Posts Tagged ‘TTAB’

Merely Descriptive/ Disclaimer Requirement – DANK TANK

Tuesday, May 11th, 2021

In a 2021 non-precedential decision, the Trademark Trial and Appeal Board affirmed a disclaimer requirement for the term DANK in the proposed mark DANK TANK for “Ale; Beer.”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

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

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

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

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

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

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

Is MALIBU SUPPER CLUB Geographically Descriptive?

Tuesday, April 20th, 2021

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

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

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

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

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

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

Is 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.

QUERCUS COFFEE V. QUERCUS

Saturday, April 3rd, 2021

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

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

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

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

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

ESPOLON V. EIDOLON Likelihood of Confusion Case

Tuesday, March 9th, 2021

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

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

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

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

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

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

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

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.

Precedential Decision in CO-OP Bikes Case

Wednesday, February 10th, 2021

In a 2020 precedential case, the Trademark Trial and Appeal Board reversed a refusal for registration for the mark CO-OP for “Bicycles, bicycle seats, bicycle wheels, bicycle tires, bicycle handlebars, bicycle forks and bicycle handlebar stems,” which the USPTO deemed merely descriptive under §2(e)(1).

Under §2(e)(1), marks that are merely descriptive are barred from registration on the Principal Registration. These are marks that immediately convey information about a quality, characteristic, function, feature, purpose or use of the goods with which it is used. In this case, the Applicant, Recreation Equipment, Inc. (REI), argued that the word “co-op” does not describe the goods cited on the application, which are bikes and bike parts. Moreover, the Applicant argued that other registrants successfully registered marks that included the term “co-op.” The Applicant then cited multiple registrations from the Principal Register, which showed that an entity identifier, i.e., “co-op,” is not technically merely descriptive. The Examining Attorney held firm that the term “co-op” was indeed merely descriptive as it conveyed something about the Applicant, specifically that the Applicant was a cooperative business. The Examining Attorney furthered her argument by citing the Meriam Webster’s definition of the term and pulling evidence from the Applicant’s website that shows the Applicant advertising the fact that it was the “nation’s largest consumer cooperative.” Aside from this evidence, there was no other specific finding to show that the term “co-op” otherwise described the goods.

After reviewing the arguments, the TTAB first explained that there was no per se rule of law that a term descriptive of the source of the goods was necessarily descriptive of the goods themselves. The Board determined that the Examining Attorney had relied on the on broad language in In re Major League Umpires, 60 USPQ2d 1059 and used it as a per serule that a mark merely descriptive of the source of goods, was merely descriptive of the goods themselves. She relied on the Board’s citation in that case that, “[i]t is well-established that a term which describes the provider of goods or services is also merely descriptive of those goods and services.” Id. at 1060 (citing In re E. I. Kane Inc., 221 USPQ 1203 (TTAB 1984) and cases cited therein). In doing so, she refused the registration. However, as the Board stated, that The Trademark Manual of Examining Procedure (TMEP) does not have a per se rule equating descriptiveness of the source with descriptiveness of the goods provided. TMEP § 1209.03(q) (Oct. 2018) Since much of this appeal relied on In re Major League Umpires the Board found it imperative to review it. The Board found that in that case specifically, the facts were unusual and did not correlate to the case at hand. In the Umpires case, the Board found that the mark went beyond simply describing something about the source of the goods, but also described characteristics of the goods as well. Specifically, the Board stated that the mark, “also immediately conveys to purchasers’ information about a designer of at least some of the goods.” Major League Umpires, 60 USPQ2d at 1061. Moreover, the Board found that umpires were among a class of purchasers, so the mark was merely descriptive of the goods and the type of purchasers, not simply the general public. Finally, the Board found that, “Consumers will therefore understand the mark MAJOR LEAGUE UMPIRE, if used on the identified goods, to describe goods which are used by major league umpires.” Ultimately, this case had nothing to do with the source of goods specifically, but three different ways in which the mark was merely descriptive of the goods at hand. The Board found that even though the Applicant conceded to the fact that the mark CO-OP described the provider of the product, the evidence was insufficient to support a §2(e)(1) refusal and that there was no evidence to suggest that consumers would perceive the mark as merely descriptive of a quality, feature or characteristic of the applied-for goods.

