Posts Tagged ‘federal registration’

Merely Descriptive/ Disclaimer Requirement – DANK TANK

Tuesday, May 11th, 2021

In a 2021 non-precedential decision, the Trademark Trial and Appeal Board affirmed a disclaimer requirement for the term DANK in the proposed mark DANK TANK for “Ale; Beer.” The Board found the term to be merely descriptive of the applicant’s goods, and therefore without the disclaimer, the proposed mark was unregistrable under §2(e)(1) and §6(a) of the Trademark Act.

Under §2(e)(1), the determination of descriptiveness of an Applicant’s mark, or portion of one, is based on three elements: (1) The relation of the term to the Applicant’s goods or services, (2) The context in which the mark is being used and (3) the possible significance the mark would have to the average purchaser because of the manner of its use or intended use, not in the abstract or on the basis of guesswork. See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). If the term is found to be merely descriptive of an Applicant’s goods or services, it is considered to be an unregistrable component of the mark and must be disclaimed.

The Applicant attempted three arguments: First, the Applicant argued that neither the term DANK nor the unitary mark DANK TANK conveyed an immediate idea of the characteristics of the goods, but rather was suggestive of “a beer or ale product that does not include cannabis.” The Applicant reasoned that “customers must apply multiple mental steps, first associating the term ‘tank’ with a beverage and then associating the unitary mark ‘DANK TANK’ with a particular beverage (beer, ale) that does not include cannabis, demonstrates the suggestiveness of the mark.” Second, the Applicant argued that DANK TANK was a unitary mark for the goods at issue and therefore, it should not be dissected in order to require a disclaimer for the term DANK. In its third and final argument, the Applicant maintained that the proposed mark DANK TANK was a double entendre, because “the term ‘dank’ is used by some to refer to cannabis.”

Starting with the Applicant’s first argument, the Board turned to the definition of the term “dank” submitted by the Examining Attorney, and a third-party usage of the term, which was in line with the submitted definition. As defined on UrbanDictionary.com, the term “dank” “means or refers to ‘…sticky, juicy, very pungent and of a high level’ and ‘[v]ery hoppy, cloudy IPAs with high alcohol content and flavors with a very funky taste.’” Further, the Examining Attorney submitted an article from the Washington Post website that said, “…you see, cannabis and hops are relatives, and both get their flavors and aromas from compounds called terpenes. That’s why brewers like to describe super-hoppy IPAs the way that they might talk about marijuana: ‘dank,’ ‘resinous,’ ‘sticky.’” Regarding the submitted definition, the Board stated that simply because no traditional dictionary contained a definition for the term “dank,” it did not mean that the term was not merely descriptive. See In re Thomas Collators, Inc., 158 USPQ 297, 298 (TTAB 1968). Ultimately, in terms of the Applicant’s first argument, the Board concluded that the term was indeed merely descriptive of the listed goods.

Turning the Applicant’s second argument, which held that DANK TANK was a unitary mark, the Board maintained that “A mark is considered unitary when it creates a single and distinct commercial impression separate and apart from the meaning of its constituent elements.” See Dena v. Belvedere, 21 USPQ2d at 1052. Further, “If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic, or otherwise, is required.” See In re EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981). When looking at the Applicant’s proposed mark DANK TANK, the Board found that prospective purchasers who viewed the proposed mark would know that DANK was descriptive of the listed goods, and TANK was defined as “a usually large receptacle for holding, transporting, or storing liquids (such as water or fuel).” So, they would easily find that the proposed mark was comprised of two separate terms. Therefore, the Board concluded that the proposed mark DANK TANK was not a unitary mark and could indeed be dissected for the purpose of a required disclaimer.

