Articles Posted in Trademark Court Decisions

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The United States Court of Appeals for the Federal Circuit had to determine if JobDiva Inc. (“Appellant” or “JobDiva”) used its trademark JOBDIVA in conjunction with the services registered in its registration, “personnel placement and recruitment services; computer services, namely, providing databases featuring recruitment and employment, employment advertising, career information and resources, resume creation, resume transmittals and communication of responses thereto via a global computer network.” The Court started out by citing the general principle that a registrant must use its mark in accordance with goods and services recited in the trademark registration. For more details pertaining to service marks, see our webpage entitled, What Is A Service Mark And How Can It Be Protected?

The Board summarized the offerings of JobDiva as “Software-as-a-Service”. In other words, JobDiva allows users to access its software over the Internet. By hosting the software remotely, there is no need to download the software onto one’s own personal computer. The Board reviewed dictionary definitions for JobDiva’s services and decided that JobDiva had to show that it was finding and placing people in jobs at other companies. There was evidence in the record via testimony from JobDiva’s CEO that JobDiva’s software performed personnel placement and recruitment functions. After JobDiva presented its evidence, the Board held that it only provided software, and not additional personnel placement and recruitment services. The Board demanded that JobDiva prove it placed clients in jobs independent of the activity performed through the software. The Federal Circuit disagreed with the Board’s approach. See In re JobDiva, Inc., 1122 (Fed. Cir. 2016) [precedential].

The Federal Circuit Court pointed out that a trademark that is used with a web-based offering will require careful analysis to determine whether the offering is a product or a service or potentially both a product and a service. In fact, the Court held that the Board erred in understanding the law when requiring that JobDiva produce evidence that it provided personnel placement and recruitment services independent of the offering of its software. The Court further held that even though a service may be performed by a company’s software, the company may still be rendering a service. See also, On-Line Careline Inc. v. Am. OnLine Inc., 229 F.3d 1080 (Fed. Cir. 2000), where this Court held that AOL used its trademark ONLINE TODAY in connection with services, even though the services were provided by software. In that case, the Federal Circuit recognized that software may be used by companies to provide services. Indeed, a trademark applicant may file a trademark application wherein it identifies both goods and services under the same mark. See 37 C.F.R. §2.86.

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The United States Court of Appeals, Federal Circuit issued a ruling on November 14, 2016 that encouraged small business owners all over the country. This was a David and Goliath battle that started in 2009. The Christian Faith Fellowship Church (the “Church” or “Appellant”) takes on Goliath, Adidas AG, the apparel giant (“Adidas” or the “Appellee”). The Church started selling apparel and caps with the mark ADD A ZERO in January 2005 as a campaign to encourage fundraising for the church by increasing the contribution of the donor by adding one zero. In February 2005, the Church made one sale of two caps to an out-of-state resident bearing the mark ADD A ZERO. One month later, the Appellant filed for federal trademark registration with the United States Patent & Trademark Office (“USPTO”). Approximately four years later, Adidas filed a trademark application for the mark ADIZERO for clothing.

The USPTO refused Adidas’ application based on likelihood of confusion grounds citing the Church’s mark ADD A ZERO as a conflict. Adidas filed a petition to cancel with the Trademark Trial and Appeal Board (the “Board”) based on various grounds, one of which was failure to use the mark in commerce prior to filing the trademark application. The Board found in Adidas’ favor holding the one sale made by the Church was de minimus and thus not sufficient to satisfy the “use in commerce” requirement. The Church filed this appeal.

The Board further held that the sale for $38.34 did not effect interstate commerce. The Federal Circuit reversed the Board’s decision, holding that it was in error for the Board to rely on a precedent that required a trademark applicant to engage in commercial activity beyond the Commerce Clause’s threshold. The Lanham Act defines commerce as all activity lawfully regulated by Congress. The Federal Circuit held that Congress did have power to regulate the out-of-state sale of the two caps made by the Church. For a basic understanding of use in commerce, see our webpage entitled, For The Purposes Of Trademark Law What Is Use In Commerce.

