Friday, January 13, 2017

Free Webinar: A Guide to TTAB Practice for Foreign Trademark Owners - January 19th, 10-11 AM EST

Yours truly, The TTABlogger, will present a webinar entitled "Friendly Shores: A Guide to TTAB Practice for Foreign Trademark Owners," on Thursday, January 19th from 10 to 11 AM EST, sponsored by Wolf, Greenfield & Sacks, P.C. "Admission" is free. Register here.


The webcast will emanate from the Federal Reserve Building in beautiful downtown Boston. Among the topics to be covered are the following:

  • The requirement of “use” in U.S. Trademark law.
  • Vulnerability of U.S. registration based on foreign rights
  • Ex parte appeals before the TTAB
  • TTAB jurisdiction in inter partes proceedings
  • The four phases of oppositions and cancellations
  • Court review of TTAB decisions

If you have questions, send them to me at jwelch at wolfgreenfield dot com.
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TTAB Test: Which Of These Four Section 2(d) Refusals Was Reversed?

Supposedly one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods. Here are four (IV) recent Section 2(d) appeals. Which one resulted in a reversal? [Answer will be found in first comment].


In re SBE Licensing, LLC, Serial No. 86135841 (January 5, 2017) [not precedential]. [Section 2(d) refusal of THE PERQ and Design (below left) for "restaurant, café, coffee, tea, and juice bar services," in view of the registered mark PERQS, in standard character and design form (below right), for "coffee supply services for offices"].


In re MT Enterprises LLC, Serial No. 86420598 (January 6, 2017) [not precedential]. [Section 2(d) refusal to register (on the Supplemental Register) the mark The No Pull Harness & Leash in One, in standard character form, for "Animal harnesses for dogs; Animal leashes; Dog leashes; Leashes for animals; Pet products, namely, pet restraining devices consisting of leashes, collars, harnesses, restraining straps, and leashes with locking devices" [HARNESS & LEASH disclaimed], in view of the registered mark NO-PULL for "halters for domesticated animals”].


In re Clipper City Brewing Co., LP, Serial No. 86353682 (January 10, 2017) [not precedential]. [Section 2(d) refusal of BLACKBEARD’S BREAKFAST for "beverages, namely, beers, ales, and malt liquors," in view of the registered mark shown below, for "beers" ["Ale", "Virgin Islands Ale Co.", "St. Thomas", "Tortolas", "St. John", "St. Croix" and "Caribbean Sea" disclaimed.].


In re Eyefluence, Inc., Serial No. 86249068 (January 10, 2017) [not precedential]. [Section 2(d) refusal of EYEOS for "Computer hardware and software for providing a user interface involving eye tracking and/or eye movement for wearable devices," in view of the identical mark registered for various eyewear products, including eyeglasses, sunglasses, and frames].


Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.

Thursday, January 12, 2017

Current Roster of TTAB Administrative Trademark Judges

With the appointment of Robert H. Coggins to the Trademark Trial and Appeal Board and the retirement of Judge Ellen J. Seeherman, the Board’s membership remains at twenty-six (26) Administrative Trademark Judges. The current roster is set forth below, beginning with Chief Judge Gerard F. Rogers and Deputy Chief Judge Susan M. Richey, and then proceeding alphabetically.


Rogers, Gerard F. (Chief Judge): Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D. magna cum laude, New England School of Law.

Richey, Susan M. (Deputy Chief Judge): Appointed to TTAB in 2014; Prior Professional Experience: Professor and Associate Dean, Univ. of New Hampshire School of Law, 1996-2014; Private practice (Los Angeles, California, 1983-1996); Education: B.A., University of Baltimore; B.S., College of William and Mary; J.D., University of Maryland.

Adlin, Michael B.: Appointed to TTAB in 2012; Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University; J.D., Boston University School of Law.

Bergsman, Marc A.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.

Cataldo, Peter W.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Coggins, Robert H.: Appointed to TTAB in 2017: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.S., Davidson College; J.D., Wake Forest University School of Law.

