Thursday, August 27, 2015

Another TTAB Test: Is PURPLE HAZE for Guitar Pickups Confusable With HAZE for Amplifiers?

The USPTO refused registration of the mark PURPLE HAZE for "electronic sound pickup for guitars and basses," finding the mark likely to cause confusion with the registered mark HAZE for "sound amplifiers." Applicant argued that consumers may recognize the association of "Purple Haze" with Jimi Hendrix, psychedelic rock, and the counterculture of the 1960s, and the mark may bring to mind "a purple, psychedelic vapor or a mental state of blurriness and confusion." How do you think this came out? In re Flying Mojo, LLC, Serial No. 86009264 (August 25, 2015) [not precedential].

The marks: The Board found that "despite the addition of the word 'purple' to Registrant's mark, the similarities outweigh the dissimilarities as to appearance and sound."

The term "Purple Haze," the Board observed, will bring to mind the famous Jimi Hendrix song. On its home page, Applicant refers to pickups from a Stratocaster once owned by Jimi, and the purple and black design use by Applicant for its mark "is reminiscent of psychedelic posters of the 1960s and '70s."

The word "haze," according to the Board, appears to be an unusual and arbitrary mark for the involved goods. It may create the mental image of vapor or smoke, or a confused state of mind, in a nightclub setting. The Board agreed with Applicant that its mark may suggest an association with Jimi Hendrix, psychedelic music, and the 1960s counterculture.

In comparing the possible meanings of these two marks, to the extent there is overlap between a confused state of mind (“haze”) and the prevalence of a drug culture in the 60s frequently associated with a truly legendary piece of music (“Purple Haze”), we find that these marks could well create similar connotations.

Combining the closeness in connotation with the similarities in appearance and sound, the Board concluded that the marks create similar overall commercial impressions. Thus the first du Pont factor supported a finding of likely confusion.

The goods: The complementary nature of the goods was a basis for finding them to be related: the goods are likely to be purchased together, and used in conjunction with each other to provide amplification for an electric guitar or base. Third-party website evidence offered by Examining Attorney Linda M. Estrada showed that the involved goods travel through the same channels of trade to the same classes of consumers. That evidence, as well as third-party registration evidence demonstrated that the goods are of a type that may be offered under the same mark.

Hence, based upon widespread industry practice, customers would be likely to assume, upon encountering these complementary products under such similar marks, that the goods originate from the same source. Specifically, a consumer acquainted with the HAZE amplifier who is looking for an electronic sound pickup for a guitar or bass is likely to believe the PURPLE HAZE pickup is a brand or product extension from the same source that offers the Marshall HAZE amplifier.

Applicant argued that musicians are sophisticated consumers, pointing out that its pickups retail for more than $300. [$300 for a guitar pickup? Seems rather high. - ed.] However, Applicant did not provide any evidence regarding the sophistication of its customers, and the identification of goods in its application is not limited to any particular class of customers or any particular price range. In any event, even sophisticated customers may be confused when presented with highly similar marks for related and/or complementary goods.

Consent Agreement: Applicant pointed to a "consent to use letter" provided by Registrant Marshall Amplification plc, and filed with the USPTO, claiming that it constituted a consent to registration. The Examining Attorney disagreed, and so did the Board.

The consent letter did not include an express consent to registration. It referred to Applicant's non-exclusive inclusion of the word "Haze" in its mark. Although the CAFC has repeatedly said that consent agreements should be given great weight, and that the Board should not substitute its judgment for that of the parties in interest as to the issue of likelihood of confusion, but "this case is an outlier."

This “naked consent” fails to set forth the reasons why Registrant believes there is no likelihood of confusion and does not describe any arrangements undertaken by Applicant and Registrant to avoid confusion among members of the relevant public. *** Without additional factors to support the conclusion that confusion is unlikely, this naked agreement is accorded little weight inasmuch as it does not constitute a proper and credible consent agreement between the parties.

Considering the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: I thought there might be a Section 2(a) false association refusal.

Text Copyright John L. Welch 2015.

Wednesday, August 26, 2015

TTAB Test: How Would You Decide These Four Recent Appeals?

Here are four appeals that were decided on Monday, August 24th: two Section 2(d) likelihood of confusion cases, and two Section 2(e)(1) mere descriptiveness cases. How would you decide them? [Correct answers in first comment].

In re Red Whale, LLC, Serial No. 86037950 (August 24, 2015) [not precedential]. [Section 2(d) refusal of RED WHALE for "beer" and "distilled spirits," in view of the registered marks WHALE for "beer" and BLUE WHALE VODKA for "vodka" [VODKA disclaimed]].

In re Alec R. Fernandez, Serial No. 86176743 (August 24, 2015) [not precedential]. [Refusal to register the mark GOOD BUN & Design (shown below) for restaurant services on the ground that GOOD BUN is merely descriptive under Section 2(e)(1) and must be disclaimed].

