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Disclaimers seem simple on the surface, but there are important issues to consider when determining whether or not to disclaim certain terms in a proposed trademark. See our webpage entitled, Trademark Disclaimers for the fundamentals on what a disclaimer is and why it might be required under trademark law for registration purposes. Examining Attorneys have discretion as to whether they require a disclaimer or not. The purpose of a disclaimer is to document that the Applicant does not have exclusive rights to a certain element of the composite mark apart from the composite. The disclaimer is recorded in the trademark prosecution history, and included on the certificate of registration, but the owner of the mark does not have to include a disclaimer on a label, in the packaging or in the advertising of the goods or services. A consumer will not be aware of a disclaimer.

Applicants should consult trademark counsel when evaluating the issue of whether a disclaimer should be included for the record of a trademark prosecution. At times, it may be in the best interests of the Applicant to argue against a disclaimer requirement suggested by the Examiner, and in the alternative consent to entry of a disclaimer if the proposed argument is not found persuasive. This type of alternative arguing is common practice at the United States Patent & Trademark Office (“USPTO”), and would not be viewed as a concession that the term is not inherently distinctive. Section 1213.01(d) of the Trademark Manual of Examining Procedures states that under this scenario, if the Examining Attorney determines the response of the Applicant is not persuasive, the Applicant must be given the option of asserting the disclaimer or appealing the underlying issue of whether the subject term is merely descriptive. However, if the Applicant opts to enter the disclaimer into the record, then it will be viewed as an admission that the term is not inherently distinctive.

Another issue to consider is how a disclaimer will impact a likelihood of confusion analysis. The disclaimed matter will be included in the analysis for purposes of likelihood of confusion. The mark must be regarded as a whole because consumers are not going to know that a part of the mark has been disclaimed. Consumers will view the mark in its entirety, and therefore when evaluating marks for likelihood of confusion, the disclaimed matter is considered as part of the entire trademark. See In re McI Communications Corp., 21 U.S.P.Q.2d 1534, 1991 WL 332552 (Comm’r Pat. & Trademarks 1991).

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Trademark practitioners can barely keep up with the decisions being issued by the Trademark Trial and Appeal Board (“TTAB” or the “Board”) in the area of surnames. In relatively recent times, the TTAB was focusing on the importance of the rareness of the surname. Then in the spring of this year, another shift occurred where the rareness factor was deemphasized with regard to the number of people having a surname the same as the mark. See the case of In re Beds & Bars Limited, 122 USPQ2d 1546 (TTAB 2017) [precedential]. Instead, the Board is now focusing on the media exposure of any “famous” or “public” figure with the surname the same as the proposed mark.

Multiple factors are considered to evaluate whether a trademark will be perceived as a last name. Among the factors to be considered in determining whether a term is primarily merely a surname are the following: (i) whether the surname is rare; (ii) whether anyone connected with applicant uses the term as a surname; (iii) whether the term has any other recognized meaning other than a surname; and (iv) whether the term has the “look and feel”’ of a surname or the structure and pronunciation of a surname; and (v) whether the term is sufficiently stylized to remove its primary significance of that of a surname. In re United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB 2000). See also, Miller v. Miller, 105 USPQ2d 1615 (TTAB 2013) [precedential].

In re Bed & Bars Limited, cited above, the proposed mark BELUSHI identified hotel, travel and restaurant services. Evidence was presented that only five people in the U.S. have the surname Belushi, and no one affiliated with the Applicant had the name Belushi. Yet the Examiner refused the mark on the Principal Register, finding it to be primarily merely a surname. The Board affirmed this 2(e)(4) refusal, focusing on the fame and publicity surrounding John and Jim Belushi (aka the Belushi brothers), arguing that their celebrity lives increase the public awareness of the surname.

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The Opposer or Petitioner in a proceeding before the Trademark Trial and Appeal Board (the “Board”) has the burden of proof to demonstrate there was no use of the mark in commerce prior to the time the trademark application was filed. This showing must be made by a preponderance of the evidence. Opposer or Petitioner may present a prima facie case of nonuse based on the Applicant or Registrant’s inability to present any evidence that there was use of the mark in commerce. If a prima facie case is established by Opposer or Petitioner, then the burden shifts to rebut the case by producing evidence that establishes interstate use in commerce by the filing date.

