Tuesday, February 20, 2018

TTAB Affirms Failure-to-Function Refusal of Ribbon/Banner Background Design for Horse Tail Cleaners

The Board affirmed a refusal to register the design shown below, for "Non-medicated cleaning preparations for livestock, horses, and domestic animals, ...." and various other products for said animals, agreeing with Examining Attorney Barbara A. Gaynor that the design fails to function as a trademarks. Said the Board: "Applicant’s applied-for design fails to emerge out of the background of the specimens and hit the prospective buyer in the eye, and [we] find that Applicant’s ribbon-shaped banner is a background design that does not create a commercial impression separate and apart from the word mark in conjunction with which it is used." In re W.F. Young, Inc., Serial No. 86454618 (February 14, 2018) [not precedential] (Opinion by Judge Albert Zervas).


The Examining Attorney maintained that the applied-for mark "is merely a background design that functions as part of a composite mark that incorporates additional designs or wording." (see excerpt from specimen of use, below).


The Board observed that when an applicant seeks to register a background design, the design must create a commercial impression separate and apart from the word mark with which it is used. Professor McCarthy has commented that "the more fanciful and distinctive the background design, the more likely it is to 'hit the buyer in the eye' and hence be more than background. In such a case, the so-called 'background' comes out into the spotlight of real trademark significance."

The Board noted that none of the specimens of use showed the ribbon-shaped banner alone; all have the word ABSORBINE superimposed thereon. The word ABSORBINE covers much of the design and follows the incline of the banner. This arrangement of wording and geometry suggests that they are part of the same mark. The color yellow is irrelevant since color is not claimed as part of the mark.

Ribbon-shaped designs are not uncommon for these type of goods, as evidence by the two registrations cited by the Examining Attorney. The applied-for design appears to be nothing more than a refinement of a basic background design and would be regarded as such by consumers.

And so the Board affirmed the refusal under Sections 1, 2, and 45 of the Lanham Act.

Read comments and post your comment here.

TTABlog comment: Even if applicant had claimed the color yellow, I doubt that it would have made any difference. No look-for advertising, no use of the banner with words other than ABSORBINE. Is this a WYHA?

Text Copyright John L. Welch 2018.

Friday, February 16, 2018

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

A TTAB judge once stated that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the goods or services. Presented for your perusal are three recent TTAB decisions in Section 2(d) appeals. One was reversed. Which one? [Answer in first comment].


In re CID Resources, Inc., Serial No. 86828751 (February 13, 2018) [not precedential] [Section 2(d) refusal to register the mark GRACE (in standard character form) for "Medical wearing apparel, namely, scrub tops and bottoms; medical wearing apparel, namely, pants for emergency medical personnel" in Class 10; and "Nurse’s apparel, namely, tops and bottoms, uniforms, lab coats; scrubs not for medical purposes" in Class 25, in view of the identical mark registered for "women’s sportswear, namely, jackets, pants, skirts, blouses, dresses, shirts, and knit tops, but excluding pantyhose and hose"].


In re Advanced Total Marketing Systems, Inc., Serial No. 86860062 (February 14, 2018) [not precedential] [Section 2(d) refusal of the mark shown immediately below, for "Latin American style food products, namely, processed flavored plantains slices, processed flavored yucca chips; Latin American Style food products, namely, fired flavored peanuts and baked flavored peanuts"


in view of the registered mark shown below left for "candy for consumption on and off the premises" and "retail candy and gift store services," the registered mark shown below right for "Dairy-based snack foods excluding ice cream, ice milk and frozen yogurt; Fruit-based food beverage; Oils and fats for food; Snack food dips; Vegetable-based snack foods," and the registered mark YUMMYS in standard character form for "Vegetable-based snack foods; Fruit-based snack foods; Vegetable chips; Fruit chips; Milk products excluding ice cream, ice milk and frozen yogurt"].