In re Dr. Fresh, LLC, Serial No. 86010644 (August 24, 2015) [not precedential]. [Section 2(d) refusal of COMPLETE CARE for "dental floss" in light of the registered mark ARM & HAMMER COMPLETE CARE and Design (shown below), for "tooth paste, tooth gel"].

 In re USA Enterprises, LLC., Serial No. 86170165 (August 24, 2015) [not precedential]. [Section 2(e)(1) mere descriptiveness refusal of THE RESERVOIR for "Plastic bags for household use for storing drinking water"].

Read comments and post your comment here.

TTABlog comment: See any WYHAs here?

Text Copyright John L. Welch 2014.

Tuesday, August 25, 2015

TTABlog Road Trip: 2015 Midwest IP Institute - Minneapolis, September 17-18th

Yours truly, the TTABlogger, will be back on the road in September, heading the Blogmobile west and north to Minneapolis for the 2015 Midwest Intellectual Property Institute on September 17 and 18, 2015. Details and registration information may be found in this brochure.

On the trademark side, the program will feature TTAB Chief Judge Gerard F. Rogers, who will discuss recent TTAB-related developments such as the B&B v. Hargis decision and possible rule changes. Judge Rogers will also appear on a panel with Carrie Hefte of Wells Fargo, Scott Johnston of Merchant & Gould, and yours truly, of Wolf, Greenfield & Sacks in Boston.

Fellow Blogger Steve Baird of Winthrop and Weinstine will team up with me to discuss "the year in trademark law," including some insights into the REDSKINS and FLANAX cases now wending their way through the appeal process, and a rundown of the more interesting and/or impactful recent decisions of the TTAB.

Read comments and post your comment here.

Text Copyright John L. Welch 2015.

TTAB Reverses Genericness Refusal of SKINSLEEVES, Finds Acquired Distinctiveness

In a 31-page opinion, the Board reversed a refusal to register the mark SKINSLEEVES for "medical devices, namely, non-compression fabric covers for legs and noncompression fabric covers for arms, non-compression fabric covers for skin protection of a patient's limb such as a leg or an arm, non-compression knitted skin coverings to be used for protection of the legs or arms of patients who have fragile skin that may be prone to tears and abrasions; protective fabric medical coverings for wound prevention." The examining attorney had based the refusal on the alternative grounds of genericness and mere descriptiveness, but applicant overcame both refusals, the second one by proving acquired distinctiveness. In re J.T. Posey Company, Serial No. 85206911 (August 18, 2015) [not precedential].

Genericness: The Board found the genus of goods to be "medical protective fabric skin coverings for wound prevention." The relevant public consisted of "medical professionals specifically charged with patient safety." [The Board noted the patients themselves might also be buyers of the goods, but there was no evidence of record to that effect.]

As to the meaning of SKINSLEEVES, there were no dictionary definitions of the term. The examining attorney submitted four website examples of the use of "skinsleeves" or variations thereof in a generic sense. However, there were also articles showing third-party use of SKINSLEEVES as a trademark for applicant's products.

Applicant argued that the fact that several accused infringers agreed to stop using the term SKINSLEEVES was evidence of non-genericness, but the Board pointed out that the cessation of use may have resulted simply from the desire to avoid litigation and not from any acknowledgment of the source identifying significance of the term. Nevertheless, the Board decided not to consider earlier use of the term by these accused infringers in the evaluation of the evidence.

In view of the mixed record, the Board concluded that the PTO had failed to satisfy the clear evidence standard for a genericness refusal.

Mere Descriptiveness: The Board found that the mark SKINSLEEVES when used in connection with medical protective fabric skin coverings for wound prevention "immediately engenders the
commercial impression of 'sleeves for skin,'" and not, as applicant contended, "sleeves of skin."

[T]he wide third-party use of the word “sleeve” in connection with medical protective fabric skin coverings for wound prevention demonstrates that medical professionals are accustomed to seeing, in connection with medical protective fabric skin coverings for wound prevention, the word “sleeve” preceded by another descriptive term (e.g., arm, leg, and limb). Thus when confronted with the term SKINSLEEVES, they would perceive a sleeve for skin.

Acquired Distinctiveness: Applicant submitted declarations from seven customer attesting to the source identifying significance of SKINSLEEVES, but that evidence was too skimpy to be probative. The statements of applicant's attorney regarding sales figures over a two year periods were not proper evidence, and applicant did not submit "actual evidence" of its sales receipts and advertising expenditures.

Nonetheless, in view of the facts that there were no dictionary definitions of “skin sleeve,” there was vague evidence of only one competitor using that term, and there are only three academic articles referencing the term “skin sleeves,” the Board found that SKINSLEEVES "is not so highly descriptive that its registrability under Section 2(f) may not be determined on the basis of Applicant’s declaration of substantially exclusive and continuous use since 2004."

The Board therefore reversed the Section 2(e)(1) mere descriptiveness refusal.

