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Articles Posted in Trademark Trial and Appeal Board Proceedings

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 v. Ibrahim Nasser and Serious Scents, Inc., Opposition No. 91210658 (October 31, 2016) [not precedential], where the Opposer did not submit into the record, responses to admission requests, document requests, or interrogatories showing that Applicant wasn’t able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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It appears that more often than not the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) issues favorable decisions for the big corporations. However, this one came down against Williams-Sonoma Inc. (the “Applicant”) last month. See In re Williams-Sonoma, Inc., Serial No. 86092589 (June 28, 2017), where the Applicant filed an application for the mark MANHATTAN in standard characters for upholstered furniture in international class 20. The Examining Attorney refused the application and the Board affirmed the refusal based on the registration for MANHATTAN CABINETRY in standard characters for custom designed and crafted furniture in class 20 on grounds of likelihood of confusion. To overcome these types of refusals, see our webpage entitled, Overcoming Likelihood Of Confusion Refusals.

One of the Applicant’s arguments as to why the mark MANHATTAN for upholstered furniture should be allowed to register was that the Registrant’s mark MANHATTAN CABINETRY for custom designed furniture was weak. The Applicant argued that since Manhattan is a geographic term, it is only entitled to a narrow scope of protection. This argument backfired on Williams-Sonoma because the Registrant’s mark registered under the provision of Section 2(f) of the Lanham Act. This means that the mark was held to have acquired distinctiveness. It is important to note that marks having acquired distinctiveness under §2(f) of the Lanham Act (also known as the Trademark Act of 1946) are entitled to the same trademark protection as inherently distinctive marks. The board cited E.I. du Pont de Nemours & Co. v. Societe Dupont, 161 USPQ 489, 491 (TTAB 1969) for this proposition. The Board also pointed out that there was no evidence that the term Manhattan was commonly used in the relevant field. Therefore, there was no basis for the Applicant to argue that the mark was entitled to a narrow scope of protection.

The Board compared both marks and held that based on the standard that a consumer does not retain a specific impression but instead a general impression, a consumer will find the marks substantially similar. The Board determined that if the two marks are used on overlapping goods, then there will be confusion, mistake or deception. In the case at bar, the term Manhattan is the dominant element of both marks. When comparing the goods, the Board held that both identifications (upholstered furniture and custom designed and crafted furniture) are broadly worded so that each respective mark encompasses custom designed and upholstered furniture. Therefore, the Board held that the goods were overlapping in scope. When goods of the parties overlap, then the degree of similarity required between the marks is not as great as it would be if the goods were diverse.

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Equitable considerations play a role in the Trademark Trial and Appeal Board’s (the “Board”) deliberations when determining whether or not to grant a Petition to Cancel a trademark registration. See Teledyne Technologies, Inc. v. Western Skyways, Inc., 78 USPQ2d 1203 TTAB (2006) [precedential], where the Board denied a cancellation petition based on laches even though the petitioner established by a preponderance of the evidence that confusion was likely. This is a notable precedent of the Board and a respondent facing a Petition to Cancel should be aware of the facts and prior Board findings so parallels can be drawn between relevant circumstances and precedential decisions.

Teledyne Technologies, Inc. (“Petitioner”) petitioned the Board to cancel Western Skyways, Inc.’s (“Respondent”) registration for the mark GOLD SEAL for aircraft engines based on grounds of likelihood of confusion between the sources of the goods and prior rights. The Petitioner’s mark is identical (GOLD SEAL) to Respondent’s and the mark is used for “airplane parts, namely ignition harnesses”. There was testimony from Petitioner’s senior project manager that an ignition harness is an essential part of an aircraft’s engine. There was further evidence that the Petitioner commenced use of the mark with ignition harnesses in 1991 while the Respondent’s use was not until 1994. The Board held that the Petitioner had priority of use and the Respondent did not contest this fact.

