of the word "crome," and so the Board found that "crome" is a misspelling of the word "chrome."

Applicant contended that its mark CROME "creates a commercial impression of goods that make anyone shine and glow, similar to chrome when it is hit with the sun," whereas CHROME GIRL "creates a commercial impression of a female who is either made of chrome, a female who endorses chrome, or a shiny girl." The Board saw little difference in these purported meanings and impressions. "In essence, Applicant argues that its mark means and engenders the commercial impression of goods that will make you shine and glow and the Registrant's mark means and engenders the impression of a shiny girl."

The Board concluded that the marks are similar in appearance, sound, connotation, and commercial impression.

Applicant pointed out that there have been no instances of actual confusion during the several years of co-existence of the marks in the marketplace. The CAFC in Majestic Distilling, however, pointed out that "[t]he lack of evidence of actual confusion carries little weight ..., especially in an ex parte contest." [since the registrant has not had an opportunity to address the issue - ed.]. Moreover, there was no evidence regarding the extent of use of the involved marks and thus no showing that there has been meaningful opportunity for confusion to have occurred.

And so the Board affirmed the Section 2(d) refusal to register.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2017.

Thursday, December 07, 2017

TTAB Finds "CREPES BONAPARTE" for Food Trucks Confusable With CAFÉ BONAPARTE & Design for Restaurants

The Board affirmed this Section 2(d) refusal to register CREPES BONAPARTE for "food truck services; mobile catering services" [CREPES disclaimed], finding it likely to cause confusion with the registered mark CAFÉ BONAPARTE & Design for "restaurant services" [CAFÉ disclaimed]. Applicant creatively argued that because the cited mark is primarily merely a surname, it is entitled to a limited scope of protection. The Board agreed to some extent, but not enough to overcome the refusal. In re Brats Berlin, Inc., Serial No. 87055289 (December 1, 2017) [not precedential] (Opinion by Judge Peter W. Cataldo].

Applicant provided a printout of surnames from the 2016 census showing more that more than 2,000 individuals have the surname BONAPARTE. The Board agreed that BONAPARTE has surname significance, but noted that such a term may not be primarily merely a surname if the term also identifies an historical person or place: for example, DA VINCI, SOUSA, ESCHER, but not BELUSHI. The Board took judicial notice that the famed general and emperor of France, Napoleon I, was named Napoleon Bonaparte. "Thus, the term BONAPARTE denotes both a surname and famous historical figure, and while not primarily merely a surname, is conceptually a slightly weaker source indicator than a fanciful term."

Applicant also provided evidence of three third-party uses of marks comprising the term BONAPARTE but they were not similar to the marks involved here, and in any case a mere three uses is not enough to have probative value.

The Board concluded that the totality of the evidence failed to show that the term BONAPARTE is  significantly weakened or diluted. The Board did agree that BONAPARTE may be afforded a "slightly narrower scope of protection than that afforded a fanciful term," but the scope was not so narrow as to allow registration of applicant's mark.

As to the marks, applicant contended that because of certain naming conventions in the food and restaurant industries, each of the two marks at issue are likely to be considered as a unitary whole, rather than consumers focusing on individual terms. The Board agreed that the marks must be viewed in their entireties. However, there is nothing improper in stating, for rational reasons, that more or less weight should be given as to a particular feature of a mark. Here, both marks include the word BONAPARTE as the most prominent feature. Nothing in the record suggested that BONAPARTE would have a different meaning in one mark than the other.

The Board concluded that the marks are "similar in appearance and sound, and similar in connotation, respectively suggesting French cuisine feature crepes of a French-themed cafe." Considered as a whole, the marks are more similar than dissimilar.

Applicant pointed out that the involved services are not identical, but the evidence submitted by Examining Attorney Samuel R. Paquin showed that food truck and mobile catering services may emanate from the same source as restaurant services, and under the same mark.

