Posts Tagged ‘TTAB’

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In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal of registration for the proposed mark SPIDER WOOD for “Decorative ornaments in the nature of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).

TTAB Decision for Likelihood of Confusion Case – CHINOOKER’D IPA vs. CHINOOK

Sunday, January 10th, 2021

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board dismissed the §2(d) opposition against Lawson’s Finest Liquids, LLC’s (applicant), mark CHINOOKER’D IPA (IPA disclaimed) for beer, and found it unlikely to be confused with W. Clay Mackey’s (opposer), CHINOOK for “table wine and sparkling wine,” and his presumed common law rights in the same mark for beer.

Turning first to the opposer’s alleged common law rights to the mark CHINOOK for beer, the Board deemed the term generic, and therefore not protected by common law rights. At the core of any genericness case, is the issue of whether relevant members of the public use or understand the term in question in connection with the genus of the good being used under the mark. See Royal Crown, 127 USPQ2d at 1046. In this specific case, of CHINOOK for beer, the U.S. Department of Agriculture identified Chinook as a variety of hops, which is used in brewing beer. Moreover, the applicant’s expert witness testified a similar statement, and a slew of articles, unrelated to the opposer’s product,  supported the testimony. The Board found that the evidence clearly showed that “the relevant purchaser perceives Chinook as indicating a type of beer by referring to a key aspect of that product.” Ultimately, the Board concluded the opposer had no proprietary rights in the term, as it is generic when used in connection with beer, since the relevant public already perceived that the beer was brewed with Chinook hops.

The Board then turned its attention to the main issue: Whether or not the applicant’s mark CHINOOKER’D IPA, for beer, was likely to cause confusion with the opposer’s registered mark CHINOOK for “table wine and sparkling wine,” under §2(d) likelihood of confusion. It used the relevant Dupont Factors to come to its ultimate finding. Starting with the second Factor, the similarity or dissimilarity and nature of the goods in connection with the mark, the Board found the mark to be arbitrary for wine, as the opposer testified that the mark was meant to reference positive attributes of the Pacific Northwest. Therefore, the mark was considered inherently strong. Moving to the seventh Factor, the nature and extent of any actual confusion between the marks, the Board deemed this factor neutral as there was no reasonable opportunity for confusion to occur, which is what gives this factor any probative value. See Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007). In examining the third and fourth Factors, similarity of trade channels and impulsive vs. careful buyers, the Board found that beer and wine are most often offered in the same trade channels to some of the same types of consumers. Since the two marks are for goods offered in the same trade channels, and neither appeal to any specific type of consumer, it was to be presumed that the purchasers of either sides’ goods would include both impulsive and careful consumers. Finally, the Board looked at the first Factor, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. It found that since the applicant’s mark encompasses a portion of the opposer’s mark, the two are similar in sound and appearance. However, the connotations of the marks are very dissimilar. The opposer’s mark was meant to suggest the Pacific Northwest, while the applicant’s mark “engenders the commercial impression of getting snockered (i.e., drunk) on beer made from Chinook hops.” In this fashion, the two marks do not have the same connotation or give off the same commercial impression.

In conclusion, the Board found confusion unlikely under §2(d) for CHINOOKER’D IPA for beer and CHINOOK for table and sparkling wines. Its ultimate decision was that the dissimilarity in the marks’ connotation and commercial impression heavily outweighed the similarity in sound and appearance. “Each of the evidentiary factors set out in DuPont, may, from case to case, play a dominant role.” As stated in Kellogg Co. v. Pack’em Enters., Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). The commercial impression, in this case, was particularly important as Chinook is generic for beer, and that ultimately made the applicant’s mark arbitrary, and inherently strong, as used in connection with the applicant’s goods.

New and Adjusted Trademark and Trademark Trial and Appeal Board Fees Post

Tuesday, December 1st, 2020

The United States Patent and Trademark Office will be setting and adjusting certain trademark and TTAB fees effective Jan. 2, 2021, and it will be the first this has happened in nearly three years. The fee changes and additions will allow the USPTO to continue to keep up with the costs of the Trademark Office’s and the TTAB’s workload projections for fiscal 2021. Moreover, the fees will help to further the USPTO’s strategic objectives in the following ways: (1) better aligning fees with costs, (2) protecting the integrity of the trademark register, (3) improving the efficiency of the agency processes and (4) ensuring financial sustainability to maintain effective trademark operations.

Below, are two charts showing the changes in the trademark applications and application-related fees and the changes in the TTAB fees.

Other information pertaining to the TTAB Fees cited from uspto.gov:

There is still no fee for a first 30-day extension request for filing a notice of opposition, filed through ESTTA. There is also no new fee for a first request.

