Tuesday, February 09, 2016

IP Cases on Supreme Court Docket: October 2015 Term

Wolters Kluwer, in its IP Today newsletter, provided a chart here listing the current "U.S. Supreme Court Docket, October 2015 Term — Intellectual Property Cases," with links to the docket sheet, the lower court ruling, and many of the pertinent briefs. Patent cases overwhelm the trademark cases in number. We will note below the few of the latter variety that concern TTAB-related matters.

Shammas v. Hirschfeld, formerly known as Shammas v. Focarino: Pending petition for a writ of certioriari from a ruling of the Fourth Circuit that in a Section 1071(b) civil action for review of an ex parte TTAB decision, the plaintiff/applicant must pay the PTO's expenses (including attorney and paralegal fees), win or lose (allegedly contrary to the "American Rule"). [TTABlogged here]. The USPTO filed is brief in response to the petition on February 3, 2016.

New Millennium Sports, S.L.U. v. Jack Wolfskin Ausrustung fur Draussen GmbH & Co. KGaA: Petition for certioriari denied on January 5, 2016. Sought review of a CAFC decision [TTABlogged here], which held that evidence of third-party use is "powerful on its face" even when the specific extent and impact of the usage has not been proven. The CAFC reversed a TTAB decision that had found the marks shown below to be confusingly similar for clothing items.

Couture v. Playdom: Petition for certioriari denied on October 5, 2015. David Couture sought review of the CAFC's ruling [TTABlogged here] that his application to register a service mark for certain entertainment services was void ab initio because he had not "rendered" the services prior to the date of filing his use-based application.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

Monday, February 08, 2016

WYHA? "HEALTHY HEMP" Merely Descriptive of Hemp-Containing Baked Goods, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register HEALTHY HEMP, finding it merely descriptive of "bakery goods; breads; tortillas; all of the foregoing containing hemp" [HEMP disclaimed]. Applicant argued that the mark as a whole "has no meaning," and that "the Board has approved marks that convey more about the respective goods or services than does Applicant's mark." Would You Have Appealed? In re French Meadow Organic Bakery, LLC, Serial No. 86243820 (February 4, 2016) [not precedential].

Examining Attorney Robert J. Struck relied on dictionary definitions of "healthy" ("conducive to health") and "hemp" ("a tall widely cultivated Asian herb (Cannabis sativa of the family Cannabaceae, the hemp family) that has a tough bast fiber used especially for cordage ...."), and on Internet pages referring to "healthy hemp" in the context of food (e.g., "7 Healthy Hemp Foods to Try"). The Board was convinced:

Based on this evidence, we find that the mark HEALTHY HEMP directly conveys to consumers that the bakery products, breads and tortillas are healthful products, and that they are hemp-based products. Therefore, the proposed mark HEALTHY HEMP is a combination of two adjectives which describe Applicant’s products (e.g., a healthy, hemp tortilla).

Applicant maintained that its mark "as a whole has no meaning and thus, is not descriptive of any goods.... [C]ombining the terms has no known significance and creates a unique impression which is inventive [sic]." The Board was unmoved.

As to third-party registrations of other marks, the Board once again observed: "It is well settled that the Board must address each case on its own merits," based on the record before it. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2016.

Friday, February 05, 2016

Precedential No. 2: TTAB Denies Protective Order Motion and Sanctions Movant

The Board was not pleased with Applicant Rani Sachdev's motion for a protective order, filed on the day her discovery responses were due. It denied the motion as deficient and meritless, ordered Sachdev to show cause why sanctions should not be imposed, and barred her from from filing any unconsented or unstipulated motion without Board permission. Emilio Pucci International BV v. Rani Sachdev, Opposition No. 91215100 (January 20, 2016) [precedential].

Opposer Emilio Pucci opposed Sachdev's application to register the mark St. Pucchi, in the stylized form shown above, for women's clothing, on the grounds of likelihood of confusion, dilution, and lack of ownership. It served a first set of discovery requests comprising 27 numbered interrogatories, 31 numbered document requests, and 83 numbered requests for admission. Applicant's counsel, on the day her discovery responses were due, sent three emails to Opposer's counsel requesting extensions of time (of decreasing length), but Opposer's counsel responded that she was unable to obtain instructions from Opposer. Applicant then filed a motion for protective order under FRCP 26(c), claiming that the discovery requests were overly broad and burdensome.

