Wednesday, July 01, 2015

TTAB Posts July 2015 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled six (6) oral hearings for the month of July, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner). Briefs and other papers for these cases may be found at TTABVUE via the links provided.

July 9, 2015 - 2 PM: In re Peter Tesher, Serial No. 85405171 [Section 2(e)(1) mere descriptiveness refusal of COLLEGE BIDS for "On-line trading services in which a seller posts items to be sold at a set price; online trading services in which a seller posts items to be sold in an auction-style format where bidding is done electronically; and providing evaluative feedback and ratings of sellers' goods and services, the value and prices of sellers' goods, buyers' and sellers' performance, and delivery and overall trading experience in connection with the foregoing, all for commercial purposes," and refusal based on failure to disclaim COLLEGE as to feedback and ratings services.]

July 14, 2015 - 2 PM: In re Shanon Preston, Serial No. 85864287 [Section 2(d) refusal to register the mark UNRATED for"Clothing sold only through owner's online store, namely, anti-sweat underwear, hats, jackets, pants, rash guards, shirts, shorts, sleepwear, sports bra, sweat pants, sweat shirts, swim wear, t-shirts, tops, underwear, yoga pants," on the ground of likelihood of confusion with the registered mark UNR8ED for "footwear."]

July 14, 2015 - 2:30 PM: In re Shanon Preston, Serial No. 85864264 [Section 2(d) refusal to register the mark GET CENSORED for "Clothing sold only through owner's online store, namely, hats, jackets, pants, rash guards, shirts, shorts, sleepwear, sports bra, sweat pants, sweat shirts, swim wear, t-shirts, tops, underwear, and yoga pants" on the ground of likelihood of confusion with the registered mark CENSORED for jeans, shirts, shorts, and other clothing items.]

July 15, 2015 - 11 AM: In re Johnson & Johnson, Serial No.77684321 [Refusal to register the mark BEST FOR BABY for "Toiletries, namely, baby bath skin cleansers and washes, and baby lotion," on the ground that applicant's specimens do not establish trademark use.]

July 21, 2015 - 2 PM: In re Epiq Systems, Inc., Serial Nos. 85979129 and 85978692 [Refusal to register the marks DMX MOBILE and DOCUMATRIX MOBILE for "Consulting in the field of technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; Leasing of computer software that stores and manages documents, digital media, text, sound, and images, all in the fields of electronic discovery, internal corporate matters, compliance, second requests, litigation, investigations, and document management for purposes of responding to discovery" and "Consulting in the field of technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; leasing of computer software that stores and manages documents, digital media, text, sound and images in the fields of electronic discovery, internal corporate matters, compliance, second requests, litigation, investigations and document management" [MOBILE disclaimed] on the ground that applicant's specimens do not show the mark in actual use in commerce for the identified services.]

July 28, 2015 - 2 PM: In re Ovo Joint Venture LLC, Serial No. 85551871 [Section 2(e)(1) deceptive misdescriptiveness refusal of the mark OVO [translated as "egg"] for "Adult sexual stimulation aids ...."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2015.

Monday, June 29, 2015

TTABlog Quarterly Index: April - June 2015

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the blog on Twitter (here). And don't forget to leave your comments! [Note that E-mail subscribers may have to surf to the blog to see comments]. Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at wolfgreenfield dot com.

Section 2(a) - Disparagement:
Section 2(d) - Likelihood of Confusion:
Section 2(e)(1) - Mere Descriptiveness:
Section 2(e)(4) - Primarily Merely a Surname:
Section 2(f) - Acquired Distinctiveness:
Application Requirements:
Concurrent Use:
Failure to Function/Specimen of Use:
CAFC Decisions:
Recommended Reading:

Text Copyright John L. Welch 2015.

