Saturday, April 30, 2016

TTAB Posts May 2016 Hearing Schedule

The Trademark Trial and Appeal Board has scheduled three (III) oral hearings for the month of May, 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.

May 4, 2016 - 2 PM: In re North Carolina Lottery, Serial No. 86044043 [Section 2(e)(1) mere descriptiveness refusal of FIRST TUESDAY for "lottery cards; Scratch cards for playing lottery game" and "lottery services"].

May 5, 2016 - 2 PM: Tequila Holdings, Inc. v. Basha Holdings, LLC, Opposition No. 91207397 [Section 2(d) opposition to registration of QUI for "alcoholic beverages, namely, distilled spirits" in view of the registered mark PAQUI for distilled spirits].

May 26, 2016 - 2 PM: DinaDiCenso, Eight of Swords, LLC v. Dave Wallin, Opposition No.91208299 [Opposition to registration of EIGHT OF SWORDS TATTOO & Design for "Body piercing services; Cosmetic tattooing services; Providing medical information and news about body art, namely, piercing, tattoos, scarification, subincision, castration through photos and videos; Tattoo parlors; Tattoo studios; Tattooing; Tattooing services" [TATTOO disclaimed], on the grounds of lack of ownership and fraud].

Read comments and post your comment here.

TTABlog note: "castration through photos and video"? I would call it "photochopping."

Text Copyright John L. Welch 2016.

Friday, April 29, 2016

Precedential No. 12: TTAB Affirms 2(e)(1) and 2(d) Refusals of HOUSEBOAT BLOB for Inflatable Mattresses

The Board affirmed two refusals of the mark HOUSEBOAT BLOB for "Inflatable float mattresses or pads for recreational use, namely, mattresses and pads from which the user may be launched into the air and onto a body of water; Inflatable mattresses for recreational use, namely, mattresses from which the user may be launched into the air and onto a body of water" [BLOB disclaimed]. It found the mark merely descriptive under Section 2(e)(1), and likely to cause confusion with the registered mark THE BLOB for goods legally identical to applicant's goods. In re Fat Boys Water Sports LLC, Serial No. 86490930 (April 27, 2016) [precedential].

Mere Descriptiveness: The record evidence established that the term "blob" refers to a type of air mattress used on bodies of water as a recreational device whereby one is catapulted off the blob when another person jumps onto the other side of the blob. The question was whether the mark HOUSEBOAT BLOB, as a whole, is merely descriptive of the goods.

Applicant anachronistically argued that the Board should apply the degree of imagination test, the competitors' use test, and the competitors' need test, relying on No Nonsense Fashions, a 1985 TTAB decision. The Board, however, pointed out that No Nonsense has been superseded by subsequent CAFC and Board rulings.

Under the current standard, there is no requirement that the Examining Attorney prove that others have used the mark at issue or that they need to use it, although such proof would be highly relevant to an analysis under Section 2(e)(1). The correct test is whether the phrase forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods.

Applicant's own marketing materials described a version of its product "that will accommodate House Boats and Yachts." The Amazon web page for applicant's product described it as "perfect to attach to a houseboat or small cliff ...."

Considering the mark as a whole, the Board concluded that the words in combination "would be immediately understood to mean a blob-type inflatable launch pad that is specialized for use in association with a houseboat." Thus, the mark conveys an immediate idea of the nature and purpose of the goods, and the Board found the mark to be merely descriptive of the goods.

Likelihood of confusion:  Applicant argued that the cited mark THE BLOB is a double-entendre that "uses the fame of the movie 'The Blob' ... and the descriptive/generic meaning of 'blob.'" However, there was no evidence of record to establish that Registrant promoted its goods with a reference to the film, but even if the cited mark has a double entendre that applicant's mark does not, "in light of the evidence and the description of the goods for the mark THE BLOB, it is much more likely that customers would perceive it to mean an inflatable, floating launch pad." Similarly, consumers would perceive HOUSEBOAT BLOB to be a special type of inflatable launch pad for use with a houseboat.

