Tuesday, August 30, 2016

Finding Acquired Distinctiveness, TTAB Reverses 2(e)(1) Refusal of WATERCRAFT SUPERSTORE

The Board reversed a Section 2(e)(1) mere descriptiveness refusal of WATERCRAFT SUPERSTORE for "Online retail store services featuring personal watercraft parts and accessories" [SUPERSTORE disclaimed]. Applicant convinced the Board that the mark has acquired distinctiveness under Section 2(f) by pointing to many website postings recognizing WATERCRAFT SUPERSTORE as a source indicator for applicant's services. In re Watercraft Superstore, Inc., Serial No. 86369831 (August 26, 2016) [not precedenital].

Applicant sought registration under Section 2(f), thereby conceding that its mark is not inherently distinctive. Applicant bore the burden of persuasion on the issue of acquired distinctiveness. The Board noted, once again, that more evidence is required when a mark is highly descriptive, and it found applicant's mark to be "very highly descriptive."

Applicant submitted evidence showing use of its mark since 2008, orders increasing from 15,000 in 2009 to 26,000 in 2014, advertising expenditures in the $200k to 300k range per annum, distribution of 477,376 copies of its catalogues over a four-year period, and about 100k visitors to its website from 2009 to 2014. Applicant also attended 12 trade shows.

The Examining Attorney pointed out that applicant did not offer any context for this data in relation to others who provide similar services. The Board agreed that such contextual information would "improve the nature of the evidence." But it found that applicant "has meaningful, bona fide and ongoing operations, even though it would likely be characterized as a small business." The Board recognized that the sales and advertising figures, even if greater, would not be direct evidence of source recognition by consumers. However, "Applicant has taken a different approach to demonstrating actual market recognition."

Since 2009, Applicant has operated an online forum for the discussion of personal watercraft, called PWC Today. Applicant has made of record many pages of postings by users of that forum, many of which clearly recognize WATERCRAFT SUPERSTORE as the source indicator for Applicant’s online retail store. According to Applicant’s tabulation, users from 21 States have shown such recognition.

The record included more than 50 postings in which "it is clear from the context that the consumer recognizes WATERCRAFT SUPERSTORE as Applicant's source indicator."

The Examining Attorney contended that the online forum appears on applicant's website, "so consumers who use the forum know on what site they are posting." The Board, however, noted that the forum is separate from applicant's retail website and that nothing clearly indicates that the forum is a website of applicant, "although some of the users of the website acknowledge that Applicant 'sponsors' the site or is 'tied to' the website."

Applicant has demonstrated actual market recognition of its mark as a source-indicator with evidence of spontaneous comments of relevant customers and potential customers. We note that the large amount of public commentary offered by Applicant appears to be devoid of examples suggesting that customers would spontaneously refer to the stores of others as “watercraft superstores.” The evidence submitted by the Examining Attorney does not show such uses by the relevant public; nor does it show third-party merchants using “watercraft superstore” to identify or describe their services.

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Hmmm. Whatever 2(f)loats your boat.

Text Copyright John L. Welch 2016.

Monday, August 29, 2016

Precedential No. 23: TTAB Affirms Refusal Of "pitchingsmart" Due To Faulty I.D. And Specimen

Applicant Jimmy Moore LLC struck out in its attempt to register the mark pitchingsmart (in standard character form) for "entertainment in the nature of baseball games" in Class 41. Recognizing that this original recitation of services was incorrect, applicant immediately tried to amend its identification to a pitching training system, and then to educational services, but Examining Attorney Tasneem Hussain rejected the amended identifications as beyond the scope of the original, and concluded that applicant's specimens of use did not show the mark in use with the original recited services. In re Jimmy Moore LLC, Serial No. 86353015 (August 24, 2016) [precedential].

Applicant's headaches stemmed from the original sin of misidentifying its services. The error was noticed immediately and applicant filed a "voluntary amendment" seeking to amend the recitation of services to "baseball and softball training system for pitchers to improve their pitching skills for accurate and intelligent placement of baseball and softball in a strike zone." After that proposed recitation was rejected as beyond the scope of the original, applicant amended to "educational services, namely, providing seminars for baseball and softball pitching." The Examining Attorney rejected that recitation for the same reason, and maintained the requirement that applicant submit an acceptable specimen of use for the original services. Applicant petitioned the Director of Trademarks, who agreed with the Examining Attorney that the amended recitations were unacceptable, observing that:

an applicant who selects the wrong identification of services in the initial application must file a new application if the identification cannot be amended within the scope of the original identification. Therefore, the examining attorney’s action in changing the record back to the original identification was proper.

