Wednesday, January 28, 2015

Precedential No. 2: Applicant's Third-Party Registrations Show That RV Trailers and Trucks are Not Related

The differences in the goods and their channels of trade and the high degree of purchaser care led the Board to conclude that the mark TERRAIN for “recreational vehicles, namely, towable trailers” is not likely to cause confusion with the identical mark registered for “motor land vehicles, namely, trucks.” Applicant Thor Tech's  evidence of dozens of third-party registrations for the same or very similar marks, owned by different entities, for vehicles and recreational vehicle trailers suggested to the Board that "businesses in these two industries believe that their respective goods are distinct enough that confusion between even identical marks is unlikely." In re Thor Tech, Inc., Serial No. 85667188 (January 26, 2015) [precedential].


The evidence established that towable RVs (see illustration below) are essentially travel trailers equipped with electric and water capacities, as well as toilet facilities. The examining attorney submitted seven third-party registrations covering "trucks" and "trailers," but five of them listed trailers that were not recreational vehicles. The other two, however, served to suggest that trucks, conversion kits, trailer hitches and trailers may emanate from the same source.

Applicant Thor Tech countered with fifty sets of third-party registrations for the same or similar marks, owned by different entities, and covering automobiles, trucks or sport utility vehicles on the one hand and recreational vehicles, travel trailers, and/or motor homes on the other. The Board found that this "pattern of registrations" rebutted the two registrations submitted by the examining attorney. The Board came to a similar conclusion in In re Keebler Company v. Associated Biscuits Limited, 207 U.S.P.Q. 1034, 1038 (TTAB 1980) ("The mutual respect and restraint exhibited toward each other by the owners of the plethora of marks, evidenced by their coexistence on the Register, are akin to the opinion manifested by knowledgeable businessmen .... "). These third-party registrations "suggest that consumers are aware that [the goods] are offered by different companies under the same or similar marks."

The examining attorney, relying on a number of Internet websites, contended that the involved goods travel in the same channels of trade, but the Board was unpersuaded. It found that, at best, this evidence indicated that two small retailers that sell a wide variety of vehicles also sell used trucks and recreational vehicle towable trailers, and another retailer sells automobiles (and presumably trucks) and recreational vehicles. "While trucks and recreational towable trailers may occasionally be sold by the same retailers, we cannot overlook the facts that the products are, at least on this record, noncompetitive, differ completely in utility, have nothing in common with respect to their essential characteristics or sales appeal, and ... are expensive."


Because the involved goods are costly - the TERRAIN vehicle was sold by registrant GM for $26,23, while towable trailers cost in the $8,000 to $24,000 range - the Board inferred that purchasers would exercise a high degree of care in making their purchasing decisions. Trucks and towable RVs are not everyday purchases, and a consumer would be expected to closely examine the products, probably after conducting some research regarding the vehicles. In short, this du Pont factor weighed against a finding of likely confusion.

Balancing the relevant du Pont factors, the Board concluded that applicant's mark is not likely to cause confusion with registrant's mark, and so it reversed the refusal.

Read comments and post your comment here

TTABlog note: Would the "pattern of registrations" argument be effective in the context of wine  versus other alcoholic beverages?

Text Copyright John L. Welch 2015.

Monday, January 26, 2015

Recommended Reading: Aaron and Nordemann: The Concepts of Trademark Use in the EU and the USA

Tara M. Aaron and Axel Nordemann consider the role of trademark "use" in the United States and the European Union, in "The Concepts of Use of a Trademark Under European Union and United States Trademark Law." Of course, "use in commerce" is a fundamental principle in American trademark law, the Constitutional keystone of the federal registration system. In the European Union, registration is available without actual use of the mark, and revocation may occur only after five years if a third-party challenges the registration for non-use. But the systems differ not only in technical aspects but in underlying philosophies, and the authors explain and evaluate the many differences.


The legal differences between the concept of use in the United States and in the EU are not merely technical. While in the United States, generally, "the owner of a mark may not monopolize markets that his trade has never reached," this may be possible in the EU In this article, we will look at the European and U.S. treatments of "use" as a trademark concept and consider which (if either) is better, and why.

