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The USPTO refused registration of the mark PANACHE (in standard characters) for "apple butter; apple purée; processed apples," finding it likely to cause confusion with the registered mark MANGO MANGO MANGO PRESERVES A PANACHE PARTY PRESERVE and design (shown below) for "fruit preserves" [MANGO and MANGO PRESERVES disclaimed]. How do you think this appeal came out? , Serial No. 87182253 (February 20, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).


Applicant's "processed apples" fall within the ambit of Registrant's "fruit preserves" because fruit includes apples and preserves are processed fruit. Also, apple butter and and fruit preserves are both used as "spreads" and therefore are related products. The evidence revealed that several entities sell apple butter and preserves under the same mark at their respective websites. The Board concluded that the goods are in part identical identical and are offered in the same channels of trade.

As to the marks, the Board found that MANGO MANGO with a mango design is the dominant portion of the cited mark.

They are by far the largest elements of Registrant’s mark and most likely to catch consumers’ eyes. As such, they are that part of the mark consumers use to call for Registrant’s preserves. It stretches credulity that consumers would refer to Registrant’s preserves as “A Panache Party Preserve” or “panache”.

"Mango Preserves" is name of the product and, therefore, has little or no source-identifying significance. The term “A Panache Party Preserve” is an advertising tagline telling consumers that Registrant’s MANGO MANGO preserves are high quality products.

The Trademark Examining Attorney argued that “Panache” is the dominant part of Registrant’s mark because the phrase “A Panache Party Preserve” “gives the general impression of being a house
mark.” However, an excerpt from Registrant’s website showed that Registrant refers to itself as MANGO MANGO, not as a “Panache” company. The tagline “A Panache Party Preserve,” creates the commercial impression that Registrant’s preserves have flair or style.

The Board concluded that the marks are not similar and that the first du Pont factor outweighed the other factors. And so it reversed the refusal.

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TTABlog comment: Is this a WYHRR? (Would you have refused registration?)

Text Copyright John L. Welch 2018.






Product configurations can never be inherently distinctive trademarks. So says Wal-Mart v. Samara Bros. Moreover, such proposed marks face a heavy burden when the applicant attempts to establish acquired distinctiveness under Section 2(f). Here are two recent cases in which the applicants failed to clear the 2(f) hurdle.


, Serial No. 86706847 (February 20, 2018) [not precedential] (Opinion by Judge Christopher Larkin). Kronebusch sought to register as a trademark the pistol-shaped handle of its fire extinguishers. (See drawing above). Applicant asserted that it intended to design a distinctive and recognizable handle (unlike standard nut-cracker type handles), but intent was irrelevant since the question was whether the consuming public perceives the design as a source indicator.

The Board was unimpressed by several form statement from dealers and customers, in part due to their conclusory language, lack of geographical diversity, and missing information. Advertising expenditures were modest, and although the advertising depicted the fire extinguisher, there was nothing to call the attention of the consumer to the shape of the handle: i.e., no "look-for" advertising.


Similarly news articles regarding the products do not mention the handle design as a product feature that serves to identify source. Finally, the fact that Kronebusch's fire extinguishers have enjoyed significant exposure in media and at tradeshows does not mean that consumers have become conditioned to recognize this handle design as a trademark.

And so the Board affirmed the refusal to register under Sections 1, 2, and 45 of the Lanham Act. In other words, the handle design fails to function as a trademark.


, Serial No. 86761651 (February 20, 2018) [not precedential] (Opinion by Judge David K. Heasley). Applicant NuWave sought to register the product design shown immediately above for "electric induction cooktops." Applicant explained that induction cooktops may be placed on kitchen counters and "work without getting hot; rather they generate a magnetic field which causes the pan itself to get hot."

NuWave contended that the rounded shape of its product distinguishes it from competitive products, most of which are rectangular. The examining attorney pointed out, however, that cooktops are commonly offered in a variety of shapes, including round, and so applicant's shape is not particularly exclusive, distinctive, or source-indicating.



Reviews of applicant's product focused on the usefulness of the design or its attractive appearance, but did not equate the shape with a particular source. "Because the applied-for mark in this case is a nondistinctive product configuration, which consumers may appreciate for its utility or appearance rather than its source, a showing of five or more years' use is insufficient."

Applicant's advertising and sales number were "respectable," but its advertising and packaging consistently identify the product by the word mark "Nuwave," and so that evidence did not prove that the product design has consumer recognition. The sales figures may reflect the popularity of the product, not that the public recognizes the shape as a trademark.

NuWave claimed that the copying of its product by Farberware evidenced acquired distinctiveness, but the Board was unmoved. It is more common that competitors copy product designs for desirable qualities or features. Moreover, copying is proof of acquired distinctiveness only if the copier's intent is to confuse customers by passing off its product as the applicant's. Farberware displayed its own mark on the packaging and so was not attempting to pass off its product.

Finally, the Board noted in passing that NuWave's ownership of a design patent does not, without more, "bestow upon said device the aura of distinctiveness or recognition as a trademark."

Concluding that applicant failed to prove acquired distinctiveness, the Board affirmed the refusal to register under Sections 1, 2, and 45 of the Lanham Act.

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TTABlog comment:  Of course, the first hurdle to be cleared for a product design is Section 2(e)(5) functionality. I wrote a paper about these hurdles () in 2004.

Text Copyright John L. Welch 2018.






The Board granted Tyco Fire's motion for summary judgment, finding the product configuration marks shown below, for a "heat fusible link for use in fire protection," to be functional under Section 2(e)(5). The mark on the left "consists of a configuration of a copper rectangular heat fusible link with rounded edges with a transparent circle at the top and bottom." The mark on the right is identically described except for the word "copper." , Oppositions Nos. 91212425 and 91220233 (January 22, 2018) [not precedential].


Opposer’s expert explained that the fusible link consists of two plates placed under tension or load. The plates are held together by a fixed heat-sensitive material, which in the event of a fire melts or breaks once the ambient temperature reaches a certain degree, causing the plates to separate. When the plates separate the fire detection or suppression system is activated.

Generally, a product design or product feature is considered to be functional in a trademark sense if it is (1) “essential to the use or purpose of the article,” or if it (2) “affects the cost or quality of the article.” TrafFix, 58 USPQ2d at 1006 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). The Board found no genuine dispute of material fact "that the configuration of Applicant’s goods is essential to the use and purpose of the goods and affects the cost and quality of the article under the standard set forth in Inwood/TrafFix."

The evidence of record, including various utility patents (both applicant's and third-party patents) established that the use of identical, overlying plates serves a utilitarian function. At to the "transparent circles," which are actually holes in the plates, the circular shape depicted in the drawing of the patent "is the most logical and effective choice." The rounded ends are used to avoid sharp edges. As to the straight sides of applicant's device:

As the many patents of record show, we live in a world of straight edges and right angles. The straight parallel sides of Applicant’s goods would be essential to fitting the goods into mechanisms that have limited space. Competitors who are required to eschew the use of straight, parallel sides in order to avoid infringing upon Applicant’s trademark rights would be put to “a significant non-reputation-related disadvantage."

Applicant did not rebut Opposer’s contention that in certain applications, fusible links with straight, parallel edges and circular holes are one of the few available alternatives.

Finally, Applicant contended that the copper-colored design presented in one application is not functional for the additional reason that the application contains a claim to the color copper. However, the evidence showed, and applicant did not dispute, that the color is the result of the natural coloring of the commercial bronze, and that commercial bronze has utilitarian function in a fusible link. The Board concluded that "[c]ompetitors who are required to eschew the use of copper, bronze, or other metals having a copper-like color in order to avoid infringing upon Applicant’s trademark rights would be put to 'a significant non-reputation-related disadvantage.' Nor should competitors have to paint their links to mask the copper color.

Therefore, the Board found no genuine dispute of material fact that the copper color of Applicant’s mark is dictated by a functional feature of the goods.

And so the Board entered judgment summarily in opposer's favor.

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TTABlog comment: The Board is a bit fuzzy at times on the difference between utilitarian functionality [de facto functionality] and trademark functionality [de jure functionality]. Many configurations and features may have the former, but not necessarily the latter. E.g., the scoring on a Hershey bar.

Text Copyright John L. Welch 2018.






The Board affirmed a refusal to register the design shown below, for "Non-medicated cleaning preparations for livestock, horses, and domestic animals, ...." and various other products for said animals, agreeing with Examining Attorney Barbara A. Gaynor that the design fails to function as a trademarks. Said the Board: "Applicant’s applied-for design fails to emerge out of the background of the specimens and hit the prospective buyer in the eye, and [we] find that Applicant’s ribbon-shaped banner is a background design that does not create a commercial impression separate and apart from the word mark in conjunction with which it is used." , Serial No. 86454618 (February 14, 2018) [not precedential] (Opinion by Judge Albert Zervas).


The Examining Attorney maintained that the applied-for mark "is merely a background design that functions as part of a composite mark that incorporates additional designs or wording." (see excerpt from specimen of use, below).


The Board observed that when an applicant seeks to register a background design, the design must create a commercial impression separate and apart from the word mark with which it is used. Professor McCarthy has commented that "the more fanciful and distinctive the background design, the more likely it is to 'hit the buyer in the eye' and hence be more than background. In such a case, the so-called 'background' comes out into the spotlight of real trademark significance."

The Board noted that none of the specimens of use showed the ribbon-shaped banner alone; all have the word ABSORBINE superimposed thereon. The word ABSORBINE covers much of the design and follows the incline of the banner. This arrangement of wording and geometry suggests that they are part of the same mark. The color yellow is irrelevant since color is not claimed as part of the mark.

Ribbon-shaped designs are not uncommon for these type of goods, as evidence by the two registrations cited by the Examining Attorney. The applied-for design appears to be nothing more than a refinement of a basic background design and would be regarded as such by consumers.

And so the Board affirmed the refusal under Sections 1, 2, and 45 of the Lanham Act.

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TTABlog comment: Even if applicant had claimed the color yellow, I doubt that it would have made any difference. No look-for advertising, no use of the banner with words other than ABSORBINE. Is this a WYHA?

Text Copyright John L. Welch 2018.






A TTAB judge once stated that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the goods or services. Presented for your perusal are three recent TTAB decisions in Section 2(d) appeals. One was reversed. Which one? [Answer in first comment].

, Serial No. 86828751 (February 13, 2018) [not precedential] [Section 2(d) refusal to register the mark GRACE (in standard character form) for "Medical wearing apparel, namely, scrub tops and bottoms; medical wearing apparel, namely, pants for emergency medical personnel" in Class 10; and "Nurse’s apparel, namely, tops and bottoms, uniforms, lab coats; scrubs not for medical purposes" in Class 25, in view of the identical mark registered for "women’s sportswear, namely, jackets, pants, skirts, blouses, dresses, shirts, and knit tops, but excluding pantyhose and hose"].


, Serial No. 86860062 (February 14, 2018) [not precedential] [Section 2(d) refusal of the mark shown immediately below, for "Latin American style food products, namely, processed flavored plantains slices, processed flavored yucca chips; Latin American Style food products, namely, fired flavored peanuts and baked flavored peanuts"


in view of the registered mark shown below left for "candy for consumption on and off the premises" and "retail candy and gift store services," the registered mark shown below right for "Dairy-based snack foods excluding ice cream, ice milk and frozen yogurt; Fruit-based food beverage; Oils and fats for food; Snack food dips; Vegetable-based snack foods," and the registered mark YUMMYS in standard character form for "Vegetable-based snack foods; Fruit-based snack foods; Vegetable chips; Fruit chips; Milk products excluding ice cream, ice milk and frozen yogurt"].


, Serial No. 87172299 (February 9, 2018) [not precedential] [Section 2(d) refusal of WE DO IT ALL! for "detective agency services" in view of the registered marks JUST CALL – WE DO IT ALL! for "legal services" and MAKE THE CALL WE DO IT ALL! for "legal services; providing legal services in the field of injury law, workers' compensation law, and social security disability law"].


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TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.






The USPTO refused registration of TWEEDS for "shirts; sweaters" on the Supplemental Register, deeming the term to be generic for the goods. Applicant argued that "[t]weed is a fabric, not a shirt or sweater," and that "tweeds" is "merely descriptive of a type of sweater or shirt." How do you think this appeal came out? , Serial No. 86529647 (February 13, 2018) [not precedential] (Opinion by Judge Christopher Larkin).


Applicant first pointed to its ownership of a now-expired registration for TWEEDS for the same goods. The Board shrugged that off, pointing out that each application must be examined on its own merits, and citing In re Cordua Rests., Inc., 118 USPQ2d 1632 (Fed. Cir. 2016) (CHURRASCOS in stylized form found generic for restaurant services despite subsisting "incontestable" registration for the word mark for the same services).

As evidence of the public's understanding of the word "tweeds," Examining Attorney John C. Boone relied on dictionary definitions ("Tweed" is defined as a rough, woolen cloth woven with different colored threads), webpages referring to various types of tweed fabric, webpages showing use of the words "tweed" and "tweeds" in connection with various items of woolen clothing, websites displaying shirts referred to as "tweed" shirts and "tweed" shirt jackets; and webpages and Google search results for "tweed sweaters

The Board observed that the USPTO must show more than that "tweeds" refers to other items of clothing. It must show that "tweeds" refers to a category of shirts or sweaters.

The evidence included multiple webpages offering "tweed" shirts and "tweed" sweaters. Many of the items were not made of wool. Applicant agreed that "it is possible to find shirts and sweaters that are made of tweed," and that the "examples given by the examining attorney use the word 'tweed' to indicate the type of sweater or shirt being offered." [Emphasis by the Board].

The Board pointed out that the use of "tweed" to indicate the type of shirt or sweater is use in adjectival form, rather than in noun form to identify a fabric. However, generic adjectives "are just as unprotectable as generic nouns:" for example, "footlong" for sandwiches excluding hot dogs. Sheets of Del., Inc. v. Doctor's Assocs. Inc., 108 USPQ2d 1341 (TTAB 2013).

Applicant effectively conceded that TWEEDS identifies a category of sweaters or shirts included within the relevant genus. The pluralization of the word "tweed" as TWEEDS does not alter its meaning as referring to categories of shirts and sweaters.

