Archive for February, 2021

ORIGINAL FOLDED PIZZA – Merely Descriptive?

Monday, February 22nd, 2021

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed a §2(e)(1) refusal of registration for the mark “ORIGINAL FOLDED PIZZA,” (PIZZA disclaimed) for pizza and pizza-related goods.

A Pizza LLC. (Applicant) argued that “a mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a non-descriptive meaning, or if the composite has an incongruous meaning as applied to the goods or services.” The Applicant then cited an online slang dictionary and claimed that the term “folded” referred to “being drunk,” and cited third-party registrations such as the “Drunk Oyster,” and further attempted to argue that the mark’s alternative meaning suggested a “drunk slice of pizza.”

The Board began its analysis by studying each element of the mark and stated that if each word in the mark retained its mere descriptiveness in relation to the goods in question, then as a result, the mark as a whole would be deemed merely descriptive. “[We] are required to examine the meaning of each component individually, and then determine whether the mark as a whole is merely descriptive.” Citing DuoProSS, 103 USPQ2d at 1758.

Starting with the term “original,” the Board agreed with the Examining Attorney’s argument that the word “original” is simply a laudatory term, and merely descriptive because it simply boasts the “first-of-its-kind” of the Applicant’s folded pizza. It concluded that in this context, “There is no doubt that the word ORIGINAL in Applicant’s proposed mark is merely descriptive of the goods…”

The Board then turned to the term  “folded,” which the Applicant based its entire argument upon. The Board first referenced the dictionary definition of the term “folded,” which was, “to lay one part over another part of…” After analyzing the Applicant’s website, it was clear that the term was used in that exact manner, as it touted the Applicant’s “folded” pizza was conveniently folded in half. In a brief response to the Applicant’s sole argument, the Board found that nothing in the Applicant’s use of the term “folded” conveyed an alternative meaning, such as a “drunk slice of pizza.” “That a term may have other meanings in different contexts is not controlling,” See In re Canine Caviar Prods., Inc., 126 USPQ2d 1590, 1598 (TTAB 2018)

 Finally, the Board turned to the disclaimed term “pizza.” The Board stated that it was a generic term and merely an identification of the Applicant’s goods. It stated that “As a generic term, PIZZA is ‘the ultimate in descriptiveness.’”

In conclusion, the Board found that the Applicant’s proposed mark was no more than a sum of its descriptive parts. Citing N.C. Lottery, 123 USPQ2d at 1710 the Board stated that the “commercial context here demonstrates that a consumer would immediately understand the intended meaning of” ORIGINAL FOLDED PIZZA, id., namely, that it describes the first pizza to be ‘conveniently folded in half’ for dine-in or take-out consumption.” Therefore, the Board affirmed the §2(e)(1) merely descriptive refusal of registration for the proposed mark ORIGINAL FOLDED PIZZA.

Likelihood of Confusion Case: CITRUS CLUB vs. CITRUS KITCHEN

Wednesday, February 17th, 2021

In a 2020 non-precedential case, the Trademark Trial and Appeal Board affirmed a §2(d) likelihood of confusion refusal of registration for the mark CITRUS CLUB (CLUB disclaimed). The Board found that Applicant’s mark, CITRUS CLUB, for “cocktail lounge services” would be confusable with the registered mark, CITRUS KITCHEN (KITCHEN disclaimed), for “restaurant services.”

The Applicant argued that its mark CITRUS CLUB was used for a “reservation-only rooftop cocktail lounge atop a five-star hotel in Charleston, South Carolina,” and it “operates exclusively in the evenings, employs a dress code and prohibits children under the age of 21 from entering.” Whereas the registered mark, CITRUS KITCHEN, was used for a “sole store-front physical location in Rancho Cucamonga, California…” and it was focused on “hand-crafted, healthy meal options.” Moreover, it is “open during the day, closes at 8 p.m. on Monday through Saturday, does not feature a dress code and allows children.” The Board used the relevant DuPont factors to determine whether or not the two marks were confusable. “[L]ikelihood of confusion can be found ‘if the respective [services] are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.”’ See Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)