In re Spartan Detective Agency, Inc., Serial No. 87172299 (February 9, 2018) [not precedential] [Section 2(d) refusal of WE DO IT ALL! for "detective agency services" in view of the registered marks JUST CALL – WE DO IT ALL! for "legal services" and MAKE THE CALL WE DO IT ALL! for "legal services; providing legal services in the field of injury law, workers' compensation law, and social security disability law"].


Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

Thursday, February 15, 2018

TTAB Test: Is TWEEDS Generic for Shirts and Sweaters?

The USPTO refused registration of TWEEDS for "shirts; sweaters" on the Supplemental Register, deeming the term to be generic for the goods. Applicant argued that "[t]weed is a fabric, not a shirt or sweater," and that "tweeds" is "merely descriptive of a type of sweater or shirt." How do you think this appeal came out? In re Branded LLC, Serial No. 86529647 (February 13, 2018) [not precedential] (Opinion by Judge Christopher Larkin).


Applicant first pointed to its ownership of a now-expired registration for TWEEDS for the same goods. The Board shrugged that off, pointing out that each application must be examined on its own merits, and citing In re Cordua Rests., Inc., 118 USPQ2d 1632 (Fed. Cir. 2016) (CHURRASCOS in stylized form found generic for restaurant services despite subsisting "incontestable" registration for the word mark for the same services).

As evidence of the public's understanding of the word "tweeds," Examining Attorney John C. Boone relied on dictionary definitions ("Tweed" is defined as a rough, woolen cloth woven with different colored threads), webpages referring to various types of tweed fabric, webpages showing use of the words "tweed" and "tweeds" in connection with various items of woolen clothing, websites displaying shirts referred to as "tweed" shirts and "tweed" shirt jackets; and webpages and Google search results for "tweed sweaters

The Board observed that the USPTO must show more than that "tweeds" refers to other items of clothing. It must show that "tweeds" refers to a category of shirts or sweaters.

The evidence included multiple webpages offering "tweed" shirts and "tweed" sweaters. Many of the items were not made of wool. Applicant agreed that "it is possible to find shirts and sweaters that are made of tweed," and that the "examples given by the examining attorney use the word 'tweed' to indicate the type of sweater or shirt being offered." [Emphasis by the Board].

The Board pointed out that the use of "tweed" to indicate the type of shirt or sweater is use in adjectival form, rather than in noun form to identify a fabric. However, generic adjectives "are just as unprotectable as generic nouns:" for example, "footlong" for sandwiches excluding hot dogs. Sheets of Del., Inc. v. Doctor's Assocs. Inc., 108 USPQ2d 1341 (TTAB 2013).

Applicant effectively conceded that TWEEDS identifies a category of sweaters or shirts included within the relevant genus. The pluralization of the word "tweed" as TWEEDS does not alter its meaning as referring to categories of shirts and sweaters.

On the basis of the record as a whole, we find that the Examining Attorney has established, by clear evidence of generic use, that Applicant’s claimed mark TWEEDS is understood by the relevant purchasing public to refer to categories of shirts and sweaters that are made of tweed fabric, or that have the appearance, look, or style of tweed fabric. The proposed mark is thus incapable of distinguishing Applicant’s goods, making it ineligible for registration on the Supplemental Register.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: If the evidence showed use of "tweed" only with shirts and sweater made of wool, would "tweed" be merely descriptive but not generic?

Text Copyright John L. Welch 2018.

Wednesday, February 14, 2018

Precedential No. 4: TTAB Reverses Rejection of Downloadable Software Specimen Showing Mark in On-Screen Display

The TTAB reversed a refusal to register the mark AWLVIEW for, inter alia, warehouse inventory management software, overturning the USPTO's rejection of applicant's specimen of use. Because the mark appears on the login and search screens of Applicant’s downloadable software when the software is in use, the Board concluded that the specimen "shows the applied-for mark used in connection with the goods ... and would be perceived as a trademark identifying the source of those goods." In re Minerva Associates, Inc., Serial No. 86430215 (February 12, 2018) [precedential] (Opinion by Judge Linda A. Kuczma).