On the basis of the record as a whole, we find that the Examining Attorney has established, by clear evidence of generic use, that Applicant’s claimed mark TWEEDS is understood by the relevant purchasing public to refer to categories of shirts and sweaters that are made of tweed fabric, or that have the appearance, look, or style of tweed fabric. The proposed mark is thus incapable of distinguishing Applicant’s goods, making it ineligible for registration on the Supplemental Register.

And so the Board affirmed the refusal.

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TTABlog comment: If the evidence showed use of "tweed" only with shirts and sweater made of wool, would "tweed" be merely descriptive but not generic?

Text Copyright John L. Welch 2018.






The TTAB reversed a refusal to register the mark AWLVIEW for, inter alia, warehouse inventory management software, overturning the USPTO's rejection of applicant's specimen of use. Because the mark appears on the login and search screens of Applicant’s downloadable software when the software is in use, the Board concluded that the specimen "shows the applied-for mark used in connection with the goods ... and would be perceived as a trademark identifying the source of those goods." , Serial No. 86430215 (February 12, 2018) [precedential] (Opinion by Judge Linda A. Kuczma).

(Click on photo for larger version)

The first page of applicant's two-page specimen (the login screen shot shown above) displays the wording "AWLview WMS for Sterling Jewelers" appearing above "AWL Logon WS 202" shown in the title bar of the login page. The second page (the SKU search query page shown below) contains the wording "AWLview WMS for Sterling Jewelers WS 202 - LCM" appearing above "Inventory By SKU Report-WS 202" shown in the title bar of the SKU search query window.

(Click on photo for larger version)

The Board observed that, according to Section 904.03(e) of the Trademark Manual of Examining Procedure (Oct. 2017), an acceptable specimen for software "might be a photograph or printout of a display screen projecting the identifying trademark for a computer program."

Because software providers have adopted the practice of applying trademarks that are visible only when the software programs are displayed on a screen, see TMEP § 904.03(e), an acceptable specimen might be a photograph or screenshot of a computer screen displaying the identifying trademark while the computer program is in use. The second substitute specimen features screenshots of Applicant’s mark appearing on the log-in and search screens viewable by Applicant’s customers utilizing the downloaded software. Because the mark appears on the login and search screens of Applicant’s downloadable software when the software is in use, we find that the second substitute specimen shows the applied-for mark used in connection with the goods in Class 9 and would be perceived as a trademark identifying the source of those goods.

Finally, the Board noted that, again according to Section 904.03(e) of the TMEP, "[i]t is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce. See, e.g., In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (holding that stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, is sufficient use)."

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TTABlog comment: AWL set, in my VIEW.

Text Copyright John L. Welch 2018.






The TTAB, in a combined program with the PTAB, will take its "Stadium Tour" to in New Orleans on February 28th. The TTAB panel will hear oral argument in the two cases summarized below. The day-long program will include an "Overview of the Trademark Trial and Appeal Board" by Chief Judge , and a panel discussion on advocacy, featuring judges from both the TTAB and the PTAB. Full agenda may be found .


February 28, 2018 - 11 AM: , Serial Nos. 85498107 [Section 2(d) refusal of BEAST MODE SOCCER for "T-shirts" and "Sporting goods and equipment for soccer training, namely, balls. " in view of the registered mark BEAST MODE, for "t-shirts" and "Men's, women's and children's clothing, namely, shirts, sweatshirts; headwear, namely, hats, caps"].


February 28, 2018 - 1 PM: , Opposition No. 91210158 [Opposition to registration of the slogan REMEMBER THIS NAME for legal services on the ground that the applied-for mark does not function as a mark and cannot be perceived by consumers as a source identifier].


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TTABlog comment: Looking forward to full reports from attendees.

Text Copyright John L. Welch 2018.






Lisa Larimore Ouellette, Associate Professor of Law at Stanford Law School, responds to the article posted yesterday, in a note entitled, Does Running Out Of (Some) Trademarks Matter?, 131 Harv. Law. Rev. Forum 116 (2018) [pdf ]. While praising the work of Professors Beebe and Fromer, Professor Ouellette suggests further avenues of research regarding the actual costs or the countervailing benefits of either depletion or congestion, before recommending any change in the current trademark system.


In this short space, I wish to laud the remarkable descriptive contribution of Are We Running Out of Trademarks? while sounding a note of caution on the normative implications. Beebe and Fromer’s data convincingly demonstrate that short, common word marks are becoming depleted and congested, and they present a number of plausible hypotheses about the negative welfare impact of this trend. Their findings suggest that trademark policy has been based on false assumptions and should be closely reexamined. But their data cannot elucidate the actual costs of depletion or congestion — particularly without noting how the market will adapt to reduce these costs — and cannot reveal if there are countervailing benefits. Generating concrete evidence of these costs and benefits seems like a necessary next step before recommending any significant changes to the current trademark system. After offering a laudatory evaluation of the value of Beebe and Fromer’s descriptive work, I explore why reforms in reaction to their research should proceed cautiously, and I suggest important avenues for future empirical work to build on these results.

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Text Copyright John L. Welch 2018.






"Conventional wisdom" says that the number of available trademarks is infinite, or nearly so. Professors Barton Beebe and Jeanne C. Fromer of New York University School of Law challenge that assertion in their enlightening article: Are We Running Out Of Trademarks: An Empirical Study of Trademark Depletion and Congestion, 131 Harv. Law Rev. 948 (February 2018). [pdf ].


American trademark law has long operated on the assumption that there exists an inexhaustible supply of unclaimed trademarks that are at least as competitively effective as those already claimed. This core empirical assumption underpins nearly every aspect of trademark law and policy. This Article presents empirical evidence showing that this conventional wisdom is wrong. The supply of competitively effective trademarks is, in fact, exhaustible and has already reached severe levels of what we term trademark depletion and trademark congestion.  * * *  These data show that rates of word-mark depletion and congestion are increasing and have reached chronic levels, particularly in certain important economic sectors. The data further show that new trademark applicants are increasingly being forced to resort to second-best, less competitively effective marks. Yet registration refusal rates continue to rise. The result is that the ecology of the trademark system is breaking down, with mounting barriers to entry, increasing consumer search costs, and an eroding public domain. In light of our empirical findings, we propose a mix of reforms to trademark law that will help to preserve the proper functioning of the trademark system and further its core purposes of promoting competition and enhancing consumer welfare.

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TTABlog comment: Should we take some small comfort from the fact that Matal v. Tam and In re Brunetti have freed up more words for registration as trademarks? On the other hand, Bayer v. Belmora says that one need not own a trademark in the United States to bring a Section 43(a) claim (Bayer owned the mark FLANAX in Mexico). Does that further narrow (slightly) the number of marks available in this country?

P.S. I'm sorry to see the Professors use the terms "trademark" and "trademarking" as verbs, instead of "register" and "registering."

Text Copyright John L. Welch 2018.






The Board granted respondent's motion for summary judgment, dismissing this petition for cancellation of a registration for the mark THE EBONYS for entertainment services by a musical group. The Board ruled that claim preclusion barred petitioner's fraud and likelihood-of-confusion claims in light of a prior Board decision () dismissing petitioner's closely similar fraud claim. , Cancellation No. 92066369 (January 19, 2018) [not precedential].


In the prior cancellation proceeding, Petitioner Beasley alleged that Respondent Howard knowingly made false statement regarding his (Howard's) use of the mark THE EBONYS. Beasley, however, failed to submit evidence to support the fraud claim, and so the Board dismissed the proceeding.

In this, the second proceeding, Beasley provided more detailed allegations regarding the alleged fraud, but the Board found that "the core transactional facts in each proceeding are the same." Therefore it concluded that Beasley's renewed fraud claim is barred under the doctrine of claim preclusion.

As to Petitioner Beasley's likelihood-of-confusion claim, the Board observed that claim preclusion bars "a subsequent assertion of the same transactional facts in the form of a different cause of action or theory of relief." A party cannot avoid claim preclusion merely by bringing additional claims in a second proceeding based on the same transactional facts as the first proceeding.

We find that there is no genuine dispute that Petitioner’s likelihood of confusion claim in this proceeding is based on the same transactional facts as, and should have been litigated in, the Prior Action. Specifically, Petitioner has alleged in both proceedings prior use and ownership of THE EBONYS mark for a vocal music group. In addition, with respect to the involved registration in each proceeding, Respondent had alleged use of THE EBONYS mark for the same or similar services to those offered by Petitioner. In view thereof, Petitioner could (and should) have asserted his likelihood of confusion claim in the earlier case.

And so the Board granted respondent's motion for summary judgment and dismissed the proceeding.


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TTABlog comment: I never heard of THE EBONYS.

Text Copyright John L. Welch 2018.






The USPTO refused registration of the mark CODEGREEN for "nutritional supplements in pill and/or powder form," finding the mark likely to cause confusion with the registered mark CODE GREEN for "fruit beverages" and "vegetable-based food beverages." Applicant Spin80 argued that the goods are not related because its supplements are geared toward the training, exercise, and fitness industries whereas the cited goods have no particular application. How do you think this came out? , Serial No. 87116915 (January 31, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch).


Because the marks are nearly identical, a lesser degree of relatedness between the goods is necessary to support a finding of likely confusion.

Examining Attorney Jillian Cantor submitted website pages showing nutritional supplements in pill form and fruit beverages sold under the same mark. In addition, 11 use-based third-party registrations that identify both nutritional supplements and fruit beverages suggested that the goods many emanate from the same source.

As to applicant's argument that its goods are "highly specialized," the Board found no evidence to support that assertion. [Irrelevant anyway, since there are no such limitations in applicant's identification of goods - ed.]. There was ample evidence that "the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the emanate from the same source."

The evidence showed that the channels of trade for the involved goods, and the classes of consumers, overlap. There was no evidence to support applicant's contention that "consumers of nutritional supplements necessarily are overly dedicated to fitness and wellness," and are "specifically pursuing the results and effects" of the supplements. The Board noted that while some consumers may exercise a certain degree of care in selecting supplements, they are not necessarily likely to exercise a high degree of care in examining the trademarks. Moreover, the Board must consider the least sophisticated potential purchasers in making its determination.

Finally, applicant argued that the difference in price of the goods would prevent confusion, but applicant failed to prove that all of its goods are expensive. In any case, the identification of goods in the application has no price limitation, and the evidence showed that supplements can sell as low as  $4-10. And even if consumers exercised a degree of care in purchasing these goods, it is well established that even sophisticated consumers are not immune from source confusion when encountering substantially identical marks.

And so the Board affirmed the refusal.

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TTABlog comment: Was this a WYHA?

Text Copyright John L. Welch 2018.






The USPTO refused to register the mark PEACEFUL PIRANHA for potato chips, processed nuts, and other snack items, finding the mark confusingly similar to the registered mark PIRAÑA for potato chips, nut-based snacks, etc. Applicant argued that there is an incongruity in its mark that creates an entirely different connotation to the consumer as compared to the cited mark. How do you think this came out? , Serial No. 87120774 (February 6, 2018) [not precedential] (Opinion by Judge Frances Wolfson).


Because the goods in the application and the cited registrations are identical in part, the Board must presume that they travel in the same channels of trade to the same classes of consumers.

As to the marks, the Board found the word "piranha" to be the dominant portion of Applicant’s mark "because it is modified by the term 'peaceful' in the same manner as an adjective modifies a noun." Even though "peaceful" is the first word in applicant's mark, consumers are likely to focus on the word "piranha."

Moreover, "for English language speakers who are unfamiliar with Spanish, the differences between the terms PIRANHA and PIRAÑA are insignificant."

Without knowledge of the purpose of the tilde in a Spanish “n” (i.e., that it changes the pronunciation of the letter “n” to the “ny” sound such as is used in the English word canyon), a consumer of Applicant’s goods may perceive the tilde as simply a design feature of the mark or consider Registrant’s mark as a misspelling of the English word “piranha.” Those consumers who do not speak or understand Spanish are unlikely to pronounce the “ny” sound and will consider the pronunciations of the terms to be the same. For these reasons, such consumers will associate both the terms PIRANHA and PIRAÑA with the fish.

For consumers having a knowledge of Spanish, the terms will be perceived as equivalents, under the doctrine of foreign equivalents.

As to the incongruity in applicant's mark, the Board that piranhas may be considered vicious and that a peaceful piranha "does not jibe with that perception, although given the popular understanding of what characterizes a piranha, even a 'peaceful piranha' may be seen to have an incipient propensity to be vicious." The Board did not agree, however, that applicant's mark "is so counterintuitive in its word-play on 'piranha' that confusion with the cited mark PIRAÑA would be obviated." In short, the presence of the additional term PEACEFUL in applicant’s mark "is not likely to distinguish the marks since it would merely indicate an atypical piranha, possibly for use with a subset of snack foods offered under the PIRAÑA mark."

And so the Board affirmed the refusal.

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TTABlog comment: Was this a WYHA?

Text Copyright John L. Welch 2018.






The USPTO refused registration of the mark TERNURA for cigars, finding it likely to cause confusion with the identical mark registered for "liquor; tequila; vodka; wines."Applicant contended that, under applicable precedent, tobacco and alcohol are not considered "related" unless the prior registered mark is well-known or famous and the applicant is seeking to exploit the registered mark. Since the cited mark is not well-known, applicant asserted, confusion is not likely. How do you think this came out? , Serial No. 86961428 (February 1, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).


Not surprisingly, the Board found the marks to be identical in sound, appearance, meaning (Spanish for "kindness" or "tenderness"), and commercial impression.

As to the goods, Internet evidence submitted by Examining Attorney Clare Cahill showed that third parties produce and offer for sale cigars and alcoholic beverages under the same mark. The examining attorney also provided evidence that cigars and alcoholic beverages are complementary in that they are consumed together. Prior Board decisions found JOHNNY WALKER for cigars confusable with the same mark for whiskey, and CASCADE for whiskey confusable with the same mark for cigarettes.

