Wednesday, November 25, 2015

TTAB Test: Which One of These Three Section 2(d) Refusals Was Reversed?

Because tomorrow is a holiday [Thanksgiving], dear reader, we will have a shortened TTAB Test. Only three cases this time. One of these three Section 2(d) refusals was reversed. Your mission, if you choose to accept it, is to figure out which one. [The answer will be found in the first comment].

In re Colorbar Cosmetics Private Limited, Serial No. 86323815 (November 20, 2015) [not precedential]. [Section 2(d) refusal of COLORBAR USA for a wide range of cosmetics [USA disclaimed], such as bath oils, beauty creams, and nail polish (but not goods that are specifically for hair care), in view of the registered marks THE COLOR BAR for "Hairdressing services and counseling namely, offering advise [sic] regarding hair color in salons" and CB COLORBAR THE SALON (Stylized), shown below, for "Beauty salon services; Beauty salons; Hair color salon services; Hair salon services; Hair salon services, namely, hair cutting, styling, coloring, and hair extension services."

In re Malkon, Serial No. 86572090 (November 20, 2015) [not precedential]. [Section 2(d) refusal of BAGWAGZZZ for "Beds for household pets; Portable beds for pets," in view of the registered mark THE WAG BAG for "portable pet beds" [BAG disclaimed]].

In re White Birch Vineyards, LLC, Serial No. 86218002 (November 4, 2015) [not precedential]. [Section 2(d) refusal of WHITE BIRCH for wine in view of the identical mark WHITE BIRCH registered for vodka [BIRCH disclaimed].

Read comments and post your comment here.

TTABlog comment: Well, how did you do?

Text Copyright John L. Welch 2015.

Tuesday, November 24, 2015

Applying B&B Hardware, District Court Gives Preclusive Effect to TTAB Priority Finding

Applying collateral estoppel (i.e., issue preclusion) based on a prior TTAB decision [TTABlogged here], the United States District Court for the District of Maryland granted Defendant PNC's motion to dismiss Plaintiff's Ashe's complaint for trademark infringement. The Board had granted PNC's motion for summary judgment in an opposition brought by Ashe against PNC's application to register the mark SPENDOLOGY for an online financial management tool, ruling that PNC and not Ashe had priority of use. The district court applied the Supreme Court's holding in B&B Hardware v. Hargis that "a court should give preclusive effect to [Trademark Board] decisions if the ordinary elements of issue preclusion are met." Ashe v. PNC Financial Services Group, Inc., Case No.: PWG-15-144 (D. Md. November 17, 2015).

The district court found that the determination of priority of use by the TTAB in an opposition is the same as the determination of priority of use for purposes of an infringement claim. Furthermore, that issue was resolved in the TTAB proceeding, the issue was critical and necessary to the TTAB's judgment, the judgment was final, and Ash has a full and fair opportunity to litigate the issue before the Board. Thus all five requirements for issue preclusion were met.

Because priority is a necessary element of Ashe's infringement claim, the Board granted PNC's motion to dismiss.

Read comments and post your comment here.

TTABlog comment: Ownership is another issue that seems to be ripe for the application of issue preclusion. So even if issue preclusion is unlikely to result from a TTAB ruling on the issues of likelihood of confusion because the Board does not consider "marketplace usage," one should be aware that the Board's determination of ownership and priority may well have preclusive effect. Consequently, a party should be give those issues its full attention and maximum effort.

Text Copyright John L. Welch 2015.

Monday, November 23, 2015

SUGARLANDS DISTILLING COMPANY Not Geographically Descriptive of Moonshine, But Confusable with SUGARLAND CELLARS for Wine

The Board reversed a Section 2(e)(2) refusal of the mark SUGARLANDS DISTILLING COMPANY, ruling that the USPTO failed to prove the mark to be primarily geographically descriptive of "craft moonshine beverages" [DISTILLING COMPANY disclaimed]. But the Board affirmed a Section 2(d) refusal in view of the registered mark SUGARLAND CELLARS for wine [CELLARS disclaimed]. In re Sugarlands Distilling Company, LLC, Serial No. 85818277 (November 20, 2015) [not precedential].