The Board first pointed out that filing a motion for a protective order, instead of responding and/or objecting to discovery requests, is generally not the proper course of action. See TBMP Sections 405.04(b), 406.04(c), and 410. With regard to interrogatories in particular, if the receiving party believes that the number exceeds the seventy-five interrogatory limit of Rule 2.120(d)(1), that party may serve a general objection. The purpose of the Rule is to "advance the discussion" between the parties and to "encourage them to discuss" their differences. Allowing a party to seek a protective order when there has been insufficient effort to resolve the dispute "is an entirely unworkable and impracticable approach that reflects a disregard for the affirmative duty to cooperate in the discovery process."

However, a party  may seek a protective order where it is "readily apparent that the discovery requests are so oppressive as to constitute clear harassment." Domond v. 37.37, Inc., 113 USPQ2d 1264, 1266 (TTAB 2015). Rule 2.120(f) provides, in pertinent part, that the Board may "make any order which justice requires to protect a party from annoyance, embarrassment, oppression, or undue burden or expense ...." In such case, the movant must establish good cause for the issuance of a protective order, i.e., "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements." The Phillies v. Philadelphia Consol. Holding Corp., 51 USPQ2d 1759, 1761 (TTAB 2013); and see FRCP 26(c)(1).

Applicant Sachdev made no effort to resolve the disputed issues before filing her motion. That lack of good faith effort was alone a sufficient basis for denial of the motion.

As to whether a protective order was warranted, the Board expects the parties to apply the principles of proportionality with regard to discovery. Domond at 1268; and see TBMP Section 402.01 and FRCP 26(b)(1) (as amended on December 1, 2015). The Federal Rule now states:

[u]nless otherwise limited by court order ... [p]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.

Applying the principle of proportionality here, the Board found no basis for concluding that Opposer's discovery requests would cause annoyance, embarrassment, oppression or undue expense. The discovery requests were standard and typical for this type of proceeding, and were tailored to seek relevant information. The interrogatories, under any counting method, did not exceed seventy-five in number.

Moreover, Applicant's motion lacked any legal citation or supporting argument, but rather contained  conclusory, "boilerplate" statements, with no explanation as to why the requests were burdensome or oppressive. The fact that Applicant filed her motion on the very day her responses were due was also troubling to the Board. She could have requested an extension of time prior to, or even on, the due date. Her unfounded and improper motion "calls into question whether Applicant had any objective for filing it other than to stall the proceeding."

The Board therefore denied the motion. Furthermore, exercising its inherent power to impose any sanction provided for by FRCP 37(b)(2), the Board allowed Applicant 15 days within which to show cause as to why the Board should not sanction her by finding that (1) she has forfeited her right to object on the merits to Opposer's discovery requests, and (2) Opposer's requests for admissions are deemed admitted  pursuant to FRCP 36(a)(3).

In addition, the Board barred Applicant from filing any unconsented or unstipulated motion in this proceeding without first requesting and receiving the Board's permission to do so.

Read comments and post your comment here.

TTABlog comment: Hard to understand why applicant did not simply file a request for extension even without Opposer's consent.

Text Copyright John L. Welch 2016.

Thursday, February 04, 2016

WYHA? CARBON ELIMINATOR Merely Descriptive of Fuel Additive, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark CARBON ELIMINATOR, finding it to be merely descriptive of "non-chemical enzyme fuel additive" [CARBON disclaimed]. Applicant's own specimen of use stated that the product "removes tough carbon deposit." Would You Have Appealed? In re Star-Brite Distributing, Inc., Serial No. 86344788 (February 2, 2016) [not precedential].

Examining Attorney Vivian Micznik First relied on a dictionary definition of "eliminate" - "to remove or take out, get rid of." Applicant's product description proclaimed that the product "uses enzyme technology to remove carbon, gum and varnish deposits."