Finally, Applicant argued that out of more than 50,000 federal registrations for restaurants, only 36 also identified "food truck" services, and as a result "the relationship between food trucks and restaurants is not so obvious that consumer would believe that food truck services and restaurant services originate from the same source without something more." The Board was unmoved. "[T]he overall number of extant registrations does not compel or even suggest that the relatedness between food trucks and mobile catering services and restaurants is somehow obscure or remote." As the Board noted with respect to goods, "[t]here is no requirement for goods to be found related that all or even a majority of the sources of one product must also be the sources of the other product."

And so the Board affirmed a refusal to register.

Read comments and post your comment here.

TTABlog comment: I think the differences in the marks coupled with the difference in the services makes confusion unlikely. I would not think that a food truck called CREPES NAPOLEON had anything to do with a CAFE NAPOLEON restaurant. If Cafe NAPOLEON had a food truck, why wouldn't it call the truck CAFE NAPOLEON? BTW: The third-party registrations show that an entity named XYZ uses the same mark for a food truck, not that it would use some variation thereof.

Text Copyright John L. Welch 2017.

Tuesday, December 05, 2017

Finding Bicycles and Clothing Related, TTAB Sustains KÜHL Opposition to KU:L

Third-party registration and use evidence led the Board to sustain this opposition to registration of the mark KU:L in stylized form, for "bicycles," finding it likely to cause confusion with the registered mark KÜHL in stylized form, for "rugged outdoor clothing, namely, jackets, shirts, pants, shorts, t-shirts, and hats." Alfwear Inc. v. Shuff, Opposition No. 91224467 (December 1, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman).

Fame: Opposer Alfwear claimed that its mark KÜHL is famous, but its proofs fell short. Although Alfwear has used its mark since 1993, had sales of $33 million in 2012, sold more than one million pairs of pants in 2015, and spent nearly $9 million in advertising from 2012-2016, it failed to provide any context for its sales and advertising figures, and so the Board could not gauge the relative level of exposure of the general public to the trademark. Nonetheless, the Board found the mark to be commercially strong.

The Marks: The Board, not surprisingly, found the marks to be similar in appearance. Both marks are likely to be pronounced as "cool." [I would have said "kewl" - ed.]. The marks would have similar meanings, since they would be pronounced as "cool." The Board concluded that the marks are similar in appearance, sound, connotation, and commercial impression.

The Goods: The fact that bicycles and outdoor clothing may be used together does not, in itself, justify a finding that the goods are related for likelihood-of-confusion purposes. Opposer Alfwear submitted 23 use-based, third-party registrations for marks covering both bicycles and various clothing items. Opposer also provided 30 third-party websites offering both bicycles and clothing; nine of those websites advertised clothing and bicycles under the same marks. Moreover, opposer has sponsored a annual bike stage race in Utah, and sponsors a competitive bicycle team that races in events across the country. The Board concluded that the involved goods are related products. Applicant admitted that opposer's goods may be purchased with a low degree of care.

Conclusion:: "Because the marks are similar, and the goods are related and move in the same channels of trade, and Opposer’s 'rugged outdoor clothing' may be purchased by consumers exercising a low degree of purchasing care," the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: What's it all about, Alfwear? Do you think that third-party evidence will show that clothing and any/every other product are related?

Text Copyright John L. Welch 2017.

Monday, December 04, 2017

TTAB Posts December 2017 Hearing Schedule

The Trademark Trial and Appeal Board (TTAB) has scheduled four (4) oral hearings for the month of December 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.

December 5, 2017 -10 AM: In re Pontet Allano Et Associes Selarl De Conseils En Propriete Industrielle , Serial No. 79165769 [Section 2(d) refusal to register the mark APOGÉE for "Perfumery; Perfumery products, namely, oils for perfumes and scents, perfumes; toilet water; eaux de parfum; eaux de Cologne; all of the foregoing for non-professional use and sold only within Louis Vuitton Malletier stores, on Louis Vuitton Malletier's website and within Louis Vuitton Malletier's store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier's exclusive distributor network," on the ground of likelihood of confusion with the registered marks ApHOGEE  (stylized) and APHOGEE (standard characters) for hair care preparations].