New TTAB Fees For: 

  1. Second, and subsequent, requests for an extension of time to file an appeal brief in an ex parte appeal filed through ESTTA: $100 per application
  1. Appeal briefs in an ex parte appeal filed through ESTTA: $200 per class
  2. requests for oral hearings: $500 per proceeding

In addition, the USPTO is implanting partial refunds for petitions to cancel in default judgments if the cancelation involves only a nonuse or abandonment claim, the defendant did not appear and there were no filings other than the petition to cancel.

For more information regarding the changes, and a complete list of all new and updated fees, visit uspto.gov.

 

 

 

 

 

 

Deceptively Misdescriptive Marks

Tuesday, January 28th, 2020

Under §2(e)(1) of the Lanham Act, there are several types of marks that may not be registered with the USPTO: merely descriptive marks, deceptively misdescriptive marks, primarily geographically descriptive marks, geographically deceptively misdescriptive marks, marks that are primarily a surname and marks that compromise any matter, used wholly, is functional. This article will explore marks that are deceptively misdescriptive. A mark is deceptively misdescriptive if it immediately conveys a certain idea, but the idea is false, although plausible. Simply, a mark may not be registered, if people who encounter the mark, in connection with the goods or services for which it is being used, are likely to believe the misrepresentation. Deceptively misdescriptive marks fall somewhere between marks that consist of (or) comprise immoral, deceptive or scandalous matter, which may not be registered under §2(a), and arbitrary marks which may be registered on the Principal Register.

The Federal Circuit devised a two-prong test to determine whether a mark is deceptively misdescriptive or merely deceptive.

The trademark examining attorney must first decide if the term is misdescriptive of the character, quality, function, composition or use of the goods or services for which it is being used.  It is the examining attorney’s job to record evidence demonstrating why the mark is misdescriptive. Specifically, the record must show the meaning of the term in question, and that the identification indicates that the applicant’s goods or services do not have the feature or characteristic. Several examples of evidence are dictionary definitions, Internet websites, point-of-purchase displays, advertising materials, product information sheets, hang tags and trade journals. An applicant’s statement in reference to his/her goods or services may also satisfy the first component of the test. An example of a misdescriptive term is APPLE for computer products. However, the consuming public is unlikely to believe the misrepresentation conveyed through the mark. This would make the misdescriptive term an arbitrary mark.

The second component of the test examines whether the idea conveyed is plausible, and how likely the consuming public would be to believe the misrepresentation of the mark in connection with goods or services for which it is being used. In order to prove this prong of the test, an examining attorney must provide evidence that the description conveyed by the mark is plausible by demonstrating that potential consumers regularly encounter goods or services that contain the features or services in the mark. For example, in a 1988 Federal Circuit case, an applicant attempted to register the mark LOVEE LAMB for seat covers that were not made of the lamb. In order to demonstrate the believability of the idea conveyed in the mark, the examining attorney provided evidence that seat covers can be made of lambskin and sometimes are made of lambskin, therein proving that the consuming public would be likely to believe the misrepresentation conveyed by the mark. Much like the first prong, an applicant’s hangtags, labels, advertising and product information may also provide evidence of the believability of the misdescription.

Furthermore, the fact that the true nature of the goods or services is revealed by other elements on the labels, advertisements or other materials with which the mark is connected does not preclude a determination that a mark is deceptively misdescriptive.

Following is an example of a mark that was refused registration because it was deceptively misdescriptive under §2(e)(1) of the Lanham Act.

In a 2006 precedential opinion by the Trademark Trial and Appeal Board, the Board affirmed refusal for registration of the deceptively misdescriptive mark SEPTEMBER 11, 2001, for books and media services. The examining attorney provided evidence that established that the date of Sept. 11, 2001, “acquired special significance in America.” The examining attorney went on to clarify that the date was used as a common reference to the terrorist attacks that occurred on that date. In satisfying the first prong of the two-prong test, the Board determined that the term was misdescriptive in connection to the applicant’s goods which did not in any way cover the events that took place on Sept. 11, 2001. In a similar fashion, the second prong was satisfied when the Board ruled that in light of the many books, articles and shows about the events that took place on that date, it would be likely for consumers to believe the misdescription of the mark. The Board concluded, “While the nature of the misdescription would become known after consumers studied applicant’s books and entertainment services, that does not prevent the mark from being deceptively misdescriptive.”

Marks that have been refused registration under §2(e)(1) of the Lanham Act on the ground of deceptive misdescriptiveness may be registerable under §2(f) of the Act if they have acquired distinctiveness, or on the Supplemental Register if appropriate. Marks that have been found deceptive under §2(a) of the Act may not be registered on either the Principal Register or the Supplemental Register in any case.

