Friday, October 17, 2014

TTAB Finds ARCATA Not Primarily Geographically Deceptively Misdescriptive of Wine

The Board reversed a Section 2(e)(3) refusal of ARCATA for wine, finding the mark not primarily geographically deceptively midescriptive of the goods. The evidence established that Arcata is a city in California that is neither obscure nor remote, and is the locus of several wineries. The question was whether "a consumer's misimpression that Applicant's goods originate in Arcata would be a material factor in his or her decision to purchase the goods." In re D’Andrea Family Limited Partnership, Serial No. 85834204 (October 15, 2014) [not precedential].

A mark is primarily geographically deceptively misdescriptive if:

(1) the primary significance of the mark is a generally known geographic location;

(2) the consuming public is likely to believe the place identified indicates the origin of the goods, when in fact the goods do not come from that place; and

(3) the misrepresentation would be a material factor in a consumer's decision to purchase the goods.

Here, the key issue was the third one: materiality. In order to establish materiality, the USPTO must show that "a substantial portion of the relevant consumers would be materially influenced in the decision to purchase the product or service by the geographic meaning of the mark."

Reviewing relevant precedents, the Board considered whether the PTO has shown "that Arcata is 'noted for' wine; that wine is a 'principal product' of Arcata; that wine is a product 'traditionally originating' in Arcada; or that for, any other reason, a substantial portion of customers for wine would be materially influenced in the decision to purchase wine by a misrepresentation that the goods originate in Arcata."

Arcata is a city of 16,000 persons, located in Humboldt County in Northwestern California. It is a college town, the home of Humboldt State University. For many years, timber dominated the economy; today a cannabis economy employs many in the area.

The Examining Attorney contended that Humboldt County is known for its distinctive wine, and that the characteristics of Humboldt County wine would be attributed to wines from Arcata. The Board observed, however, that the evidence did not support the Examining Attorney's argument. Humboldt County is not known for its wine; at most it has one viticultural area where a few dozen wineries are struggling for recognition. The three wineries located in Arcata obtain their grapes from other places. Customers would therefore not be induced to purchase applicant's wine in the belief that it was made with grapes grown in Arcata.

The Board declined to decide whether the name "Humboldt" would induce consumers to purchase wine. But the fact that Arcata is located in Humboldt County "is insufficient to persuade us that the name ARCATA would induce customers to purchase wine."

Having carefully reviewed the record, we see no indication that Arcata is "noted for" wine, that wine is a "principal product" of Arcata, or that wine is a product that customers perceive as “traditionally originating” in Arcata. Arcata does not appear to be a suitable place for growing wine grapes. Although there are three wineries located in Arcata, they acknowledge to the market (or the marketplace takes note) that their wine is made from grapes that are grown elsewhere. Although Arcata is located in Humboldt County, a place with a developing viticultural industry, Arcata itself is known as a university town.

And so the Board reversed the refusal.

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TTABlog comment: For a through discussion of Section 2(e)(3), see Anne Gilson LaLonde's article entitle "You Are Not Going to Believe This! Deception, Misdescription and Materiality in Trademark Law," 102 TMR 883 (May-June 2012) [pdf here].

Text Copyright John L. Welch 2014.

Thursday, October 16, 2014

LA BOMBA and LA BAMBA Confusable for Cigars, Says TTAB

The Board affirmed a refusal to register the mark LA BOMBA, finding it likely to cause confusion with the registered mark LA BAMBA (Stylized), both for cigars. The Board took judicial notice of certain information from the Encyclopedia Britannica regarding "LA BAMBA" as the title of a Ritchie Valens song, but refused to do so with regarding to applicant's proffered entries from Wikipedia and from the Internet Movie Database (IMDb). In re Espinosa Cigars, LLC Serial No. 85772938 (October 3, 2014) [not precedential].

In its appeal brief, applicant asked the Board to take judicial notice of three references to the song "La Bamba," a traditional Mexican wedding song re-worked by Richie Valens into his "best remembered recording." As mentioned, the Board agreed to take judicial notice with regard to the Encyclopedia Brittanica entry. However, applicant did not establish that the IMDb is a standard reference worth or otherwise considered authoritative. As to the Wikipedia entry, that would have been acceptable had applicant offered it into the record at a time when the other party had an opportunity to rebut the evidence.

Ritchie Valens

Because the goods are identical, the Board presumed that they travel in the same, normal channels of trade to the same classes of consumers. Applicant argued that the relevant purchasers are "the most discriminating consumers" but offered no evidence to support that assertion. The Board observed that cigars "are not so expensive that we can assume consumers would necessarily exercise a higher level of care in purchasing."

