Archive for April, 2021

Is BARSKI Primarily Merely a Surname?

Friday, April 30th, 2021

In a 2021 non-precedential case, the Trademark Trial and Appeal Board reversed the §2(e)(4) refusal to register the mark BARSKI for or beverage glassware, pitchers, ice buckets and various other items in Class 21 and found that the mark was not primarily merely a surname.

Under §2(e)(4)  a term is primarily merely a surname “if, when viewed in relation to the goods or services for which registration is sought, its primary significance to the purchasing public is that of a surname.” See Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017). If the mark is primarily merely a surname, and absent acquired distinctiveness, it cannot be registered on the Principal Register. When determining whether or not a term is primarily merely a surname there is no specific rule or  amount of evidence necessary to show that the mark would be perceived as primarily merely a surname – the Board must base its decision on the facts at hand in each case. See In re Pohang Iron & Steel Co., 230 USPQ 79, 79 (TTAB 1986). Though there is no test, there are certain circumstances that are taken into consideration when examining the mark to decide if the public would perceive the mark as primarily merely a surname. Following are the circumstances applicable in the case at hand: (1) The frequency and extent of public exposure to the term as a surname, (2) Whether the term is the surname of anyone connected with Applicant, (3) Whether the term has any recognized meaning other than as a surname (4) And whether the term has the structure and pronunciation of a surname. See Darty, 225 USPQ at 653-54; In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 n.4 (TTAB 2016).

The Board began its examination of the proposed mark BARSKI by first determining whether or not the term was indeed a surname. It found that though the BARSKI was not associated with the Applicant, the evidence of record showed that multiple people in the United States did have the surname BARSKI. Moreover, the name, which is of Polish origin, had no “ordinary language meaning,” and “ surnames of Polish origin often end with the letters ‘SKI.’”

The Applicant argued that the proposed mark BARSKI is not primarily merely a surname, and the public would perceive it as a fanciful term. The Board dismissed the Applicant’s evidence from that showed multiple definitions for the terms “BARSKY” and “BARSKIES,” as neither of which were the actual proposed mark BARSKI. The Applicant then argued that BARSKI was a coined term that was a combination of the Applicant’s founders’ names (“BaumgARten and ZablotSKY [pronounced ‘ski’]”). However, the Board stated, “Applicant’s argument concerning the origin of ‘Barski’ as a combination of Applicant’s founders’ surnames, neither of which includes the three-letter strings ‘bar’ or ‘ski,’ is unconvincing.”

Finally, the Board turned back to the question at hand: When applied to Applicant’s goods, would the purchasing public be more likely to perceive the mark BARSKI, in standard characters, as a surname rather than as anything else? “[I]t is that impact or impression which should be evaluated in determining whether or not the primary significance of a word when applied to a product is a surname significance. If it is, and it is only that, then it is primarily merely a surname.” See Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm’r Pat. 1955). Ultimately, the Board stated, “The evidence in this case does not show sufficient public exposure to the uncommon surname BARSKI from which we can conclude that consumers likely would perceive BARSKI as a surname.” Further it found that when the proposed mark was associated with the identified goods, consumers would likely perceive BARSKI as a coined term, and “particularly as a clever bar-related play on the noun ‘brewski’ (a U.S. slang term for ‘beer’), and that this meaning would be the primary perception of BARSKI to the public.” So, the Board reversed the §2(e)(4)  refusal to register the mark BARSKI.

Is MALIBU SUPPER CLUB Geographically Descriptive?

Tuesday, April 20th, 2021

In a 2021 non-precedential case, the Trademark Trial and Appeal Board affirmed a refusal of registration for the mark MALIBU SUPPER CLUB (SUPPER CLUB disclaimed) for restaurant and bar services and found the mark to be geographically descriptive under §2(e)(2).

To establish that a mark is geographically descriptive, the must satisfy three elements: (1) The primary significance of the term in the mark sought to be registered is the name of a place generally known to the public, (2) The services originate in the place named in the mark and (3) The public would make an association between the goods or services and the place named in the mark by believing that the goods or services originate in that place. See In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448 (Fed. Cir. 2015). Moreover, geographic descriptiveness “‘must be evaluated in relation to the particular goods [or services] for which registration is sought, the context in which [the mark] is being used, and the possible significance that the term would have to the average purchaser of the goods [or services] because of the manner of its use or intended use.’” In re Chamber of Commerce of the U.S.A., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012).