Read comments and post your comment here.

TTABlog comment: Note that the fact that applicant was the first and nearly the only user of the term SKINSLEEVES did not rule out the possibility of the mark being merely descriptive. On the genericness issue, however, those facts are important, although not dispositive.

Text Copyright John L. Welch 2015.

Monday, August 24, 2015

Two TTAB Administrative Trademark Judges Appointed

Chief Judge Gerard F. Rogers has announced the appointments of David K. Heasley and Cynthia C. Lynch to the position of Administrative Trademark Judge for the Trademark Trial and Appeal Board. This brings the number of TTAB judges to twenty-five (XXV).

David Heasley comes to the Board following a three-decade long career as a litigator, including fifteen years specializing in the litigation of trademark matters. During his time as a partner in the firm of Silverberg, Goldman & Bikoff, and more recently with Smith, Gambrell & Russell, Mr. Heasley represented such clients as the National Grange, Nike, FIFA, Major League Soccer, the Red Cross and the International Olympic Committee. Because of his experience representing both large, well-financed clients and non-profit or charitable organizations, Mr. Heasley has developed a deep appreciation of the varying litigation priorities for a wide variety of organizations. He also has developed a keen understanding of the differences between Board and district court litigation. Mr. Heasley’s experience also includes frequent appearances in ex parte appeal cases at the Board. As the author of many articles on various trademark topics, a regular member of the committee that organizes the Lefkowitz Trademark Moot Court Competition, and a lecturer for foreign judges and government officials on American trademark law, Mr. Heasley is well-versed in a wide variety of current trademark issues.

Before embarking on his long career as a litigator, Mr. Heasley served for two years as an Appellate Law Clerk for the Maryland Court of Special Appeals. Mr. Heasley earned his law degree with honors from the University of Maryland School of Law, and his bachelor’s degree from The Johns Hopkins University.

Cynthia C. Lynch joins the Board after having served the USPTO as the Administrator for Trademark Policy and Procedure for nine years. In that position, Ms. Lynch has engaged in frequent interaction with the TTAB regarding the legal issues that arise in ex parte examination, appeals, and in the international arena, an increasingly important aspect of Board work. Prior to assuming her position as a Trademark Administrator, Ms. Lynch spent five years handling high-level responsibilities as an Associate Solicitor. In that position, she represented the USPTO in intellectual property litigation, primarily defending TTAB and patent board decisions on appeal to the United States Court of Appeals for the Federal Circuit and in numerous federal district courts. In addition, Ms. Lynch frequently served as liaison to the United States Solicitor General’s Office (SG) to provide USPTO input on SG amicus curiae briefs and arguments before the United States Supreme Court.

Ms. Lynch’s legal career began with three years of service as a litigation and intellectual property associate in private practice. She then served three years as an Attorney-Advisor at the International Trade Commission. In that position, Ms. Lynch worked for an Administrative Law Judge handling all aspects of Section 337 trial proceedings involving patent, trademark, infringement/unfair competition and importation issues. A Phi Beta Kappa graduate of the University of North Carolina, Ms. Lynch earned her law degree from the University of Virginia School of Law.

Read comments and post your comment here.

Text Copyright John L. Welch 2015.

TTAB Test: Which Two of These Four Section 2(d) Refusals Were Reversed?

Here are four recent appeals from Section 2(d) likelihood of confusion refusals. Two were reversed. Which ones? [Answer in first comment].

In re Lin, Serial No. 86329057 (August 20, 2015) [not precedential] [Refusal to register the mark shown immediately below in view of the registered mark PH:FIVE, for overlapping clothing items].

In re Chauvet & Sons, Inc., Serial No. 86075662 (August 20, 2015) [not precedential] [Refusal to register the mark ROGUE for "Lighting apparatus incorporating one or more lighting colors to create special lighting effects in sports arenas, theatres, clubs and discotheques; lighting apparatus incorporating one or more lighting colors for sports arenas, theatres, clubs and discotheques; Lighting devices incorporating one or more lighting colors to create special lighting effects for concerts, theatrical productions and other events.," in light of the identical mark ROGUE registered for "Photographic accessories, namely: Collapsible light directors and diffusers for use with photographic lighting equipment for professional and recreational photography; Light directors and photographic lighting tents, all for use with photographic lighting equipment for professional and recreational photography; Stands for photographic apparatus"].

In re YourGemologist, LLC, Serial No. 86228244 (August 19, 2015) [not precedential] [Refusal to register YOURGEMOLOGIST for "Providing educational information in the academic field of gemology for the purpose of academic study," in view of the registered mark MYGEMOLOGIST for "Gemological services, namely providing information regarding gems via the Internet"].

In re Sloane Construction Inc., Serial No. 86441206 (August 10, 2015) [not precedential] [Refusal to register THE TANNERY for "tanning salons and skin tanning services for humans for cosmetic purposes" in view of the registered mark CELSIUS TANNERY for "tanning salon services"].