Applicant argued that the term "blob" in the cited registration has little or no source identifying significance, but the Board, in light of the presumption to which the registration is entitled, refused to consider the contention that the cited mark has no distinctiveness or is generic. On the other hand, in light of the "usage evidence bearing on the public's understanding of the term BLOB," the Board found the mark to be a weak source indicator.

Even so, we see little in Applicant’s mark to distinguish it from Registrant’s mark, as Applicant’s mark merely adds a highly descriptive term to the registered mark, in such a way as to indicate to customers a suitable purpose of the goods. And although the registered mark includes the word “THE,” which is absent from Applicant’s mark, the presence or absence of this word is unlikely to allow consumers to meaningfully distinguish the marks, because we cannot find on the evidence of record that consumers would associate the trademark THE BLOB, as used on these goods, with the classic movie.

The goods of the application and cited registration are legally identical in part (although the goods of the cited registration are limited to use by youth camps, church camps, campgrounds, and other outdoor recreation businesses), and they therefore presumably travel in the same, normal channels of trade to the same classes of consumers.

Considering the evidence and the relevant duPont factors, the Board found confusion likely and it therefore affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment:  The opinion includes a brief discussion of "incontestable" registrations and their import in the likelihood of confusion analysis. It pointed out that a mark is not considered stronger because its registration is "incontestable" (i.e., more than five years old). "The registrations alone are incompetent to establish any facts with regard to ... any reputation [the registered marks] enjoy or what purchasers' reactions to them may be." 

BTW: I continue to assert that there is no such thing as an "incontestable" registration. Section 15 refers to the right to exclusive use of a mark becoming incontestable, but registrations can always be contested on certain grounds, like fraud and abandonment. So to call a registration incontestable is, I think, misleading and inappropriate.

Text Copyright John L. Welch 2016.

Thursday, April 28, 2016

Pro-Football Seeks Certiorari-Before-Judgment in REDSKINS Appeal

On April 25th, Pro-Football, Inc. filed a Petition for Writ of Certiorari Before Judgment (pdf here), in the REDKSINS case now pending before the U.S. Court of Appeals for the Fourth Circuit, asking the Supreme Court to consider immediately the issue of the constitutionality of Section 2(a)'s disparagement clause. Pro-Football argues that the Supreme Court should either deny certiorari in the SLANTS case, or consider the REDSKINS case in tandem with In re Tam.


According to Pro-Football, the REDSKINS case is an "essential and invaluable complement to Tam:

Assuming the Court grants review in Tam, this case is the paradigmatic candidate for certiorari before judgment because it is a necessary and ideal companion to Tam. The Court often has granted certiorari before judgment to consider complementary companion cases together, especially when the two cases raised important questions of constitutional law. Granting certiorari before judgment allows the Court to consider the question presented in a wider range of circumstances, resolve intertwined, equally important questions, and avoid piecemeal review. All of that is true here.

As in other cert-before-judgment cases, this case would allow the Court to consider Tam’s First Amendment question in the full range of circumstances, including both initial denials of registration and after-the-fact cancellations. The cancellation context here not only rounds out the scenarios in which § 2(a) applies, but also poses the gravest threat to free speech and is by far the most constitutionally suspect. Thus, even were the government to prevail in Tam, this Court’s decision likely would not govern the cancellation context.

Read comments and post your comment here.

TTABlog comment: I hope the Supremes take both cases.

Text Copyright John L. Welch 2016.

Meet the Bloggers XII: Monday, May 23rd, 8 PM, Kings Bowl

MEET THE BLOGGERS is back for the twelfth time. Perhaps the best non-INTA event ever devised by woman or man, MTB XII will be held on Monday, May 23rd, 8 PM. at Kings Bowl America in Orlando (here). Come and meet some of the best trademark attorneys in the world, and while you're at it say hello to the sponsors of this year's event. For details, directions, a look at the sponsoring bloggers, and the RSVP link, go here.