(Click on photo for larger version)

The first page of applicant's two-page specimen (the login screen shot shown above) displays the wording "AWLview WMS for Sterling Jewelers" appearing above "AWL Logon WS 202" shown in the title bar of the login page. The second page (the SKU search query page shown below) contains the wording "AWLview WMS for Sterling Jewelers WS 202 - LCM" appearing above "Inventory By SKU Report-WS 202" shown in the title bar of the SKU search query window.

(Click on photo for larger version)

The Board observed that, according to Section 904.03(e) of the Trademark Manual of Examining Procedure (Oct. 2017), an acceptable specimen for software "might be a photograph or printout of a display screen projecting the identifying trademark for a computer program."

Because software providers have adopted the practice of applying trademarks that are visible only when the software programs are displayed on a screen, see TMEP § 904.03(e), an acceptable specimen might be a photograph or screenshot of a computer screen displaying the identifying trademark while the computer program is in use. The second substitute specimen features screenshots of Applicant’s mark appearing on the log-in and search screens viewable by Applicant’s customers utilizing the downloaded software. Because the mark appears on the login and search screens of Applicant’s downloadable software when the software is in use, we find that the second substitute specimen shows the applied-for mark used in connection with the goods in Class 9 and would be perceived as a trademark identifying the source of those goods.

Finally, the Board noted that, again according to Section 904.03(e) of the TMEP, "[i]t is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce. See, e.g., In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (holding that stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, is sufficient use)."

Read comments and post your comment here.

TTABlog comment: AWL set, in my VIEW.

Text Copyright John L. Welch 2018.

Tuesday, February 13, 2018

TTAB Will Hold Two Final Hearings at Tulane Law School - February 28th

The TTAB, in a combined program with the PTAB, will take its "Stadium Tour" to Tulane University Law School in New Orleans on February 28th. The TTAB panel will hear oral argument in the two cases summarized below. The day-long program will include an "Overview of the Trademark Trial and Appeal Board" by Chief Judge Gerard F. Rogers, and a panel discussion on advocacy, featuring judges from both the TTAB and the PTAB. Full agenda may be found here.


February 28, 2018 - 11 AM: In re David Copeland-Smith, Serial Nos. 85498107 [Section 2(d) refusal of BEAST MODE SOCCER for "T-shirts" and "Sporting goods and equipment for soccer training, namely, balls. " in view of the registered mark BEAST MODE, for "t-shirts" and "Men's, women's and children's clothing, namely, shirts, sweatshirts; headwear, namely, hats, caps"].


February 28, 2018 - 1 PM: Larr Pitt & Associates, P.C. v. Lundy Law, LLP, Opposition No. 91210158 [Opposition to registration of the slogan REMEMBER THIS NAME for legal services on the ground that the applied-for mark does not function as a mark and cannot be perceived by consumers as a source identifier].


Read comments and post your comment here.

TTABlog comment: Looking forward to full reports from attendees.

Text Copyright John L. Welch 2018.

Recommended Reading: Prof. Ouellette, "Does Running Out Of (Some) Trademarks Matter?"

Lisa Larimore Ouellette, Associate Professor of Law at Stanford Law School, responds to the article posted here yesterday, in a note entitled, Does Running Out Of (Some) Trademarks Matter?, 131 Harv. Law. Rev. Forum 116 (2018) [pdf here]. While praising the work of Professors Beebe and Fromer, Professor Ouellette suggests further avenues of research regarding the actual costs or the countervailing benefits of either depletion or congestion, before recommending any change in the current trademark system.


In this short space, I wish to laud the remarkable descriptive contribution of Are We Running Out of Trademarks? while sounding a note of caution on the normative implications. Beebe and Fromer’s data convincingly demonstrate that short, common word marks are becoming depleted and congested, and they present a number of plausible hypotheses about the negative welfare impact of this trend. Their findings suggest that trademark policy has been based on false assumptions and should be closely reexamined. But their data cannot elucidate the actual costs of depletion or congestion — particularly without noting how the market will adapt to reduce these costs — and cannot reveal if there are countervailing benefits. Generating concrete evidence of these costs and benefits seems like a necessary next step before recommending any significant changes to the current trademark system. After offering a laudatory evaluation of the value of Beebe and Fromer’s descriptive work, I explore why reforms in reaction to their research should proceed cautiously, and I suggest important avenues for future empirical work to build on these results.