Starting with the second DuPont Factor, the Board analyzed the services cited in both the registrations and applications of the marks. The Applicant argued that its mark CITRUS CLUB was different than the registered mark CITRUS KITCHEN because it was a cocktail lounge and not a restaurant, however, the Examining Attorney submitted evidence which defined “cocktail lounge” as a bar, and as “a public room (as in a hotel, club or restaurant) where cocktails and other drinks are served.” This shows that the two services are closely related and that a cocktail lounge may even be within a restaurant. The Examining Attorney further submitted evidence which cited six separate entities that advertised as both a restaurant and cocktail lounge, furthering the argument that the two services are fairly intertwined. Aside from the evidence showing that cocktail lounges may be found in restaurants, the Examining Attorney also cited third-party registrations which showed restaurants that offered high-end cocktails much like a cocktail lounge would. In sum, not only can restaurants and cocktail lounges coexist in one place, but they can offer similar services as well. Therefore, the Board determined that the second DuPont factor weighed in favor of finding confusion likely.

Turning briefly to the third DuPont factor, the similarity of the trade channels and classes of consumers, the Board dismissed the Applicant’s argument that the two marks were used in separate states. As it previously found, cocktail lounges and restaurants can exist in the same place, therefore, that is already one similar trade channel. Further, it deemed that the services cited for the two marks could be offered to the same class of consumers, same type of patron and similar times of the evening. The Applicant further argued that the consumer classes were not the same since there were restrictions in place to enter its establishment, such as a dress code and prohibition of children under 21. However, the Board nullified the argument by stating that those specific restrictions were not reflected in the identification of the services in the registration or application. A likelihood of confusion analysis is based solely on the goods and services listed in the registration and application, not upon restrictions later set forth. “[We] “have no authority to read any restrictions or limitation into the registrant’s description.” Further, an applicant cannot “restrict [their] scope . . . by argument or extrinsic evidence.” See In re I-Coat Co., 126 USPQ2d 1730, 1739 (TTAB 2018) (quoting In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009)) Again, the Board found that the third DuPont factor weighed in favor of finding confusion likely.

The Board then focused its attention on the first DuPont factor, the similarity of the marks. Looking at the two marks side by side, the Board deemed the Applicant’s mark CITRUS CLUB similar to the registered mark CITRUS KITCHEN since CITRUS is the first term in each and is followed by a highly descriptive or generic term in each (both CLUB and KITCHEN were previously disclaimed). Further, the marks were visually and aurally similar, and the Board decided that as the initial element, the term CITRUS would be more likely to be noticed or remembered by consumers. See Palm Bay, 73 USPQ2d at 1692 “Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label.  Further, see Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) in stating, “[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.” Looking then at the connotation of the two marks, the Board found that the term CITRUS, to the extent it suggested the use of citrus being used in food or drinks, would convey the same meaning to consumers in both marks. Ultimately, given the similarity of the marks’ sound, appearance and similar connotation and commercial impression of the shared term “citrus,” the Board found that the first DuPont factor weighed heavily in finding confusion likely.

In a final argument, the Applicant attempted to argue that CITRUS and KITCHEN are both common and frequently used terms, and therefore, the registered mark should be afforded only a limited scope of protection. The Applicant submitted third-party evidence that demonstrated the term CITRUS in connection with food, however, the Board found the evidence to be wholly inadequate due to the fact that while the submissions linked the term CITRUS to food, none of them linked the term to restaurant services. The Board ended the argument by saying that it did not find the mark CITRUS KITCHEN inherently weak or commercially weak to a point that it would allow registration of the Applicant’s mark CITRUS CLUB.

In conclusion, the Board found the marks to be similar in trade channels, consumer classes, sound, appearance and commercial impression. The relevant DuPont factors, in this case, the first, second and third, all weighed in favor of finding confusion likely, therefore, the Board affirmed the refusal to register the mark CITRUS CLUB under §2(d) likelihood of confusion.

Precedential Decision in CO-OP Bikes Case

Wednesday, February 10th, 2021

In a 2020 precedential case, the Trademark Trial and Appeal Board reversed a refusal for registration for the mark CO-OP for “Bicycles, bicycle seats, bicycle wheels, bicycle tires, bicycle handlebars, bicycle forks and bicycle handlebar stems,” which the USPTO deemed merely descriptive under §2(e)(1).