Goodman, Cheryl S.: Appointed to TTAB in 2014: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State College of Law.

Gorowitz, Francie R.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Los Angeles, California); Trademark Examining Attorney; Education: B.A., State University of New York at Cortland; J.D., Albany Law School.

Greenbaum, Cindy B.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Heasley, David K.: Appointed to TTAB in 2015; Prior Professional Experience: Private Practice (Washington, D.C.); Education: B.A., The Johns Hopkins University: J.D., University of Maryland School of Law.

Hightower, Susan J.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Austin, Texas); Education: B.A., Austin College; M.A., University of Texas; J.D., Stanford Law School.

Kuczma, Linda A.: Appointed to TTAB in 2011; Prior Professional Experience: Private Practice (Chicago, Illinois); Education: B.S., St. Mary's University; J.D., Loyola University Chicago School of Law.

Kuhlke, Karen: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Larkin, Christopher: Appointed to TTAB in 2016; Prior Professional Experience: Private practice (Los Angeles, CA; New York, NY); Education: B.A., Stanford University: J.D., Columbia Law School.

Lykos, Angela: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., The Johns Hopkins University; J.D., Duke University Law School.

Lynch, Cynthia C.: Appointed to TTAB in 2015: Prior Professional Experience: Private Practice; Attorney-Advisor at the International Trade Commission; USPTO Assistant Solicitor: USPTO Administrator for Trademark Policy and Procedure; Education: B.A., University of North Carolina; J.D., University of Virginia School of Law.

Masiello, Anthony R.: Appointed to TTAB in 2012; Prior Professional Experience: Trademark Examining Attorney; Private Practice (Boston, New York, and Washington, D.C.); Education: Harvard College; J.D., Harvard Law School.

Mermelstein, David: Appointed to TTAB in 2006: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Supervisory Interlocutory Attorney; Education: B.A., New College, Hofstra University; J.D., American University.

Pologeorgis, George C: Appointed to the TTAB in 2015; Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Attorney in the Office of Trademark Quality Review and Training; Trademark Examining Attorney; Private Practice; Education: B.A. University of Pennsylvania; J.D., George Washington University National Law Center.

Quinn, T. Jeffrey: Appointed to TTAB in 1988; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Tulane University; J.D., Tulane University School of Law.

Ritchie, Lorelei: Appointed to TTAB in 2008; Prior Professional Experience: Private Practice; Arbitrator and judge pro tem, Orange and Los Angeles Counties, California; Intellectual Property Manager, UCLA; Adjunct Professor of Law, Loyola Law School, Los Angeles; Assistant Professor, Florida State University School of Law; Education: A.B., Stanford University; J.D., Columbia University.

Shaw, Thomas: Appointed to TTAB in 2011; Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.

Taylor, Jyll: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of North Carolina at Chapel Hill; J.D., Howard University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Wolfson, Frances: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., U.C. Santa Barbara; J.D., U.C.L.A.

Zervas, Albert: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.

Text Copyright John L. Welch 2017.

Robert H. Coggins Appointed As TTAB Administrative Trademark Judge; Ellen J. Seeherman Retires

Robert H. Coggins has been appointed to the position of Administrative Trademark Judge at the Trademark Trial and Appeal Board. Judge Ellen J. Seeherman retired from government service in December 2016. With the appointment of Mr. Coggins and the retirement of Judge Seeherman, the number of TTAB judges remains at 26 (including the Chief Judge and Deputy Chief Judge).


Mr. Coggins served as an Interlocutory Attorney at the TTAB for more than ten years, prior to which he served for eight years as an Attorney-Advisor for the USPTO’s Trademark Examining Operation. During his tenure as an examining attorney, Mr. Coggins completed a three-month career development detail at the TTAB, and a six-month work detail in Patent Technology Center 2100 assisting in the review of international patent applications.

