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Articles Posted in Trademark Trial and Appeal Board Proceedings

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 applicant in this matter, American Cruise Lines, Inc. is seeking registration of the mark, AMERICAN CONSTELLATION (standard characters) for cruise ship services, transportation of passengers by ship and conducting cruises for others. The Examining Attorney refused the application based on a likelihood of confusion with the registrant’s marks, CONSTELLATION and CELEBRITY CONSTELLATION, both in standard characters for the same cruise ship services. The Examining Attorney requested that the word “American” be disclaimed, but applicant submitted evidence that it had acquired distinctiveness. The claim of distinctiveness was based on use in commerce with four U.S. registrations using the term “American” for cruise ship services. The Examiner accepted the evidence. The applicant voluntarily disclaimed the right to use the term “Constellation”. After refusing the application, the Examining Attorney denied applicant’s request for reconsideration, and the applicant appealed to the Trademark Trial and Appeal Board (the “Board” or the “TTAB”). See In re American Cruise LInes, Inc., 128 USPQ2d 1157 (TTAB 2018) [precedential].

The Examining Attorney as part of its review considered two consent agreements (agreeing to use and registration of the mark AMERICAN CONSTELLATION) submitted by the applicant. Consent agreements are relevant under the du Pont factors. It bears on the market interface between an applicant and a registrant. See our webpage entitled, Resolving Trademark Disputes Without Litigation, for general information on consent agreements, and other means used to resolve these types of disputes.

Typically, the Board addresses the other relevant du Pont factors first, then determines the importance of the consent agreement. Regarding services, those are identical in this matter so there is a presumption that trade channels and classes of consumers are the same, weighing in favor of confusion. Regarding conditions of purchase, applicant submitted affidavit evidence that purchasers of its services exercised a heightened degree of care when purchasing cruise ship services. Affidavit evidence is to be considered probative in nature in an ex parte proceeding, if the affidavit refers to matters known or observed by the affiant.

Regarding similarities between the marks, the marks share the common term, Constellation. This is an arbitrary word used in conjunction with cruise ship services, and will be given broad protection. There is no per se rule that calls for a finding of confusion when a junior user’s mark incorporates the entire mark of the senior user, but certainly this increases the likelihood of confusion. The Board determined the marks were very similar in sound, connotation, appearance and commercial impression.

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It is significant that the Board designated the opinion, In re FabFitFun Inc., Serial No. 86847381 (August 23, 2018), a precedent of the Trademark Trial and Appeal Board (“TTAB” or the “Board”). The applicant was seeking to register the mark, I’M SMOKING HOT in standard characters for various cosmetics, make-up, fragrances, nail preparations and toiletries. The Examining Attorney refused the registration based on the registered mark for SMOKIN’ HOT SHOW TIME in standard characters for cosmetics and mascara. Applicant appealed the likelihood of confusion refusal to the Board.

In likelihood of confusion refusals not all du Pont factors are relevant in every case, only certain factors will be considered based on the factual circumstances. The relatedness of the goods will be considered based on how the goods and/or services are identified in the application or registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also, Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). In the case at bar, the applicant’s and registrant’s goods include cosmetics. A single good from among a list can sustain a finding of likelihood of confusion. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Because the goods are in part identical, the trade channels are presumed to be the same, as well as the classes of purchasers. This du Pont factor weighs in favor of confusion.

Regarding the similarities of the marks, this factor is analyzed while keeping in mind that consumers only remember a general and not a specific impression. Also, another important rule to consider is if two marks share a common term, and the common term is  generic, descriptive or highly suggestive of the named goods or services, then it is less likely consumers will be confused unless the other elements of the mark share additional commonalities. Therefore, analysis of the shared term will play a critical role. Is the shared term, “Smoking Hot” strong or weak?

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I have written several blog posts on this top, and it is important to continue to discuss what documentation is required if an applicant must prove they possessed a bona fide intent to use a mark in commerce. See my blog posts entitled, Federal Circuit’s View Of Lack Of Bona Fide Intent To Use, and Should An Entire Application Be Voided If A Bona Fide Intent To Use Is Lacking, for more on this topic. An applicant filing a trademark application based on the 1(b) basis (intent to use a trademark in commerce) must submit a verified statement to this effect. The United States Patent & Trademark Office (the “USPTO”) will typically accept this statement without question. However, a third party may raise this issue in a challenge to the validity of the trademark application. If a party cannot overcome the challenge, an applicant or registrant may lose its trademark rights.

