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A recent decision from the U.S. Court of Appeals from the Federal Circuit (“CAFC”) reminds trademark owners that adopting marks that are merely descriptive may require a high level of proof to register on the Principal Register. See In re JC Hospitality LLC, Appeal Nos, 2018-2048 and 2018-2049 (Fed. Cir. February 28, 2020) [nonprecedential], where the CAFC agreed with the Trademark Trial and Appeal Board’s (the “Board”) decision finding the mark THE JOINT (in standard character format) merely descriptive of “restaurant, bar, and catering services” and “entertainment services, namely live musical performances, shows and concerts, and nightclub services.” The CAFC determined that substantial evidence supported the Board’s conclusions, on the grounds of merely descriptiveness and not acquiring distinctiveness, but did not address the Board’s finding of genericness.

The Board relied on several dictionary definitions and news articles, and determined that the mark immediately conveys the concept of a business establishment offering restaurant, bar, and entertainment services. The applicant raised the argument that the mark should register since it is a double entendre. Applicant insisted that THE JOINT was a reference to prison. However, there wasn’t enough evidence to show a relationship between a prison and bar and restaurant services.

The amount of evidence required to prove acquired distinctiveness (secondary meaning) is directly correlated with the degree of descriptiveness. To determine how much evidence is required for showing acquired distinctiveness, the Court or Board must assess the degree of descriptiveness in relationship to the goods or services. Here, the Board held THE JOINT in relationship to the services (bar and restaurant services) was highly descriptive. See our web page entitled, What Is Acquired Distinctiveness & Secondary Meaning, for general information on this topic. Many factors will be considered when evaluating if secondary meaning exists. Some of these factors include: (1) the market share held by the applicant; (2) consumer surveys or studies; (3) the length, degree and exclusivity of use; (4) the amount of applicant’s sales compared to competitors’ sales in the same industry; (5) the amount the applicant spent on advertising compared to its competitors’ advertising expenditures in the same industry; (6) intentional copying; and (7) unsolicited media coverage and the extent the press information was circulated to the general public.

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American University (“Petitioner”), a college located in Washington, DC filed a petition with the Trademark Trial and Appeal Board (the “Board” or “TTAB”) to cancel the mark AUK American University Of Kuwait & Design for educational services for college level courses. The grounds for cancellation were likelihood of confusion and priority, and nonuse, and counterclaims were asserted by American University of Kuwait (“Respondent”). The Petitioner owns several trademark registrations, including formatives of the mark American University where acquired distinctiveness is claimed.

These registrations were pleaded in the cancellation petition, including American University (standard characters) and AU (standard characters and a stylized mark) for educational services, namely courses of instruction on the college and graduate level. The Board did not decide the likelihood of confusion issue since it determined that the Respondent failed to use its mark “in commerce” prior to its application filing date. Thus, the TTAB determined that the mark AUK American University Of Kuwait & Design was void ab initio. See American University v. American University of Kuwait, Cancellation No. 92049706 (January 30, 2020) [not precedential].

This was a very lengthy decision by the Board. This blog will discuss only some of the many legal issues addressed in the Board’s decision. Regarding nonuse, if a use based application matures to a registration, it can still be challenged for nonuse. If an applicant files a use based application and fails to use the mark “in commerce” before the filing date of the application with any of the alleged services in a particular international classification, the entire class of goods will be held void ab initio. See Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043 (Fed. Cir. 2015); Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009). See also, our blog posts entitled, Proving Nonuse Of A Trademark Prior To The Application Filing and Trademarks Can Be Cancelled For Nonuse, for more on this topic. If the mark is a service mark then, “use in commerce” must include: (1) use of the mark in the sale or advertising of the services; and (2) rendering of the services in a manner that it impacts interstate commerce, rendering the services in more than one state in the U.S. or in the U.S. and in a foreign country.

