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The Trademark Trial and Appeal Board (the “Board” or “TTAB”) recently reversed a refusal to register a mark on the grounds of likelihood of confusion. See In re Marathon Tours, Inc., Serial No. 86086458 (January 23, 2020) [not precedential]. In this case, it was a bit surprising that the Board justified its decision based solely on the marks being sufficiently different while finding the other relevant factors weighing in favor of finding a likelihood of confusion. The decision underscores a point that cannot be emphasized enough in trademark practice; descriptive marks severely restrict the scope of protection for those terms. The Board focused on the descriptive and generic terms in the registered mark.

The applicant was seeking registration on the Principal Register for the mark ANTARTICA MARATHON, in standard characters for “travel services, namely, organizing and arranging travel, travel tours, excursions, and sightseeing travel tours; providing travel guide and travel information services; and making transport reservation.” The applicant claimed acquired distinctiveness under 2(f) of the Trademark Act. The Examining Attorney accepted the 2(f) claim. However, the Examining Attorney cited the mark ANTARCTIC ICE MARATHON & 100K and Design for “Athletic and sports event services, namely, arranging, organizing, operating and conducting marathon races,” as likely to cause confusion with the applicant’s mark. The cited registration had a disclaimer for the term “ANTARCTIC ICE MARATHON & 100K” and for the design of the geographic representation of Antarctica. Upon issuance of a final refusal, the applicant appealed the refusal to register.

In its decision, the Board focused first on the marks. The shared terms in the parties’ marks were variations of “Antarctica” and “Marathon”. These terms are weak in relationship to the services. Registrant had to disclaim the terms since one describes the geographic location of the services and the other the type of race. Determining the strength of the terms is an important part of the analysis. See our recent blog post entitled, How To Overcome A 2(d) Likelihood Of Confusion Refusal, wherein it was emphasized, if shared terms are descriptive, additions to a mark may suffice to avoid likelihood of confusion. See also, the Trademark Manual Of Examining Procedure §1207.01(b)iii which discusses this point.

This rule emphasizes that if the terms common to both marks are generic or descriptive, it is unlikely that the terms will be perceived by consumers as source indicators, and that other differences between the marks may be adequate to obviate confusion. In other words, if consumers will not rely on the shared terms to distinguish source, additional terms in the mark may be able to differentiate the sources. Since the registrant’s mark contains generic and highly descriptive terms, the mark will receive a narrow scope of protection. The board concluded that applicant’s mark did not fall within the narrow scope of protection and therefore, the first du Pont factor weighed against finding confusion.

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In a recent Trademark Trial and Appeal Board (the “Board” or “TTAB”) decision a refusal is reversed based on the second DuPont factor. On the last day of December 2019, the Board issued a decision stating that the “related services doctrine (services provided in connection with the same goods) has no application here.” See In re Costa Farms LLC, Serial No. 87674168 (December 31, 2019) [not precedential]. In this case, the applicant was seeking registration of the mark GROW WITH US in standard characters on the Principal Register. The application identified the following goods, “Live flowers and living plants in International Class 31”. The Examining Attorney cited the mark, GROW WITH US in standard characters for the following services, “Distributorship services in the field of wholesale horticulture supplies and accessories” in International Class 35. The applicant appealed after the Examining Attorney issued a final refusal on likelihood of confusion grounds.

The Board, as in all decisions based on likelihood of confusion, stated that the two key considerations in the analysis are the similarities between the marks and the similarities between the goods and services. In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). Another important consideration is the similarity of the trade channels and whether there would be the same customers for the goods and services. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). If there are DuPont factors that are not relevant to the facts of a particular case, the Board will only consider the pertinent factors. The other factors are treated as neutral.

Since the parties’ marks were identical, the Board focused on the similarities and differences of the goods and services. On this point, the law requires that the goods and services be related in some manner and/or that circumstances involving the marketing give rise to a mistaken belief that the goods and services come from the same source. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). Analysis of the relatedness of the goods and services is based on the language used in the application and registration. One special rule that will apply here will be since the marks are legally identical there will be a lesser degree of relatedness required between the goods and services. See our blog post entitled, How To Overcome A 2(d) Likelihood Of Confusion Refusal, for more strategies in responding to Office Actions involving 2(d) refusals.