Opposer or Petitioner will obtain the evidence through discovery. Discovery may or may not include depositions. Evidence acquired through discovery must be made a part of the record. It is important that the Opposer or Petitioner make requests for production of documents, Interrogatory Demands, etc. seeking evidence of interstate sales of the goods or services branded with the mark. The responses to the discovery demands should be made a part of the record. It is possible that the responses may show that no documents were produced or the responses and documents could tend to indicate sales of the branded goods or services were not made. However, if no discovery requests are made or if the Opposer/Petitioner does not make the responses part of the record, the burden may not shift to the Applicant/Registrant.

See Julius Samman Ltd. v. Ibrahim Nasser and Serious Scents, Inc., Opposition No. 91210658 (October 31, 2016) [not precedential], where the Opposer did not submit into the record, responses to admission requests, document requests, or interrogatories showing that Applicant wasn’t able to produce documentary evidence to support use of the trademark in commerce. In this case, the Opposer attached supporting documents to its trial brief instead of properly make the documents a part of the record. The Board pointed out that materials attached to the trial brief cannot be given consideration, unless, the documents were properly made a part of the record during the taking of testimony, TBMP Section 704.04(b). In Julius Samman Ltd., the Opposer did not meet the burden of a prima facie showing that the Applicant wasn’t using the mark at the time the application was filed.

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Since the precedential decision of  In re Bay State Brewing Co., 119 USPQ2d 1958 (TTAB 2016), the Board has more carefully reviewed Consent Agreements. Some may say the TTAB has since been scrutinizing Consent Agreements, seeking to find very detailed reasons for why confusion will not occur between two sources in the marketplace. For more on the influential case of In re Bay State Brewing Co., see our blog post entitled, A Recent TTAB Decision Impacting Consent And Coexistence Agreements. After the issuance of this decision, other decisions followed in the trend of rejecting Consent Agreements. The latest in this line is In re 8-Brewing LLC, Serial No.86760527 (October 30, 2017) [not precedential]. This decision affirmed the refusal of the Applicant’s mark and stated that the restrictions set forth in the parties’ Consent Agreement would not eliminate confusion in the market place.

8-Brewing LLC, (the “Applicant”) was seeking registration on the Principal Register of the mark, 8-BIT ALEWORKS, for beer in standard characters. The mark was refused due to a likelihood of confusion with the registered mark 8 BIT Brewing Company (a word mark and also a design mark with the same literal terms) for beer, ale, lager, stout and porter, malt liquor and pale beer. The parties submitted a Consent Agreement as part of the record of evidence. A Consent Agreement is evaluated under du Pont factor ten, the market interface between the Applicant and the owner of a prior mark.

The Board commenced its review with the goods identified in the trademark application and registrations. Part of the parties’ identifications is identical, “beer”. Because there is an overlapping identical good, it is presumed that the channels of trade and classes of purchasers are the same. Another presumption that attaches when the goods are identical is the “degree of similarity necessary to support a conclusion of likely confusion declines”. See Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). The relatedness of the goods as described in the application and registrations, weigh in favor of finding a likelihood of confusion.

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In a recent Trademark Trial and Appeal Board (“TTAB” or the “Board”) decision issued on October 13, 2017, the TTAB rejected the Applicant’s claim of acquired distinctiveness. See John Edward Guzman d/b/a Club Ed Surf School and Camp v. The New Santa Cruz Surf School, LLC, Opposition No.912208843 (October 13, 2017) [not precedential]. The New Santa Cruz Surf School, LLC (“Applicant”) filed an application with the United States Patent & Trademark Office (“USPTO”) for the mark SANTA CRUZ SURF SCHOOL in standard characters. Applicant sought to register the mark on the Principal Register under Section 2(f) of the Trademark Act (claiming acquired distinctiveness). Applicant was providing surfing lessons under the mark. In addition, the Applicant applied to use the mark for a website that provided information on surfing.