The Board found the marks to be "extremely similar in sound and appearance." The stylization of the cited mark was of little significance, since the Board must assume that the applied-for mark could be depicted in the same stylization. As to pronunciation, there is no correct pronunciation of trademarks that are not easily recognizable English works. The two marks at issue would be verbalized in a similar manner.

Applicant maintained that the marks are distinguishable because of their different meanings. As translated from the Spanish. LA BOMBA means "the bomb." The Encyclopedia entry, as mentioned above, showed that LA BAMBA was a traditional Mexican wedding song that was popularized by Ritchie Valens decades ago. The Board was not impressed:

Although Spanish is commonly spoken language in the United States, this does not mean that cigar purchasers, or even a substantial composite of the consuming public, will understand the difference and distinguish the two marks based on their translated meanings. We keep in mind that the spellings of the two marks do not differ greatly and it is thus possible that a purchaser, who is unfamiliar with their Spanish meanings or who inadvertently does not notice the "O/A" letter difference, may mistakenly believe that Applicant’s mark is a reference to the Mexican folk song (or rock-and-roll song). Again, we must consider the possibility of word of mouth referrals such that, given the faint, if any, aural difference in the marks pronunciations, there may be confusion even if the connotations of the actual marks are different.

And so the Board affirmed the refusal.

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TTABlog comment: Rock on!

Text Copyright John L. Welch 2014.

Wednesday, October 15, 2014

Test Your TTAB Judge-Ability: Is KETOSIS ESSENTIALS Merely Descriptive of Nutritional Supplements?

The USPTO refused registration of the mark KETOSIS ESSENTIALS, deeming it merely descriptive of nutritional supplements [KETOSIS disclaimed], under Section 2(e)(1). The examining attorney asserted that the constituent words describe the goods, and that the combination adds no new meaning. Applicant pointed out that it owns ten existing registrations for marks containing the word ESSENTIALS for nutritional supplements. How do you think this came out? In re Healthy Directions, LLC, Serial No. 85485512 (September 23, 2014) [not precedential].

Ketosis is a condition characterized by an elevated concentration of ketone bodies in the body's tissues and fluids, and is often a complication of diabetes. Applicant, by its disclaimer, acknowledged that KETOSIS is descriptive of the goods.

The examining attorney provided dictionary definitions of "essential," as well as nine third-party registrations for ESSENTIALS-formative marks and one ESSENTIAL-FORMATIVE mark, either on the Supplemental Register or with a disclaimer of ESSENTIALS, all for supplements.

The Trademark Examining Attorney argues that inasmuch as Applicant is providing supplements that contain essential vitamins, minerals and/or other nutrients for individuals dealing with elevated ketone levels, or ketosis, no imagination is required to understand the nature of the goods, and hence, the mark is merely descriptive.

Applicant's ten registered marks included JOINT ESSENTIALS [JOINT disclaimed], CRANBERRY ESSENTIALS [CRANBERRY disclaimed], and CHOLESTEROL ESSENTIALS [CHOLESTEROL disclaimed]. It argued that its ten registrations were more probative than those cited by the examining attorney because its marks were in the same form as the applied-for mark.

The Board noted that one dictionary definition of "essential," in adjectival form, referred to a substance that is not synthesized by the body in a quantity sufficient for normal health and growth
(e.g., essential amino acids). But it observed that when the word "essential" is used as a plural noun and as the second component of KETOSIS ESSENTIALS, "the information conveyed is not so immediate."

The registrations made of record indicated that the USPTO has not been consistent in its treatment of the word "essentials" for vitamins and supplements. Having a "not insignificant level of residual doubt" regarding the descriptiveness of the applied-for mark, the Board resolved that doubt in favor of applicant, and it reversed the refusal to register.

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Text Copyright John L. Welch 2014.

Friday, October 10, 2014

TTAB Reverses Refusal of "ZOMBIE CINDERELLA" over "WALT DISNEY'S CINDERELLA & Design" for Dolls

The Board reversed a Section 2(d) refusal to register the mark ZOMBIE CINDERELLA for dolls, finding the mark not likely to cause confusion with the registered mark WALT DISNEY’S CINDERELLA & Design, shown below, also for dolls. Marketplace evidence of third-party "Cinderella" dolls, as well as the long history of the fairy tale, demonstrated that CINDERELLA is a weak formative. The Board concluded that the combination of ZOMBIE with CINDERELLA creates an incongruous impression that results in a significant difference between the marks. In re United Trademark Holdings, Inc., Serial No. 85706113 (October 9, 2014) [not precedential].