San Diego 2015

Hong Kong 2014

Dallas 2013

Washington, D.C. 2012. Co-hosts Pelton, Welch, Coleman, Schwimmer

San Francisco, 2011

Boston 2010. Co-hosts: Coleman, Chestek, Schwimmer, and Welch

Seattle 2009

Berlin 2008

Coleman, Schwimmer, Welch, Chicago 2007

Toronto 2006

San Diego 2005
Click on photo for larger picture

Read comments and post your comment here

Wednesday, April 27, 2016

TTAB Test: Is BLACK BARK for Restaurant Services Confusable with BLACK BARK BRISKET for Meat?

Last week we had olive oil and restaurant services. Now it's restaurant services and beef. The USPTO refused registration of the mark BLACK BARK for restaurant services, finding it likely to cause confusion with the registered mark BLACK BARK BRISKET for "Meat; Prepared meat." The marks are similar, but are the goods and services related? How do you think this came out? In re DLMW-BBQ, LLC, Serial No. 86457938 (April 25, 2016) [not precedential].

The marks: The Board found the marks to be substantially similar in appearance and sound. As to meaning, in the field of barbecued meats, "BARK is understood to mean the desirable crust that develops on meat that has been properly cooked." "Bark" may be black in color, and in fact that color is desirable to some.

In overall commercial impression, Registrant’s mark, as applied to meat, describes a brisket meat that is cooked or barbecued in such a way that it has a black-colored crust; and Applicant’s mark, as applied to restaurant services suggests the availability of meat that is cooked or barbecued so as to have a black-colored crust. We find these commercial impressions to be similar, although not identical.

The Board found that the first du Pont factor, the similarity or dissimilarity of the marks weighed in favor of a finding of likelihood of confusion.

Goods/Services: "To establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services." Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 1236, 212 USPQ 641, 642 (CCPA 1982).

In an attempt to show relatedness, the Examining Attorney submitted several website excerpts from restaurants or food trucks that specialize in barbecue and offered meat by the pound, as well as six third-party registrations covering restaurant services and meat products. Only two of the websites excerpts were probative.

The Board, however, wanted to see the "something more." It noted that the cited mark is a relatively weak source indicator for most products because of its descriptiveness, and it found the two websites and the relatively small number of registrations to be insufficient under the "something more" standard.

The Board concluded that the USPTO failed to prove that confusion is likely, and it therefore reversed the refusal.

Read comments and post your comment here.

TTABlog comment: I'm surprised the PTO couldn't come up with more websites and registrations to support the refusal. Why was the evidence limited to barbecue restaurants?

Text Copyright John L. Welch 2016.

Tuesday, April 26, 2016

TTAB Reverses 2(d) Refusal of FAVORIT (Stylized) For Bike Parts and Toys

There haven't been many 2(d) reversals lately, but here's one. The Board overturned a refusal to register FAVORIT in the stylized form shown below, for bicycles, bicycle parts, games, toys, and cycling-related sporting goods, finding the mark not likely to cause confusion with the mark FAVORITES, registered for "mail order catalogs featuring jewelry, hardware, sporting goods, toys and games, food and home furnishings, ...." The weakness of the mark FAVORITES and the differences in the involved goods and services brought turned the tide in applicant's favor.  In re Favorit Czechoslovakia s.r.o., Serial No. 79133133 (April 22, 2016) [not precedential].

The marks: The Board wasted little time in finding the marks to be similar in appearance, sound, connotation, and commercial impression. However, twenty third-party registrations and uses of the terms "favorite" or "favorites" in connection with sporting goods, toys, games,and retail store services selling toys or bicycles convinced the Board that FAVORITES is a "weak source indicator for sporting goods and toys."

That is, the word "favorite" may be considered laudatory, and therefore conceptually weak, inasmuch as "favorite" is defined as "a person or a thing that is liked more than others."

Therefore, this duPont factor (the strength of the mark) weighed against a finding of likely confusion.