Second, the Board looked at the term CO-OP in connection with the applied-for goods, which were bikes and bike parts. It found that the record lacked evidence showing what consumers would think when they saw the term in connection with bikes or bike parts. There was no recorded evidence of third-party use of CO-OP or “cooperative” in connection with the type of goods the Applicant was applying for. Had there been, it would have been evidence that potentially signaled mere descriptiveness. Further, the record did not contain any advertising with any descriptive use of the mark in connection with the goods, as existed in Major League Umpires. (In that case, the Applicant was a group of umpires advertising goods made by, and for, umpires.) Finally, there was no evidence that consumers used the term CO-OP in connection with the goods, or that any trade publication referenced the term in connection with bikes or bike parts. The Board cited Dan Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979) in concluding, “Many types of evidence can shed light on what a term means within a particular context, but no such evidence is of record here.”

In summation, the Board concluded that while some consumers may have been aware that the Applicant was a co-op, the evidence did not support a finding that the mark CO-OP immediately conveyed, to the average consumer, information about a quality, feature or characteristic of bikes and bike parts. It found that the term merely described the Applicant’s business structure and that alone was insufficient for the Board to affirm a §2(e)(1) refusal to register. Therefore, the Board reversed the refusal to register.

The TTAB’s Decision on a Mere Descriptiveness Case

Monday, January 25th, 2021

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal of registration for the proposed mark SPIDER WOOD for “Decorative ornaments in the nature of natural sculptures of wood for use in terrariums, animal habitats, bird cages, floral arrangements, and interiorscape installations.” The TTAB found the mark to be merely descriptive under §2(e)(1).

When determining whether a mark is merely descriptive or suggestive, the Examining Attorney must look at the mark in its entirety, and if the mark “immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought,” then it is considered merely descriptive under §2(e)(1). Further, when determining whether a mark is merely descriptive, the Examining Attorney must consider the mark as a whole, and “do so in the context of the goods or services at issue.” See Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) and DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).

 The applicant, Petglobe, first argued that the mark was suggestive, and not descriptive because the product “is a tangled mass of wood roots used in animal habitats,” that “does not have any other clear connection to spiders.” The Examining Attorney submitted a slew of evidence in the form of website excerpts that referred to, and offered, the sale of “spider wood” for terrariums and aquariums. The Board found that the applicant’s argument that the mark was suggestive because there was no clear connection to spiders was invalid. It concluded that the term, SPIDER WOOD, in connection with the goods listed in the application, did indeed have a distinct and commercial impression. It stated that the owners of terrariums, animal habitats and birdcages looking to buy “decorative ornaments in the nature of natural sculptures of wood,” would encounter the term SPIDER WOOD and “[would] immediately know that it is a type of driftwood without having to resort to a multi-step reasoning process, thought, or cogitation.” Therefore, the applicant’s argument that the addition of the word SPIDER before WOOD was negated by the evidence provided. It is important to note that in order for a mark to be found merely descriptive it does not have to describe all of the purposes, functions, characteristics or features of a good or service to be considered merely descriptive. It can be classified as such if the term describes one important function, attribute or property. In a similar fashion, the term does not need to describe all of the goods or services identified on the application, so long as it describes one of them.

The applicant then argued that it was the first to “develop” the mark and the first to use it. Therefore, it claimed that any other industry usage of the mark, for the same goods, was an infringement against its established unregistered trademark. This argument was quickly dismissed as the Board stated that simply because an applicant was the first user or “developer” of merely descriptive mark did not justify its registration if the only significance conveyed by the term was merely descriptive. “Trademark law does not countenance someone obtaining “a complete monopoly on use of a descriptive term simply by grabbing it first.” See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122, 72 USPQ2d 1833, 1838 (2004)

In conclusion, the Board affirmed the refusal of registration for the mark SPIDER WOOD as it was found to be merely descriptive under § 2(e)(1).

TTAB Decision for Likelihood of Confusion Case – MASTERRANCHER v. RANCH MASTER

Sunday, January 17th, 2021

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).

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