Archive for January, 2021

The TTAB’s Decision on a Mere Descriptiveness Case

Monday, January 25th, 2021

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal of registration for the proposed mark SPIDER WOOD for “Decorative ornaments in the nature of natural sculptures of wood for use in terrariums, animal habitats, bird cages, floral arrangements, and interiorscape installations.” The TTAB found the mark to be merely descriptive under §2(e)(1).

When determining whether a mark is merely descriptive or suggestive, the Examining Attorney must look at the mark in its entirety, and if the mark “immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought,” then it is considered merely descriptive under §2(e)(1). Further, when determining whether a mark is merely descriptive, the Examining Attorney must consider the mark as a whole, and “do so in the context of the goods or services at issue.” See Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) and DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).

 The applicant, Petglobe, first argued that the mark was suggestive, and not descriptive because the product “is a tangled mass of wood roots used in animal habitats,” that “does not have any other clear connection to spiders.” The Examining Attorney submitted a slew of evidence in the form of website excerpts that referred to, and offered, the sale of “spider wood” for terrariums and aquariums. The Board found that the applicant’s argument that the mark was suggestive because there was no clear connection to spiders was invalid. It concluded that the term, SPIDER WOOD, in connection with the goods listed in the application, did indeed have a distinct and commercial impression. It stated that the owners of terrariums, animal habitats and birdcages looking to buy “decorative ornaments in the nature of natural sculptures of wood,” would encounter the term SPIDER WOOD and “[would] immediately know that it is a type of driftwood without having to resort to a multi-step reasoning process, thought, or cogitation.” Therefore, the applicant’s argument that the addition of the word SPIDER before WOOD was negated by the evidence provided. It is important to note that in order for a mark to be found merely descriptive it does not have to describe all of the purposes, functions, characteristics or features of a good or service to be considered merely descriptive. It can be classified as such if the term describes one important function, attribute or property. In a similar fashion, the term does not need to describe all of the goods or services identified on the application, so long as it describes one of them.

The applicant then argued that it was the first to “develop” the mark and the first to use it. Therefore, it claimed that any other industry usage of the mark, for the same goods, was an infringement against its established unregistered trademark. This argument was quickly dismissed as the Board stated that simply because an applicant was the first user or “developer” of merely descriptive mark did not justify its registration if the only significance conveyed by the term was merely descriptive. “Trademark law does not countenance someone obtaining “a complete monopoly on use of a descriptive term simply by grabbing it first.” See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122, 72 USPQ2d 1833, 1838 (2004)

In conclusion, the Board affirmed the refusal of registration for the mark SPIDER WOOD as it was found to be merely descriptive under § 2(e)(1).

TTAB Decision for Likelihood of Confusion Case – MASTERRANCHER v. RANCH MASTER

Sunday, January 17th, 2021

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed a §2(d) refusal of registration on the Principal Register for True Value’s (Applicant) mark MASTER RANCHER, for footwear, as it so resembled the registered mark RANCHMASTER, for footwear as well.

The Board began its analysis of the two marks starting with the first Dupont Factor, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Citing Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971), the Board focused on the “recollection of the average consumer, who normally retains a general rather than a specific impression of trademarks.” As both descriptions of the goods were “footwear,” the average purchaser is a general consumer.

Starting with the term MASTER, the Board found the Applicant’s mark MASTER RANCHER, was too similar to RANCHMASTER, and the transposition of the terms did nothing to change or create a new meaning, nor did the addition of the suffix “er” to the end of “Ranch.” The Applicant used the alternative definition of the term “master,” and defined it as “a man in charge of [a particular ranch].” It attempted to argue that this definition created a distinct difference in the meaning and commercial impression. However, the Board countered that the way in which it was used in the registered mark RANCHMASTER, may also possibly conjure the impression of a “greatly skilled or professional rancher,” with no contrary evidence.

In an attempt to further distinguish the mark, the Applicant asserted the term “master” was a house mark and claimed that the use of a house mark created a distinct commercial impression, and moreover, distinguished the mark in terms of appearance and sound. The Applicant made reference to five other marks in its appeal brief: MASTER MECHANIC, MASTER ELECTRICIAN, MASTER PLUMBER, MASTER PAINTER and MASTER TRADEMASMAN. Though the marks were referenced, no evidence was submitted to prove use of the marks, thus, the argument was empty. See In re Olin Corp., 124 USPQ2d 1327, 1335 n.22 (TTAB 2017), where the Board “declined to take judicial notice of registrations owned by applicant.”