Applicant relied on Schenley Distillers, Inc. v. Gen. Cigar, 166  USPQ 142, 143 (CCPA 1970), for the proposition that, because the cited mark is not well-known or famous and is not marketed in a way to gain recognition, confusion is not likely here. The Board first noted that the fame of a prior mark is generally considered only in an inter partes context. Moreover, here the evidence suggests that "the alcohol industry has evolved since the issuance of the Schenley decision . . . to the extents that in the current marketplace it is not uncommon industry practice for distillers and  vintners, and not just those with 'a famous name or trademark,' . . . to produce and offer both cigars and alcoholic beverages under the same mark."

To be clear, we are not finding that cigars and alcoholic beverages in general are related based upon some abstract similarity between alcohol and tobacco. The record in this case establishes that cigars and alcoholic beverages are not only produced and offered for sale by third parties under the identical mark, but they are also complementary products that are marketed together for simultaneous consumption. As such, when both products are offered under the identical, arbitrary trademark, consumers are likely to believe that the goods originate from the same source.

The evidence further established that alcoholic beverages and cigars travel in the same channels of trade, such as liquor stores and online marketplace retailers. In fact they are complementary products that are marketed together for simultaneous consumption.

As to the conditions of purchase, the items identified in the application and cited registration include inexpensive products purchased by the public at large. Even assuming that the prospective purchasers are knowledgeable and sophisticated, they are not immune from source confusion. In any case, likelihood of confusion must be assessed from the standpoint of the least sophisticated consumer.

The Board therefore concluded that confusion is likely and it affirmed the refusal.

Read comments and post your comment .

TTABlog comment: So all alcoholic beverages are related to each other, and also to all tobacco products?

Text Copyright John L. Welch 2018.






Despite Applicant Louis Vuitton's attempt to sidestep the refusal by narrowing its identified channels of trade, the Board affirmed a Section 2(d) refusal to register the mark APOGÉE for perfumery products "for non-professional use and sold only within Louis Vuitton Malletier stores, on Louis Vuitton Malletier's website and within Louis Vuitton Malletier's store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier's exclusive distributor network." The Board found the mark confusable with the registered mark APHOGEE for hair care preparations. , Serial No. 79165769 (February 2, 2018) [not precedential] (Opinion by Judge Angela Lykos).


The marks: The Board found the marks to be similar in appearance, sound, connotation and commercial impression. "[E]ven if consumers were to perceive Applicant’s mark APOGÉE as the French word for “height,” because the marks are so alike in appearance and could be pronounced similarly, it is likely that consumers would perceive the cited mark as having the same meaning and commercial impression."

The goods: The record evidence showed that "it is not uncommon for perfumery and hair care products to be sold under the same trademark." The Board concluded that the involved products "are related, complementary items intended to be used together as part of one’s beauty care regime."

Applicant contended that "Registrant has no nexus to the alchemic ambit of luxury French perfume," and argued that Registrant’s goods are limited to professional grade products. Irrelevant, said the Board, since there are no such limitations in the application and registration at issue.

Channels of trade: A key issue in the appeal concerned whether the trade channel restrictions in the application - “sold only within Louis Vuitton Malletier stores, on Louis Vuitton Malletier’s website and within Louis Vuitton Malletier’s store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier’s exclusive distributor network” - eliminate any likelihood of confusion.

Because the cited registration has no restriction on channels of trade, the Board must presume that registrant's hair care products travel in all trade channels appropriate for these goods, including traditional brick-and mortar and online department stores, and direct business-to-consumer (B2C) websites offering for sale hair care products and perfumes to the general public.

The Board agreed with applicant that Louis Vuitton's own stores and websites "are specialized trade channels that do not overlap with the ordinary channels of trade for Registrant’s products." However, that is not the case with regard to "Louis Vuitton Malletier’s store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier’s exclusive distributor network." Since high-end retail stores often sell the types of goods at issue, they are an appropriate trade channel and therefore one in which registrant’s goods may travel. This factor favored a finding of likely confusion.

Conditions of sale: There are no restrictions in the application or cited registration as to purchasers or price points. Even assuming, as applicant asserts, that its perfumes are purchased by sophisticated and discriminating consumers, even careful purchasers are likely to be confused when highly similar marks are used in connection with related goods.

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment .

TTABlog comment: Suppose applicant LV filed a new application limiting the goods to perfume sold only in Louis Vuitton Malletier stores?

Text Copyright John L. Welch 2018.






The Board affirmed a Section 2(d) refusal to register the mark shown below left, for "Computer application software for mobile phones and desktop computers, namely, software for visualizing the popularity of places in real time, that uses an underlying map capability for navigation, sold as ‘business to consumer’ (B2C) software, and not as ‘business to business’ (B2B) software," finding it likely to cause confusion with the registered mark shown below right, for "Downloadable mobile applications for mobile phones and mobile electronic devices, primarily software for travel and destination marketing organizations and travel marketing professionals." Applicant Solid State argued, to no avail, that the registration improperly failed to specify the function of the software, but the Board observed that it lacked the power to read limitations into the unrestricted identification of goods in the registration. , 125 U.S.P.Q.2d 1409 (TTAB 2018) [precedential] (Opinion by Judge Christopher Larkin).


The marks: The Board found the word "populace" dominant in both marks, and the marks identical in sound, similar in appearance, and highly similar in connotation and commercial impression.

[W]e agree with the Examining Attorney [Erin R. Zaskoda] that "the average consumer is most likely to recall generally the literal element ‘POPULACE’ . . . rather than making a very nuanced distinction that the outline of a person emphasizes the social aspect of the applicant’s goods and the arguably globe or orb image emphasizes the travel and tourism aspect of the cited goods . . . ."

The goods:  The only limitation on the goods in the cited registration is that they are "[d]ownoadable mobile applications for mobile phones and mobile electronic devices." The Board is required to consider that identification as including "all good of the nature and type described therein." In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). Therefore, the goods in the registration must be deemed to encompass Applicant's more specifically identified "computer application software for mobile phones."

Applicant asserted that the cited registration is inconsistent with the guidance provided by the USPTO's Acceptable Identification of Goods Manual, which states that "[m]obile applications are software applications design for smartphones, tablet computers, and other mobile devices, and require specification of the function of the software." The ID Manual further provides that "[s]tating that the 'downloadable mobile applications' are 'for use with mobile devices' is not acceptable" to specify the function of such applications. It provides the following form language: "Downloadable mobile applications for {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use}." [Emphasis by the Board].

The Board noted that "[t]his appeal illustrates the problems that can arise when the requirement to specify the function of a computer program such as a downloadable app is not satisfied." It pointed out, however, that the TTAB lacks the authority to read limitations into the identification of goods, In re i/am/symbolic, LLC, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017), including a specification of the function of the apps, or to "grant relief under Section 18 sua sponte." In re Cook Med. Tech. LLC, 105 USPQ2d 1377, 1384 n.6 (TTAB 2012). The Board observed that, in such a situation, the applicant has the option of seeking a consent from the owner of the cited registration, or seeking a restriction of the registration under Section 18. Id.

Trade channels and consumers: Because the involved goods are legally identical, the Board presumed that they travel in the same channels of trade. As to the classes of consumers, the Board must also deem these to be identical. Although both the application and cited registration "contain purported restrictions on the classes of consumers for the respective apps, ... they do not negate the presumptive overlap in the classes of consumers." The language "sold as 'business to consumer (B2C) software, and not as 'business to business' (B2B) software" in the application is aspirational and marketing-related and does not exclude businesses (which range from individuals to large multinational corporations). The word "primarily" in the cited registration does not specify the exclusive classes of consumers as limited to only the listed travel professionals.

We therefore find that the apps identified in the cited registration may be sold to general consumers as well as travel professionals. We also find that Applicant's software could be purchased by businesses. Accordingly, we find that the classes of customers in the application and registration overlap.

And so the Board affirmed the refusal to register.

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TTABlog comment: The ID Manual argument was never going to work.

Text Copyright John L. Welch 2018.






On June 29, 2017, the day its pretrial disclosures were due, Opposer Kid-Systeme filed a motion to reopen its time to file a motion for summary judgment. Trademark Rule 2.127(e)(1), as amended in January 2017, provides that a summary judgment motion must be filed "prior to the deadline for pretrial disclosures, as originally set or reset." The Board noted that "prior to" means the day before the deadline. Opposer missed the deadline. Would the Board reopen? Not to worry! Because opposer's motion was filed during the period of transition to the amended Rules, and because the Board clarified Rule 2.127(e)(1) in a July 21, 2017 notice issued after opposer's filing, the Board chose to consider the summary judgment motion and to treat the motion to reopen as moot. , 125 U.S.P.Q.2d 1415 (TTAB 2018) [precedential].


Before January 14, 2017, the deadline for filing a motion for summary judgment was “prior to the commencement of the first testimony period, as originally set or as reset." In January 2017, that was changed to "prior to the deadline for pretrial disclosures, as originally set or reset." The Board's July 21, 2017 clarification of Rule 2.127(e)(1) merely changed the words "prior to the deadline" to "before the day of the deadline." In any event, the Board looked kindly on applicant and its predicament, pointing to the Notice of Proposed Rulemaking of April 4, 2016, which states:

[A]ny issues that may arise concerning the transition to the revised rules for cases pending as of the effective date of the rules would be addressed by the Board and the parties on a case-by-case basis, allowing for flexibility to respond to the unique needs in each case, particularly with respect to scheduling matters.[Emphasis by the Board].

The Board therefore declared opposer's motion to reopen as moot, and it allowed applicant thirty days to respond to the motion for summary judgment.

Read comments and post your comment .

TTABlog comment: Opposer apparently recognized that it missed the deadline under the new rules. That's why it filed a motion to reopen. So what did the transition to the new rules have to do with it? Opposer wasn't confused about the Rules.

Text Copyright John L. Welch 2018.






The Trademark Trial and Appeal Board (TTAB) has scheduled six (6) oral hearings for the month of February 2018. The first two hearings listed for February 28th will be held at Tulane University Law School in New Orleans. The remaining four hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. Briefs and other  papers for these cases may be found at via the links provided.



February 7, 2018 - 2 PM: , Serial No. 86556214 [Section 2(e)(1) mere descriptiveness refusal of WHITE SANGRIIIA for "Prepared alcoholic cocktail; Alcoholic beverages except beers" [WHITE and SANGRIA disclaimed].


February 8, 2018 - 10 AM: , Serial No. 85916778 [Section 2(d) refusal of #WILLPOWER for various clothing items, in view of the registered mark shown below, for  clothing and shoes].


February 21, 2018 - 11 AM: , Opposition No. 91219067 [Opposition to registration of the mark shown below right for "restaurant services" on the ground of likelihood of confusion in view of the registered mark shown below left, registered for highway maintenance services and information services, and used by licensees for ancillary goods].


February 28, 2018 - 11 AM: , Serial Nos. 85498107 [Section 2(d) refusal of BEAST MODE SOCCER for "T-shirts" and "Sporting goods and equipment for soccer training, namely, balls. " in view of the registered mark BEAST MODE, for "t-shirts" and "Men's, women's and children's clothing, namely, shirts, sweatshirts; headwear, namely, hats, caps"].


February 28, 2018 - 1 PM: , Opposition No. 91210158 [Opposition to registration of the slogan REMEMBER THIS NAME for legal services on the ground that the applied-for mark does not function as a mark and cannot be perceived by consumers as a source identifier].



February 28, 2018 - 1 PM: , Serial No. 86627384 [Section 2(a) deceptiveness refusal of P6 CHROME for Dietary and nutritional supplements that do not contain chromium].


Read comments and post your comment .

TTABlog note: Any predictions? See any WYHA?s?

Text Copyright John L. Welch 2018.






In another precedential interlocutory ruling from 2017 that eluded this blogger, the Board refused to allow Applicant Rural Health to submit certain non-party discovery depositions by way of notice of reliance, but because the 2017 amendments to the TTAB Rule changed the time for making a motion to allow use of a non-party discovery deposition, the Board looked kindly on applicant and allowed it time to take oral cross-examination of nine of the thirteen witnesses. ., 125 USPQ2d 1236 (TTAB 2017) [precedential].


Applicant Rural Health submitted via Notice of Reliance thirteen (13) discovery deposition transcripts of witnesses who were employees of Opposer Azalea, but who were not officers, directors, or managing agents of Opposer. Applicant contended that the depositions were being used for impeachment purposes. Opposer moved to strike, arguing that the Rules do not permit the introduction of non-party discovery depositions via notice of reliance, and that Applicant should have elected oral cross-examination of the nine witnesses for whom Opposer submitted testimony declarations.

The Board divided the discovery depositions into two groups. Four of these depositions concerned individuals for whom Opposer did not submit trial declarations. Therefore there was no trial testimony to impeach. The Board granted Opposer's motion to strike these transcripts from the record.

The second group included nine discovery depositions of individuals whose testimony declarations were submitted by Opposer Azalea. Applicant Rural Health did not avail itself of the opportunity to cross-examine these witnesses. Instead it submitted the discovery deposition transcripts of these individuals during its testimony period.

The Board observed that under FRCP 32, FRE 613, and Trademark Rule 2.120(k)(6), a discovery deposition may be used during the examination or cross-examination of a party or a non-party witnesses. In addition, Rule 2.120(k)(1) permits the use, for all purposes, of a discovery deposition of a party in Board proceedings. For a non-party, however, the discovery deposition may be introduced only pursuant to a stipulation between the parties or by order of the Board upon motion. Here there was no stipulation and no Board order.

Having failed to cross-examine Opposer's witnesses, Applicant Rural Health had two options: (1) file a motion at the time of its pre-trial disclosures seeking Board approval of its use of the discovery depositions, or (2) file a motion claiming exceptional circumstances. See Rule 2.120(k)(2). Applicant did neither.

The Board therefore granted the motion to strike these nine discovery depositions.

However, the Board noted that Rule 2.120(k)(2) was amended on January 24, 2017, "to change the time for a motion to use a discovery deposition to when the offering party makes its pretrial disclosures and to clarify that the exceptional circumstance standard applies when this deadline has passed." [Emphasis added]. Prior to the Rule change, the motion could be made at the time of the offer of the deposition into evidence (i.e., during the testimony period).

