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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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The United States Court of Appeals for the Federal Circuit vacated and remanded the Board’s findings in Teresa H. Earnhardt v. Kerry Earnhardt, Inc., Opposition Nos. 91205331 and 91205338 (February 26, 2016). The Applicant sought to register the mark EARNHARDT COLLECTION for furniture in class 20 and custom construction of homes in class 37. A third party opposed the registration on grounds of likelihood of confusion and priority and on the ground that the proposed mark EARNHARDT COLLECTION is primarily merely a surname. The Opposer’s mark is DALE EARNHARDT for a variety of goods and services. The Applicant and Opposer agreed that the term Earnhardt alone is primarily merely a surname. However, they disagree about whether adding the term “Collection” to “Earnhardt” changes the commercial impression and diminishes the surname impression.

The United States Patent & Trademark Office will refuse a trademark on the Principal Register if the primary significance of the mark as a whole is a surname. See our web page entitled, Can You Use Your Name As A Trademark?, to review the test to determine if a mark is primarily merely a surname. Since the subject mark has two terms, the trademark must be evaluated in its entirety and not as two separate parts.

In addition, the mark must be considered in relationship to the goods and services that are identified in the trademark application. One important part of the analysis is the relative distinctiveness of the second term of the mark. This can be evaluated by classifying the second term as, fanciful, arbitrary, suggestive, descriptive or generic. Where the mark falls on this continuum is a question of fact. One question to ask in this analysis is does the mark as a whole convey a distinctive source identifying impression rather than conveying information about some aspect of the goods or services.

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It appears that more often than not the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) issues favorable decisions for the big corporations. However, this one came down against Williams-Sonoma Inc. (the “Applicant”) last month. See In re Williams-Sonoma, Inc., Serial No. 86092589 (June 28, 2017), where the Applicant filed an application for the mark MANHATTAN in standard characters for upholstered furniture in international class 20. The Examining Attorney refused the application and the Board affirmed the refusal based on the registration for MANHATTAN CABINETRY in standard characters for custom designed and crafted furniture in class 20 on grounds of likelihood of confusion. To overcome these types of refusals, see our webpage entitled, Overcoming Likelihood Of Confusion Refusals.

One of the Applicant’s arguments as to why the mark MANHATTAN for upholstered furniture should be allowed to register was that the Registrant’s mark MANHATTAN CABINETRY for custom designed furniture was weak. The Applicant argued that since Manhattan is a geographic term, it is only entitled to a narrow scope of protection. This argument backfired on Williams-Sonoma because the Registrant’s mark registered under the provision of Section 2(f) of the Lanham Act. This means that the mark was held to have acquired distinctiveness. It is important to note that marks having acquired distinctiveness under §2(f) of the Lanham Act (also known as the Trademark Act of 1946) are entitled to the same trademark protection as inherently distinctive marks. The board cited E.I. du Pont de Nemours & Co. v. Societe Dupont, 161 USPQ 489, 491 (TTAB 1969) for this proposition. The Board also pointed out that there was no evidence that the term Manhattan was commonly used in the relevant field. Therefore, there was no basis for the Applicant to argue that the mark was entitled to a narrow scope of protection.

The Board compared both marks and held that based on the standard that a consumer does not retain a specific impression but instead a general impression, a consumer will find the marks substantially similar. The Board determined that if the two marks are used on overlapping goods, then there will be confusion, mistake or deception. In the case at bar, the term Manhattan is the dominant element of both marks. When comparing the goods, the Board held that both identifications (upholstered furniture and custom designed and crafted furniture) are broadly worded so that each respective mark encompasses custom designed and upholstered furniture. Therefore, the Board held that the goods were overlapping in scope. When goods of the parties overlap, then the degree of similarity required between the marks is not as great as it would be if the goods were diverse.

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Two recent decisions, one before the U.S. Supreme Court and one pending before the Federal Circuit have kept the United States Patent & Trademark Office (“USPTO”) busy writing Examination Guidance for Section 2(a) of the Lanham Act’s Disparagement Provision and Scandalous Provision. See Examination Guide 1-17. See also our webpage entitled, Trademarks That Falsely Suggest A Connection With Other Persons, where it is discussed that Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a) bars registration of trademarks that are immoral, deceptive, scandalous or if the mark falsely suggests a connection with other persons (living or dead), institutions, national symbols, or beliefs.

In Matal v. Tam, also known as “The Slants” case, the U.S. Supreme Court held that the provision of the Lanham Act Section 2(a) which has denied federal registration to trademarks that disparage or bring into contempt or disrepute any persons living or dead is unconstitutional under the Free Speech Clause of the First Amendment. This decision was issued on June 19, 2017. In this case, the applicant Simon Shiao Tam filed a trademark application with the USPTO for the name of his Asian-American rock band. The Slants are seeking to register the name for entertainment services in the nature of live musical performances. Mr. Tam was the lead singer of the band and he stated that he wanted to take back ownership of a word that created stereotypes in the Asian culture. See In re Simon Shiao Tam, 108 USPQ2d 1305 (TTAB 2013) [precedential].

