Articles Posted in Trademark Application Refusal

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Two weeks ago the Trademark Trial and Appeal Board (the “Board”) issued a precedential decision involving issues of parent and subsidiary trademark use and abandonment. See Noble Home Furnishings, LLC v. Floorco Enterprises, LLC, Cancellation No. 92057394 (April 4, 2016) [precedential]. Noble Home Furnishings, LLC (the “Petitioner”) filed a petition to cancel the word mark NOBLE HOUSE for furniture owned by Floorco Enterprises, LLC (the “Respondent”). The grounds for cancellation were abandonment and fraud. Petitioner’s application was attempting to register the mark NOBLE HOUSE HOME FURNISHINGS for various services including online retail store services featuring furniture and home furnishings. Respondent did not contest Petitioner’s standing in the matter. Petitioner asserted that it filed a trademark application that was rejected on likelihood of confusion grounds due to Respondent’s registration.

The first ground asserted in the petition to cancel was abandonment. To prove this claim before the Board a party must show that there is non-use of the trademark and that there is no intent to resume use. If a plaintiff or petitioner can show three years of consecutive non-use then it has satisfied its burden of proof to show a prima facie case of abandonment. Then, it is up to the registrant or respondent to rebut this presumption by showing use of the trademark or intent to resume use of the mark.

The Respondent filed a Statement of Use on August 18, 2011. The last documented sale under the mark NOBLE HOUSE was on July 14, 2009. Since that date, the Respondent claimed it periodically marketed the products, but there were no further sales. Although, one would think that the period of nonuse would commence after the last sale date, the Board held that the three-year period would start running from the date the Respondent filed its Statement of Use. The rationale for this finding is that an intent-to-use applicant is under no requirement to use its trademark until it files the Statement of Use. To prove use in commerce for goods under Section 45 of the Trademark Act, the mark must be placed on the product and the goods sold or transported in commerce. Typically, there can be no use in commerce unless there is either sales or transportation of the goods even if there is marketing and promotion.

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Hughes Furniture Industries, Inc. (“Applicant”) was seeking to register a stylized mark H HUGHES FURNITURE -MOTION EAZE RECLINERS for furniture. The application was refused and the Applicant appealed to the Trademark Trial and Appeal Board (“Board”). The application was refused under Section 2(d) of the Trademark Act on the grounds that it would cause a likelihood of confusion with the registered mark BRADLEY HUGHES (in standard characters) for residential and commercial furniture. See In re Hughes Furniture Industries, Inc., Serial No. 85627379 (March 27, 2015) [precedential]. The two key considerations in a likelihood of confusion analysis are the similarities between the marks and the similarities between the goods or services.

Applicant argues that the parties offer distinct goods targeted to different segments of the consuming public. Applicant offers screenshots of the parties’ websites to demonstrate that the Registrant serves a niche market of the furniture industry offering luxury furnishings while his company offers massed produced furniture to a broad segment of the public. The Board found this evidence to be irrelevant because it determined that the identifications (furniture and residential and commercial furniture) were legally identical. The Board refused to limit the scope of use by considering extrinsic evidence. Once it determines that the goods are identical, it is presumed that the trade channels are the same and the goods will be marketed to the same potential consumers. Regarding conditions of purchase, due to the price points of most furniture, it is logical to assume consumers are not impulse shopping. However, the record did not contain sufficient evidence to prove a high degree of care would be exercised, weighing against a finding of confusion. Given the absence of restrictions in the identifications, the Board deemed this factor neutral.

Next the Board examined the similarities of the marks. The analysis starts with the premise that when the goods are identical typically less similarity is needed between the marks to create a likelihood of confusion. Although, there are some differences in the marks, the differences impact the minor elements of the mark and not the dominant element of the marks. The Board considered the size of the lettering and whether or not the terms were disclaimed to determine which portion of the mark was dominant. It concluded that the surname Hughes played a dominant role in the mark due to the size of the lettering in relationship to the sized lettering of the other terms in the mark. In addition, the Board stated that consumers are more likely to call for the goods with a surname. Since both marks share a common surname, consumers are likely to believe the goods emanate from a common source. The Board cited numerous cases to support this proposition. In the end, the Board affirmed the refusal to register the mark HUGHES FURNITURE and gave no weight to the evidence that the parties targeted different market segments.