If a mark is not inherently distinctive, an applicant may be able to show that the mark has developed distinctiveness or secondary meaning through evidence submitted to the USPTO. See our web page entitled, What Is Acquired Distinctiveness & Secondary Meaning?, and review the three types of evidence that may be submitted to demonstrate acquired distinctiveness. In the case at bar, Applicant was claiming it used the mark in commerce for five years. Applicant was required to disclaim the term “Surf School” being that it was generic for its services. That being the case, the only remaining element of the mark is a geographically descriptive term. Santa Cruz is a city in California. The only option for registering this mark on the Principal Register would be to prove acquired distinctiveness. For the differences between the Principal and Supplemental Register, see our web page entitled, Filing Your Trademark On The Principal and Supplemental Register

A competitor of the Applicant, Club Ed Surf School, (“Opposer”) filed a Notice of Opposition. The Opposer claimed the mark SANTA CRUZ SURF SCHOOL was geographically descriptive and that the Applicant’s use was not substantially exclusive and continuous over the five year period. In addition, the Opposer claimed that the mark, SANTA CRUZ SURF SCHOOL was generic. The Board reviewed the evidence submitted on the generic claim first and concluded that the Opposer failed to meet its burden and dismissed the claim.

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In a very recent Trademark Trial and Appeal Board (the “Board”) decision, there was a reversal of a 2(d) refusal. See our webpage entitled, Likelihood Of Confusion Refusals, for more information on the likelihood of confusion analysis and the DuPont factors. The case here involved the marks MMD & Design  for “levelling rods; surveying chains; surveying compass needles; surveying instruments; surveying machines and instruments; transits; tripods,” and MMD (standard characters) for “laser scanners for industrial inspection and for geometrical measurement, and not for use with land surveying equipment; software for collection and interpretation of data in the operation of laser scanners, not for use with land surveying equipment,”. See In re Nikon Corporation, Serial No. 86828751 (October 6, 2017) [not precedential]. The Board first examined the similarities and dissimilarities between the marks.

Both trademarks share the letters MMD. However, the parties based their marks on different words. The Board held that the derivation was of no particular significance to the Board. It is common for applicants to adopt marks that are acronyms for their corporate or trade names. The Board emphasized that this was unimportant because consumers are likely not to be aware of the derivation. Because the relevant purchaser would perceive the letters in the respective marks as arbitrary, the registrant’s mark will receive a broad scope of protection. Part of the rationale for granting a wide scope of protection to arbitrary letters is that it is difficult to remember and thus would be tantamount to a fanciful trademark. In the end, the Board determined that the two marks would carry the same meaning and commercial impression.

Regarding the design element in the registrant’s mark, the Board cited the general rule that when words and design elements are used together, the words are generally considered the dominant element of the mark. Often dominant elements are given more weight. Had there been third-party evidence in the record showing the dominant element of the mark was weak or diluted, the design element could have taken on a more significant role in distinguishing the mark. However, that was not the case here. Consumers were not conditioned to encountering multiple MMD branded products in the marketplace. The Board concluded that the marks were similar in sight, sound, meaning and commercial impression.

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In this recent Trademark Trial and Appeal Board decision, In re Fowles Wine Pty Ltd., Serial No. 79157017 (September 15, 2017) [not precedential], the Board affirmed the refusal of the Examining Attorney. The interesting aspect to this decision is one of the grounds for refusal was failure to function as a trademark (the other ground was the mark was merely descriptive of the goods). The Applicant was seeking to register the mark FARM TO TABLE for wines in standard characters. After the refusal was made final, the Applicant appealed to the Board.

To support the refusal, the Examining Attorney submitted printouts from numerous commercial websites, illustrating how third parties in the industry use the term “Farm to Table”. These web pages included excerpts and references such as: (1) “Farm to Table Wine Dinners…”; (2) “Farm to Table Wine and Cooking Adventure”; (3) “Farm to Table Wines…”; (4) “Freas Farm Winery is focused on serving high quality farm to table wines”; (5) “Farm to Table Wine Tasting featuring local farmers and organic wines from Bonterra Vineyards…”; and (6) “Farm to Table Wine and Food”. In addition, the Examining Attorney introduced into evidence articles from major newspapers discussing the phase, Farm to Table in connection with wine.