Finally, the Board briefly looked at the Applicant’s last argument that the proposed mark was a double entendre. As stated in the Trademark Manual of Examining Procedure (TMEP), “For trademark purposes, a ‘double entendre’ is an expression that has a double connotation or significance as applied to the goods or services. … The multiple interpretations that make an expression a ‘double entendre’ must be associations that the public would make fairly readily.” The Applicant’s argument that the term “dank” was occasionally used to refer to cannabis was not strong enough for the Board to find a double entendre. It found that when the term “dank” was combined with “tank,” it maintained its descriptive significance in relation to the Applicant’s listed goods. So, the Board stated, “Therefore, “DANK” would be perceived by purchasers of Applicant’s ale and beer as signifying a quality, feature or characteristic of those goods resulting in no unitary meaning or double entendre imparted by DANK TANK.”

In conclusion, the Board found that the proposed mark DANK TANK was merely descriptive of the Applicant’s listed goods, it did not create a unitary mark and it did not form a double entendre, therefore, the Board affirmed the disclaimer requirement of the term “dank” under §2(e)(1) and §6(a) of the Trademark Act.

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 UrbanDictionary.com 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 Dictionary.com. 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.

Is CERTIFIED BISON Generic?

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 Booking.com 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 “Booking.com is distinguishable because it is technically impossible for there to be more than one ‘booking.com,’ 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.”

USPTO’s Updated Genericness Guide

Saturday, April 3rd, 2021

In the highly followed 2020 case USPTO v. Booking.com 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 ‘generic.com’ 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 “generic.com” 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 Generic.com Terms after USPTO v. Booking.com. In this new guide, the USPTO stated:

  1. Though the ruling in com stated that generic.com 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 generic.com 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 generic.com 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 Booking.com decision affords generic.com 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 USPTO.gov for the complete updated Examination Guide 3-20.

 

QUERCUS COFFEE V. QUERCUS

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.

ESPOLON V. EIDOLON Likelihood of Confusion Case

Tuesday, March 9th, 2021

In a 2020 non-precedential case, the Trademark Trial and Appeal Board dismissed a §2(d) claim of likelihood of confusion for the Applicants’, Grant Toland, Alexander Prenta and Russ Bennett,  mark EIDOLON for “spirits, excluding distilled blue agave liquor and mezcal; wine,” in International Class 33 and “beer” in International Class 32 and found it not likely to be confused with the Opposer’s, Campari Mexico, S.A. de C.V., mark ESPOLON for “alcoholic beverages except beer,” in International Class 33.

The Board began its likelihood of confusion analysis of the marks in regard to the goods in both Int. Class 33 and Int. Class 32 by stating that two key factors of any §2(d) case are the similarities between the marks and the similarities between the goods or services offered under the marks. “The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).

Starting with the first du Pont factor, the similarity or dissimilarity  of the marks in their entireties in terms of appearance, sound, connotation, and commercial impression, the Board looked at the Opposer’s mark ESPOLON and the Applicants’ mark EIDOLON in standard characters and found the following: (1) both marks consist of seven letters, (2) both marks begin with the letter “E” and (3) both marks end with the letters “OLON.” Aside from the first three letters, “ESP” and “EID,” of each mark, it decided that the marks were similar in structure, as both were three syllables, started with the same letter and the last four letters were identical. As to sound, the Board found that while the final syllable was almost identical in sound when spoken, the first two were somewhat different. However, in citing In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984), the Board stated that there was no “correct” pronunciation for a trademark, and that “consumers may not pronounce either mark as intended, even if they recognize it as a known word.” Moving its attention to the meaning of the marks, the Opposer’s mark ESPOLON is a Spanish word that is not available in English-language dictionaries and translates to “spur,” which is defined as a “pointed, rigid growth on the inner leg of a rooster.” The Applicants’ mark EIDOLON is a word of Greek origin that does appear in English-language dictionaries and means, “an image or representation of an idea; an idealized person or thing; a specter, phantom, ghost, or elusive entity.” The Applicants and the Opposer were in agreeance that the “marks are not English word[s] and are therefore not immediately likely to be translated in the minds of English speakers.” The Board was also in agreement and found that there was no certainty as to whether relevant consumers would recognize the terms comprising the marks as words or coined terms. Ultimately, the Board concluded that the marks were “more similar than dissimilar in appearance and sound, somewhat different in connotation and, overall, convey commercial impressions that are more similar than dissimilar.” Therefore, the first du Pont factor favored a finding of likelihood of confusion.

