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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 The latest in this line is In re 8-Brewing LLC, Serial No.86760527 (October 30, 2017) [not precedential].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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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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