The USPTO refused the application under Section 2(a) of the Lanham Act as being disparaging and offensive to a substantial composite of people of Asian descent. The U.S. Supreme Court unanimously held that the Disparagement Provision discriminates on the basis of viewpoint. Based on this decision, the Disparagement Provision of Section 2(a) is no longer a valid ground for refusal by the USPTO. The portions of the Trademark Manual of Examining Procedure §1203 that relate to examination under the Disparagement Provision no longer apply.

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Applicant sought to register the mark BUNGEE BLAST for a foam flying toy and hand-powered non-mechanical toy in class 28. The applicant applied for a standard character mark and disclaimed the term “BUNGEE”. The Examining Attorney refused the application citing a registration, BUNGEE GLIDERZ for toy airplanes, toy gliders, and toy sling planes in class 28 as a basis for a likelihood of confusion. The registrant disclaimed the term “GLIDERZ”. See In re Dennis Binkley, Serial No. 86429294 (May 30, 2017) [not precedential].

The Board initiated the likelihood of confusion analysis with reviewing the relatedness of the goods. The Board held that applicant’s identification was broad enough to include the toys identified in the registration and was therefore legally identical. In light of the same goods and the lack of restrictions in the identifications, the Board was able to presume that the goods travelled in the same channels of trade (toy stores) and would be sold to the same purchasers. This factor weighs in favor of finding a likelihood of confusion between the sources of BUNGEE BLAST and BUNGEE GLIDERZ.

Next the Board evaluated the similarities and the differences between the marks. The following factors were examined, appearance, sound, connotation and commercial impression. The Board stated the general rule that consumers maintain a general rather than a specific impression. If purchasers would assume there is a connection between the sources when encountering the marks, then it can be said that confusion is likely. The term “Blast” has several meanings which include among them, a sudden loud sound or a violent effect of an explosion. Conversely, the term “Glider” means a light engineless aircraft designed to glide after being towed aloft. The Board held that the second terms in the respective marks were distinct and that due to the second terms the marks differed significantly in sight, sound, meaning and commercial impression.

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David Elliot (“Plaintiff” or “Elliot”) filed an action in the Arizona District Court (later joined by Chris Gillespie), petitioning for cancellation of the GOOGLE trademark, claiming that it evolved into a generic term. The parties filed cross motions for summary judgment. In Elliot’s motion for summary judgment, he alleged that the majority of the relevant public uses the word “google” as a verb. Plaintiff argued that it is common to state “I googled it”. The Plaintiff argued that as a matter of law using a trademark as a verb constitutes generic use. In response, Google Inc. argued that verb use in and of itself does not constitute generic use.

The matter arrived in Court after the parties participated in arbitration before the National Arbitration Forum (“NAF”). Chris Gillespie had purchased over 760 domains incorporating the term “google” and pairing the term “google” with a brand, person or product. Google Inc. objected to the domain registrations and filed a complaint with NAF claiming domain name infringement, also known as cybersquatting. Google Inc. prevailed and the subject domain names were transferred to Google Inc.

The Plaintiff in the court case argued that the term “google” has become generic because it no longer identifys the source of the goods. The following marks are examples of trademarks that have been appropriated by the public and used as a generic name for a particular type of goods: (1) ASPIRIN, (2) CELLOPHANE AND (3) THERMOS. A trademark only becomes generic when the primary significance of the mark to the public is the name of a particular type of goods or services regardless of the source. In other words, the question to ask is does the relevant public perceive the primary significance of the term as identifying the producer or as identifying a type of product or service. To avoid “genercide”, a term should identify the producer. For more general information regarding how a trademark becomes generic, see our web page entitled, Merely Descriptive Or Generic?

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The Trademark Trial and Appeal Board (the “Board”) decided this appeal a few days ago. The Board determined that the trademark PA’DENTRO when used in connection with liquor and liqueurs namely tequila, resembles the registrant’s mark ADENTRO for wines and causes confusion and/or deceives consumers under the Trademark Act. See In re Cruz, Serial No. 86845373 (May 10, 2017) [not precedential], where the applicant was seeking registration on the Principal Register for the mark PA’DENTRO in standard characters and the Examiner refused the application under 2(d) of the Trademark Act. A likelihood of confusion analysis will evaluate the probative facts in evidence.

A likelihood of confusion analysis will evaluate all the probative facts in evidence.  The two key considerations are similarities between the marks and similarities between the goods and/or services. When reviewing the likeness between the marks, the emphasis is on the general impression the average consumer will retain and not on a specific recollection. See In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009). In the case at bar, the Board held that the marks PA’DENTRO and ADENTRO have almost identical appearances and only have slight differences in sound. Moreover, the marks translate identically (to the English word “inside”), therefore they have the same meaning. In sum, the Board held that with respect to the marks, the similarities in sound, appearance and meaning create a similar overall commercial impression.