Read comments and post your comment here.

TTABlog comment: Well, how did you do? By just randomly guessing two of the four cases, you have a one-in-six change of being correct.

Text Copyright John L. Welch 2015.

Friday, August 21, 2015

Precedential No. 28: TTAB Denies Motion to Add Claim Preclusion Defense As Futile

In yet another claim preclusion decision, the TTAB denied Applicant Al-Jazeera's motion to amend its answer to add an affirmative defense of claim preclusion, ruling that the amendment would be futile because claim preclusion did not apply. The Board found that the mark that was challenged in the other proceeding (BEIN) did not create the same commercial impression as the mark involved in this proceeding (BEIN SPORT). Be Sport, Inc. v. Al-Jazeera Satellite Channel, Opposition No. 91213743 (August 12, 2015) [precedential].

The first opposition, involving applicant Al-Jazeera's mark BEIN, was dismissed with prejudice under Rule 2.132(a) when Opposer Be Sport failed to prosecute. In this proceeding, which was co-pending with the other, Al-Jazeera filed a motion to amend its answer to add the affirmative defense of claim preclusion, along with a motion for summary judgment on that ground.

The Board noted that, although leave to amend an answer is to be "freely given when justice so requires," leave may be denied when the claim or defense would be "legally futile." The Board therefore turned to an analysis of the claim preclusion issue.

The doctrine of claim preclusion holds that a judgment on the merits in a prior proceeding bars a second proceeding involving the same parties or their privies, based on the same cause of action (based on the same set of transactional facts). Here the first two elements were not in dispute. The question, then, was whether opposer's Section 2(d) claim in the first proceeding was based on the same set of transactional facts as the second opposition. In making that determination, the Board considers (1) whether the mark involved in the first proceeding is the same mark, in terms of commercial impression, as the mark in the second, and (2) whether the evidence regarding likelihood of confusion would be identical in each case. Claim preclusion should be invoked with caution lest a litigant be denied its day in court. 

Here, BEIN, the mark in the Prior Opposition, creates a different commercial impression than does BEIN SPORT, the mark involved in this proceeding. While SPORT may be descriptive and both parties disclaimed SPORT in the involved and pleaded applications, "a disclaimer with the Patent and Trademark Office does not remove the disclaimed matter from the purview of determination of likelihood of confusion."

Furthermore, the evidence would not necessarily be the same in each case. "BEIN alone is a different mark than BEIN SPORT, and each case would require assessment of likelihood of confusion based on the involved marks as a whole." The more similar the marks at issue, the less similar the goods or services must be to support a finding of likely confusion. Accordingly, the evidence and analysis may be different in the two cases.

The Board therefore found that Al-Jazeera's proposed defense of claim preclusion was futile, and it denied the motion for leave to amend the answer. The motion for summary judgment was denied as moot.

Read comments and post your comment here.

TTABlog comment: What is it with all these claim preclusion cases?

Text Copyright John L. Welch 2015.

Thursday, August 20, 2015

CAFC Reverses TTAB: Paw Print Marks Not Confusingly Similar

In a precedential ruling, the U.S. Court of Appeals for the Federal Circuit overturned the Board's June 2014 decision (TTABlogged here) that found the two marks shown immediately below to be confusingly similar for various clothing items. The court agreed with the Board, however, in dismissing Jack Wolfskin's counterclaim seeking cancellation of New Millennium's pleaded registration on the ground of abandonment. Jack Wolfskin Ausrustung fur Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., Appeal No. 2014-1789 (Fed. Cir. August 19, 2015) [precedential].

Cancellation counterclaim: Jack Wolfskin's counterclaim alleged that New Millennium had stopped using the registered version of its mark (above right) and instead had been using it in the form shown below since 2004 :

The CAFC has held, in the context of a priority dispute, that if the old form and the new form of a mark are "legal equivalents," then tacking will be permitted. "Two marks are legally equivalent if they 'create the same, continuing commercial impression' and where the modified version of the mark does not 'materially differ from or alter the character' of the original mark."

The CAFC ruled that the same legal standard applied in the abandonment context. "Accordingly, when a trademark owner uses a modified version of its registered trademark, it may avoid abandonment of the original mark only if the modified version 'create[s] the same, continuous commercial impression.'"

In Hana Fin., Inc. v. Hana Bank, the Supreme Court recently held, in the priority context, that "the same continuing commercial impression" is a question of fact, "thus abrogating our practice of viewing this inquiry as a question of law subject to de novo review." The CAFC found no reason why the standard of review should differ for the abandonment issue. Therefore, the court concluded that it must review the TTAB's factual determination for substantial evidence. "[W]e must ask whether a reasonable fact finder might find that the evidentiary record supports the Board's conclusion."