Section 2(e)(2): To support a refusal under this section, the USPTO must first show that "the mark's primary significance is a generally known geographic location." The Examining Attorney contended that Sugarlands is a valley in the north-central Great Smoky Mountains, the location of a national park that features the "Sugarlands Visitor Center." Relying on a single Wikipedia entry (here), the Examining Attorney asserted that "the geographic location SUGARLANDS, while remote and obscure enough to conduct moonshining during the turn of the century, is not a location that is now so remote and obscure that consumers wouldn’t recognize it as a geographic location."

The Board was not impressed by the record evidence. "While the Wikipedia excerpt has probative value, without other evidence to support the proposition that consumers have been exposed to this term and are aware of its geographic significance, we cannot find that it is a generally known geographic location." The Board distinguished this case from In re New Merced, 85 USPQ2d 1614 TTAB 2007) [YOSEMITE BEER], where entries from multiple websites and reference works established that "Yosemite" is a well-known geographic region that is clearly not obscure or remote.

Section 2(d): The Board found that Applicant’s "craft moonshine beverages" are sufficiently related to Registrant’s "wine," that when sold under a "very similar mark," confusion is likely. The Board noted that "moonshine is defined as "smuggled or illicitly distilled liquor, especially corn liquor as illicitly distilled chiefly in rural areas of the southern U.S." and "intoxicating liquor; esp: illegally distilled corn whiskey." The Board presumed that applicant's goods are neither smuggled nor illicit, and it interpreted the identification of goods to mean "whiskey, including corn whiskey that is made from 80 percent corn mash."

The Board pointed out that there is no per se rule that all alcoholic beverages are related, but it noted that the CAFC and the Board "have repeatedly held various alcoholic beverages, including whiskey and wine to be related." The record contained evidence that several wineries also distill and sell various spirits, including whiskey.

The Internet evidence shows that there are a number of combination wineries and distilleries, and/or companies that produce both wine and spirits, including whiskey, and that these companies are located throughout the country, including New York, Iowa, Massachusetts and California. This evidence is sufficient for us to find that the goods are related.

Moreover the presumed trade channels for the involved goods overlap: liquor stores, bars and restaurants, and the alcoholic beverages sections of retail outlets, as well as onsite wineries/distilleries. Furthermore, the goods would be offered to the same general consumers.

As to the mark, the words SUGARLANDS and SUGARLAND dominate, since the additional wording in each mark is descriptive and has been disclaimed.

Applicant argued that confusion is impossible because the involved goods "cannot even be lawfully sold to the general public under the same roof" and "they are branded under distinguishable marks that explicitly say the products come from fundamentally different types of enterprises." There was no evidence,  however, to support the first point, and in any case the presumed channels of trade include liquor stores. As to the second point, the evidence included examples of wineries "being referenced as producers of distilled spirits or include in their name both words winery and distillery."

Finally, the Board found that the evidence did not show the term SUGARLANDS to be a weak formative. " While it is possible there may be some consumers in the United States that have heard of the SUGARLANDS and its connection with "moonshine," it could still be connected by
those consumers with Registrant’s mark SUGARLAND also located in Tennessee.

And so the Board affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: Compare the record evidence here regarding the relatedness of whiskey and wine with the evidence in the REUBEN'S BREWS case (here), including evidence that there are more than 10,5000 wineries and breweries in the United States, only a few of which produce both beer and wine at the same location, leading that Applicant to argue that the overlap was statistically insignificant.

Text Copyright John L. Welch 2015.

Friday, November 20, 2015

WYHA? TTAB Finds "THE KITCHEN" Confusable with "DA KITCHEN" for Restaurant Services

The USPTO refused to register the mark THE KITCHEN for restaurant services, finding it likely to cause confusion with the registered mark DA KITCHEN for "restaurant services; carry out restaurant services; catering services" [KITCHEN disclaimed]. Examining Attorney John S. Miranda maintained that "DA" is understood as a slang term for “the," and with the goods being in part identical, end of story. Would you have appealed? In re The Kitchen Cafe, LLC, Serial No. 85969508 (November 17, 2015) [not precedential].