The Board declared that "it is settled that where marks describe the intended purpose of the goods in connection with which they are used, they are merely descriptive."

Applicant's double-entendre argument was both unavailing, since the supposed second meaning of the mark was also descriptive of the goods. Finally, Applicant pointed to allegedly similar third-party marks, but the Board pointed out once again, quoting In re Datapipe, Inc., that "each application must be examined on its own merits. Neither the Trademark Examining Attorney nor the Board is bound to approve for registration an Applicant’s mark based solely upon the registration of other assertedly similar marks for other goods or services having unique evidentiary records."

The Board had no doubt as to the descriptiveness of CARBON ELIMINATOR, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Any thoughts?

Text Copyright John L. Welch 2016.

Wednesday, February 03, 2016

TTAB Renders Split Decision in MONSTER v. MONSTERFISHKEEPERS Double-Header

The Board sustained Monster Energy's opposition to registration of the M Design mark shown below left, finding it likely to cause confusion with Monster Energy's registered design mark shown below right, for overlapping clothing items. However, the Board dismissed Monster Energy's opposition to registration of MONSTERFISHKEEPERS, in standard character form, finding it not likely to cause confusion with opposer's common law mark MONSTER, both for clothing items. Monster Energy's dilution-by-blurring claim directed at the MONSTERFISHKEEPERS mark failed utterly. Monster Energy Company v. Li-Wei Chih, Consolidated Oppositions Nos. 91205893 and 91205924 (February 1, 2016) [not precedential]

Evidence of third-party use of MONSTER-formative marks led the Board to find that the mark MONSTER is "somewhat weak for clothing." The letter M, however, was not shown to be similarly weak.

As to the marks, the Board found the two design marks to be "overall quite similar."

We do not ignore the design elements in the marks unique to each mark, particularly Applicant’s use of devil horns and tail and Opposer’s mark appearing to be a three-pronged claw mark. However, we must further keep in mind that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather the focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. *** Under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections

As to the word marks MONSTER and MONSTERFISHKEEPERS, "the additional matter in Applicant’s mark plays a significant role in helping to create a commercial impression that is quite different from Opposer’s mark, MONSTER."

That is, consumers encountering Applicant’s mark will quickly discern the three recognizable words, MONSTER and FISH and KEEPERS. Applicant introduced evidence showing that the first two terms or “monster fish” may be used to describe an extremely large fish kept as a pet or a gigantic fish that might be described fantastically as a “monster."

The Board therefore found the marks to be different in appearance and sound and, "most importantly," in their meanings. "The similarity of the marks based on Applicant’s incorporation of Opposer’s mark is outweighed by the differences, especially the connotation of MONSTERFISHKEEPERS versus that of MONSTER. Accordingly, this factor weighs against finding a likelihood of confusion."

The Board therefore dismissed the Section 2(d) claim.

As to the dilution claim (involving only the word mark MONSTERFISHKEEPERS), Opposer did not prove that its MONSTER mark was famous prior to 2010, Applicant's first use date. Moreover, the marks MONSTER and MONSTERFISHKEEPERS have little similarity, and in any case Opposer is not the sole user of the mark MONSTER. There was no direct evidence of the level of recognition of the MONSTER mark, little evidence of an intent on the part of Applicant to associate his mark with the MONSTER mark, and no proof of actual confusion.

Read comments and post your comment here.

TTABlog comment: It seems to me that Applicant was trying to suggest Opposer's marks without copying them exactly. What do you think? BTW, note that Applicant was represented by Eve Brown of the Boston University Law School Clinic, and formerly of the Suffolk University Law School Clinic.

Text Copyright John L. Welch 2016.

Tuesday, February 02, 2016

TTABlog Road Trip: Beverly Hills Bar Association, February 11th

Yours truly, the TTABlogger, will share the podium with TTAB Judge Lorelei Ritchie at a luncheon gathering of the Beverly Hills Bar Association, for a presentation entitled "The TTAB Comes to the BHBA." The event is hosted by the BHBA's IP, Internet & New Media Section, on Thursday, February 11, 2016, from 12:00 to 2:00 PM. Registration here.