Regarding likelihood of confusion, the Board commented that the identical marks impact the relatedness requirement to the effect that the degree of similarity required between the parties’ goods declines. The Board held that the goods were commercially related. It was further held that aircraft engines and ignition harnesses for aircraft engines travel in the same or similar channels of trade. However, the Board found two du Pont factors that weighed in the Respondent’s favor: a sophisticated consumer base and the absence of actual confusion despite the marks simultaneous use in the same trade channels for about ten years. However, after weighing all the du Pont factors the Board determined that Petitioner proved its likelihood of confusion claim by a preponderance of the evidence. See our web page entitled, Likelihood of Confusion Refusals – 2(d) Refusals, to review all the factors involved in this analysis.

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A frequently asked question in our practice is, can an acronym register at the United States Patent & Trademark Office (USPTO) and be protected as a federal trademark? The answer is it depends on the circumstances, but under the right circumstances acronyms as well as abbreviations can function as trademarks. See our web page entitled, Can Abbreviations And Acronyms Be protected Under U.S. Trademark Law, for a summary of the treatment of abbreviations, acronyms, and initialism by the USPTO. A recent case from the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) supports the use of acronyms as trademarks as long as they satisfy the standard enunciated in the case of Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293 (CCPA 1956).

See In re Life Cycle Engineering, Inc. Serial No. 85692710 (August 4, 2014) [not precedential], where the Board reversed a refusal of an acronym based on merely descriptiveness. The applicant filed for registration of the acronym RBAM for business management and consultation in the field of engineering and maintenance of industrial, military, and marine equipment in addition to some other related services. The applicant filed a request for reconsideration after the final refusal but that was denied and this appeal followed.

The merely descriptiveness refusal is based on Section 2(e)(1) of the Trademark Act. This section mandates refusal on the Principal Register if the mark immediately conveys information regarding a function, feature, purpose, characteristic, quality, ingredient or use of the goods or services. This determination is a finding of fact and must be based on substantial evidence. An acronym is merely descriptive of the goods and services only if it has become so generally understood by the relevant consumers that it is representative of the descriptive words and it is accepted as substantially synonymous therewith. In other words, a consumer or user of the services when viewing the acronym in connection with the services would recognize it as an abbreviation for the descriptive wording.

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This Trademark Trial and Appeal Board (TTAB) dispute involves the mark SHAPE (in both standard character and stylized format) owned by Weider Publications, LLC (Opposer) and the trademark SHAPES in standard character format owned by D & D Beauty Care, LLC’s (Applicant).   See Weider Publications, LLC v. D & D Beauty Care Company, LLC, 109 USPQ2d 1347 (TTAB 2014) [precedential]. The Applicant attempted to register SHAPES for beauty salon services, day spa services, and health spa services. The Opposer owns several registrations for the mark SHAPE, among them : (1) a magazine relating to physical fitness and exercise, in print format and online; (2) DVDs and CD-Roms featuring audio and video recordings in the areas of health, fitness and nutrition; and (3) apparel. Weider Publications filed a Notice of Opposition on the grounds of priority of use, and likelihood of confusion under Section 2(d) of the Trademark Act, and likelihood of dilution by blurring under Section 43(c) of the Trademark Act. The Applicant did not contest the Opposer’s priority of use. Therefore, the only issue to be determined is likelihood of confusion.

Likelihood of confusion must be proven by the Opposer by a preponderance of the evidence. When one of the parties alleges its trademark is “famous” under the definition of trademark law, often the TTAB will commence its analysis with the fame factor under the du Pont paradigm. Fame has a different definition under likelihood of confusion than it does under dilution. For purposes of likelihood of confusion, fame arises as long as a ” significant portion of the relevant consuming public … recognizes the mark as a source indicator.”  See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed Cir. 2005). Other relevant factors are volume of sales, length of time the trademark has been used in commerce, the reputation of the products and services, advertising expenditures of the goods and/or services sold under the mark, and recognition by independent sources of the goods and/or services identified by the trademark.