Judicial Notice: The examining attorney struck out twice in his requests that the Board take judicial notice of certain matters. First, as to several specimens of use submitted by applicant in other applications, the Board pointed out that it does not take judicial notice of USPTO records. Second, regarding the fame of "Walt Disney" and the Disney Company, the Board observed that, because fame is a dominant factor in the duPont analysis and must be clearly proven, it is "generally an unsuitable subject for judicial notice."

Cinderella's Weakness The story of Cinderella has been known to the public since at least 1697. The evidence showed that the Cinderella "is an established part of our cultural fabric and enjoys extremely widespread public recognition." Moreover, Aapplicant provided nine examples of dolls that depict the fairy tale character Cinderella. This evidence of marketplace use of CINDERELLA in connection with dolls further underscored the weakness of the term as a source identifier.

The record also shows, as we discuss further below, that this cultural figure has had an impact in the commercial field of dolls, and that many dolls that depict the character Cinderella have been offered in the market by unrelated businesses. We find that, for a doll that depicts the fairytale character Cinderella, the term "Cinderella" is, at a minimum, highly suggestive of the doll in that it names the fairytale character depicted. As such, it has limited power to function as a source indicator.

The Board concluded that the term CINDERELLA, as it appears in the cited mark, is entitled to a limited scope of protection.

Comparing the Marks: The examining attorney contended that the term ZOMBIE is not arbitrary with respect to dolls that depict zombies, but is descriptive thereof. Applicant, on the other hand, maintained that the combination of CINDERELLA and ZOMBIE has a "transformative effect":

Applicant’s mark juxtaposes the grotesqueness of a monster commonly portrayed in horror films with the beauty and innocence of a classic fairytale princess, giving it a unique and incongruous meaning and overall commercial impression. This odd combination of horror and fantasy creates a cognitive dissonance in the minds of consumers and results in a feeling of disequilibrium
The Board found that the designation WALT DISNEY’S is "inherently distinctive and its possessive form emphasizes the weakness of the term CINDERELLA, indicating it is Registrant’s version of the character as opposed to another’s version." Furthermore, the design element "may function, for juvenile customers, as a stronger source indicator than the term CINDERELLA, because it depicts a specific version of Cinderella that is associated with the Walt Disney animated film 'Cinderella.'"

The Board also found that  ZOMBIE and CINDERELLA each have little distinctiveness for dolls that depict zombies. But the Board agreed with applicant that "the combination of ZOMBIE with CINDERELLA creates a unitary mark with an incongruous impression."

Because of the differences in connotation and commercial impression, the Board found the marks not confusingly similar:

We are persuaded by Applicant’s contention that the mark ZOMBIE CINDERELLA creates a "cognitive dissonance," involving an uneasy mixture of innocence and horror. By contrast, the registered mark creates an impression of prettiness and goodness. Even if such marks were used on identical goods, these distinct commercial impressions would be distinguishable.

And so the Board reversed the refusal.

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TTABlog comment: Hat tip to fellow blogger Erik Pelton for this victory!

Text Copyright John L. Welch 2014.

Thursday, October 09, 2014

Test Your TTAB Judge-Ability: Is THE VINTNER GROUP Generic for a Wine Distributorship?

The USPTO refused registration on the Supplemental Register, of the designation THE VINTNER GROUP for "Import agency and wholesale distributorship featuring wine," on the ground of genericness. Is THE VINTNER GROUP a compound word (e.g., Gould's SCREENWIPE) or a phrase (American Fertility's AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE )? Does the relevant public include general consumers, or only winemakers and retailers? How do you think this came out? In re The Country Vintner, Serial No. 85567206 (October 8, 2014) [not precedential].

Both applicant and the examining attorney agreed that the genus of the services at issue is "wholesale distributorship featuring wine." Because "wholesale" refers to sale of goods to retailers, the Board agreed with applicant that sale of wine to the public is not included in the genus.

The Board found THE VINTNER GROUP to be a phrase rather than a compound word. "'Gould is limited, on its facts, language, and holding, to compound terms formed by the union of words.' In re American Fertility Society, 51USPQ2d at 1837. Here, there is no union of THE, VINTNER and/or GROUP into a compound term, nor is there a joinder (as described in American Fertility) of the 'most pertinent and individually generic terms applicable' to Applicant’s services.'"

Under American Fertility, dictionary definitions of the constituent words are not sufficient to establish genericness. The evidence must show that the relevant public refers to wholesale distributorship services featuring wine as THE VINTNER GROUP. The examining attorney bears the burden to prove genericness by a "strong" showing, with "clear evidence."

