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This recent precedential decision by the Trademark Trial and Appeal Board (“TTAB” or the “Board”) cautions applicants to be in a position to show documentary proof contemporaneous with the trademark filing date that there was a bona fide intent for use of the proposed mark. See A&H Sportswear Co., Inc. v. William W. Yedor, 2019 USPQ2d 111513 (TTAB 2019) [precedential]. See our firm page entitled, How Does An Applicant Prove A Bona Fide Intent To Use A Trademark, for more information on this topic. The applicant was seeking to register MIRACLE ON 35TH STREET in standard characters for printed matter, photographs, posters, etc. and clothing. The matter comes to the TTAB from a Notice of Opposition filed by A&H Sportswear Co., (“Opposer”) Inc. on the grounds of priority and likelihood of confusion and dilution by blurring. Opposer pleaded 15 registrations for the mark MIRACLE for various apparel. Opposer simultaneously filed for summary judgment and to amend its pleadings to add a claim for no bona fide intent to use the mark in commerce.

Under Section 528.07(a) of Trademark Trial and Appeal Board Procedure (“TBMP”), a party can seek summary judgment on an unpleaded claim if they simultaneously move to amend the pleadings to include that claim. The TTAB liberally grants leave to amend pleadings if justice so requires it, unless the amendment to the pleadings would violate case law or prejudice one of the parties. Six weeks after receiving the last of the written discovery, opposer moved to amend the pleadings. Applicant did not produce any evidence that the delay would prejudice his rights, likely because the documents needed to defend the claim were in the applicant’s possession. Leave to amend the pleadings was granted.

To show that a party has a bona fide intent to use the mark in commerce, there has to be an objective determination based on a totality of the circumstances. The absence of documentary evidence regarding an applicant’s bona fide intent to use the trademark in commerce establishes a prima facie case that the applicant lacks the intention required under trademark law. The applicant produced one image of a prototype of a T-shirt as a response to a request for production of documents. The applicant couldn’t identify documents that showed use of the mark on the goods in commerce. The applicant couldn’t identify any retail shops, distributors, or resellers that would offer the goods with the trademark; nor could he produce a business or marketing plan associated with the branded apparel or other printed goods. Lastly, there was no evidence of any websites that displayed the goods or intended to display or sell the goods in the future.

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In a recent decision issued by the U.S. Court of Appeals for the Federal Circuit (“CAFC”), the CAFC affirmed the Trademark Trial and Appeal Board’s decision (the “Board”) to refuse a specimen under the Lanham Act.  See In re Siny Corp., 2019 USPQ2d 11362 (Fed. Cir. 2019) [precedential].  The court stated that the specimen did not qualify as a display associated with the goods. The applicant had tried to register the mark CASALANA for “knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories”. The applicant argued that its specimen, images of its website should be acceptable as a point of sale display associated with the goods. The Examining Attorney objected because the specimen did not include a means for ordering the goods.

The image of the webpage showed the goods with the mark CASALANA, and an explanation of the goods. Near the bottom of the webpage it stated, “For sales information” and there was a telephone number and email address in close proximity inviting customers to call. The Board relied on the case of In re U.S. Tsubaki, Inc., 109 USPQ2d 2002 (TTAB 2014), for the rule that an invitation to call the applicant for additional information, including obtaining a quote for an order, does not provide a means for ordering the product. The rationale for this rule is that before acquiring this information via telephone, the customer did not have enough information to place an order.

Typically a display associated with the goods will contain information such as pricing details, order size, payment options, and information about shipping. If such information is provided, enough to allow the customer make a purchasing decision, along with contact information, it’s possible that a website could act as a display associated with the goods (assuming purchasers actually placed orders over the phone or through an email after viewing the information).  If all the important information to purchase the goods was acquired through another means other than the website, the website did not function as an example of use of the mark in commerce. See our webpage entitled, For Purposes Of Trademark Law, What Is Use In Commerce, for more information on this topic.