Next, the Board evaluated the relatedness of the goods. Keep in mind that the goods do not have to be similar or competitive to support a finding of likelihood of confusion. The goods need only be related in some manner or that the conditions surrounding the marketing permit the same persons to encounter the marks under circumstances that would give rise to a belief that the goods originate from the same source or  that both goods are associated with the same producer. The Examining Attorney introduced into evidence eleven use based registrations where the registrant sells both tequila and wine under a single brand.

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This week I addressed one issue repeatedly with prospective clients and the dialogue prompted me to write this blog. Generally, trademark attorneys counsel clients to avoid descriptive marks that will register on the Supplemental Register. For the basic facts regarding the Principal and Supplemental Registers, see our webpage entitled, Filing Your Trademark On The Principal And Supplemental Registers.

The Trademark Trial and Appeal Board (the “Board” or the “TTAB”) has held that neither an opposer nor a petitioner can prevail in a likelihood of confusion proceeding based solely on its Supplemental Register Registration. See Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252 (TTAB 2012) [precedential]. This is because the opposer must prove he has proprietary rights to be successful. If proprietary rights do not exist, then there cannot be likelihood of confusion as to source. An owner of a Supplemental Registration must prove ownership, validity of the mark, and exclusive right to use the mark, and acquired distinctiveness. Conversely, a Principal Registration is entitled to certain presumptions under the law such as the registration is prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, the exclusive right to use the mark in commerce, and of the continued use of the mark in commerce since the filing date of the application.

A Supplemental Registration is not prima facie evidence of anything except that the registration issued. If a mark is on the Supplemental Register, it is presumed to be descriptive, at least at the time of registration and the owner must demonstrate subsequent to registration that the mark acquired distinctiveness in order to show proprietary rights. To review how a trademark owner can prove acquired distinctiveness, see our webpage entitled, What Is Acquired Distinctiveness & Secondary Meaning?

Without a Principal Registration, a trademark owner of a Supplemental Registration attempting to enforce its rights in an infringement proceeding will be placed in a similar position to an owner of common law rights. Ownership of a Supplemental Trademark Registration may impose “standing” to bring an opposition or cancellation before the TTAB, but it does not mean the presumptions attendant under section 7(b) will be given to a supplemental registration.

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A few weeks ago, I posted a blog on a Sixth Circuit trademark case that addressed whether an entire application should be voided if a bona fide intent to use the mark in commerce was lacking. See our blog post entitled, Should An Entire Application Be Voided If A Bona Fide Intent To Use The Mark Is Lacking? In our blog, we discussed the Trademark Trial and Appeal Board’s (the “Board”) position on the issue which was not consistent. Seeking further guidance, we turn to the Federal Circuit, wherein the issue was addressed in Swatch AG v. M.Z. Berger & Co., 108 USPQ2d 1463 (TTAB 2013) [precedential]. Here, the applicant filed for the mark IWATCH in standard character format for watches, clocks and watch accessories. The opposer Swatch AG (Swatch SA and Swatch Ltd.) challenged the application on grounds of likelihood of confusion with its registered mark for SWATCH for watches and lack of bona fide intent to use the mark in commerce.

The Board analyzed the marks IWATCH and SWATCH and determined that the marks differed significantly in sound, meaning, and commercial impression. The claim under 2(d) of the Trademark Act was dismissed and the Board moved on to address the second claim of lack of bona fide intent to use the mark in commerce. Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), states in part that: “[A] person who has a bona fide intention, under circumstances showing the good faith of such person to use a trademark in commerce may request registration of its trademark on the principal register…” The burden is on the opposer to demonstrate by a preponderance of the evidence that the applicant lacked a bona fide intent to use the mark in commerce at the time it filed the application. There must be evidence in the form of documentation substantiating action taken by the applicant. The inquiry does not delve into the applicant’s subjective state of mind.

One method often implemented by the opposer is to prove that the applicant does not have documentary evidence to support its claim of a bona fide intent to use the mark. Such a showing is typically sufficient to prove lack of intention under Section 1(b) of the Trademark Act. Then, the burden shifts to the applicant to produce evidence explaining the failure to have documentary evidence.

Here, the applicant did produce several documents, but the Board determined the evidence was insufficient. The applicant produced a trademark search, an email summarizing a call with the Examining Attorney wherein there was a discussion that the IWATCH did not have interactive features, and three internal emails showing stylized versions of the mark and an image of a clock and two images of watches featuring the IWATCH mark. However, the images were created to support the trademark application and not for promotional activity. The Board concluded that the documents presented did not establish an intent to use the mark in commerce.

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