Dictionary definitions, third-party registrations, website evidence, and applicant’s own specimen of use established that THE VINTNER GROUP is merely descriptive of applicant’s services." It is also quite apt for wholesale distributorship services featuring wine," but aptness is not the test for genericness.

The evidence submitted by the examining attorney did not show use of the exact phrase THE VINTNER GROUP. Thirteen items showed "vintner group" in connection with association services, not distributorship services. The closest item,, was not used in this country. In fact, the only evidence of use THE VINTNER GROUP in the United States referred to applicant.

In sum, clear evidence of genericness was lacking. "'Much of the Examining Attorney’s evidence appears to illustrate little more than 'the thoroughness with which NEXIS [and the Internet] can regurgitate a [term] casually mentioned in the news.'"

The Board observed that this is a "close and difficult case," and it acknowledged that on a different record (e.g., in an inter partes proceeding) it might well reach a different conclusion. But on the current record, it reversed the refusal to register.

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Text Copyright John L. Welch 2014.

Wednesday, October 08, 2014

Test Your TTAB Judge-Ability: Is “L.A.M.B.” Deceptive for Clothing?

The USPTO refused to register the mark L.A.M.B. for “[c]lothing, namely, jackets, blazers, dresses, skirts, sweaters, jeans, scarves, tops, cardigans, camisoles, shorts, and bustiers; footwear; and headwear,” finding the mark deceptive for the goods under Section 2(a). Applicant indicated that its products are made of cotton or similar material, but contended that “consumers will and do perceive Applicant’s L.A.M.B. mark – with periods or 'dots' between the letters – as an acronym with the letters 'L', 'A', 'M', and 'B' representing 'LOVE', 'ANGEL', 'MUSIC' and 'BABY,' respectively," and that L.A.M.B. is a fashion line created by American singer Gwen Stefani. How do you think this came out? In re LAMB-GRS, LLC, Serial No. 77756492 (September 30, 2014) [not precedential].

The test for determining whether a mark is deceptive under Section 2(a) has been articulated in Budge as: (1) Is the term misdescriptive of the character, quality, function, composition or use of the goods? (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods? (3) If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase the goods?

Evidence of use and of recognition by consumers and the trade can be considered in analyzing the first and second prongs of the Budge test; that is, such evidence may be considered in determining whether the mark misdescribes the goods and whether prospective purchasers are likely to believe that the misdescription actually describes the goods.

The evidence showed that Gwen Stefani, is a well-known singer and fashion designer. In 2004, her first solo album, “LOVE ANGEL MUSIC BABY,” sold more than seven million copies worldwide. At that time, Ms. Stefani launched a clothing and accessory line under the “brand name” L.A.M.B., an acronym for the name of her album. Sales have exceeded $175 million and here clothing is sold at many major retailers. She has secured four registrations for the L.A.M.B. mark for clothing items “that are similar to those identified in the present application or are items that may be made from lambskin.”

Applicant submitted Wikipedia evidence, media references, retail store website pages concerning the L.A.M.B. mark, as well as third-party registrations for BLACK LAMB, LITTLE LAMB, SHEEP, and WILD PIGS for various clothing items.

The Board acknowledged that the commercial impression of a mark is generally not altered by the presence or absence of punctuation marks. However, “the record in this case shows that Applicant’s L.A.M.B. mark is perceived by relevant consumers and the trade as an acronym that is synonymous with the words “LOVE ANGEL MUSIC BABY.”

Of particular note, Applicant’s much visited website immediately informs a visitor that Applicant’s L.A.M.B. mark is derived from the words LOVE ANGEL MUSIC BABY and the renown of the L.A.M.B. mark, as reflected in the promotional activities, sales figures and unsolicited media coverage, reiterates that understanding. We also point out that the fabrics used in connection with Applicant’s obviously L.A.M.B. “branded” clothing items are discernable when viewing the items in a retail store setting or online.

The Board concluded that consumers will perceive L.A.M.B.” as a trademark and that the words it represents, LOVE ANGEL MUSIC BABY, are arbitrary with respect to Applicant’s identified clothing, headwear and footwear.

And so the Board reversed the refusal.

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TTABlog comment: I asked my wife if she ever heard of Stefani. She said no. I’ve never heard of her album or her clothing line. I suspect there are more Americans who are unaware of the acronym “L.A.M.B” than are familiar with it. So I have my doubts about this decision.