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The Trademark Trial and Appeal Board (the “Board” or “TTAB”) recently reversed a refusal to register a mark on the grounds of likelihood of confusion. See In re Marathon Tours, Inc., Serial No. 86086458 (January 23, 2020) [not precedential]. In this case, it was a bit surprising that the Board justified its decision based solely on the marks being sufficiently different while finding the other relevant factors weighing in favor of finding a likelihood of confusion. The decision underscores a point that cannot be emphasized enough in trademark practice; descriptive marks severely restrict the scope of protection for those terms. The Board focused on the descriptive and generic terms in the registered mark.

The applicant was seeking registration on the Principal Register for the mark ANTARTICA MARATHON, in standard characters for “travel services, namely, organizing and arranging travel, travel tours, excursions, and sightseeing travel tours; providing travel guide and travel information services; and making transport reservation.” The applicant claimed acquired distinctiveness under 2(f) of the Trademark Act. The Examining Attorney accepted the 2(f) claim. However, the Examining Attorney cited the mark ANTARCTIC ICE MARATHON & 100K and Design for “Athletic and sports event services, namely, arranging, organizing, operating and conducting marathon races,” as likely to cause confusion with the applicant’s mark. The cited registration had a disclaimer for the term “ANTARCTIC ICE MARATHON & 100K” and for the design of the geographic representation of Antarctica. Upon issuance of a final refusal, the applicant appealed the refusal to register.

In its decision, the Board focused first on the marks. The shared terms in the parties’ marks were variations of “Antarctica” and “Marathon”. These terms are weak in relationship to the services. Registrant had to disclaim the terms since one describes the geographic location of the services and the other the type of race. Determining the strength of the terms is an important part of the analysis. See our recent blog post entitled, How To Overcome A 2(d) Likelihood Of Confusion Refusal, wherein it was emphasized, if shared terms are descriptive, additions to a mark may suffice to avoid likelihood of confusion. See also, the Trademark Manual Of Examining Procedure §1207.01(b)iii which discusses this point.

This rule emphasizes that if the terms common to both marks are generic or descriptive, it is unlikely that the terms will be perceived by consumers as source indicators, and that other differences between the marks may be adequate to obviate confusion. In other words, if consumers will not rely on the shared terms to distinguish source, additional terms in the mark may be able to differentiate the sources. Since the registrant’s mark contains generic and highly descriptive terms, the mark will receive a narrow scope of protection. The board concluded that applicant’s mark did not fall within the narrow scope of protection and therefore, the first du Pont factor weighed against finding confusion.

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In a recent Trademark Trial and Appeal Board (the “Board” or “TTAB”) decision a refusal is reversed based on the second DuPont factor. On the last day of December 2019, the Board issued a decision stating that the “related services doctrine (services provided in connection with the same goods) has no application here.” See In re Costa Farms LLC, Serial No. 87674168 (December 31, 2019) [not precedential]. In this case, the applicant was seeking registration of the mark GROW WITH US in standard characters on the Principal Register. The application identified the following goods, “Live flowers and living plants in International Class 31”. The Examining Attorney cited the mark, GROW WITH US in standard characters for the following services, “Distributorship services in the field of wholesale horticulture supplies and accessories” in International Class 35. The applicant appealed after the Examining Attorney issued a final refusal on likelihood of confusion grounds.

The Board, as in all decisions based on likelihood of confusion, stated that the two key considerations in the analysis are the similarities between the marks and the similarities between the goods and services. In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). Another important consideration is the similarity of the trade channels and whether there would be the same customers for the goods and services. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). If there are DuPont factors that are not relevant to the facts of a particular case, the Board will only consider the pertinent factors. The other factors are treated as neutral.