* * *

The European registration-based system is a natural result of a philosophy of open and equal competition across the Community. The U.S. use-based system is a direct result of the United States Constitution and the understanding of trademarks as nothing outside of an identifier of source for goods or services and primarily a method of protecting the consuming public from confusion. Both systems require use to a lesser or greater extent, and both systems are flexible in varying degrees. But the differences are stark and only become greater as the trajectories of these different philosophies become clear.

Read comments and post your comment here

TTABlog note: Again I thank The Trademark Reporter for granting permission to provide links to these two commentaries, which are Copyright © 2014 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 106 TMR No. 6 (November-December 2014).

Text Copyright John L. Welch 2015.

Friday, January 23, 2015

TTAB Test: Must "47AG" Be Disclaimed for SiIver Jewelry?

The USPTO refused registration of the mark COOMI 47AG for "silver jewelry," absent a disclaimer of "47AG." Applicant appealed. Examining Attorney Patty Evanko maintained that "Ag" is the chemical symbol for silver and "47" is silver's atomic number, and so "47AG" describes the material composition of applicant's jewelry. Applicant argued that typical jewelry shoppers would not immediately recognize that meaning of "47AG." How do you think this came out? In re Bhasin Enterprise Corporation, Serial No. 86025037 (January 2, 2015) [not precedential].


The Board pointed out that silver jewelry "is a consumer item of potentially universal appeal to individuals." The subject application contains no limitation as to the nature of the consumers, and so the Board must presume that they include "all normal customers for such goods, including individuals who have knowledge of the meaning of the terms 'Ag' and '47.'" Moreover, the Board has previously recognized the descriptive significance of chemical symbols (e.g., ZN-PLUS, MN-PLUS, and CA-PLUS). And the terms "Ag" and "47" are not jargon, but long-established and universally recognized scientific terms that may even be learned in high school. Thus many consumers, even those without a scientific background, would be aware of the terms.

There is nothing incongruous or unique about the combination of "47" and "AG." The evidence showed that they commonly appear together or in close proximity (see illustration above). The Board disagreed with applicant's argument that a multi-stage reasoning process would be required in order to derive an understanding of the term "47AG." When used together, "47" and "AG" merely reinforce each other in meaning.

The Board therefore found "47AG" to be merely descriptive of silver jewelry, and it affirmed the requirement of a disclaimer of the term. Applicant was allowed thirty days to submit the required disclaimer.

Read comments and post your comment here

TTABlog note: What is element 43? What is the atomic number of Kryptonite? Would "46AG" be half-descriptive?

Text Copyright John L. Welch 2015.

TTABlogger Named to 2014 "World Trademark Review 1000"

It's happened again! Yours truly has been included in the 2014 edition of the World Trademark Review 1000. (link here). [This time, the blog got a mention. It's something like having a child bring home a good report card.]

Thursday, January 22, 2015

Richmond IP Boutique Seeks Trademark/IP Attorney

The Leading-Edge Law Group, a two-lawyer firm in Richmond, Virginia, is looking to hire a full-time attorney in intellectual property law. The firm's practice includes trademarks (with heavy emphasis on trademark infringement monitoring and policing), copyrights (heavy emphasis on policing), technology licensing and development, and patents. Several years of experience preferred, particularly including trademark litigation. For more details, contact John Farmer (jfarmer at leadingedgelaw.com).

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Supreme Court Holds That Jury Should Decide Tacking Issue

The U.S. Supreme Court affirmed the ruling of the U.S. Court of Appeals for the Ninth Circuit, holding that a jury should make the determination of whether tacking is available in a given (jury) case. "The Ninth Circuit correctly held that whether two marks may be tacked for purposes of determining priority is a question for the jury. Accordingly, the judgment of the Ninth Circuit is affirmed." Hana Financial, Inc. v. Hana Bank, 13–1211 (S. Ct. January 21, 2015).


