Posts Tagged ‘Trademark Trial and Appeal Board’

Likelihood of Confusion Case – TRUST THE PROCESS

Sunday, June 27th, 2021

In a 2021 precedential case, the Trademark Trial and Appeal Board affirmed a §2(d) refusal to register for the mark TRUST THE PROCESS for shoes and found it likely to cause confusion with the identical mark for shirts and sweatshirts.

The Board began its analysis of the 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. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018).

The Applicant, Joel Embiid, conceded that the marks were identical in appearance and sound but argued that confusion would be unlikely because his mark identifies him, and the Registrant’s, Marcus Lemonis, mark identifies him. He further reasoned that his mark would have a distinct connotation because he is a “famous NBA player, who’s known for his tagline ‘TRUST THE PROCESS’ and his nickname ‘THE PROCESS.’” Because of this, the Applicant argued that his mark would be synonymous with him and that his mark conveyed a commercial impression and connotation of “overcoming difficulties through perseverance and fortitude,” which was based on his own character. Finally, the Applicant argued that the marks were different since the Registrant’s goods (shirts and sweatshirts) were promotional items that supported the Registrant’s business advice and TV show, which had no connection to basketball or the Applicant. In citing In re Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987) & In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984); and In re Sydel Lingerie Co., 197 USPQ 629 (TTAB 1977)) the Applicant stated the marks differ in meaning because they “create sufficiently different commercial impressions when applied to the respective parties’ goods or services such that there is no possibility for confusion despite overlaps in the marks.”

After reviewing the evidence submitted, the Board found that even if both parties were known in their different professions as TRUST THE PROCESS, the evidence was insufficient to show that consumers would associate the mark TRUST THE PROCESS solely with the Applicant or Registrant for their respective goods or that they would be able to differentiate the source of the goods sold under the two marks based on their respective owners. Further, the Board found that there was no reason to assume that the mark TRUST THE PROCESS would have one meaning in connection with the Applicant’s goods (shoes) and a different or secondary meaning in connection with the Registrant’s goods (shirts and sweatshirts) given their similar nature. In that fashion, the Board found the marks to be identical in appearance, sound, connotation and commercial impression, and stated, “The first DuPont factor weighs heavily in favor of a likelihood of confusion.” i.am.symbolic, 123 USPQ2d at 1748 (quoting In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003).

The Board then moved onto the second DuPont factor, which pertains to the similarity or dissimilarity of the goods and examined the relatedness of the goods at hand. “[B]ecause the marks are identical, the degree of similarity between the goods . . . required for confusion to be likely declines.” DeVivo v. Ortiz, 2020 USPQ2d 10153, at *11 (TTAB 2020). The Applicant first argued that the “goods are not even complementary or companion items that would be sold together.” Second, he argued that given both his fame and the Registrant’s fame, it would not be likely for consumers to purchase their respective goods without being aware of the source. “Therefore, consumers will be very familiar with the source of the goods prior to purchase, as they are buying the goods to show their support [of] Marcus Lemonis or Joel Embiid as the source of the respective goods, ensuring confusion will not result.”  The Board stated “we must presume that Applicant’s “shoes” and Registrant’s “shirts and sweat shirts” include “all goods of the type identified, without limitation as to their nature or price,” Sock It to Me, 2020 USPQ2d 10611, at *8. This presumption was made since neither the Applicant’s nor Registrant’s registration identified any limitations regarding the nature of the identified goods, their trade channels or consumer classes. The Board went on to say that if the parties had tailored their applications, it would have made a significant difference in the analysis. So, because of this, the Board found that “those ubiquitous, everyday products ‘are offered to all the normal potential consumers for those goods, which would include not only’ Applicant’s fans and fans of Registrant’s television show, ‘but all members of the general public.’” New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *16 (TTAB 2020). In conclusion, the Board stated, “The record as a whole is more than sufficient to convince us that ‘shoes,’ and ‘shirts and sweat shirts,’ are related, particularly given the reduced degree of similarity between the goods that is necessary for confusion to be likely arising from the fact that they are sold under identical marks,” and found that the second DuPont factor weighed in favor of finding confusion likely.

Finally, the Board turned its attention to the third DuPont factor, which looks at the channels of trade and classes of consumers. It found that given the nature of the goods, which were “marketed to the general population,” they were considered general consumer goods. Moreover, the record showed that both shoes and shirts were sold together on clothing websites and have been registered under a single mark by multiple apparel businesses. So, the Board found that both elements “plainly overlap[ped],” and found that the third DuPont factor supported a finding of likelihood of confusion.