Judge Ritchie will present tips on best practices for making your case before the TTAB, including trial and briefing, as well as tips for ex parte appeals. Yours truly will discuss ......... wait for it........ recent developments at the TTAB (and in the courts)!

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

How Often Did the TTAB Affirm a Section 2(d) Refusal in 2015? a 2(e)(1) Mere Descriptiveness Refusal?

This weekend I went to 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 2015. The highly unscientific results are set out below. 

Section 2(d): I counted 223 Section 2(d) refusals, of which 188 were affirmed and 35 reversed. That's an affirmance rate of about 85%. [Down from a whopping 91% last year and more in line with the past few years].

Seven of the opinions were deemed precedential. The HUGHES FURNITURE, HOUSE BEER, MARAZUL, C.J. HANSON, and I AM refusals were affirmed. The TERRAIN and ALLEGIANCE STAFFING refusals were reversed.

NB: Some cases involved a mark in standard character and stylized form, and I counted that situation as one refusal.

Section 2(e)(1) mere descriptiveness: Of the 97 Section 2(e)(1) mere descriptiveness refusals, 84 were affirmed and 13 reversed, for an affirmance rate of approximately 86%. That is consistent with estimates that I and others have made in past years.

The only precedential opinion, in the SMART SERIES case, was affirmed.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.

Monday, February 01, 2016

TTAB Posts February 2016 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled five (5) oral hearings for the month of February, as listed below. 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.

February 10, 2016 - 10 AM: In re Summit Entertainment, Inc., Serial Nos. 77921983, 77921986, 77921988, 77921992, and 77921993. [Section 2(d) refusals to register the mark ECLIPSE for various goods relating to motion pictures and entertainment, in classes 9, 14, 18, 24, and 25, in view of, respectively, several class 9 registrations for the identical mark, a registration of the identical mark for watches in class 14, three registration in class 18 for ECLIPSE, ECLIPZE, and ECLIPS & Design, a class 24 registration of ECLIPSE for curtains, and a class 25 registration of the identical mark for footwear].

February 17, 2016 - 10 AM: Smart Closets LLC v. Produits Forestiers Direct Inc./Direct Forest Products Inc., Opposition No. 91210215 [Opposition to registration of SMART CLOSET for "modular storage systems, namely, shelves units, cabinets, rails, doors, shelves, poles, clothes bars, drawers and drawer units, being installed in wardrobes or any other room of a house, office or garage," on the ground of lack of bona fide intent to use the mark in commerce].

February 23, 2016 - 2 PM: In re Fullscreen, Inc., Serial No. 85951468 and 85951513 [Refusal to register the mark FULLSCREEN, in standard character and design form, for various services relating to development, distribution and production of advertisements and digital content].

February 23, 2016 - 3 PM: In re United States Steel Corporation, Serial No. 86174180 [Section 2(a) deceptiveness refusal to register COPPER-10 for prepainted coated sheet steel, namely, coated sheet steel prepainted to simulate naturally weathered copper"].

February 24, 2016 - [Time to be determined]: In re Loggerhead Tools, LLC, Serial No. 85598798 [Refusal to register a motion mark "depicting the product configuration of a hand tool in which six rectangular-shaped jaw-like elements of the circular head of a hand tool radially move in and out," for "Hand tools, namely, gripping tools in the nature of wrenches and wire crimpers for sale through mass merchandisers to retail consumers," on the ground of Section 2(e)(5) functionality]. [Video specimen of use here].

Read comments and post your comment here.

TTABlog note: See any WYHA?s here?

Text Copyright John L. Welch 2016.

Friday, January 29, 2016

Divided TTAB Panel Dismisses Oppositions: No Priority Based on Title of SIngle Work

The Board, in a split decision, granted Applicant BOL Enterprise's motion for summary judgment, dismissing Opposer Independent Media's likelihood of confusion and fraud claims. Opposer's  alleged priority was based use of the mark BOL as the title of a single creative work, which the Board held was not a trademark use. Opposer's fraud claim was based on Applicant BOL's statements that it had exclusive rights in the applied-for marks despite its knowledge of Opposer's rights; however, since Opposer had no rights, those statement were not false let alone fraudulent. Independent Media Corporation (PVT.) Ltd. v.BOL Enterprise (PVT.) Ltd., Oppositions Nos. 91216909, 91216942, and 91219384 (January 14, 2016) [not precedential].