The Examining Attorney then made final the refusal to accept the amended recitation of services and the requirement for an acceptable specimen.

The Board declined to revisit the Director's decision that applicant did not have an absolute right to amend its identification if the amendment was filed before commencement of examination. Instead, the issues on appeal were whether either of the proposed amendments were acceptable and whether the applicant's specimens showed use of its mark with its identified services.

Identification of Services: Trademark Rule 2.71(a) provides that an applicant may amend its identification of goods or services to clarify or limit, but not to broaden. Applicant pointed to the language of the preamble to the rule, which refers to amendment "during the course of examination," arguing that examination had not begun and so the rule did not apply here. The Board was unmoved. First, it pointed out that it "cannot revisit the Director's decision on this point." Second, under applicant's interpretation, "there would have been no provision under the rules to file its preliminary amendment."

Applicant also contended that the amendments did not exceed the scope of the original identification, but its convoluted arguments were wholly unpersuasive. The phrase "entertainment in the nature of baseball games" is clear - the service of putting on a baseball game for the entertainment of spectators - and indeed it is one of the acceptable definitions set forth in the Trademark ID Manual. Those services do not encompass a training system for pitchers or providing educational seminars regarding pitching.

Specimens of Use: Applicant did not contend that its specimens of use supported the original identification of services. In fact, it stated that it "is not in the business of 'offering baseball games,' so applicant cannot deliver such specimens." Therefore, the Board affirmed the requirement for acceptable specimens.

Read comments and post your comment here.

TTABlog comment: The Board noted that applicant did not invoke Rule 2.146(a)(5) to seek a waiver of Rule 2.71(a). I would have immediately filed a new application once the error was discovered, wouldn't you? I probably would also have tried to amend the original application.

Text Copyright John L. Welch 2016.

Friday, August 26, 2016

Precedential No. 22: Appellee Fails To Address PTO Refusals, TTAB Affirms

The Board affirmed the USPTO's refusal to register the mark HEMP HOME HEALTH for "home health care services" because Applicants, in their appeal, failed to address the three grounds of refusal: mere descriptiveness or deceptive misdescriptiveness under Section 2(e)(1) and failure to respond to a Rule 2.61(b) request for information. In re Heather Harley and Carolyn Jones, Serial No. 86409857 (August 24, 2016) [precedential].

During prosecution, Examining Attorney Jeffrey J. Look issued the Section 2(e)(1) refusals and requested information under Rule 2.61: concerning the significance of HEMP as applied to the services, whether the services comply with the Controlled Substances Act ("CSA"), and whether applicants will be using hemp-based products in their services. He twice issued advisories regarding a possible refusal based on the ground that the use of the applied-for mark would not be lawful. Applicants complied in part, but not fully, with the Rule 2.61 request, The Examining Attorney made the three refusals final.

In their appeal, applicants framed the issue as follows: "Can an Applicant's lawful use of a trademark be denied for use in connection with legal goods because the Applicant also sells substances that my be illegal under the CSA?"[Actually, a refusal of registration has nothing to do with whether applicants may use the mark - ed.]. Applicants did not address the three grounds for refusal that were issued by the Examining Attorney.

The Board observed that applicant's arguments "suggest that they are attempting to appeal a mere advisory statement made in the Examining Attorney's Office Actions." But an advisory action is not a refusal to register. The TTAB has jurisdiction only over "a final decision of the examiner in charge of the registration of marks." See Lanham Act Section 20.

The filing of a notice of appeal has the effect of appealing all refusals or requirements made final. Applicants' failure to address these refusals is a basis for affirming the refusal or registration on all grounds.

Therefore, the Board affirmed the refusals to register.

Read comments and post your comment here.

TTABlog comment: Gee, I wonder who applicants' attorney was?

Text Copyright John L. Welch 2016.

Thursday, August 25, 2016

TTAB Test: Is "PRO." (Stylized) Merely Descriptive of Architectural Services?

The USPTO refused registration of the mark PRO. in the form shown below, finding it to be merely descriptive of "consulting services in the field of architectural design." Applicant Pic Pro appealed, contending that the stylization of the mark renders it inherently distinctive. How do you think this came out? In re Pico Pro Inc., Serial No. 86672373 (August 23, 2016) [not precedential].