Mr. Coggins earned a Bachelor of Science degree in Biology from Davidson College and a Juris Doctor degree from Wake Forest University School of Law.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

Wednesday, January 11, 2017

TTAB Test: Which Of These Three Mere Descriptiveness Refusals Was Reversed?

By my recent estimation, somewhere around 90% of all Section 2(e)(1) mere descriptiveness refusals that reached the TTAB in 2016 were affirmed on appeal. Well, here are three appeals that were decided within the past month. One refusal was reversed. Which one, pray tell? [Answer will be found in first comment].


In re GMR, LLC, Serial No. 86338948 (January 9, 2017) [not precedential]. [Refusal of BLACKJACK CHAT for "Computer game software; computer game programs; electronic game programs and for "Etertainment services, namely, providing online computer and electronic games through a social networking website."


In re Panasonic Avionics Corp., Serial No. 86499954 (January 5, 2017) [not precedential]. [Refusal of FLIGHTLINK for "Meteorological forecasting; providing meteorological information; providing weatherinformation; weather forecasting; weather information services; weather reporting"].


In re Watered Up, LLC, Serial Nos. 86310513; 86310537; 86310550 (December 30, 2016) [not precedential]. [Refusal of AQUA CRISPS, in standard character and design forms, "for tapioca-based snack foods; tapioca chips"].


Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.

Tuesday, January 10, 2017

In 2016, How Often Did the TTAB Affirm Section 2(d) Refusals? 2(e)(1) Mere Descriptiveness Refusals?

I reviewed the TTAB's FOIA page in an attempt to determine, or at least estimate, the percentage of Section 2(d) likelihood-of-confusion refusals and Section 2(e)(1) mere descriptiveness refusals, that were affirmed/reversed by the Board during the calendar year 2016. The highly unscientific results are set out below.


Section 2(d): I counted 249 Section 2(d) refusals, of which 228 were affirmed and 21 reversed. That's an affirmance rate of about 91.5%. [A high water mark for the last few years].

Four of the opinions were deemed precedential, all affirmances: TIME TRAVELER BLONDE; JAWS; HOUSEBOAT BLOB; and MT. RAINIER Logo;

NB: Some cases involved an applied-for mark in standard character and stylized or design form, and I counted that situation as one refusal.

Section 2(e)(1) mere descriptiveness: Of the 91 Section 2(e)(1) mere descriptiveness refusals, 82 were affirmed and 9 reversed, for an affirmance rate of approximately 90%, again on the upper end of the spectrum for recent years.

Two of the opinions were deemed precedential, both affirmances: IMÁGENES ESCONDIDAS and HOUSEBOAT BLOB.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.

Monday, January 09, 2017

Judge Seeherman Offers Different Approach to Section 2(e)(4) Surname Refusals

The Board affirmed a Section 2(e)(4) surname refusal of BUTTERFIELDS for auction and appraisal services. Applying the Benthin factors, the Board found that the applied-for mark is not a rare surname, that it has no recognized non-surname significance, and that it has the structure and pronunciation of a surname. Judge Ellen J. Seeherman agreed with the result, but took the opportunity, in a seven-page concurrence, to explain her view of the proper approach to Section 2(e)(4), an approach that focuses on the rareness of the surname. In re Bonhams & Butterfields Auctioneers Corp., Serial Nos. 85443480 and 85443485 (December 29, 2016) [not precedential].


Judge Seeherman set out her view of Section 2(e)(4) in In re "Baik" [TTABlogged here]. On occasion, a Board panel has followed her approach. Here, however, the panel hewed to its recent line of Section 2(e)(4) rulings:

The majority follows the reasoning of several decisions recently handed down by the Board, namely In re Integrated Embedded, In re Eximius Coffee and In re Adlon, cited in the majority opinion. In those decisions, the Board makes it clear that a mark will be found to be primarily merely a surname as long as there is evidence that some people have that surname, no matter how rare the surname is, as long as it is perceived as a surname. The opinions now use the language whether the term is “encountered” as a surname, rather than “the degree of a surname’s rareness,” the language quoted in Benthin.

