Westchester Women's Bar Association
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In one of the early opinions of 2025, the Trademark Trial and Appeal Board (TTAB) reversed the Examining Attorney’s refusal to register a mark based on likelihood of confusion. See  In re Metabeauty, Inc., Serial No. 97492557 (January 28, 2025) [not precedential].  In my opinion, the decision is noteworthy because it relied on only ten third party registrations (and technically only nine) as basis to conclude the shared term “12” is conceptually weak and therefore must receive a restricted scope of protection under U.S. trademark law. When multiple trademarks share a common term and co-exist on the Trademark Register it is referred to as a “crowded field”. See the previous blog posts discussing the crowded field theory, https://www.newyorktrademarkattorneyblog.com/the-federal-circuit-sends-a-strong-message-to-the-ttab/ and also https://www.newyorktrademarkattorneyblog.com/the-second-federal-circuit-decision-weighing-in-on-the-crowded-field-theory/ to better understand this important trademark principle.

The Applicant was seeking to register the number 12 in an octagon shape claiming green as a feature of the mark for nonmedicated skin care preparation in international class 003 and in class 035 for online retail store services featuring medical supplies, cosmetics, tools used for application of skin care preparations among other goods. The Examining Attorney refused the application based on a registration for TWELVE COSMETICS for private label cosmetics in class 003. The Applicant appealed the refusal. The Applicant did not contest the goods were related for confusion purposes. Therefore, the relatedness of the goods was not in dispute, and it was also held that the trade channels overlapped. Moving on to the similarities of the marks, the first consideration is whether the only literal term in the mark, 12 has any weakness for cosmetic products. A trademark’s legal strength is determined by its distinctiveness and its marketplace strength. In re Chippendales USA Inc., 622 F.3d 1346, 1353-54 (Fed. Cir. 2010).

The cited mark, TWELVE COSMETICS is registered on the Principal Register without a claim of acquired distinctiveness, thus it is presumed inherently distinctive. However, even marks on the Principal Register will vary in strength depending on if the mark is considered to be fanciful, arbitrary or suggestive. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 1325 (Fed. Cir. 2017). Third-party registrations are important evidence to show the conceptual strength (distinctiveness) of a trademark since it will  “‘show the sense in which a mark is used in ordinary parlance,’ that is, some segment that is common to both parties’ marks may have ‘a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak[.]”’ Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1374 (Fed. Cir. 2015). It is possible to conclude from third party registrations that a mark is weak due to a specific term, and slight differences can be enough to distinguish one source from another source. Continue reading

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The Trademark Modernization Act of 2020 provided for two new ex parte proceedings for non-use trademark challenges, Expungement and Reexamination. Prior to the new proceedings, if a trademark applicant encountered a trademark registration that blocked its application from registering at the Trademark Office, the only option was to initiate an expensive Cancellation Proceeding at the Trademark Trial and Appeal Board (“TTAB or Board”). For information on how these two proceedings work, see the firm’s webpage entitled, New USPTO Proceedings: Expungement & Reexamination. Also review, the Examination Guide1-21, Expungement and Reexamination Proceedings under the Trademark Modernization Act of 2020.

A few years later, the Board issued its first precedential expungement decision in In Re Locus Link USA, 2024 USPQ2d 1181 (TTAB 2024). Here, the Board affirmed the USPTO Director’s decision to cancel two registrations for SMARTLOCK for “components for air conditioning and cooling systems, namely evaporative air coolers”. The matter was initiated by a third party who filed a Petition for Expungement against the Registrant alleging non-use of the trademark SMARTLOCK for specified goods.

A Petition for Expungement must allege that the mark “has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration.” 37 C.F.R. §2.91(a)(1).  A complete Petition must include: (1) a filing fee of  $400 per class; (2) the trademark registration number(s) subject to the Petition: (3) the basis for the Petition under 37 C.F.R. §2.91(a); (4) the required information for Petitioner; (5) identification of each good or service subject to the Petition; (6) the elements of the reasonable investigation of non-use as defined under 37 C.F.R. §2.91(d), it must include a description of how and when the searches were conducted and what the searches disclosed; (7) a factual statement that supports the allegations of non-use as specified in paragraph 37 C.F.R. §2.91(a); and (8) a clear and legible copy of all documentary evidence supporting a prima facie case of non-use of the mark in commerce and an itemized Index of Evidence.