The Board then looked at the second and third du Pont factors, the nature and similarity or dissimilarity of the goods, the likely-to-continue trade channels and the class of purchasers. Turning first to the second du Pont factor, it looked at the Applicants’ applied for goods in Int. Class 33, which were “spirits, excluding distilled blue agave liquor and mezcal; wine,” and found the goods to be legally identical to the Opposer’s listed goods which were “alcoholic beverages except beer,” in the same Class. With regard to the Applicant’s goods listed under Int. Class 32, specifically “beer,” the Board was not concerned that Opposer’s goods explicitly excluded beer. It stated that in order to support a finding of likelihood of confusion, it was not necessary that the goods were identical or even competitive. Further, it said, “the goods need only be ‘related in some manner or … the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Citing Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); See Anheuser-Busch, LLC, 115 USPQ2d at 1827. In its argument, the Opposer submitted evidence showing multiple retailers that offered the distribution and delivery of both beer and liquor, moreover, posts on the Applicants’ discussed the creation of various alcoholic beverages and explained that the same ingredients could be used to make wine, spirits and beer. Further evidence was submitted showing several beverages which included both spirits and beer. However, the Board was not convinced of relatedness of the goods and concluded: “The evidentiary showing in this case falls somewhat short of establishing that consumers are likely to believe that beer and other alcoholic beverages emanate from a common source.” In a similar manner, the Board found the Opposer failed to establish that the Applicants’ Class 32 goods were similar to its applied-for goods, given that both parties’ Class 33 goods were legally identical. Briefly looking at the third du Pont factor, the Board concluded that since the parties Class 33 goods were legally identical, it was fair to presume that the channels of trade would be the same as well. “Where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same.” See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968).  Therefore, in terms of the Int. Class 33 goods, the above du Pont factors supported a finding of likelihood of confusion yet did not support a finding of likelihood of confusion for the Int. Class 32 goods.

Finally, the Board look at the strength of the Opposer’s mark and found it to be arbitrary and inherently distinctive. Looking at the fifth du Pont factor, the commercial strength of the mark, the Board found that the Opposer had found, “some commercial success and media recognition for its goods under the ESPOLON mark.” It concluded that ESPOLON was a strong mark for alcoholic beverages and therefore was entitled to a broad scope of protection on the spectrum of “very strong to very weak.” In citing Joseph Phelps, 122 USPQ2d at 1734. So, the fifth du Pont factor favored a finding of likelihood of confusion.

The Board then came to its decision in regard to the likelihood of confusion of the Opposer’s mark ESPOLON and the Applicants’ mark EIDOLON for the goods in both Int. Class 33 and Int. Class 32. Starting with Class 33, it concluded that given the similarity of the two marks, and the goods’ presumed identical trade channels and relevant purchasers, the Applicants’ applied-for mark, in connection with the Applicants’ recited Class 33 goods, was likely to cause confusion with the Opposer’s previously used and registered mark ESPOLON, which was entitled to a broad scope of protection, given its inherent and commercial strength. So, the Board sustained the §2(d) opposition against the Applicants’ registration in regard to its’ goods in Int. Class 33. Quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992) the Board said, “[w]hen marks would appear on virtually identical … [goods or] services, the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines.”

However, since the Board had previously stated that the evidence fell short in showing a relation between the Opposer’s goods and the Applicants’ goods under Int. Class 32, it concluded that “consumers are not likely to experience confusion as to the source of those goods, notwithstanding the similarities between the marks.” See, e.g., Kellog Co. v. Pack’ em Enters., Inc., 14 USPQ2d 1545 (TTAB 1990). Therefore, the Board dismissed the opposition of likelihood of confusion under §2(d) for the Applicants’ goods in Int. Class 32.