Examining Attorney Seth A. Rappaport submitted dictionary definitions of the word "pro": a professional, especially in sports; an expert in a field of endeavor. The evidence also showed that "pro" is an abbreviation for "professional": having or showing great skill; expert; a person following a profession, especially a learned profession. The evidence also showed that it is not uncommon for entities to use the term "professional" to describe their architectural design services.

The Board concluded that applicant's mark "immediately conveys to the consumer that Applicant offers professional consulting services in the field of architectural design, and thus the mark is merely descriptive." The addition of a period makes no difference in the consumer perception of the mark.

Applicant maintained that the the stylization of the mark renders it inherently distinctive, pointing to "two tones, a specific font, and a large ball in distinct shading in lieu of a typically sized period of this font and size."

The Board noted that descriptive words presented in a distinctive design may be registrable as a whole, but with disclaimer of the descriptive wording. The question is whether the stylization creates "a separate and inherently distinctive commercial impression apart from the word itself." The Board acknowledged that this determination is a subjective one.

The Board found that neither the very plain presentation of the mark nor the addition of a period in the form of a "large ball" suffice to create a separate and inherently distinctive impression apart from the word "pro." In short, the appearance of the mark is "relatively ordinary."

The Board noted that the two marks shown below were found to be insufficiently stylized to be considered inherently distinctive, but it also pointed out that each case must be decided on its own merits.

The Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Wednesday, August 24, 2016

Double WYHA? RENTED.COM Merely Descriptive and Confusable with RENT.COM for Real Estate Services

The USPTO refused registration of the mark RENTED.COM for "Computer services, namely, providing search platforms to allow users to request content from and receive content to a computer or mobile device in relation to real estate," finding the mark both merely descriptive of the services under Section 2(e)(1) and likely to cause confusion with the registered mark RENT.COM, in standard character and design form, for providing online real estate information and providing a website for promotion of rental properties." The Board affirmed the refusals. Would You Have Appealed? In re VacationFutures Inc., Serial No. 86634983 (August 22, 2016) [not precedential].

Mere Descriptiveness: Applicant VacationFutures did not address the Section 2(e)(1) refusal in its appeal brief, but the Board reviewed the refusal anyway. Internet evidence submitted by Examining Attorney Seth A. Rappaport showed, not surprisingly, that the terms "rent," "rental" or "rented" are commonly used as descriptors in connection with services identical or similar to Applicant’s services. Of course, ".com" has no source-identifying significance. Only in exceptional circumstances does the addition of ".com" to an unregistrable term yield a registrable result.

Here, no such exceptional circumstances exist. The “RENTED” portion of the applied-for mark is unregistrable by itself, and the addition of the “.COM” gTLD does not create a witty double entendre or add any other significance capable of identifying source or acquiring distinctiveness.

And so the Board affirmed the mere descriptiveness refusal.

Likelihood of Confusion: The Board found the applied-for mark to be "highly similar to Registrant's mark or to the dominant portion of Registrant's marks, with respect to sound, appearance and commercial impression."

Applicant argued that the cited marks are weak, noting that RENT.COM is registered on the Supplemental Register. The Board, however, pointed out that "marks deemed 'weak' or merely descriptive are still entitled to protection against the registration by a subsequent user of a similar mark for closely related goods and/or services." That applies to marks registered not only on the Principal Register, but those on the Supplemental Register as well.

Evidence of third-party use demonstrated that "the same entity commonly markets and provides the relevant services under the same mark, and that the [involved] services are sold or provided through the same trade channels and to the same classes of consumers in the same fields of use." The Board noted for the umpteenth time that when the marks at issue are highly similar, a lesser degree of similarity between the involved goods or services is necessary to support a finding of likely confusion.

The Board therefore found confusion likely and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2016.

Monday, August 22, 2016

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

People are saying that one can predict the outcome of a Section 2(d) case about 95 percent of the time just by looking at the marks and the goods/services. In one of these three recent appeals the Board reversed a likelihood of confusion refusal. Let's see how you do in figuring out which one it was. [Answer will be found in first comment].

In re Folino Estate, LLC, Serial No. 86356824 (August 19, 2016) [not precedential]. [Refusal of the mark FOLINO ESTATE & Design (below left) for wine, bar and restaurant services, and catering services, in view of the registered mark FOLIN CELLARS & Design (below right) for wine].