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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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As of August 3, 2019, all trademark applicants that are foreign domiciled must have a U.S. licensed attorney file its trademark applications at the United States Patent and Trademark Office (“USPTO”), and act as its representative at the Trademark Trial and Appeal Board (“TTAB” or “Board”). This rule also applies to Canadian trademark filers, attorneys and agents. Many countries around the world have a similar rule, and the USPTO has decided to follow suit for several reasons. It is in the public interest to maintain a Trademark Register that accurately reflects those marks that are in use in U.S. commerce for the goods and services identified in the registrations. An accurate Trademark Register will not only protect consumers, but will allow U.S. businesses to grow their companies while being able to invest in their brands with the security that the USPTO maintains and monitors the integrity of the Trademark Register. Lastly, prospective applicants rely on the Trademark Register to provide critical information on trademark clearance.

A frequently asked question in my practice is what does it mean to have a foreign domicile? An individual or an entity can have a foreign domicile. This means that such domicile is not located in the U.S. or its territories. An individual’s domicile is the place a person lives or resides, and the individual views the domicile as its principal home. An entity also maintains a domicile and that is where it has a principal place of business. A principal place of business is where the entity’s officers or senior management directs and controls the operating activities of the company. Applicants and Registrants must maintain current addresses for their respective domiciles.

The USPTO will be proactive if they discover a domicile address outside the U.S. without representation by a licensed U.S. attorney, and the Trademark Office will issue an Office Action. This applies to post registration as well. The Office Action will require the applicant or registrant to appoint a U.S. attorney. It should be noted that currently, P.O. Boxes as domicile addresses are generally not acceptable any longer. Although, if there are multiple owners and one owner has a U.S. domicile then a U.S. licensed attorney is not required. Foreign domiciled applicants who submit an application based on Section 66(a) (a Madrid application) must also appoint a U.S. licensed attorney. Applications filed through the Madrid Protocol are submitted with the International Bureau of the World Intellectual Property Office, and then transmitted to the USPTO. However, the current Madrid application does not have a provision to designate a U.S. attorney, therefore until it does, the USPTO will not enforce the appointment of U.S. trademark counsel prior to publication. But, if the Examining Attorney issues an office action in a 66(a) application, then the Examining Attorney will require an appointment of a U.S. attorney.

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In a recent case decided in November 2019, the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) sustained an opposition filed by Baccarat S.A. on various grounds including likelihood of confusion. The applicant was seeking to register the mark BACCARAT in standard characters for alcoholic beverages, namely vodka. Baccarat (“opposer”) pleaded ownership of 20 of its registrations for the mark BACCARAT, some of the goods included, crystal, glasses, cups, vases, decanters, carafes, champagne buckets, jewelry, candle sticks, and tea pots. Since the Opposer pleaded its registrations, priority was not at issue. See our blog post entitled, How Fame Impacts A Likelihood Of Confusion Determination, for an earlier decision on this topic.

The Board reviewed the DuPont factors, and pointed out that if fame exists it plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection and exclusivity of use. See our webpage entitled, Famous Trademarks Receive A Broader Scope of Protection, for more information on this topic. The Board discussed how fame is determined. It stated that fame could be measured indirectly by the volume of sales and advertising expenditures for the goods and services identified by the mark at issue, and by the recognition received by independent sources, such as unsolicited media coverage. Also, important is the length of time the mark has been used for the relevant goods or services, and the general reputation of the goods and services. The numbers for sales, advertising and market share should be put into perspective by comparing the statistics to similar goods or services.

Opposer placed evidence into the record showing its predecessors-in-interest started producing glass products in 1764 in France and by 1892 had an import agency in New York. Production of glassware and other goods under the BACCARAT mark continued into current times. Sales figures were introduced that showed from the year 2000-2017 sales of BACCARAT branded goods and services totaled $458,430,809. Advertising figures demonstrated that from the years 2005-2017 $33,996,270 was spent to market its goods and services. The opposer advertises its branded goods in top magazines and newspapers such as Vanity Fair, Architectural Digest, The New York Times, The Los Angeles Times, and Forbes magazine.