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In a rare reversal by the Trademark Trial and Appeal Board (the “Board” or the “TTAB”), it was determined that there was no confusion among the marks NABOSO (English translation barefoot) and BAREFOOT for overlapping goods. See In re Naboso Technology, LLC, Serial No. 87236262 (February 27, 2019) [not precedential], where the applicant filed a trademark application for the foreign term NABOSO, a Czech word that translates to barefoot in English. The applicant’s goods included orthotics, yoga mats, and rubber flooring while the Registrant owned four marks, two for BAREFOOT in standard characters, and two for BAREFOOT Composite marks for orthotics, for rubber floor mats, and yoga accessories including yoga exercise mats. This case although not a precedent of the TTAB is a good case to cite if the applicant is faced with the Doctrine of Foreign Equivalents in a 2(d) refusal.  Based on In re Naboso Technology, LLC, the applicant should argue that the Examining Attorney or Board must weigh all the relevant du Pont factors in a confusion analysis, in particular all the elements of mark similarity, including appearance, sound and commercial impression against the similarity of meaning before rendering a decision.

The Board reminds us that the most important inquiry in a likelihood of confusion analysis is the cumulative effect of the similarities or the differences in the marks and the goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).The applicant in this matter does not dispute that the goods are related. In fact, with the exception of applicant’s flooring the goods were identical to the registrant’s products. Therefore, the Board presumed that the channels of trademark and relevant consumers were the same. Both of these du Pont factors favored finding a likelihood of confusion.

Next the Board examined the similarities of the marks. The strength of a trademark is determined by both its inherent distinctiveness (conceptual strength) and its marketplace strength. To ascertain the conceptual strength, one must determine where the mark lies on the continuum, frequently referred to as the spectrum of distinctiveness. To learn more about determining the strength of a trademark, see the firm web page entitled, The Importance Of Selecting A Distinctive And Inventive Trademark. Both marketplace strength and inherent distinctiveness are reviewed under the du Pont factor known as the number and nature of similar marks in use on similar goods. It is important to keep in mind that the relevance of third party marks depends on whether or not the marks are in use in commerce. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 UsPQ2d 1689 (Fed. Cir. 2005).

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As a trademark practitioner, I hope this decision issued by the Trademark Trial and Appeal Board (the “Board” or “TTAB”) is an indication that the Board will be tougher on inconsistent examination by Examining Attorneys at the USPTO. See In re The Random Acts of Kindness Foundation, Serial Nos. 87245967, 87245971, 87245973, and 87245975 (February 15, 2018) [not precedential], where the Board reversed four refusals for various goods and services which encouraged the performance of certain acts of kindness for others. The Applicant filed four applications based on use in commerce for the mark RANDOM ACTS OF KINDNESS. Each application was refused for failing to function as a trademark or service mark under the Trademark Act because the wording “RANDOM ACTS OF KINDNESS” is informational and a widely used phrase. The Examining Attorney determined that the slogan is incapable of indicating one source of goods or services.

Terms and expressions that merely convey information will not be allowed to register as trademarks. There has been a long line of cases that refuse common slogans even when the slogan is applied in a source-identifying manner. For example, the following slogans were refused on this basis, DRIVE SAFELY, ONCE A MARINE ALWAYS A MARINE, and THINK GREEN. The key question is how will the public or relevant consumer base perceive the proposed mark. A mark has to indicate a single source for goods or services. The Examining Attorney introduces numerous articles, titles of books, and excerpts from websites demonstrating the common use of the phrase, “RANDOM ACTS OF KINDNESS”. Even though there was some minimal stylization in the mark, there was not enough according to the Examining Attorney to produce an independent commercial impression separate from the literal wording itself.

The underlying basis for refusal asserted by the Examining Attorney, failing to function as a trademark is a frequently asserted ground for refusal. To review other common grounds for application refusal, see our web page entitled, Common Grounds For Refusal Of A Trademark. The applicant argued that it had multiple other trademarks for the term “RANDOM ACTS OF KINDNESS” and variations thereof registered on the Principal Register for various goods and services. In rebuttable the Examining Attorney relied on In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001), for the principle that each case must be decided on its own facts, and the Board is not bound by prior decisions that contain different records. The Examining Attorney also cited In re Cordua Rests., Inc., 118 USPQ2d at 1635, for the proposition that the Trademark Office must review each application to determine if it is in compliance with all the rules, even if the USPTO mistakenly registered a similar or identical mark that possessed the same deficiency.

