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The Internet Corporation for Assigned Names and Numbers (“ICANN”) adopted The Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) to resolve any disputes that arise between parties over the registration and use of domain names. The Policy was adopted by all ICANN accredited registrars and is incorporated by reference into your Registration Agreement with your registrar.

Since the wake of the new generic top-level domains (gTLD) another system has been put into place to facilitate trademark owners in policing their brands, the Uniform Rapid Suspension System (URS). As technology continues to grow and evolve we strive to keep pace and the URS was designed to provide a quick and cost effective procedure for clear-cut infringing domain names. It was designed to complement the existing UDRP. See our web page entitled: Update On The New Generic Top Level Domain Name Program for details regarding the new program.

To be successful and obtain relief under ICANN a complainant must prove all of the following prongs:

(i) that the domain name is registered by the respondent and is identical or confusingly similar to a trademark or service mark in which the complainant has rights: and

(ii) that the respondent has no legitimate interest in the domain name: and

(iii) the domain name has been registered and used in bad faith.

Regarding the first prong, its purpose is essentially to demonstrate standing. Typically, if you own a federally registered trademark or if you can prove you have common law rights and have acquired secondary meaning you will have standing to bring a UDRP complaint if the mark you have rights in is confusingly similar to the domain name registered by the respondent. To compare the domain name and trademark, there is a visual and aural comparison. Panels have agreed that if the dominant feature of the mark is similar or identical then adding a subsidiary word to the dominant element will not typically obviate the confusion for the purposes of the first prong requirement. If the complainant is asserting common law rights, it must show the mark has become a distinctive identifier associated with the goods or services and that secondary meaning has developed.

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There are many reasons to encourage applicants to select inherently distinctive trademarks. Adopting a mark that is merely descriptive will not allow an applicant to acquire the majority of benefits granted by federal trademark registration. In addition, an applicant selecting a descriptive mark must demonstrate that the mark has acquired distinctiveness if the trademark is to be registered on the Principal Register.

In a recent precedential decision from the Trademark Trial and Appeal Board (the”Board”), the applicant’s mark was refused because the Board held that the mark was merely descriptive of the goods and the applicant failed to show there was acquired distinctiveness. Reckitt Benckiser LLC (the “Applicant”) filed applications to register two marks, MINIMELTS and MINI-MELTS for pharmaceutical preparations for use as an expectorant in international class 5. Mini Melts, Inc. (the “Opposer”) objected on the grounds that the Applicant’s marks would cause confusion with his mark MINI MELT for ice cream and that it is merely descriptive of Applicant’s goods. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464 (TTAB 2016) [precedential].

Opposer was able to establish standing for its likelihood of confusion claim, by proving that it had a “real interest” in the opposition proceeding, a “direct personal stake”, and a “reasonable basis” for its belief that it would be damaged if the Applicant’s trademark was registered. This burden was met because the Opposer demonstrated his use and registration for the mark MINI MELTS for ice cream. Since the standing criteria was met for likelihood of confusion, Opposer may assert any other ground that may demonstrate the Applicant is not entitled to register its mark.

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On first glance, this decision appears to be an unexpected result especially in light of the prior registration owned by the Appellant for the word mark CHURRASCOS for the same restaurant services. However, when viewing general principles of trademark law, maybe the outcome is not so unexpected. Regardless of your opinion, perhaps the easiest way to understand this ruling is to conclude that the mark has become generic over time. The Appellant in this matter, Cordua Restaurants, Inc. (“Cordua”) owns five restaurants marketed under CHURRASCOS. The restaurants feature South American dishes, including chargrilled Churrasco Steak. Years earlier, Cordua applied to the United States Patent & Trademark Office (“USPTO”) for the mark CHURRASCOS in standard character format for restaurant and bar services and catering. CHURRASCOS, the word mark registered on the Principal Register on June 3, 2008 under Section 2(f) after showing the mark acquired distinctiveness.