Goods/Services: The examining attorney argued that catalogs and the goods contained therein are of a kind that may emanate from a single source under the same mark. She also relied on ten third-party registrations to show the relatedness of applicant's goods and the goods that are listed in connection with the catalogs of the cited registration. However, none of these third-party registrations showed use of the same mark on mail order catalogs and cycling-related sporting goods or on toys and games. Thus these registrations failed to show a connection between applicant's goods and registrant's goods.

Channels of Trade: As to channels of trade, the examining attorney asserted that applicant's goods fall within the broad wording of "sporting goods" or "toys and games" and therefore are closely related and presumably travel in the same channels of trade. Not so fast, said the Board. The goods in the cited registration are mail order catalogs and therefore registrant's channels of trade "do not include, for example, retail stores, the channels of trade in which applicant's goods are likely to be sold." Nor could the Board assume that applicant's goods would be sold through registrant's catalogs. Therefore, the Board concluded that the PTO had failed to show the channels of trade were the same for applicant's and registrant's goods.

The Board concluded that confusion was not likely, and it reversed the refusal.

Read comments and post your comment here.

TTABlog comment: How did the FAVORITES registration issue without a required showing of acquired distinctiveness?

Text Copyright John L. Welch 2016.

Monday, April 25, 2016

BOOKING.COM Files Complaint for District Court Review of TTAB Genericness Ruling, B.V. has filed a complaint (here) in the U.S. District Court for the Eastern District of Virginia, seeking review, under Lanham Act Section 1071, of the TTAB's decision [TTABlogged here] deeming the term BOOKING.COM to be generic for travel agency services.

At paragraph 43 of the complaint, states that "a recent survey (conducted after the TTAB decision) demonstrates that 75% of consumers recognize BOOKING.COM as a trademark, not a common name." Since a Section 1071 review provides a trial de novo, this new evidence may have a significant effect on the outcome.

Read comments and post your comment here.

TTABlog comment: If I knew a bookie, I would bet on a reversal.

Text Copyright John L. Welch 2016.

Friday, April 22, 2016

Finding BAJATUSEGURO.COM a Double Entendre, TTAB Reverses 2(e)(1) Refusal

The USPTO refused registration of the mark BAJATUSEGURO.COM, in standard character form, for "insurance brokerage and reinsurance underwriting services offered via a global computer network," deeming the mark merely descriptive under Section 2(e)(1). The examining attorney also required a disclaimer of that term in the word + design mark shown below. The Board, however, found that BAJATUSEGURO.COM is a double entendre, one of the meanings being not descriptive but incongruous, and so it reversed the refusal. In re Salvador Cababie, Serial Nos. 86265910 and 86265949 (April 14, 2016) [not precedential].

There was no dispute that the words of the marks are in Spanish, or that the ordinary American purchaser would "stop and translate" the foreign term into its English equivalent. The crux of the dispute was the meaning of BAJATUSEGURO to Spanish speakers.

The examining attorney submitted a Translation Statement prepared by the USPTO: "The English translation of the non-English wording in the mark is 'lower your insurance.'" He also submitted several online translations of "baja tu seguro" as "lower your insurance."

Applicant argued that the phrase "baja tu seguro," when combined with the top level domain ".com," takes on the meaning of "download your insurance." He submitted a declaration from his Mexican attorney to support that assertion. One exhibit to her declaration was a definition from a dictionary of Internet terms, stating that "bajar" means to download something from the Internet. A Google search revealed a definition that corroborated that meaning, and another exhibit translated "bajar musica" as "download music."

There was no dispute that "lower your insurance" is descriptive of applicant's services. The Board accepted the USPTO translation of BAJA TU SEGURO as "lower your insurance," and observed that the mark BAJATUSEGURO.COM would have that meaning to many consumers.

On the other hand, the translation submitted by applicant was sufficient for the Board to find that, "at least to an appreciable number of consumers, the mark would have the meaning of "download your insurance."

Therefore, the question was whether  BAJATUSEGURO.COM is a double entendre, with one meaning being descriptive and the other not. "Double entendres, of course, are registrable because they are not merely descriptive."