Reviewing the two version of New Millennium's mark, the court observed that only the font of the word KELME and the style of the paw print has changed. It agreed with the Board that the change in font did not materially alter the impression created by the word KELME, and that the addition of claws to the paw print likes was not a material change because the claws are 'a very small component' and because 'it is common knowledge that an animal's paws are accompanied by claws.'" Jack Wolfskin provided no persuasive reason why these alterations change the commercial impression that the mark creates.

The CAFC concluded that the Board's finding that New Millennium did not abandon its mark was supported by substantial evidence, and a reasonable fact-finder could conclude that the new version creates the same continuing commercial impression as the registered mark.

Likelihood of confusion: The determination of likelihood of confusion is an issue of law based on underlying factual findings. Jack Wolfskin contended that the Board erred with regard to two of the du Pont factors: the similarity of the marks and the number and nature of similar marks in use.

The court agreed with appellant that the Board failed to adequately consider the literal part of the cited mark, the word KELME. The Board essentially ignored the verbal portion and found that the two paw print designs were substantially similar. In short, it did not consider the marks as a whole.

The Board's statement that companies often use the design portion of a composite mark alone as shorthand for their brand was unsupported by evidence. And there was no evidence that consumers recognize the paw print portion of New Millennium's mark as a source indicator for its products.

The Board can, in proper circumstances, give greater weight to a design component of a composite mark, but it must provide a rational reason for doing so. It did not do so here, and therefore its finding regarding the similarities of the marks was not supported by substantial evidence.

Moreover, Jack Wolfskin provided voluminous evidence of paw print design elements registered and used for clothing, but the Board for the most part discounted that evidence.

The CAFC agreed with Jack Wolfskin that the Board erred in its consideration of this evidence. Such extensive evidence of third-party use, as recently explained in the CAFC's Juice Generation decision, is "powerful on its face" even when the specific extent and impact of the usage has not been proven. Here, the evidence demonstrated "the ubiquitous use of paw prints on clothing as source indicators."

Given the volume of evidence in the record, consumers are conditioned to look for differences between paw designs and additional indicia of origin to determine the source of a given product. Jack Wolfskin’s extensive evidence of third-party uses and registrations of paw prints indicates that consumers are not as likely confused by different, albeit similar looking, paw prints.

The CAFC therefore ruled that the Board finding as to this factor was not supported by substantial evidence.

New Millennium cannot escape the fact that the KELME element of its registered mark is the dominant portion of the mark. By narrowly focusing on the paw print element of the registered mark, the Board failed to appreciate that the KELME element is unlike anything that appears in Jack Wolfskin’s applied-for mark. The dissimilarity of the marks is further confirmed by the considerable evidence of third-party registration and usage of marks in commerce that depict paw prints on clothing. This evidence indicates that the paw print portion of New Millennium’s mark is relatively weak. Balancing the factors, the Board’s determination that Jack Wolfskin’s mark would likely cause consumer confusion cannot be sustained.

The CAFC therefore affirmed the dismissal of the counterclaim, but reversed the Board's decision sustaining New Millennium's Section 2(d) claim. It remanded the case to the Board for further consideration in light of this opinion.

Read comments and post your comment here.

TTABlog comment: I'm not sure what the Board is supposed to do on remand.

Text Copyright John L. Welch 2015.

Wednesday, August 19, 2015

Precedential No. 27: Fame of BUD for Beer Brings Victory over WINEBUD for Wine

The TTAB sustained an opposition to registration of the mark WINEBUD for "alcoholic beverages except beers; wines and still wines and sparkling wines; beverages containing wine, namely, sparkling fruit wine and still fruit wine; ready to drink alcoholic beverages except beers," finding the mark likely to cause confusion with the famous mark BUD registered for beer. The Board deemed the marks to be highly similar, the involved goods to be related, and the channels of trade and classes of consumers overlapping. The goods are purchased by ordinary consumers who are unlikely to exercise care in their purchases. Survey evidence corroborated the Board's conclusion. Anheuser-Busch, LLC v. Innvopak Systems Pty Ltd., Opposition No. 91194148 (August 17, 2015) [precedential].

Fame: The record evidence clearly established the fame of Opposer's BUD and BUDWEISER marks. Opposer has used its BUDWEISER mark since 1876 and its beer has been known as BUD since about 1895. Opposer has heavily advertised its products for at least fifty years and has long been a major sponsor of high-profile sporting events. Its products have frequently been the subject of unsolicited media attention. BUD LIGHT is the best-selling beer in America. Applicant did not address the issue of fame.

Fame, when found, plays a dominant role in the du Pont analysis. Although fame alone is not enough to establish likely confusion, "a finding of fame puts a heavy thumb on Opposer's side of the scale."

The marks: Applicant argued that WINEBUD is a "fanciful compound noun formed from the nouns WINE and BUD, an analogy to horticultural words such as 'rosebud.'" It contended that wine drinkers would perceive the latter half of its mark as connoting the bud of a vine, not as a reference to BUDWEISER the beer or the BUD family of marks. According to Applicant, BUD refers to BUDWEISER and BUDWEISER refers to someone or something from Budweis, and Budweis is the former name of České Budějovice, which is a small Czech town.