"MATTRESS OVERSTOCK & Design" Not Confusable With "OVERSTOCK.COM," Says TTAB

The Board dismissed this Section 2(d) opposition to registration of the mark MATTRESS OVERSTOCK, in the design form shown below, for "retail store and on-line retail store services featuring furniture and sleep products" [MATTRESS OVERSTOCK disclaimed], finding the mark not likely to cause confusion with the registered mark OVERSTOCK.COM for online wholesale and retail store services featuring general consumer merchandise, including furniture, linens, and pillows. Although the services overlapped, the term OVERSTOCK, which is used by third parties to describe their retail store services, is "conceptually very weak," and consequently "the fact that the two marks share this term has little significance.", Inc. v. J. Becker Management, Opposition No. 91203624 (June 15, 2015) [not precedential].

I prepared a long summary of this opinion, only to delete it accidentally while it was still in draft form. Since I don't have the time (or will) to spend another two hours on this case, so I will just say the following.

The evidentiary issues discussed at the beginning of the opinion are worth reviewing. Most of opposer's evidence, though admissible, was not probative because it was hearsay. In other words, various documents were admitted for what they showed on their faces, but not for the statements made in the documents. For example, opposer's 2012 10-K statement was admissible by way of notice of reliance under Safer, but without testimony it could not be used to prove the facts stated therein. In other words, Safer eliminated the need for testimony establishing when and from where a document had been downloaded from the Internet, but testimony is still needed if the document is offered to prove the statements made in the document. Consequently, opposer's sales and revenue figures set forth in the annual report were hearsay because no witness confirmed their provenance or accuracy.

On the substantive side, because of the evidentiary deficiencies in opposer's proofs, it was unable to show that its mark was "famous" under Section 2(d) and entitled to a broad scope of protection. The inherent weakness of the word "overstock" for retail services was critical to the Board's finding of no likelihood of confusion.

Read comments and post your comment here

TTABlog comment: Think about the preclusion issue here. In a subsequent infringement action, is stuck with the findings regarding the strength of its mark? The dissimilarity of the marks? Seems to me the answer is yes.

Text Copyright John L. Welch 2015.

Friday, June 26, 2015

TTAB Test: Are KNOTTY BRUNETTE and NUTTY BREWNETTE Confusingly Similar for Beer?

Applicant sought to register the mark KNOTTY BRUNETTE for "beer, ale and lager," but the USPTO refused registration, finding the mark likely to cause confusion with the mark NUTTY BREWNETTE for beer. The goods are, in part, identical, but what about the marks? How do you think this came out? The Board panel was divided on the question. In re Twin Restaurant IP LLC, Serial No. 85934428 (June 24, 2015) [not precedential].

Applicant lamely argued that there would be no confusion because its KNOTTY BRUNETTE beer is sold only in Applicant’s Twin Peaks restaurants, which feature "sexy wait staff," and so consumers will understand the mark to be a homophone for "naughty brunette." The Board pointed out, however, that because the goods identified in the application are in part identical to those of the cited registration, it must presume that those goods travel through the same, normal channels of trade (including restaurants not owned by applicant) to the same classes of consumers.

The panel majority found the first du Pont factor - the similarity or dissimilarity of the marks - to be dispositive. Although the marks have slight differences in sound when pronounced correctly, it must be remembered that there is no correct pronunciation of a trademark [What about APPLE or BLACK CAT? - ed.]. Therefore the Board must assume that a consumer could pronounce the marks in the same way.

However, the Board majority found the "obvious" differences in appearance, connotation, and commercial impression to be critical. The primary connotation of the registered mark NUTTY BREWNETTE is the flavor of the beer. The phrase connote a "nutty brew" or nutty flavored beer. The Board recognized that the registered mark is also a double entendre for “nutty brunette” to denote "a dark-haired female with a 'nutty' or 'silly, strange, or foolish' personality." Nonetheless, "the appearance and primary connotation and commercial impression of the mark projects a nutty flavored type of beer."

In Applicant’s mark, "knotty" is a homophone for "naughty," conveying the meaning of "relating to or suggesting sex in usually a playful way." "Applicant’s mark is more likely to project the connotation of a 'naughty brunette,' that is to say, a dark-haired woman displaying a playful type of sexiness."