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After years of battles, this is a victory for dairy groups and cheese producers in the U.S. The Fourth Circuit Court of Appeals ended this dispute, see Interprofession du Gruyere v. U.S. Dairy Export Council, 61 F.4th 407 (4th Cir. 2023). Initially the United States Patent & Trademark Office (USPTO) approved and published the trademark application containing the certification mark (aka geographical indication) for “Gruyere” for cheese. Section 4 of the Trademark Act of 1946 (as amended) provides protection for Geographical Indications as certification and collective marks indicating regional origin. Domestic Geographical Indications include IDAHO (potatoes), WASHINGTON (apples) and FLORIDA (citrus). For more on the topic of certification marks, see our webpage, What You Need To Know to Register A Certification Trademark. The application was opposed at the Trademark Trial and Appeal Board (TTAB) on the grounds that Gruyere is a generic term for a type of cheese.

To determine if the term Gruyere is generic, the TTAB applied the test of Marvin Ginn. A generic term is one that the relevant public understands to be the common name of the goods or services or the name of the class of the products or services. See our web page entitled, Generic Terms, for examples of generic terms that were ineligible for registration at the USPTO.  Determining if a term is generic requires asking two questions: (1) what is the genus of goods or services at issue? and (2) is the term sought to be registered, understood by the relevant public primarily to refer to that genus of goods or services? The generic determination is based on the meaning of the term to consumers. The TTAB found that the genus of the goods was cheese and members of the general public who purchase or consume cheese to be the relevant public. In the end, the Board held that Gruyere is a generic term for a type of cheese in the U.S. See, U.S. Dairy Export Council et al. v. Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère, 2020 USPQ2d 10892 (TTAB 2020) [precedential].

In response, the European consortiums filed a complaint in the United States District Court for the Eastern District of Virginia challenging the TTAB decision. The District Court noted that the term “Gruyere” previously may have referred to cheese exclusively from Switzerland and France, but due to decades of importation of cheese labeled Gruyere produced outside the Gruyere region of Switzerland and France has diluted the meaning of the term rendering it generic. Thereafter, the European Consortium appealed to the Fourth Circuit of the Court of Appeals. The Fourth Circuit reviewed the evidence and also found that there was widespread labeling of Gruyere cheese originating in other countries besides Switzerland and France. The Fourth Circuit concluded that U.S. consumers understood the term “gruyere” referred to a type of cheese which renders the term gruyere generic. The reasoning for refusing to provide trademark protection for generic terms is that granting a party an exclusive right to utilize a generic term would be unfair and would interfere with competition.

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The Board’s Fifth Precedential Case of 2024

Suggestive marks with some conceptual weakness are still afforded a relatively broad scope of protection. See Sage Therapeutics, Inc. v. SageForth Psychological Services, LLC, Opposition No. 91270181 (April 12, 2024) [precedential], where the Board sustained an opposition based on priority and likelihood of confusion grounds. The Applicant was seeking to register the mark SAGEFORTH in standard characters for a lengthy list of services in class 44. The relevant portion included providing information in the field of psychological counseling, assessments, diagnosis, and treatment. The registered mark, SAGE CENTRAL provided services in class 44 for providing health and medical information about postpartum depression and treatment. Opposer pleaded six of its registrations and properly made the registrations part of the record, and because the applicant did not counterclaim to cancel any of the registrations, but merely to restrict the services, priority was not an issue in this case. See our web page entitled, Likelihood of Confusion Refusals 2(d) Refusals, for more on this topic.

The likelihood of confusion analysis was limited to the SAGEFORTH and SAGE CENTRAL registration. Regarding the similarities of the marks, the Board noted that the shared term SAGE was the dominant element in both parties’ marks. The parties noted that the word Sage is used to indicate wisdom or wise advice which is suggesting that the therapy services will provide wise counseling. Because Sage is the first element in each mark it is likely to be remembered by consumers. The Board held that the marks were visually similar since the marks were both Sage formatives. In addition, the marks have similar meanings and structure, and are likely to have the same commercial impression. The Board summed up the issue by stating that the shared Sage term will run the risk that consumers will believe there is an association or connection between the Applicant and Registrant. The similarities of the marks weigh in favor of likelihood of confusion.