When Hana Financial sued Hana Bank for infringement, the latter invoked the tacking doctrine in claiming priority. Tacking applies when the two marks create the same, continuing commercial impression. The later mark should not differ materially from the earlier mark to be tacked. In other words, the two marks must be "legal equivalents." The circuits are split as to whether tacking is a question of law or an issue for the jury.

The Supreme Court ruled that tacking is an issue for the jury to decide.

Application of a test that relies upon an ordinary consumer’s understanding of the impression that a mark conveys falls comfortably within the ken of a jury. Indeed, we have long recognized across a variety of doctrinal contexts that, when the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer.

Of course, a judge may decide the tacking issue in a non-jury case, and may do so in a jury case if the facts warrant it on a motion for summary judgment or for judgment as a matter of law. But otherwise, when a jury trial has been requested, "the question whether tacking is warranted must be decided by a jury."

The Court found that the district court had properly instructed the jury on the issue, and it therefore affirmed the district court judgment of non-infringement.


Read comments and post your comment here

TTABlog note: The issue of tacking comes up relatively rarely. But does this decision have broader implications? Does it suggest that likelihood of confusion is a jury issue? The circuits are split on the question.

Text Copyright John L. Welch 2015.

Wednesday, January 21, 2015

TTAB Test: Is Wine Related to Alcohol/Fruit Juice Beverages?

Here we go again. Vini, Vidi, non Vici. The USPTO refused registration of the mark MASQUERADE for "sparkling wines; wines," finding the mark confusingly similar to the registered mark MASCARADE for "mixed beverage containing alcohol and fruit juice." Applicant appealed. Examining Attorney Rebecca Smith relied on a number of third-party registrations the covered wine and other alcoholic beverages, but applicant pointed out the none of the registrations included the specific goods identified in the cited registration. How do you think this came out? In re 8 Vini, Inc., Serial No. 85857391 (January 16, 2015) [not precedential].


Applicant urged that MASCARADE is a French word that translates into English as "farce," while MASQUERADE is an English word meaning, roughly, a party where people where masks. The Board, however, refused to apply the doctrine of foreign equivalents because the relevant consumers were not likely to translate MASCARADE, and also because its was not sufficiently clear that it the word would be translated as applicant contended.

Instead, the Board applied its "traditional" approach to consideration of the marks. It found that the marks have similar spellings, that the first portion of the marks sounds the same, that the meanings will be perceived as the same since consumers will see MASCARADE as a variant of MASQUERADE, and therefore that the marks are similar in overall commercial impression.

But what about the goods? The USPTO's evidence included 14 use-based registrations that included both wine and alcoholic beverages containing fruit, although none of the registrations included the specific goods of the cited registration. Applicant argued that "mixed beverages" or mixed drinks are beverages that are typically prepared by a bartender and sold on the premise: i.e., they are "mixed," and not just a combination of alcohol and fruit juice. The Board pointed out, however, that nothing in the cited registration required that the beverages be mixed by a bartender, nor did any record evidence support such an implication.

Several websites and a Wikipedia entry indicated that cocktails may be mixed with wine, and therefore the beverages of the registration, containing "alcohol and fruit juice," may include wine and fruit or fruit juice. And the Board noted that various alcoholic beverages have been found to be related for the purposes of the likelihood of confusion analysis. [E.g., beer and ale, tequila and malt liquor, beer and wine, scotch whiskey and gin and vodka, brandy and beer, cola flavored liqueur and brandy, fruit juice and wine].

Based on the nature of the goods, the third-party registrations and Internet evidence before us, we conclude that Applicant’s wines are related to Registrant’s mixed beverage containing alcohol and fruit juice, such goods being alcoholic beverages that may emanate, as shown by the evidence, from the same source and under the same mark. Further, the evidence shows that wine, as an alcoholic beverage, may be combined with fruit and/or fruit juice to make cocktails.

The Board presumed that the respective goods would travel in all normal channels of trade, including the same liquor stores, bars, or restaurants, to the same ordinary consumers.