Applicant argued that 1) “DA” has other meanings; 2) "DA only means "the" if translated from Hawaiian pidgin or Hawaiian slang, which is not subject to the doctrine of foreign equivalents; 3) in any event, the term "DA" changes the overall commercial impression of the mark; 4) there is no evidence that consumers are likely to pronounce the marks identically; 5) the correct analysis is to compare KITCHEN (without “THE”) and DA KITCHEN; and 6) Registrant has acknowledged that the cited mark is entitled to a narrow scope of protection, and that the mark in the cited registration would not be confused with the term "THE KITCHEN."

The Examining Attorney submitted numerous examples of use of the term "Da" instead of "The," including several references to the Chicago Bears as "Da Bears." In fact Chicagoans seem to have particularly embraced the word "Da."

How to Fake a Chicago Accent: Emphasize “D” sounds at the start of words and replace “th-“ sounds with “D”s. For example, “I was supposed to see the Bears play but I got stuck in traffic on the Dan Ryan” becomes: “I was supposed to see da Bears play but I got stuck in traffic on da Dan Ryan.” If talking fast try to blend in the “th” with a “d” sound. April 24, 2015 Denial of Request for Reconsideration, at 57-58;

The Board concluded that the mark DA KITCHEN "gives the clear commercial impression of 'the kitchen.' It also has a very similar sound to the common pronunciation of 'the,' with a soft 'e.'"

While true that the registrant had argued that DA KITCHEN is not confusable with THE KITCHEN when it obtained its registration, that registration for THE KITCHEN had been abandoned at the time, and therefore this old argument merely adds "shade and tone" to the total picture here.

Finally, applicant argued that the cited mark is weak, pointing to registrant's disclaimer of KITCHEN, as well as to sixteen third-party registrations for marks with the word KITCHEN disclaimed. In addition, applicant seeks registration under Section 2(f), thereby acknowledging descriptiveness. However, there was no evidence of commercial weakness of the cited mark. Moreover, applicant's mark THE KITCHEN is more similar to DA KITCHEN than to any of the cited third-party marks.

The Board therefore found that the similarities in meaning and commercial impression in the involved marks outweigh the differences in sight and sound, and it held that confusion is likely.

Read comments and post your comment here.

TTABlog comment: If only Chicagoans are likely to be confused by these two marks (and maybe a few Hawaiians), would that be enough for a Section 2(d) bar? BTW, how do you blend the "th" sound with the "d" sound?

Text Copyright John L. Welch 2015.

Thursday, November 19, 2015

WYHA? TTAB Finds "SOL-R" Merely Descriptive of Solar Panel Brackets

The USPTO issued a Section 2(e)(1) refusal of the mark SOL-R, finding it to be merely descriptive of constructions materials, including "metal cantilevered brackets for solar panels" and "roofing incorporation solar cells." Examining Attorney Rebecca A. Smith perceptively maintained that SOL-R is a novel spelling of SOLAR. Applicant SFS contended that consumers viewing the mark alone would not immediately know that the goods are used with solar panel installations. Would you have appealed? In re SFS Intec Holding AG, Serial No. 79109409 (November 16, 2015) [not precedential].

As we all know, the determination of mere descriptiveness is not a guessing game. [This argument is high on the top ten list of losing TTAB arguments - ed.]. A mark must be considered in the context of the goods at issue. Here, applicant's goods specifically refer to solar installations and panels.

Applicant also argued that SOL-R does not, by itself, convey the word "solar," and even if "SOL-R indicates some relationship to 'solar' or even the sun, there is nothing about the mark or the identification of goods that definitely indicates the products' function, characteristics, or use with specificity." The Board noted that applicant's use of the term "solar" through its identification of goods belied that contention.

The Board found that SOL-R is an alternative spelling of "solar" and would be perceived as such. A slight misspelling of a merely descriptive word generally does not transform the word into an inherently distinctive trademark. As the Supreme Court has noted, "[b]ad orthography has not yet become so rare or so easily detected as to make a word the arbitrary sign or something else than its conventional meaning."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2015.