Read comments and post your comment here.

Text Copyright John L. Welch 2018.

Monday, February 12, 2018

Recommended Reading: Professors Beebe and Fromer, "Are We Running Out of Trademarks?"

"Conventional wisdom" says that the number of available trademarks is infinite, or nearly so. Professors Barton Beebe and Jeanne C. Fromer of New York University School of Law challenge that assertion in their enlightening article: Are We Running Out Of Trademarks: An Empirical Study of Trademark Depletion and Congestion, 131 Harv. Law Rev. 948 (February 2018). [pdf here].


American trademark law has long operated on the assumption that there exists an inexhaustible supply of unclaimed trademarks that are at least as competitively effective as those already claimed. This core empirical assumption underpins nearly every aspect of trademark law and policy. This Article presents empirical evidence showing that this conventional wisdom is wrong. The supply of competitively effective trademarks is, in fact, exhaustible and has already reached severe levels of what we term trademark depletion and trademark congestion.  * * *  These data show that rates of word-mark depletion and congestion are increasing and have reached chronic levels, particularly in certain important economic sectors. The data further show that new trademark applicants are increasingly being forced to resort to second-best, less competitively effective marks. Yet registration refusal rates continue to rise. The result is that the ecology of the trademark system is breaking down, with mounting barriers to entry, increasing consumer search costs, and an eroding public domain. In light of our empirical findings, we propose a mix of reforms to trademark law that will help to preserve the proper functioning of the trademark system and further its core purposes of promoting competition and enhancing consumer welfare.

Read comments and post your comment here.

TTABlog comment: Should we take some small comfort from the fact that Matal v. Tam and In re Brunetti have freed up more words for registration as trademarks? On the other hand, Bayer v. Belmora says that one need not own a trademark in the United States to bring a Section 43(a) claim (Bayer owned the mark FLANAX in Mexico). Does that further narrow (slightly) the number of marks available in this country?

P.S. I'm sorry to see the Professors use the terms "trademark" and "trademarking" as verbs, instead of "register" and "registering."

Text Copyright John L. Welch 2018.

Friday, February 09, 2018

Applying Claim Preclusion, TTAB Summarily Dismisses Petition for Cancellation of "THE EBONYS" Registration Despite Added Claim

The Board granted respondent's motion for summary judgment, dismissing this petition for cancellation of a registration for the mark THE EBONYS for entertainment services by a musical group. The Board ruled that claim preclusion barred petitioner's fraud and likelihood-of-confusion claims in light of a prior Board decision (here) dismissing petitioner's closely similar fraud claim. David S. Beasley v. William H. Howard DBA The Ebonys, Cancellation No. 92066369 (January 19, 2018) [not precedential].


In the prior cancellation proceeding, Petitioner Beasley alleged that Respondent Howard knowingly made false statement regarding his (Howard's) use of the mark THE EBONYS. Beasley, however, failed to submit evidence to support the fraud claim, and so the Board dismissed the proceeding.

In this, the second proceeding, Beasley provided more detailed allegations regarding the alleged fraud, but the Board found that "the core transactional facts in each proceeding are the same." Therefore it concluded that Beasley's renewed fraud claim is barred under the doctrine of claim preclusion.

As to Petitioner Beasley's likelihood-of-confusion claim, the Board observed that claim preclusion bars "a subsequent assertion of the same transactional facts in the form of a different cause of action or theory of relief." A party cannot avoid claim preclusion merely by bringing additional claims in a second proceeding based on the same transactional facts as the first proceeding.