The Board therefore concluded that confusion is likely, and it affirmed the refusal.

Read comments and post your comment here

TTABlog note: Well, do you agree with the Board? Are you convinced by the opinion?

Text Copyright John L. Welch 2015.

Tuesday, January 20, 2015

Recommended Reading: Sandra Edelman on Cancellation of Non-Use-Based Registrations Less Than 3-Years Old

In the latest issue of the Trademark Reporter, Sandra Edelman discusses the pros and cons of seeking cancellation of a Section 44(e) or 66(a) registration during the three-year period for a statutory presumption (of abandonment) has elapsed, in her article entitled "Why Wait Three Years? Cancellation of Lanham Act Section 44(e) and 66(a) Registrations Based on Non-Use Prior to the Three Year Statutory Period for Presumption of Abandonment."


Based on the statutory definition and the prima facie evidence of abandonment that arises when there has been proof of non-use of a mark for more than three years, it is undoubtedly easier for a party to prevail on a claim of abandonment when there has been more than three years of non-use. Absent evidence of three years of non-use, however, a party can still succeed on a claim of abandonment, but it will need to carry its burden of persuasion by a preponderance of direct and/or circumstantial evidence that the mark owner has ceased using the mark without an intent to resume use.

***

[T]here are viable bases for cancelling Section 44(e) and 66(a) registrations on the ground of abandonment prior to the third anniversary of registration. In addition, as the opinions in Honda v. Winkelmann and Sandro Andy demonstrate, Section 44(e) and 66(a) registrations, particularly those that cover an excessive identification of goods and services, may also be vulnerable to cancellation on the ground that there was a lack of bona fide intent to use the mark on each and every good or service covered by the registrations.

Read comments and post your comment here.

TTABlog note: Again I thank The Trademark Reporter for granting permission to provide links to these two commentaries, which are Copyright © 2014 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 106 TMR No. 6 (November-December 2014).

Text Copyright John L. Welch 2015.

Friday, January 16, 2015

Free ABA Webinar (Jan. 21): "Design Patent and Trade Dress Litigation: More than Meets the Eye"

The Trademark Litigation and the Patent Litigation Subcommittees of the IP Litigation Committee of the ABA Section of Litigation will host a FREE webinar entitled "Design Patent and Trade Dress Litigation: More than Meets the Eye." Date and time: Wednesday, January 21st from 1pm to 2pm (EST). ABA membership is not required. Details below. Register here.


Design Patent and Trade Dress Litigation:
More than Meets the Eye

Description: From the design houses of New York City, to the storied industrial design firms of Chicago, to the cutting-edge think tanks of Silicon Valley, the desire for effective and enforceable design protection is at an all-time high. Simply put, looks matter. Recently released statistics show that applicants are securing U.S. design patents at record rates. With more design patents issued, there also has been a marked uptick in design patent litigation filings. While design patents share much in common with utility patents and trade dress, they have significant and distinct differences from those rights, which if not understood, can present unique traps for the unwary when it comes to litigation. In this CLE, leading Design IP attorney Christopher V. Carani will discuss design patent-specific litigation issues, including best practices for asserting, and defending against, claims of design patent infringement, the design patent infringement standard, design patent claim construction, the ins and outs of design patent drawings, design patent defenses of prosecution history estoppel, anticipation, obviousness, indefiniteness. Along the way, Mr. Carani also will offer insights and strategies for cases involving both trade dress and design patent infringement claims.

Speaker: Christopher V. Carani is a partner at the Chicago-based intellectual property law firm of McAndrews, Held & Malloy, Ltd. For over 15 years, Chris has been a leading voice in the field of Design IP, which regards the intersection of design rights, trade dress and copyright law. Chris counsels clients on strategic design enforcement and protection issues; he is often called upon to render infringement, validity and design-around opinions and serve as a legal consultant/expert in Design IP cases.
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CAFC Reverses TTAB: NEWBRIDGE HOME Not Geographically Descriptive of Cutlery

The CAFC reversed the TTAB's decision [TTABlogged here] upholding a Section 2(e)(2) refusal to register the mark NEWBRIDGE HOME for "silverware, jewelry, and kitchen goods" [HOME disclaimed]. After a lengthy discussion of the history and development of refusals to register geographical names, the court ruled that the USPTO had failed to satisfy the first prong of the applicable test: that the place named by the mark be generally known to the relevant consuming public. In re The Newbridge Cutlery Co., Appeal No. 2013-1535 (Fed. Cir. January 15, 2015) [precedential].