In conclusion, the Board affirmed the §2(d) refusal to register based on the first three DuPont factors. It stated that based on the record as a whole, the Applicant’s mark TRUST THE PROCESS so resembled the Registrant’s mark TRUST THE PROCESS that when used in connection with their respective identified goods it would be likely for the marks to “cause confusion, to cause mistake or to deceive.”

Deceptively Misdescriptive Case – CLEAR

Thursday, May 6th, 2021

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.

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 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.”

Is ONE TEAM CARE Merely Descriptive?

Tuesday, March 2nd, 2021

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.

 

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.

 

Another Case Involving Likelihood of Confusion

Saturday, March 28th, 2020

In keeping with the likelihood of confusion theme, this post will detail another case where a mark was refused under §2(d) of the Lanham Act. Like the previous case, the examining attorney along with the Trademark Trial and Appeal Board both used the Dupont Factors to determine whether the marks were confusingly similar.

In a 2020 non-precedential decision, the Trademark Trial and Appeal Board affirmed the refusal for registration for the mark JUSTICE NETWORK. The Board agreed that the mark was confusingly similar to JUSTICE CENTRAL. Both parties used their marks for various forms of television programming. The Board started with the second Dupont Factor which focuses on the similarity of services provided. While both parties used their marks for various forms of programs, the opposer, and owner of the mark JUSTICE CENTRAL, used the mark for a narrower scope of programming consisting of “programs in the field of law and courtroom legal proceedings.” However, the applicant, and owner of JUSTICE NETWORK, did not specify the range of programs offered, therefore there was overlap in the parties’ services and the Board found the services to be “legally identical.” Next, the Board moved onto the first Dupont Factor which is the similarity of the marks. Ultimately, the Board found the two marks, JUSTICE CENTRAL and JUSTICE NETWORK, similar and therefore the first Dupont Factor weighed in favor of finding a likelihood of confusion. In examining the first factor, the Board started with the term justice, which is the dominant word in both marks. The Board stated, “[c]onsumers in general are inclined to focus on the first word or portion in a trademark.” Equally important, the Board concluded that the term network was highly descriptive, if not generic and therefore “has less source-identifying significance and is clearly subordinate.” In finding this, the Board discredited any differences between the two terms “network” and “central.” The opposer, and owner of the mark, JUSTICE CENTRAL, argued the seventh, eighth and ninth Dupont Factors as well. The seventh being the fame of the prior mark, the eighth being the nature and extent of any actual confusion and the ninth being concurrent use. In regard to the seventh factor, the Board found very little compelling evidence from either side and deemed both the eighth and ninth factors neutral. Turning back to the first two factors, the Board found that the marks gave the “same overall impression” and the parties’ offered “overlapping services offered in the same trade channels to the same classes of customers.” In summation, the Board sustained the opposition and affirmed the refusal for registration.

Likelihood of Confusion Case

Sunday, March 15th, 2020

In the post on likelihood of confusion, the Dupont Factors were discussed. Though there are nine factors, not all of them are relevant or applicable in every case. The first two factors are the most important across the board. After taking them into consideration, an examining attorney will look to the remaining factors in order to support a finding of likelihood of confusion. If there is enough evidence to support such a finding, a mark may be deemed unregistrable with the USPTO under §2(d) of the Lanham Act. The following is a case that was taken before the Trademark Trial and Appeal Board on the grounds of likelihood of confusion.

In a 2020 non-precedential decision, the Trademark Trial and Appeal Board affirmed the refusal for registration for the mark HARDROK EQUIPMENT INC. for “distributorship services in the field of industrial machinery and parts therefor in the mineral and aggregate industries” (EQUIPMENT INC. disclaimed). The Board found confusion to be likely with the previously registered mark HARDROCK for “rock drills, drill bits, and other drilling equipment.” Turning to the first factor in the Dupont Factors, the Board found that the two marks are “quite similar in appearance, sound, and connotation and commercial impression when considered in their entireties.” In that manner, the first factor was satisfied. The second factor, relating to the relatedness of the goods and services, is examined based on what was described in the registration and application. The Board concluded that even though the applicant and the cited registered mark owner did not have identical goods, “they substantially overlap, which weighs in favor of finding a likelihood of confusion.” Therefore, the second factor was satisfied. The applicant then cited the fourth factor: The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. In this case, the fourth factor supported a finding that confusion was not likely, however, the first two factors are the most heavily considered. Simply because other factors may be relevant or applicable, does not mean they outweigh the first two. In summation, the Board found that “[s]ophistication of buyers and purchaser care are relevant considerations but are not controlling on this factual record.” So, the Board affirmed the §2(d) refusal for registration.