Wednesday, November 18, 2015

Fame of TEMPUR-PEDIC Design Mark Yields Cancellation of BODIPEDIC & Design for Mattresses

The Board granted a petition for cancellation of a registration for the mark BODIPEDIC & Design for "mattress toppers, pillows, mattresses," finding a likelihood of confusion with the mark TEMPUR-PEDIC & Design for mattresses, pillows, and mattress toppers.  Petitioner's "impressive" sales and advertising figures led the Board to find the TEMPUR-PEDIC mark to be famous. Moreover, the goods are in part identical, the channels overlap, and actual confusion was established. Dan Foam ApS v. Innocor, Inc. , Cancellation No. 92054201 (November 13, 2015) [not precedential].

Petitioner got out of the wrong side of the bed when it failed to get its registration into the record. Nonetheless, it proved priority of use of its mark, and furthermore proved that its mark is famous for Section 2(d) purposes. Of course, famous marks are entitled to broad protection.

The goods are, in part, identical and are sold in overlapping trade channels to the same ordinary consumers. These consumers include purchasers who would exercise only ordinary care. And in any case, even sophisticated consumers are not immune to trademark confusion.

As to the marks, the evidence showed that nearly 50 companies use the formative "-pedic" in connection with mattresses, pillows, and related goods, which evidence "strongly suggests that many competitors in the mattress business use the '-pedic' suffix to imply that their products are "orthopedic," that is, beneficial in preventing and correcting aches and pains associated with bones, joints and muscles such that sleeping on the branded mattresses may avoid or alleviate bodily pain." In sum, the Board found the "-pedic" suffix to be weak.

However, evidence of third-party registration and use did not persuade the Board that a "reclining figure" is likewise "so weak that purchasers will tend to discount it and look to other features when considering the overall commercial impact of Petitioner's mark." Although reclining figures are suggestive of bedding products, none submitted by respondent were drawn with the detail of petitioner's mark and only two were "formatted like Petitioner’s mark, that is, with a recognizable reclining human figure drawn so as to appear to be laying on its side on top of a mattress."

The Board noted that the marks must be considered in their entireties; moreover, when the involved goods are identical a lesser degree of similarity in the marks is necessary to support a finding of likely confusion. It concluded that the marks are more similar than dissimilar.

Here, the word element of each mark is four syllables long, ending in “-pedic.” We have already noted that the suffix is weak, but it lends a similar visual and aural characteristic to each mark, and is emphasized (by bold style lettering) in Respondent’s mark, enhancing the likelihood that consumers will recollect it. The cadence of each mark, when spoken, will be the same. The designs of each mark are also similar. Both figures appear to be unclothed, and are lying on their side on top of the word portion of the mark as if the words were a mattress. Petitioner’s figure is clearly feminine and Respondent’s figure suggests feminine curves rather than masculine ones.

Respondent pointed to its ownership of a registration for the mark BODIPEDIC, invoking the Morehouse defense, and it also noted that the word marks TEMPUR-PEDIC and BODIPEDIC have co-existed on the Principal Register for more than five years. The Board pointed out, however, that the registered mark BODIPEDIC is not legally the same as the design mark challenged here, and so the Morehouse defense failed once again. As to the word mark registrations, even if the subject composite marks are dominated by the word portions, that does not mean that the entire word + design marks are not confusingly similar.

Finally, the Board found petitioner's evidence of actual confusion to be highly probative, even though it was not clear that many of the confused customers were referring to the word marks as opposed to the design marks.

Balancing the relevant du Pont factors, the Board found confusion likely and it granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: I think this one could have gone either way.

Text Copyright John L. Welch 2015.

Tuesday, November 17, 2015

WYHA? "CALIBURGER" Merely Descriptive of Restaurant Services, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark CALIBURGER, deeming it merely descriptive of restaurant services. Examining Attorney Jennifer D. Richardson submitted evidence showing that CALI is a common abbreviation for California, that a "California burger" is a particular type of hamburger (usually topped with lettuce and tomato), and that applicant's restaurants feature California burgers. Would you have appealed? In re Caliburger, Serial No. 85810919 (November 12, 2015) [not precedential].