Moreover, both the adjectives “knotty” as well as its homophone “naughty” are entirely devoid of any connotation of nut or nut-like flavoring. Thus, the marks have their own unique humorous play on words that project separate meanings and distinct commercial impressions. As a result, when confronted with both marks, prospective consumers are unlikely to assume that Applicant’s and Registrant’s respective goods originate from the same source

The panel majority concluded that the dissimilarities in the marks outweighed the other du Pont factors, and so the Board REVERSED the refusal to register.

Judge David Bucher dissented, pointing out that similarity in sound alone may be sufficient to establish that two marks are confusingly similar.

Inside a noisy bar, as the night wears on, and the bartender and patron trade verbal exchanges ... any aural differences in the short vowel sounds of only the first of these four syllables will likely not be readily distinguishable – and especially to southern ears.

Judge Bucher also saw a similarity in connotation and he questioned the majority's assumption that a consumer would "retain fine connotations from one tavern to the next."

Yet the majority acknowledges similar sounding marks, each having one or even several double entendres! Let’s see, was that dark-haired female of several weeks ago an extremely difficult personality ("knotty"), strange ("nutty"), or playfully sexy ("naughty"). Or if the brew has an earthy flavor profile – in a wild, Euell Gibbons kind of way – was it due to the (knotty) bark or nuts?

When the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion, Judge Bucher reminded. And in cases of doubt in the 2(d) ex parte context, the benefit of the doubt goes to the registrant.

Read comments and post your comment here

TTABlog note: I side with Judge Bucher on this one. He sounds like he has real marketplace experience. Personally, I like the taste of NASTY BROONETT.

Text Copyright John L. Welch 2015.

Thursday, June 25, 2015

041 BACARO & Design Confusable With BACARO for Restaurant Services, Says TTAB

The Board affirmed a refusal to register the mark 041 BACARO & Design, shown below, for "Restaurant and bar services [BACARO disclaimed]," finding it likely to cause confusion with the mark BACARO, registered for the same services. Applicant argued that BACARO means "Venetian Bar" and therefore is descriptive or generic for the services, but the Board refused to consider that argument because it constituted an improper collateral attack on the validity of the cited registration. In re G2D Management, LLC, Serial No. 85703129 (June 22, 2015) [not precedential].

In addition to its futile arguments regarding descriptiveness and genericness of the cited mark, applicant also argued that the cited mark is weak because consumers are accustomed to seeing the term BACARO in restaurant names. In support of that contention, applicant submitted the results of two Google brand searches and copies of pages from a tour company website offering tours of Venice "bacari." However, the Google listing provided little information regarding each establishment, some references were ambiguous or irrelevant, and a few referred to foreign restaurants. In short, this evidence "failed to establish such widespread use of 'bacaro' for restaurants or bars that consumers would be accustomed to distinguishing marks using the term on the basis of other components of the marks."As to the tour guide pages, the eateries named were located in Italy. Although the pages were in English, and thus presumably available to U.S. customers, the record did not show the extent of exposure to the website or that "bacaro" applied to bars in the USA.

Examining Attorney Tracy Cross submitted copies of pages from the websites of both applicant and registrant, showing that each recognizes the Italian origins of "bacaro." This, however, did not demonstrate that BACARO is weak, but "merely underscores the foreign regional nature of the term 'bacaro.'" Applicant's disclaimer did not affect that conclusion, the Board noting that an applicant's voluntary disclaimer of a term has no effect on the the issue of likelihood of confusion.

Turning to a consideration of the marks, the Board found that, despite the large size of the numbers "041," the term BACARO is a "salient feature" of applicant's mark and is of equal prominence with the numbers. "Moreover, consumers are more likely to remember a pronounceable term such as 'bacaro' rather than an arbitrary string of numbers." The Board also pointed out that, because the cited mark is in standard character form, the registrant could display its mark in the same font style as applicant's mark.

Bearing in mind that the marks will be used for identical services, the Board found the marks "more similar than dissimilar and not so different as to avoid a likelihood of confusion."

Read comments and post your comment here

TTABlog note: Do you hear the rumblings of an oncoming cancellation proceeding? Justice is supposed to be blind, so would you say that here the Board was Venetian blind?

Text Copyright John L. Welch 2015.