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Applicant was seeking to register the mark HONEYHOLE SANDWICHES in standard characters with a disclaimer on “sandwiches” for “restaurant with bar specializing in serving proprietary unique sandwiches, local beers, and alcohol in a vibrant eclectic environment”. The Examining Attorney refused the application due to a likelihood of confusion with the registered mark HONEYHOLE for alcoholic beverages except beer. The applicant appealed the refusal, the Board affirmed and required a “something more” showing to prove relatedness between restaurant services and alcoholic beverages. See In re Honeyhole Sandwiches Inc., Serial No. 87138294 (May 22, 2018) [not precedential].

When considering the similarities of the marks, the Board found them very similar in sight, sound, connotation, and commercial impression. This factor weighs in favor of confusion. There was no evidence of record to show the mark was commercially weak, therefore the sixth du Pont factor (the number and nature of similar marks on similar goods) also weighs in favor of confusion. Next the Board considered if the goods and services were commercially related. This evaluation must be based on the identifications in the application and registration. The Board noted that the “something more standard” cited by the Federal Circuit court had to be kept in mind. For more information on the “something more” rule imposed by the Federal Circuit, see our blog posts entitled, The Origin of the Something More Standard In Trademark Law, and The Federal Circuit Expands The Application Of Its Something More Standard. It has long been held that when analyzing one party’s services for providing food, i.e. a restaurant, and another party’s food and/or drink products, the fact that a restaurant may offer particular food or beverages doesn’t mean the parties’ goods and services are related.

Evidence must be produced that demonstrates something in addition to either similar or identical marks used for restaurant services and another’s food or beverage product. See In re Coors Beers Brewing Company, 343 F.3d 1340, 68 USPQ2d 1059 Fed. Cir. (2003), where there was no showing of “something more” sufficient to justify a relatedness between beer and restaurant services. Often, “something more” will be found if the restaurant specializes in the other party’s food or beverages. Moreover, if the Board finds that the mark is strong and of an arbitrary nature, this will be a factor weighing in favor of finding “something more”. In the case at bar, the mark HONEYHOLE was found to be commercially strong for alcoholic beverages. Moreover, the applicant’ identification states it serves alcohol and its menu demonstrates use of the mark HONEYHOLE for cocktails.

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In a recent case, The Trademark Trial and Appeal Board (the “Board” or “TTAB”) reversed a 2(d) refusal finding the applicant’s mark which contained words plus a design not to be similar enough to the registrant’s mark to cause a likelihood of confusion.  See In re Primeway International LLC, Serial No. 87059786 (January 9, 2019) [not precedential], where the applicant was seeking to register the mark INCOGNITO for footwear. The Examining Attorney determined that it caused a likelihood of confusion with the registrant’s mark STS INCOGNITO & Wolf Design for hats, hooded sweatshirts, jackets, shirts and t-shirts. In reversing the Examining Attorney, the Board pointed to several cases where a word mark and a word plus design mark were held not confusable because the design feature was the most visually prominent aspect of the mark. For more on design marks, see our web page entitled, Design Trademarks And How They Are Treated By Examining Attorneys.

The general rule is that when considering a mark that includes both words plus a design, the words are generally given greater weight because the words are more likely to be remembered by the consumer, and used to request or reference the goods or services. See In re Viterra, 671 F3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012). However, there is an exception to this rule and, in appropriate cases you should give greater weight to a prominent design feature. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KDAA v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135 (Fed. Cir. 2015). In other words, you can accord more weight to a more distinctive element in a mark. In the case at bar, applicant’s mark features a wolf in sheep’s clothing with an arm extended out against large letters “STS”. Underneath the large wolf design in small letters is the word “incognito”. The Board held that the most prominent feature of the mark was the wolf design and the letters STS and not the shared term “incognito”.