The Board was not persuaded, observing that there was no evidence that consumers would associate the mark BUDWEISER with a geographical location. Likewise as to the mark BUD, which is the more relevant mark here, there was no evidence that consumers would make a geographical connection.

Moreover, there was no evidence that WINEBUD has any meaning whatsoever. Consumers are likely to see WINE as the generic name for the beverage, and BUD, because of the fame of opposer's marks, as the source-identifying portion of the mark. The dominant portion of the applied-for mark is BUD, and therefore the mark WINEBUD and BUD are "highly similar."

The goods: The Board has found beer and wine to be related on a number of occasions. In fact the parties did not cite a single case in which beer and wine were found to be unrelated for purposes of Section 2(d). Opposer submitted six registrations for marks the cover both beer and wine, which provided some support for its case. Beer and wine are sold in many of the same trade channels. Neither beverage is inherently expensive, and inexpensive products may be purchased without great care.

The Board concluded that beer and other alcoholic beverage, including wine, are related. Although opposer has never sold wine under the BUD brand, the fame of the BUD mark "makes it likely that purchasers seeing a similar 'BUD' mark on wine would think that Opposer has expanded its product line to include wine." The relatedness of the goods, overlap in channels of trade and classes of consumers, and the conditions of purchase supported a finding of likely confusion.

Survey evidence: Opposer's survey found that 24% of respondents believed that a wine sold under the WINEBUD mark would be "put out by, affiliated or connected with, or approved or sponsored by" Opposer. Applicant alleged various flaws in the survey, but the Board has treated the type of flaws asserted as merely affecting the probative weight of the survey, not is admissibility.

Although the survey expert, Dr. Edward A. Blair, had never conducted a survey involving a wine trademark, there was nothing to suggest that such a survey would differ significantly from any other survey. The Board found him to be highly qualified. Moreover, the general design of the survey was appropriate, following the "Eveready" model.

The Board also rejected applicant's argument that a 24% rate of confusion was insufficient to support a finding of likelihood of confusion. Courts have often found survey results probative even when they suggested far less than 50 percent confusion. The Board concluded that a 24% level of confusion, if representative of the potential rate of confusion of the appropriate universe of potential purchasers, is supportive of Opposer's claim.

Applicant further criticized the survey because it was conducted online. The Board noted that all survey methods have inherent advantages and disadvantages. Applicant offered no convincing reason why opposer's survey should be given reduced weight or no weight at all. The Board saw nothing inherently wrong in the fact that an Internet survey is "quicker and cheaper."

Applicant contended that Dr. Blair could have used a "mock up visual of a wine bottle bearing a label," rather than the word WINEBUD in capital letters on a blank background, but the Board found no problem with that approach, since applicant is seeking a standard character registration, and any particular presentation on a bottle or container would have unnecessarily restricted the survey to that presentation.

Applicant also argued that the size of the survey sample (400 respondents) was too small to provide meaningful results. The Board observed that "a well-designed and conducted survey using a representative sample can permit valid inferences to be drawn about a very large population by studying only a relatively small fraction of it. Thus, the opinions of several hundred people might indeed be probative of the opinions of millions."

The participants in opposer's survey were split into two groups: a test group (201) who considered the mark WINEBUD, and a control group (199) who were shown the mark WINEBLOSSOM. Only the test group was directly relevant to the issue here. That left the question: "How precise is the result of a survey using 201 test subjects?"

At some point, as small sample may provide results so imprecise as to be of little or no value. The imprecision can be calculated and expressed as a "confidence interval at a given confidence level." Dr. Blair did not provide that indicator, but based on published statistical tables, the Board found "the lower bound of the confidence interval for this survey is between 17.5 percent and 18.3 percent."

In other words, even construing the survey in the best light for Applicant, the results suggest that at the 95 percent confidence level, at least 17.5 percent of the relevant population is likely to be confused by Applicant’s use of its mark for wine. While that figure would not be considered a high level of confusion, neither is it negligible or de minimis.

The Board therefore rejected applicant's contention that the sample size for Dr. Blair's survey was too small to yield meaningful results. It found the survey results to be probative, but not strong evidence that confusion is likely.

Conclusion: The Board concluded that use of WINEBUD on wine and other alcoholic beverages is likely to cause confusion vis-a-vis opposer's BUD mark for beer. The Blair survey corroborated that conclusion. The Board declined to reach opposer's dilution-by-blurring claim.

Read comments and post your comment here.

TTABlog comment: As they say, That Bud! That's Wine! There are not many marks as famous as BUD, other than TTABlog. I think the Board should have also considered the dilution issue, since the Section 2(d) ruling may be a little shaky. What do you think?