December 6, 2017 - 11 AM: CrossFit, Inc. v. Ralph Haeusler, Opposition No. 91220565 [Opposition to registration of the mark CROSSBOX for various clothing items in class 25, bread and pastries in class 30, and conducting sports competitions in class 41, on the grounds of lack of bona fide intent and likelihood of confusion with the allegedly famous mark CROSSFIT, registered for clothing, informational services in the field of nutrition, and entertainment in the nature of sports competitions].

December 13, 2017 - 2 PM: Kimberly-Clark Worldwide, Inc. v. Matosantos Commercial Corp., Opposition No. 91218800 [Opposition to registration of the mark shown below left, in view of the registered mark shown below right, both for for "toilet paper," on the grounds of likelihood of confusion under Section 2(d) and false association under Section 2(a)].

December 14, 2017 - 2 PM: In re Spliffin Hardware Incorporated, Serial Nos. 86295331, 86295327, and 86295324 [Refusal to register the mark SPLIFFIN for "Disposable and reusable cartridges sold filled with propylene glycol containing vaporizable nicotine, for use with portable vaporizing units in the nature of electronic cigarettes and smokeless cigarette vaporizer pipes" in class 1, "Cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; chemical flavorings in liquid form used to refill electronic cigarette cartridges" in class 30, and "Electronic cigarette refill cartridges sold empty; tobacco substitutes" in class 34,  on the ground that the goods are not in lawful use in commerce because they consist of and include marijuana, THC and drug paraphernalia, and therefore constitute a per se violation of the federal Controlled Substances Act (CSA)].

Read comments and post your comment here.

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

Text Copyright John L. Welch 2017.

Friday, December 01, 2017

PARATI Confusable With PYRAT For Spirits, Says TTAB

In a brief 10-page opinion, the Board sustained an opposition to the mark PARATI for "alcoholic beverages, except beers; spirits," finding the mark likely to cause confusion with the registered mark PYRAT for "distilled spirits." The goods are in part identical, and presumably travel in the same, normal channels of trade to the same classes of consumers. The identifications of goods include inexpensive products bought with ordinary care. But what about the marks? Patron Spirits International AG v. Les Bienheureux, Opposition No. 91223657 (November 29, 2017) [not precedential] (Opinion by Judge Karen Kuhlke).

Of course, when the goods are identical, a lesser degree of similarity is needed between the marks to support a likelihood of confusion finding.

The Board found the marks to be similar in appearance and sound because they both begin with the the letter P, and the second syllable is RAT with only one letter separating P and RAT. "The difference in the vowel in the first syllable (Y or A) and the addition of the letter I at the end of Applicant's mark are not sufficient to distinguish the marks." The Board noted that in cases involving products that are ordered orally at a bar or restaurant, the sound of the marks is of heightened importance.

As to connotation, the Board found that a substantial number of consumers will simply take the marks as they are, without ascribing any meaning to them. Any recognition of the word "pirate" in opposer's mark will not sufficiently distinguish the marks.

And so the Board found the marks similar in appearance, sound, meaning, and overall commercial impression.

The Board found opposer's mark PYRAT to be conceptually strong, but there was no evidence to support opposer's claim that it is commercially strong. Opposer's allegation that applicant acted in bad faith also failed for lack of proof.

Balancing the relevant du Pont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: I don't think the marks are all that similar.

Text Copyright John L. Welch 2017.

Thursday, November 30, 2017

TTAB Test: Are These Two Word + Design Marks Confusable for Beer?

The USPTO refused to register the mark shown below left for "beer" on the ground of likelihood of confusion with the registered mark on the right, for "Brewed malt-based alcoholic beverage in the nature of a beer." On appeal, applicant argued that the buyers of craft beer are sophisticated, that its logo is dominated by its well-known house mark MAD TREE, and that BLACK FOREST is highly suggestive of a type of beer. How do you think this came out? In re MadTree Brewing, LLC, Serial No. 86608588 (November 28, 2018) [not precedential] (Opinion by Judge Karen Kuhlke).