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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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In a recent reversal by the Board, emphasis was placed on the importance of du Pont factor number six; see In re Simpson Industries, Inc., Serial No. 87635385 (October 7, 2019) [not precedential]. This likelihood of confusion factor, the number and nature of similar marks in use on similar goods, has been growing in importance since the decision in Juice Generation, Inc. v. GS Enterprises LLC, 115 USPQ2d 1671 (Fed. Cir. 2015) [precedential]. A number of cases have followed this precedential case and subsequent cases have bolstered the support for the “crowded field argument”.  In the most recent case of In re Simpson Industries, Inc., there were 13 uses and five third party registrations submitted in the record. In this case, the applicant was seeking to register RAINFOREST NUTRITION in standard characters for dietary and nutritional supplements. The Examining Attorney refused the applicant’s mark based on the registered mark RAINFOREST ANIMALZ, in standard characters for nutritional supplements. After the final refusal, the applicant appealed to the Board.

The goods were in part identical; therefore the Board presumed that the channels of trade and the classes of purchasers were the same for the applicant and the registrant. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). The identity in part of the goods and the overlapping trade channels weighed heavily in favor of finding a likelihood of confusion. Moreover, since the goods are in part identical, a lesser degree of similarity between the marks is necessary to support a 2(d) refusal. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Here, the marks are similar because they share the term RAINFOREST. However, because the applicant was able to prove that the shared term RAINFOREST was conceptually and commercially weak for nutritional supplements, the Board determined confusion was not likely.

The applicant demonstrated that the term RAINFOREST is widely used by third parties for both branding, and as a descriptive term for nutritional supplements, including foods and beverages. The applicant offered evidence to show that retail stores commonly used the term RAINFOREST to sell nutritional supplements, such as “Rainforest Pharmacy,” “Rainforest Nutritionals,” “Organic Rainforest Company” and “Rainforest Foods”. In addition, the applicant submitted evidence of certain teas that used the term RAINFOREST for branding, while advertising that the teas promote health benefits. The Board found this evidence probative since it considered teas to be related goods, even though the goods did not come in a pill or capsule form.

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Receiving an Office Action that refuses your trademark application can be overwhelming. Most importantly, trademark applicants should be armed with knowledge of the general rules that apply so effective arguments can be crafted for a response to the Office Action. A common mistake is that applicants submit the wrong type of arguments in reply to a 2(d) Likelihood of Confusion Refusal. See our firm page entitled, Likelihood of Confusion Refusals, 2(d) Refusals, to review the 13 factors considered in this analysis. Below are ten critical rules for trademark applicants to keep in mind when confronted with a likelihood of confusion refusal.

Rule 1- What if you have legally identical or virtually identical marks? If this is the case then, a lesser degree of similarity between the goods and services will suffice to find a likelihood of confusion.  In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Gen. Mills, Inc. v. Fage Dairy Processing Indus. S.A., 100 USPQ2d 1584, 1597 (TTAB 2011); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). See also, In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).

Rule 2- What if the goods or services overlap or if the goods or services are identical or virtually identical, then a lesser degree of similarity between the marks is necessary to support a determination that confusion is likely. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); See also, Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).

Rule 3- What if only one good or service of a long list overlaps with the cited registration? As long as there is an overlap with any one good or service, the other goods or services in that particular class need not be examined. Typically, likelihood of confusion will be found in connection with the class of goods or services with any overlap at all. See In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010).

Rule 4- Another important rule dealing with goods or services that overlap or are identical is that the Board will presume that the distribution channels and the classes of consumers are the same for the applicant and the registrant. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011).

Rule 5- Be aware of the “Something More” Rule – When the relatedness of the goods and/or services is not evident, well known, or generally recognized, “something more” than the mere fact that the goods and services are used together must be shown. See, In re St. Helena Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) [precedential]. There is no per se rule as to what type of evidence will suffice under “something more”. Examples of types of “something more” evidence may include, a famous mark, actual use of a mark for both the goods and services at issue, or evidence of a large number of third-party registrations covering both the goods and services at issue. See, In re Coors Brewing Co., 343 F.3d at 1346, 68 USPQ2d at 1063.