Since the parties’ marks were identical, the Board focused on the similarities and differences of the goods and services. On this point, the law requires that the goods and services be related in some manner and/or that circumstances involving the marketing give rise to a mistaken belief that the goods and services come from the same source. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). Analysis of the relatedness of the goods and services is based on the language used in the application and registration. One special rule that will apply here will be since the marks are legally identical there will be a lesser degree of relatedness required between the goods and services. See our blog post entitled, How To Overcome A 2(d) Likelihood Of Confusion Refusal, for more strategies in responding to Office Actions involving 2(d) refusals.

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In a recent Trademark Trial and Appeal Board (the “Board”) decision the Board granted the petition in part for partial cancellation for the mark POLO GIRL for the following services, “[e]ntertainment in the nature of ongoing television programs in the field of polo sports events, and polo lifestyle in International Class 41”. See  American Polo Association, LLC v. Elizabeth Scripps, Cancellation No. 92066032 (December 19, 2019) [not precedential]. However, the Board held the Respondent did not abandon the mark for organizing and conducting polo events for fund raising, even though there was two years on nonuse. The Board held that the Petitioner did not prove that the Respondent had intent not to resume use for the organizing and conducting of polo events.

The Petitioner alleged that the Respondent did not use the mark for the subject services prior to filing the use application or in the alternative abandoned its rights after the filing of the trademark application. It was proven that the Respondent had not used the mark prior to the filing date (March 3, 2011) for an ongoing television program for polo sports events. Prior to the filing date, the Respondent had produced three videos on the subject matter in hopes of it leading to a television series. Two of the three videos were posted on Facebook® and YouTube®.

The three videos did not constitute ongoing television programing. It was not broadcast over the air or via cable, only the Internet. The three videos were not part of an ongoing program aired on television. Plus, there was no dialogue on the first two videos and none of the three videos were connected to each other. Thus, the petition to cancel as to “entertainment in the nature of ongoing television programs in the field of polo sports events, and polo lifestyle” was granted.

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As of August 3, 2019, all trademark applicants that are foreign domiciled must have a U.S. licensed attorney file its trademark applications at the United States Patent and Trademark Office (“USPTO”), and act as its representative at the Trademark Trial and Appeal Board (“TTAB” or “Board”). This rule also applies to Canadian trademark filers, attorneys and agents. Many countries around the world have a similar rule, and the USPTO has decided to follow suit for several reasons. It is in the public interest to maintain a Trademark Register that accurately reflects those marks that are in use in U.S. commerce for the goods and services identified in the registrations. An accurate Trademark Register will not only protect consumers, but will allow U.S. businesses to grow their companies while being able to invest in their brands with the security that the USPTO maintains and monitors the integrity of the Trademark Register. Lastly, prospective applicants rely on the Trademark Register to provide critical information on trademark clearance.

A frequently asked question in my practice is what does it mean to have a foreign domicile? An individual or an entity can have a foreign domicile. This means that such domicile is not located in the U.S. or its territories. An individual’s domicile is the place a person lives or resides, and the individual views the domicile as its principal home. An entity also maintains a domicile and that is where it has a principal place of business. A principal place of business is where the entity’s officers or senior management directs and controls the operating activities of the company. Applicants and Registrants must maintain current addresses for their respective domiciles.

The USPTO will be proactive if they discover a domicile address outside the U.S. without representation by a licensed U.S. attorney, and the Trademark Office will issue an Office Action. This applies to post registration as well. The Office Action will require the applicant or registrant to appoint a U.S. attorney. It should be noted that currently, P.O. Boxes as domicile addresses are generally not acceptable any longer. Although, if there are multiple owners and one owner has a U.S. domicile then a U.S. licensed attorney is not required. Foreign domiciled applicants who submit an application based on Section 66(a) (a Madrid application) must also appoint a U.S. licensed attorney. Applications filed through the Madrid Protocol are submitted with the International Bureau of the World Intellectual Property Office, and then transmitted to the USPTO. However, the current Madrid application does not have a provision to designate a U.S. attorney, therefore until it does, the USPTO will not enforce the appointment of U.S. trademark counsel prior to publication. But, if the Examining Attorney issues an office action in a 66(a) application, then the Examining Attorney will require an appointment of a U.S. attorney.