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A year ago,  I posted a blog that featured a case that had appealed to the U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit”) and the Court reversed a decision by the Trademark Trial and Appeal Board (“TTAB” or the “Board”). The case of In re St. Helena Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) [precedential], expanded the “something more” standard. I see more and more cases relying on the “something more” standard to prevail in likelihood of confusion disputes. To provide readers with a thorough understanding of this standard, it is necessary to review the cases of In re Coors Brewing Co., 343 F.3d 1340 (Fed. Cir. 2003) and Jacobs v. International Multifoods Corp., 668 F.2d 1234 (CCPA 1982) (the “Jacobs” case).

The Coors Brewing Company (“Coors”) was seeking to register the mark BLUE MOON & Design for a brand of beer. The Examining Attorney refused the trademark application for BLUE MOON & Design on the ground that it would cause a likelihood of confusion with another registered mark for BLUE MOON & Design for restaurant services. The Board upheld the Examiner’s refusal based on the determination that the two marks were similar for likelihood of confusion purposes and that restaurant services and beer were related goods and services.

The Federal Circuit court agreed with the determination that the trademarks were similar with regard to appearance, sound, meaning and commercial impression, but disagreed with the conclusion that restaurant services were related to beer. The Federal Circuit compared the two design marks and found that generally the marks were similar due to the literal portion of the marks being identical “BLUE MOON”. However, there were differences in the design logos that dictated that the finding of similarity between the marks was less important.

The Court in Coors refers to the earlier decision in Jacobs to highlight the ruling that restaurants serving both food and beverages will not be enough to render food and beverages related to restaurant services for purposes of likelihood of confusion. The Jacobs Case held that something more needs to be demonstrated to prove a likelihood of confusion between even identical marks used for food products and restaurant services. Coors offered exceptionally persuasive evidence on the issue of whether beer is related to restaurant services.

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Most readers will know that Pinterest Inc. (“Pinterest”) owns a social media website that allows users to post content by creating pins on their virtual “pinboard” in subject matters such as fashion, food, recipes, travel and home decor. Pinterest maintains trademark registrations for the marks “PINTEREST” and for “PIN” and has used these marks since March of 2010. Pinterest sued Pintrips Inc. (“Pintrips”) for trademark infringement, trademark dilution and other related causes of action. Pintrips uses the terms Pintrips and Pin in connection with its online services for travel planning. Users of Pintrips’ website have a “tripboard” where they can pin agendas for their travels and monitor price information regarding flights. Pintrips possesses common law rights and does not own any federal trademark registrations.

Pintrips filed a trademark application for PINTRIPS at the United States Patent & Trademark Office (USPTO). The matter was been stayed since Pinterest filed an action in the United States District Court Of Northern California for trademark infringement. The Court addressed the following matters first: (1) whether the common law trademark PINTRIPS infringes the registered mark PINTEREST; and whether the term Pin infringes Pinterest’s registered mark PIN and common law mark PIN IT. To make a determination the Court had to first assess the strength of Pinterest’s marks.

Not all trademarks are given the same scope of protection. The amount of protection turns on the type of mark in question. Trademarks fall into five categories. See our webpage entitled, The Importance Of Selecting A Distinctive And Inventive Mark for more information on the five categories of marks. The two strongest groups of trademarks are fanciful and arbitrary marks. These types of trademarks receive the broadest scope of protection. Suggestive marks are considered distinctive marks but receive a lesser amount of protection. Lastly, descriptive marks are considered to be weak trademarks and receive a very narrow scope of protection until they develop secondary meaning.

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In an earlier blog post, I stated that there were two significant decisions on the subject of how to use third-party evidence to demonstrate a crowded field of similar marks for similar goods or services. See our blog post entitled The Federal Circuit Sends A Strong Message To The TTAB, where the case of Juice Generation, Inc. V. GS Enterprises LLC, ____ F.3d____, 2015 WL 4400033 (Fed. Cir. July 20, 2015) was discussed. The second Federal Circuit decision, Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. Millennium Sports, S.L.U., 2015 U.S. App. LEXIS 12456, was issued in August of this year and it instructs the Trademark Trial and Appeal Board (the “Board” or “TTAB”) on when it is appropriate to extend only a narrow scope of protection to a mark based on a crowd field. This case underscores the general rule that not all trademarks are given a broad scope of protection.

In Jack Wolfskin, the Appellant/Applicant applied to register a design mark consisting of a paw print for use with apparel, footwear and accessories. To view Jack Wolfskin’s design mark click on this hyperlink. To view the Appellee’s paw print mark click on this hyperlink. The Appellee opposed the trademark application on the grounds of likelihood of confusion. The TTAB sustained the opposition and refused to register the mark. Jack Wolfskin appealed to the Federal District court and the court agreed with the Appellant that the Board incorrectly found a likelihood of confusion between the two marks. The Board failed to recognize the significant evidence of paw print designs appearing in third-party registrations for use with clothing.