The Board began its analysis by stating the facts that were set forth in the recorded evidence: (1) The term MALIBU in the applied-for mark is a generally known geographic location, (2) The phrase “supper club” is commonly used by restaurants and bars to identify a type of restaurant, (3) Applicant’s services will originate in Malibu and (4) Relevant consumers will immediately make a connection between the place located in the mark, i.e., Malibu, California, and the services offered by Applicant, namely, restaurant and bar services.

However, the Applicant argued that the term MALIBU would not be seen primarily as a place by consumers, but rather as a common reference to luxury or relaxation. The Applicant’s argument relied on the definition a “[glitzy] area that Hollywood movie stars flock to,” which was taken from a “Pop Culture Dictionary” excerpt from The Board negated the argument as the full “Pop Culture Dictionary” passage made it clear that the primary significance of MALIBU was the geographic location, and the passage even began with “Malibu variously refers to a wealthy beach city near Los Angeles….” So, the Board found that consumers would immediately perceive the mark MALIBU SUPPER CLUB, in connection with the Applicants listed services, as designating the location of Applicant’s restaurant.

The Board then looked at the third-party registrations submitted by the Applicant that contained the term MALIBU. It found that the applications were not relevant to the issue at hand as one group of registrations involved goods or services that were unrelated to restaurant or bar services, and the second group of applications contained additional or distinctive wording and the Applicant’s additional wording, SUPPER CLUB, had already been disclaimed. Ultimately the Board stated, “As none of the marks featured in the above-referenced registrations is analogous to the applied-for mark, the third-party registrations submitted by Applicant do not change the result in this case.” See, e.g., In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016).  

In conclusion, the mark MALIBU SUPPER CLUB satisfied each of the three elements under the §2(e)(2) geographically descriptive test. The mark primary significance of the mark, not including the disclaimed terms, MALIBU SUPPER CLUB is the name of a place generally known to the public, the applied-for services originated in Malibu and as the Board previously stated, relevant consumers will immediately make a connection between the place located in the mark, i.e., Malibu, California, and the services offered by Applicant, namely, restaurant and bar services.  So, in light of the information at hand, the Board affirmed the §2(e)(2) refusal of registration.


Sunday, April 18th, 2021

In a 2021 non-precedential case, the Trademark Trial and Appeal Board affirmed the refusal of registration for the mark CERTIFIED BISON, (BISON disclaimed) for “bison meat; prepackaged meals consisting primarily of bison meat and vegetables, all of the aforementioned bison meat being certified,” on the Supplemental Register. The Board found the mark to be generic under §23(c).

Focusing on the term CERTIFIED, as the term BISON was disclaimed, the Board began its analysis of whether or not the addition of the term created comprised a generic mark in relation to the identified goods. The Board made note of a previous Federal Circuit statement pertaining to generic terms. “A term can be generic for a genus of goods or services if the relevant public . . . understands the term to refer to a key aspect of that genus.” Royal Crown Co. v. The Coca-Cola Co., 127 USPQ2d at 1046

In arguing its case for the term CERTIFIED, the Applicant contended that bison meat is not “certified” or otherwise graded by the USDA. It made the case that the goods were “certified” under its own criteria, which were stated on its website. The website explained that the goods met three original criteria: (1) which quality assurances are ensured by Applicant’s certified bison seal, (2) what ranching and animal welfare standards are met under the seal and (3) what food safety inspections, testing and verification are required for the “Certified Bison” seal.

Further, the Applicant maintained that no third-party websites used “certified bison” as a stand-alone term and, that, at most, the term CERTIFIED is descriptive of its identified goods, not generic.

The Board stated, “when the evidence is viewed in its entirety, it is clear that relevant consumers of meat products have been exposed to the concept that meat products may be certified, whether they are certified as organic, grass-fed, raised in a particular manner or genuine.” Turning to the definition of the term “certified,” the dictionary defines it as “genuine, authentic,” which is how it was used in connection with the identified goods. So, the Board found that it was the “applicable genus of goods.” It stated: “[R]elevant consumers perceive the wording CERTIFIED BISON as the subgenus and key aspect of bison meat that meets certain criteria. We cannot ignore what may be plainly obvious — a term may be generic if, by its very definition, it will be primarily understood as a reference to a genus or subgenus of any of the identified goods.”

Turning quickly to the Applicant’s argument regarding the certification of its goods, the Board found that the fact that the certification was not based on U.S. governmental or industry-wide standards, but instead based on its own criteria, or of a purported affiliate i.e., The Bison Counsel, held no merit.