Priority: Opposer claimed prior use of the mark BOL for movies and films, pre-recorded DVDS, and the like, and for audio production services. Applicant asserted that Opposer's prior claim was based solely on a Pakistani motion picture entitled "Bol," which briefly appeared in US theaters in 2011. Applicant maintained that under the applicable precedents, use of a term as the title of a single work did not create any trademark rights, and therefore Opposer did not have priority of use.

The Board observed that the title of a single creative work is not a trademark. See, e.g., Herbko Int'l Inc. v. Kaplan Books, Inc. The name of a series of books, however, may be registered as a trademark. In re Cooper. A book title identifies a specific literary work, whereas the name of a series "has a trademark function in indicating that each book of the series comes from the same source as the others."

Opposer asserted that it used BOL not only as a movie title, but also on soundtracks from the movie [see photo above]. The panel majority found, however, that "[b]ecause of the soundtrack's association with the BOL film, and because only songs from the BOL Film are in the soundtrack or compilation of songs, Applicant has established that the soundtrack or compilation of songs is based on or derived from the same creative work, namely, the BOL Film."

In the absence of evidence demonstrating that BOL is used on at least two different creative works, we conclude as a matter of law that BOL is simply the title of essentially a single creative work. Cf., In re Arnold, 105 USPQ2d 1953, 1956 (TTAB 2013) (requiring evidence that a title is used on at least two different creative works). See also, Trademark Manual of Examining Procedure (“TMEP”) § 1202.08(c) (October 2015).

Opposer also claimed secondary meaning in the term BOL, but the Board pointed out that titles of single creative works are incapable of any trademark significance, even if proof of acquired distinctiveness is proffered.

Because Opposer could not establish priority, the Board granted applicant's motion for summary judgment motion on the Section 2(d) claim.

Fraud: As to the fraud claim, since Opposer had no rights in the mark BOL, there was nothing fraudulent, or even false, about applicant's statements that it owned exclusive rights in the mark.

Dissent: Judge Wolfson dissented, urging that the "title of a single work" doctrine should not apply when there exists a creative work and and a derivative work that varies substantially in content from the original. Since Opposer used the mark BOL on multiple works, and also used the term as a trade name, it should have the opportunity to show that the term has acquired distinctiveness. It is error to hold as a matter or law that in such a case a party cannot establish priority. The standard of proof may be high, but Opposer should have the opportunity to make its case.

Judge Wolfson would also not summarily dismiss the fraud claim because, contrary to the majority's view, Opposer did properly make of record a temporary injunction order from a Pakistani court, and therefore a genuine issue of material fact existed as to the impact of that order on this case.

Read comments and post your comment here.

TTABlog comment: The Board made no mention of its November 2014 nonprecedential decision in In re King [TTABlogged here], which held that the title of a single DVD was registrable as a trademark under Section 2(f), with proof of acquired distinctiveness. Judge Quinn was a panelist on both cases.

Text Copyright John L. Welch 2016.

Thursday, January 28, 2016

TTAB Reverses 2(e)(3) Geographical Deceptiveness Refusal of "AUX ETAT UNIS" for Luggage

Yours truly, the TTABlogger, notched a victory in this appeal from a Section 2(e)(3) refusal to register the mark shown below for luggage and other Class 18 goods. The Board found that, although the phrase AUX ETATS UNIS refers to a generally known geographical place [can you guess what place?], the Examining Attorney failed to show that a substantial portion of the relevant consuming public would likely be deceived by the place name. In re Luvanis S.A., Serial No. 86294633 (January 26, 2015) [not precedential].

In order to establish a prima facie case that a mark is primarily geographically deceptive misdescriptive case under Section 2(e)(3), the USPTO must show that:

1) The primary significance of the mark is a generally known geographic place;

2) The goods or services do not originate in the place identified in the mark;

3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and

4) The misrepresentation would be a material factor in a substantial portion of the relevant consumers’ decision to buy the goods or use the services. In re Spirits International, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1490-95 (Fed. Cir. 2009).