The Board, noting its April 2016 statement regarding flexible application of the revised rules in cases pending as of the effective date of the rules, decided to construe Applicant's response to the motion to strike as a motion to re-open the period for electing and taking cross-examination of these nine witnesses. The Board then reset the period for cross-examining these witnesses. 

Read comments and post your comment .

TTABlog comment: If applicant had filed a timely motion for permission to submit the nine discovery depositions, what would the grounds be? It still had declined the opportunity to cross-examine.

Text Copyright John L. Welch 2018.






The Board sustained Kimberly-Clark's opposition to registration of the word + design mark shown below left, on the ground of likelihood of confusion with K-C's registered mark shown below right, both for bathroom tissue. The Board observed that, although the words in a word + design mark like applicant's are usually accorded greater weight, in this case opposer K-C's mark comprises only the image of a puppy with its paw on a roll of toilet paper, "so rather than using words to call for Opposer’s goods, consumers might identify Opposer’s brand another way, perhaps by recalling and mentioning the dog, or 'the puppy with toilet paper.' , Opposition No. 91218800 (January 26, 2018) [not precedential] (Opinion by Judge Michael B. Adlin).


Because the involved goods are legally identical, the Board must presume that they travel in the same channels of trade to the same classes of purchasers. These factors not only weigh heavily in favor of a finding of likely confusion, but also reduce the degree of similarity between the marks necessary for such a finding.

The Board noted that the marks have obvious differences but concluded that the differences are outweighed by the even more obvious similarities. "Perhaps most importantly, Applicant’s and Opposer’s dogs look similar."

Each party refers to its dog as a “puppy.” Both puppies are sitting and looking at the camera, and they are both light-colored. Applicant’s dog is described as having “beige ears,” the same color as Opposer’s dog’s ears. Applicant’s dog has “black eyes, and black nose,” while Opposer’s has “green and black eyes and black nose.” The puppies also appear to potentially be the same breed, in whole or in part. As Applicant states in its brief, “the images speak for themselves.”

In addition to the possibility that consumers may recollect K-C's brand by remembering the "puppy with toilet paper," some may believe, when encountering Applicant’s toilet paper, that K-C has begun using the words TENDER PUFF BATHROOM TISSUE to identify its product, which was formerly identified only by the dog design.

The Board pointed out that it has often found a likelihood of confusion when, as here, marks are used for highly similar or identical goods and include similar designs, even if there are also literal or other differences between the marks. Among the examples provided: In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (CCPA 1971) (both for bath products).


A common theme found in these cases is the recognition that "consumers generally do not encounter competing marks side-by-side, where their differences become more obvious." In sum, side-by-side comparison is not the proper approach. Here, the involved marks "both prominently display puppies, with significant similarities, to identify identical products, and the marks create the same general overall commercial impression."

The Board declined to find that K-C's mark is famous or even strong, due to lack of evidence. On the other hand, there was no evidence that dogs have any "toilet paper-related meaning" or that dog designs are used by any third party as a source-identifier for toilet paper. Finally, the Board observed that although some consumers may exercise some care in purchasing this product, the Board's decision must be based upon the least discriminating consumers who may exercise only an ordinary degree of care.

The Board concluded that confusion is likely, and it therefore sustained the opposition.

Read comments and post your comment .

TTABlog comment: Surprised? Have a tissue.

Text Copyright John L. Welch 2018.






With the recent retirements of Deputy Chief Judge Susan M. Richey and Judge T. Jeffrey Quinn from the Trademark Trial and Appeal Board, the Board’s membership now stands at twenty-four (XXIV) Administrative Trademark Judges. The current roster is set forth below, beginning with Chief Judge Gerard F. Rogers and then proceeding alphabetically.


Rogers, Gerard F. (Chief Judge): Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D. magna cum laude, New England School of Law.

Adlin, Michael B.: Appointed to TTAB in 2012; Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University; J.D., Boston University School of Law.

Bergsman, Marc A.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.

Cataldo, Peter W.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Coggins, Robert H.: Appointed to TTAB in 2017; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.S., Davidson College; J.D., Wake Forest University School of Law.

Goodman, Cheryl S.: Appointed to TTAB in 2014; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State College of Law.

Gorowitz, Francie R.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Los Angeles, California); Trademark Examining Attorney; Education: B.A., State University of New York at Cortland; J.D., Albany Law School.

Greenbaum, Cindy B.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Heasley, David K.: Appointed to TTAB in 2015; Prior Professional Experience: Private Practice (Washington, D.C.); Education: B.A., The Johns Hopkins University; J.D., University of Maryland School of Law.

Hightower, Susan J.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Austin, Texas); Education: B.A., Austin College; M.A., University of Texas; J.D., Stanford Law School.

Kuczma, Linda A.: Appointed to TTAB in 2011; Prior Professional Experience: Private Practice (Chicago, Illinois); Education: B.S., St. Mary's University; J.D., Loyola University Chicago School of Law.

Kuhlke, Karen: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Larkin, Christopher: Appointed to TTAB in 2016; Prior Professional Experience: Private Practice (Los Angeles, CA; New York, N.Y.); Education: B.A., Stanford University; J.D., Columbia Law School.

Lykos, Angela: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., The Johns Hopkins University; J.D., Duke University Law School.

Lynch, Cynthia C.: Appointed to TTAB in 2015: Prior Professional Experience: Private Practice; Attorney-Advisor at the International Trade Commission; USPTO Assistant Solicitor: USPTO Administrator for Trademark Policy and Procedure; Education: B.A., University of North Carolina; J.D., University of Virginia School of Law.

Masiello, Anthony R.: Appointed to TTAB in 2012; Prior Professional Experience: Trademark Examining Attorney; Private Practice (Boston, New York, and Washington, D.C.); Education: Harvard College; J.D., Harvard Law School.

Mermelstein, David: Appointed to TTAB in 2006: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Supervisory Interlocutory Attorney; Education: B.A., New College, Hofstra University; J.D., American University.

Pologeorgis, George C: Appointed to TTAB in 2015; Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Attorney in the Office of Trademark Quality Review and Training; Trademark Examining Attorney; Private Practice; Education: B.A., University of Pennsylvania; J.D., George Washington University National Law Center.

Ritchie, Lorelei: Appointed to TTAB in 2008; Prior Professional Experience: Private Practice; Arbitrator and Judge pro tem, Orange and Los Angeles Counties, California; Intellectual Property Manager, UCLA; Adjunct Professor of Law, Loyola Law School, Los Angeles; Assistant Professor, Florida State University School of Law; Education: A.B., Stanford University; J.D., Columbia University.

Shaw, Thomas: Appointed to TTAB in 2011; Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.

Taylor, Jyll: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of North Carolina at Chapel Hill; J.D., Howard University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Wolfson, Frances: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., U.C. Santa Barbara; J.D., U.C.L.A.

Zervas, Albert: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.

Text Copyright John L. Welch 2018.






On September 25, 2017, the USPTO hosted a public meeting to report on the comments to the TTAB's Request for Comments on possible streamlined version of cancellation proceedings on the grounds of abandonment and non-use (transcript ), for which the comment period closed on August 14, 2017. Additionally, the TTAB took the opportunity to update the public on developments with regard to the amended Trademark Rules, effective January 14, 2017. The meeting agenda included a summary report on received comments and involved discussion of topics of interest to the audience and those that appeared necessary to address in view of the comments.


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Text Copyright John L. Welch 2018.






In view of the recent retirement of Deputy Chief Judge Susan M. Richey at the TTAB, the USPTO has posted a vacancy announcement for the position ().

The Deputy Chief Administrative Trademark Judge (Deputy CATJ) serves as a full voting member of the Trademark Trial and Appeal Board (Board) as provided by Title 15 U.S.C. § 6, and exercises full administrative, legal, and technical authority over the Board, as supervised by the Chief Administrative Trademark Judge (CATJ). The Deputy CATJ also is responsible for working with the Chief Judge to develop and deploy the strategic and policy initiatives of the Board, as needs may be identified by the Board or as strategic initiatives may be required by the Office of the Under Secretary and Director of the USPTO, to which the Board reports.
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The USPTO refused to register the mark FIT IN YOUR GENES, finding it likely to cause confusion with the registered mark FITGENES & Design, shown below, both for weight loss programs. Applicant contended that the design element in the cited mark creates "a distinct, significant commercial impression[s] in the purchaser's mind such that this element alone should dictate no likelihood of confusion." How do you think this came out? , Serial No. 86614598 (January 22, 2018) [not precedential] (Opinion by Judge Francie R. Gorowitz).


Of course, because the services overlap in part, the Board presumed that those overlapping goods travel in the same channels of trade to the same classes of consumers.

As to the marks, the Board disagreed with applicant's contention that the design element in the cited mark is enough to distinguish the marks. When evaluating a word + design mark, the word portion is most likely to indicate origin because it is the portion that consumers would use to refer to the services. In short, here the literal portion of the cited mark is dominant.

Although both marks incorporate the words "FIT" and "GENES," the meanings and commercial impressions of the mark are not similar. In applicant's mark, "FIT" is  used as a verb and means to "be the right shape or size," and "GENES" is a play on "jeans." The mark FIT IN YOUR GENES connotes the goal of the weight loss programs. In the cited mark, "FIT" is used as an adjective and means "physically healthy and strong." FITGENES connotes genetic characteristics of physical health and strength, and is suggestive of registrant's services of genetic testing and profiling, including weigh management services.

Thus the marks at issue do not have the same connotation and they also engender different commercial impressions. The design element in the cited mark further distinguishes the marks.

And so the Board reversed the refusal to register.

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.






I have reviewed the TTAB's page in an attempt to estimate the percentage of Section 2(e)(1) mere descriptiveness refusals that were affirmed by the Board during the last calendar year (2017). I counted 107 refusals, of which 95 were affirmed and 12 reversed. That's an affirmance rate of about 89%. So the odds are almost 9 out of 10 for affirmance. [Slightly lower than last year's 90% rate, but then this is not an exact science].



Three of the mere descriptiveness cases were precedential.

, 122 USPQ2d 1153 (TTAB 2017) [TTABlogged ].[The Board affirmed a Section 2(e)(1) refusal to register the mark SHARPIN, in standard character form, finding it merely descriptive of "cutlery knife blocks which incorporate built-in sharpeners that automatically sharpen knives." Applicant Calphalon asserted that the examining attorney had failed to enter its amendment of the mark to the special form "SharpIN" and instead improperly treated the mark as a standard character mark (although the examining attorney accepted the amendment to the drawing). Calphalon further contended that SharpIN (in special form) is incongruous or a double entendre. No dice, said the Board.]

, 122 USPQ2d 1777 (TTAB 2017) [TTABlogged ]. [The Board affirmed a Section 2(e)(1) refusal of the mark WELL LIVING LAB, finding it merely descriptive of scientific research services in the field of human health and wellness in indoor environments. Discounting applicant's largely outdated evidence that "well living" refers to leading a moral life, the Board instead relied on more current evidence employing the phrase to mean "health and wellness."]

., 122 USPQ2d 1796 (TTAB 2017) [TTABlogged ]. [The Board affirmed a Section 2(e)(1) refusal of LITTLE MERMAID, finding the mark merely descriptive of "dolls." Drawing a distinction between character names in the public domain and those derived from works in which the applicant owns intellectual property rights, the Board concluded that consumers will not perceive LITTLE MERMAID as a source identifier but instead will "understand the mark to describe the public domain character in the fairy tale, as well as a young or little mermaid."]

The twelve marks involved in the reversals were: FLIGHTLINK, PLUM, VOICE, TREAD LIGHTLY, PRESS PAPERS, TOP DOC, GLOBAL GROWERS, RAZYN, GEOMIMETIC, CRAWLER, PERSON, and PH CAGE.

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Text Copyright John L. Welch 2018.