Applicant did not dispute that “Cali” means California, or that a “California-style burger” is a type of burger. It contended, however, that the preferred term used by restaurants is “California-style burger” and not “California burger,"' and anyway “Cali” is not commonly known as “California” in connection with a type of burger. Additionally, Applicant argued that its CALIBURGER burgers are not featured food items at its restaurants and that the term “Cali” in its mark suggests a “California lifestyle” and not a California-style burger.

The Board did not award applicant any style points for that last argument. It observed that in some contexts, "Cali" may bring to mind a California life style, but here Cali is followed by the word burger. "In the context of restaurants selling California burgers, the mark as a whole will
immediately be perceived as an abbreviation for a 'California burger,' and will not impart the connotation of a 'California lifestyle.'"

Moreover, the evidence showed that applicant does indeed feature California burgers at its restaurants. Finally, evidence of prior registration of a few "CALI"-formative marks was unpersuasive, the Board once again observing that each case must be decided on its own factual record.

Finding that CALIBURGER immediately informs the consumer as to a characteristic or feature of applicant's services, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have appealed? FWIW: I grew up in Chicago and Champaign-Urbana, where I learned to love Illiburgers: featuring ketchup, mustard, and raw onion.

Text Copyright John L. Welch 2015.

Monday, November 16, 2015

TTAB Test: Is "LEFT NUT BREWING COMPANY" Scandalous for Beer?

Here we go again! The USPTO refused registration of the mark LEFT NUT BREWING COMPANY for "beers" [BREWING COMPANY disclaimed], finding the mark to be scandalous and immoral under Section 2(a). The Examining Attorney maintained that "left nut" is a vulgar reference to the left testicle. Applicant contended that the term has a number of non-vulgar meanings, that similar marks have previously been registered, and that such anatomical references are not per se vulgar. How do you think this came out? In re Left Nut Brewing Company, Inc., Serial No. 85935569 (November 13, 2015) [not precedential].

Because of the disclaimer of the term BREWING COMPANY, the Board focused on applicant's LEFT NUT. The Examining Attorney submitted definitions of "nut," including several that labeled the word "vulgar' when used to refer to a testicle. Because the term "left nut" does not appear in standard dictionaries, she submitted several definitions from the Urban Dictionary, including this familiar one: "a part of one’s anatomy that one would sacrifice to experience something exceptional." And the examining attorney ferreted out a number of Internet articles that use the term to refer to the left testicle.

The Board observed that evidence from both the Examining Attorney and Applicant shows that "'left nut' has several different meanings and is not always vulgar, even when sometimes referring to a testicle."

The Urban Dictionary definition of “left nut” submitted by the Examining Attorney shows that the term has a number of meanings. “Left nut” can, of course, refer to the left testicle. It also can be a figure of speech used to describe the lengths to which someone might go to attain something of great value. It can refer to a passenger’s position in an automobile, i.e., behind the driver. And it can refer to a member of the “political left” or a “left wing screwball.” Only the first of these meanings is arguably vulgar and, therefore, immoral or scandalous under Section 2(a).

Similarly, the Internet excerpts submitted by the Examining Attorney present a mixed picture of the vulgarity of the term “left nut.” In one excerpt, former U.S. Senator Alan Simpson tells a reporter to “Grab Your Left Nut For Luck.” In four of the excerpts, the term is used as a figure of speech for something of great value. In two excerpts, the term “left nut” is used in a strictly anatomical or medical sense to refer to the left testicle. In only three of the excerpts, the article, the lyrics by Eminem, and the card, is the term used in what could be considered a primarily vulgar form.

The Board also noted four existing registrations for marks the include the word "nuts" to show that anatomical references are not per se vulgar under Section 2(a).

In view of the the mixed record of vulgar and non-vulgar meanings [mixed nuts? - ed.], the Board ruled that the evidence failed to establish that LEFT NUT is vulgar. LEFT NUT has even been use "by senators and web-authors with no evidence of offense or disapproval" and the PTO has registered similarly-suggestive "nut" marks.