Finally, the Board dismissed the Applicant’s reliance on the case, as it did not correlate to the issues at hand. In the cited case, the Court was determining whether a mark comprised of a generic term and top-level domain name was capable of functioning as a service mark for online hotel reservation services. The issue in the case at hand is whether the combination of the term CERTIFIED with the generic, and disclaimed, term BISON created a mark that was generic of the Applicant’s goods. The Board reasoned that “ is distinguishable because it is technically impossible for there to be more than one ‘,’ whereas here, the record shows several uses of ‘certified bison’ and reveals that certain meat products are commonly identified as ‘certified.’”

In conclusion, the Board affirmed the refusal to register the mark CERTIFIED BISON and found it to be generic under §23(c) and therefore barred from registration on the Supplemental Register. “We conclude that, taken as a whole, the wording CERTIFIED BISON identifies a subgenus and key aspect of bison meat and, therefore, is the generic name of Applicant’s goods.”


Friday, April 9th, 2021

In a 2021 non-precedential case, the Trademark Trial and Appeal Board reversed a §2(d) likelihood of confusion refusal of registration for the mark VALLKREE for “electric bicycles, electric go-karts, electric tricycles and various parts, ‘all of the foregoing not for use with motorcycles and their parts…’” It found that the applied-for mark was not likely to be confused with the registered mark VALKYRIE for “land motor vehicles, namely, motorcycles and structural parts therefor.”

Using the relevant DuPont factors, the Board began its analysis starting with the strength of the marks. “A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).” In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010). Beginning with the inherent strength of the registered mark VALKYRIE, which is defined as “any of the beautiful maidens attendant upon Odin who bring the souls of slain warriors chosen by Odin or Tyr to Valhalla and there wait upon them.”  The Board found the term, in relation to the cited goods, “at most evokes beauty, divinity or fortitude and thus mildly suggests a quality of the recited goods or the experience of riding them.” Therefore, in terms of inherent strength, it found VALKYRIE inherently distinctive in relation to the identified goods. Moreover, as the mark VALKYRIE is on the Principal Register, and did not require a claim of acquired distinctiveness under §2(f), the Board stated that it must presume that the mark was inherently distinctive, with no need to acquire a secondary meaning.

Turning to the first DuPont factor, the Board looked at the marks in their entirety in regard to their similarities and dissimilarities. “It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018).  Comparing the Applicant’s mark VALLKREE to the registered mark VALKYRIE, the Board first pointed out the obvious similarities: (1) Both marks have eight letters, (2) Six of the eight letters are the same and (3) the six identical letters are in the same sequence. So, the marks were found to be visually similar. In terms of the sound of the marks, the Board found that they sounded phonetically similar as the two letters in the marks that are not the same sound similar and are in similar spots. And, while the Board maintained that there is no correct pronunciation of trademarks, it held that “it stands to reason that the two marks will be verbalized in a very similar manner by consumers.” In addition, the Applicant indicated that the term VALLKREE had no meaning in a foreign language, nor was it recognized in the English language. So, the Board concluded that VALLKREE could likely be perceived by consumers as a clever or fanciful take on the known term VALKYRIE. Given these conditions, the first DuPont factor weighed in favor of finding a likelihood of confusion.

Finally, the Board examined the second DuPont factor, the similarity or dissimilarity of the goods, channels of trade and class of consumer. The Examining Attorney argued that the goods cited in the registrations for both VALLKREE and VALKYRIE were related, “because the same entities frequently provide both applicants’ and registrant’s goods and market the goods in the same channels of trade. As the evidence of record shows, it is common for entities to offer both applicant[’s] and registrant’s goods.” The Board found that the Examining Attorney submitted insufficient evidence to establish that the goods in the cited registration were related to the Applicant’s goods or that consumers were likely to believe the Applicant’s goods came from the same source as those in the cited registration. Thus, the second DuPont factor weighed in favor of finding confusion unlikely.

In conclusion, while the Board found that the marks VALKREE and VALKYRIE were highly similar in their appearance, sound and connotation, the Applicant’s goods were not related to those under the cited mark. So, the refusal to register the Applicant’s mark VALLKREE under §2(d) was reversed.

Mere Descriptiveness Case: HOSTIING and HOSTIING GROUP

Friday, April 9th, 2021

In a 2021 non-precedential case, the Trademark Trial and Appeal Board affirmed two §2(e)(1) refusals of registration for the proposed marks HOSTIING and HOSTIING GROUP (GROUP disclaimed) and found them to be merely descriptive of mobile apps for reserving lodging, management of short-term rentals, and booking services for temporary lodging.