In re Tax Refund Services, Inc., Serial No. 86670858 (August 18, 2016) [not precedential]. [Refusal to register the mark shown below left for "tax filing services," in view of the registered mark TRS in standard character and design form (below right) for tax advisory services.

In re Mannatech, Inc., Serial No. 86447383 (August 17, 2016) [not precedential]. Refusal of the mark NUTRIVERUS & Design (below left) for "dietary and nutritional supplements sold through a multi-level marketing program," in view of the registered mark NU VERUS & Design (below right) for "liquid nutritional supplement; nutritional supplements; vitamin and mineral supplements].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Friday, August 19, 2016

TTAB Dismisses Opposition, Rejecting Opposer's Improper Declaration Evidence

The Board granted applicant's Rule 2.132 motion for involuntary dismissal in this opposition to registration of the mark SHENANDOAH VALLEY CAMPGROUND for "providing campground facilities." Opposer alleged that the mark is merely descriptive under Section 2(e)(1) and primarily geographically descriptive under Section 2(e)(2). During its testimony period, however, opposer submitted only a declaration of its manager, along with one exhibit. Shenandoah Valley Campgrounds, LLC v. Falling Waters, Inc., Opposition No. 91221846 (August 17, 2016) [not precedential].

Rule 2.132(a) provides for the dismissal of an opposition on the ground of failure to prosecute if plaintiff's testimony period has expired and it has not taken testimony or offered any other evidence.

Testimony may be submitted by way of affidavit or declaration only upon agreement of the parties. Likewise, documents attached to a declaration or affidavit may be accepted into evidence only if the parties have so agreed. Here there was no such agreement.

Opposer feebly argued that the declaration was "impeachment evidence," but the Board observed that the declaration "was intended to introduce witness statements and evidence and is therefore, testimony." [Impeach what? Applicant hadn't testified yet? - ed.].

Because there was no agreement between the parties to allow testimony by way of declaration, Opposer's declaration and accompanying exhibit were improper and inadmissible.

The Board therefore granted applicant's motion to strike the declaration and exhibit. Since Opposer did not submit any admissible evidence or testimony in support of its asserted claims, and since applicant had not made any admissions in its answer (except as to standing), the Board granted the motion for involuntary dismissal.

Read comments and post your comment here.

TTABlog comment: This is a judgment on the merits, and so a petition for cancellation would be barred by claim preclusion.

Text Copyright John L. Welch 2016.

Thursday, August 18, 2016

TTAB Test: Three Mere Descriptiveness Refusals For Your Perusal

By my estimation, somewhere around 85% of all Section 2(e)(1) mere descriptiveness refusals that reach the TTAB are affirmed on appeal. Well, here are three appeals that were decided during the past week. How do you think they came out? [Answers in first comment]. Do you see any WYHA?'s here?

In re Currency Cases LLC, Serial No. 86391147 (August 12, 2016) [not precedential]. [Refusal of CURRENCY CASES for "Storage apparatus that attaches to mobile device with adhesive"].

In re Classic Capital, Inc., Serial No. 86334513 (March 21, 2013) [not precedential]. [Refusal of CLASSIC CAR CAPITAL, for "consumer lending and financing services for classic, vintage and historical cars"].

In re K & G Concepts LLC., Serial No. 85940179 (August 15, 2016) [not precedential]. [Refusal of SMOOTH WRAP for "cigarillos; cigars; flavored tobacco; hand-rolling tobacco; leaf tobacco; roll your own tobacco; tobacco, cigars and cigarettes" [WRAP disclaimed].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Wednesday, August 17, 2016

Finding Institutional Chicken Related to Frozen Fish, TTAB Affirms RED LABEL 2(d) Refusal

The Board affirmed this Section 2(d) refusal to register the mark RED LABEL for "chicken for sale to foodservice institutions," finding it likely to cause confusion with the identical mark registered for "frozen fish and seafood." Applicant Tyson Foods argued that its customers are sophisticated and would distinguish between the source of goods distributed under a mark from the source of goods manufactured or produced under a mark. The Board was not impressed. In re Tyson Foods, Inc., Serial No. 86533628 (August 9, 2016) [not precedential].

Of course, the identity of the marks weighed heavily in favor of a finding of likely confusion: when the marks are identical, a lesser degree of similarity between the involved goods is needed to support a Section 2(d) bar to registration.