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.

Examining The Dupont Factors on a Case-by-Case Basis

Sunday, April 5th, 2020

Under §2(d) of the Lanham Act, marks that are confusingly similar may not be registered with the USPTO.  When it comes to determining likelihood of confusion, the examining attorney considers the Dupont Factors. Often, the first two: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The relatedness of the goods or services as described in the application and registration(s), hold the most weight. However, there is no precedent that states that the first two are the most important. All of the factors must be considered equally in light of the evidence provided in each case. In the case below, a decision made by the Trademark Trial and Appeal Board was vacated and remanded by the U.S. Court of Appeals for the Federal Circuit, because the Board failed to consider all of the factors for which there was evidence.

In 2017, the Trademark Trial and Appeal Board affirmed the §2(d) refusal of the mark GUILD MORTAGE COMPANY for “mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans.” (MORTGAGE COMPANY was disclaimed) Finding it confusingly similar with the registered mark GUILD INVESTMENT MANAGEMENT for “investment advisory services.” (INVESTMENT MANAGEMENT was disclaimed) In light of this, the Applicant appealed to the U.S. Court of Appeals for the Federal Circuit (CAFC).  In 2019, The CAFC issued a decision that vacated and remanded the TTAB’s decision “for further proceedings consistent the [its] opinion.” The CAFC stated that the Board failed to address the applicant’s arguments and evidence related to the eighth Dupont Factor, which examines the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

In a 2020 precedential opinion, on remand from the CAFC, the Board issued a final decision in regard to the mark GUILD MORTGAGE COMPANY.  As instructed, the Board reexamined the case giving more consideration to the eighth Dupont Factor. Starting with the first factor, the Board found that the dominant term in both marks was “guild.” Therefore, it ultimately found that the similarities between the marks, in accordance with “guild(‘s)” dictionary definition and overall commercial impression, outweighed the differences in sight and sound. The Board found that the first Dupont Factor weighed in favor of a finding of likelihood of confusion. As to the second factor, which examines the parties’ involved services, submissions of third-party registrations covering both mortgage banking and investment advisory services were enough to convince the Board that the services are related. Moreover, in accordance with the third factor, the Board found that the same consumers who seek mortgage banking services may also seek investment advisory services. Therefore, the channels of trade and classes of consumers are likely to overlap. Moving to the fourth factor, which examines the degree of purchaser care, the Board made its determination in light of Stone Lion Capital, 110 USPQ2d at 1163, which states that the decision must be based on the least sophisticated consumer. Regardless, the Board found that “consumers may exercise a certain degree of care in investing money, if not perhaps in seeking a mortgage loan for which they simply wish to get funded.” In sum, the fourth factor weighed mildly against finding a likely confusion.

Finally, the Board turned to examine the factor for which the case was remanded, the eighth factor. This factor looks at the length of time during and conditions under which there has been concurrent use without evidence of actual confusion. The eighth Dupont Factor requires consideration of the actual market condition, as opposed to the other factors in this case that require analysis based on the application and cited registration and do not consider evidence of how the Applicant and Registrant actually rendered their services in the marketplace. Considering the actual market condition, both services were based in Southern California and operated there for approximately 40 years with no evidence of actual confusion. Not only did both parties conduct businesses in the same state, they ultimately expanded into other states as well. However, there was no evidence to indicate any specific geographical areas of overlap between the consumer markets for the different services. Ultimately, though the parties both conducted business in California, and potentially in some of the same states nationwide, there was not enough evidence to show that “in the actual marketplace, the same consumers have been exposed to both marks for the respective services…” In conclusion, the Board deemed the eighth Dupont Factor neutral and after balancing the other relevant factors, found confusion likely and affirmed the refusal to register under §2(d) of the Lanham Act.