In Judge Seeherman's evolving view, the degree of rareness of the surname should be the first consideration:

I think the Board must first determine whether there are a sufficient number of people with a particular surname for the mark to even rise to the level of a surname. That is, there must first be a showing that there is some threshold number of people with that surname to make out a prima facie case for refusal under Section 2(e)(4).

The analysis relied upon by the majority, according to Judge Seeherman, ignored the purpose of the Section 2(e)(4) surname prohibition:

"The purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses, in the same manner that merely descriptive terms are prohibited from registration because competitors should be able to use a descriptive term to describe their own goods or services." Binion, 93 USPQ2d at 1540.

If the surname is rare, there is no need to keep it available for anyone with that surname just because there is a theoretical possibility that another might wish to use the surname for goods or services related to those of the applicant.

The Lanham Act has never been as rigidly interpreted with respect to other grounds of refusal as Section 2(e)(4) is now interpreted under the Board's current approach. Now, a mark that is a rare surname may be refused registration even if the surname has little exposure to the public, as long as it has no other meaning, or looks and sounds like a surname, or articles can be found referring to a few people having the surname.

Accordingly, in my view, the rareness of a surname must be part of the threshold question of whether there is sufficient evidence of surname use for the mark to qualify as being a surname, and only if the answer to that question is “yes” should the analysis reach a consideration of whether the mark will be recognized as a surname.

Read comments and post your comment here.

TTABlog comment: Postscript: Judge Seeherman retired from government service at the end of December 2016.

Text Copyright John L. Welch 2017.

Friday, January 06, 2017

CAFC Reverses TTAB's "DOTBLOG" Mere Descriptiveness Decision

In a non-predecential opinion, the CAFC reversed the Board's decision (TTABlogged here) that found the mark DOT BLOG to be merely descriptive of the service of "providing specific information as requested by customers via the Internet." Appellant Driven Innovations did not challenge the Board's procedural ruling regarding application of the "clear error" standard. [The Board held that an applicant may not separately challenge that determination of "clear error," either by petition to the Director or on appeal to the Board. Applicant’s only recourse is to appeal the substantive refusal.] In re Driven Innovations, Inc., Appeal No. 2016-1094 (January 4, 2017) [not precedential].


The Board reasoned that "blog" refers to an online journal, and applicant's specimen of use showed that it provides information that may be derived from or used for blogs. The word "dot" represents the punctuation mark in an internet address, and the combination of "dot" and "blog" has the same meaning as the component parts. According to the Board, "[c]onsumers will immediately understand the term DOTBLOG, when used in association with Applicant’s services of ‘providing specific information as requested by customers via the Internet,’ as describing a website that may feature information for blogs, or be related to blogs, regardless of the domain in which the blogs reside."

Alternatively, the Board found that consumers are likely to perceive the mark as "related to information gleaned from the '.blog' domain" because ICANN’s activation of the .blog generic top-level domain.

The CAFC disagreed because the definitions of "dot" and "blog" did not provide sufficient support for the Board’s finding, under the applicable substantial evidence standard.

The word “dot” does not “immediately convey” a meaning of the punctuation mark used in an internet address, nor does it immediately describe the online nature of Driven Innovations’ services. See Chamber of Commerce, 675 F.3d at 1300. Instead, it merely suggests the online nature of Driven Innovations’ services because it “requires some operation of the imagination” to connect the term “dot” to the online nature of Driven Innovations’ services. Abcor Dev. Corp., 588 F.2d at 814. Similarly, the word “blog” at most establishes some form of relation between the services rendered and blogs generally, without any description as to how the services rendered relate to blogs. The use of “blog” in the mark is not descriptive because it does not immediately convey knowledge of a feature of the services. See Chamber of Commerce, 675 F.3d at 1300.

Finding the applied-for mark to be merely suggestive of applicant's services, the Board reversed the Section 2(e)(1) refusal and remanded the case for further proceedings.