We find that there is no genuine dispute that Petitioner’s likelihood of confusion claim in this proceeding is based on the same transactional facts as, and should have been litigated in, the Prior Action. Specifically, Petitioner has alleged in both proceedings prior use and ownership of THE EBONYS mark for a vocal music group. In addition, with respect to the involved registration in each proceeding, Respondent had alleged use of THE EBONYS mark for the same or similar services to those offered by Petitioner. In view thereof, Petitioner could (and should) have asserted his likelihood of confusion claim in the earlier case.

And so the Board granted respondent's motion for summary judgment and dismissed the proceeding.


Read comments and post your comment here.

TTABlog comment: I never heard of THE EBONYS.

Text Copyright John L. Welch 2018.

Thursday, February 08, 2018

TTAB Test: Are Nutritional Supplements And Fruit Beverages Related Under Section 2(d)?

The USPTO refused registration of the mark CODEGREEN for "nutritional supplements in pill and/or powder form," finding the mark likely to cause confusion with the registered mark CODE GREEN for "fruit beverages" and "vegetable-based food beverages." Applicant Spin80 argued that the goods are not related because its supplements are geared toward the training, exercise, and fitness industries whereas the cited goods have no particular application. How do you think this came out? In re Spin80, Inc., Serial No. 87116915 (January 31, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch).


Because the marks are nearly identical, a lesser degree of relatedness between the goods is necessary to support a finding of likely confusion.

Examining Attorney Jillian Cantor submitted website pages showing nutritional supplements in pill form and fruit beverages sold under the same mark. In addition, 11 use-based third-party registrations that identify both nutritional supplements and fruit beverages suggested that the goods many emanate from the same source.

As to applicant's argument that its goods are "highly specialized," the Board found no evidence to support that assertion. [Irrelevant anyway, since there are no such limitations in applicant's identification of goods - ed.]. There was ample evidence that "the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the emanate from the same source."

The evidence showed that the channels of trade for the involved goods, and the classes of consumers, overlap. There was no evidence to support applicant's contention that "consumers of nutritional supplements necessarily are overly dedicated to fitness and wellness," and are "specifically pursuing the results and effects" of the supplements. The Board noted that while some consumers may exercise a certain degree of care in selecting supplements, they are not necessarily likely to exercise a high degree of care in examining the trademarks. Moreover, the Board must consider the least sophisticated potential purchasers in making its determination.

Finally, applicant argued that the difference in price of the goods would prevent confusion, but applicant failed to prove that all of its goods are expensive. In any case, the identification of goods in the application has no price limitation, and the evidence showed that supplements can sell as low as  $4-10. And even if consumers exercised a degree of care in purchasing these goods, it is well established that even sophisticated consumers are not immune from source confusion when encountering substantially identical marks.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Was this a WYHA?

Text Copyright John L. Welch 2018.

Wednesday, February 07, 2018

TTAB Test: Is "PEACEFUL PIRANHA" Confusable With "PIRAÑA" for Snack Foods?

The USPTO refused to register the mark PEACEFUL PIRANHA for potato chips, processed nuts, and other snack items, finding the mark confusingly similar to the registered mark PIRAÑA for potato chips, nut-based snacks, etc. Applicant argued that there is an incongruity in its mark that creates an entirely different connotation to the consumer as compared to the cited mark. How do you think this came out? In re Hy-Vee, Inc., Serial No. 87120774 (February 6, 2018) [not precedential] (Opinion by Judge Frances Wolfson).


Because the goods in the application and the cited registrations are identical in part, the Board must presume that they travel in the same channels of trade to the same classes of consumers.

As to the marks, the Board found the word "piranha" to be the dominant portion of Applicant’s mark "because it is modified by the term 'peaceful' in the same manner as an adjective modifies a noun." Even though "peaceful" is the first word in applicant's mark, consumers are likely to focus on the word "piranha."

Moreover, "for English language speakers who are unfamiliar with Spanish, the differences between the terms PIRANHA and PIRAÑA are insignificant."

