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Westchester Women's Bar Association
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In a recent Board Decision, the Petition for Cancellation was dismissed because Petitioner relied on its common law rights while alleging likelihood of confusion and priority, and was unable to prove acquired distinctiveness (secondary meaning) for its mark LITTLE NOTES for announcement cards; greeting cards; note cards; postcards and greeting cards; printed invitations. See Comptime, Inc. DBA Comptime Digital Printing v. E. Francis Paper, Inc., Cancellation No. 92073884 (May 10, 2023) [not precedential], where the Petitioner sought to cancel the Respondent’s mark LITTLE NOTES registered on the Supplemental Register. Both parties used its mark for postcards, greeting cards and note cards, among other goods in class 016.

There was no dispute that the parties were using the identical term, LITTLE NOTES for goods that were in part identical. Therefore, the primary issue in this cancellation proceeding was priority. The Petitioner is required to prove it owned proprietary rights in a mark similar to a registered mark. West Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660 (Fed. Cir. 1994). Proprietary rights may arise from a variety of scenarios such as a prior registration, prior trademark or service mark use, prior use as a trade name, prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights.” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002). Petitioner’s mark must be distinctive to prevail. See our web page entitled, What is Acquired Distinctiveness & Secondary meaning for more on the topic. Distinctiveness can be inherent or proven through evidence of acquired distinctiveness (secondary meaning). If the term is not distinctive, no trademark rights exist. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). Since the Board determined that Petitioner’s mark was highly descriptive of the identified goods, its burden of establishing secondary meaning is comparably high.

Acquired distinctiveness may be proven through consumer surveys, testimony, declarations, or though circumstantial evidence such as length, degree and exclusivity of use, amount and type of advertising, the amount of sales, the number of customers, intentional copying, and unsolicited media coverage. Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018). The Petitioner submitted evidence of customer reviews, but the reviews did not prove that consumers recognize the trademark LITTLE NOTES as a source identifier. In addition, there was a declaration submitted attesting to use in commerce since September 4, 2013. If the mark was not determined to be highly descriptive, perhaps this type of evidence could have been accepted as prima facie evidence of acquired distinctiveness. But, the Board pointed out that almost ten years of substantially exclusive use here is not particularly persuasive given the degree of descriptiveness.

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A recent precedential case from the Trademark Trial and Appeal Board (“TTAB” or the “Board”) highlights the problems associated with adopting weak marks. See Shenzhen IVPS Technology Co. Ltd. V. Fancy Pants Products, LLC, 2022 USPQ2d 1035 (TTAB 2022) [precedential], where the Board dismissed an opposition under Section 2(d) of the Lanham Act because the weakness of the common element SMOK/SMOKES mandated the opposer’s mark be given a narrow scope of protection. In addition to battling enforcement of a weak mark, the opposer did not prove an overlap of trade channels. However, the Board determined that opposer’s electronic cigarettes were related to the applicant’s cigarettes containing tobacco substitutes because both products could be used for the same purpose, vaping or smoking a substance.

Regarding the marks, the Board also held that Applicant’s SMOKES (& Design) mark was the phonetic equivalent of Opposer’s mark, SMOK mark. The interesting twist to this precedential decision is that typically once the Board determines the marks are phonetic equivalents and the goods are related, often the opposition based on 2(d) grounds is sustained, but not so here. Here, the weakness of the opposer’s mark played a pivotal role in dismissing the opposition. See our firm page, Disadvantages of Descriptive Trademarks, for more on this topic.

The mark SMOKES or its phonetic equivalent SMOK is descriptive in connection with Opposer’s electronic cigarettes, parts, and accessories and retail store services featuring those goods. Therefore, the applicant correctly argued that the common wording [SMOKES and SMOK] dictated  a narrow scope of protection be given to opposer’s mark due to its descriptive nature. In fact, the Board relied on the well-established principle that when the word portion of a mark is highly suggestive or descriptive, the presence of a design may be a more significant factor. See In re Hamilton Bank, 222 USPQ 174, 179 (TTAB 1984).