A few years later, Cordua attempted to register CHURRASCOS for the same restaurant services, but in a stylized format and it was refused. Cordua appealed to the Trademark Trial and Appeal Board (the “Board”) and it affirmed the Examiner’s refusal on the grounds that the mark was generic for restaurant services. See In re Cordua Restaurants LP, 110 USPQ2d 1227 (TTAB 2014) [precedential]. Cordua argued that its prior registration should be prima facie evidence of the mark acquiring distinctiveness. However, the Board responded by stating that if the mark is highly descriptive, additional evidence is required to prove distinctiveness. Cordua appealed to the U.S. Court of Appeals for the Federal Circuit (“CAFC”). See In re Cordua Restaurants, Inc.118 USPQ2d 1632 (Fed. Cir. 2016).

The CAFC affirmed the finding of the Board, holding there was substantial evidence to find the mark CHURRASCOS was generic for restaurant services. A generic term is a common descriptive name for a class of goods or services. The critical issue is whether the relevant consumer base primarily understands the subject term to refer to the class of goods or services in question. Proof of the public’s understanding of the subject term should be submitted into evidence from reliable sources such as dictionaries, online sites, publications, and newspapers. The USPTO bears the burden of proving that the mark is generic by clear and convincing evidence.

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Janco, LLC (the “Applicant”) applied to the United States Patent & Trademark Office (the “USPTO”) to register the mark FLATIZZA for pizza in international class 30. Doctor Associates, Inc. (the “Opposer”) filed an opposition with the Trademark Trial and Appeal Board (“the Board” or the “TTAB”) claiming prior use of the mark FLATIZZA for flat sandwiches. Opposer claimed that the Applicant did not use the mark in “commerce” prior to filing its trademark application. If Opposer can prove this allegation the application will be deemed void ab initio.

The parties do not contest that the marks are confusingly similar and that the goods are related. Therefore, the only issue to resolve in this matter is who maintains priority of use over the mark FLATIZZA. Applicant filed its trademark application on February 24, 2014. At this time, Applicant owned one restaurant in a single location. Under the Trademark Act Section 1(a) the owner must use the trademark in “commerce” and “commerce” has a legal definition. The definition includes the following types of commerce: (1) interstate; (2) territorial (commerce within a territory of the United States, Guam, Puerto Rico, American Samoa or the U.S. Virgin Islands or between the U.S. and a territory of the U.S.); and (3) between the United States and a foreign country. Commerce within one state only will not qualify as a basis for filing a federal trademark application unless it impacts one of the three types of commerce that Congress can regulate. If there is only intrastate commerce, see our web page entitled, State Trademark Registration, for details on how to file a state application.

In prior holdings, courts and the Board have found that a single restaurant location using its mark for restaurant services is engaged in commerce that Congress can regulate. See Larry Harmon Picture Corp. v. Williams Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991), where the court held that a single restaurant location used its mark in commerce based on customers traveling across state boundaries to reach the restaurant location. In that case, it was shown that the restaurant was approximately one hour from a city that contained a population from three different states and that the restaurant had been featured in publications from different states. The Court concluded that while there is no requisite level of interstate commerce required before filing a federal trademark application, some use in commerce must be shown.

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One of the most frequently asked questions in our law practice is who should be the legal owner of a trademark. It is hard to believe that the “name section” of the trademark application is the section most frequently incorrectly completed of all the sections of the trademark application. If the wrong entity is named as the trademark owner, the application and registration may be void. In other words, a trademark registration may be invalid if the owner is not the person or entity that controls the nature and quality of the goods or services provided under the mark. If there is no business entity formed and you as an individual control the nature and quality of the goods and services, then the proper owner is you the “individual”. You will need to indicate your legal name and an address, in addition to recording your citizenship on the trademark application.

The general principal of trademark law is that the individual or legal entity that uses the mark owns the mark, unless use is by a related company or licensee. U.S. law recognizes use by a related company or licensee if the use inures to the benefit of the trademark owner. Often the reason for having another entity use the mark and another entity own the trademark is to protect a trademark or trademark portfolio from being forfeited in litigation, should there be a money judgment against the legal entity using the trademark. It should be noted, that in any license agreement it must be clear that the owner of the trademark will control the nature and quality of the goods or services and the license agreement should explicitly state how the control is exercised.

In addition, to an individual, a corporation, partnership, sole proprietorship, LLC, trust, estate, joint venture or joint applicants may be the proper legal owner of a trademark. When recording information on a trademark application, with respect to a business entity that is formed you must indicate the state where it is formed and the name and address of the business entity. For a sole proprietorship you must name the name of the sole proprietorship, provide the address, the state where it was formed and the name and citizenship of the sole proprietor.