Note there is nothing in the identification of goods restricting them to clothing items sold by or in in connection with Gwen Stefani. Suppose she assigns the registration tomorrow to a clothing manufacturer who makes no reference to her or her album? Then is the mark deceptive?

Text Copyright John L. Welch 2014.

Tuesday, October 07, 2014

Precedential No. 41: Finding Fraud, TTAB Sustains Opposition to NATIONSTAR for Real Estate Brokerage Services

The Board sustained a fraud claim for the first time since the CAFC issued its 2009 decision in In re Bose, upholding an opposition to registration of the marks NATIONSTAR for "Real estate brokerage; rental of real estate; real estate management services, namely, management of commercial and residential properties; real estate investment; residential and commercial property and insurance brokerage; mortgage brokerage; and business finance procurement services." The Board found that Applicant Ahmad’s averments as to his use of the NATIONSTAR mark for the services identified in the application were fraudulent. Nationstar Mortgage LLC v. Mujahid Ahmad, Opposition No. 91177036 (September 30, 2014) [precedential].

Applicant Ahmad prepared and filed the use-based application himself on April 20, 2006. After the opposition was commenced, applicant filed a motion to amend the filing basis of his application to intent-to-use. In June 2008, the Board granted the motion to amend, but noted that "amending the filing basis of the opposed application to Section 1(b) does not protect the application from the fraud claim."

Fraud must be proven with clear and convincing evidence. A false statements made with a reasonable and honest belief of its truth is not fraud. There must be an "intent to mislead the USPTO into issuing a registration to which the applicant was not otherwise entitled."

The Board again pointed out that once an opposition has been filed, "fraud cannot be cured merely by amending the filing basis for those goods or services on which the mark was not used at the time of the signing of the use-based application." Moreover, the statement as to use of the mark for particular goods is "unquestionably material to registrability."

Applicant Ahmad testified that he chose the name in 2004-2005, after checking the Virginia corporate records and the USPTO databases. In April 2005, he registered several domain names containing the word "nationstar." In early April 2006, opposer Nationstar Mortgage contacted Ahmad, offering to buy two of the domain names. Within days, Ahmad filed the application at issue here.

Ahmad is a real estate agent in Virginia. He was not a real estate broker, insurance broker, or mortgage insurance broker, each of which require a state license, at the time of filing his application to register.

Ahmad's testimony regarding use of the mark NATIONSTAR as of his filing date was of grave concern to the Board, due to his "evasiveness and failure to respond directly to straightforward questions." For example, he could not identify which printed materials he created and which were created by others, he claimed not to know whether his business earned any income, and he dodged questions about filing tax returns. The Board found his testimony "so lacking in conviction and credibility as to be virtually incapable of corroboration." The documents that he provided were of "virtually no probative value" because he could not state who created them or when.

The Board observed that, as a real estate agent, Ahmad was well aware that legal documents must be carefully reviewed prior to signing. According to his testimony, Ahmad was well aware of the restrictions on real estate agents and he knew that separate licenses are required for brokers.

In short, the Board found Ahmad's testimony to be "not at all credible," and it concluded that Ahmad was not using the NATIONSTAR mark with any of the recited services prior to his filing date. At most he may have rendered real estate agency services prior to the filing date, as corroborated by two witnesses. Those services, however, were not listed in the application.

The Board next found that the false statements made by Ahmad were made knowingly and with an intent to deceive the USPTO. It noted that the law does not require "smoking gun" evidence of deceptive intent; direct evidence of deceptive intent is seldom available. Therefore, deceptive intent may be inferred from the surrounding facts and circumstances. Here, the surrounding facts and circumstances "provide clear and convincing evidence that applicant did not have a good faith reasonable basis for believing that he was using the NATIONSTAR mark in commerce for all the services identified in the application."

The Board distinguished this case from In re Bose, where it was not unreasonable for the corporate officer who signed the Section 8 declaration there at issue to believe that the mark was in use in interstate commerce. Here, there is no nuance of trademark law that applicant may have incorrectly interpreted. Instead it involves an applicant making false statements about his own industry and his own activities, knowing that he did not have the appropriate licenses.

The fact that Ahmad filed the subject application himself did not give him "a free pass to disregard the straightforward requirements of a use-based application and the solemnity of the application declaration that he signed subject to criminal penalties under 18 U.S.C. Section 1001."

The Board therefore sustained the opposition, declining to consider the additional grounds of likelihood of confusion and lack of bona fide intent.

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TTABlog note: What do we learn from this decision? How did Ahmad think he was going to avoid a fraud finding? It is good to see that there are indeed some serious consequences to filing a false declaration.

Text Copyright John L. Welch 2014.

