Posts Tagged ‘trademarks’

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.”

When A Mark Consists of Both Words and Designs

Sunday, June 27th, 2021

When an Examining Attorney is examining a mark for registration, he must determine whether likelihood of confusion may exist between it, and an already-registered mark. Under §2(d), when analyzing marks for determining likelihood of confusion, that marks must be compared in their entireties as to appearance, sound, connotation and commercial impression. Further, during the analysis, the marks must be considered in their entirety and not examined piecemeal. “The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340 (Fed. Cir. 2015). However, if one feature of the mark is more prominent, it will be given greater significance for the purpose of finding likelihood of confusion between the marks at issue. See, e.g.In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).

Often, when a mark consists of both words and a design, more significance is given to the words because that is the aspect of the mark that purchasers are likely to remember, refer to or use when requesting goods or services. See In re Viterra, 671 F3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012). Though the wording is commonly the dominant portion of a mark, there are certain instances where the design aspect of a mark is the more prominent portion, and it should be given greater significance. See Jack Wolfskin Ausrustung, 797 F.3d at 1372, 116 USPQ2d at 1135. This may be the case if the if the mark contains “unusual or uncommon design features,” or if the design element is the “most visually prominent” aspect. See In Re Primeway Intl. LLC, 87059786, 2019 WL 646088 (2019). In Primeway, the Trademark Trial and Appeal Board examined whether the Applicant’s mark, INCOGNITO, and Registrant’s STS “INCOGNITO” and design mark were confusingly similar. The Applicant’s mark was comprised of a wolf in sheep’s clothing with an arm extended out against the large letters “STS.” The word “incognito” appeared under the design in small letters, and so, the Board held that the most prominent feature of the mark was the design and the letters “STS,” not the shared term “incognito.” It then reversed the refusal to register under 2(d).

 In other words, the word portion of a mark is typically given greater significance because it is the portion that stands out for consumers, yet the design portion may be more dominant if it is the portion that is more likely to stand out to consumers.

 

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 VALLKREE Confusable With VALKYRIE?

Friday, April 9th, 2021

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

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

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

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

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

Mere Descriptiveness Case: HOSTIING and HOSTIING GROUP

Friday, April 9th, 2021

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

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

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

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

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

USPTO’s Updated Genericness Guide

Saturday, April 3rd, 2021

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

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

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

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

 

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.

 

Likelihood of Confusion Case: CITRUS CLUB vs. CITRUS KITCHEN

Wednesday, February 17th, 2021

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

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

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

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

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

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

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

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