Moreover, if the shared element of the two marks is “weak” in that it is generic, descriptive, or highly suggestive of the goods or services identified in the application or registration, then other matter in the marks may be sufficient to obviate confusion. See In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986). See also, See Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, at *17 (TTAB 2020). The Board held that the pronunciations were similar and so were the meanings of the applicant’s and the opposer’s marks. Lastly, the Board stated, “Opposer’s SMOK mark and the literal portion of Applicant’s composite mark, SMOKES, have similar commercial impressions because they may evoke smokable goods or goods used for smoking.” However, when considering the marks in their entireties, the Board emphasized that the design features in the applicant’s mark were sufficient to distinguish it from opposer’s mark to avoid confusion. The first DuPont factor favored no confusion.

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In a recent precedential decision, the Trademark Trial and Appeal Board (the “Board”) denied a petition to cancel for failure of the petitioner to prove technical trademark use or use analogous to trademark use before respondent’s priority date, see JNF LLC v. Harwood International Incorporated, 2022 USPQ2d 862 (TTAB 2022) [precedential]. The respondent applied to register the mark HAPPIEST HOUR in standard characters for bar and restaurant services and was successful. About two years after the mark registered, the petitioner filed an application for the mark THE HAPPIEST HOUR for the identical services (bar and restaurant). The Examining Attorney assigned to the petitioner’s application refused the application on 2(d) likelihood of confusion grounds. Subsequently, the petitioner filed a cancellation proceeding based on priority and likelihood of confusion.

In petitioner’s application there was a claim for use of the trademark in commerce in October 2014 (no day was indicated). However, once the application was refused, the petitioner amended its first use date to September 7, 2014. The parties agreed that the primary issue that needed to be resolved was priority. The burden of proof for demonstrating priority rights is placed on the petitioner here since the respondent/registrant can rely on its certificate of registration for prima facie evidence of the validity of the registration and continued use of the mark. See 15 U.S.C. § 1057(b)….” Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989) quoted in NT-MDT LLC v. Kozodaeva, 2021 USPQ2d 433, *13 (TTAB 2021). The respondent is entitled to rely on its filing date of the application since it matured to a registration as a constructive use date. See our web page entitled, Priority Determinations in Trademark Law, Constructive Use Priority for more on this topic.

The respondent’s priority date is October 6, 2014. To establish priority, the petitioner must show proprietary rights in the mark that produce a likelihood of confusion. Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981). The petitioner can prove prior rights in several ways: (1) prior common law trademark use; (2) through a prior registration; (3) prior use as a trade name; (4) prior use analogous to trademark use; or (5) any other use that can establish proprietary rights. See Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) cited in DeVivo v. Ortiz, 2020 USPQ2d 10153. Also, see our web page entitled, Priority Determinations Based on Common Law to learn more about how to prove priority rights without a trademark registration. Typically, the petitioner must prove priority by a preponderance of evidence.

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In a recent decision from the Trademark Trial and Appeal Board (the “Board”), a Cancellation Petition is denied on all grounds. Both parties are claiming rights to the same mark for use with a magazine. The subject mark is THE NATIONAL POLICE GAZETTE & Design Logo, and the Petitioner’s grounds for cancellation included: (1) priority and likelihood of confusion; (2) no use of the mark at the time the application was filed; (3) abandonment; (4) false suggestion of a connection; (5) deceptiveness; (6) the registration is misrepresenting the source of the services; and (7) fraud. The Petitioner was not successful in proving any of its claims. See Steven Westlake v. Edgar Alexander Barrera and Richard K. Fox Publishing Company, Cancellation No. 92067884 (June 10, 2022).