The Trademark Trial and Appeal Board (the “TTAB” or the “Board”) has not issued a plethora of decisions on this issue, but there are some decisions that provide guidance. Initially, the burden is on the opposer to demonstrate that the applicant does not have documentary evidence to support the claim of a bona fide intent to use. If the applicant cannot prove through objective evidence (most often documentation) that it’s intent existed, then the Board may sustain the opposition or cancel the registration. If there is no objective evidence, the Board may even grant summary judgment to a movant. A party may rely on documentary evidence used after the filing of the trademark application. However, having documents substantiating this position dated before the filing of the application will be strong evidence of a party’s intent.

A trademark application in the name of the mark identifying the goods or services or the trademark clearance search for the same, without more will not be sufficient evidence of an applicant’s bona fide intent to use the mark in commerce. See Swiss Grill Ltd., John Hartwig, Christopher Hartwig and Mathhew Hartwih v. Wolf Steel Ltd., 115 USPQ2d 2001 (TTAB 2015) [precedential]. However, in the cited case of Swiss Grill Ltd. et al, there was no documentary evidence of record to support the bona fide intent to use the mark in commerce.

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As a trademark practitioner, it is important to carefully review 2(d) reversals by the Board since they occur infrequently. Approximately 90 percent of likelihood of confusion refusals are affirmed. In a recent reversal by the Board, a number of factors contributed to the decision to allow registration, but in my opinion the most significant factors were the differences in the services and the weakness of the term AUBURN. See In re Capital Schools, Serial Nos. 86931396 and 87048675 (April 23, 2018) [not precedential], where the Applicant filed two applications: (1) THE AUBURN SCHOOL in standard characters and (2) CAMP ARISTOTLE AT THE AUBURN SCHOOL in special form. The services included “educational services, namely, providing courses of instruction for children at the early elementary to high school level with special needs; educational services, namely, courses of instructions in the field of math, science, language arts, social studies, foreign language, physical education, music and art for children at the early elementary to high school level with special needs; educational services, namely, providing summer camp programs for children at the early elementary to high school level with special needs”.

The Registrant’s cited marks included word marks and special form marks using the term AUBURN, but the Trademark Trial and Appeal Board (the “Board”) focused on the standard character mark for AUBURN. This mark was the most similar to the Applicant’s marks. The Registrant’s services include: “education services, namely university and community education, public lectures and workshops, seminars and conferences…” In addition, there are entertainment services relating to sports, theatre, concerts, and dance. The Examining Attorney argued that the Registrant’s mark AUBURN is a famous trademark. To support that position, the Examiner submitted a definition from the American Heritage Dictionary: “Auburn is an Alabama city and the “seat of Auburn University…”

Typically, the Board will take judicial notice of dictionary definitions to determine meanings of words, but because this definition was offered into evidence to prove fame, the Board decided it would not take judicial notice. The Board reasoned that evidence of fame is not usually of record in ex parte proceedings. In the majority of cases, Examining Attorneys do not have access to the types of evidence that can prove fame. Therefore, the Applicant did not know to address this issue in its brief. Moreover, the dictionary definition in and of itself does not prove that the public is aware of the information. The Examining Attorney also argued that the fact that the Registrant owns 111 trademark registrations shows fame. The Board on the same logic disagreed, stating that the public was not likely aware of the number of registrations owned by the Registrant. The Board determined that the mark was not famous.

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The USPTO and the Trademark Trial and Appeal Board (“TTAB” or the “Board”) have been trending towards refusing marks and affirming refusals where the trademarks are legally identical, and where the goods are complementary, or in other cases where the goods are intrinsically related. The burden is on the Applicant to adopt a mark that is not confusingly similar to another brand in its industry or in a related industry. Where the trademarks are identical or nearly identical, a lesser degree of relatedness between the goods is necessary to support a finding of likely confusion. See a recent Board decision, In re Spin80, Inc., U.S. Serial No. 87116915 (January 31, 2018) [not precedential], where a refusal was affirmed for the marks CODEGREEN for nutritional supplements in pill and powder form, and CODE GREEN for fruit beverages and vegetable based food beverages.