Read comments and post your comment here.

TTABlog comment: FWIW, at the TTAB, the case was heard by an augmented panel of five judges, including the Chief Judge and Deputy Chief Judge.

Text Copyright John L. Welch 2016.

Thursday, January 05, 2017

TTAB Issued 36 Precedential Opinions in 2016

The TTAB issued three dozen (XXXVI) precedential opinions in calendar 2016. Among the more interesting ones, the Board considered the registrability of a rare “motion mark,” concluding that the gripping, in-and-out movement of the jaws of a hand tool was functional under Section 2(e)(5). In an almost-as-rare color mark case, the Board reversed a refusal to register the color white for gunpowder charges because applicant’s look-for advertising convinced the Board that the mark had acquired distinctiveness.

Although the Board usually gives significant weight to concurrent use agreements when assessing likelihood of confusion, it refused to do so in a case involving two marks for beer because the agreement did not “fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the goods.” The Board was particularly unhappy with the provision that would limit applicant’s use to New England and New York, while registrant’s use was not geographically limited.

In what may prove to be the opening gambits in an evolving area of trademark law, the Board snuffed out an application to register a mark for “retail store services featuring herbs” because the mark was being used in connection with the sale of a substance (marijuana) that is illegal under the federal Controlled Substances Act. And it likewise affirmed a refusal to register two marks for “smokeless marijuana or cannabis vaporizer apparatus,” rejecting applicant’s defense that the goods are sold only in states where marijuana is legal.

In a flurry of Section 2(e)(4) rulings, the Board focused on consumer perception rather than the more mechanical application of the traditional Benthin factors in finding the marks ALDECOA and THE BARR GROUP to be primarily merely surnames. The Board emphasized the fact that persons with the surnames at issue were prominently active in the businesses involved.

In failure-to-function cases, the Board affirmed a refusal to register a repeated diamond pattern applied to “electronic hookahs,” deeming it to be a non-distinctive, merely ornamental design that lacked acquired distinctiveness. And it upheld a challenge to two design marks comprising “I ♥ DC” on the ground that the term is ubiquitous and informational and failed to function as a trademark for clothing and assorted goods.

In the inter partes arena, the Board promptly complied with a federal district court order to vacate its precedential opinion in the HOUNDSTOOTH MAFIA case. The parties had settled the Section 1071 civil action seeking review of the Board’s decision, and as part of the settlement agreed to vacatur. The Board at first refused to do so on a motion by the University of Alabama, but the federal judge then insisted, in no uncertain terms, upon vacatur.

In a reversal of the usual situation, the Board granted a petition for cancellation of a registration owned by a wholly-owned subsidiary because the mark was used only by its parent company and the subsidiary did not control the parent’s use of the mark. In another successful cancellation proceeding, the Board confirmed that the U.S. distributor of a product was the owner of the mark in question, not the foreign manufacturer who made the product to petitioner’s order.

Finally, another fraud claim bit the dust as the Board rejected a petitioner’s allegation due to its failure to prove an intention to deceive the USPTO when respondent, in its underlying application, made its allegedly false declaration regarding the lack of third-party prior rights in a similar mark.


Section 2(d) - Likelihood of Confusion:


Section 2(e)(1) - Mere Descriptiveness


Section 2(e)(3) - Geographically Deceptively Misdescriptive:
Section 2(e)(4) - Primarily Merely a Surname:

Section 2(e)(5) - Functionality:


Section 2(f) - Acquired Distinctiveness:
Application Requirements/Lawful Use/Specimen of Use:
Dilution:


Failure to Function:
Family of Marks:
Fraud:
Ownership:

Discovery/Evidence/Procedure:
Text Copyright John L. Welch 2016-2017.