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Nieves and Nieves LLC, (the “Applicant”) filed an intent-to-use application with the USPTO for the mark ROYAL KATE for various goods, including apparel, cosmetics, watches, bedding, and hand bags. The Examining Attorney refused to register the trademark application under Section 2(a) of the Trademark Act of 1946 for falsely suggesting a connection with Kate Middleton and under Section 2(c) of the Trademark Act on the ground that ROYAL KATE consists of a name identifying a particular living individual whose consent is not of record, (British Royal Kate Middleton). The Applicant appealed to the Trademark Trial and Appeal Board (the “Board”).

To determine if the Applicant’s mark falsely suggests a connection with Kate Middleton, the Board reviews the record to see if the evidence satisfies a four-part test:

(1) Is Applicant’s mark ROYAL KATE the same as or a close approximation of Kate Middleton’s previously used name or identity;

(2) Would Applicant’s mark ROYAL KATE be recognized by consumers to point unmistakably to Kate Middleton;

(3) Can it be said that there is no connection between the goods sold by Applicant and Kate Middleton; and

(4) Is Kate Middleton’s name or identity sufficiently famous that when Applicant’s mark is used on its goods, a connection with Kate Middleton would be presumed.

The existence of a false suggestion of a connection results from an applicant’s use of a term that is closely associated with a particular personality or persona of someone other than the applicant. In this case, the question is does the relevant public understand the mark, ROYAL KATE to identify Kate Middleton. The Applicant argued that Kate Middleton was not officially a “royal” and also she did not identify herself as “Royal Kate”.  Applicant further argued that “Royal” is not part of Kate Middleton’s official title. The Board rejected the Applicant’s argument.

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On April 20, 2006 the Applicant filed a trademark application for NATIONSTAR pro se with the United States Patent & Trademark Office (“USPTO”). The Applicant filed a use-based application for real estate brokerage; rental of real estate; real estate management services (residential and commercial properties); real estate investment; insurance and mortgage brokerage; and business finance procurement services. Eight days after the Applicant’s filing, Nationstar Mortgage LLC, (“Opposer”) filed two applications with the USPTO for NATIONSTAR MORTGAGE (a word mark and a stylized mark) both for mortgage lending services. Opposer disclaimed the exclusive right to use the word “mortgage”.

The Applicant’s application was cited against the Opposer’s two applications based on the possibility of a likelihood of confusion as to the source of the marks. The Opposer filed a Notice of Opposition with the Trademark Trial and Appeal Board (“Board”) alleging that the Applicant did not use the NATIONSTAR mark for any of the services identified in its application prior to the date of filing with the USPTO. Further the Opposer alleged that Applicant fabricated a specimen and knowingly deceived the USPTO. See Nationstar Mortgage LLC v. Ahmad, Opposition No. 91177036 (Sept. 30, 2014).

Applicant decided to hire counsel after the filing of the Notice of Opposition. Upon advice of counsel, he amended his use-based application to an intent-to-use application. However, this amendment will not assist the Applicant in defending against a fraud claim. The reasoning is that fraud occurs if an applicant knowingly makes false representations of fact with respect to its trademark application with an intent to deceive the USPTO. See In re Bose Corp., 580 F.3d 1240, 1245, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009). In re Bose was a seminal case where the Board raised the burden of proof substantially in fraud claims. Nationstar Mortgage LLC is the first case where the Board has found that an Applicant has committed fraud since 2009. There is a heavy burden attached to proving a fraud claim. One must prove fraud with clear and convincing evidence. This means that if a false statement is made, but there was a reasonable belief that it was true then fraud cannot be found. There has to be a requisite intent to deceive the USPTO.