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In a recent case decided in November 2019, the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) sustained an opposition filed by Baccarat S.A. on various grounds including likelihood of confusion. The applicant was seeking to register the mark BACCARAT in standard characters for alcoholic beverages, namely vodka. Baccarat (“opposer”) pleaded ownership of 20 of its registrations for the mark BACCARAT, some of the goods included, crystal, glasses, cups, vases, decanters, carafes, champagne buckets, jewelry, candle sticks, and tea pots. Since the Opposer pleaded its registrations, priority was not at issue. See our blog post entitled, How Fame Impacts A Likelihood Of Confusion Determination, for an earlier decision on this topic.

The Board reviewed the DuPont factors, and pointed out that if fame exists it plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection and exclusivity of use. See our webpage entitled, Famous Trademarks Receive A Broader Scope of Protection, for more information on this topic. The Board discussed how fame is determined. It stated that fame could be measured indirectly by the volume of sales and advertising expenditures for the goods and services identified by the mark at issue, and by the recognition received by independent sources, such as unsolicited media coverage. Also, important is the length of time the mark has been used for the relevant goods or services, and the general reputation of the goods and services. The numbers for sales, advertising and market share should be put into perspective by comparing the statistics to similar goods or services.

Opposer placed evidence into the record showing its predecessors-in-interest started producing glass products in 1764 in France and by 1892 had an import agency in New York. Production of glassware and other goods under the BACCARAT mark continued into current times. Sales figures were introduced that showed from the year 2000-2017 sales of BACCARAT branded goods and services totaled $458,430,809. Advertising figures demonstrated that from the years 2005-2017 $33,996,270 was spent to market its goods and services. The opposer advertises its branded goods in top magazines and newspapers such as Vanity Fair, Architectural Digest, The New York Times, The Los Angeles Times, and Forbes magazine.

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Section 18 of the Trademark Act (15 U.S.C. §1068) provides a plaintiff with a basis to restrict or limit the goods or services in a registration based on grounds of likelihood of confusion. Section 18 applies to inter partes proceedings. It is unclear as to whether Section 18 would also apply in civil actions. A recent case coming out of the U.S. District Court for the Western District of Virginia held that Section 18 would not apply in court. Here, the court dismissed a counterclaim under Section 18, finding no legal basis for applying Section 18 to civil actions.

In Trademark Trial and Appeal Board (“Board”) proceedings, a plaintiff can seek to restrict the application to only certain goods or services or to limit the identification in a specific manner, by adding wording that identifies the goods or services with greater particularity in terms of type, use or channels of trade. This request can be made of registrations over five years old and of those less than five years old. The reason for this is because it is considered an equitable remedy. A plaintiff can seek to oppose or cancel a registration in whole or in part, see Trademark Manual of Examining Procedure §309.03(a)(1).

The plaintiff must plead and prove that (1) amending the identification to restrict the goods and services in the application or registration will avoid a finding of likelihood of confusion and (2) the opponent is not using its mark on those goods or services that will be excluded from the application or registration. See Eurostar Inc. v. Euro-Star Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 (TTAB 1994). A claim such as this falls under the provision that gives the Board authority to restrict or rectify the register. See IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, (TTAB 2009)[precedential]; Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478 (TTAB 1998). To make this determination, the Board will look to see if the defendant is using the mark on the goods requested to be excluded as of the time the restriction is requested, (not as of the time the registration was sought). A plaintiff could plead that the description in the application or registration is ambiguous or overly broad and not specific to the mark actually used by the defendant, and that the limitation would obviate a determination of likelihood of confusion.