Wednesday, January 04, 2017

NYIPLA Seminar: Understanding the Upcoming Changes to the Trademark Rules and Practice

The New York Intellectual Property Law Association (NYIPLA) will host a CLE seminar on the upcoming TTAB rule changes. The seminar will be held on Thursday, January 12, 2017 at 6:30PM at the offices of Pryor Cashman LLP, 7 Times Square, New York NY 10036. Registration here.


New rules will go into effect on January 14, 2017 that impact procedures during examination and inter partes proceedings, including significant changes to the fee schedules. Please join us for a CLE program that will review these changes and discuss the policies underlying the new rules.

Panelists:

Wendy Cohen, Interlocutory Attorney, Trademark Trial and Appeal Board
Colleen Kearney, Staff Attorney in the Office of the Deputy Commissioner for Trademark Examination Policy, United States Patent and Trademark Office

Moderated by Dyan Finguerra-DuCharme, Partner, Pryor Cashman LLP
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Precedential No. 36: DEEP! DEEP! DISH PIZZA Lacks Acquired Distinctiveness for Pizza, Says TTAB

The TTAB ruled that an applicant, when seeking registration based upon acquired descriptiveness under Section 2(f), may rely on a "family of marks" argument to support its claim. Nonetheless, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal to register the mark DEEP! DEEP! DISH PIZZA, in standard characters form, for "pizza" [DEEP DISH PIZZA" disclaimed], finding that applicant's proofs fell short of establishing acquired distinctiveness. In re LC Trademarks, Inc., Serial No. 85890412 (December 29, 2016) [precedential].


By seeking registration under Section 2(f) applicant conceded that the applied-for mark is not inherently distinctive for the goods. In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1157n.3 (TTAB 2009) (quoting In re MGA Entertainment, Inc., 84 USPQ2d 1743, 1747 (TTAB 2007)). To establish acquired distinctiveness, a party must show that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself." In re Steelbuilding.com, 75 USPQ2d 1420, 1422 (Fed.Cir. 2005) (emphasis added by the Board). The more descriptive the term at issue, the greater the applicant's burden to prove acquired distinctiveness. Id. at 1424.

Applicant argued that the repetition of the word DEEP! alters the meaning and impression that are ordinarily conveyed by the single word DEEP alone. The Board disagreed. "Considering the meaning of the word 'deep' in the common expression 'deep dish pizza,' members of the relevant public would likely view the repetition of DEEP! merely as an emphatic description of the bountiful quality of Applicant’s deep dish pizza." See In re Disc Jockeys, Inc., 23 USPQ2d 1715, 1716 (TTAB 1992), (repetitive use of the term “DJ” as “DJDJ” for disc jockey services did not diminish its descriptiveness). Applicant's repetitive use of "DEEP!" underscored the highly descriptive nature of the term. Applicant's burden to proved acquired distinctiveness was therefore proportionately higher.

Applicant LC claimed that its mark is a member of a family of "double word" marks (each mark having a repeated word with exclamation points after each word), which contributes to the acquired distinctiveness of the subject mark. [E.g., PIZZA! PIZZA!, PARTY! PARTY!, and THANK YOU! THANK YOU!]. LC contended that "consumers will easily connect the DEEP!DEEP! DISH PIZZA mark with Applicant because in the world of pizza restaurants, double word marks mean [Applicant's exclusive licensee] Little Caesars."

The examining attorney's maintained that, as in ex parte Section 2(d) determinations, Applicant LC should not be permitted to invoke the family of marks doctrine. See, e.g., In re Hitachi, 109 USPQ2d at 1772; In re Mobay, 166 USPQ at 219; In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009). TMEP § 1207.01(d)(xi). The Board disagreed.

[A]n applicant may, in the context of ex parte prosecution of an application that has been refused registration under Section 2(e)(1), present evidence of a family of marks to help prove acquired distinctiveness of a new member of that family under Section 2(f).

The Board observed that LC bore the "substantial burden" to prove "first, that its claimed family of 'double word' marks has acquired distinctiveness, and second, that the public recognition of that family helps the subject 'family member' mark, in turn, acquire distinctiveness."