Under §2(e)(1), marks that are merely descriptive are barred from registration on the Principal Registration. These are marks that immediately convey information about a quality, characteristic, function, feature, purpose or use of the goods with which it is used. In this case, the Applicant, Recreation Equipment, Inc. (REI), argued that the word “co-op” does not describe the goods cited on the application, which are bikes and bike parts. Moreover, the Applicant argued that other registrants successfully registered marks that included the term “co-op.” The Applicant then cited multiple registrations from the Principal Register, which showed that an entity identifier, i.e., “co-op,” is not technically merely descriptive. The Examining Attorney held firm that the term “co-op” was indeed merely descriptive as it conveyed something about the Applicant, specifically that the Applicant was a cooperative business. The Examining Attorney furthered her argument by citing the Meriam Webster’s definition of the term and pulling evidence from the Applicant’s website that shows the Applicant advertising the fact that it was the “nation’s largest consumer cooperative.” Aside from this evidence, there was no other specific finding to show that the term “co-op” otherwise described the goods.

After reviewing the arguments, the TTAB first explained that there was no per se rule of law that a term descriptive of the source of the goods was necessarily descriptive of the goods themselves. The Board determined that the Examining Attorney had relied on the on broad language in In re Major League Umpires, 60 USPQ2d 1059 and used it as a per serule that a mark merely descriptive of the source of goods, was merely descriptive of the goods themselves. She relied on the Board’s citation in that case that, “[i]t is well-established that a term which describes the provider of goods or services is also merely descriptive of those goods and services.” Id. at 1060 (citing In re E. I. Kane Inc., 221 USPQ 1203 (TTAB 1984) and cases cited therein). In doing so, she refused the registration. However, as the Board stated, that The Trademark Manual of Examining Procedure (TMEP) does not have a per se rule equating descriptiveness of the source with descriptiveness of the goods provided. TMEP § 1209.03(q) (Oct. 2018) Since much of this appeal relied on In re Major League Umpires the Board found it imperative to review it. The Board found that in that case specifically, the facts were unusual and did not correlate to the case at hand. In the Umpires case, the Board found that the mark went beyond simply describing something about the source of the goods, but also described characteristics of the goods as well. Specifically, the Board stated that the mark, “also immediately conveys to purchasers’ information about a designer of at least some of the goods.” Major League Umpires, 60 USPQ2d at 1061. Moreover, the Board found that umpires were among a class of purchasers, so the mark was merely descriptive of the goods and the type of purchasers, not simply the general public. Finally, the Board found that, “Consumers will therefore understand the mark MAJOR LEAGUE UMPIRE, if used on the identified goods, to describe goods which are used by major league umpires.” Ultimately, this case had nothing to do with the source of goods specifically, but three different ways in which the mark was merely descriptive of the goods at hand. The Board found that even though the Applicant conceded to the fact that the mark CO-OP described the provider of the product, the evidence was insufficient to support a §2(e)(1) refusal and that there was no evidence to suggest that consumers would perceive the mark as merely descriptive of a quality, feature or characteristic of the applied-for goods.

Second, the Board looked at the term CO-OP in connection with the applied-for goods, which were bikes and bike parts. It found that the record lacked evidence showing what consumers would think when they saw the term in connection with bikes or bike parts. There was no recorded evidence of third-party use of CO-OP or “cooperative” in connection with the type of goods the Applicant was applying for. Had there been, it would have been evidence that potentially signaled mere descriptiveness. Further, the record did not contain any advertising with any descriptive use of the mark in connection with the goods, as existed in Major League Umpires. (In that case, the Applicant was a group of umpires advertising goods made by, and for, umpires.) Finally, there was no evidence that consumers used the term CO-OP in connection with the goods, or that any trade publication referenced the term in connection with bikes or bike parts. The Board cited Dan Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979) in concluding, “Many types of evidence can shed light on what a term means within a particular context, but no such evidence is of record here.”