Wednesday, June 24, 2015

TTAB Test: Is GROCERY GEAR Merely Descriptive of Reusable Grocery Bags?

The USPTO refused to register the mark GROCERY GEAR in the stylized form shown below, finding it to be merely descriptive of "reusable grocery bags." Applicant Penny Johnson appealed, arguing that the lack of evidence of third-party use of GROCERY GEAR in a descriptive manner established that the mark is not merely descriptive. How do you think this came out? In re Penny Johnson, Serial No. 86017471 (June 22, 2015) [not precedential].

Examining Attorney Karen Severson relied on dictionary definitions of "grocery" (food bought at a store) and "gear" (equipment, paraphernalia), noting that the word "grocery" appears applicant's identification of goods. The scant Internet evidence showed us of "fabulous grocery gear" in connection with reusable grocery bags, and "Grocery Gear: Keep your cool" for a "collapsible cooler used to carry groceries." Three third-party registrations disclaimed "grocery" and three disclaimed "gear" for reusable bags or shopping bags.

The Board found that this evidence established the descriptive meaning of GROCERY and GEAR for applicant's goods. The combination of the two words, it concluded, did not evoke any new or unique commercial impression.

Applicant itself has described its goods as “reusable grocery bags,” and the manner in which Applicant promotes its goods, i.e., “pack & transport grocery system,” consumers would understand that the applied-for mark describes the purpose and/or a feature of the goods, namely, that they are bags intended to carry items from a grocery store."

As for applicant's argument that no third-party uses the phrase GROCERY GEAR, the Board pointed out that a term may be merely descriptive even if the applicant is the first and only user of same. The Board also noted that "some" of the evidence showed third-party use of "grocery gear."

The Board found nothing incongruous in the mark, and the stylization of the mark did not detract from its descriptiveness. Although any doubt regarding mere descriptiveness must be resolved in favor of the applicant, the Board had not doubt here in affirming the refusal to register.

Read comments and post your comment here

TTABlog note: I think "gear" is too vague a term to be descriptive here. A bag is not "gear," by my way of thinking. The word tells you nothing more about the goods than what you would know by looking at them: obviously a bag for carrying groceries. What do you think?

Text Copyright John L. Welch 2015.

Tuesday, June 23, 2015

TTAB Reverses Rejection of TRULICITY Specimen of Use: Display in Ordinary Text Enough

The Board reversed a refusal to register the mark TRULICITY for "pharmaceutical preparations for the treatment of diabetes, finding that applicant's specimen "demonstrates use of the mark that Applicant seeks to register with the meaning of the Trademark Act. In re Eli Lilly and Company, Serial No. 85183667 (June 18, 2015) [not precedential].

The examining attorney maintained that the specimen of use (shown below) "shows the proposed mark as part of [a] logically connected and continuous sentence ...." He noted that the word TRULICITY is in the same size and style of font as the surrounding wording and is not "set out from the surrounding text." One viewing the specimen of use, he contended, would have to search through the text even to find the mark.

(Click on photo for larger picture)

Applicant pointed out that TRULICITY is the only coined term on the specimen, appearing just before the generic name of the goods. It has an initial capital "T" and is accompanied by the "TM" designation. The Board, applicant argued, should not apply a mechanical test but instead should consider the commercial impression made by the mark.

The Board observed that "a trademark ... need not be displayed in any particular size or degree of prominence." The key question is whether it will be understood as indicating the origin of the goods. The Board paraphrased the specimen as stating: "This package contains either Trulicity brand dulaglutide or a placebo." This conveys "exactly the message that a trademark is supposed to convey, i.e., that the package contains Trulicity brand goods." [The Board noted that goods bearing this particular label are delivered to highly sophisticated users, i.e., medical or scientific professionals and subjects under their care.]

Cases cited by the examining concerned whether a mark was in "use" at all, or concerned descriptive or highly suggestive wording that might be perceived as informational. TRULICITY, the Board pointed out, is a fanciful, coined term.