The Board concluded that the marks were indistinguishable in appearance, and identical in sound, meaning and commercial impression. Any applicant that adopts an identical mark or a nearly identical mark is immediately at a disadvantage, since a different standard will apply in the likelihood of confusion analysis. A lesser degree of similarity between the goods or services will suffice. The Examining Attorney produced evidence of third-party websites. These five websites showed that one mark was used in connection with both fruit and juice beverages, and nutritional supplements in a pill form. The Examiner also submitted evidence of 11 use-based third-party registrations that identified both fruit beverages and nutritional supplements in pill form. This evidence demonstrates that the goods may emanate from the same source. Based on this evidence, the Board determined that the goods were related, and that consumers could mistakenly believe the goods originated from the same source.

Upon reviewing the identifications of the Applicant and Registrant, the Board noted there were no restrictions indicated. This means that there is an assumption that the goods travel in all the normal and usual channels of trade. The Board held that the trade channels and classes of consumers overlapped. The refusal to register the mark was affirmed.

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Trademark practitioners can barely keep up with the decisions being issued by the Trademark Trial and Appeal Board (“TTAB” or the “Board”) in the area of surnames. In relatively recent times, the TTAB was focusing on the importance of the rareness of the surname. Then in the spring of this year, another shift occurred where the rareness factor was deemphasized with regard to the number of people having a surname the same as the mark. See the case of In re Beds & Bars Limited, 122 USPQ2d 1546 (TTAB 2017) [precedential]. Instead, the Board is now focusing on the media exposure of any “famous” or “public” figure with the surname the same as the proposed mark.

Multiple factors are considered to evaluate whether a trademark will be perceived as a last name. Among the factors to be considered in determining whether a term is primarily merely a surname are the following: (i) whether the surname is rare; (ii) whether anyone connected with applicant uses the term as a surname; (iii) whether the term has any other recognized meaning other than a surname; and (iv) whether the term has the “look and feel”’ of a surname or the structure and pronunciation of a surname; and (v) whether the term is sufficiently stylized to remove its primary significance of that of a surname. In re United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB 2000). See also, Miller v. Miller, 105 USPQ2d 1615 (TTAB 2013) [precedential].

In re Bed & Bars Limited, cited above, the proposed mark BELUSHI identified hotel, travel and restaurant services. Evidence was presented that only five people in the U.S. have the surname Belushi, and no one affiliated with the Applicant had the name Belushi. Yet the Examiner refused the mark on the Principal Register, finding it to be primarily merely a surname. The Board affirmed this 2(e)(4) refusal, focusing on the fame and publicity surrounding John and Jim Belushi (aka the Belushi brothers), arguing that their celebrity lives increase the public awareness of the surname.

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The Opposer or Petitioner in a proceeding before the Trademark Trial and Appeal Board (the “Board”) has the burden of proof to demonstrate there was no use of the mark in commerce prior to the time the trademark application was filed. This showing must be made by a preponderance of the evidence. Opposer or Petitioner may present a prima facie case of nonuse based on the Applicant or Registrant’s inability to present any evidence that there was use of the mark in commerce. If a prima facie case is established by Opposer or Petitioner, then the burden shifts to rebut the case by producing evidence that establishes interstate use in commerce by the filing date.

Opposer or Petitioner will obtain the evidence through discovery. Discovery may or may not include depositions. Evidence acquired through discovery must be made a part of the record. It is important that the Opposer or Petitioner make requests for production of documents, Interrogatory Demands, etc. seeking evidence of interstate sales of the goods or services branded with the mark. The responses to the discovery demands should be made a part of the record. It is possible that the responses may show that no documents were produced or the responses and documents could tend to indicate sales of the branded goods or services were not made. However, if no discovery requests are made or if the Opposer/Petitioner does not make the responses part of the record, the burden may not shift to the Applicant/Registrant.

See Julius Samman Ltd. v. Ibrahim Nasser and Serious Scents, Inc., Opposition No. 91210658 (October 31, 2016) [not precedential], where the Opposer did not submit into the record, responses to admission requests, document requests, or interrogatories showing that Applicant wasn’t able to produce documentary evidence to support use of the trademark in commerce. In this case, the Opposer attached supporting documents to its trial brief instead of properly make the documents a part of the record. The Board pointed out that materials attached to the trial brief cannot be given consideration, unless, the documents were properly made a part of the record during the taking of testimony, TBMP Section 704.04(b). In Julius Samman Ltd., the Opposer did not meet the burden of a prima facie showing that the Applicant wasn’t using the mark at the time the application was filed.

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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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