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Consent Agreements will be considered in a likelihood of confusion analysis. These are agreements between the registrant of a trademark and another party, where the registrant agrees to the registration of a similar or identical trademark. See our webpage entitled, Resolving Trademark Disputes Without Litigation for a detailed discussion on Consent Agreements and other types of agreements that can avoid litigation. The trademark applicant can submit a Consent Agreement to overcome a refusal of registration based on likelihood of confusion with a prior registered mark. The Examining Attorney will consider the Consent Agreement along with the other evidence in the record.

See In re Intuity Medical Inc., Serial Nos. 77416484 & 77416487 (July 26, 2011), where the Trademark Trial and Appeal Board (hereinafter the “Board”) held that the Applicant’s two marks were identical (ONE STEP & ONE-STEP – standard character marks) with the several marks that the Registrant owned (ONE-STEP in stylized formats and in standard character). Applicant identified his goods as “blood glucose monitoring systems including the devices, and parts and accessories thereof”. The Registrant’s goods were for “blood sampling prickers and parts therefore”.

The Board determined that the goods were related because blood drawing devices are a component of blood glucose monitoring systems. Essentially, the Board’s argument was that the Registrant’s identification was broad enough to include the goods of the Applicant (blood drawing devices used in connection with monitoring blood glucose levels). In conjunction with finding a relationship between the goods, the Board also held that the goods moved in the same channels of trade and were sold to the same classes of consumers.

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In recent years, prevailing on summary judgment motions at the Trademark Trial and Appeal Board (hereinafter the “Board”) has become more difficult. However, if a petitioner believes that there are no material facts in dispute, a summary judgment motion should be filed. The following case is a good example of how petitioners can prevail on these types of motions before the Board. In a recent cancellation proceeding, MeUndies, Inc. (hereinafter the “Petitioner”) alleged that Drew Massey dba myUndies Inc. (hereinafter the “Respondent”) abandoned its trademark MYUNDIES for clothing, namely underwear, boxers, briefs, panties, thongs, bras, sleepware, loungewear, shirts, shorts, jeans, pants, socks, and hats.

Petitioner also alleges that he owns MEUNDIES and MEUNDIES.COM for various undergarments and his use commenced on December 21, 2011. See MeUndies, Inc. v. Drew Massey dba myUndies Inc., Cancellation No. 92055585 (August 13, 2014) [not precedential]. The Respondent filed its application on October 22, 2008 based on use in commerce. The Petitioner filed a trademark application for the mark MYUNDIES.COM and it was refused based on a likelihood of confusion with Respondent’s registration. See  Trademark Act Section 2(d), 15 U.S.C.2d §1052(d), and our webpage entitled Likelihood Of Confusion Refusals – 2(d) Refusals, for details concerning the basis for this type of refusal. This blog post is categorized under Trademark Application Refusal because sometimes a trademark application will be refused, and the only appropriate recourse is to initiate a proceeding with the Board. An action before the Board may be necessary so that the applicant can demonstrate that there is good reason why its application should proceed, but the only way to allow it to proceed is to cancel another registration.

Petitioner filed a summary judgment motion based on abandonment and nonuse. Petitioners have the burden of demonstrating the absence of any genuine dispute as to a material fact. See Celotex Corp. v. Catrett 477 U.S. 317, 323 (1986). The burden then shifts to the non-moving party once the moving party submits sufficient evidence that if unopposed, shows that there is no genuine issue of material fact. In a summary judgment motion, the role of the Board is to determine if there are any material facts that can be disputed, and not to actually resolve any genuine disputes of material fact. See Lloyd’s Food Products Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).

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In a recent July decision of the Trademark Trial and Appeal Board (“TTAB” or “Board”) a fashion company learned the hard way that registering a mark that has geographic significance can be an uphill battle. See In re Tigerland-Foxland of NY, Inc. Serial No. 85130889, July 23, 2014. Tigerland-Foxland of NY, Inc. (the “Applicant”) sought to register the mark VENEZIA-MILANO in standard characters for women’s clothing. The Examining Attorney refused the application on the basis that the trademark was geographically deceptively misdescriptive. The Applicant appealed to the Board. Regarding an evidentiary matter, the Applicant made a mistake in submitting third-party applications and not third-party registrations as supporting evidence. It is well settled law that the Board does not give probative value to pending trademark applications. Applications are evidence only of the fact that the application was filed with the USPTO. See In re Kent Pederson, 109 U.S.P.Q.2d 1185 (TTAB 2013).