 

The Line Between Merely Descriptive Marks and Suggestive Marks

Tuesday, January 28th, 2020

Distinguishing a merely descriptive mark and a suggestive mark is crucial to determining whether protection is afforded under the Lanham Act. Since the categorization is a question of fact, each case must be analyzed based on its own merit. If a trademark examining attorney deems a mark merely descriptive an applicant may respond and argue that the mark is suggestive. If the Examiner maintains the refusal, the applicant may appeal to the Trademark Trial and Appeal Board. The TTAB will either affirm the original decision or reverse it in favor of the applicant. Two types of cases with similar considerations and different outcomes are presented below:

The first set of examples pertain to considerations relating to terms in the dictionary. Simply because a term is not found in the dictionary, does not control whether or not it is eligible for registration. If an examining attorney can show that the term has a well understood and recognized meaning, it may be merely descriptive. Moreover, if the term is found in the dictionary, the matter at hand is establishing what the term means to consumers and its current usage, which may hold more weight than an older definition.

In a 2017 precedential opinion by the Trademark Trial and Appeal Board, the decision by an examining attorney that the mark WELL LIVING LAB was merely descriptive was affirmed. Starting with “lab,” defined as a “room or building equipped for scientific experiments, research…” the Board agreed that the term simply referred to the location where the applicant’s research services were held. Regarding the phrase “well living,” its meanings in the Oxford Dictionary are all similar, for example, “the action or fact of leading a good life, especially with respect to moral virtue.” Though the definitions included remarks referring to the outdatedness of that meaning, the Board turned to evidence provided by the examining attorney that the term “well living” was essentially synonymous with the descriptive phrase “health and wellness” in the mind of the consumer. The Board held that the mark WELL LIVING LAB constituted “no more than the sum of its parts.”

By way of contrast, in a 2020  non-precedential opinion, the Trademark Trial and Appeal Board found the mark ORIGINAL GRAIN suggestive. The Board analyzed both terms in the mark that was being used to distinguish an applicant’s restaurant service, separately. First looking at the noun, “grain,” the Board in concurrence with the examining attorney found that the term in itself was merely descriptive because the average consumer would find the term to mean a type of food in the context for which it was being used, both in a commercial light and as listed on the applicant’s menu. In regard to the word “original,” the examining attorney argued that the term, understood by others in the food and beverage industry and by consumers, referred to whole grains or unrefined grains. However, the Board found that there was insufficient evidence to show that the consuming public would automatically associate the mark ORIGINAL GRAIN with whole grains or unrefined grains. Conclusively, the Board found that taken as a whole, the term may be suggestive of “wholesome grain-based menu items” or “healthy eating” based on the grains served at the applicant’s restaurant.

The second set of examples relate to the consideration of terms with more than one meaning. When determining descriptiveness, the trademark examining attorney must look at the mark in relation to the goods or services for which registration is sought. If the term’s primary significance is descriptive in relation to at least one of the owner’s goods or services and does not create either a double entendre or an incongruity, then the mark is merely descriptive.

In a 2019 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the merely descriptive mark ARKIVE, for a data sharing and cloud computing backup service. Unlike the previous cases which involved dictionary meanings, the applicant, in this case, did not try to dispute that ARKIVE was simply a misspelling of the defined term “archive.” The applicant argued that the term was a unique combination of the two terms “ark” and “archive” which together, created a double entendre. The applicant reasoned that the term “ark” in reference to the Ark of the Covenant and Noah’s Ark, would convey a sense of security and stability in the minds of the consuming public. However, the Board concurred with the examining attorney that the meaning of the mark, referencing the Ark of the Covenant or Noah’s Ark,  suggested by the applicant, would not be apparent to the consuming public in connection with the services for which the mark was used. ARKIVE was held merely descriptive.

In a 2008 precedential opinion, the Trademark Trial and Appeal Board reversed the refusal to register the merely descriptive mark THE FARMACY, in connection organic herbs and products sold in the equivalent of a pharmacy. The examining attorney argued that the mark was simply a phonetic misspelling and merely descriptive of the location where the goods were sold. The applicant contended that the mark was intended to be a “whimsical term” playing on the two words “pharmacy” and “farm.” The mark was meant to convey the idea that the applicant sold “…natural, pure and completely unprocessed products.” The Board agreed with the applicant that mark held a dual meaning in regard to the nature of the goods and the combination of the two separate terms “pharmacy” and “farm” thereby creating the double entendre FARMACY. In this fashion, the Board held that the mark was suggestive.

The four cases detailed above highlight the thin line between marks that are merely descriptive and those that are suggestive. The considerations to mere descriptiveness determine whether a mark is eligible for registration on the Principal Register or the Supplemental Register. A merely descriptive mark may still be eligible for registration if it acquires secondary meaning. A suggestive mark is afforded greater protection under the Act because it is eligible for registration on the Principal Register without acquiring a secondary meaning.

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