During examination of the subject applications, the examining attorney did not submit evidence regarding the descriptiveness of "download your insurance," and in fact asserted that the phrase would be an "incongruous interpretation that the average consumer simply will not reach." The Board then concluded:

[B]ecause we have found that the declaration of Ms. Vianey Romo de Vivar shows that one meaning that BAJATUSEGURO.COM would have to consumers is DOWNLOAD YOUR INSURANCE, and because the Office has not shown that this meaning is merely descriptive, this incongruous second meaning qualifies BAJATUSEGURO.COM as a double entendre, such that it is not merely descriptive of the identified services

The Board therefore reversed the Section 2(e)(1) refusal and the disclaimer requirement.

Read comments and post your comment here.

TTABlog comment: The Board noted that a different result might ensue in an inter partes proceeding that included evidence of the descriptiveness of "download your insurance."

Text Copyright John L. Welch 2016.

Thursday, April 21, 2016

Electric Skillet Configuration Lacks Acquired Distinctiveness, Says TTAB

It was a tough week for National Presto Industries. First, the Board pulled the plug on its popcorn popper configuration mark, and yesterday its electronic skillet configuration mark was short-circuited. The Board affirmed a refusal to register the configuration shown below, for "electric skillets," finding that Preston's proof of acquired distinctiveness under Section 2(f) was inadequate. In re National Presto Industries, Inc., Serial No. 85883551 (April 19, 2016) [not precedential].

The mark comprises the curved handles of the skillet, not the metal base or the glass lid or the knob (which are shown all in dashed lines).

Of course, under Wal-Mart, product configurations cannot be inherently distinctive, so Presto resorted to Section 2(f), relying on its use of the "mark" since 2005, sales of more than $65 million, more that $5million in advertising expenditures, and distribution of some 80,000 product catalogs.

The Board observed that sales figures showing commercial success of the product are not probative of purchaser recognition of the product's configuration as a source indicator. The critical question is whether the product design is being used and advertised in such a way that consumers "associate the product design with a particular applicant, and therefore view the product as emanating from a single source." So-called "look-for" advertising may be particularly probative.

Here, there was no evidence of "look-for" advertising. Although Presto's skillet has been actively promoted and sales have been significant, there was little evidence that consumers recognize the shape of the combination leg/handle of the skillet as a source indicator. While the advertising displays the skillet and touts a few features of the product, there was no attempt by Presto to draw attention to the leg/handle design as a trademark. Self-serving statements by Presto's Secretary and General Counsel regarding the purported wide association of the design with Presto were not corroborated by any evidence.

The Board therefore affirmed the refusal to register under Section 1, 2, and 45 of the Trademark Act on the ground that the applied-for mark is a non-distinctive product design that has not achieved acquired distinctiveness.

Read comments and post your comment here.

TTABlog comment: During prosecution, the examining attorney withdrew a Section 2(e))(5) functionality refusal.

Text Copyright John L. Welch 2016.

Wednesday, April 20, 2016

USPTO Files Petition for Writ of Certiorari in THE SLANTS Case

The USPTO today filed a petition for a writ of certiorari (here) to the U.S. Court of Appeals for the Federal Circuit, seeking Supreme Court review of the CAFC's decision in In re Tam 117 USPQ2d 1001 (Fed. Cir. 2016), deeming the disparagement provision of Lanham Act 2(a) unconstitutional as a violation of the Free Speech Clause of the First Amendment.

The question presented is as follows:

Whether the disparagement provision in 15 U.S.C. 1052(a) is facially invalid under the Free Speech Clause of the First Amendment.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.

TTAB Test: Are Olive Oil and Restaurant Services Related for Section 2(d) Purposes?

The USPTO refused registration of the mark MORO in the design form shown below left, for "olive oil," finding the mark likely to cause confusion with the registered marks MORO in standard characters and MORO RESTAURANTS & Design (below right) for "restaurant and catering services." The Board noted that there is no per se rule dictating a likelihood of confusion between a mark for food items and a similar mark for restaurant services Something more must be shown. How do you think this came out? In re Conga Foods Pty Ltd., Serial No. 86261786 (April 8, 2016) [not precedential].