Section 2(e)(3) of the Trademark Act states that a trademark is primarily geographically deceptively misdescriptive if:

(1)     The primary significance of the trademark is a generally known geographic area or region;

(2)     Applicant’s products or services do not originate in the generally known geographic location;

(3)     Consumers are likely to believe that Applicant’s goods or services originate in the known geographic location named in the mark; and

(4)     This misrepresentation is a material factor in the consumer’s decision making process when purchasing the goods or utilizing the services.

We discuss these four factors in detail on our web page entitled Geographic Indicators As Marks. You can also find additional information on this subject matter in the Trademark Manual Of Examining Procedure Section 1210.01(b). Applicant’s mark contains Italian words. Since Italian is a common language spoken in the United States, it is likely that U.S. consumers will translate the trademark into English. In recognition of this, Applicant has placed a translation statement in the record. The English translation is Venice-Milan. Venice and Milan are well known geographic locations in Italy. The Applicant unsuccessfully argued that since the term is hyphenated, consumers will read it as one location and there is no such place as Venice-Milan. The Board did not agree with this argument. The first requirement of this test is satisfied.

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A recent decision from the TTAB (Trademark Trial and Appeal Board or the Board) provides us with further guidance in an area that can be fraught with subtleties in trademark law. See In re Nature’s Youth, Inc., Serial No. 85747419 (March 13,  2014) [not precedential]. Here, the Examining Attorney did not submit enough evidence into the record to support its decision of refusal of the trademark application. The Board found that there was insufficient proof on the prong of “materiality”.  The TTAB could not uphold a refusal to register the mark based on the mark  being primarily geographically and deceptively misdescriptive.

The Applicant in this case is Nature’s Youth Inc. and it filed a trademark application with the United States Patent & Trademark Office (USPTO) to register the mark NY for cosmetics, face creams, and lotions for cosmetic purposes. The Examining Attorney refused the application on three grounds: (1) the mark was geographically deceptive; (2) the mark was primarily geographically deceptively misdescriptive; and (3) failing to comply with a request for information concerning the goods. The Applicant appealed this decision.

women-make-up-1378868-mThe test for determining whether a mark is either geographically deceptive or primarily geographically deceptively misdescriptive is the same.  See TMEP 1210.05(b) for the elements of a §2(e)(3) refusal. The Examining Attorney must submit proof into the record to demonstrate four criteria. The first is that the primary significance or meaning of the mark is generally a known geographic place. The TTAB agreed with the Examining Attorney on this prong. The Board held that “consumers viewing applicant’s proposed mark NY on or in connection with the identified goods will understand this as an abbreviation for New York.” See In re Nature’s Youth, Inc., Serial No. 85747419 (March 13, 2014) [not precedential].  Although the Applicant submitted evidence to show that the term “NY” had different meaning other than New York, the meanings were obscure and had no relationship to the goods identified in the trademark application.

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In the recent case of In re Innovation Ventures, LLC, Serial No. 85637294 (March 25, 2014) [not precedential] the Trademark Trial and Appeal Board (TTAB) held that the slogan “HOURS OF ENERGY NOW” for dietary supplements and energy shots did not function as a trademark.   After the Examining Attorney made its final refusal to register Hours Of Energy Now based on its opinion that the mark was incapable of functioning as a trademark to identify the source of origin of the goods, the Applicant appealed to the TTAB.  A slogan or an advertising phrase can register at the United States Patent & Trademark Office (USPTO) on the Principal Register, if it is capable of acting as a source indicator.  See In re Morganroth, 208 USPQ 284, 287 (TTAB 1980), where the Board held that an advertising phrase may register if it did not fall within one of the restrictions under Sections 2(a), (b), (c), (d), and the subsections of Section 2(e) of the Trademark Act. When discussing slogans and advertising phrases, it’s important to keep in mind that even an inherently distinctive mark can be refused for failing to function as a trademark.