The Board relied on several cases where the design aspect of the mark was viewed as the dominant feature of the mark. See a precedential case decided in 2014, In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) [precedential], where the Board held that the goods for both marks were legally identical. The applicant applied to register the mark REDNECK RACEGIRL & Design, for athletic apparel, and the mark was initially refused by the Examining Attorney for causing a likelihood of confusion with the mark RACEGIRL for various clothing items. The refusal by the Examiner was grounded on the general rule mentioned above, but in that case, the exception to the rule should have applied. The Board reversed the refusal, finding that the first du Pont factor was determinative as the design of the mark was visually dominant, and rendered the term “Racegirl” difficult to read, while emphasizing the RR letters.

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In this matter, petitioner is seeking to cancel respondent’s trademark registration, FIREBRAND for a newsletter featuring brand and product development pursuant to Section 14(3) of the Trademark Act. See Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015 (TTAB 2018) [precedential]. Petitioner alleges that respondent abandoned the mark. Respondent filed a motion to dismiss for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6). To withstand a motion to dismiss, the petitioner must allege facts, which if proven would establish that petitioner is entitled to the relief sought. Here, the petitioner needed to show standing to bring the proceeding, and a valid statutory ground to cancel the registration.

The Federal Rules of Civil Procedure apply to Trademark Trial and Appeal Board (“TTAB”) proceedings. The rules require a short and plain statement of the claim showing that the pleader is entitled to relief. The Board follows the Iqbal/Twomblystandard, stating a claim for relief that is plausible on its face. There is no requirement that the Petitioner prove its case at the pleading stage. The Board has applied this standard in three cases, and in all three cases has concluded that no more is required other than pleading nonuse of the trademark, in conjunction with an intent not to resume use.

To further understand this issue one must understand use in commerce as a prerequisite to acquiring trademark registration. There must be commercial use of the type common to a particular industry. This would include test markets, infrequent sales of expensive goods or shipments of a new drug to a clinical investigator while waiting FDA approval. Under trademark law, abandonment is when use is discontinued with intent not to resume use. Intent not to resume may be inferred from circumstances. See also, our blog post entitled, How Do You Prove Abandonment Of A Trademark, for more information on this topic. The burden will initially rest with the petitioner to prove a prima facie showing of abandonment. Then the burden shifts to the trademark owner to show the mark was used in commerce or that the owner intended to resume use in the foreseeable future.

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The US Court of Appeals for the Federal Circuit (the “CAFC”) affirmed the Trademark Trial and Appeal Board’s (the “Board”) decision refusing to register the marks CORN THINS and RICE THINS for snack foods, and vacated the Board’s decision dismissing a claim that these same marks were generic. See Real Foods Pty Ltd. v. Frito-Lay North Am., Inc., Case Nos. 17-1959-2009 (Fed. Cir. Oct. 4, 2018). The Board not only held that the marks CORN THINS and RICE THINS were merely descriptive, but that the marks also failed to acquire distinctiveness.  See also the matter finding PRETZEL CRISPS to be generic for pretzel crackers. It is time for the snack industry to pay attention to the past, and consider adopting inherently distinctive marks.

The evidence showed the sales figures were not high, and a relatively small amount of funds were spent on advertising and marketing. Frito-Lay opposed the marks CORN THINS and RICE THINS, arguing that the marks should either be held generic or merely descriptive without a finding of secondary meaning (acquired distinctiveness). As part of the evidence submitted into the record, Frito-Lay produced a survey showing only ten percent of consumers associated the marks with a particular source. The CAFC determined that CORN THINS and RICE THINS were not only merely descriptive of snack foods, but in fact the marks were highly descriptive. In certain cases, five years of substantial and continuous use can allow a mark to acquire distinctiveness when the mark is not inherently distinctive, but this is not the case where the mark is found to be highly descriptive of the goods. The Court stated that an applicant’s burden increases when the mark is highly descriptive. In other words, a more descriptive mark requires more evidence of secondary meaning.