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ul { list-style-type: none; margin: 0; padding: 0; overflow: hidden; background-color: #333; } li { float: left; } li a { display: block; color: white; text-align: center; padding: 14px 16px; text-decoration: none; } li a:hover:not(.active) { background-color: #111; } .active { background-color: #4CAF50; } DMCA report abuse Home Todas Pastas Auto Post sitemap Blog "Sem Imagens" oLink xxx var ad_idzone = "1877044", ad_width = "728", ad_height = "90"; TTAB Test: Are These Two Marks for Fruit Preserves Confusingly Similar? Tags:#mark, #panache, #apple, #mango, #preserves, #preserve, #registrants, #that, #part, #registrant, Search:mark, panache, apple, mango, preserves, preserve, registrants, that, part, registrant, The USPTO refused registration of the mark PANACHE (in standard characters) for "apple butter; apple purée; processed apples," finding it likely to cause confusion with the registered mark MANGO MANGO MANGO PRESERVES A PANACHE PARTY PRESERVE and design (shown below) for "fruit preserves" [MANGO and MANGO PRESERVES disclaimed]. How do you think this appeal came out? In re Panache LLC, Serial No. 87182253 (February 20, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).Applicant's "processed apples" fall within the ambit of Registrant's "fruit preserves" because fruit includes apples and preserves are processed fruit. Also, apple butter and and fruit preserves are both used as "spreads" and therefore are related products. The evidence revealed that several entities sell apple butter and preserves under the same mark at their respective websites. The Board concluded that the goods are in part identical identical and are offered in the same channels of trade.As to the marks, the Board found that MANGO MANGO with a mango design is the dominant portion of the cited mark. They are by far the largest elements of Registrant’s mark and most likely to catch consumers’ eyes. As such, they are that part of the mark consumers use to call for Registrant’s preserves. It stretches credulity that consumers would refer to Registrant’s preserves as “A Panache Party Preserve” or “panache”."Mango Preserves" is name of the product and, therefore, has little or no source-identifying significance. The term “A Panache Party Preserve” is an advertising tagline telling consumers that Registrant’s MANGO MANGO preserves are high quality products.The Trademark Examining Attorney argued that “Panache” is the dominant part of Registrant’s mark because the phrase “A Panache Party Preserve” “gives the general impression of being a housemark.” However, an excerpt from Registrant’s website showed that Registrant refers to itself as MANGO MANGO, not as a “Panache” company. The tagline “A Panache Party Preserve,” creates the commercial impression that Registrant’s preserves have flair or style.The Board concluded that the marks are not similar and that the first du Pont factor outweighed the other factors. And so it reversed the refusal.Read comments and post your comment here.TTABlog comment: Is this a WYHRR? (Would you have refused registration?)Text Copyright John L. Welch 2018.Two Product Configurations Fail to Clear Section 2(f) Hurdle, Says TTAB Product configurations can never be inherently distinctive trademarks. So says Wal-Mart v. Samara Bros. Moreover, such proposed marks face a heavy burden when the applicant attempts to establish acquired distinctiveness under Section 2(f). Here are two recent cases in which the applicants failed to clear the 2(f) hurdle.In re Kronebusch Industries, LLC, Serial No. 86706847 (February 20, 2018) [not precedential] (Opinion by Judge Christopher Larkin). Kronebusch sought to register as a trademark the pistol-shaped handle of its fire extinguishers. (See drawing above). Applicant asserted that it intended to design a distinctive and recognizable handle (unlike standard nut-cracker type handles), but intent was irrelevant since the question was whether the consuming public perceives the design as a source indicator.The Board was unimpressed by several form statement from dealers and customers, in part due to their conclusory language, lack of geographical diversity, and missing information. Advertising expenditures were modest, and although the advertising depicted the fire extinguisher, there was nothing to call the attention of the consumer to the shape of the handle: i.e., no "look-for" advertising.Similarly news articles regarding the products do not mention the handle design as a product feature that serves to identify source. Finally, the fact that Kronebusch's fire extinguishers have enjoyed significant exposure in media and at tradeshows does not mean that consumers have become conditioned to recognize this handle design as a trademark.And so the Board affirmed the refusal to register under Sections 1, 2, and 45 of the Lanham Act. In other words, the handle design fails to function as a trademark.In re NuWave, LLC, Serial No. 86761651 (February 20, 2018) [not precedential] (Opinion by Judge David K. Heasley). Applicant NuWave sought to register the product design shown immediately above for "electric induction cooktops." Applicant explained that induction cooktops may be placed on kitchen counters and "work without getting hot; rather they generate a magnetic field which causes the pan itself to get hot." NuWave contended that the rounded shape of its product distinguishes it from competitive products, most of which are rectangular. The examining attorney pointed out, however, that cooktops are commonly offered in a variety of shapes, including round, and so applicant's shape is not particularly exclusive, distinctive, or source-indicating.Reviews of applicant's product focused on the usefulness of the design or its attractive appearance, but did not equate the shape with a particular source. "Because the applied-for mark in this case is a nondistinctive product configuration, which consumers may appreciate for its utility or appearance rather than its source, a showing of five or more years' use is insufficient."Applicant's advertising and sales number were "respectable," but its advertising and packaging consistently identify the product by the word mark "Nuwave," and so that evidence did not prove that the product design has consumer recognition. The sales figures may reflect the popularity of the product, not that the public recognizes the shape as a trademark.NuWave claimed that the copying of its product by Farberware evidenced acquired distinctiveness, but the Board was unmoved. It is more common that competitors copy product designs for desirable qualities or features. Moreover, copying is proof of acquired distinctiveness only if the copier's intent is to confuse customers by passing off its product as the applicant's. Farberware displayed its own mark on the packaging and so was not attempting to pass off its product.Finally, the Board noted in passing that NuWave's ownership of a design patent does not, without more, "bestow upon said device the aura of distinctiveness or recognition as a trademark."Concluding that applicant failed to prove acquired distinctiveness, the Board affirmed the refusal to register under Sections 1, 2, and 45 of the Lanham Act.Read comments and post your comment here.TTABlog comment:  Of course, the first hurdle to be cleared for a product design is Section 2(e)(5) functionality. I wrote a paper about these hurdles (here) in 2004.Text Copyright John L. Welch 2018.TTAB Grants Summary Judgment Motion, Finding Fusible Link Configuration De Jure Functional The Board granted Tyco Fire's motion for summary judgment, finding the product configuration marks shown below, for a "heat fusible link for use in fire protection," to be functional under Section 2(e)(5). The mark on the left "consists of a configuration of a copper rectangular heat fusible link with rounded edges with a transparent circle at the top and bottom." The mark on the right is identically described except for the word "copper." Tyco Fire Products LP v. Globe Technologies Corporation, Oppositions Nos. 91212425 and 91220233 (January 22, 2018) [not precedential].Opposer’s expert explained that the fusible link consists of two plates placed under tension or load. The plates are held together by a fixed heat-sensitive material, which in the event of a fire melts or breaks once the ambient temperature reaches a certain degree, causing the plates to separate. When the plates separate the fire detection or suppression system is activated. Generally, a product design or product feature is considered to be functional in a trademark sense if it is (1) “essential to the use or purpose of the article,” or if it (2) “affects the cost or quality of the article.” TrafFix, 58 USPQ2d at 1006 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)). The Board found no genuine dispute of material fact "that the configuration of Applicant’s goods is essential to the use and purpose of the goods and affects the cost and quality of the article under the standard set forth in Inwood/TrafFix."The evidence of record, including various utility patents (both applicant's and third-party patents) established that the use of identical, overlying plates serves a utilitarian function. At to the "transparent circles," which are actually holes in the plates, the circular shape depicted in the drawing of the patent "is the most logical and effective choice." The rounded ends are used to avoid sharp edges. As to the straight sides of applicant's device:As the many patents of record show, we live in a world of straight edges and right angles. The straight parallel sides of Applicant’s goods would be essential to fitting the goods into mechanisms that have limited space. Competitors who are required to eschew the use of straight, parallel sides in order to avoid infringing upon Applicant’s trademark rights would be put to “a significant non-reputation-related disadvantage."Applicant did not rebut Opposer’s contention that in certain applications, fusible links with straight, parallel edges and circular holes are one of the few available alternatives.Finally, Applicant contended that the copper-colored design presented in one application is not functional for the additional reason that the application contains a claim to the color copper. However, the evidence showed, and applicant did not dispute, that the color is the result of the natural coloring of the commercial bronze, and that commercial bronze has utilitarian function in a fusible link. The Board concluded that "[c]ompetitors who are required to eschew the use of copper, bronze, or other metals having a copper-like color in order to avoid infringing upon Applicant’s trademark rights would be put to 'a significant non-reputation-related disadvantage.' Nor should competitors have to paint their links to mask the copper color.Therefore, the Board found no genuine dispute of material fact that the copper color of Applicant’s mark is dictated by a functional feature of the goods.And so the Board entered judgment summarily in opposer's favor.Read comments and post your comment here.TTABlog comment: The Board is a bit fuzzy at times on the difference between utilitarian functionality [de facto functionality] and trademark functionality [de jure functionality]. Many configurations and features may have the former, but not necessarily the latter. E.g., the scoring on a Hershey bar.Text Copyright John L. Welch 2018.TTAB Affirms Failure-to-Function Refusal of Ribbon/Banner Background Design for Horse Tail Cleaners The Board affirmed a refusal to register the design shown below, for "Non-medicated cleaning preparations for livestock, horses, and domestic animals, ...." and various other products for said animals, agreeing with Examining Attorney Barbara A. Gaynor that the design fails to function as a trademarks. Said the Board: "Applicant’s applied-for design fails to emerge out of the background of the specimens and hit the prospective buyer in the eye, and [we] find that Applicant’s ribbon-shaped banner is a background design that does not create a commercial impression separate and apart from the word mark in conjunction with which it is used." In re W.F. Young, Inc., Serial No. 86454618 (February 14, 2018) [not precedential] (Opinion by Judge Albert Zervas).The Examining Attorney maintained that the applied-for mark "is merely a background design that functions as part of a composite mark that incorporates additional designs or wording." (see excerpt from specimen of use, below).The Board observed that when an applicant seeks to register a background design, the design must create a commercial impression separate and apart from the word mark with which it is used. Professor McCarthy has commented that "the more fanciful and distinctive the background design, the more likely it is to 'hit the buyer in the eye' and hence be more than background. In such a case, the so-called 'background' comes out into the spotlight of real trademark significance."The Board noted that none of the specimens of use showed the ribbon-shaped banner alone; all have the word ABSORBINE superimposed thereon. The word ABSORBINE covers much of the design and follows the incline of the banner. This arrangement of wording and geometry suggests that they are part of the same mark. The color yellow is irrelevant since color is not claimed as part of the mark. Ribbon-shaped designs are not uncommon for these type of goods, as evidence by the two registrations cited by the Examining Attorney. The applied-for design appears to be nothing more than a refinement of a basic background design and would be regarded as such by consumers.And so the Board affirmed the refusal under Sections 1, 2, and 45 of the Lanham Act.Read comments and post your comment here.TTABlog comment: Even if applicant had claimed the color yellow, I doubt that it would have made any difference. No look-for advertising, no use of the banner with words other than ABSORBINE. Is this a WYHA?Text Copyright John L. Welch 2018. TTAB Test: Which of These Three Section 2(d) Refusals Was Reversed? A TTAB judge once stated that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the goods or services. Presented for your perusal are three recent TTAB decisions in Section 2(d) appeals. One was reversed. Which one? [Answer in first comment].In re CID Resources, Inc., Serial No. 86828751 (February 13, 2018) [not precedential] [Section 2(d) refusal to register the mark GRACE (in standard character form) for "Medical wearing apparel, namely, scrub tops and bottoms; medical wearing apparel, namely, pants for emergency medical personnel" in Class 10; and "Nurse’s apparel, namely, tops and bottoms, uniforms, lab coats; scrubs not for medical purposes" in Class 25, in view of the identical mark registered for "women’s sportswear, namely, jackets, pants, skirts, blouses, dresses, shirts, and knit tops, but excluding pantyhose and hose"].In re Advanced Total Marketing Systems, Inc., Serial No. 86860062 (February 14, 2018) [not precedential] [Section 2(d) refusal of the mark shown immediately below, for "Latin American style food products, namely, processed flavored plantains slices, processed flavored yucca chips; Latin American Style food products, namely, fired flavored peanuts and baked flavored peanuts" in view of the registered mark shown below left for "candy for consumption on and off the premises" and "retail candy and gift store services," the registered mark shown below right for "Dairy-based snack foods excluding ice cream, ice milk and frozen yogurt; Fruit-based food beverage; Oils and fats for food; Snack food dips; Vegetable-based snack foods," and the registered mark YUMMYS in standard character form for "Vegetable-based snack foods; Fruit-based snack foods; Vegetable chips; Fruit chips; Milk products excluding ice cream, ice milk and frozen yogurt"].In re Spartan Detective Agency, Inc., Serial No. 87172299 (February 9, 2018) [not precedential] [Section 2(d) refusal of WE DO IT ALL! for "detective agency services" in view of the registered marks JUST CALL – WE DO IT ALL! for "legal services" and MAKE THE CALL WE DO IT ALL! for "legal services; providing legal services in the field of injury law, workers' compensation law, and social security disability law"].Read comments and post your comment here.TTABlog comment: How did you do?Text Copyright John L. Welch 2018.TTAB Test: Is TWEEDS Generic for Shirts and Sweaters? The USPTO refused registration of TWEEDS for "shirts; sweaters" on the Supplemental Register, deeming the term to be generic for the goods. Applicant argued that "[t]weed is a fabric, not a shirt or sweater," and that "tweeds" is "merely descriptive of a type of sweater or shirt." How do you think this appeal came out? In re Branded LLC, Serial No. 86529647 (February 13, 2018) [not precedential] (Opinion by Judge Christopher Larkin).Applicant first pointed to its ownership of a now-expired registration for TWEEDS for the same goods. The Board shrugged that off, pointing out that each application must be examined on its own merits, and citing In re Cordua Rests., Inc., 118 USPQ2d 1632 (Fed. Cir. 2016) (CHURRASCOS in stylized form found generic for restaurant services despite subsisting "incontestable" registration for the word mark for the same services). As evidence of the public's understanding of the word "tweeds," Examining Attorney John C. Boone relied on dictionary definitions ("Tweed" is defined as a rough, woolen cloth woven with different colored threads), webpages referring to various types of tweed fabric, webpages showing use of the words "tweed" and "tweeds" in connection with various items of woolen clothing, websites displaying shirts referred to as "tweed" shirts and "tweed" shirt jackets; and webpages and Google search results for "tweed sweatersThe Board observed that the USPTO must show more than that "tweeds" refers to other items of clothing. It must show that "tweeds" refers to a category of shirts or sweaters.The evidence included multiple webpages offering "tweed" shirts and "tweed" sweaters. Many of the items were not made of wool. Applicant agreed that "it is possible to find shirts and sweaters that are made of tweed," and that the "examples given by the examining attorney use the word 'tweed' to indicate the type of sweater or shirt being offered." [Emphasis by the Board].The Board pointed out that the use of "tweed" to indicate the type of shirt or sweater is use in adjectival form, rather than in noun form to identify a fabric. However, generic adjectives "are just as unprotectable as generic nouns:" for example, "footlong" for sandwiches excluding hot dogs. Sheets of Del., Inc. v. Doctor's Assocs. Inc., 108 USPQ2d 1341 (TTAB 2013). Applicant effectively conceded that TWEEDS identifies a category of sweaters or shirts included within the relevant genus. The pluralization of the word "tweed" as TWEEDS does not alter its meaning as referring to categories of shirts and sweaters.On the basis of the record as a whole, we find that the Examining Attorney has established, by clear evidence of generic use, that Applicant’s claimed mark TWEEDS is understood by the relevant purchasing public to refer to categories of shirts and sweaters that are made of tweed fabric, or that have the appearance, look, or style of tweed fabric. The proposed mark is thus incapable of distinguishing Applicant’s goods, making it ineligible for registration on the Supplemental Register. And so the Board affirmed the refusal.Read comments and post your comment here.TTABlog comment: If the evidence showed use of "tweed" only with shirts and sweater made of wool, would "tweed" be merely descriptive but not generic?Text Copyright John L. Welch 2018.Precedential No. 4: TTAB Reverses Rejection of Downloadable Software Specimen Showing Mark in On-Screen Display The TTAB reversed a refusal to register the mark AWLVIEW for, inter alia, warehouse inventory management software, overturning the USPTO's rejection of applicant's specimen of use. Because the mark appears on the login and search screens of Applicant’s downloadable software when the software is in use, the Board concluded that the specimen "shows the applied-for mark used in connection with the goods ... and would be perceived as a trademark identifying the source of those goods." In re Minerva Associates, Inc., Serial No. 86430215 (February 12, 2018) [precedential] (Opinion by Judge Linda A. Kuczma).