Because applicant's "beer" encompasses registrant's malt-based beverage in the nature of beer, the Board deemed the goods legally identical. It therefore presumed that they travel in the same channels of trade to the same classes of consumers.

The Board pooh-poohed the argument that consumers of craft beer are sophisticated, first because the involved goods are not limited to craft beer, and second because the Section 2(d) determination must be made based on the least sophisticated consumer - and the sophistication of the general consumer is not very high.

Applicant's argument that, as reflected in the marks, registrant is a home brewer located in Reading, PA and applicant is located in Cincinnati, had no merit, since both the application and registration are nationwide in scope.

As to the marks, the Board found the term BLACK FOREST to be dominant. Generally, the verbal portion of the word + design mark is the more likely to indicate source. The designs in the two marks at issue "do not overwhelm or distract from the wording BLACK FOREST." In fact, the designs reinforce the meaning of BLACK FOREST. The addition of MAD TREE to applicant's mark "is a difference between the marks" but "does not result in marks that are dissimilar for likelihood of confusion purposes." [Given the size of the words MAD TREE, how could they possibly be dominant? - ed.]

Applicant's argument that BLACK FOREST is geographically descriptive in registrant's mark constitutes an impermissible collateral attack on the cited registration. The Board may consider arguments regarding the strength of the registered mark, but as to the purported location involved - a hiking trail in Pennsylvania - there was no evidence that consumers (other than locals) would be aware of this geographical connection.

Finally, applicant claimed that BLACK FOREST is a type of beer, but the Board found applicant's meager evidence to be inadequate.

The Board found that the similarities in the marks outweigh the dissimilarities, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

Wednesday, November 29, 2017

TTAB Test: Is "BREATHLESS" Merely Descriptive of Idiopathic Pulmonary Fibrosis Information Services?

The USPTO refused registration of the mark BREATHLESS under Section 2(e)(1), finding the mark to be merely descriptive of "promoting public awareness of" and "providing medical information regarding" idiopathic fibrosis, its symptoms, its prevention and its treatment. On appeal, the examining attorney argued that the mark describes the main symptom of IPF: the shortness of breath. Applicant contended that the mark is merely suggestive, or is a double entendre because if refers to the "excitement and anticipation among IPF patients, their caregivers and loved ones about the progress being made in preventing and/or treating this serious condition." How do you think this came out. In re Boehringer Ingelheim Pharmaceuticals, Inc., Serial No. 86852106 (November 27, 2017) [not precedential] (Opinion by Judge Frances Wolfson).

The Board ignored applicant's feeble double entendre argument, but it agreed with applicant that the USPTO's evidence failed to show that the term "breathless" merely describes the subject services. "[W]hile breathlessness is an IPF symptom, there is no evidence that it relates to providing information or raising public awareness, even of IPF specifically."

We agree with Applicant that a multi-step reasoning process is required to move from the merely descriptive meaning of “breathless” as a word that describes a common symptom of lung disease in general, even of IPF specifically, to an understanding that the proposed mark conveys an immediate idea about providing medical information about IPF or raising public awareness thereof. In fact, some degree of thought or imagination is required to understand that Applicant’s services involve promoting public awareness and providing medical information about a disease that makes one “breathless.” That is, there is an element of incompleteness making the mark suggestive rather than merely descriptive.

Therefore, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

Tuesday, November 28, 2017

CAFC Affirms TTAB: MAGNESITA is Generic for .... Guess What?

In a nonprecedential ruling, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision (here) upholding a refusal to register the term MAGNESITA for refractory bricks and related products, on the ground of genericness, and for providing information via a global computer network regarding refractory products, on the ground of mere descriptiveness. In re Magnesita Refractories Company, Appeal No. 2016-2345 (Fed. Cir. November 27, 2017) [not precedential].