Monday, October 06, 2014

Call For Papers: Sixth Annual INTA Trademark Scholarship Symposium

Call For Papers: Sixth Annual INTA Trademark Scholarship Symposium

The International Trademark Association (“INTA”) is pleased to host the Sixth Annual Trademark Scholarship Symposium during the 137th INTA Annual Meeting in San Diego, California. The Symposium will take place on Monday, May 4, 2015 as part of INTA’s Academic Day and is an opportunity for trademark scholars from around the world (including part-time and full-time professors, graduate and post-graduate students) to participate in small group discussions of scholarly works-in-progress. Each selected scholar will present their project in a workshop setting, receive comments, and engage in a dialogue with other academic scholars and accomplished trademark practitioners.

Please send an abstract (approximately 300 words) describing a current trademark or unfair competition scholarship project to project co-chairs Julie Cromer Young at and Jim Faier at by November 1, 2014. The project team will then select a maximum of 8 projects to be presented at the Symposium, grouped into related topics or themes. Selections will be announced by February 1, 2015. For each selected project, a working draft of the paper (10-20 pages) must be submitted by March 15, 2015. There is no publication obligation.

Participants will receive complimentary registration to the Academic Day program, including an all-professor panel exploring boundaries of trademark law, a trademark professor luncheon, a reception and other networking opportunities. Additional expenses are the speaker’s responsibility. For INTA membership and Annual Meeting registration information, please contact Nilsa Laboy at

Precedential No. 40: TTAB Finds "MC" Family Famous, Sustains Dilution Opposition to MCSWEET for Pickled Vegetables

In a 59-page opinion, the Board sustained McDonald Corporation's opposition to registration of the mark MCSWEET for pickled gourmet vegetables, finding the mark likely to cause confusion with, and likely to dilute, opposer's "MC" family of marks for restaurant services and food products. Based on opposer's staggering sales and advertising figures and its "extraordinarily impressive number of products identified by individual marks in the 'MC' family," the Board concluded that the family of marks consisting of the prefix "MC" followed by a descriptive or generic term is famous for both Section 2(d) and Section 43(c) purposes. [This post will attempt to hit the high points of the opinion]. McDonald’s Corp. v. McSweet, LLC, Opposition Nos. 91178758 and 91192099 (September 29, 2014) [precedential].

Family of Marks: The Board first addressed the family-of-marks question.

A family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.

Opposer owns registrations for, and uses, the mark MC (alone) as well as the marks MCDONALD’S, MC CHICKEN, MC DOUBLE, MCRIB, MCMUFFIN, MCNUGGETS, MCGRIDDLES, MCCAFE, MCSKILLET, and MCFLURRY. [The marks MC, MCDONALDS, and MCFLURRY "are not, strictly speaking, members of Opposer’s claimed 'MC' family of marks because neither 'DONALDS' nor 'FLURRY' is generic or descriptive of the relevant goods, and the mark MC lacks a generic or descriptive suffix." Nonetheless, these marks reinforce the association between Opposer and marks that incorporate the prefix "MC."] According to witnesses, Opposer’s efforts to establish and maintain the “MC” family of marks have been so successful that consumers spontaneously use the “MC” prefix in connection with all of Opposer’s products. The Board concluded that McDonald's owns a family of "MC" marks comprising the prefix "MC" followed by a descriptive or generic term.

Section 2(d) Fame: In assessing the fame of the family of marks, the Board also considered the fame of the mark MCDONALD’S "because the 'MC' family was derived from and points back to the mark and as such is integrally related to that mark."

The evidence established that opposer has used the MCDONALD’S mark in connection with food and restaurant services since 1955, and operates 14,000 restaurants in the United States which serve 26 million people per day. It sells an "enormous number" of products under each of its 'MC' family members. Opposer extensively advertises products within the “MC” family - with some of the advertising emphasizing the "MC" prefix - and has also widely advertised under the MCDONALD’S mark for several decades.

The Board concluded that the "MC" family of marks is famous for Section 2(d) purposes, 

Applicant lamely argued that "the fame of [Opposer’s] mark may weigh against a finding of likelihood of confusion because consumers are so familiar with the famous mark that they can readily identify differences with other marks and the goods or services offered thereunder." The Board pointed out that the fame of a mark is not to be considered a liability in the likelihood of confusion analysis. It concluded that, the mark MCDONALD’S and the "MC" family of marks are famous in connection with restaurant services and food products, and are entitled to a wide latitude of legal protection.