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In 2014, the Trademark Trial and Appeal Board (“TTAB or the “Board”) issued a decision (not precedential) wherein it declared that the proper basis for refusing a mark that is a title of a single creative work is Section 2(e)(1) of the Trademark Act and not sections 1, 2 & 45 of the Lanham Act. See our blog post entitled, The TTAB’s Recent Decision Clears A Path For Titles Of Single Works, where we discuss the matter, In re King Productions, Inc., Serial No. 76703458 (November 19, 2014)[not precedential]. In re King Productions, Inc., opened the door for the Board to abandon its previous position that any single title to a creative work, such as a book, movie or play would not be able to function as a trademark and therefore not be able to register on the Principal Register or the Supplemental Register. See Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052, and 1127.

The Federal Circuit Court of Appeals (“CAFC”) has affirmed the position that single titles of works cannot act as source indicators. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002). The Board had issued consistent decisions such as,  In re Arnold, 105 USPQ2d 1953, 1954 (TTAB 2013) (“It is well settled that the title of a single creative work is not considered a trademark and is, therefore, unregistrable….”), until late 2014. Consistency broke in 2014, with the Board’s In re King Productions, Inc., decision that stated single titles are descriptive marks that may be able to acquire secondary meaning. However, the latest Board decision makes it clear that single creative titles cannot acquire distinctiveness. See In re Rothman, Serial No. 85945757 (September 10, 2019) [not precedential].

The applicant in In re Rothman, was seeking to register the mark, THE NEUROTIC PARENT’S GUIDE, in standard characters, for books on colleges and college admissions. Applicant’s mark was refused on the traditional grounds that the mark was a title to a single creative work. Applicant asserted that in addition to the book shown in the specimen the mark has been used on her blog in connection with colleges and the admissions process since 2008. The applicant argued that the blog although it is in a different medium would constitute use for a series. The Examining Attorney argued that to qualify as a series, the works must be in the same medium. Applicant, then made an argument in the alternative that the mark had acquired distinctiveness over the course of eleven years of use. The Examining Attorney made the refusal final and applicant appealed.

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This question, although it seems basic is a good question that is frequently asked, and should be thoroughly understood before proceeding with trademark registration. The concepts of trademark law namely use, protection, enforcement, and distinctiveness are all interrelated. A trademark owner can save time, expense, and effort by adopting an inherently distinctive mark and ensuring it is registered on the Principal Register with the United States Patent and Trademark Office. This blog will explain why registration is essential for acquiring strong legal rights, being able to efficiently enforce one’s trademark rights, and deterring others from infringing on your legal rights. If a trademark owner decides not to register its mark, and wants to enforce its rights, this becomes challenging. This challenge will also be encountered if a trademark is only registered on the Supplemental Register of the Trademark Office and not the Principal Register. See our firm page entitled, Filing Your Trademark On The Principal Register And Supplemental Register, for more information on this topic. The reasons why a trademark owner can benefit from registration are due to the presumptions that attach under the Lanham Act, specifically Sections 7(b) and 7(c) (15 U.S.C. §1057).

Under Section 7(b) of the Lanham Act, “[A] certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.” These same rights are conferred on a trademark owner who initiates the application process as an intent-to-use applicant, assuming the mark matures to a registration (the intent-to-use filing date would act as the constructive use date for priority purposes under Section 7(c) of the Lanham Act).

If the mark is registered on the Principal Register, the trademark owner doesn’t need to prove its proprietary rights if involved in litigation in court or before the Trademark Trial and Appeal Board (“TTAB” or the “Board”). In other words, if you only have common law rights or a mark on the Supplemental Register, you will need to spend time and resources to first prove you have proprietary rights in the trademark before attempting to enforce your rights in an infringement action or under a claim for likelihood of confusion at the TTAB. The proprietary rights must be acquired before the opposing party’s priority date. See Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1378 (Fed. Cir. 2002); Otto Roth & Co. Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). Keep in mind that a Supplemental Registration will provide a basis for standing and perhaps priority may not need to be proven, but proprietary rights must be demonstrated. See Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252 (TTAB 2012) [precedential]. A mark on the Supplemental Register is presumed to be merely descriptive of the goods or services identified in the registration, unless the trademark owner can prove acquired distinctiveness. The Opposer in Otter Products LLC, did not prove it possessed proprietary rights to the mark.

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