Genericness: The Board applied the doctrine of foreign equivalents, translating MAGNESITA as "magnesia" from the Italian and "magnesite" from the Spanish and Portuguese. Applicant did not challenge the applicability of the doctrine of equivalents. Nor did it challenge the Board's determination of the genus of the goods (refractory bricks and refractory patching and lining mixes) or the relevant public (ordinary consumers who purchase such refractory products). Instead, applicant contended that the only conclusion that could be drawn from the evidence was that magnesite and magnesia can be used in refractory products.

The record evidence, however, included numerous uses of magnesite and magnesia as key components in refractory products, and that was sufficient to establish genericness. See In re Cordua Rests., Inc., 823 F.3d 594, 603-04 (Fed. Cir. 2006) (holding that certain words referring to key aspects of a genus of services were generic for the services.)

Acquired Descriptiveness: Applicant challenged the Board's finding that applicant did not establish acquired distinctiveness for MAGNESITA for its Internet informational services. Applicant claimed the five years of use is by statute evidence of to show that MAGNESITA has acquired distinctiveness. The Board pointed out, however, that Section 2(f) of the Lanham Act says that the Director may accept as prima facie evidence of acquired distinctiveness, proof of substantially exclusive and continuous use of a mark for five years. The Board is not required to find acquired distinctiveness based on five years of use. "The Board has discretion to require more evidence, particularly for highly descriptive marks." In re Louisiana Fish Fry Prods., Ltd., 797 F.3d 1332, 1337 (Fed. Cir. 2015).

Here, the Board correctly found MAGNESITA to be highly descriptive of the services. Therefore, applicant had an elevated burden to show acquired distinctiveness by more than sales data and five years of use. The Board was within its discretion to require additional evidence, as it faulted applicant for not submitting any direct evidence showing how the public perceives MAGNESITA as a source identifier.

Conclusion: Substantial evidence supported the Board's findings that MAGNESITA is generic for refractory products and is highly descriptive for related information services.

Read comments and post your comment here.

TTABlog comment:  Keep moving. Not much to see here. Note that the CAFC rejected applicant's assertion that B&B Hardware has some applicablity to the evidentiary burdens in an ex parte appeal.

Text Copyright John L. Welch 2017.

Monday, November 27, 2017


When a Section 2(d) refusal is affirmed in an opinion of a mere eight pages, that case is a prime candidate for the "WYHA?" label. But wait! The application for GOLF WITH PURPOSE included not only clothing, but golf ball markers and golf tee marker in class 28, whereas the cited registration for GOLF WITH A PURPOSE covered only clothing. Moreover, applicant argued that the marks have different connotations. Was there hope? Would you have appealed? In re Russell Ortiz, Serial No. 86817718 (November 22, 2017) [not precedential] (Opinion by Judge Thomas W. Wellington).

The class 25 goods were in part identical, As to applicant's class 28 goods, The Examining Attorney submitted evidence establishing that golf shirts are related to golf ball and tee markers because these items are featured in retail and online stores that specialize in golf-related goods.

As to the marks, applicant argued that the inclusion of the article "A" in registrant's mark is significant:

The differences in the use of the wording “purpose” instead of "a purpose" is not minor, and in fact distinguishes not only the appearance of Applicant’s mark from Registrant’s, but conveys a different meaning, as well. For example, to golf with purpose connotes the idea that there is a passion behind playing golf. In contrast, golf with "a purpose" connotes the idea that golf is for a specific charitable cause. *** In this case, "a purpose" for Registrant['s] mark is supporting a charitable organization for combatting cystic fibrosis.

The Board was unmoved, finding that consumers "will discern little, if any, different connotations conveyed by the marks." "In both cases, consumers viewing the two extremely similar marks, will likely understand the marks in the same manner. That is, viewed in the context of identical clothes or related golf goods, the marks invoke a passion for or dedication to the sport of golf."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: What if the Miami Dolphins held a fan event called "Golf With a Porpoise"? Confusion? Dilution? Offsides?

Text Copyright John L. Welch 2017.