Applicant argued that "aux Etats Unis" would be translated as "to the United States," but the Board found that the phrase could also mean "in the United States." The Board concluded that the primary significance of the mark is a known geographic place, and so the first prong of the 2(e)(3) test was satisfied.

Applicant conceded that its goods would not originate in the United States, and so the second prong of the test was met. [Can a prong be met? Not without some pain, I think - ed.].

As to the third and fourth elements, none of the PTO's evidence "concerns the issue of whether a substantial portion of the relevant consuming public would likely be deceived by a non-English place name."

In cases under the doctrine of foreign equivalents, where the place name in the mark appears in a foreign language, the requirement that a substantial portion of the relevant consuming public would likely be deceived raises special issues. To make a determination about “a substantial portion” in such cases, the examining attorney must consider whether the foreign language place name would be recognizable as such to consumers who do not speak the foreign language, and/or whether consumers who speak the foreign language could constitute a substantial portion of the relevant consumers (e.g., because they are the “target audience”). Spirits, 563 F.3d at 1353, 90 USPQ2d at 1493; see Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1097 (TTAB 2012).

The Board found nothing in the record from which to determine "whether (1) U.S. customers who do not speak French would recognize 'aux Etats Unis' as referring to 'in the United States' or 'to the United States,' or (ii) U.S. consumers who speak French are a substantial portion of the relevant consuming public, and would be deceived by the asserted misrepresentation in the mark."

The Board also noted that the PTO had failed to show that the misrepresentation would be a material factor in the purchasing decisions of a substantial portion of the relevant consuming public.

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: The Spirits test under Section 2(e)(3) is stringent, particularly the third and fourth factors. When a marks for cigars sounds of Cuba, a 2(e)(3) refusal may stick because of the size of the Spanish-speaking population in this country and the desirability of Cuban cigars (see, for example, the GRAN HABANO case, TTABlogged here), but otherwise the Office has a tough row to hoe.

Text Copyright John L. Welch 2016.

Wednesday, January 27, 2016

The Top Ten TTAB Decisions of 2015 [Part 2]

Here is the second half of the TTABlog's "top ten" list of 2015 TTAB decisions. Part 1 may be found here. If you would have selected other cases for the top ten, please say so in the comments.

Frankish Enterprises Ltd., 113 USPQ2d 1964 (TTAB 2015) [precedential] [TTABlogged here]. The Board reversed a refusal to register the mark shown below, comprising a “truck cab body in the design of a fanciful, prehistoric animal,” for “entertainment services, namely performing and competing in motor sports events in the nature of monster truck exhibitions.” The Examining Attorney contended that applicant’s design fails to function as a service mark because monster trucks appear in a wide variety of designs and applicant’s design would not be perceived as a source indicator. The Board first noted that, although product designs cannot be inherently distinctive, product packaging trade dress and trade dress for services can be. The Board found applicant’s proposed mark to be “akin to the packaging of what is being sold.” Under Two Pesos, trade dress for services may be inherently distinctive. Applying the CCPA’s Seabrook test, the Board found the mark to be unique and unusual, and therefore inherently distinctive.

In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015) [precedential] [TTABlogged here]. The differences in the goods and their channels of trade and the high level of purchaser care led the Board to conclude that the mark TERRAIN for “recreational vehicles, namely, towable trailers” is not likely to cause confusion with the identical mark registered for “motor land vehicles, namely, trucks.” Thor Tech submitted dozens of third-party registrations for the same or very similar marks, owned by different entities, for vehicles and recreational vehicle trailers, suggesting to the Board that “businesses in these two industries believe that their respective goods are distinct enough that confusion between even identical marks is unlikely. The Board found that this “pattern of registrations” rebutted the two third-party registrations submitted by the Examining Attorney. The Board came to a similar conclusion in Keebler Company v. Associated Biscuits Limited, 207 USPQ 1034, 1038 (TTAB 1980) (“The mutual respect and restraint exhibited toward each other by the owners of the plethora of marks, evidenced by their coexistence on the Register, are akin to the opinion manifested by knowledgeable businessmen ...."). The third-party registrations “suggest that consumers are aware that [the goods] are offered by different companies under the same or similar marks.”