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Florists’ Transworld Delivery Inc. (the “Applicant”) attempted to register its mark, a slogan, SAY IT YOUR WAY for two types of services. Only one service is at issue on appeal before the Trademark Trial and Appeal Board (the “Board”). The Examining Attorney refused the application for “creating an on-line community for registered users to participate, in discussions, get feedback from their peers, form communities, and engage in social networking featuring information on flowers, floral products, and gifts” in international class 42. The refusal was based on the applicant’s specimen failing to show the mark used with the services identified in Applicant’s trademark application. Applicant attempted to submit a substitute specimen that also failed to evidence the mark used with the relevant services. See In re Florists’ Transworld Delivery, Inc. Serial No. 85164876 (May 11, 2016).

Applicant’s specimen consisted of pages from his Twitter account located at https://twitter.com/ftdflowers. Applicant argued that the pages reflected discussions between the Applicant, its fans and customers. He further argued that Twitter is a social media service that permits its users to post short messages and for the messages to be viewed by those who follow that user’s account. In circumstances of a service mark application, the specimen must show the trademark as used in the sale or advertising of the services. See In re Graystone Consulting Assocs., Inc. 115 USPQ2d 2035 (TTAB 2015), where it was held that a service mark must be used in a manner that is readily perceived as identifying the services by relevant consumers. This is determined by a thorough review of the specimens.

Service mark specimens typically consist of advertising, promotional, and informational material and these may include pages from a website or pages from a Twitter account. However, the pages must show the mark in the advertisement of the services identified in the trademark application and create an association between the mark and the services. Use of the trademark must also identify and distinguish the services. This point is illustrated in the case In re Johnson Controls, Inc. 33 USPQ2d 1320 (TTAB 1994).

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Applicant was refused registration for two marks: (1) JAWS in standard characters and (2) JAWS DEVOUR YOUR HUNGER in standard characters. The services identified in the trademark applications were entertainment services, namely the streaming of audiovisual material via an Internet channel providing programming related to cooking. The Examining Attorney refused registration based on Section 2(d) of the Trademark Act, stating that Applicant’s marks too closely resembled Registrant’s mark JAWS for video recordings in all formats all featuring motion pictures. See In re Mr. Recipe, LLC, 118 USPQ2d 1084 (TTAB 2016) [precedential].

As in any likelihood of confusion analysis, the starting point is the similarities of the marks and the relatedness of the goods and services. Two marks will be found to be confusingly similar if there are sufficient similarities in visual appearance, sounds, meanings, and overall commercial impressions. If a consumer believes that there would be a connection between the parties, this will favor finding a likelihood of confusion. The Trademark Trial and Appeal Board (the “Board”) determined the marks weighed in favor of finding likelihood of confusion.

With regard to the services, the Applicant identifies streaming of audiovisual material, but restricts the  subject matter to cooking. The Registrant’s goods for motion pictures do not contain a restriction. Therefore, the subject matter of Registrant’s movies could feature cooking. The Examining Attorney introduced 41 third-party registrations offering both video recordings and streaming video services. Since the registrations are based on use in commerce, they carry some probative weight for demonstrating that the goods and services may emanate from the same source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Applicant failed to submit evidence to contradict this point. The Applicant should have introduced evidence pertaining to the number of registrations for motion pictures and the number for services for streaming audiovisual material to demonstrate that there was a minimal overlap.

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Two weeks ago the Trademark Trial and Appeal Board (the “Board”) issued a precedential decision involving issues of parent and subsidiary trademark use and abandonment. See Noble Home Furnishings, LLC v. Floorco Enterprises, LLC, Cancellation No. 92057394 (April 4, 2016) [precedential]. Noble Home Furnishings, LLC (the “Petitioner”) filed a petition to cancel the word mark NOBLE HOUSE for furniture owned by Floorco Enterprises, LLC (the “Respondent”). The grounds for cancellation were abandonment and fraud. Petitioner’s application was attempting to register the mark NOBLE HOUSE HOME FURNISHINGS for various services including online retail store services featuring furniture and home furnishings. Respondent did not contest Petitioner’s standing in the matter. Petitioner asserted that it filed a trademark application that was rejected on likelihood of confusion grounds due to Respondent’s registration.

