In a 2021 precedential case, the Trademark Trial and Appeal Board affirmed two §2(e)(1) registration refusals for the mark CLEAR finding it deceptively misdescriptive for footwear, lingerie, and other clothing items, and for handbags, purses, wallets and related items, all “excluding transparent goods.”

Under §2(e)(1) a mark is considered deceptively misdescriptive if: (1) The mark misdescribes a quality, feature, function or characteristic of the goods or services with which it is used, and (2) consumers would be likely to believe the misrepresentation. “[T]he reasonably prudent consumer test is applied in assessing whether consumers are likely to believe the misrepresentation.” See In re Hinton, 116 USPQ2d at 1052 (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)).

The Board began its analysis of the proposed mark by determining whether or not the mark was misdescriptive of the goods with which it was used. After reviewing the evidence submitted by the Examining Attorney, which included the dictionary definition of the term “clear” and third-party website submissions, it considered Applicant’s argument that “it is only seeking to register it for non-transparent footwear.” (Emphasis added.) Further, the Applicant argued that its proposed mark did not describe a plausible feature of its goods because the goods recited in the application did not include transparent clothing, footwear or accessories. However, the Board found that argument ineffective and stated, “We cannot assume that consumers of Applicant’s goods will be aware that its identification is so restricted, and the restriction is not controlling of public perception.” See In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187-88 (TTAB 2018).  The Board was similarly unpersuaded by Applicant’s argument that the term “clear” had other meanings when used in connection with its goods.  Accordingly, the Board found the first prong of the test was satisfied and concluded that the Applicant “cannot avoid a finding of deceptive misdescriptiveness by excluding from its identification the very characteristic that its mark is misdescribing.” Cf. In re ALP of South Beach, Inc., 79 USPQ2d 1009, 1010 (TTAB 2006).

The Board then considered the second prong of the test: whether or not consumers were likely to believe the misrepresentation. The evidence submitted by the Examining Attorney showed that Applicant’s goods could indeed be transparent, “clear” or include “clear” elements. Moreover, the record indicated that “clear shoes were one of the big breakout trends on the spring/summer runways.” The Board found that as a result of the evidence submitted, consumers would likely believe that the items under the proposed mark CLEAR were clear or transparent even when they were not. The Applicant contended that consumers were unlikely to believe the misrepresentation because they would be “visually inspecting” the items prior to the purchase. This argument did not sway the Board and it found that just because consumers would understand that the goods were not made of, and/or did not contain, clear or transparent elements it did not negate their understanding of the misdescription prior to visual inspection. The Board stated, “If Applicant’s goods were to be promoted by word-of-mouth or on social media or in print (e.g., in fashion blogs, magazine articles, or even Applicant’s future advertising) without an image of the goods, a reasonable consumer seeking what the record shows to be a fashion trend would believe that Applicant’s goods, promoted under the proposed CLEAR mark, would feature transparent or clear attributes.” See, e.g., In re Woodward & Lothrop Inc., 4 USPQ2d 1412, 1414 (TTAB 1987). So, the Board found that the second prong of the test was satisfied.

In conclusion, the Board found that both prongs of the deceptively misdescriptive test were satisfied, and therefore affirmed both of the §2(e)(1) refusals of registration for the Applicant’s proposed mark CLEAR.

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.

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.”

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.

In a 2020 nonprecedential case, the Trademark Trial and Appeal Board reversed a §2(e)(1) mere descriptiveness registration refusal for ONE TEAM CARE, for “providing temporary use of online non-downloadable cloud computing software for coordinating the provision of healthcare among caregivers and patients.”

The Applicant, TriarQ Health, LLC, argued that its proposed mark was not merely, descriptive, because it did not describe a feature or attribute of the identified goods or services, instead, it was suggestive of a function, feature or characteristic of its services. In support of its argument, the Applicant identified nine third-party registrations for the marks “ONE TEAM” and “ONE TEAM” formative marks issued for separate entities and different goods and services. Three of which related closely to the Applicant’s services: (1) “ONE TEAM. ONE FOCUS. LIFE,” for “medical diagnosis and treatment of cancer,” (2) “ONE CENTER. ONE FOCUS. ONE TEAM.” for “medical services, namely, medical imaging, surgery and treatment services” and (3) “ONETEAM.BUILD,” for “providing temporary use of on-line, non-downloadable software for use…in the field of residential and commercial design and construction,” and related activities. However, the Examining Attorney argued that the Applicant’s mark was simply a “combination of descriptive terms that immediately conveys a feature of applicant’s services, namely, software services that coordinate a “one team” method or strategy of care for patients.”