In order to refuse registration on the ground that a mark is primarily geographically descriptive, the USPTO must show (1) that the mark is the name of a place that is generally known to the public, (2) that the public would make a goods/place association in that it would believe that the involved goods originate in that place, and (3) that the involved goods come from that place. Here, the USPTO failed to meet the first requirement.

The TTAB concluded that Newbridge is a place generally known to the public because (1) it is the largest town in County Kildare and the seventeenth largest in the Republic of Ireland; (2) it is listed in the Columbia Gazetteer of the World; and (3) a number of websites describe Newbridge as a "large commercial town" with a "silverware visitor centre," as well as museums, gardens, historical battle sites, and a famous horse racing track.

The CAFC ruled that "[t]he conclusion that Newbridge, Ireland, a town of less than twenty thousand people, is a place known generally to the relevant American public is not supported by substantial evidence." The fact that Newbridge is the second largest town in its county and the seventeenth largest in Ireland reveals nothing about the perception of the American consumer, nor was there any evidence that the consumer would be familiar with the locations listed in the gazetteer. Similarly, listings on websites mean little because the Internet contains enormous amounts of information, and there was no evidence that the American consumer "would have any meaningful knowledge of all of the locations mentioned in the websites cited by the PTO."

Moreover a place is not necessarily "generally known" because the purchaser is informed that the mark is the name of the place. [E.g., AYINGER BIER for beer, even though the label showed the brewery to be located in the obscure location of Aying, Germany]. And the fact that "Newbridge" has other meanings, some geographical, also makes it less likely that Newbridge, Ireland is generally known as the name of a place.

The CAFC concluded that the evidence as a whole suggested that Newbridge, Ireland is not generally known. Therefore the first prong of the Section 2(e) test was not met. The court found it unnecessary to address the issue of goods/place association.

Read comments and post your comments here.

TTABlog note: Given its lack of investigatory resources, what proof could the USPTO have mustered to establish that Newbridge is a generally known place in this country?

Text Copyright John L. Welch 2015.

Thursday, January 15, 2015

TTAB Test: Which of these Three Mere Descriptiveness Refusals Did the TTAB Reverse?

Here are three recent appeals from mere descriptiveness refusals under Section 2(e)(1). One of them was reversed. Let's see how you do with them. [Answer in first comment].


In re Injex Pharma AG, Serial No. 79119172 (December 22, 2014) [not precedential]. [Mere descriptiveness refusal of INJEX for a needle-free injection system.]



In re Whole Foods Market IP, L.P., Serial No. 85820807 (January 6, 2015) [not precedential]. [Refusal of COLLECTIVE CHEESE for, inter alia, cheese, dips, and spreads.]


In re Hollywood Stock Exchange, LLC, Serial No. 85775831 (January 9, 2015) [not precedential]. [Refusal of BOLLYWOOD STOCK EXCHANGE for, inter alia, providing an online prediction market game for trading virtual entertainment securities.]


Read comments and post your comment here

Text Copyright John L. Welch 2015.

Wednesday, January 14, 2015

TTAB Issued 45 Precedential Opinions in 2014

In calendar year 2014, the Board issued 45 precedential opinions - the same number as last year. [Note that the USPTO operates on a fiscal year that ends on September 30, and so its annual count of precedential opinions is likely different].  The REDSKINS and FLANAX decisions are currently the subject of district court actions for review under Section 1071(b). The appeals regarding the decisions in THE SLANTS and in the PRETZEL CRISPS cases were argued earlier this month at the CAFC.