Even though it may be embedded in other text, there is no danger that this coined term will be interpreted as merely descriptive or informational matter. It is also the only coined designation in the text of the label, and is set out with a “TM” symbol, further indicating it is a trademark. As such, its only purpose is to provide a unique identifier to a product that is otherwise identified only by a generic name and technical, explanatory information. Its placement on the product label is sufficient to “make it known to purchasers,” and its placement immediately adjacent to the generic name of the goods allows customers to “associate it with the goods.”

The Board concluded that TRULICITY, as used, meets the statutory definition of a trademark. Although display of the mark may be understated, it is up to applicant to decide how it wishes to display the mark to customers in the scientific research field.

Read comments and post your comment here

TTABlog comment: I don't particularly like this decision. I think a trademark should stand out from surrounding text. According to this decision, a TM symbol and an initial cap may be enough. I would require bold font and all caps.

Text Copyright John L. Welch 2015.

Monday, June 22, 2015

WYHA? TTAB Affirms Mere Descriptiveness Refusal of MORINGA SKIN for Body Lotions

The Board, in a three-page opinion, affirmed the USPTO's refusal to register the mark MORINGA SKIN for "lotions for face and body care containing moringa" [MORINGA disclaimed], finding it to be merely descriptive of the goods. The evidence established that moringa oil, derived from the seeds of the Moringa oleifera tree, has many uses, including uses in the skin care industry. In re j. debeaute, Serial No. 85967716 (June 18, 2015) [not precedential].

Applicant feebly contended that MORINGA SKIN is suggestive rather than descriptive because it is not clear whether the phrase revers to the skin of a person or the skin of a moringa fruit: "It takes some thought to realize that applicant's lotions contain moringa extracts and are used for the skin."

The Board pointed out once again that the determination of mere descriptiveness is not a guessing game. The mark must be considered in the context of the identified goods.

The question, however, "'is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods and services are will understand the mark to convey information about them.'"

The Board concluded that a consumer of lotions would readily recognize the MORINGA SKIN immediately conveys information about the goods: they are skin-care products containing moringa. Therefore the mark is merely descriptive of applicant's goods.

Read comments and post your comment here

TTABlog note: Well, would you have?

Text Copyright John L. Welch 2015.

Friday, June 19, 2015

TTABlogger Returns to Boston and Wolf Greenfield

Sometimes you can go home again. On Monday, June 22nd, I will head back across the Longfellow Bridge from Cambridge to Boston [the only direction available these days] to become Counsel to Wolf, Greenfield & Sacks, P.C., in Boston. [Some of you may recall that when I first came to Boston, I was a partner at WGS for 12 years.] This blog will continue on its merry way for the foreseeable future. I look forward to collaborating with my long-time friend, Doug Wolf, my co-chair on the Trademarks and Unfair Competition Committee of the Boston Patent Law Association (BPLA), Christina Licursi, my ex-partner [in a law firm sense] Ed Perlman, and my new and old colleagues at WGS. [New email address: jwelch at wolfgreenfield dot com.]


Thursday, June 18, 2015

TTAB Finds SUSTAINABLE WATER Generic for ... Guess What?

The Board affirmed a refusal to register the term SUSTAINABLE WATER (in standard character form), finding the term to be generic for "sustainable on-site water recycling and wastewater treatment services." Applicant sought registration on the Supplemental Register, but Examining Attorney Edward Nelson maintained that the term is "incapable of identifying [the source of] Applicant’s services." In re Aquei Technologies LLC, Serial No. 86034765 (June 17, 2015) [not precedential].

The Board found that the genus of services is adequately defined by applicant's recitation of services. It observed that the term SUSTAINABLE WATER is generic "if the relevant public understands it to refer to this type of water recycling and wastewater treatment services."

Applicant asserted that it was not seeking to register the term for the sale of water but rather it is providing a service that is "indirectly related to the words 'SUSTAINABLE WATER.'" Third-party uses, according to applicant, show the term used as an adjective "in different contexts and with additional word(s)." And so, applicant contended, the USPTO had failed to prove genericness by the required clear and convincing evidence.

The Board pointed out that applicant uses the term "sustainable water" in its own recitation of services. Applicant's website states that its services make the "'water' supply of large water users, like college campuses and manufacturing centers, 'sustainable.'"