Mere ownership of a series of similar marks does not suffice to establish a family of marks. Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1337-38 (TTAB 2006); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1800 (TTAB 2001). To prove the existence of a family of marks, LC was required to show that the purported family "(1) has a recognizable common characteristic, (2) that is distinctive, and (3) that has been promoted in such a way as to create 'recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods or services.' Wise F & I, LLC v. Allstate Ins. Co., 120 USPQ2d 1103, 1109 (TTAB 2016) (citing Truescents, 81 USPQ2d at 1337-38). LC failed to satisfy any of those three elements.

First, the Board found that, although it is theoretically possible that a common structure could be the common element of a family of marks, here LC's structure consisting of a descriptive word and an exclamation point followed by the same word and another exclamation point "is too abstract to constitute a common characteristic that could give rise to a family of similarly-structured marks." Recognizing LC's double word structure would pave the way for LC to "enforce almost any descriptive word in the dictionary, as long as it repeats." This would create and unacceptable risk to competition, and would be analogous to a phantom mark.

Applicant LC's purported family also failed to satisfy the second required element, distinctiveness. Repetition of a word does not normally overcome its descriptive or generic nature. Double word marks like DEEP!DEEP!, punctuated by exclamation points, "are more likely to be taken as intensifiers than as source-identifiers."

Finally, Applicant failed to satisfy the third element: that the marks containing the family feature have been used and promoted together in a manner sufficient to create public recognition of the family. See In re 3Com Corp., 56 USPQ2d 1060, 1062n.4 (TTAB 2000).

We have reviewed all of the record evidence, including evidence not expressly mentioned above. In view of the broad and abstract nature of Applicant’s claimed family, as well as the degree of descriptiveness of its proposed mark, we find the evidence insufficient to support a finding of acquired distinctiveness of the putative family of marks.

Putting aside the "family of marks" argument, the Board also found insufficient the evidence that the applied-for mark by itself has acquired distinctiveness. The sales figures provided may show the popularity of the products but not necessarily consumer recognition of the mark as a source indicator. The sample advertising that applicant provided did not demonstrate its magnitude, geographic extent, duration, circulation or viewership. Moreover, the double-word marks are always displayed with other marks, including applicant's house mark, LITTLE CAESARS.

The Board concluded that Applicant LC failed to meet its burden of proving acquired distinctiveness, and so it affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog comment: Well well! Shouldn't LITTLE CAESARS have an apostrophe before the last "S"?

Text Copyright John L. Welch 2016.

Tuesday, January 03, 2017

Precedential No. 35: Third-Party Evidence Keys Dismissal of ROSE SENIOR LIVING Section 2(d) Opposition

According "significant weight" to applicant's evidence of third-party use and registration of marks containing the word "rose" for retirement home services, the Board dismissed this opposition to registration of the mark ROSE SENIOR LIVING for "Rental of apartments; rental of residential housing; management of senior housing communities (Class 36); Retirement homes; providing assisted living facilities; providing assisted living facilities for Alzheimer and dementia clients (Class 43); and Nursing home services; managed health care services (Class 44)" [SENIOR LIVING disclaimed]. Opposer had claimed a likelihood of confusion with its registered mark PRIMROSE for "providing congregate, independent, and assisted living facilities." Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, Opposition No. 91217095 (December 27, 2016) [precedential].


The Board found the services to be identical or nearly identical, and it therefore presumed that the relevant trade channels and classes of consumers were the same.

Turning to the marks, the Board first considered the sixth du Pont factor, the number and nature of similar marks in use on similar services. Applicant submitted evidence of eight existing registrations for marks containing the word "rose" in the field of assisted living services, and more than 90 websites showing various ROSE or ROSE-containing marks used in connection with senior living communities and related services. In addition, applicant provided expert testimony averring that the word "rose" is "commonly used as a naming convention for many senior living communities under different ownership." The expert listed 76 senior living communities using the word "Rose" as part of their names.