In re Engine 15 Brewing Co., LLC, S.N. 86038803 (October 29, 2015)[not precedential] [TTABlogged here] and In re Left Nut Brewing Company, Inc., S.N. 85935569 (November 13, 2015) [not precedential] [TTABlogged here]. This pair of “nut” cases may be interesting, but perhaps not very important after the CAFC's decision in In re Tam, since the complete demise of the Section 2(a) immoral or scandalous refusal seems imminent. The Board reversed Section 2(a) refusals, finding the marks NUT SACK DOUBLE BROWN ALE and LEFT NUT BREWING COMPANY for beer, not to be immoral or scandalous. The Board observed that the USPTO may prove that a mark is scandalous under Section 2(a) by showing that the mark is “vulgar” as applied to the identified goods. The mark must be considered in light of contemporary attitudes, from the standpoint of a substantial composite (not necessarily a majority) of the public. The Board has noted for several decades that “contemporary attitudes toward coarse language are more accepting than they had been in earlier eras.” As to the first mark, the Board concluded that “beer drinkers can cope with Applicant’s mark without suffering meaningful offense.” Even when the consumer thinks of body parts or insults, he or she is still likely to see the mark as an attempt at humor. As to the second, in view of the mixed record of vulgar and non-vulgar meanings, the Board ruled that the evidence had failed to establish that LEFT NUT is vulgar: the term has even been use “by senators and web-authors with no evidence of offense or disapproval” and the PTO has registered similarly-suggestive “nut” marks.

Southwestern Management, Inc. v. Ocinomled, Ltd. and Emeril’s Food of Love Productions, LLC, 115 USPQ2d 1007 (TTAB 2015) [precedential] [TTABlogged here]. Concluding that there would be a likelihood of confusion even in Applicant Southwestern Management’s current territory (upstate New York), the Board dismissed this proceeding involving a concurrent use application for the mark DELMONICO’S for “restaurant services.” Southwestern, the junior user but first to file an application to register, sought a nationwide registration except for the areas of use of the two named Defendants. However, the renown of the Defendants’ restaurants (one in New York City (DELMONICO’S), the heir apparent to the historical restaurant of that name, the other based in New Orleans (DELMONICO) and promoted by Chef Emeril Lagasse) made it likely that confusion would occur even if Applicant’s registration for “restaurant services” were limited to upstate New York. In short, Southwestern failed to carry its burden of proof to show that confusion is not likely. The Board hastened to add that its determination did not, in some respects, take into account actual marketplace conditions, and affected only the issue of registrability and not Southwestern’s right to use the mark. And so the Board denied Southwestern the concurrent use registration requested.

ProMark Brands Inc. and H.J. Heinz Company v. GFA Brands, Inc., 114 USPQ2d 1232 (TTAB 2015) [precedential] [TTABlogged here]. The Board gave the cold shoulder to this consolidated opposition to registration of the mark SMART BALANCE for frozen entrees and for various snack foods and desserts, finding the mark not likely to cause confusion with the registered mark SMART ONES for various types of frozen foods, including entrees, desserts, ready-to-eat wraps, pizzas, and breakfast foods. The Board concluded that the marks are significantly different, particularly in view of the weakness of the formative “SMART,” the seventeen-year period of conflict-free coexistence of the parties’ marks (but not for frozen foods), and applicant’s corroborating survey evidence and expert testimony. A large portion of the Board’s opinion focused on the expert testimony and survey evidence. Opposers’ likelihood of confusion survey purported to show a 32% likelihood among the 250 respondents surveyed, but the Board found the survey to be fatally flawed, primarily because the pivotal question was close-ended and failed to ask “why?” Applicant’s survey, on the other hand, comported with best practices. It reported a 2% likelihood of confusion among relevant purchasers, based on 410 respondents, and the Board found that this supported a conclusion that confusion is not likely.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.