Since the registration was more than five years old, Petitioner could not challenge based on priority and likelihood of confusion, nor on the claim of no use at the time of filing the application. See In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 (TTAB 2017) (registration more than five years old is immune to attack on likelihood of confusion grounds). See also, Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 USPQ2d 1899, 1906 (TTAB 2006) (registration more than five years old may not be challenged on the ground that the mark was not used in commerce at the time of application filing). See our web page entitled, Challenging Trademark Rights After Five Years of Registration at the TTAB, for the specific claims that can be asserted once a trademark registration is five years old. Various other grounds were denied because the Petitioner only argued the claims of abandonment and fraud in his brief, so the Board only considered those claims.

Regarding the claim of abandonment, the Petitioner argued that the Respondent hadn’t used its trademark in commerce since December 31, 2013. As evidence of non-use, the Petitioner stated that an online search for the magazine on April 14, 2019, returned a “404 Not Found” page message. In response, the Respondent submitted declarations each declaring that the specimens attached to the Declaration of Use respectively on January 29, 2016, and on the February 3, 2020, were authentic. Respondent further alleged that on each respective date that submissions were made to the USPTO, he was using the mark in Class 16 on all the goods listed and the same could be said for class 41, Respondent was using the mark on all services listed and submitted acceptable specimens consisting of advertisements and magazine covers. Based on this evidence the Board concluded that the mark was not abandoned. See our web page entitled, Abandonment and Nonuse of Trademark, for more information on this topic.

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Recent Trademark Trial and Appeal Board (“Board”) Decisions continue to reinforce the importance of good evidence demonstrating similar trademarks in use to weigh against finding a likelihood of confusion. See In re Loew’s Hotels, Inc., Serial Nos. 88425357, 88433338, 88433342, and 88433348 (May 11, 2022) [not precedential], where two refusals for registration were affirmed and two refusals were reversed. The applicant was seeking to register 4 marks: (1) CLOVER CLUB (CLUB disclaimed) standard characters and three stylized or composite marks; (2) ESTD. CLOVER CLUB 2019; (3) CLOVER CLUB MADE IN TEXAS; and (4) MADE IN TEXAS CLOVER CLUB ESTD. 2019. The cited marks were CLOVER, in standard characters and CLOVER in stylized font, both owned by the same registrant. The applicant and registrant identified restaurant services respectively in the application and registration.

The most interesting part of the Board decision involved the sixth DuPont factor, the number and nature of similar marks in use for similar services. This factor is incredibly important because it affects the scope of protection afforded the cited mark(s) and the degree of similarity of the marks required to prove likelihood of confusion. The purpose of third-party use evidence of similar marks is to prove consumers have been educated to differentiate between minute differences. See Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). See our web page entitled, Overcoming A 2(d) Refusal With The Crowded Field Argument, for more on this topic.

To make this type of evidence of record, applicants should submit copies of the third-party’s website or social media pages. Only including a hyperlink for the third-party website or information about the website in the appeal brief is insufficient. The third-party use evidence must be relevant as to goods and/or services and based on similarities to the cited mark. The Federal Circuit has determined that evidence of third-party use can be powerful on its face even though specifics as to the extent and impact of use of the third-party trademarks may not have been demonstrated. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015). See also, Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015).

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The Trademark Trial and Appeal Board (the “Board”) issued a precedential decision last week that will be helpful to applicants submitting either a Consent Agreement or a Coexistence Agreement to overcome a likelihood of confusion refusal. Dare Foods Inc. filed an application to register the proposed mark RAINCOAST DIP in standard characters with a disclaimer for “DIP” for snack foods. The Examining Attorney refused the application based on a registration for RAINCOAST TRADING, in standard characters with a disclaimer for “TRADING” for various seafood products.