The Board observed that, in light of recent Federal Circuit decisions, this type of evidence - "even where the specific extent and impact of the usage has not been established" - is relevant to show that a term "may have a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that [term] is relatively weak," and "can show that customers have been educated to distinguish between different marks on the basis of minute distinctions." Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)).

The Federal Circuit indicated that evidence of extensive use and registration of a term by others as a mark can be "powerful on its face, even when the specific extent and impact of the usage has not been established." Jack Wolfskin, 116 USPQ2d at 1136.

Moreover, opposer's founder testified that, in at least five cases opposer did not purse legal recourse against known third-party users of PRIMROSE, and it made no effort to enforce its mark against any entity that did not include "Primrose" in its name.

The Board concluded that customers have been exposed to so many different ROSE and ROSE-formative marks and names in connection with senior living communities that they likely have become alert to "minute distinctions" between the various marks. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1691. Consequently, a mark comprising or containing the word "Rose" in this field should be given a restricted scope of protection. See In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565 (TTAB 1996).

In other words, Opposer’s mark PRIMROSE is not entitled to such a broad scope of protection that it is a bar to the registration of every mark comprising, in whole or in part, the word “Rose”; it will only bar the registration of marks “as to which the resemblance to [Opposer’s mark] is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two.” Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010) (quoting Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983).

With regard to the first du Pont factor, the similarity or dissimilarity of the marks, the Board observed once again that when the involved services are identical, a lesser degree of similarity is necessary to support a finding of likely confusion. It found ROSE to clearly be the dominant portion of applicant's mark. In opposer's mark, the initial element "PRIM" is prominent and gives the mark a sound and appearance different from applicant's mark.


As to meaning, each mark refers to a flowering plant, albeit different ones. Opposer pointed to the similarity in trade dress used by the parties, the Board noting that although it does not ordinarily look to trade dress for word marks (since the trade dress may be changed at any time), trade dress nonetheless may provide evidence as to whether the marks project confusingly similar commercial impressions. Here, the parties use a similar rose color and both include a picture of a flower. Thus the flower designs reinforce the meanings of PRIMROSE and ROSE.

In sum, although there are similarities between the marks, the marks are specifically different in sound, appearance and meaning. When viewed against the background of significant third-party uses and registrations as discussed above, these differences outweigh the similarities, resulting in different overall commercial impressions. We find that this factor weighs in favor of a finding of no likelihood of confusion.

Turning to the fourth du Pont factor, the conditions under which purchases are made, applicant's expert opined that the decision to purchase the involved services "is a very important, one-time decision and for most, is their largest lifetime expenditure." Opposer's witness indicated that prospective purchasers "do their research before making this decision," and that "clients shopping for assisted living services take great care in selecting the facility." The Board recognized, however, that in some cases, this decision is made hastily and under duress. Nevertheless, given the nature of the services and their high cost, the conditions of sale favor a finding of likely confusion. And even though the Board must consider the least sophisticated potential purchaser, "a decision as important as choosing a senior living community will be made with some thought and research, even when made hastily."

Therefore, the Board found that the sixth du Pont factor favored applicant.

Balancing the relevant du Pont, the Board concluded that confusion as to the source of the involved services is not likely, and it therefore dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: That trade dress is rather close, don't you think? Personally, I thought a primrose was a small rose. How many people do you think would know the difference?

Text Copyright John L. Welch 2016.

Friday, December 30, 2016

TTABlog Quarterly Index: October - December 2016

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Section 2(d) - Likelihood of Confusion:

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


Section 2(e)(4) - Primarily Merely a Surname:
Section 2(f) - Acquired Distinctiveness:
Application Requirements/Lawful Use/Specimen of Use:
Bona Fide Intent
Failure to Function:
Family of Marks:
Genericness:
Ownership:
Nonuse
Invalid Assignment Under Section 10:
Recommended Reading:
CAFC Decisions:
Other:
Text Copyright John L. Welch 2016.