Similarity of the Marks: In considering the involved marks, "the question is not whether Applicant’s mark is similar to Opposer’s individual marks, but whether Applicant’s mark would likely be viewed as a member of Opposer’s family of marks."

Applicant acknowledging that its mark was created by Leo McIntyre using the “MC” from his surname and "SWEET" to describe the sweet brine used to pickle onions. Applicant argues that its mark can be distinguished from Opposer’s family of marks because its mark is a surname. The Board disagreed: "Because Applicant’s mark and Opposer’s family of marks all start with the prefix “MC” and are followed by a term that is descriptive or generic for the goods, we find that the similarities in appearance, meaning and commercial impression between Applicant’s mark MCSWEET and Opposer’s family of “MC” formative marks are such that potential consumers would view Applicant’s mark as a member of Opposer’s family of marks."

Relatedness of the Goods: The evidence established that pickled vegetables are offered at quick service restaurants; Opposer’s restaurants offer multiple products that contain pickles and onions, and applicant’s pickled vegetables may be used as toppings for opposer's sandwiches. In view of the fame of Opposer’s "MC" family of marks for its food products and the complementary nature of the goods, the Board found the parties’ goods to be sufficiently related to support a finding of likelihood of confusion.

Applicant contended that its goods travel in different channels of trade from Opposer’s goods and services, since applicant's goods are not sold in quick-service restaurants. The Board noted, however, that there are no restrictions as to channels of trade in the opposed applications.

Moreover, restaurant-branded foods are also sold in supermarkets or grocery stores: for example, Burger King frozen onion rings, White Castle frozen hamburgers, and T.G.I. Friday’s frozen appetizers. Grocery stores are thus within the ordinary channel of trade for restaurant-branded goods. Moreover, since 1993, Opposer has operated McDonald’s restaurants inside Wal-mart stores.

Considering the relevant du Pont factors, the Board found confusion likely and it sustained the Section 2(d) claim.

Likelihood of Dilution: The Board ruled that the term "famous mark" in Section 43(c)(2)(B) is applicable to a "famous family of marks." This statutory language "encompasses not just an individual famous mark, but also a famous family of marks. There is nothing in the Lanham Act or its legislative history to warrant the exclusion of a family of marks from protection against dilution. Indeed, the inherent nature of a family of marks, may make such marks more susceptible to blurring than a single mark."

Fame: Based on the record evidence, the Board found that Opposer's "MC" family of marks meets the higher fame standard applicable for the purpose of establishing dilution by blurring. Moreover, Opposer also proved that its family of marks was sufficiently famous as early as 1986, prior to applicant's alleged first use of the applied-for mark in 1990.

Considering the six "blurring" factors set forth in Section 43 (c)(2)(B)(i)-(vi), the Board found that applicant’s mark MCSWEET is "very similar to Opposer’s family of marks;" that the combination of the prefix "MC with a generic or descriptive food term is inherently distinctive; that opposer's use of its "MC" family of marks is substantially exclusive; and that the degree of recognition of opposer's family of marks is and has been quite strong since as early as 1986 (when Opposer operated 7,272 restaurants in the United States and had sales of approximately $9,534,000,000). The Board found no evidence that applicant intended to create an association with Opposer’s family of marks.

Finally, as to proof of actual association between applicant's mark and the "MC" family of mark, opposer relied on the results of a dilution survey. The Board noted that "[b]oth the courts and the Board have found the 'brings to mind' survey format acceptable as evidence of actual association, which is required to establish likelihood of dilution."

Opposer's survey demonstrated "a substantial degree of association between MCSWEET and McDonald’s and the "MC" marks: "67% or two out of three individuals who encounter the MCSWEET term associate it with Opposer, McDonalds and its 'MC' marks." Notwithstanding Applicant’s objections, the Board found that "the survey demonstrates actual association between the mark MCSWEET and Opposer's family of 'MC' marks."

Considering all of the relevant dilution factors, the Board found that the mark MCSWEET "is likely to impair the distinctiveness of Opposer’s family of “MC” marks and is therefore likely to cause dilution by blurring within the meaning of Section 43(c)."

Read comments and post your comment here

TTABlog comment: There's a lot of basic TTAB law well explicated in this opinion. The discussion of the dilution survey is particularly instructive.

Text Copyright John L. Welch 2014.

Friday, October 03, 2014

Beverly Hills Bar Association: "Fashion Law & the Global Runway," October 9th

The Beverly Hills Bar Association's IP, Internet and New Media Section will host a luncheon seminar at 12 noon on Thursday, October 9th, entitled "Fashion Law & The Global Runway," at the Beverly Hills Bar Association, 9420 Wilshire Boulevard, 2nd Floor, Beverly Hills, California. Register here. CLE Credit: 1.0.