In beginning its analysis of the mark, the Board stated, that it’s not just about whether a consumer would be able to inference the nature of the goods or services from the mark alone, but, “rather, we evaluate whether someone who knows what the goods or services are will understand the mark to convey information about them.” See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).

The Board then reviewed the evidence submitted by the Examining Attorney starting with the seven submitted screenshots of different websites from healthcare providers and medical trade journals that used the term “one team,” in the context of various aspects of health care. The Board ultimately decided that the evidence showed only limited use of the term “one team” in connection with various services related to providing a “multidisciplinary approach to medical and health-related services and training.” In regard to this particular evidence, the Board found that the Applicant’s services may be used, among other things, to coordinate healthcare services among a “team” of caregivers to patients. The Board stated, “‘One team’ is a nebulous or, at worst, suggestive term in all of the articles in which it appears.”

The Board then moved to the dictionary definitions submitted by the Examining Attorney of the words comprising the mark. (1) ONE – “being a single unit or thing; constituting a unified entity of two or more components,” (2) TEAM – “a number of persons associated together in work or activity” and (3) CARE – “charge; supervision (under a doctor’s care); to give care (care for the sick.)” It found that the definitions provided fell short of demonstrating that ONE TEAM was merely descriptive of a function or characteristic of the Applicant’s software services for in the field of healthcare, to a degree of particularity. “To be merely descriptive, a term must forthwith convey an immediate idea of a quality, feature, function, or characteristic of the relevant goods or services with a ‘degree of particularity.’” See The Goodyear Tire & Rubber Co. v. Cont’l Gen. Tire, Inc., 70 USPQ2d 1067, 1069 (TTAB 2008) (internal citations omitted.)

In regard to all of the submitted evidence, the Board found that it was impossible to determine whether or not the use of “one team” or “one team care” merely represented the use of the term in the particular context, or if it indicated the use of the term to describe a particular aspect of the Applicant’s medical software services. In terms of the Applicant’s software services could be used, among other things, to facilitate a “one-team” approach to medical care, the Board found that “imagination or additional thought [would be] required to reach that conclusion.” See, e.g., In re George Weston Ltd., 228 USPQ 57 (TTAB 1985).

In conclusion, the Board ultimately decided that the Applicant’s mark ONE TEAM CARE was not merely descriptive under §2(e)(1) and reversed the refusal to register.

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.

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

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

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

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

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

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

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

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

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

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

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.

Under Section 2(a) of the Lanham Act, there are certain types of marks that may never be registered with the USPTO. Last week, one of the posts discussed deceptive marks, under Section 2(a), which is one type of mark that may not be registered. Under 15 U.S.C. §1052(a) other marks that may not be registered include those which consist or are comprised of “immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods …”

The Disparagement Clause was brought into question in the case Matal v. Tam, 137 S. Ct. 1744 (2017).  In that case, the U.S. Supreme Court held that the Disparagement Clause violates the First Amendment’s Freedom of Speech Clause and that it is no longer a valid ground on which to refuse registration or cancel a registration.

In 2015, Simon Tam applied to register his trademark THE SLANTS for the name of his Asian-American band. The registration was denied under §2(a) of the Lanham Act because it was considered disparaging to those of Asian descent. When determining whether or not a mark is potentially disparaging, an examining attorney conducts a two-prong test, (1) The likely meaning of the mark at issue and, “if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols,” the examining attorney will move to the second part of the test, (2) “Whether that meaning may be disparaging to a substantial composite of the referenced group …” If the examiner finds that a “substantial composite, although not necessarily a majority, of the referenced group would find the proposed mark…to be disparaging in the context of contemporary attitudes,” a prima facie case for disparagement is created. At that point, it is the applicant’s burden to prove that the trademark is not disparaging.

Tam argued that he was using the mark to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity. Regardless, his mark was denied, and he appealed to the Trademark Trial and Appeal Board that affirmed the refusal for registration. Ultimately, Tam appealed to the Supreme Court that concluded that the Disparagement Clause was unconstitutional. The majority found that the clause: “engages in viewpoint-based discrimination, regulates the expressive component of trademarks, and consequently cannot be treated as commercial speech and that the clause is subject to and cannot satisfy strict scrutiny.”(Citation omitted) Justice Alito, who wrote the majority opinion, said: “We have said time and again that ‘the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.’”