Before delving into its analysis, the Board made it clear that the established evidence left no doubt that both HOSTIING and HOSTIING GROUP were merely descriptive because the terms “immediately conve[y] knowledge of a quality, feature, function, or characteristic” of the Applicant’s goods and services. See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012).

Turning first to the Applicant’s use of the term HOSTIING in connection with its cited goods, the Applicant argued that “hosting” has multiple meanings unrelated to lodging rentals or home-sharing, and that the term is “most frequently” associated with website hosting. However, ample evidence showed that third parties used the terms “host” and “hosting” in connection with “offering, reserving and managing temporary lodging, including rental and other home-sharing arrangements.” Further, the Applicant used the terms exact same way, “for its identified rental property management and reservations/booking services, as well as its identified reservation and booking mobile app for short term rentals.” The Board gave no weight to the disclaimed term GROUP and found that HOSTIING GROUP simply conveyed “a group involved in hosting.”

Moving on to the misspelling of the term HOSTIING, the Applicant argued that the misspelling of the term “hosting” was purposeful, and the implementation of the double “ii” could lend itself multiple pronunciations and evoke a distinctive commercial impression. The Board was not impressed. It found that the Applicant’s “minor misspelling” did not change the meaning or look of the term. “In fact, ‘HOSTIING’ with two ‘II’s differs from ‘HOSTING’ with one by only one letter in the middle of the term. It thus looks almost the same and would be pronounced similarly or identically to ‘hosting,’ a term commonly used and with a well-recognized meaning in connection with Applicant’s identified goods and services.” The Board then cited In re Ginc UK Ltd., 90 USPQ2d 1472, 1475 (TTAB 2007), “The generic meaning of ‘togs’ is not overcome by the misspelling of the term as TOGGS in applicant’s mark. A slight misspelling is not sufficient to change a descriptive or generic word into a suggestive word.”

Ultimately, the Board found the Applicant’s marks HOSTIING and HOSTIING GROUP merely descriptive of its applied-for goods and services. It stated, “each component retains its merely descriptive significance in relation to the goods and services, and Applicant does not suggest any alternative commercial impression resulting from the combination of these immediately descriptive terms.” So, the refusals to register the marks under §2(e)(1) were affirmed.

USPTO’s Updated Genericness Guide

Saturday, April 3rd, 2021

In the highly followed 2020 case USPTO v. the Supreme Court rejected the USPTO’s per se rule that a proposed mark that consisted of a generic term and a generic top-level domain, such as .com, .net, .org, .biz or .info, is automatically generic. The Court stated that “[w]hether any given ‘’ term is generic … depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.” Ultimately, the Court ruled that the mark BOOKING.COM was non-generic for travel services and eligible for registration. So, in light of the Supreme Court’s ruling, the Examining Attorney in such a case must evaluate the mark using the standard generic analysis. Further, these terms, known as “” terms, may be registrable on the Principal or Supplemental Register if the Applicant can show sufficient acquired distinctiveness. However, it must be noted that these marks may still be refused as generic marks when appropriate.

In the wake of Supreme Court’s decision, the USPTO released an updated version of Examination Guide 3-20 for Terms after USPTO v. In this new guide, the USPTO stated:

  1. Though the ruling in com stated that marks are neither per se generic or per se non-generic, they are likely to be, at minimum, highly descriptive, under §2(e). This then increases the applicant’s burden of proving that the mark has previously acquired distinctiveness under §2(f).
  2. In supporting a claim under §2(f), an applicant maybe submit the following as evidence: (1) consumer surveys, (2) consumer declarations, (3) relevant and probative evidence displaying the duration, extent and nature of the usage of the proposed mark and (4) any other appropriate evidence that shows the proposed mark distinguishes the goods or services to consumers.
  3. In terms of consumer surveys, any consumer surveys submitted by the applicant to support a §2(f) claim must be accurately designed and interpreted in order to ensure they are reliable representations of the consumers’ perception of the proposed mark.
  4. In terms of a §2(f) claim, if the mark is found to be generic for the proposed goods or services, the Examining Attorney must refuse registration of the mark due to genericness and indicate that a claim of acquired distinctiveness cannot override the refusal.
  5. In regard to the protection of a proposed mark, the updated guidelines warn that this type of mark may be limited to a narrow scope of protection and the Examining Attorney must be wary of this when considering whether or not to cite an existing mark against a later-filed proposed mark with the same terms.
  6. Finally, the updated guide reviews the existing procedure for reviewing generic marks and states that the previous generic analysis test is still appropriate when analyzing generic marks.