This program will discuss the latest developments in Fashion Law both domestically and internationally. We will cover when to shout "Stop Thief!" and how to determine if a design is an unauthorized copy or merely a trend, whether legislation is necessary to thwart design piracy, the moral rights conundrum with European designers, why a red sole can serve as a trademark in the US but not under European or Brazilian trademark law, considerations when expanding into a foreign market (labeling laws, differing IP laws, etc), emerging privacy issues in fashion retail, and how to navigate the world of international trade, customs, imports and exports.


Staci Riordan, Esq.
Partner and Chair of Fashion Law Practice Group, Fox Rothschild LLP

Susan K. Ross, Esq.
Partner, Member of Fashion Practice Group, and Chair of the International Trade Practice, Mitchell Silberberg & Knupp LLP

Victoria Watkins, Esq.
Deputy Director of Legislative Counsel and Government Affairs at the City of Chicago, and author of the fashion law blog B.A.F.F.L.E.D.

Bruna Rego Lins, Esq.
Attorney, Founding Member of the Fashion Business and Law Institute - Brazil and Associate, Montaury Pimenta, Machado & Vieira de Mello

Moderator: Victoria Burke, Esq., Attorney-at-Law

Two TTABlogger Papers: One Old, One New

My blogging contribution for today consists of two papers. First, a golden oldie of sorts, entitled "The Top Ten Losing TTAB Arguments" (published in 2001); and second, a new compilation of "Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues - July 2013 to August 2014." I think the 2001 paper has held up pretty well, legally speaking. See if you agree.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.

Thursday, October 02, 2014

Test Your TTAB Judge-Ability: Are "SPARKLE LIFE" and "SPLASHES & SPARKLES" Confusable for Jewelry?

JJI International opposed an application to register the mark SPARKLE LIFE for "bracelets; charms; costume jewelry; necklaces; precious and semi-precious crystal stones and beads for use in jewelry," claiming a likelihood of confusion with its registered mark SPLASHES & SPARKLES for "jewelry." The goods are legally identical, but are the marks close enough? How do you think this came out? JJI International, Inc. v. Sparkle Life LLC, Opposition No. 91204296 (September 25, 2014) [not precedential].

As to the marks, an essential question was "what importance, if any, should be given to the fact that both marks contain the term SPARKLE(S)." It is that word that opposer primarily relied on in asserting likelihood of confusion. Applicant, however, contended that "Sparkle" is "fairly diluted" and is a weak formative for jewelry. It provided printouts from forty (40) websites depicting trademark and descriptive use of "Sparkle," in addition to third-party registered marks containing that term.

The Board agreed with applicant that "Sparkle" is a suggestive, if not descriptive, term entitled to only a narrow scope of protection. Dictionary definitions of "sparkle" referred to jewelry, and the high suggestiveness of the term was confirmed by the website evidence. Although the Board could not gauge the popularity of these websites, the sheer number of websites and the manner of use of the term made it plain that "Sparkle" is a term that "lends itself for use in the field of jewelry." This high suggestiveness is also reflected by the many third-party registrations in the jewelry field, for marks containing the word "Sparkle."

The fact that so many other third-parties in the jewelry business have adopted the term (or its formatives) in their own marks, registered marks with the same [term], or use the term to describe the goods certainly dilutes the term’s source-identifying significance.

In light of the "conceptual or inherent weakness" of "Sparkle," the Board found the involved marks to be dissimilar. The commercial impressions they create are different: SPARKLE LIFE denotes a glamorous lifestyle; SPLASHES & SPARKLES connotes flashy or showy goods. Moreover, opposer's mark has an alliteration that applicant's mark lacks. And the initial terms in the marks, often the focus of consumers, are different.

In sum, the Board found the marks sufficiently dissimilar to negate a likelihood of confusion.

Opposer offered the results of an Internet survey that, according to the expert's testimony, evidenced a 16.5% rate of actual confusion. Applicant voiced various criticisms of the survey, which loosely resembled the Squirt (array) format. The Board found that the universe of respondents was too narrow, and the survey did not present enough marks for the respondent to consider (the survey included only two). Finally, the 16.5% confusion rate was on the lower end of the spectrum for effective surveys.

The Board concluded that the survey results slightly favored a finding of likely confusion, but the dissimilarities between the marks was that critical factor in its decision to dismiss the opposition.

Read comments and post your comment here.

TTABlog note: Is there any facet of this case that you disagree with?

Text Copyright John L. Welch 2014.