The Applicant then asserted ownership of a family of MASTER-formative marks, but this argument failed for two main reasons. First, in order to prove the existence of a family of marks, an applicant must prove that the alleged family meets the following criteria: “(1) has a recognizable common characteristic; (2) that is distinctive and (3) that has been promoted in such a way as to create ‘recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods or services.’” See J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). The Applicant made no showing of any of the above criteria. Second, “a family-of-marks argument is not available to an applicant seeking to overcome a likelihood-of-confusion refusal.” See In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009).

In light of the above arguments, the Board found that the first Dupont Factor weighed in favor of finding a likelihood of confusion.

The Board briefly turned to the second and third Dupont Factors, the similarity or dissimilarity of the goods in connection with the marks, and the similarity or dissimilarity of the likely-to-continue trade channels. In analyzing these factors, the Board looked to the goods cited in the application and registration. The description for both sets of goods is “footwear,” therefore, since the description of the goods is identical, the Board presumed that the trade channels and purchasers were similar as well. Ultimately, these two Factors weighed very heavily in finding a likelihood of confusion.

Finally, the Applicant argued that its ownership of a prior registration of the mark MASTER RANCHER, for gloves, should provide a basis for registration. In citing  In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399 (TTAB 2012), the Board noted, “[w[here an applicant owns a prior registration that is over five years old and the mark is substantially the same as in the applied-for application, this can weigh against finding that there is a likelihood of confusion.”

However, in the Strategic Partners case, the applicant’s existing registration coexisted with a cited registration for more than five years, and the goods in the prior registration were identical to those in the new registration. In this case, however, the Applicant’s prior registration was only two years old, and it was for gloves, not footwear, which moved it closer to the cited registration. Therefore, as opposed to the finding in Strategic Partners, the Board found that the Applicant’s prior registration did not negate the finding of a likelihood confusion between the Applicant’s mark, MASTER RANCHER and the registered mark RANCHMASTER.

In sum, the first three Dupont Factors weighed heavily in finding a likelihood of confusion, and the Applicant’s prior registration did not cancel this finding. Therefore, the Board affirmed the refusal to register under §2(d).

TTAB Decision for Likelihood of Confusion Case – CHINOOKER’D IPA vs. CHINOOK

Sunday, January 10th, 2021

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board dismissed the §2(d) opposition against Lawson’s Finest Liquids, LLC’s (applicant), mark CHINOOKER’D IPA (IPA disclaimed) for beer, and found it unlikely to be confused with W. Clay Mackey’s (opposer), CHINOOK for “table wine and sparkling wine,” and his presumed common law rights in the same mark for beer.

Turning first to the opposer’s alleged common law rights to the mark CHINOOK for beer, the Board deemed the term generic, and therefore not protected by common law rights. At the core of any genericness case, is the issue of whether relevant members of the public use or understand the term in question in connection with the genus of the good being used under the mark. See Royal Crown, 127 USPQ2d at 1046. In this specific case, of CHINOOK for beer, the U.S. Department of Agriculture identified Chinook as a variety of hops, which is used in brewing beer. Moreover, the applicant’s expert witness testified a similar statement, and a slew of articles, unrelated to the opposer’s product,  supported the testimony. The Board found that the evidence clearly showed that “the relevant purchaser perceives Chinook as indicating a type of beer by referring to a key aspect of that product.” Ultimately, the Board concluded the opposer had no proprietary rights in the term, as it is generic when used in connection with beer, since the relevant public already perceived that the beer was brewed with Chinook hops.