Though the Board ultimately ended up at the same conclusion as it did in 2017, it may have turned out differently if both parties had been heard from. In an ex parte context, there was not an opportunity for the Board to hear from the Registrant in regard to whether or not it was aware of any reported instances of confusion. Since the Board was only able to get “half of the story,” it gave limited probative value to the evidence provided for the eighth factor. This case demonstrates that the weight of each factor varies on a case-by-case basis.

 

Registration Refusals for Geographically Deceptive Marks

Saturday, March 7th, 2020

The previous post discussed marks that are geographically deceptive. Marks that are primarily geographically deceptively misdescriptive under §2(e)(3) and those that are deceptive under §2(a) are the same. Therefore, marks that are primarily geographically deceptively misdescriptive of goods or services are considered deceptive and deemed unregistrable with the USPTO under §2(e)(3) of the Lanham Act.  There is a three-prong inquiry to determine whether a mark is primarily geographically deceptively misdescriptive in connection with the goods for which it is being used: (1) The primary significance of the mark is a generally known geographic location; (2) The goods do not come from the place named in the mark, but the relevant public would be likely to believe that the goods originate there; and (3) The misrepresentation is a material factor in the purchaser’s decision to buy the goods in question.  Following is an example of a geographical deceptiveness refusal which was affirmed by the Trademark Trial and Appeal Board.

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the geographically deceptive mark EMPORIO ITALIA, for “bedsheets; pillowcases; comforters; bedspreads,” finding the mark to be primarily geographically deceptively misdescriptive. The applicant made two non-compelling arguments that the Board quickly dismissed. The applicant first argued that the mark merely suggested goods of high quality or style, and second, due to the high price of Italian bedding, only a select number of consumers would make the connection between Italy and bedding.  Before applying the three-prong analysis to determine whether or not a mark is primarily geographically deceptively misdescriptive, and therefore unregistrable under §2(e)(3) of the Lanham Act, the Board determined that the doctrine of foreign equivalents applied in this case, where the mark, EMPORIO ITALY translated into EMPORIUM ITALY. The Board found that not only would Italian-speakers stop and translate the mark, but also, “non-Italian speaking American consumers would readily perceive the mark as ‘Emporium Italy’ because the English translation is substantially similar in appearance and sound to Applicant’s mark EMPORIO ITALY.”

Starting with the first prong of the inquiry the Board found that, when considering the mark in its entirety, the primary significance of EMPORIO ITALIA is the generally known geographic location, Italy.  The examining attorney provided internet and gazetteer evidence showing that bedding and textiles are among Italy’s main exports. In submitting such evidence, he met the initial burden of establishing a goods/place association between the applicant’s goods and the generally known location, Italy. The applicant argued that his mark was “suggestive, arbitrary, or fanciful, such as when a geographic mark may indicate that a product is stylish or of high quality, i.e. HYDE PARK or NANTUCKET for clothing, and FIFTH AVENUE for a car.” The Board did not accept the reasoning

The second prong of the inquiry considers whether the relevant public would be likely to believe that the goods originate from the location identified in the mark, though they do not. This prong was satisfied with the applicant’s statement that the goods will originate from India. “The goods are not and will not be manufactured, packaged, shipped from, sold in or have any other connection with the geographic location named in the mark.”  Therefore, given this statement and the satisfaction of the first prong, it is likely that relevant consumers would believe the goods originated from the place identified in the mark. The third and final prong of the test, which questions the materiality of the misrepresentation, was satisfied as well. The Board said, “We infer from this evidence that a substantial portion of customers in the market for ‘bedsheets; pillowcases; comforters; bedspreads’ will be motivated to purchase Applicant’s goods because of the mistaken belief that the goods originate in Italy.”  In light of the evidence provided, the Board affirmed the refusal for registration under §2(e)(3) of the Lanham Act.

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