Text Copyright John L. Welch 2015.

Tuesday, August 18, 2015

CAFC Affirms TTAB: FISH FRY PRODUCTS Lacks Acquired Distinctiveness, Disclaimer Required

The U.S. Court of Appeals for the Federal Circuit, in a precedential opinion, upheld the TTAB's ruling (here) requiring disclaimer of the term FISH FRY PRODUCTS in the mark shown below, for "marinade; sauce mixes, namely, barbecue shrimp sauce mix; remoulade dressing; cocktail sauce, seafood sauce; tartar sauce; gumbo filé; and cayenne pepper." The Board found the phrase to be generic, and alternatively merely descriptive of the goods and lacking in acquired distinctiveness. The CAFC affirmed on the latter ground, declining to reach the genericness issue. In a concurrence, Circuit Judge Newman asserted that the court should have affirmed on the genericness ground and not reached acquired distinctiveness. In re Louisiana Fish Fry Products, Ltd., Appeal No. 13-1619 (Fed. Cir. August 14, 2015) [precedential]

Acquired distinctiveness is a factual determination that the CAFC reviews under the substantial evidence standard. The PTO bears the burden to prove genericness by clear evidence, but the applicant bears the burden to prove acquired distinctiveness.

The Board deemed FISH FRY PRODUCTS to be "highly descriptive," a finding that Louisiana Fish Fry did not challenge in this appeal. As a result of that finding, Louisiana Fish Fry was faced with an "elevated burden to establish acquired distinctiveness." The Board concluded that this burden was not met because Louisiana Fish Fry's evidence did not relate specifically to the term FISH FRY PRODUCTS.

Louisiana Fish Fry provided two declarations from its president, along with five registrations for marks that include the term FISH FRY PRODUCTS. The first declaration merely asserted that the term had become distinctive through "substantially exclusive and continuous use" for the at least the last five years. Given the highly descriptive nature of the term, however, the Board was within its discretion not to accept the five-year statement as prima facie evidence of acquired distinctiveness.

The second declaration stated that the mark LOUISIANA FISH FRY PRODUCTS had been in use for thirty years, and it provided certain sales and advertising figures. However, this data did not reflect use of FISH FRY PRODUCTS by itself, and so did not establish acquired distinctiveness as to that term. Likewise, Louisiana Fish Fry's other registrations concerned marks that included FISH FRY PRODUCTS with other words (for example, LOUISIANA FISH FRY PRODUCTS).

The court held that substantial evidence supported the Board's determination that Louisiana Fish Fry did not carry its burden to prove that FISH FRY PRODUCTS had acquired distinctiveness, and it affirmed the Board's ruling.

Judge Newman concurred in the result, but she would have sustained the denial of registration on the ground of genericness. Only if the Board's ruling on genericness was incorrect should the CAFC have reached the issue of acquired distinctiveness. The majority, one might say, put the fishcart before the fish.

Read comments and post your comment here.

TTABlog notes: The only person I know from Louisiana is my former colleague, Ian Mullet. I wonder what he thinks of this decision? One of the angelfish in Doug Wolf's aquarium died this weekend. It's name was Louisiana. Coincidence?

Text Copyright John L. Welch 2015.

Monday, August 17, 2015

Precedential No. 26: TTAB Dismisses Opposition As Untimely, Denying Opposer Benefit of Another's Extension of TIme

Jennifer Wehrman filed for and was granted a 30-day extension of time within which to oppose registration of the mark HMX for motor oil. During that 30-day period Warren Distribution, Inc. (WDI) filed a Notice of Opposition, claiming the benefit of the extension of time obtained by Wehrman. Applicant Royal Purple filed a motion to dismiss the opposition, contending that WDI was not the same entity that obtained the extension of time. WDI argued that Ms. Wehrman was in privity with it, and further that she was misidentified by mistake, and therefore the opposition was timely filed under Rule. 2.102(b). The Board disagreed, and it dismissed the opposition without prejudice for lack of subject matter jurisdiction. Warren Distribution, Inc. v. Royal Purple, LLC, 115 USPQ2d 1667 (TTAB 2015) [precedential].

Rule 2.102(b) sets forth two disjunctive conditions under with an oppose may claim the benefit of an extension of time granted to another named entity: privity and identification by mistake.

Privity: WDI asserted that Wehrman and WDE were in privity because Wehrman was its employee, she was authorized to filed the extension request, she intended to file it on behalf of WDI, and she used her business address, email address, and phone number in the request. The Board, however, pointed out that it has long been held that privity does not exist between a person and a corporation merely because the person is employed by the corporation.Wehrman was not an owner or a manager "so identified in interest" with WDI "that [s]he represents the same legal right."

Mistake: "'Misidentified through mistake,' as used in Trademark Rule 2.102(b), means a mistake in the form of the potential opposer's name or its entity type, not the naming of a different existing legal entity that is not in privity with the party that should have been named."