The Board then turned its attention to the main issue: Whether or not the applicant’s mark CHINOOKER’D IPA, for beer, was likely to cause confusion with the opposer’s registered mark CHINOOK for “table wine and sparkling wine,” under §2(d) likelihood of confusion. It used the relevant Dupont Factors to come to its ultimate finding. Starting with the second Factor, the similarity or dissimilarity and nature of the goods in connection with the mark, the Board found the mark to be arbitrary for wine, as the opposer testified that the mark was meant to reference positive attributes of the Pacific Northwest. Therefore, the mark was considered inherently strong. Moving to the seventh Factor, the nature and extent of any actual confusion between the marks, the Board deemed this factor neutral as there was no reasonable opportunity for confusion to occur, which is what gives this factor any probative value. See Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007). In examining the third and fourth Factors, similarity of trade channels and impulsive vs. careful buyers, the Board found that beer and wine are most often offered in the same trade channels to some of the same types of consumers. Since the two marks are for goods offered in the same trade channels, and neither appeal to any specific type of consumer, it was to be presumed that the purchasers of either sides’ goods would include both impulsive and careful consumers. Finally, the Board looked at the first Factor, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. It found that since the applicant’s mark encompasses a portion of the opposer’s mark, the two are similar in sound and appearance. However, the connotations of the marks are very dissimilar. The opposer’s mark was meant to suggest the Pacific Northwest, while the applicant’s mark “engenders the commercial impression of getting snockered (i.e., drunk) on beer made from Chinook hops.” In this fashion, the two marks do not have the same connotation or give off the same commercial impression.

In conclusion, the Board found confusion unlikely under §2(d) for CHINOOKER’D IPA for beer and CHINOOK for table and sparkling wines. Its ultimate decision was that the dissimilarity in the marks’ connotation and commercial impression heavily outweighed the similarity in sound and appearance. “Each of the evidentiary factors set out in DuPont, may, from case to case, play a dominant role.” As stated in Kellogg Co. v. Pack’em Enters., Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). The commercial impression, in this case, was particularly important as Chinook is generic for beer, and that ultimately made the applicant’s mark arbitrary, and inherently strong, as used in connection with the applicant’s goods.

Post-Registration Proof of Use Audit Program

Monday, January 4th, 2021

Starting as a pilot program in 2012, the auditing program used by the USPTO is essential in maintaining the reliability of the user-based trademark register as an accurate reflection of marks in use in commerce. Registrations in the database are entitled to be maintained only for goods and services for which the mark is used in commerce or registrations for which temporary nonuse is excused due to extenuating circumstances. Since the registration is user-based, it is up to the user to maintain the registration, which can invariably lead to error. The occurrence of improper or inaccurate registration maintenance filings can jeopardize the validity of an owner’s registration, may unnecessarily block future applications and diminish the trademark registration’s ability to provide accurate information the public.

If an owner of a mark is audited, the USPTO will require the owner to show proof of the mark in connection with additional goods and services listed in the registration. If the owner cannot provide such proof for the specified goods and services, they will be removed from the registration. Which, as mentioned above, can help to negate the chances of unnecessarily blocking future applications.

Any owner of a trademark can be subjected to an audit if their registration meets the following requirements: The owner filed a §8 or §71 declaration of use in the appropriate timeline, and the registration includes at least one class with four or more goods or services. A registration including at least two classes with or more goods or services may be audited as well.

If a registration owner is audited, they will receive an office action from a post-registration examiner. The action will inform the owner that they’ve been selected for auditing and it will also identify two goods or services for each audited class. The owner must then submit proof for each of the identified goods or services.

If the USPTO accepts the submitted evidence, a notice of acceptance will be issued. If there are issues, or failure to provide sufficient proof, a second action will be sent. If an owner cannot provide sufficient proof, they must remove all goods and services from their registration for which they cannot provide proof of use, note, this does not simply mean the ones identified for audit, but for all goods and services that cannot be proven to be connected the mark in use.  The deadline for responding to a first or second office action is whichever of the following comes later: Six months after the issue date of the office, or the end of the statutory filing period, not including the grace period.

If an owner fails to respond to either a first or second office action by the deadline above, the registration may be canceled in its entirety. If extraordinary circumstances prevent an owner from responding on time, the owner may file a Petition to Director, asking for a waiver of timely response. For a fee, this petition may also be filed if an owner is dissatisfied with the post-examiner’s final decision. Following the submission of this petition, the Director will then review the record and determine whether or not the examiner made an error.

For more information regarding the post-registration proof of use auditing program visit

Hot Topics


Practice Areas

Trade Secrets
Internet Law
The hiring of a lawyer is an important decision that should not be based solely upon advertisements. Before you decide, ask us to send you free written information about our qualifications and experience. This web site is designed for general information only. The information presented at this site should not be construed to be formal legal advice or the formation of a lawyer/client relationship.