Genericness Cases

Saturday, March 7th, 2020

The previous post discussed generic marks, which are the weakest type of mark on the Spectrum of Distinctiveness. Generic marks are not registrable on either the Principal Register or the Supplemental Register. A mark is considered generic if the mark is comprised wholly, or partially of a term(s) that the public primarily associates with a genus of goods or services.

Below, are two recent Trademark Trial and Appeal Board decisions affirming refusal for registration under §§ 2(e)(1) and 2(f) of the Lanham Act:

In a 2019 precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the generic mark MALAI, for ice cream. The Board ultimately found that the relevant public would understand the term MALAI to refer to a critical part of “ice cream, gelato, dairy-free ice cream, frozen yogurt, frozen desserts, ice cream sandwiches, sorbet, freezer pops and ice cream sundaes.” The Board applied the two-part inquiry set forth in H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F .2d at 990, 228 USPQ at 530 (Fed. Cir. 1986) to determine whether or not a mark is generic. For the first part of the inquiry, asking what the genus of the goods or service at hand is, there was no argument that the applicant’s identification of his goods satisfied this prong. In this case, the relevant consuming public consists of ordinary consumers who eat and purchase ice cream and equivalent products. The Board then looked at the second prong of the inquiry that asks how the relevant public perceives the term MALAI in the context of the applicant’s goods. Supporting evidence for genericness, included a dictionary definition of the term and a Wikipedia entry for “Ras Malai” as a kind of dessert as well as several articles, recipes and internet materials that identified the term as a cream.  Both pieces of evidence showed that the word MALAI “is commonly used in the English language as a genus of rich, high-fat creams commonly used in Indian and South Asian culinary dishes, especially dishes with a sweet taste.” The Board agreed with the examining attorney that the evidence showed that “malai” has its own English meaning for cream as a cooking ingredient. The Board agreed that there is no hard-and-fast rule the name of any ingredient in a product would be considered generic, but in this specific case, the public comprehends the ingredient name “to refer to a key aspect or sub-category of the genus of the goods, it is generic for those goods;” see Royal Crown, 127 USPQ2d at 1046; see also In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017). In light of this, the Board affirmed the refusal to register on the Supplemental Register under §23 of the Lanham Act.

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the generic mark FIDGET CUBE on the Supplemental Register, for “stress relief exercise toys.” (Note that FIDGET was previously disclaimed.) The Board found that the term was a “generic name of the subgenus or subcategory of Applicant’s identified goods.” As a main defense, the applicant argued that he was the first user of the term FIDGET CUBE. However, the fact that no third-party registrant had used the term, does not negate a finding of genericness. The examining attorney submitted dictionary definitions of equivalent words, third-party registrations disclaiming “fidget,” and Internet product reviews, online retailer advertisements and online articles referring to “fidget cubes.” The Board remarked that there was no ban on evidence taken from Internet forums or blogs. The Board then turned to evidence that showed the term FIDGET CUBE generic for a type of stress-relieving toy. In a final, and unconvincing, argument, the applicant attempted to argue that there were other names for the type of product, including terms such as “fidget dice, infinity cube, fidget box, stress cube, stress block and dodecahedron.” In light of these alternative names, the applicant rationalized that there was no need for competitors to use the term FIDGET CUBE to describe their products. The Board was quick to remind the applicant that there can be more than one generic term for a particular genus of goods or services. In summation, the Trademark Trial and Appeal Board affirmed the refusal to register under §23 and §45 of the Lanham Act.

Generic marks may not be registered on the Principal Register or the Supplemental Register in any case. If the mark is comprised wholly, or in part, by generic material, where the generic term(s) retain significance to the relevant public, the mark is generic. When conducting the two-part inquiry, an examining attorney must look at the mark as a whole. Unlike other marks on the Spectrum of Distinctiveness, generic marks cannot acquire distinctiveness, nor can an applicant argue first use as an immunization against genericness.

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