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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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A recent Trademark Trial and Appeal Board (“Board”) decision from last week emphasizes the detailed analysis required when comparing a composite mark (in this case words and a design) to a design mark. Here, the applicant, the University of Houston System (“Applicant”) is seeking to register a mark, UHCL Hawks and a design of a flying hawk (view here) for various goods in international classes 16, 21, 25, and 41. Retail Royalty Company (“Opposer”) filed a Notice of Opposition based on the ground of likelihood of confusion based on its ownership of U.S. Registration 3878197 (hereinafter “Flying Eagle Mark”) a design image of a flying eagle (view here). Opposer’s Flying Eagle Mark is registered for various goods in class 3 (creams and perfumes etc.), 18 (handbags and wallets etc.), 25 (various apparel), and 35 (retail store services featuring clothing, sunglasses, jewelry etc.). Opposer claims rights in prior registered marks for AMERICAN EAGLE OUTFITTERS and “AMERICAN EAGLE family of marks” for a broad range of lifestyle products.

Opposer did not directly argue that its mark was “famous”, but did argue the Flying Eagle Mark was “strong and entitled to broad protection”. Opposer also stated that its mark has been used in widespread and extensive advertising and the company maintains strong sales in relationship to the branded goods. These statements were supported by substantial evidence. The net U.S. sales for the years 2010-2015 were over $3 Billion. However, the evidence showed that Opposer’s Flying Eagle Mark does not have a strong commercial presence or consumer recognition except with retail clothing goods and services.

Conversely, Applicant argued that the Flying Eagle Mark was not strong, but instead was dramatically diluted by the existence of numerous third party bird design marks for general retail including clothing. Applicant argued that purchasers have become conditioned to numerous bird marks in the marketplace and are capable of distinguishig the sources by small differences in the marks. Among the co-existing marks are bird designs of Hollister (owned by Abercrombie and Fitch) and Eddie Bauer. The Board reviewed numerous bird design marks submitted by the Applicant (120 were submitted) and referenced twelve in the decision stating,” we find the following as bearing the closest resemblance to Opposer’s (or Applicant’s) bird logo.” And of the twelve only a few were identified as bearing a strong resemblance. The Board stated that to assess the strength of the mark, they evaluate the inherent strength based on the trademark alone and also the commercial strength based on marketplace recognition by consumers.

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The Sixth Circuit recently answered this question. See Kelly Servs., et al. v. Creative Harbor, Case No. 16-1200 (6th Cir., Jan. 23, 2017), where the Sixth Circuit remanded the case back to the district court to evaluate all the goods and services in the trademark application and to determine if a bona fide intent existed for some of the goods and services. The parties in this matter both filed a trademark application at the United States Patent & Trademark Office (“USPTO”) for the mark WORKWIRE for mobile software applications in the employment field.

Creative Harbor, LLC (“Creative Harbor”) filed its intent-to-use application on February 19, 2014. The other party Kelly Services, Inc. (“Kelly Services”) filed its intent-to-use application for the mark WORKWIRE on August 13, 2014. Creative Harbor discovered that Kelly Services was using the mark WORKWIRE and sent a Cease & Desist demand. In response, Kelly Services filed a declaratory judgment action challenging Creative Harbor’s claim that it had priority.

The district court held that Creative Harbor lacked a bona fide intent to use the mark in commerce for some of the goods and services identified in the trademark application. The district court voided the entire application and Creative Harbor appealed to the Sixth Circuit. The Circuit Court placed emphasis on the deposition testimony of the CEO of Creative Harbor. The CEO stated that he wanted the intent-to-use application to cover goods and services, not only for the present, but also for the future. He further testified that the identification in the application was to cover goods for future exploration and expansion; “to keep the option open to at some point do that”. The Sixth Circuit concluded that Creative Harbor did not have a firm intention to use the mark with all the goods and services, but instead was reserving a right in the mark in case it ever wanted to expand its commercial line of goods.

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A recent decision from the Trademark Trial and Appeal Board (“TTAB” or the “Board”), reminds trademark applicants that if there is a term that has taken on significance or meaning in a particular industry and this term immediately conveys information about the goods or services identified in your trademark application, your application could be refused. The ground for refusal would be that the trademark is merely descriptive of the Applicant’s goods and services. See In re Bitvoyant, Serial No. 86693221 (February 9, 2017) [not precedential]. For more details on this subject matter, see our web page entitled, Factors To Be Considered When Determining If A Mark Is Descriptive. Some of the factors discussed on our web page are dictionary meanings, is the term an acronym that would be perceived to mean the same as the wording it represents, and does the term describe the intended user. Another factor to now consider is whether the mark is a term of art in your industry.

In Bitvoyant, the Applicant filed to register the mark HONEYFILE. The goods identified were computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intelligence. The services included computer security consultancy; computer security service, namely, restricting access to and by computer networks to and of undesired web sites, media and individuals and facilities, along with other computer security services.

The application was refused on the ground that the mark was merely descriptive of the goods and services. The Applicant filed a request for reconsideration that was denied. An appeal followed. The Court of Appeals for the Federal Circuit set forth the following standard: ” [A] term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” See In re Chamber of Commerce of the U.S.A., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). Evidence to prove this proposition can be taken from any competent source, such as dictionaries, newspapers or surveys.

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