Real Foods argued that the marks were suggestive. Suggestive marks are inherently distinctive trademarks requiring imagination, thought and perception to determine the nature of the goods. Real Foods was hoping for a reversal of the descriptiveness finding, as was made in In re Panasonic Avionics Corp., Serial No. 86499954 (January 5, 2017) [not precedential]. The snack company attempted to convince the CAFC that there was a double entendre associated with the marks. Real Foods argued that the marks CORN THINS and RICE THINS not only conveyed that the snack food was of a physically thin nature, but it was a diet friendly and low calorie snack. The evidence below explains why this argument failed.

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In a recent case decided by the Trademark Trial and Appeal Board (the “Board” or the “TTAB”), the applicant argued that its proposed mark, ATHLETE INTELLIGENCE was suggestive of the goods requiring the consumer to use a multistep reasoning process. See In re i1 Sensortech, Inc., Serial No. 87249539 (November 9, 2018), where the Board determined that the mark ATHLETE INTELLIGENCE in standard characters for a monitoring device worn by a person to measure the effects of physical impacts, biometric data, physiological data etc., was merely descriptive of the identified goods, and not suggestive. The refusal to register was thus affirmed on appeal. Descriptiveness is a ground often cited for refusal by Examining Attorneys, to view other common grounds asserted by the USPTO for refusing registration see the firm’s web page entitled, Common Grounds For Refusal Of A Trademark.

There were a couple of interesting evidentiary issues to address in this appeal. In its reply brief, the applicant requested that the Board take judicial notice of its registration that was issued by the European Union Intellectual Property Office for the same mark and the identical goods. The Board pointed out that it has a practice of not taking judicial notice of third party registrations. This is done to encourage applicants to raise these matters during prosecution where it can be more readily resolved, and to avoid unnecessary appeals. The Board referred to the Trademark Trial and Appeal Board Manual of Procedure §1208.04, and denied the request for judicial notice.

The Examining Attorney also objected to the applicant submitting hyperlinks to news articles in its reply brief. The Examiner stated that this evidence should have been submitted in the prosecution’s record, and applicant could not at this late date bolster and expand the record with hyperlinks to additional evidence. The Board agreed, and did not consider the news articles. Also, merely providing hyperlinks is not an acceptable method for making the information or “linked material” part of the record.

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Typically, trademark applications and registrations can be assigned in whole or in part. For general information on trademark assignments, see the web page entitled, Trademark Assignments, where important concepts such as the chain of title and recording an assignment are discussed. However, there are special rules for intent-to-use applications under §10 of the Trademark Act. The statute is referred to as the anti-trafficking provision of the Lanham Act, 15 U.S.C. §1060(a)(1). It specifically states:

[N]o application to register a mark under section 1051(b) of this title shall be assignable prior to the filing of an amendment under section 1051(c) of this title to bring the application into conformity with section 1051(a) of this title or the filing of the verified statement of use under section 1051(d) of this title, except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.

The policy behind the statute is to ban assignments of intent-to-use applications (prior to the filing of an Allegation of Use or Statement of Use), unless the application is assigned with the business associated with the mark. Assuming there is an ongoing and existing business, the assignee of the intent-to-use trademark application, must purchase the whole business (assets, business location if one exists, employees etc.) affiliated with the mark. If the assignment is held to be invalid, it will void the underlying application or registration under §10 of the Trademark Act. See Clorox Co. v. Chem. Bank, 40 USPQ2d 1098 (TTAB 1996).

The following factors will be considered when determining if the assignee is a successor to the business of the applicant, was there a transfer of the business and the good will of the trademark, is there continuity of management, is the assignee producing products or rendering services similar to the applicant, has there been a transfer of assets, and are there documents supporting these facts. The fact finder will look to determine if the assignment was part of a larger transaction between the applicant and the assignee. In the matter of Central Garden & Pet Company v. Doskocil Manufacturing Company, Inc., 108 USPQ2d 1134 (TTAB 2013) [precedential], this was part of the problem. An assignment was recorded with the Assignment Division of the United States Patent & Trademark Office (“USPTO”), but the assignment constituted the entire agreement between the parties, and was not part of a more significant transaction. In this case, the assignee was not the successor to the business of the applicant. In fact, the Assignor continued in the same business after the transfer, including producing and selling the same products branded with the mark that was the subject of the assignment.

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