The Board therefore found that LEFT NUT in applicant's mark LEFT NUT BREWING COMPANY is not vulgar and thus not immoral or scandalous under Section 2(a) And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: In view of this decision and the NUT SACK DOUBLE BROWN ALE ruling of two weeks ago, are we about to see a flood of applications for anatomically-related marks for beverages? Let's hope not.

Text Copyright John L. Welch 2015.

Friday, November 13, 2015

TTAB Test: Is PREGNANCY TEXT Merely Descriptive of Simulated Pregnancy Messages?

The USPTO issued a Section 2(e)(1) refusal of the mark PREGNANCY TEXT, finding it to be merely descriptive of "Education and entertainment services, namely, providing audio, video, and prose presentations featuring a simulated pregnancy experience in mobile wireless form in both SMS and MMS formats." The Examining Attorney maintained that the mark immediately informs consumers that applicant sends text messages regarding pregnancy. Applicant argued it mark comprises a double entendre or pun (think "pregnancy test"), and that its services provide "simulated pregnancy experience" in mobile form, that show teens that "becoming parents can change their lives." [Tell me about it - ed.]. How do you think this came out? In re Do Something!, Inc., Serial No. 85696594 (October 29, 2015) [not precedential].

Applicant pointed out that its services are not a "pregnancy test" since they do not determine if anyone is pregnant. It contended that consumers will readily associate PREGNANCY TEXT with the extremely common expression "pregnancy test," and the latter term is at most suggestive of its services. In short, according to applicant, PREGNANCY TEXT "creates an incongruous twist of the actual meaning of 'Pregnancy Test.'"

The Board, however, agreed with Examining Attorney Shaila Lewis that there is no double entendre here because the terms "Pregnancy Text" and "Pregnancy Test" are distinct phrases that have entirely different meanings. "To be a double entendre, the actual words in the mark PREGNANCY TEXT should have an alternate meaning and ... that meaning must be readily apparent to purchasers from the mark itself." Here, PREGNANCY TEXT "means exactly what it says, namely, a text message about pregnancy-related matters, including new born babies."

Applicant pointed out that its services concern "phone babies," not real babies. The Board grasped the difference, but pointed out that both simulated pregnancy and real pregnancy "deal with the subject of 'pregnancy' and are therefore appropriately describe by the word 'pregnancy' in the term PREGNANCY TEXT."

In sum, customers would understand that PREGNANCY TEXT describes the purpose and/or a feature of the services, namely, "that text messages are sent that relate to the subject of pregnancy."

The Board therefore affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, what do you think?

Note the Board's discussion of applicant's citation to a non-precedential TTAB decision. You can do it, but it is not encouraged. Non-precedential decisions are obviously not binding on the Board and the Board will generally not discuss them. [Too many such citations may just annoy the Board, which is something you want to avoid].

Text Copyright John L. Welch 2015.

Thursday, November 12, 2015

Recommended Reading: John L. Brennan, "Determining Trademark Standing in the Wake of Lexmark"

John L. Brennan, J.D. candidate at Notre Dame Law School, reviews the Supreme Court's Lexmark decision and considers whether that ruling extends to trademark infringement cases, in his article, "Determining Trademark Standing in the Wake of Lexmark," 90 Notre Dame L. Rev. 1691 (2014).

Although the Court’s decision in Lexmark has resolved the debate over the issue of  standing for false advertising claims, it remains unclear whether the Court’s holding also extends to trademark infringement suits brought under section 43(a). The Court did not explicitly address this question in its opinion, and district courts thus far have differed in their interpretations of the decision’s scope. This Note addresses that ambiguity and aims to resolve it.
* * *

It is not difficult to understand that modern trademark law must change. The myriad available stories of attenuated yet successful theories of harm, along with the insightful criticisms offered by scholars, depict an area of law that has expanded far beyond its proper reach. Lexmark provides an opportunity for courts to institute meaningful change in trademark law. Its strict standing requirement, including the necessary showing of proximate cause, enables courts to seriously narrow the scope of trademark protection.

Read comments and post your comment here.

Text Copyright John L. Welch 2015.