WDI argued that a mistake was made because Wehrman had an "innocent misconception" when she filed the extension request: she intended to file the request on behalf of WDI, but instead innocently entered her own name. However, the Board noted, WDI failed to address the fact that Wehrman identified herself as "an individual citizen of [the] United States."

Rule 2.102(b) requires that the potential opposer be identified "with reasonable certainty." Ms. Wehrman identified herself with certainty, but not WDI. She made no mention of WDI in the extension request, even in her business address. "The request clearly identified Wehrman, an individual, who is a different existing legal entity from WDI, a Nebraska corporation."

The Board distinguished this case from Custom Computer Services, Inc.v. Paychex Props., Inc., 67 USPQ2d 1638 (Fed. Cir. 2003), in which a party identified as "Custom Computer Services, Inc., formerly known as The People Payroll" filed and obtain two extensions of time to oppose. The opposition was filed by a party called "The Payroll People, Inc.," but the Board instituted the proceeding naming Custom Computer Services, Inc. as the opposer, and it refused to allow an amendment naming "The Payroll People, Inc." as the opposer. The CAFC, reversing the Board, found that although privity was not established, a mistake was made with the meaning of Rule 2.102(b):

It is not the case that the entity named in the extensions is a "different existing legal entity. *** [T]here never has been an entity named "Custom Computer Services, Inc., formerly known as The People Payroll." There is an entity named "Custom Computer Services, Inc.," but it was never formerly known as "The Payroll People." Instead, we have here a mistake in the form of one entity's name, i.e., Payroll People, a mistake consistent with the PTO's definition of mistake. To be sure, the mistake that occurred here was an incorrect belief that a corporate name had changed. However, that was a mistake as to the form of the correct entity, not an attempt to substitute one entity in the place of a different existing legal entity.

Here, Wehrman and WDI are two independent existing legal entities. Wehrman identified herself by her own name and as "an individual citizen of [the] United States," with no reference to WDI.

The Board concluded that WDI was not entitled to claim the benefit of the extension of time obtained by Wehrman. Accordingly it granted applicant's motion to dismiss without prejudice for lack of subject matter jurisdiction.

Read comments and post your comment here.

TTABlog comment: "Ms. Wehrman, Ms. Jennifer Wehram, please report to the president's office!" Oh well, presumably WDI can file a petition for cancellation if and when the opposed application proceeds to registration.

Text Copyright John L. Welch 2015.

Friday, August 14, 2015

TTAB Reverses Geographical Descriptiveness Refusal of MONTUSSAN for Wine

Where is Montussan? It's a small town in France, and its obscurity is the reason why the Board reversed a Section 2(e)(2) refusal of the mark MONTUSSAN, finding it mark not primarily geographically descriptive of "alcoholic beverages containing fruit; alcoholic cocktail mixes; alcoholic cordials; aperitifs; hard cider; liqueurs; prepared alcoholic cocktail; spirits; wines and fortified wines." In re Montussan Apertifs SAS, Serial No. 86172886 (August 12, 2015) [not precedential].

The first requirement for a Section 2(e)(2) refusal is that the mark be the name of a place generally known to the public. If the geographic meaning of a mark is obscure or remote, the location is not generally known. See, e.g., In re Newbridge Cutlery Co., 113 USPQ2d 1445 (Fed. Cir. 2015) (Newbridge, Ireland not a generally known location). [TTABlogged here].

The Examining Attorney relied on several webpages indicating that Montussan is a town of 2991 inhabitants in the Gironde department of France, approximately 15 kilometers from Bordeaux. It features one bed-and-breakfast hotel, vineyards, and at least one company providing lessons in viniculture. He maintained that Montussan is not remote or obscure to American purchasers of wine, particularly those originally from France or with other connections to France or Bordeaux.

The Board, however, found the evidence insufficient, concluding that Montussan "is very much an obscure location and would likely be unknown to the relevant American consumer."

At most, the evidence shows that the town of Montussan might be known to individuals who traveled to the town itself or have another reason to be familiar with the wines and spirits originating there. We note the absence in the record of evidence of such consumer recognition among American consumers. Similarly, there is no evidence in the record of any recognition of Montussan among Americans of French ancestry or those with connections to France, the Bordeaux region, or French winemaking.

In short, there was no evidence that American consumers of wine are familiar with applicant, its products, or the town of Montussan.

The Examining Attorney further contended that because Montussan is near Bordeaux, which is famous for wine among American purchasers, Americans would likely know of Montussan as a geographic place in the Bordeaux region that produces Bordeaux wine. However, the Board observed, he provided no evidence to support this contention. "The location of this town of less than 3000 inhabitants 9 miles from a much larger or more prominent city reveals nothing about what the relevant American purchaser might perceive the word 'Montussan' to mean ...."

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Montussan? Wine? Must be some place in France, I thought. But where? Got me.

Text Copyright John L. Welch 2015.