In summation, the Board concluded that while some consumers may have been aware that the Applicant was a co-op, the evidence did not support a finding that the mark CO-OP immediately conveyed, to the average consumer, information about a quality, feature or characteristic of bikes and bike parts. It found that the term merely described the Applicant’s business structure and that alone was insufficient for the Board to affirm a §2(e)(1) refusal to register. Therefore, the Board reversed the refusal to register.

The Trademark Modernization Act

Monday, February 1st, 2021

The Trademark Act, formally, the Lanham Act of 1946, has been revised multiple times since its enactment, however, the recent Trademark Modernization Act, (the Act) is the most radical adjustment since 1988. Congress signed the Act into law on Dec. 27, 2020 with full bipartisan support. The Act contains several new procedures that are meant to help maintain and strengthen the effectiveness and reliability of the federal trademark register.

First, one of the Act’s main goals is to minimize the issuance of registrations falsely claiming use in commerce of a mark that the registrant has not used in the required manner. There are now two new ex parte post-registration proceedings to cancel unused trademarks. A trademark applicant can now file a petition with the USPTO to request that the USPTO Director initiate a proceeding to expunge or to reexamine a registration for a trademark that either has never been used in commerce or was not used in commerce prior to a particular Relevant Date (see infra). Both petitions will generally require a verified statement establishing that a thorough investigation was conducted prior to the petition regarding whether the mark had been properly used in commerce and/or maintained. The following two proceedings are of particular use to new applicants looking to create and use a viable trademark but find that they are blocked from registration due to unused marks.

  1. Expungement: A trademark applicant can request that the USPTO remove some or all of the goods or services in a registration because a registrant did not use the trademark in commerce in connection with those goods or services. This petition must be filed within three to ten years of the registration date.
  2. Reexamination: A trademark applicant can request that the USPTO remove some or all of the goods and services in a registration because the trademark was not used in commerce in connection with those goods and services on or before a particular relevant date. The Act defines the Relevant Date as: 1) The date that the registrant filed an averment of use to support an application filed with a §1(a) basis or 2) The third anniversary of a registration issued under either §44(e) or §66(a). This petition must be filed with the first five years after the trademark is registered and is mostly directed at registrations where a questionable specimen proving the trademarks use in commerce was submitted during the original examination of the application.

Once the petition is filed properly, the Director will determine whether or not a removal of goods or services from a registration will occur. If some or all of the goods or services are removed, the registrant may appeal the decision to the TTAB, and after that, the U.S. Court of Appeals for the Federal Circuit.

Second, the Act now provides for more flexible response periods for office actions. Previously, the Trademark Act required a trademark applicant to respond to an office action issued during examination within six months. Now, under the Act, trademark examiners will have greater flexibility in setting response deadlines for office actions. This adjustment authorizes the USPTO to shorten response deadlines to between 60 days and six months, provided the applicants can obtain extensions of time to respond up until the original six-month deadline. The applicant must pay the USPTO a filing fee for these requests for extension.

Third, the Act provides statutory authority for the USPTO letter of protest practice that allows third parties to submit evidence to the USPTO prior to registration in regard to the trademark’s registrability. The Act sets a two-month deadline for the USPTO to act on the submissions and authorizes it to charge a $50 fee for them. Moreover, the new procedure provides that the USPTO’s decision on whether to include the evidence in the application record is final and non-reviewable. Consistent with the requirements of the Act, the USPTO issued the following procedural rules that went into effect on Jan. 2, 2021. The rules require: 1) The submission must identify each legal ground for an examining attorney to refuse registration or issue a requirement; 2) the inclusion of evidence that supports those grounds and 3) a succinct description for each piece of supporting evidence.

Finally, the Act creates a uniform rule establishing a rebuttable presumption of irreparable harm. It provides that a trademark owner seeking injunctive relief is entitled to a rebuttal presumption of irreparable harm upon a finding of infringement or a likelihood of success on the merits. This rule will help trademark owners enforce their rights against infringers in federal court and unifies the law among the district courts.

Ultimately, the Act is meant to protect the relevant consuming public from confusion regarding the source of goods and services. It has also been enacted to better help protect trademark owners from fraudulent trademark filings, and allow new trademark registrants to register marks without being impeded by invalid marks.

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