The Board reversed the refusal stating, “clothed consent agreements where competitors have clearly thought out their commercial interests should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.” See In re Dare Foods Inc., 2022 USPQ2d 291 (TTAB 2022) [precedential]; Four Seasons Hotels, 26 USPQ2d at 1073 (quoting In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985)); see also DuPont, 177 USPQ at 568; Am. Cruise Lines, 128 USPQ2d at 1163. See the firm’s blog post entitled, A Precedential Board Decision Giving Great Weight To Consent Agreements, where the Board again reversed a refusal to register while giving substantial weight to the consent agreement entered into between the parties. The Board for In re Dare Foods Inc., concluded a detailed, “clothed” consent agreement will play a dominant role in a likelihood of confusion analysis.

In this case, the Board reviewed the following DuPont factors, similarities of the marks, similarities of the goods, the trade channels and classes of consumers, and the market interface and co-existence agreement. Regarding the marks, it was a simple task. Both applicant’s and registrant’s mark use the identical term RAINCOAST, and both marks contain a descriptive element that was disclaimed in each respective mark. Not only is the dominant element shared, but RAINCOAST appears as the first element in both marks. The marks in their entireties are similar.

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In two recent precedential decisions of the Trademark Trial and Appeal Board (the “Board”), it was determined that the proposed trademark CLEAR for footwear, lingerie, and other related clothing items and for purses and other types of handbags was deceptively misdescriptive of the goods. See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478 (TTAB 2021) [precedential] and In re Dolce Vita Footwear, Inc., 2021 USPQ2d 479 (TTAB 2021) [precedential]. See our webpage entitled, Trademark Application Refusal Based On Descriptiveness and Deceptiveness, for more details on deceptively misdescriptive refusals. It should be noted that the Examining Attorney first refused the application based on the grounds of the mark being merely descriptive of the goods. Once the Applicant raised the issue that its goods did not have features that could be described as clear or transparent, the Examining Attorney then refused the application on the alternative ground that the proposed mark is deceptively descriptive of the goods. In the final office action, both 2(e)1 refusals were maintained, and the id was amended to exclude “transparent goods”. The Applicant filed an appeal.

It is important to keep in mind that the Examining Attorney’s primary objective is to protect the public from confusion or deception. Based on use of Dolce Vita Footwear Inc.’s (Applicant’s) proposed trademark CLEAR for apparel, bags, and footwear the Examining Attorney argued that the public will believe that the branded goods are transparent or clear. The determination that the mark is misdescriptive is based on evidence showing it is common in the fashion industry to have clear footwear, clothing, and bags even though Applicant amended the id to exclude transparent goods.

The Examining Attorney submitted definitions for the term “Clear”, screenshots from the Applicant’s website showing descriptive use of the word “Clear”, and webpages from competitors’ websites in the fashion industry. These screenshots demonstrated use of the term “Clear” in conjunction with features such as transparent straps or heels on footwear or features of lingerie, skirts, dresses or bags. For the second prong of the test, the “reasonably prudent consumer” test is applied.

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The Trademark Modernization Act (“TMA”) was enacted on December 27, 2020, and most rules go into effect on December 27, 2021. Many believe that the Trademark Act of 1946 needed this update. Two of the most significant rule changes include creating ex parte procedures for petitioning the Director for expungement and reexamination of registrations that have allegedly failed to meet the mandatory “use in commerce” requirement. A third party can initiate either of the two new proceedings or the Director can initiate the proceedings. The fee set for filing a Petition to the Director for either expungement or reexamination is $400 per class and the Petitions should be filed through TEAS. Once filed the Petitions will be uploaded into the registration record and visible in TSDR.

The USPTO will send an email notification to the Registrant or Registrant’s attorney once the Petition is filed. The Director will then determine if the Petition has made a prima facie case of nonuse and if so, institute one of the two proceedings. If this occurs the Petitioner will have no further involvement. This determination is final and non-reviewable. The proceeding is set forth in an Office Action. The Office Action must be responded to within three months but the Registrant may extend the response time for one additional month for a fee of $125.

The Registrant will need to provide evidence of use to rebut the prima facie case of nonuse. Documentary evidence of use will most probably take the form of specimens of use. However, if the issue focuses on an Allegation of Use or Statement of Use from years ago, and the specimen of use is no longer available, then declarations can be submitted to explain how the mark was used at the relevant time.