(Click on photo for larger version)The first page of applicant's two-page specimen (the login screen shot shown above) displays the wording "AWLview WMS for Sterling Jewelers" appearing above "AWL Logon WS 202" shown in the title bar of the login page. The second page (the SKU search query page shown below) contains the wording "AWLview WMS for Sterling Jewelers WS 202 - LCM" appearing above "Inventory By SKU Report-WS 202" shown in the title bar of the SKU search query window.(Click on photo for larger version)The Board observed that, according to Section 904.03(e) of the Trademark Manual of Examining Procedure (Oct. 2017), an acceptable specimen for software "might be a photograph or printout of a display screen projecting the identifying trademark for a computer program."Because software providers have adopted the practice of applying trademarks that are visible only when the software programs are displayed on a screen, see TMEP § 904.03(e), an acceptable specimen might be a photograph or screenshot of a computer screen displaying the identifying trademark while the computer program is in use. The second substitute specimen features screenshots of Applicant’s mark appearing on the log-in and search screens viewable by Applicant’s customers utilizing the downloaded software. Because the mark appears on the login and search screens of Applicant’s downloadable software when the software is in use, we find that the second substitute specimen shows the applied-for mark used in connection with the goods in Class 9 and would be perceived as a trademark identifying the source of those goods.Finally, the Board noted that, again according to Section 904.03(e) of the TMEP, "[i]t is not necessary that purchasers see the mark prior to purchasing the goods, as long as the mark is applied to the goods or their containers, or to a display associated with the goods, and the goods are sold or transported in commerce. See, e.g., In re Brown Jordan Co., 219 USPQ 375 (TTAB 1983) (holding that stamping the mark after purchase of the goods, on a tag attached to the goods that are later transported in commerce, is sufficient use)." Read comments and post your comment here.TTABlog comment: AWL set, in my VIEW.Text Copyright John L. Welch 2018.TTAB Will Hold Two Final Hearings at Tulane Law School - February 28th The TTAB, in a combined program with the PTAB, will take its "Stadium Tour" to Tulane University Law School in New Orleans on February 28th. The TTAB panel will hear oral argument in the two cases summarized below. The day-long program will include an "Overview of the Trademark Trial and Appeal Board" by Chief Judge Gerard F. Rogers, and a panel discussion on advocacy, featuring judges from both the TTAB and the PTAB. Full agenda may be found here.February 28, 2018 - 11 AM: In re David Copeland-Smith, Serial Nos. 85498107 [Section 2(d) refusal of BEAST MODE SOCCER for "T-shirts" and "Sporting goods and equipment for soccer training, namely, balls. " in view of the registered mark BEAST MODE, for "t-shirts" and "Men's, women's and children's clothing, namely, shirts, sweatshirts; headwear, namely, hats, caps"].February 28, 2018 - 1 PM: Larr Pitt & Associates, P.C. v. Lundy Law, LLP, Opposition No. 91210158 [Opposition to registration of the slogan REMEMBER THIS NAME for legal services on the ground that the applied-for mark does not function as a mark and cannot be perceived by consumers as a source identifier].Read comments and post your comment here.TTABlog comment: Looking forward to full reports from attendees.Text Copyright John L. Welch 2018.Recommended Reading: Prof. Ouellette, "Does Running Out Of (Some) Trademarks Matter?" Lisa Larimore Ouellette, Associate Professor of Law at Stanford Law School, responds to the article posted here yesterday, in a note entitled, Does Running Out Of (Some) Trademarks Matter?, 131 Harv. Law. Rev. Forum 116 (2018) [pdf here]. While praising the work of Professors Beebe and Fromer, Professor Ouellette suggests further avenues of research regarding the actual costs or the countervailing benefits of either depletion or congestion, before recommending any change in the current trademark system.In this short space, I wish to laud the remarkable descriptive contribution of Are We Running Out of Trademarks? while sounding a note of caution on the normative implications. Beebe and Fromer’s data convincingly demonstrate that short, common word marks are becoming depleted and congested, and they present a number of plausible hypotheses about the negative welfare impact of this trend. Their findings suggest that trademark policy has been based on false assumptions and should be closely reexamined. But their data cannot elucidate the actual costs of depletion or congestion — particularly without noting how the market will adapt to reduce these costs — and cannot reveal if there are countervailing benefits. Generating concrete evidence of these costs and benefits seems like a necessary next step before recommending any significant changes to the current trademark system. After offering a laudatory evaluation of the value of Beebe and Fromer’s descriptive work, I explore why reforms in reaction to their research should proceed cautiously, and I suggest important avenues for future empirical work to build on these results.Read comments and post your comment here.Text Copyright John L. Welch 2018.Recommended Reading: Professors Beebe and Fromer, "Are We Running Out of Trademarks?" "Conventional wisdom" says that the number of available trademarks is infinite, or nearly so. Professors Barton Beebe and Jeanne C. Fromer of New York University School of Law challenge that assertion in their enlightening article: Are We Running Out Of Trademarks: An Empirical Study of Trademark Depletion and Congestion, 131 Harv. Law Rev. 948 (February 2018). [pdf here].American trademark law has long operated on the assumption that there exists an inexhaustible supply of unclaimed trademarks that are at least as competitively effective as those already claimed. This core empirical assumption underpins nearly every aspect of trademark law and policy. This Article presents empirical evidence showing that this conventional wisdom is wrong. The supply of competitively effective trademarks is, in fact, exhaustible and has already reached severe levels of what we term trademark depletion and trademark congestion.  * * *  These data show that rates of word-mark depletion and congestion are increasing and have reached chronic levels, particularly in certain important economic sectors. The data further show that new trademark applicants are increasingly being forced to resort to second-best, less competitively effective marks. Yet registration refusal rates continue to rise. The result is that the ecology of the trademark system is breaking down, with mounting barriers to entry, increasing consumer search costs, and an eroding public domain. In light of our empirical findings, we propose a mix of reforms to trademark law that will help to preserve the proper functioning of the trademark system and further its core purposes of promoting competition and enhancing consumer welfare.Read comments and post your comment here.TTABlog comment: Should we take some small comfort from the fact that Matal v. Tam and In re Brunetti have freed up more words for registration as trademarks? On the other hand, Bayer v. Belmora says that one need not own a trademark in the United States to bring a Section 43(a) claim (Bayer owned the mark FLANAX in Mexico). Does that further narrow (slightly) the number of marks available in this country?P.S. I'm sorry to see the Professors use the terms "trademark" and "trademarking" as verbs, instead of "register" and "registering." Text Copyright John L. Welch 2018.Applying Claim Preclusion, TTAB Summarily Dismisses Petition for Cancellation of "THE EBONYS" Registration Despite Added Claim The Board granted respondent's motion for summary judgment, dismissing this petition for cancellation of a registration for the mark THE EBONYS for entertainment services by a musical group. The Board ruled that claim preclusion barred petitioner's fraud and likelihood-of-confusion claims in light of a prior Board decision (here) dismissing petitioner's closely similar fraud claim. David S. Beasley v. William H. Howard DBA The Ebonys, Cancellation No. 92066369 (January 19, 2018) [not precedential].In the prior cancellation proceeding, Petitioner Beasley alleged that Respondent Howard knowingly made false statement regarding his (Howard's) use of the mark THE EBONYS. Beasley, however, failed to submit evidence to support the fraud claim, and so the Board dismissed the proceeding.In this, the second proceeding, Beasley provided more detailed allegations regarding the alleged fraud, but the Board found that "the core transactional facts in each proceeding are the same." Therefore it concluded that Beasley's renewed fraud claim is barred under the doctrine of claim preclusion.As to Petitioner Beasley's likelihood-of-confusion claim, the Board observed that claim preclusion bars "a subsequent assertion of the same transactional facts in the form of a different cause of action or theory of relief." A party cannot avoid claim preclusion merely by bringing additional claims in a second proceeding based on the same transactional facts as the first proceeding.We find that there is no genuine dispute that Petitioner’s likelihood of confusion claim in this proceeding is based on the same transactional facts as, and should have been litigated in, the Prior Action. Specifically, Petitioner has alleged in both proceedings prior use and ownership of THE EBONYS mark for a vocal music group. In addition, with respect to the involved registration in each proceeding, Respondent had alleged use of THE EBONYS mark for the same or similar services to those offered by Petitioner. In view thereof, Petitioner could (and should) have asserted his likelihood of confusion claim in the earlier case.And so the Board granted respondent's motion for summary judgment and dismissed the proceeding.Read comments and post your comment here.TTABlog comment: I never heard of THE EBONYS.Text Copyright John L. Welch 2018.TTAB Test: Are Nutritional Supplements And Fruit Beverages Related Under Section 2(d)? The USPTO refused registration of the mark CODEGREEN for "nutritional supplements in pill and/or powder form," finding the mark likely to cause confusion with the registered mark CODE GREEN for "fruit beverages" and "vegetable-based food beverages." Applicant Spin80 argued that the goods are not related because its supplements are geared toward the training, exercise, and fitness industries whereas the cited goods have no particular application. How do you think this came out? In re Spin80, Inc., Serial No. 87116915 (January 31, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch). Because the marks are nearly identical, a lesser degree of relatedness between the goods is necessary to support a finding of likely confusion.Examining Attorney Jillian Cantor submitted website pages showing nutritional supplements in pill form and fruit beverages sold under the same mark. In addition, 11 use-based third-party registrations that identify both nutritional supplements and fruit beverages suggested that the goods many emanate from the same source.As to applicant's argument that its goods are "highly specialized," the Board found no evidence to support that assertion. [Irrelevant anyway, since there are no such limitations in applicant's identification of goods - ed.]. There was ample evidence that "the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the emanate from the same source."The evidence showed that the channels of trade for the involved goods, and the classes of consumers, overlap. There was no evidence to support applicant's contention that "consumers of nutritional supplements necessarily are overly dedicated to fitness and wellness," and are "specifically pursuing the results and effects" of the supplements. The Board noted that while some consumers may exercise a certain degree of care in selecting supplements, they are not necessarily likely to exercise a high degree of care in examining the trademarks. Moreover, the Board must consider the least sophisticated potential purchasers in making its determination.Finally, applicant argued that the difference in price of the goods would prevent confusion, but applicant failed to prove that all of its goods are expensive. In any case, the identification of goods in the application has no price limitation, and the evidence showed that supplements can sell as low as  $4-10. And even if consumers exercised a degree of care in purchasing these goods, it is well established that even sophisticated consumers are not immune from source confusion when encountering substantially identical marks.And so the Board affirmed the refusal.Read comments and post your comment here.TTABlog comment: Was this a WYHA?Text Copyright John L. Welch 2018.TTAB Test: Is "PEACEFUL PIRANHA" Confusable With "PIRAÑA" for Snack Foods? The USPTO refused to register the mark PEACEFUL PIRANHA for potato chips, processed nuts, and other snack items, finding the mark confusingly similar to the registered mark PIRAÑA for potato chips, nut-based snacks, etc. Applicant argued that there is an incongruity in its mark that creates an entirely different connotation to the consumer as compared to the cited mark. How do you think this came out? In re Hy-Vee, Inc., Serial No. 87120774 (February 6, 2018) [not precedential] (Opinion by Judge Frances Wolfson).Because the goods in the application and the cited registrations are identical in part, the Board must presume that they travel in the same channels of trade to the same classes of consumers.As to the marks, the Board found the word "piranha" to be the dominant portion of Applicant’s mark "because it is modified by the term 'peaceful' in the same manner as an adjective modifies a noun." Even though "peaceful" is the first word in applicant's mark, consumers are likely to focus on the word "piranha."Moreover, "for English language speakers who are unfamiliar with Spanish, the differences between the terms PIRANHA and PIRAÑA are insignificant."Without knowledge of the purpose of the tilde in a Spanish “n” (i.e., that it changes the pronunciation of the letter “n” to the “ny” sound such as is used in the English word canyon), a consumer of Applicant’s goods may perceive the tilde as simply a design feature of the mark or consider Registrant’s mark as a misspelling of the English word “piranha.” Those consumers who do not speak or understand Spanish are unlikely to pronounce the “ny” sound and will consider the pronunciations of the terms to be the same. For these reasons, such consumers will associate both the terms PIRANHA and PIRAÑA with the fish.For consumers having a knowledge of Spanish, the terms will be perceived as equivalents, under the doctrine of foreign equivalents. As to the incongruity in applicant's mark, the Board that piranhas may be considered vicious and that a peaceful piranha "does not jibe with that perception, although given the popular understanding of what characterizes a piranha, even a 'peaceful piranha' may be seen to have an incipient propensity to be vicious." The Board did not agree, however, that applicant's mark "is so counterintuitive