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In a recent reversal by the Board, emphasis was placed on the importance of du Pont factor number six; see In re Simpson Industries, Inc., Serial No. 87635385 (October 7, 2019) [not precedential]. This likelihood of confusion factor, the number and nature of similar marks in use on similar goods, has been growing in importance since the decision in Juice Generation, Inc. v. GS Enterprises LLC, 115 USPQ2d 1671 (Fed. Cir. 2015) [precedential]. A number of cases have followed this precedential case and subsequent cases have bolstered the support for the “crowded field argument”.  In the most recent case of In re Simpson Industries, Inc., there were 13 uses and five third party registrations submitted in the record. In this case, the applicant was seeking to register RAINFOREST NUTRITION in standard characters for dietary and nutritional supplements. The Examining Attorney refused the applicant’s mark based on the registered mark RAINFOREST ANIMALZ, in standard characters for nutritional supplements. After the final refusal, the applicant appealed to the Board.

The goods were in part identical; therefore the Board presumed that the channels of trade and the classes of purchasers were the same for the applicant and the registrant. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). The identity in part of the goods and the overlapping trade channels weighed heavily in favor of finding a likelihood of confusion. Moreover, since the goods are in part identical, a lesser degree of similarity between the marks is necessary to support a 2(d) refusal. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Here, the marks are similar because they share the term RAINFOREST. However, because the applicant was able to prove that the shared term RAINFOREST was conceptually and commercially weak for nutritional supplements, the Board determined confusion was not likely.

The applicant demonstrated that the term RAINFOREST is widely used by third parties for both branding, and as a descriptive term for nutritional supplements, including foods and beverages. The applicant offered evidence to show that retail stores commonly used the term RAINFOREST to sell nutritional supplements, such as “Rainforest Pharmacy,” “Rainforest Nutritionals,” “Organic Rainforest Company” and “Rainforest Foods”. In addition, the applicant submitted evidence of certain teas that used the term RAINFOREST for branding, while advertising that the teas promote health benefits. The Board found this evidence probative since it considered teas to be related goods, even though the goods did not come in a pill or capsule form.

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Receiving an Office Action that refuses your trademark application can be overwhelming. Most importantly, trademark applicants should be armed with knowledge of the general rules that apply so effective arguments can be crafted for a response to the Office Action. A common mistake is that applicants submit the wrong type of arguments in reply to a 2(d) Likelihood of Confusion Refusal. See our firm page entitled, Likelihood of Confusion Refusals, 2(d) Refusals, to review the 13 factors considered in this analysis. Below are ten critical rules for trademark applicants to keep in mind when confronted with a likelihood of confusion refusal.

Rule 1- What if you have legally identical or virtually identical marks? If this is the case then, a lesser degree of similarity between the goods and services will suffice to find a likelihood of confusion.  In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Gen. Mills, Inc. v. Fage Dairy Processing Indus. S.A., 100 USPQ2d 1584, 1597 (TTAB 2011); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). See also, In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).

Rule 2- What if the goods or services overlap or if the goods or services are identical or virtually identical, then a lesser degree of similarity between the marks is necessary to support a determination that confusion is likely. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); See also, Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).

Rule 3- What if only one good or service of a long list overlaps with the cited registration? As long as there is an overlap with any one good or service, the other goods or services in that particular class need not be examined. Typically, likelihood of confusion will be found in connection with the class of goods or services with any overlap at all. See In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010).

Rule 4- Another important rule dealing with goods or services that overlap or are identical is that the Board will presume that the distribution channels and the classes of consumers are the same for the applicant and the registrant. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011).

Rule 5- Be aware of the “Something More” Rule – When the relatedness of the goods and/or services is not evident, well known, or generally recognized, “something more” than the mere fact that the goods and services are used together must be shown. See, In re St. Helena Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) [precedential]. There is no per se rule as to what type of evidence will suffice under “something more”. Examples of types of “something more” evidence may include, a famous mark, actual use of a mark for both the goods and services at issue, or evidence of a large number of third-party registrations covering both the goods and services at issue. See, In re Coors Brewing Co., 343 F.3d at 1346, 68 USPQ2d at 1063.

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