Evidence will vary based on whether the proceeding is for reexamination or expungement. Reexamination focuses on registrations that alleged use of the mark. The Petitioner or the Director will submit evidence that the mark was not in use on certain dates either as of the date the application was filed or as of the date the Statement of Use was filed. The Registrant must show use of the mark with the goods or services before the relevant date. The Petition must be filed before the fifth anniversary of the registration.

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If you are an owner of either a supplemental registration or of common law rights, and you are challenging another party before the TTAB based on priority and likelihood of confusion, you would face similar hurdles. Only a trademark registration on the principal register will receive all the rights provided by the Trademark Act of 1946. A Principal Registration is entitled to: (1) constructive notice to the public of the registrants claim of ownership; (2) a legal presumption of ownership of the mark and of the exclusive rights to use the mark in commerce for the goods and services listed in the registration; (3) a date of constructive use of the mark as of the filing date of the application; (4) the ability to bring an action concerning the mark in federal court and to rely on the presumptions of ownership and exclusive right to use; and (5) acquiring “incontestable” status for the goods and services identified in the application, subject to certain statutory defenses.

There are additional rights granted to marks on the Principal Register, but the ones listed above apply only to marks on the principal register and not to marks on the supplemental register. The additional rights which apply both to the principal and supplemental register include: (1) use of the registration symbol ® with the mark; (2) filing suit in federal court for infringement, but note that the owner of the supplemental registration must prove it owns a proprietary interest in the mark by showing the mark has acquired secondary meaning before the adverse party’s priority date; (3) protection against registration of a confusingly similar mark under the Trademark Act, but marks on the principal register will receive broad protection while marks on the supplemental register will generally receive narrow protection based on how descriptive the mark is for the identified goods and services; and (4) the registration can be used as a basis for filing in a foreign country under the Paris Convention and other international agreements.

Regarding challenges before the Board (aka TTAB), the owner of a supplemental registration will have standing to oppose, but will still have to prove secondary meaning/acquired distinctiveness. Since marks on the supplemental register are presumed to be merely descriptive, evidence of secondary meaning must be submitted to the TTAB. If such evidence is not submitted, the Board will find against the owner of the supplemental registration and dismiss the notice of opposition with prejudice. See Otter Products LLC, v. BaseOneLabs LLC, 105 USPQ2d 1252 (TTAB 2012).

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Recently I had the opportunity to virtually meet with David Gooder, the Commissioner for Trademarks of the United States Patent & Trademark Office. It was a unique opportunity and it afforded me the time to discuss an issue with the Commissioner that I believe has caused many of my clients to misunderstand the Examining Attorneys’ role at the Trademark Office. There is a lack of information on the USPTO website pertaining to common law rights. I find myself time and time again explaining to my clients why it is so important to conduct full U.S. clearance searches (comprehensive trademark research) in advance of filing a trademark application.

Many prospective trademark applicants wrongly assume that the Examining Attorneys at the Trademark Office when conducting trademark searches for the applicant’s proposed mark will search common law rights (use rights/unregistered rights) in addition to the registered and pending marks. This is not true. The Examining Attorneys at the USPTO do not have the resources to conduct common law searching. Therefore, if an applicant does not conduct comprehensive research in advance of the trademark filing, it’s possible to invest the time and resources to register one’s mark on the federal level, but still be infringing on a third party’s trademark rights and thus be vulnerable to being a named defendant in litigation.

The United States has a first to use trademark system, not a first to file system like many other countries. This means that common law rights (use rights) matter and cannot be ignored. If a third party possesses senior common law rights, a proceeding can be brought at the Trademark Trial and Appeal Board to either oppose a pending application during the publication period or cancel a trademark registration. The owner of common law rights may NOT have filed or registered its trademark but has simply used the mark in commerce before the applicant filed its trademark application with the United States Patent & Trademark Office.

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