In In re Innovation Ventures, LLC  the Examining Attorney first refused the trademark application on the basis of merely descriptiveness and failure to function as a trademark. However, after further consideration the Examiner withdrew the descriptive refusal and relied on the stronger basis of refusal, failure to act as a source indicator. Slogans can be refused for either descriptiveness or for failing to function as a trademark.  A good example of a slogan that was refused due to descriptiveness is the case of In re Sanda Hosiery Mills, 154 USPQ 631 (TTAB 1967).  In that case, the Board held that the slogan THE BABY BOOTIE SOCK THAT WILL NOT KICK OFF for socks was merely descriptive of the goods and thus, refused registration on the Supplemental Register. For more on descriptive refusals, see our blog post entitled King.com Limited Abandons Its Federal Trademark Application For CANDY, where this subject is discussed in more detail. Since the Examining Attorney withdrew the descriptive refusal, the only issue on appeal was whether the mark HOURS OF ENERGY NOW could function as a trademark and distinguish its goods from others.

The critical inquiry in determining this issue is how will the public perceive the proposed trademark. Relevant factors to consider would be specimens in use and third party use of the relevant advertising phrase. Applicant’s specimens used the phrase Hours Of Energy Now in conjunction with other informational text and in a less prominent position than the trademark 5-Hour Energy. Their packaging contained a listing of the following phrases: Hours of energy now, No crash later, Sugar free and 0 net carbs. This use appears to be merely informational and not capable of registration as a mark. The slogan is not set apart from the other laudatory phrases in anyway and simply describes characteristics of the product. The TTAB found that this usage underscored the informational nature of the trademark.

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This is a question many trademark applicants struggle with once they receive a final refusal from an Examining Attorney. An example of an appropriate time to appeal to the Trademark Trial and Appeal Board (TTAB) is when the Examining Attorney does not submit sufficient evidence into the record to meet its burden of making a prima facie showing that the mark is not registrable under the Rules of the Trademark Manual of Examining Procedure.  Let’s examine the recent case of In re Canada Enterprises LLC, Serial No. 85026331 (September 27, 2013) [not citable as precedent], where the Examiner needed to prove that the proposed mark, JIN-JA for herbal tea was merely descriptive of applicant’s identified goods.

herbal tea-1:6:13The test for determining whether a mark is merely descriptive is whether it immediately conveys information concerning a significant quality, characteristic, function, ingredient, attribute, or feature of the product or service in connection with which it is used or intended to be used. Moreover, it is not necessary for the mark to describe each feature or function, only that it describes a single important attribute of the goods or services.  This analysis must be made in relation to the goods or services identified in the trademark application. Lastly, one must determine the significance the term will have to the average consumer of the goods or services in the context of the specific manner of use. Refusal based on the trademark being merely descriptive of the applicant’s goods is a common ground for refusal. In the case of In re Canada Enterprises LLC, the fact that one of the significant ingredients in the herbal tea was ginger was not contested. Thus, ginger is merely descriptive of the applicant’s tea. The issue that the Board had to determine was whether the applied for mark JIN-JA will be perceived by the average consumer as a misspelling of the phonetic equivalent of the ingredient and descriptive word “ginger”.

In trademark law, there is a general rule that a creative spelling of a mark that is the phonetic equivalent of a “merely descriptive” word for the mark, would be considered descriptive as well, if the average purchaser would perceive it as the descriptive word (TMEP 1209.03(j)). See In re Dean S. Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (where the Board found that the mark URBANHOUZING would be perceived by consumers as the equivalent of the descriptive term Urban Housing). Here, the applicant argued that U.S. consumers would not pronounce the mark JIN-JA as “ginger”, and therefore cannot be the phonetic equivalent of the descriptive word ginger. Applicant argued that the mark was a play on the word “ninja” because the tea’s spicy flavor packs a powerful punch.

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