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The Trademark Trial and Appeal Board (“TTAB” or “Board”) reversed the Examining Attorney’s refusal for likelihood of confusion based on identical trademarks, RAO’S for wine and restaurant services. See In re 1729 Investments LLC, Serial No. 90694523 (April 24, 2023) [not precedential]. This is not the first time, the Board reversed on this basis, see our blog post entitled, The TTAB Reverses a Refusal Relying On the Something More Standard (where the applicant applied for beer and the registration covered restaurant services). For more on the “something more” rule see our blog post entitled, The Origin Of The “Something More” Standard In Trademark Law.  The RAO’S case is an example where the TTAB holds the Examining Attorney accountable to its standard of proof. As mentioned above, the marks were identical, applicant was seeking to register RAO’S for wine and registrant was using RAO’S for restaurant and bar services.

The Board first compared the marks. The marks had some inherent conceptual weaknesses as it was a surname in one case and a middle name in the other case. Registrant in fact, sought registration under Section 2(f) of the Trademark Act. When a registration is issued based on acquired distinctiveness under Section 2(f), then it is an established fact the mark lacks inherent distinctiveness. Since the marks are conceptually weak, they are entitled to a narrower scope of protection. But of course, even weak marks must be protected against a similar or identical mark being registered for related goods and services. In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982). The marks are identical in their appearance, sound, meaning and commercial impression, thus the first Du Pont factor favors confusion.

The TTAB next assessed the relatedness of the goods and services. It is common knowledge that restaurants often serve alcoholic beverages such as wine, but it doesn’t necessarily follow that patrons and consumers expect wine to emanate from the same source as restaurants. In fact, there is no per se rule that food and beverage products and restaurant services are related. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993). The Trademark Office has to show “something more” than identical or similar trademarks used for wine and restaurant services. See In re Giovanni Food Co., Inc., 97 USPQ2d 1990, 1992 (TTAB 2011). See also, In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003).

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The Trademark Trial and Appeal Board (“TTAB”) ordered cancellation of a trademark registration for the mark DANTANNA’S for restaurant services, finding that the Registrant’s Attorney recklessly executed the Section 15 Declaration of Incontestability and disregarded the truth. See, Chutter, Inc. v. Great Management Group, LLC and Chutter, Inc. v. Great Concepts, LLC, 2021 USPQ2d 1001 (TTAB 2021) [precedential]. The Court of Appeals for the Federal Circuit (“CAFC”) reversed this decision in a precedential split decision, finding that a party is not entitled to use a Section 14 Cancellation Proceeding if another party files a fraudulent Affidavit of Incontestability under Section 15 of the Lanham Act. Great Concepts, LLC v. Chutter, Inc., 2023 USPQ2d XXXX (Fed. Cir. 2023).

To understand the legal requirements and benefits of filing a Declaration of Incontestability under Section 15 of the Lanham Act, see our web page entitled, Incontestable Trademarks. If you qualify to file a Declaration of Incontestability, it will become more difficult for a third party to invalidate your trademark. For example, once your mark registers, it becomes prima facie evidence of the validity of the trademark, but an incontestable trademark shall be conclusive evidence of the validity of the registered mark. Thus, it is more burdensome and difficult to prove invalidity of a registered incontestable mark than a registered mark without incontestable status. Once a mark is incontestable, the grounds to invalidate it will be restricted to those grounds listed in Section 14 of the Lanham Act. To view the restricted grounds, please see our webpage entitled, Challenging Trademark Rights After Five Years of Registration.

This CAFC decision is significant for a couple of reasons. Firstly, it clarifies that fraud in connection with filing and acquiring incontestability status is independent from fraud in connection with filing the application and obtaining registration of the mark. Further fraud in connection with filing a Section 15 Affidavit is also distinct from fraud committed in renewing or maintaining a trademark. And that engaging in fraud while filing a Section 15 Declaration cannot be used as a basis to cancel the registration. Secondly, the CAFC has made it clear that it will not expand the statutory basis under Section 14 of the Lanham Act.

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

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

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

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

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

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

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

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

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

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

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

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

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

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