In Matal the central issue was how the public would perceive the potentially offensive mark. While Tam’s goal was to “reclaim” the disparaging phrase, the USPTO originally denied the trademark registration because it was worried that instead of helping dissolve the negative connotation of the term “slant,” it would have the opposite effect for those who identified as Asian American. Something of note that this case has brought to light, is the portion of the two-prong disparagement test which says, “…to be disparaging in the context of contemporary attitudes.” In 2017, 71 years after the Disparagement Clause was written, contemporary attitudes may be shifting and by finding the Disparagement provision a violation of the First Amendment’s Freedom of Speech Clause, it can potentially help in contributing to a more liberal marketplace of ideas.

One of the most immediate and potent effects of the Supreme Court’s official ban on the Disparagement Clause under §2(a) of the Lanham Act, was in regard to the Washington Redskins football team. The Washington Redskins, founded in 1932, was originally named the Boston Braves until they relocated to Washington, D.C. and took on their current moniker in 1933. Between 1967 and 1990, the USPTO registered six trademarks affiliated with the Washington Redskins, each trademark containing the term REDSKIN. Since 1992, the registrations, the previous team owners and current owner, Dan Snyder, have been in constant legal battle with Native American groups who’ve opposed the name and contended that it is in fact disparaging. In 2015, a federal judge canceled the trademark registrations and revoked their trademark protections. However, in light of the 2017 Matal decision, in 2018,  the U.S. Court of Appeals for the Fourth Circuit vacated the decisions that had previously canceled the Washington NFL team’s federal trademark registrations.

In wake of the Matal decision, the portions of the Trademark Manual of Examining Procedure (TMEP) §1203, that specifically apply to the disparagement provision no longer apply. The USPTO Examination Guide 01-17  provides examination guidance after Matal v. Tam for the Disparagement Clause and was issued on June 26, 2017. The guide states: “Applicants that received an advisory refusal under the disparagement provision and were suspended pursuant to Examination Guide 01-16 will be removed from suspension and examined for any other requirements or refusals. If an application was previously abandoned after being refused registration under the disparagement provision, and is beyond the deadline for filing a petition to revive, a new application may be filed.”

After the official barring of the Disparagement Clause, another trademark case, Iancu v. Brunetti, 139 S. Ct. 2294 (2019), was heard before the Supreme Court. The trademark, FUCT,  was previously deemed unregistrable under §2(a) which bars registration of marks that consist of or comprise immoral or scandalous matter.   On June 24, 2019, the Supreme Court held that the Scandalous Clause violates the First Amendment of the Constitution because it “impermissibly restricts free speech.” Much like the Disparagement Clause, the Supreme Court held that the scandalous provision was unconstitutional under the First Amendment’s Freedom of Speech Clause because it was facially viewpoint-based. On July 3, 2019, the USPTO issued Examination Guide 2-19 which provides guidance for §2(a)’s Scandalous Marks Provision after Iancu v. Brunetti. The Examination Guide states: “that a mark may consist of or comprise “immoral” or “scandalous” matter is no longer a valid ground on which to refuse registration or cancel a registration.”  As stated by the Harvard Law Review, “If other provisions are invalidated due to their content-based nature, there will be little left for the government to use as a basis for restricting trademarks.” 133 Harv. L. Rev. 292 (2019)

The last post covered deceptive marks, which are marks that are unregistrable under §2(a) of the Lanham Act. The Trademark Manual of Examining Procedure specifies that “Neither a disclaimer of the deceptive matter nor a claim that is has acquired distinctiveness under §2(f) can obviate a refusal under §2(a) on the ground that the mark consists of or comprises deceptive matter.”  A deceptive mark can be a single deceptive term, a deceptive term within a composite mark which also features non-deceptive elements or a term or portion of a term that suggests a deceptive quality, characteristic, function, composition or use. Deceptive marks can also be marks that falsely portray the material content of a product and marks that are geographically misdescriptive.

As discussed in the post on deceptive marks, the Court of Appeals for the Federal Circuit created a three-prong test to determine whether or not a mark may be deceptive and therefore unregistrable under §2(a) of the Act; see In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). If a mark meets the first two prongs of the test, it may be considered deceptively misdescriptive under §2(e)(1) of the Lanham Act. If a mark satisfies all three prongs of the test, it may be considered deceptive. If an examining attorney has found a mark to be deceptive, and therefore unregistrable with the USPTO, an applicant may go before the Trademark Trial and Appeal Board on appeal. The Trademark Trial and Appeal Board will either affirm the refusal for registration or reverse the decision in favor of the applicant. Below are two recent Trademark Trial and Appeal Board decisions affirming refusal for registration under §2(a) of the Lanham Act:

In a 2019 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the deceptive mark NU DOWN, for pillows and bedding “made in whole or substantial part of synthetic down or down alternatives.” For the first element of the three-prong test, the applicant did not argue that the term DOWN was descriptive and had disclaimed it previously. However, the applicant argued that the mark NU DOWN was not misdescriptive because the term NU could imply something aside from natural down. The Board found that the term “down,” in the dictionary presumptively meant natural down, and if not precisely natural down, something comparable. It was found that when used in commerce, relevant purchasers believed the term “down” to mean natural down unless otherwise stated.  Turning its attention to the term NU, the Board held that even if it was understood as the phonetic version of the term “new,” it could simultaneously mean “an updated or modern version” of natural down instead of new and substitute material. The Board found that the applicant’s mark satisfied the first prong of the test and was misdescriptive of the identified goods. “The addition of the word ‘NU’ to the word ‘DOWN’ would not inform purchasers with any clarity that Applicant’s goods are not filled with down.” Regarding the second element of the test, relating to whether or not prospective purchasers are likely to believe that the misdescription actually describes the goods, the applicant admitted that the term “down” is often used in the particular industry in reference to products containing natural down. In satisfying the second prong of the test, the Board concluded that although the applicant’s packaging explained the products were down alternative, there was no guarantee that consumers would read the provided explanation. Furthermore, those purchasing the goods online may not read the fine print labeling required by the federal Textile and Wool Acts. “The mark standing alone must pass muster and this it fails to do.” Finally, the third element of the test, in regard to whether or not the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase, the Board found that a significant number of relevant consumers would likely be interested in knowing what material was used in the applicant’s goods for multiple reasons including thinness or bulkiness of the fill, allergy issues, animal cruelty issues and monetary factors. Because of this, the Board concluded that the misdescription in the applicant’s mark would likely affect the purchasing decisions of a significant portion of relevant consumers. In summation, the Board affirmed the Examining Attorney’s refusal of registration for deceptiveness under §2(a) of the Lanham Act.

In a 2018 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the deceptive mark P6 CHROME, for “dietary and nutritional supplements that do not contain chromium.” The Board found the mark to be deceptive because it was a misdescription of the identified goods which could lead consumers to believe that the supplements contained chromium and would, in turn, affect a significant portion of relevant consumers. In an effort to rebut this, the applicant claimed that the term “chrome” simply referred to the color of the packaging. The Board then turned to the three-prong test created by the Court of Appeals for the Federal Circuit to determine whether or not a mark is deceptive. To satisfy the first element of the test, the Board must decide whether or not the term misdescribes the character, quality, function, composition or use of goods. In this instance, both the applicant and the Examining Attorney submitted dictionary definitions that established that the term “chrome” meant chromium. It had been previously established that the applicant’s goods did not contain chromium, therefore the term was misdescriptive. The applicant argued that the term “chrome” had more than one meaning, but the Board held that alternative meanings held no merit in the context of the goods for which the mark was used. The record supplied evidence showing that there were already many dietary and nutritional supplements containing chromium sold under marks that used the term “CHROME.” Though the applicant argued that term “chrome” was in regard to the color of the packaging, the Board dismissed it saying that not all potential purchasers would see the packaging, only the mark and would likely perceive the term “CHROME” to be a description of an ingredient in the identified goods. The second prong, which asks if consumers are likely to believe the misdescription, was satisfied since the applicant’s goods did not contain chromium, however, it was previously established that many dietary and nutritional supplements do contain chromium. The Board went on to explain that not only average customers but “sophisticated purchasers” as well would be likely to believe the misdescription. “Sophisticated” customers would likely be familiar with the health benefits of chromium and be aware of other dietary and nutritional supplements that contained chromium and were sold under marks containing the term “CHROME.” The third prong of the test, regarding whether or not the misdescription would affect the purchasing decisions of a significant portion of relevant consumers, was satisfied as well. The Board found that though not all consumers would be aware of the potential health benefits of chromium, consumers who frequently purchased supplements “would find Applicant’s supplements more desirable because of the perceived representation that they contain chromium.” In this manner, all three prongs of the test were satisfied, and the Board affirmed the refusal of registration for deceptiveness under §2(a) of the Lanham Act.

Deceptive marks may not be registered with the USPTO under any circumstance. Unlike marks that have been deemed deceptively misdescriptive under §2(e)(1) of the Lanham Act, marks found to be deceptive under §2(a) cannot be federally registered even with a claim of acquired distinctiveness under §2(f) of the Lanham Act; nor is it enough for the applicant to disclaim the deceptive material.