The first ground asserted in the petition to cancel was abandonment. To prove this claim before the Board a party must show that there is non-use of the trademark and that there is no intent to resume use. If a plaintiff or petitioner can show three years of consecutive non-use then it has satisfied its burden of proof to show a prima facie case of abandonment. Then, it is up to the registrant or respondent to rebut this presumption by showing use of the trademark or intent to resume use of the mark.

The Respondent filed a Statement of Use on August 18, 2011. The last documented sale under the mark NOBLE HOUSE was on July 14, 2009. Since that date, the Respondent claimed it periodically marketed the products, but there were no further sales. Although, one would think that the period of nonuse would commence after the last sale date, the Board held that the three-year period would start running from the date the Respondent filed its Statement of Use. The rationale for this finding is that an intent-to-use applicant is under no requirement to use its trademark until it files the Statement of Use. To prove use in commerce for goods under Section 45 of the Trademark Act, the mark must be placed on the product and the goods sold or transported in commerce. Typically, there can be no use in commerce unless there is either sales or transportation of the goods even if there is marketing and promotion.

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A Consent Agreement is a written agreement between two trademark owners where typically one party agrees that the other party can use and register its mark. It is usually triggered by a refusal issued in an Office Action by the USPTO. See our web page entitled, Resolving Trademark Disputes Without Litigation, for general information regarding how a Consent Agreement can aid in registering a trademark or in facilitating a resolution in a trademark dispute. In a recent case before the Trademark Trial and Appeal Board (the “Board”) it was determined that the parties’ Consent Agreement was not sufficient to avoid a likelihood of confusion between the sources of the trademarks. See In re Bay State Brewing Company, Inc., Serial No. 85826258 (TTAB February 25, 2016) [precedential], where the Board in a precedential decision determined that despite the parties’ Consent Agreement, consumer confusion was likely to occur.

Bay State Brewing Company, Inc. (the “Applicant”) filed an application for the mark TIME TRAVELER BLONDE in standard characters for beer. The Examining Attorney refused the application on the grounds that when the mark TIME TRAVELER BLONDE is used with the Applicant’s goods it causes a likelihood of confusion with a previously registered word mark, TIME TRAVELER for beer, ale, and lager. There was a final refusal issued and an appeal followed.

Under a 2(d) analysis, all the du Pont factors that are relevant to the facts in evidence are considered. The Applicant offered a Consent Agreement for consideration. It is relevant because it relates to the market interface between the Applicant and the Registrant. Regarding the relatedness of the goods, both parties are using the trademarks to brand beer. Therefore the goods are identical with respect to beer. Because the goods are in part identical, the trade channels and classes of consumers are presumed to be the same. Another factor weighing in favor of finding a likelihood of confusion is the condition of sale. Beer is inexpensive and often subject to impulse purchases.

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Yes there are differences between a refusal issued on deceptive grounds and one issued because the mark is deceptively misdescriptive. Under the Trademark Act, Section 2(a) a mark cannot register on either the Principal or the Supplemental Register if it is held to be deceptive. An example would be a mark that falsely describes the material content of a product. The following marks were held to be deceptive TEXHYDE AND SOFTHIDE for synthetic fabrics and imitation leather material. See Intex Plastics Corporation, 215 U.S.P.Q. 1045 1982 WL 52076 (TTAB 1982). Compare this finding with A.F. Gallun & Sons Corp., where it was held that the trademark COPY CALF was not deceptive for billfolds and wallets even though it was not made of leather because it was found to be a play on words. The rationale was that consumers would understand COPY CALF to be a pun related to the phrase copy cat insinuating the goods were made of imitation material.

The Federal Circuit has enunciated a test utilized to determine if matter is deceptive and thus not registrable at the United States Patent & Trademark Office:

(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?

(2) If it is misdescriptive, then would a potential consumer likely believe that the misdescription actually describes the goods?

To prove this prong of the test an Examining Attorney could produce evidence that consumers regularly encounter goods or services containing the characteristic alleged in the mark. For example, in a case where the mark was LOVEE LAMB for seat covers and the seat covers were not made of lambskin, the Examiner provided evidence that seat covers can be and sometimes are made of lambskin. In that case, the Examiner concluded that the mark LOVEE LAMB was deceptive for seat covers.

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