in its word-play on 'piranha' that confusion with the cited mark PIRAÑA would be obviated." In short, the presence of the additional term PEACEFUL in applicant’s mark "is not likely to distinguish the marks since it would merely indicate an atypical piranha, possibly for use with a subset of snack foods offered under the PIRAÑA mark."And so the Board affirmed the refusal.Read comments and post your comment here.TTABlog comment: Was this a WYHA?Text Copyright John L. Welch 2018.TTAB Test: Are Cigars Related to Alcoholic Beverages for Section 2(d) Purposes? The USPTO refused registration of the mark TERNURA for cigars, finding it likely to cause confusion with the identical mark registered for "liquor; tequila; vodka; wines."Applicant contended that, under applicable precedent, tobacco and alcohol are not considered "related" unless the prior registered mark is well-known or famous and the applicant is seeking to exploit the registered mark. Since the cited mark is not well-known, applicant asserted, confusion is not likely. How do you think this came out? In re El Galan, Inc., Serial No. 86961428 (February 1, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).Not surprisingly, the Board found the marks to be identical in sound, appearance, meaning (Spanish for "kindness" or "tenderness"), and commercial impression.As to the goods, Internet evidence submitted by Examining Attorney Clare Cahill showed that third parties produce and offer for sale cigars and alcoholic beverages under the same mark. The examining attorney also provided evidence that cigars and alcoholic beverages are complementary in that they are consumed together. Prior Board decisions found JOHNNY WALKER for cigars confusable with the same mark for whiskey, and CASCADE for whiskey confusable with the same mark for cigarettes.Applicant relied on Schenley Distillers, Inc. v. Gen. Cigar, 166  USPQ 142, 143 (CCPA 1970), for the proposition that, because the cited mark is not well-known or famous and is not marketed in a way to gain recognition, confusion is not likely here. The Board first noted that the fame of a prior mark is generally considered only in an inter partes context. Moreover, here the evidence suggests that "the alcohol industry has evolved since the issuance of the Schenley decision . . . to the extents that in the current marketplace it is not uncommon industry practice for distillers and  vintners, and not just those with 'a famous name or trademark,' . . . to produce and offer both cigars and alcoholic beverages under the same mark."To be clear, we are not finding that cigars and alcoholic beverages in general are related based upon some abstract similarity between alcohol and tobacco. The record in this case establishes that cigars and alcoholic beverages are not only produced and offered for sale by third parties under the identical mark, but they are also complementary products that are marketed together for simultaneous consumption. As such, when both products are offered under the identical, arbitrary trademark, consumers are likely to believe that the goods originate from the same source.The evidence further established that alcoholic beverages and cigars travel in the same channels of trade, such as liquor stores and online marketplace retailers. In fact they are complementary products that are marketed together for simultaneous consumption.As to the conditions of purchase, the items identified in the application and cited registration include inexpensive products purchased by the public at large. Even assuming that the prospective purchasers are knowledgeable and sophisticated, they are not immune from source confusion. In any case, likelihood of confusion must be assessed from the standpoint of the least sophisticated consumer.The Board therefore concluded that confusion is likely and it affirmed the refusal.Read comments and post your comment here.TTABlog comment: So all alcoholic beverages are related to each other, and also to all tobacco products?Text Copyright John L. Welch 2018.Louis Vuitton's APOGÉE for Perfume Confusable with APHOGEE for Hair Products, Says TTAB Despite Applicant Louis Vuitton's attempt to sidestep the refusal by narrowing its identified channels of trade, the Board affirmed a Section 2(d) refusal to register the mark APOGÉE for perfumery products "for non-professional use and sold only within Louis Vuitton Malletier stores, on Louis Vuitton Malletier's website and within Louis Vuitton Malletier's store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier's exclusive distributor network." The Board found the mark confusable with the registered mark APHOGEE for hair care preparations. In re Louis Vuitton Malletier, Serial No. 79165769 (February 2, 2018) [not precedential] (Opinion by Judge Angela Lykos). The marks: The Board found the marks to be similar in appearance, sound, connotation and commercial impression. "[E]ven if consumers were to perceive Applicant’s mark APOGÉE as the French word for “height,” because the marks are so alike in appearance and could be pronounced similarly, it is likely that consumers would perceive the cited mark as having the same meaning and commercial impression."The goods: The record evidence showed that "it is not uncommon for perfumery and hair care products to be sold under the same trademark." The Board concluded that the involved products "are related, complementary items intended to be used together as part of one’s beauty care regime."Applicant contended that "Registrant has no nexus to the alchemic ambit of luxury French perfume," and argued that Registrant’s goods are limited to professional grade products. Irrelevant, said the Board, since there are no such limitations in the application and registration at issue.Channels of trade: A key issue in the appeal concerned whether the trade channel restrictions in the application - “sold only within Louis Vuitton Malletier stores, on Louis Vuitton Malletier’s website and within Louis Vuitton Malletier’s store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier’s exclusive distributor network” - eliminate any likelihood of confusion.Because the cited registration has no restriction on channels of trade, the Board must presume that registrant's hair care products travel in all trade channels appropriate for these goods, including traditional brick-and mortar and online department stores, and direct business-to-consumer (B2C) websites offering for sale hair care products and perfumes to the general public.The Board agreed with applicant that Louis Vuitton's own stores and websites "are specialized trade channels that do not overlap with the ordinary channels of trade for Registrant’s products." However, that is not the case with regard to "Louis Vuitton Malletier’s store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier’s exclusive distributor network." Since high-end retail stores often sell the types of goods at issue, they are an appropriate trade channel and therefore one in which registrant’s goods may travel. This factor favored a finding of likely confusion.Conditions of sale: There are no restrictions in the application or cited registration as to purchasers or price points. Even assuming, as applicant asserts, that its perfumes are purchased by sophisticated and discriminating consumers, even careful purchasers are likely to be confused when highly similar marks are used in connection with related goods.Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.Read comments and post your comment here.TTABlog comment: Suppose applicant LV filed a new application limiting the goods to perfume sold only in Louis Vuitton Malletier stores? Text Copyright John L. Welch 2018.Precedential No. 3: TTAB Refuses to Limit Goods in Cited Software Registration, Affirms Section 2(d) Refusal The Board affirmed a Section 2(d) refusal to register the mark shown below left, for "Computer application software for mobile phones and desktop computers, namely, software for visualizing the popularity of places in real time, that uses an underlying map capability for navigation, sold as ‘business to consumer’ (B2C) software, and not as ‘business to business’ (B2B) software," finding it likely to cause confusion with the registered mark shown below right, for "Downloadable mobile applications for mobile phones and mobile electronic devices, primarily software for travel and destination marketing organizations and travel marketing professionals." Applicant Solid State argued, to no avail, that the registration improperly failed to specify the function of the software, but the Board observed that it lacked the power to read limitations into the unrestricted identification of goods in the registration. In re Solid State Design Inc., 125 U.S.P.Q.2d 1409 (TTAB 2018) [precedential] (Opinion by Judge Christopher Larkin).The marks: The Board found the word "populace" dominant in both marks, and the marks identical in sound, similar in appearance, and highly similar in connotation and commercial impression.[W]e agree with the Examining Attorney [Erin R. Zaskoda] that "the average consumer is most likely to recall generally the literal element ‘POPULACE’ . . . rather than making a very nuanced distinction that the outline of a person emphasizes the social aspect of the applicant’s goods and the arguably globe or orb image emphasizes the travel and tourism aspect of the cited goods . . . ."The goods:  The only limitation on the goods in the cited registration is that they are "[d]ownoadable mobile applications for mobile phones and mobile electronic devices." The Board is required to consider that identification as including "all good of the nature and type described therein." In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). Therefore, the goods in the registration must be deemed to encompass Applicant's more specifically identified "computer application software for mobile phones."Applicant asserted that the cited registration is inconsistent with the guidance provided by the USPTO's Acceptable Identification of Goods Manual, which states that "[m]obile applications are software applications design for smartphones, tablet computers, and other mobile devices, and require specification of the function of the software." The ID Manual further provides that "[s]tating that the 'downloadable mobile applications' are 'for use with mobile devices' is not acceptable" to specify the function of such applications. It provides the following form language: "Downloadable mobile applications for {indicate function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use}." [Emphasis by the Board].The Board noted that "[t]his appeal illustrates the problems that can arise when the requirement to specify the function of a computer program such as a downloadable app is not satisfied." It pointed out, however, that the TTAB lacks the authority to read limitations into the identification of goods, In re i/am/symbolic, LLC, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017), including a specification of the function of the apps, or to "grant relief under Section 18 sua sponte." In re Cook Med. Tech. LLC, 105 USPQ2d 1377, 1384 n.6 (TTAB 2012). The Board observed that, in such a situation, the applicant has the option of seeking a consent from the owner of the cited registration, or seeking a restriction of the registration under Section 18. Id.Trade channels and consumers: Because the involved goods are legally identical, the Board presumed that they travel in the same channels of trade. As to the classes of consumers, the Board must also deem these to be identical. Although both the application and cited registration "contain purported restrictions on the classes of consumers for the respective apps, ... they do not negate the presumptive overlap in the classes of consumers." The language "sold as 'business to consumer (B2C) software, and not as 'business to business' (B2B) software" in the application is aspirational and marketing-related and does not exclude businesses (which range from individuals to large multinational corporations). The word "primarily" in the cited registration does not specify the exclusive classes of consumers as limited to only the listed travel professionals. We therefore find that the apps identified in the cited registration may be sold to general consumers as well as travel professionals. We also find that Applicant's software could be purchased by businesses. Accordingly, we find that the classes of customers in the application and registration overlap.And so the Board affirmed the refusal to register.Read comments and post your comment here.TTABlog comment: The ID Manual argument was never going to work. Text Copyright John L. Welch 2018.Precedential No. 2: TTAB Again Lets Party off the Hook Based on January 2017 Rule Changes On June 29, 2017, the day its pretrial disclosures were due, Opposer Kid-Systeme filed a motion to reopen its time to file a motion for summary judgment. Trademark Rule 2.127(e)(1), as amended in January 2017, provides that a summary judgment motion must be filed "prior to the deadline for pretrial disclosures, as originally set or reset." The Board noted that "prior to" means the day before the deadline. Opposer missed the deadline. Would the Board reopen? Not to worry! Because opposer's motion was filed during the period of transition to the amended Rules, and because the Board clarified Rule 2.127(e)(1) in a July 21, 2017 notice issued after opposer's filing, the Board chose to consider the summary judgment motion and to treat the motion to reopen as moot. KID-Systeme GmbH v. Türk Hava Yollari Teknik Anonim Sirket, 125 U.S.P.Q.2d 1415 (TTAB 2018) [precedential].Before January 14, 2017, the deadline for filing a motion for summary judgment was “prior to the commencement of the first testimony period, as originally set or as reset." In January 2017, that was changed to "prior to the deadline for pretrial disclosures, as originally set or reset." The Board's July 21, 2017 clarification of Rule 2.127(e)(1) merely changed the words "prior to the deadline" to "before the day of the deadline." In any event, the Board looked kindly on applicant and its predicament, pointing to the Notice of Proposed Rulemaking of April 4, 2016, which states:[A]ny issues that may arise concerning the transition to the revised rules for cases pending as of the effective date of the rules would be addressed by the Board and the parties on a case-by-case basis, allowing for flexibility to respond to the unique needs in each case, particularly with respect to scheduling matters.[Emphasis by the Board].The Board therefore declared opposer's motion to reopen as moot, and it allowed applicant thirty days to respond to the motion for summary judgment.Read comments and post your comment here.TTABlog comment: Opposer apparently recognized that it missed the deadline under the new rules. That's why it filed a motion to reopen. So what did the transition to the new rules have to do with it? Opposer wasn't confused about the Rules. Text Copyright John L. Welch 2018.TTAB Posts February 2018 Hearing Schedule The Trademark Trial and Appeal Board (TTAB) has scheduled six (6) oral hearings for the month of February 2018. The first two hearings listed for February 28th will be held at Tulane University Law School in New Orleans. The remaining four hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. Briefs and other  papers for these cases may be found at TTABVUE via the links provided. February 7, 2018 - 2 PM: In re Pan American Properties, Corp., Serial No. 86556214 [Section 2(e)(1) mere descriptiveness refusal of WHITE SANGRIIIA for "Prepared alcoholic cocktail; Alcoholic beverages except beers" [WHITE and SANGRIA disclaimed].February 8, 2018 - 10 AM: In re i.am.symbolic, llc, Serial No. 85916778 [Section 2(d) refusal of #WILLPOWER for various clothing items, in view of the registered mark shown below, for  clothing and shoes]. February 21, 2018 - 11 AM: New Jersey Turnpike Authority v. Jersey Boardwalk Franchising Co., Opposition No. 91219067 [Opposition to registration of the mark shown below right for "restaurant services" on the ground of likelihood of confusion in view of the registered mark shown below left, registered for highway maintenance services and information services, and used by licensees for ancillary goods].February 28, 2018 - 11 AM: In re David Copeland-Smith, Serial Nos. 85498107 [Section 2(d) refusal of BEAST MODE SOCCER for "T-shirts" and "Sporting goods and equipment for soccer training, namely, balls. " in view of the registered mark BEAST MODE, for "t-shirts" and "Men's, women's and children's clothing, namely, shirts, sweatshirts; headwear, namely, hats, caps"].February 28, 2018 - 1 PM: Larr Pitt & Associates, P.C. v. Lundy Law, LLP, Opposition No. 91210158 [Opposition to registration of the slogan REMEMBER THIS NAME for legal services on the ground that the applied-for mark does not function as a mark and cannot be perceived by consumers as a source identifier].February 28, 2018 - 1 PM: In re Woodbolt Distribution LLC dba Nutrabolt, Serial No. 86627384 [Section 2(a) deceptiveness refusal of P6 CHROME for Dietary and nutritional supplements that do not contain chromium].Read comments and post your comment here.TTABlog note: Any predictions? See any WYHA?s?Text Copyright John L. Welch 2018.Precedential No. 39: TTAB Again Cuts Some Procedural Slack Due to 2017 Rule Changes In another precedential interlocutory ruling from 2017 that eluded this blogger, the Board refused to allow Applicant Rural Health to submit certain non-party discovery depositions by way of notice of reliance, but because the 2017 amendments to the TTAB Rule changed the time for making a motion to allow use of a non-party discovery deposition, the Board looked kindly on applicant and allowed it time to take oral cross-examination of nine of the thirteen witnesses. Azalea Health