Extensive evidence submitted by the Examining attorney demonstrated that the term SUSTAINABLE WATER "directly names the most important or central aspect or purpose of Applicant’s services, which are treating, recycling and reusing water." The Board noted that it has frequently ruled that a term that names the "central focus" or "key aspect" of a service is generic for the service itself, and the CAFC has approved this approach. [See the HOTELS.COM decision, In re LP, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009)].

The Board rejected Applicant's noun-versus-adjective argument because "this 'part of speech' test does not accurately describe the case law results." [See, e.g., the ATTIC sprinkler case, In re Central Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998). The fact that applicant is not selling water does not put an end to the inquiry.

With a nod to the CAFC's recent PRETZEL CRISPS decision [Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 114 USPQ2d 1827 (Fed. Cir. 2015), the Board recognized that a genericness determination must be made on the record as a whole:

However, in the face of the overwhelming case of genericness put forward by the Trademark Examining Attorney, and Applicant’s failure to present convincing contradictory evidence (as opposed to mere argument), we find that Applicant has failed to call into question our ultimate finding.

And so the Board affirmed the refusal to register.

Read comments and post your comment here

TTABlog note: Is this a WYHA? In other words, were applicant's arguments likely to be sustainable? Did they hold water?

Text Copyright John L. Welch 2015.

Wednesday, June 17, 2015

TTAB Test: Are ACCURASCIENCE and ACURA PHARMACEUTICALS Confusable for Research Services?

The USPTO refused registration of the mark ACCURASCIENCE, in standard character and design form (below), for "DNA analysis services for scientific research purposes," finding the mark likely to cause confusion with the registered mark ACURA PHARMACEUTICALS for "pharmaceutical research and development services" [PHARMACEUTICALS disclaimed]. Third-party registration and website evidence showed that the services are related, but what about the similarity of the marks? And wouldn't the purchasers be sophisticated? How do you think this came out? In re AccuraScience LLC, Serial Nos. 86158955 and 86158968 (June 15, 2015) [not precedential].

Based on a dictionary definition of "accurate," the Board found that ACURA in the registered mark "suggests a desired characteristic of the services, namely, that they produce accurate results." But even if the Board found the registered mark to be inherently somewhat weak, it is still entitled to its registration presumptions and must be protected against confusion.

As mentioned, the Board found that DNA sequencing and analysis is related to pharmaceutical research and development services. The evidence suggested that common customers would be genetic research centers, pharmaceutical companies, and others within the biotechnology and biopharma fields.

Turning to the marks, the marks are obviously similar in their respective first portions, and there was no evidence that ACCURA and ACURA would be pronounced differently. Both marks evoke the meaning of "accuracy." Applicant argued that ACURA would bring to mind certain vehicles made by Honda, but it provided no evidence to support that assertion.

Nonetheless, when the marks are viewed as a whole, they are much less similar. Moreover, "ACCURASCIENCE connotes accurate science or accuracy in scientific results whereas ACURA PHARMACEUTICALS connotes accurate pharmaceutical research or formulation." Although these connotations are similar, they suggest different results. [They seem quite similar to me - ed.]. The Board concluded that the marks are "only somewhat more similar than dissimilar in appearance, sound, meaning, and overall commercial impression." Applicant's design mark "differs more strongly from the marks in the cited registration and also more strongly connotes accurate science." In sum, the Board found that the first du Pont "weighs only somewhat in favor of a likelihood of confusion."

The consumers of the involved services are not ordinary consumers. The primary purchasers are companies involved in the pharmaceutical and biotech industries. "By definition, all of these customers would be quite sophisticated." Although it is often observed that customers who are sophisticated in a particular field are not necessarily immune from source confusion, here the highly technical and sophisticated nature of the services led the Board to find that purchasers would exercise a high degree of care and would likely notice the differences between the marks.

The Board therefore reversed the refusal to register.

Read comments and post your comment here

TTABlog note: Not often does the sophistication argument make a difference. I think the marks are too similar, and even sophisticated consumers could be confused.

Text Copyright John L. Welch 2015.