Amanda Blackhorse

Section 2(a) - Immoral or Scandalous:
Section 2(a) - Disparagement:
Section 2(c) - Consent of Living Individual:
Section 2(d) - Likelihood of Confusion:


Section 2(e)(1)) - Mere Descriptiveness:

Section 2(e)(2) - Primarily Geographically Descriptive:
Section 2(f) - Acquired Distinctiveness:
Dilution:
Fraud:


Genericness:
Lack of Bona Fide Intent:
Identification of Goods:
Ownership:
Nonuse/Specimen of Use:
Cancellation Under Section 14(3):


Concurrent Use:
Discovery/Evidence/Procedure:

Text Copyright John L. Welch 2015.

Tuesday, January 13, 2015

TTAB Test: Are Beer and Wine Related for Section 2(d) Purposes?

The USPTO refused registration of the mark BLACKHAWK for wine, finding it likely to cause confusion with the registered mark BLACK HAWK STOUT for "malt beverages, namely, beer, ales, and stout" [STOUT disclaimed]. The marks are certainly similar, but what about the goods? Are they related? How do you think this came out? In re Sonoma Estate Vintners, LLC, Serial No. 85842056 (January 9, 2015) [not precedential].


Examining Attorney Raul Cordova submitted 15 third-party use-based registrations covering both beer and wine. Applicant asserted, however, that only three of the 15 third-party marks were actually in use for both beer and wine because only three had been issued a Certificate of Label Approval (COLA) for both beer and wine in the past five years. [As to ten of the marks, no COLAS were issued, while as to the remaining two, a COLAs were issued for beer but not for wine]. Thus, according to applicant, in only three of the 15 cases were both beer and wine legally sold under the pertinent cited mark.

The Board, however, concluded that this evidence did not completely rebut the examining attorney's third-party registration evidence. The Board noted that applicant did not submit any evidence as to whether the registrants were using the marks in the registrations. [Does the Board expect applicant to prove the negative? That the marks are not in use? - ed.].

The certificates of registration are prima facie evidence of the validity of the registered marks, the registrants’ ownership of the marks, and of the owners’ exclusive right to use the marks in commerce. Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b). It is possible that the registrants are using the marks for beer and wine and there is some reason or explanation that Applicant did not find their COLA applications.

The Board observed that applicant could also argue that any use of their marks by the 12 registrants who did not obtain COLA certificates was unlawful. However, in order to prove unlawful use, applicant would have to show either a per se violation of a statute regulating the sale of the goods, or a court or agency determination of illegality. Here there was no evidence of any final determination of illegality. As to the issue of per se violation, applicant showed only that it could not find COLA applications. It is therefore not clear that there has been a violation of the regulations, and there is no opportunity for registrants to be heard in this context. [Nor was there evidence that selling wine without a COLA certificate would invalidate a registration, or would merely be a collateral defect that could be rectified].

Moreover the Board noted that although the examining attorney submitted only 15 third-party registrations, there could be more, since there is no requirement that the examining attorney submit all the evidence that supports his position. Indeed, the Board would be "very critical if the examining attorney were to submit an inordinate number of registrations."


The examining attorney also submitted excerpts from nine third-party websites showing use of the same mark for both beer and wine.

Applicant provided 11 sets of "the same or similar marks" registered to different entities for beer and wine (or other alcoholic beverages) in an attempt to rebut the USPTO's evidence. The Board was not impressed, noting that it has previously held such evidence to be relevant but unconvincing. For one thing, the owner of any one of the marks may have obtained another registration for the other goods.

The Board found the evidence of third-party registrations and websites to be sufficient to demonstrate the relatedness of beer and wine, and it therefore affirmed the refusal.

Read comments and post your comment here

TTABlog note: Do you think that the Board leaned a bit too far in the examining attorney's direction in its consideration of the evidence? As I've said before, there is no per se rule that beer and wine are related, but it doesn't take much evidence to convince the Board that they are.

Text Copyright John L. Welch 2015.