The Board focused on the cited standard character mark MORO. It noted that "something more" has been found when "the mark for restaurant service made clear that the restaurant specialized in the identified food goods" (E.g., COLOMBIANO COFFEE HOUSE and COLUMBIAN for coffee). Or when the restaurant's wines were actually sold in applicant's restaurant (OPUS ONE for wines confusable with the identical mark for restaurant services). Or when the mark was a "very unique, strong mark" (MUCKY DUCK for mustard confusable with MUCKY DUCK for restaurant services).

The examining attorney submitted evidence of third-party registration and use of a single mark for both edible oils and restaurant services. The Board found the evidence relevant, but it "did not show that the goods and services originate from the same source or that there is an association or connection with the sources of the goods and services." [Not clear why not - ed.].

The cited mark does not indicate that registrant specializes in olive oil as a type of food. The fact that olive oil may be an ingredient in some of the items on Registrant's menu is not enough, by itself, to support a Section 2(d) refusal. "That is, use of a term referring to an ingredient in some dishes does not carry the same weight as use of a term referring to an entire type of food, such as Mexican food, or to a complete product, like pancakes or coffee." (The Board noted that the result here might have been different if registrant specialized in olive-based cuisine.)

As to the strength of the cited mark, the Board did not find MORO to be a "very unique, strong mark," or "unique or memorable."

Finally, there was no evidence that registrant sells applicant's olive oil in its restaurants or via its catering services.

The Board concluded that the USPTO had failed to prove the "something more" required to support the refusal, and so it reversed.

Read comments and post your comment here.

TTABlog comment:

Text Copyright John L. Welch 2016.

Tuesday, April 19, 2016

Divided Board Panel Affirms Single-Book-Title Refusal of NO EXCUSES DIET

A divided panel of the Board affirmed a refusal to register the mark NO EXCUSES DIET for "Books in the field of food in health and wellness," on the ground that the phrase does not function as a trademark because it is merely the title of a single book. Judge Adlin dissented, finding that as a result of applicant's "association creating activities under the marks NO EXCUSES and THE NO EXCUSES DIET," these marks identify a set of literary and other works on the same subject." In re Jonathan Roche Fitness Ventures LLC, Serial No. 85981686 (April 15, 2015) [nor precedential].

Judge Kuczma, writing for the panel majority, observed that the title of a single book "describes the book, and is not associated in the public mind with the publisher, printer of bookseller." However, if the title identifies a series of works, it performs a trademark function and is registrable.

Reviewing applicant's specimen of use and its submitted evidence, the majority found it clear the proposed mark "only identifies the title of a single book." The additional evidence submitted by applicant comprised advertising for materials in its book, including workouts, articles and other items available at applicant's website or on YouTube, made available on the same webpage that offers the book. That use, the majority found, does not constitute use of NO EXCUSES DIET as a trademark for books (though it may be service mark use).

Given the identification of goods - i.e., books - the panel majority affirmed the refusal.

Dissent: Judge Adlin called the majority's conception of "book," "titles," and "series" as too narrow. He would find that THE NO EXCUSES DIET (sic!) is associated in the public mind with the book's source. It is not required that the works in a series all be in the same format, or that the marks be used without any variation.

Although applicant offers only one book under the title NO EXCUSES DIET, that is not its only use of the mark (or closely related marks). The ancillary materials referencing the book, in combination, form a "system or process to 'crank up your energy fitness and weight loss.'" The evidence supports a finding that NO EXCUSES is in fact applicant's "primary mark" (DIET being disclaimed).

Judge Adlin concluded that applicant is engaged in a number of "association creating activities" under the marks NO EXCUSES and THE NO EXCUSES DIET, and as a result these marks identify a set of works on the same subject, namely, nutrition, health and wellness.

Read comments and post your comment here.

TTABlog comment: Perhaps applicant should have identified the goods as printed publications rather than books.

Text Copyright John L. Welch 2016.