In an attempt to counter this evidence, the Applicant submitted third-party registrations for FARM TO TABLE formative marks for food products and related services. The Board held that the multiple third-party registrations were of little probative value because the printouts did not show if such registrations were allowed to register under a claim of acquired distinctiveness under Section 2(f) of the Trademark Act. In addition, the printouts did not show if the registrations required a disclaimer or if the registrations registered on the Supplemental Register.

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Earlier this summer the Board relied on the “Something More” standard in reversing a refusal to register a trademark for beer. See In re Iron Hill Brewery, LLC, Serial No. 86682532 (July 28, 2017). The Applicant was seeking to register the mark CANNIBAL in standard characters for beer. There was a registered mark CANNIBAL for restaurant services and the Examining Attorney held that there was a likelihood of confusion between the two CANNIBAL marks. See our blog post entitled, The Origin Of The Something More Standard In Trademark Law, for a review of prior cases applying this standard. The application of this standard can be traced back to In re Coors Brewing Co. 343 F.3d 1340 (Fed. cir. 2003) and Jacobs v. Int’l Multifoods Corp., 668 F.ed 1234 (CCPA 1982). Cases following have expanded the reach of this standard in likelihood of confusion cases.

In this case, the Examining Attorney refused Applicant’s CANNIBAL mark for beer on 2(d) grounds and made this refusal final. The Applicant appealed to the Board after the request for reconsideration was denied. The Board started its likelihood of confusion analysis with evaluating the goods and services. Since the marks are identical, the Examining Attorney was required to show something more than the same mark was used to brand restaurant services and food or beverage products. In other words, the Examiner could not simply argue that since restaurants occasionally sell their own beer, beer and restaurant services are related. There is no general rule in trademark law that certain goods and services are related.

In prior cases, the Board found the “something more” standard satisfied, when evidence has been shown that registrant’s mark is very unique and strong or if there was evidence that Applicant’s restaurant specialized in Registrant’s type of food products. See In re Coors Brewing Co., where the Court held that it was not sufficient to find a relatedness of the goods and services based only on the fact that a tiny percentage of all restaurants use the same mark for both its restaurant services and to brand beer. The Examining Attorney in this case, produced evidence of websites from restaurants and argued that these restaurants also sold beer, but did not show evidence that the same trademark was used to brand both the restaurant services and the beer.

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The Trademark Trial and Appeal Board (the “Board”) issued a decision two days ago that reaffirmed to trademark practitioners that the doctrine of foreign equivalents must be seriously considered when conducting trademark clearances and rendering trademark clearance opinions to clients. See In re S Squared Ventures, LLC, Serial No. 86813357 (August 16, 2017) [not precedential]. In this recent case, S Squared Ventures, LLC (“Applicant”) filed to register the mark UHAI in standard characters for hair products in international class 3. Among the products identified in the application were shampoo, conditioner, oil, foam, gel, etc. The Examining Attorney refused the application citing a likelihood of confusion with the registered mark for LIFE FOR HAIR (stylized) for hair care products.

Applicant appealed the refusal and requested reconsideration. The request for reconsideration was denied and the appeal proceeded. Marks are compared for sight, sound, meaning and commercial impression. It is well settled law that any one of these factors could be enough to find a likelihood of confusion. The interesting aspect of this case is that on their face, the two marks do not appear to be similar in appearance and sound. If you were not familiar with the doctrine of foreign equivalents, you could have been surprised by the refusal.

Applicant’s mark UHAI is a term in Swahili that directly translates into English and it means “Life”. Applicant did not deny that the term had a direct translation. Under the principle of foreign equivalents a trademark that has a meaning in a foreign language and a equivalent meaning or direct translation in English can be found to be confusingly similar. See our web page entitled, The Trademark Doctrine Of Foreign Equivalents for the fundamental elements that comprise this doctrine.

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