Without knowledge of the purpose of the tilde in a Spanish “n” (i.e., that it changes the pronunciation of the letter “n” to the “ny” sound such as is used in the English word canyon), a consumer of Applicant’s goods may perceive the tilde as simply a design feature of the mark or consider Registrant’s mark as a misspelling of the English word “piranha.” Those consumers who do not speak or understand Spanish are unlikely to pronounce the “ny” sound and will consider the pronunciations of the terms to be the same. For these reasons, such consumers will associate both the terms PIRANHA and PIRAÑA with the fish.

For consumers having a knowledge of Spanish, the terms will be perceived as equivalents, under the doctrine of foreign equivalents.

As to the incongruity in applicant's mark, the Board that piranhas may be considered vicious and that a peaceful piranha "does not jibe with that perception, although given the popular understanding of what characterizes a piranha, even a 'peaceful piranha' may be seen to have an incipient propensity to be vicious." The Board did not agree, however, that applicant's mark "is so counterintuitive in its word-play on 'piranha' that confusion with the cited mark PIRAÑA would be obviated." In short, the presence of the additional term PEACEFUL in applicant’s mark "is not likely to distinguish the marks since it would merely indicate an atypical piranha, possibly for use with a subset of snack foods offered under the PIRAÑA mark."

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Was this a WYHA?

Text Copyright John L. Welch 2018.

Tuesday, February 06, 2018

TTAB Test: Are Cigars Related to Alcoholic Beverages for Section 2(d) Purposes?

The USPTO refused registration of the mark TERNURA for cigars, finding it likely to cause confusion with the identical mark registered for "liquor; tequila; vodka; wines."Applicant contended that, under applicable precedent, tobacco and alcohol are not considered "related" unless the prior registered mark is well-known or famous and the applicant is seeking to exploit the registered mark. Since the cited mark is not well-known, applicant asserted, confusion is not likely. How do you think this came out? In re El Galan, Inc., Serial No. 86961428 (February 1, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).


Not surprisingly, the Board found the marks to be identical in sound, appearance, meaning (Spanish for "kindness" or "tenderness"), and commercial impression.

As to the goods, Internet evidence submitted by Examining Attorney Clare Cahill showed that third parties produce and offer for sale cigars and alcoholic beverages under the same mark. The examining attorney also provided evidence that cigars and alcoholic beverages are complementary in that they are consumed together. Prior Board decisions found JOHNNY WALKER for cigars confusable with the same mark for whiskey, and CASCADE for whiskey confusable with the same mark for cigarettes.

Applicant relied on Schenley Distillers, Inc. v. Gen. Cigar, 166  USPQ 142, 143 (CCPA 1970), for the proposition that, because the cited mark is not well-known or famous and is not marketed in a way to gain recognition, confusion is not likely here. The Board first noted that the fame of a prior mark is generally considered only in an inter partes context. Moreover, here the evidence suggests that "the alcohol industry has evolved since the issuance of the Schenley decision . . . to the extents that in the current marketplace it is not uncommon industry practice for distillers and  vintners, and not just those with 'a famous name or trademark,' . . . to produce and offer both cigars and alcoholic beverages under the same mark."

To be clear, we are not finding that cigars and alcoholic beverages in general are related based upon some abstract similarity between alcohol and tobacco. The record in this case establishes that cigars and alcoholic beverages are not only produced and offered for sale by third parties under the identical mark, but they are also complementary products that are marketed together for simultaneous consumption. As such, when both products are offered under the identical, arbitrary trademark, consumers are likely to believe that the goods originate from the same source.

The evidence further established that alcoholic beverages and cigars travel in the same channels of trade, such as liquor stores and online marketplace retailers. In fact they are complementary products that are marketed together for simultaneous consumption.

As to the conditions of purchase, the items identified in the application and cited registration include inexpensive products purchased by the public at large. Even assuming that the prospective purchasers are knowledgeable and sophisticated, they are not immune from source confusion. In any case, likelihood of confusion must be assessed from the standpoint of the least sophisticated consumer.

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

Read comments and post your comment here.

TTABlog comment: So all alcoholic beverages are related to each other, and also to all tobacco products?

Text Copyright John L. Welch 2018.