There could be little dispute that the goods are similar in nature, since chicken, fish, and seafood may be used interchangeably as appetizers or entrees, or in salads and sandwiches. [Really? I think they taste quite different - ed.]. Tyson, however, focused on the fact that its goods are not directed to retail consumers but to foodservice institutions, and thus involve purchasers more sophisticated than the general public.

Because applicant Tyson limited its identified class of purchasers, the only overlap in purchasers is foodservice institutions. Tyson argued that foodservice purchasers are sophisticated and exercise a high degree of care when purchasing goods. The Board agreed that "it stands to reason that institutional investors will exercise greater care in making their purchases than the general purchasing public."

Examining Attorney Brittney L. Cogan provided excerpts from various commercial websites offering chicken and fish or seafood under the same mark to foodservice institutions. She also submitted third-party registrations covering all three products sold to such institutions. Tyson, however, asserted that although these products may be distributed by the same company, sophisticated foodservice buyers "are not likely to think that such goods are manufactured or produced by the same company even if the goods are identified by the same mark."

Tyson conceded that there may be a few exceptions - i.e., entities that both manufacture or produce, and distribute, poultry and seafood to food service institutions. Moreover, it conceded that foodservice buyers "buy directly from manufacturers or wholesale distributors."

The Board concluded that some sources distribute all of these food products under the same brand, while others both produce and distribute food products. "The cited third-party evidence serves to suggest that the identified goods are of a type that emanate from a single source."

Finally, the Board observed once again that even sophisticated buyers are not immune from source confusion, especially when the marks, "as used on their identified goods, so resemble one another as to be likely to cause confusion ...." [That begs the question, doesn't it? - ed.].

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: If a distributor called Joe Blow's offered to deliver chicken on one day, and the next day someone offered to sell directly seafood under the Joe Blow's mark, I would think the seafood producer and the chicken distributor service were related, wouldn't you? I can see why Tyson got knocked out.

Text Copyright John L. Welch 2016.

Tuesday, August 16, 2016

TTAB Test: Are These Ice Cube Marks Confusable for Soft Drinks?

The USPTO refused registration of the mark shown below left, for "flavored bottle water, flavored enhanced water, flavored water, purified bottled drinking water, bottled artesian water, drinking water with vitamins, distilled drinking water," finding the mark likely to cause confusion with the registered mark shown below right, for "soft drinks." Both marks depict an ice cube and fruit. Based on dictionary definitions of "soft drink," the Board concluded that the goods are in part identical. But what about the marks? How do you think this came out? In re Juice of New York, Serial No. 85908633 (August 12, 2016) [not precedential].

The dictionary evidence defined "soft drink" as "a beverage that is not alcoholic or intoxicating and is usually carbonated, as root beer or ginger ale." According to the Board, flavored waters are encompassed within "soft drinks." [Are applicant's waters carbonated? - ed.].

As to the marks, the Board found them to be similar in appearance "in a number of ways." Both marks represent an ice cube juxtaposed with a form of fruit. Moreover, "the numerous circular grapes in Applicant's mark resemble the many round lobes of the berry in Registrant's mark." The registered mark has no color claim, and so it might be used in colors that resemble those of applicant's mark. Of course, the presence of the wording JUICE INC. is a point of difference.

Registrant's mark has no sound, whereas the sound of JUICE INC. is a point of difference.

As to meaning, the unusual idea of a combination of fruit with an ice cube in both marks constitutes a "substantial degree of similarity in meaning."

The concept of juice is expressed literally in Applicant’s mark, and not in the cited mark. However, we view this as a very weak point of distinction in meaning between the two marks, inasmuch as both marks are for use in connection with goods that may be flavored with juice; and because the idea of juice from fruit is at least suggested by the representation of fruit in Registrant’s mark.

The Board found that, although there are a number of differences in the marks, they are outweighed by the "surprising similarity inherent in the unusual juxtaposition of an item of fruit with a cube of ice." The Board concluded that "overall, Applicant's mark creates the commercial impression of being a rough or rudimentary depiction or imitation of Registrant's more realistically rendered mark."

Applicant pointed out that it owns the copyright in its mark, but the Board pointed out that ownership of a graphic design is legally separate from the right to register that design as a trademark.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How did you do? I would have reversed.

Text Copyright John L. Welch 2016.