In conclusion, though the decision affords marks the possibility of registration, an Applicant must be able to prove acquired distinctiveness, and there is no guarantee that a mark will not be barred from registration under the existing genericness guidelines. In the updated guide, the USPTO reminds Applicants and Examining Attorneys alike that all cases must be considered of their own merit with consideration given to all likelihood-of-confusion factors for which there is evidence of record. Go to for the complete updated Examination Guide 3-20.



Saturday, April 3rd, 2021

In a 2021 non-precedential case, the Trademark Trial and Appeal Board affirmed a §2(d) refusal of registration for the Applicant’s mark QUERCUS COFFEE (COFFEE disclaimed) for coffee and found it to be highly confusable with the already-registered mark QUERCUS for wine.

The Board began its analysis of the marks starting with the first DuPont factor, the similarity or dissimilarity of the marks in their entireties. Though the marks are to be considered as a whole, in this case, the term QUERCUS is the dominant portion of each mark, and in the Applicant’s mark, the term COFFEE is generic and was disclaimed. Since the term COFFEE was disclaimed, the Board found that it had little weight in its overall determination. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004). The Board then looked at the position of the term QUERCUS the mark and found it reinforced its dominance as it was the first element of the mark. Citing Presto Products, Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988), the Board stated, “It is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.” The Board glanced once again at the generic, disclaimed term COFFEE and found that it failed to distinguish the mark. “[I]f the dominant portion of both marks is the same, then confusion may be likely notwithstanding peripheral differences.” See In re Denisi, 225 USPQ 624, 624 (TTAB 1985).

Turning to the second portion of the first DuPont factor, the connotation and commercial impression of the mark, the Board started with the definition of the term QUERCUS. Quercus is defined as “a genus of hardwood often evergreen trees or shrubs (family Fagaceae) that comprise the typical oaks and include sources of nutgall.” The Applicant’s website claims that the coffee is called QUERCUS after the Andean Oak it used to create the rum barrels, in which the Applicant’s coffee is “barrel-aged.” Turning to the already-registered mark, QUERCUS, the Board quickly surmised that wine is occasionally aged in barrels as well. Therefore, consumers of goods under both marks would most likely assume that the term QUERCUS would have the same meaning in referencing the barrels used to age both coffee and wine. “We find that in their entireties, the marks are not only highly similar in appearance and sound due to common term QUERCUS but that they are also highly similar in connotation and convey a substantially similar commercial impression.”  The Board concluded that the first Dupont factor, in both parts, weighed in favor of finding confusion likely.

The Board then looked at additional DuPont factors, the similarity of the goods, channels of trade and classes of consumers. Before beginning its analysis, the Board reiterated that it is not necessary for the goods to be identical or competitive or be sold in the same trade channels to support a finding of likelihood of confusion. What does matter is they are related in some manner or the conditions/activities surrounding the marketing of the goods are similar enough that they may be encountered by similar consumers who would be led to believe that the goods originate from the same source. See Coach Servs. v. Triumph Learning 101 USPQ2d 1713 at 1723. In sum, the issue at hand is not whether the consumers would confuse the coffee with the wine, but whether or not there would be a likelihood of confusion that the coffee and wine came from the same source. The Examining Attorney submitted 20 use-based, third-party registrations showing registration of a mark by a single entity for both wine and coffee. The Board found that the third-party registrations were relevant evidence as they serve as proof that the goods are such that they may originate from one source under one mark. See, e.g., In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001). So, as it was evident that both coffee and wine may be offered under one mark, and potentially found in similar trade channels, the Board found that the Applicant’s coffee and the Registrant’s wine were commercially related for the purpose of finding a likelihood of confusion holding. Therefore, the second DuPont factor favors a finding of likelihood of confusion.

After finding the other relevant DuPont factors neutral, the Board concluded that confusion was likely between the Applicant’s mark QUERCUS COFFEE and the Registrant’s mark QUERCUS. It found that confusion was likely given that the term QUERCUS was the dominant portion of each mark, the connotation and commercial impression of the term QUERCUS was similar enough to confuse consumers, the relatedness of the goods – as to the fact that they may be sold under one mark and can both be aged in barrels and the overlapping trade channels and classes of consumers. Therefore, the Board affirmed the §2(d) refusal for registration of the mark QUERCUS COFFEE.

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