The evidence demonstrated that the Opposer had used the trademark SHAPE with its goods and services for over 30 years to identify its print magazine and for 15 years in connection with its online magazine. The print version of SHAPE magazine reached over 1.6 million readers while the online SHAPE magazine received an average of 3 million visitors per month. In addition, there is a newsletter wherein 700,000 readers subscribe. In the end, the audience for SHAPE magazine across all platforms is approximately 6 million per month. Deposition testimony supported these facts. There was also testimony regarding what an advertiser spent in the print version of the magazine for a full page ad – $182,000. SHAPE magazine generated substantial revenue since 2009.  It received multiple awards and widespread media coverage. Regarding the fame determination, the Board concluded that for purposes of likelihood of confusion, the SHAPE marks were famous for its print magazine and online content.

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Trademark practitioners will encounter a 2(d) Refusal (refusal due to a likelihood of confusion with a prior trademark registration) or a Notice of Opposition sooner or later in their practice. The case of Embarcadero Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825 (TTAB 2013) [Precedential], reminds practitioners and applicants alike that the outcome of a 2(d) refusal or of an Opposition may be favorable if the Applicant is able to narrow its identification in such a manner as to avoid a likelihood of confusion with a prior registered mark or a senior user. A defendant may assert an affirmative defense by moving to restrict its goods and services.

Here, the applicant filed three applications for RSTUDIO in standard character format in International Classes 9, 41, & 42, for the following goods and services: computer software for statistical computing; computer software for software applications development; providing training in the use of computer software; providing training in the use of statistical methods; application service provider, computer software consultation, design and development of software; and technical support services. The Opposer filed a Notice of Opposition based on the grounds of priority and likelihood of confusion. Its registration is for ER/STUDIO in standard character format for entity relationship modeling software for SQL databases.

Before discovery closed, Applicant filed a motion to amend the application to narrow his identifications (limit his description of the goods and services). Under the Lanham Act Section 18, the Board is given equitable power to restrict the goods or services in a trademark application or registration. See 15 U.S.C. §1068, and TBMP 311.02(b). The current description of the Applicant’s goods is relatively broad.  From a reading of the goods in International Class 9 it is presumed that the software incorporates all types of statistical computing software. Similarly the software design, development and training services are broad enough to include all types of software design, development and training, including those described in Opposer’s registration. However, based on the proposed modification to the identification, Applicant will narrow the descriptions to the field of “advanced” statistical software using the “R” computer software language.

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One reoccurring question we receive in our practice is what constitutes “use in commerce” for a service mark. This question sounds simple enough, but often it involves a complicated analysis that is fact dependent. In a recent case before the Trademark Trial and Appeal Board (TTAB), David Couture (Couture), the owner of U.S. Registration No. 3560701 for the mark PLAYDOM misunderstood the law and what constituted use in commerce and as a result his trademark was cancelled. See Playdom, Inc. v. Couture, Cancellation No. 92051115 (February 3, 2014) [not precedential].

Couture applied for the mark PLAYDOM in standard character format on May 30, 2008. It registered on January 13, 2009. Couture filed a use-based application for entertainment and educational services with regard to script development for television and film production. Couture alleged that he first used the mark on May 30, 2008. Section 45 of the Trademark Act, 15 U.S.C. §1127 states that a service mark is used in commerce when the mark is used or displayed in the sale or advertising of the services and the services are rendered in commerce.

Unfortunately for Couture, Walt Disney & Co. (Disney) purchased a game development company known as Playdom. Disney was looking to expand its gaming presence online with social networks such as Facebook. On February 9, 2009 the company purchased by Disney filed an application for the mark PLAYDOM in International Classes 9, 41, 42, & 45. The application was refused because of a likelihood of confusion with Couture’s U.S. Registration for PLAYDOM. Soon thereafter, Playdom Inc. filed a cancellation action with the TTAB based on fraud on the PTO. To support its case the Petitioner (Playdom Inc.) submitted a letter written by Couture that essentially states that Couture had been advertising his services since the date of his filing, but he had not rendered the services identified in U.S. Registration No. 3560701. Petitioner argued that if this was the case, then the information contained in the trademark application was false.

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