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Articles Posted in Trademark Trial and Appeal Board Proceedings

If you are an owner of either a supplemental registration or of common law rights, and you are challenging another party before the TTAB based on priority and likelihood of confusion, you would face similar hurdles. Only a trademark registration on the principal register will receive all the rights provided by the Trademark Act of 1946. A Principal Registration is entitled to: (1) constructive notice to the public of the registrants claim of ownership; (2) a legal presumption of ownership of the mark and of the exclusive rights to use the mark in commerce for the goods and services listed in the registration; (3) a date of constructive use of the mark as of the filing date of the application; (4) the ability to bring an action concerning the mark in federal court and to rely on the presumptions of ownership and exclusive right to use; and (5) acquiring “incontestable” status for the goods and services identified in the application, subject to certain statutory defenses.

There are additional rights granted to marks on the Principal Register, but the ones listed above apply only to marks on the principal register and not to marks on the supplemental register. The additional rights which apply both to the principal and supplemental register include: (1) use of the registration symbol ® with the mark; (2) filing suit in federal court for infringement, but note that the owner of the supplemental registration must prove it owns a proprietary interest in the mark by showing the mark has acquired secondary meaning before the adverse party’s priority date; (3) protection against registration of a confusingly similar mark under the Trademark Act, but marks on the principal register will receive broad protection while marks on the supplemental register will generally receive narrow protection based on how descriptive the mark is for the identified goods and services; and (4) the registration can be used as a basis for filing in a foreign country under the Paris Convention and other international agreements.

Regarding challenges before the Board (aka TTAB), the owner of a supplemental registration will have standing to oppose, but will still have to prove secondary meaning/acquired distinctiveness. Since marks on the supplemental register are presumed to be merely descriptive, evidence of secondary meaning must be submitted to the TTAB. If such evidence is not submitted, the Board will find against the owner of the supplemental registration and dismiss the notice of opposition with prejudice. See Otter Products LLC, v. BaseOneLabs LLC, 105 USPQ2d 1252 (TTAB 2012).

American University (“Petitioner”), a college located in Washington, DC filed a petition with the Trademark Trial and Appeal Board (the “Board” or “TTAB”) to cancel the mark AUK American University Of Kuwait & Design for educational services for college level courses. The grounds for cancellation were likelihood of confusion and priority, and nonuse, and counterclaims were asserted by American University of Kuwait (“Respondent”). The Petitioner owns several trademark registrations, including formatives of the mark American University where acquired distinctiveness is claimed.

These registrations were pleaded in the cancellation petition, including American University (standard characters) and AU (standard characters and a stylized mark) for educational services, namely courses of instruction on the college and graduate level. The Board did not decide the likelihood of confusion issue since it determined that the Respondent failed to use its mark “in commerce” prior to its application filing date. Thus, the TTAB determined that the mark AUK American University Of Kuwait & Design was void ab initio. See American University v. American University of Kuwait, Cancellation No. 92049706 (January 30, 2020) [not precedential].

This was a very lengthy decision by the Board. This blog will discuss only some of the many legal issues addressed in the Board’s decision. Regarding nonuse, if a use based application matures to a registration, it can still be challenged for nonuse. If an applicant files a use based application and fails to use the mark “in commerce” before the filing date of the application with any of the alleged services in a particular international classification, the entire class of goods will be held void ab initio. See Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043 (Fed. Cir. 2015); Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009). See also, our blog posts entitled, Proving Nonuse Of A Trademark Prior To The Application Filing and Trademarks Can Be Cancelled For Nonuse, for more on this topic. If the mark is a service mark then, “use in commerce” must include: (1) use of the mark in the sale or advertising of the services; and (2) rendering of the services in a manner that it impacts interstate commerce, rendering the services in more than one state in the U.S. or in the U.S. and in a foreign country.

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In a recent Trademark Trial and Appeal Board (the “Board”) decision the Board granted the petition in part for partial cancellation for the mark POLO GIRL for the following services, “[e]ntertainment in the nature of ongoing television programs in the field of polo sports events, and polo lifestyle in International Class 41”. See  American Polo Association, LLC v. Elizabeth Scripps, Cancellation No. 92066032 (December 19, 2019) [not precedential]. However, the Board held the Respondent did not abandon the mark for organizing and conducting polo events for fund raising, even though there was two years on nonuse. The Board held that the Petitioner did not prove that the Respondent had intent not to resume use for the organizing and conducting of polo events.