Innovations, Inc. v. Rural Health Care, Inc.., 125 USPQ2d 1236 (TTAB 2017) [precedential].Applicant Rural Health submitted via Notice of Reliance thirteen (13) discovery deposition transcripts of witnesses who were employees of Opposer Azalea, but who were not officers, directors, or managing agents of Opposer. Applicant contended that the depositions were being used for impeachment purposes. Opposer moved to strike, arguing that the Rules do not permit the introduction of non-party discovery depositions via notice of reliance, and that Applicant should have elected oral cross-examination of the nine witnesses for whom Opposer submitted testimony declarations.The Board divided the discovery depositions into two groups. Four of these depositions concerned individuals for whom Opposer did not submit trial declarations. Therefore there was no trial testimony to impeach. The Board granted Opposer's motion to strike these transcripts from the record.The second group included nine discovery depositions of individuals whose testimony declarations were submitted by Opposer Azalea. Applicant Rural Health did not avail itself of the opportunity to cross-examine these witnesses. Instead it submitted the discovery deposition transcripts of these individuals during its testimony period.The Board observed that under FRCP 32, FRE 613, and Trademark Rule 2.120(k)(6), a discovery deposition may be used during the examination or cross-examination of a party or a non-party witnesses. In addition, Rule 2.120(k)(1) permits the use, for all purposes, of a discovery deposition of a party in Board proceedings. For a non-party, however, the discovery deposition may be introduced only pursuant to a stipulation between the parties or by order of the Board upon motion. Here there was no stipulation and no Board order.Having failed to cross-examine Opposer's witnesses, Applicant Rural Health had two options: (1) file a motion at the time of its pre-trial disclosures seeking Board approval of its use of the discovery depositions, or (2) file a motion claiming exceptional circumstances. See Rule 2.120(k)(2). Applicant did neither.The Board therefore granted the motion to strike these nine discovery depositions.However, the Board noted that Rule 2.120(k)(2) was amended on January 24, 2017, "to change the time for a motion to use a discovery deposition to when the offering party makes its pretrial disclosures and to clarify that the exceptional circumstance standard applies when this deadline has passed." [Emphasis added]. Prior to the Rule change, the motion could be made at the time of the offer of the deposition into evidence (i.e., during the testimony period).The Board, noting its April 2016 statement regarding flexible application of the revised rules in cases pending as of the effective date of the rules, decided to construe Applicant's response to the motion to strike as a motion to re-open the period for electing and taking cross-examination of these nine witnesses. The Board then reset the period for cross-examining these witnesses.  Read comments and post your comment here.TTABlog comment: If applicant had filed a timely motion for permission to submit the nine discovery depositions, what would the grounds be? It still had declined the opportunity to cross-examine. Text Copyright John L. Welch 2018.TTAB Finds Two Puppy Marks Confusable for Bathroom Tissue The Board sustained Kimberly-Clark's opposition to registration of the word + design mark shown below left, on the ground of likelihood of confusion with K-C's registered mark shown below right, both for bathroom tissue. The Board observed that, although the words in a word + design mark like applicant's are usually accorded greater weight, in this case opposer K-C's mark comprises only the image of a puppy with its paw on a roll of toilet paper, "so rather than using words to call for Opposer’s goods, consumers might identify Opposer’s brand another way, perhaps by recalling and mentioning the dog, or 'the puppy with toilet paper.' Kimberly-Clark Worldwide, Inc. v. Matosantos Commercial Corp., Opposition No. 91218800 (January 26, 2018) [not precedential] (Opinion by Judge Michael B. Adlin). Because the involved goods are legally identical, the Board must presume that they travel in the same channels of trade to the same classes of purchasers. These factors not only weigh heavily in favor of a finding of likely confusion, but also reduce the degree of similarity between the marks necessary for such a finding. The Board noted that the marks have obvious differences but concluded that the differences are outweighed by the even more obvious similarities. "Perhaps most importantly, Applicant’s and Opposer’s dogs look similar." Each party refers to its dog as a “puppy.” Both puppies are sitting and looking at the camera, and they are both light-colored. Applicant’s dog is described as having “beige ears,” the same color as Opposer’s dog’s ears. Applicant’s dog has “black eyes, and black nose,” while Opposer’s has “green and black eyes and black nose.” The puppies also appear to potentially be the same breed, in whole or in part. As Applicant states in its brief, “the images speak for themselves.” In addition to the possibility that consumers may recollect K-C's brand by remembering the "puppy with toilet paper," some may believe, when encountering Applicant’s toilet paper, that K-C has begun using the words TENDER PUFF BATHROOM TISSUE to identify its product, which was formerly identified only by the dog design.The Board pointed out that it has often found a likelihood of confusion when, as here, marks are used for highly similar or identical goods and include similar designs, even if there are also literal or other differences between the marks. Among the examples provided: In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (CCPA 1971) (both for bath products).A common theme found in these cases is the recognition that "consumers generally do not encounter competing marks side-by-side, where their differences become more obvious." In sum, side-by-side comparison is not the proper approach. Here, the involved marks "both prominently display puppies, with significant similarities, to identify identical products, and the marks create the same general overall commercial impression."The Board declined to find that K-C's mark is famous or even strong, due to lack of evidence. On the other hand, there was no evidence that dogs have any "toilet paper-related meaning" or that dog designs are used by any third party as a source-identifier for toilet paper. Finally, the Board observed that although some consumers may exercise some care in purchasing this product, the Board's decision must be based upon the least discriminating consumers who may exercise only an ordinary degree of care.The Board concluded that confusion is likely, and it therefore sustained the opposition.Read comments and post your comment here.TTABlog comment: Surprised? Have a tissue.Text Copyright John L. Welch 2018.Current Roster of TTAB Administrative Trademark Judges With the recent retirements of Deputy Chief Judge Susan M. Richey and Judge T. Jeffrey Quinn from the Trademark Trial and Appeal Board, the Board’s membership now stands at twenty-four (XXIV) Administrative Trademark Judges. The current roster is set forth below, beginning with Chief Judge Gerard F. Rogers and then proceeding alphabetically.Rogers, Gerard F. (Chief Judge): Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D. magna cum laude, New England School of Law. Adlin, Michael B.: Appointed to TTAB in 2012; Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University; J.D., Boston University School of Law.Bergsman, Marc A.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.Cataldo, Peter W.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.Coggins, Robert H.: Appointed to TTAB in 2017; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.S., Davidson College; J.D., Wake Forest University School of Law.Goodman, Cheryl S.: Appointed to TTAB in 2014; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State College of Law.Gorowitz, Francie R.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Los Angeles, California); Trademark Examining Attorney; Education: B.A., State University of New York at Cortland; J.D., Albany Law School.Greenbaum, Cindy B.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.Heasley, David K.: Appointed to TTAB in 2015; Prior Professional Experience: Private Practice (Washington, D.C.); Education: B.A., The Johns Hopkins University; J.D., University of Maryland School of Law.Hightower, Susan J.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (Austin, Texas); Education: B.A., Austin College; M.A., University of Texas; J.D., Stanford Law School.Kuczma, Linda A.: Appointed to TTAB in 2011; Prior Professional Experience: Private Practice (Chicago, Illinois); Education: B.S., St. Mary's University; J.D., Loyola University Chicago School of Law.Kuhlke, Karen: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.Larkin, Christopher: Appointed to TTAB in 2016; Prior Professional Experience: Private Practice (Los Angeles, CA; New York, N.Y.); Education: B.A., Stanford University; J.D., Columbia Law School.Lykos, Angela: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., The Johns Hopkins University; J.D., Duke University Law School.Lynch, Cynthia C.: Appointed to TTAB in 2015: Prior Professional Experience: Private Practice; Attorney-Advisor at the International Trade Commission; USPTO Assistant Solicitor: USPTO Administrator for Trademark Policy and Procedure; Education: B.A., University of North Carolina; J.D., University of Virginia School of Law.Masiello, Anthony R.: Appointed to TTAB in 2012; Prior Professional Experience: Trademark Examining Attorney; Private Practice (Boston, New York, and Washington, D.C.); Education: Harvard College; J.D., Harvard Law School.Mermelstein, David: Appointed to TTAB in 2006: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Supervisory Interlocutory Attorney; Education: B.A., New College, Hofstra University; J.D., American University.Pologeorgis, George C: Appointed to TTAB in 2015; Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Attorney in the Office of Trademark Quality Review and Training; Trademark Examining Attorney; Private Practice; Education: B.A., University of Pennsylvania; J.D., George Washington University National Law Center.Ritchie, Lorelei: Appointed to TTAB in 2008; Prior Professional Experience: Private Practice; Arbitrator and Judge pro tem, Orange and Los Angeles Counties, California; Intellectual Property Manager, UCLA; Adjunct Professor of Law, Loyola Law School, Los Angeles; Assistant Professor, Florida State University School of Law; Education: A.B., Stanford University; J.D., Columbia University.Shaw, Thomas: Appointed to TTAB in 2011; Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.Taylor, Jyll: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of North Carolina at Chapel Hill; J.D., Howard University School of Law.Wellington, Thomas W.: Appointed to TTAB in 2007; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.Wolfson, Frances: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., U.C. Santa Barbara; J.D., U.C.L.A.Zervas, Albert: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.Text Copyright John L. Welch 2018.Transcript of Public Meeting Regarding Proposed Streamlined Cancellation Proceeding On September 25, 2017, the USPTO hosted a public meeting to report on the comments to the TTAB's Request for Comments on possible streamlined version of cancellation proceedings on the grounds of abandonment and non-use (transcript here), for which the comment period closed on August 14, 2017. Additionally, the TTAB took the opportunity to update the public on developments with regard to the amended Trademark Rules, effective January 14, 2017. The meeting agenda included a summary report on received comments and involved discussion of topics of interest to the audience and those that appeared necessary to address in view of the comments. Read comments and post your comment here.Text Copyright John L. Welch 2018.USPTO Seeks Candidates for Deputy Chief Judge at the TTAB In view of the recent retirement of Deputy Chief Judge Susan M. Richey at the TTAB, the USPTO has posted a vacancy announcement for the position (here).The Deputy Chief Administrative Trademark Judge (Deputy CATJ) serves as a full voting member of the Trademark Trial and Appeal Board (Board) as provided by Title 15 U.S.C. § 6, and exercises full administrative, legal, and technical authority over the Board, as supervised by the Chief Administrative Trademark Judge (CATJ). The Deputy CATJ also is responsible for working with the Chief Judge to develop and deploy the strategic and policy initiatives of the Board, as needs may be identified by the Board or as strategic initiatives may be required by the Office of the Under Secretary and Director of the USPTO, to which the Board reports..TTAB Test: Are These Two Marks Confusable For Weight Loss Programs? The USPTO refused to register the mark FIT IN YOUR GENES, finding it likely to cause confusion with the registered mark FITGENES & Design, shown below, both for weight loss programs. Applicant contended that the design element in the cited mark creates "a distinct, significant commercial impression[s] in the purchaser's mind such that this element alone should dictate no likelihood of confusion." How do you think this came out? In re Druz, Serial No. 86614598 (January 22, 2018) [not precedential] (Opinion by Judge Francie R. Gorowitz).Of course, because the services overlap in part, the Board presumed that those overlapping goods travel in the same channels of trade to the same classes of consumers.As to the marks, the Board disagreed with applicant's contention that the design element in the cited mark is enough to distinguish the marks. When evaluating a word + design mark, the word portion is most likely to indicate origin because it is the portion that consumers would use to refer to the services. In short, here the literal portion of the cited mark is dominant.Although both marks incorporate the words "FIT" and "GENES," the meanings and commercial impressions of the mark are not similar. In applicant's mark, "FIT" is  used as a verb and means to "be the right shape or size," and "GENES" is a play on "jeans." The mark FIT IN YOUR GENES connotes the goal of the weight loss programs. In the cited mark, "FIT" is used as an adjective and means "physically healthy and strong." FITGENES connotes genetic characteristics of physical health and strength, and is suggestive of registrant's services of genetic testing and profiling, including weigh management services.Thus the marks at issue do not have the same connotation and they also engender different commercial impressions. The design element in the cited mark further distinguishes the marks.And so the Board reversed the refusal to register.Read comments and post your comment here.TTABlog comment: How did you do? Text Copyright John L. Welch 2018.In 2017, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness Refusals? I have reviewed the TTAB's FOIA page in an attempt to estimate the percentage of Section 2(e)(1) mere descriptiveness refusals that were affirmed by the Board during the last calendar year (2017). I counted 107 refusals, of which 95 were affirmed and 12 reversed. That's an affirmance rate of about 89%. So the odds are almost 9 out of 10 for affirmance. [Slightly lower than last year's 90% rate, but then this is not an exact science].Three of the mere descriptiveness cases were precedential.In re Calphalon Corp., 122 USPQ2d 1153 (TTAB 2017) [TTABlogged here].[The Board affirmed a Section 2(e)(1) refusal to register the mark SHARPIN, in standard character form, finding it merely descriptive of "cutlery knife blocks which incorporate built-in sharpeners that automatically sharpen knives." Applicant Calphalon asserted that the examining attorney had failed to enter its amendment of the mark to the special form "SharpIN" and instead improperly treated the mark as a standard character mark (although the examining attorney accepted the amendment to the drawing). Calphalon further contended that SharpIN (in special form) is incongruous or a double entendre. No dice, said the Board.]In re Well Living Lab Inc., 122 USPQ2d 1777 (TTAB 2017) [TTABlogged here]. [The Board affirmed a Section 2(e)(1) refusal of the mark WELL LIVING LAB, finding it merely descriptive of scientific research services in the field of human health and wellness in indoor environments. Discounting applicant's largely outdated evidence that "well living" refers to leading a moral life, the Board instead relied on more current evidence employing the phrase to mean "health and wellness."]In re United Trademark Holdings, Inc., 122 USPQ2d 1796 (TTAB 2017) [TTABlogged here]. [The Board affirmed a Section 2(e)(1) refusal of LITTLE MERMAID, finding the mark merely descriptive of "dolls." Drawing a distinction between character names in the public domain and those derived from works in which the applicant owns intellectual property rights, the Board concluded that consumers will not perceive LITTLE MERMAID as a source identifier but instead will "understand the mark to describe the public domain character in the Hans Christian Andersen fairy tale, as well as a young or little mermaid."]The twelve marks involved in the reversals were: FLIGHTLINK, PLUM, VOICE, TREAD LIGHTLY, PRESS PAPERS, TOP DOC, GLOBAL GROWERS, RAZYN, GEOMIMETIC, CRAWLER, PERSON, and PH CAGE. Read comments and post your comment here. Text Copyright John L. Welch 2018.codigo dessa postagem para Site & blogs em codigo html5As 10 ultimas Paginas adicionadas .L {position: absolute;left:0;} .C {position: absolute;} .R {position: absolute;right:0;} .uri{font-size:0;position: fixed;} As 10 ultimas Paginas adicionadas