The Petitioner alleged that the Respondent did not use the mark for the subject services prior to filing the use application or in the alternative abandoned its rights after the filing of the trademark application. It was proven that the Respondent had not used the mark prior to the filing date (March 3, 2011) for an ongoing television program for polo sports events. Prior to the filing date, the Respondent had produced three videos on the subject matter in hopes of it leading to a television series. Two of the three videos were posted on Facebook® and YouTube®.

The three videos did not constitute ongoing television programing. It was not broadcast over the air or via cable, only the Internet. The three videos were not part of an ongoing program aired on television. Plus, there was no dialogue on the first two videos and none of the three videos were connected to each other. Thus, the petition to cancel as to “entertainment in the nature of ongoing television programs in the field of polo sports events, and polo lifestyle” was granted.

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Section 18 of the Trademark Act (15 U.S.C. §1068) provides a plaintiff with a basis to restrict or limit the goods or services in a registration based on grounds of likelihood of confusion. Section 18 applies to inter partes proceedings. It is unclear as to whether Section 18 would also apply in civil actions. A recent case coming out of the U.S. District Court for the Western District of Virginia held that Section 18 would not apply in court. Here, the court dismissed a counterclaim under Section 18, finding no legal basis for applying Section 18 to civil actions.

In Trademark Trial and Appeal Board (“Board”) proceedings, a plaintiff can seek to restrict the application to only certain goods or services or to limit the identification in a specific manner, by adding wording that identifies the goods or services with greater particularity in terms of type, use or channels of trade. This request can be made of registrations over five years old and of those less than five years old. The reason for this is because it is considered an equitable remedy. A plaintiff can seek to oppose or cancel a registration in whole or in part, see Trademark Manual of Examining Procedure §309.03(a)(1).

The plaintiff must plead and prove that (1) amending the identification to restrict the goods and services in the application or registration will avoid a finding of likelihood of confusion and (2) the opponent is not using its mark on those goods or services that will be excluded from the application or registration. See Eurostar Inc. v. Euro-Star Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 (TTAB 1994). A claim such as this falls under the provision that gives the Board authority to restrict or rectify the register. See IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, (TTAB 2009)[precedential]; Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478 (TTAB 1998). To make this determination, the Board will look to see if the defendant is using the mark on the goods requested to be excluded as of the time the restriction is requested, (not as of the time the registration was sought). A plaintiff could plead that the description in the application or registration is ambiguous or overly broad and not specific to the mark actually used by the defendant, and that the limitation would obviate a determination of likelihood of confusion.

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A recent case from the Trademark Trial and Appeal Board (the “Board” or “TTAB”) focuses attention on part of the Lanham Act, which is not often the subject of many Board Decisions. Section 2(c) prohibits registration of a mark if it consists of or comprises a name, portrait, or signature identifying a particular living individual without written consent,  Lanham Act §2(c) , 15 U.S.C. §1052(c). The applicant filed an application to register the trademark MANIKCHAND for tobacco. The opposer, (a corporation formed under the law of India) cited Section 2(c) of the Lanham Act, stating MANIKCHAND is the personal name of the founder of the opposer, Rasiklal Manikchand Dhariwal, and there is no consent to use the name. See, M/S R.M. Dhariwal (HUF) 100% EOU v. Zarda King Ltd. and Global Technology & Trade Marks Limited, Opposition No. 91231033 (April 26, 2019) [precedential].

Opposer argues that consumers in the United States refer to Rasiklal Manikchand Dhariwal as the Manikchand Group. The opposer pleaded ownership of an application for MANIKCHAND GUTKA for chewing tobacco. Regarding standing for a 2(c) claim, this may be established by asserting facts that that show that opposer is a competitor of the applicant and has a right to use the subject name. Opposer testified that MANIKCHAND has been used in connection with tobacco products in the U.S, and that some U.S. vendors sell it under the mark RMD MANIKCHAND. The registrability of a mark is determined on the basis of facts that exist at the time the issue is under consideration (i.e. throughout the pendency of ex parte and inter party proceedings). In re Thunderbird Prods Corp., 406 F.2d 1389, 160 USPQ 730 (CCPA 1969).

The rationale behind 2(c) is that the law wants to extend protection to living individuals so they can commercially exploit their names, and this is why written consent is required. To sufficiently allege a 2(c) claim, a plaintiff must allege that the mark consists of the name, likeness, image or signature of a particular individual. In addition, a plaintiff must have pleaded that the individual is so well known that the public would reasonably assume a connection between the mark and the individual or that the individual is publicly connected with the business or the field for the goods and services, so that the connection would be assumed.

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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 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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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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