The determination of whether there is a likelihood of confusion between the sources of two marks is a question of law based on the relevant facts. The Du Pont factors that are relevant to the record must be examined. Jack Wolfskin asserted on appeal that the Board’s likelihood of confusion analysis was flawed because there was insufficient evidence to support two important factors: similarities of the marks and the number and nature of similar marks in use.

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The Federal Circuit recently issued two trademark decisions on the subject of third party use evidence and the weight that should be given to a crowded field argument. Both of these cases deserve attention. These decisions will have a significant impact on future decisions rendered by the Trademark Trial and Appeal Board (“TTAB” or the “Board”) and will also impact the decisions of USPTO examining attorneys. This week’s post will feature the case of Juice Generation, Inc. v. GS Enterprises LLC,  ____ F.3d ___, 2015 WL 4400033 (Fed. Cir. July 20, 2015).

Juice Generation, Inc. (“Juice Generation”) applied to the USPTO to register the mark PEACE LOVE AND JUICE (as both a standard character mark & a design mark) for juice bar services. GS Enterprises (“GS”) opposed the application on the ground that it would cause a likelihood of confusion with its family of marks, containing the phrase “PEACE & LOVE” for restaurant services. The Board sustained the opposition and refused to register Juice Generation’s mark and Juice Generation appealed the decision. The Federal Circuit vacated the Board’s decision and remanded the case to the Board so it could consider and evaluate the trademark as a whole because the Court held there was no evidence to suggest it considered the mark in its entirety. Moreover, the Federal Circuit stated consideration must also be given to the third-party use evidence.

The Board evaluated whether there was a likelihood of confusion by looking at the thirteen factors identified in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). See our web page entitled, Likelihood Of Confusion Refusals, 2(d) Refusal, where all thirteen factors are set forth. The Board reviewed the factors and determined that the similarities between the marks, the services, and the trade channels, as well as the similarities of the buyers and the purchasing conditions weighed in favor of finding a likelihood of confusion. Interestingly enough, when reviewing factor six, the number of similar marks in use, the Board held that either this factor was neutral or that it weighed slightly against finding confusion. The Court held that the Board did not sufficiently assess the strengths or weaknesses of GS’s marks and this is directly related to the sixth factor. Further, the Federal Circuit Court held that the Board gave inadequate consideration to Juice Generation’s three-word mark as a whole.

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The Court of Appeals for the Federal Circuit (Federal Circuit) vacated and remanded the matter of Princeton Vanguard, LLC vs. Frito-Lay North America, Inc. No. 2014-1517 (Fed. Cir. May 15, 2015) back to the Trademark Trial and Appeal Board. See our blog post entitled The TTAB Agrees With Frito Lay, Pretzel Crisps Are A Generic Term for a summary of the proceedings at the Trademark Trial and Appeal Board (the “Board”). The Board in a precedential decision cancelled the Supplemental Registration PRETZEL CRISPS finding that the term Pretzel Crisps was generic for pretzel crackers. In vacating and remanding the Board’s refusal to register the mark PRETZEL CRISP, the Federal Circuit is demanding a new decision based on the correct legal standard and application of the evidence in the record.

The Federal Circuit found that the Board applied the incorrect standard for determining genericness. The Board in granting the Petition for Cancellation held the term “Pretzel Crisps” was a compound term not a phrase and analyzed the terms individually. The Board further held that the word “pretzel” was generic for pretzel snacks and the term “crisps” was generic for crackers. The Board stated that it reviewed the entire record, including the surveys, but determined that “controlling” weight should be given to the dictionary definitions, evidence of use by the public, including use by the media and by third-parties in the food industry, and evidence of use by defendant itself.

The Board concluded that its determination would have been the same if it had analyzed PRETZEL CRISPS as a phrase instead of a compound term. The Board explained that the words used together create a meaning understood by the relevant consumer base to mean the generic for pretzel crackers. The Federal Circuit agreed with Princeton Vanguard’s argument that the Board failed to consider all the evidence in the record when it did not give weight to the public’s understanding of the mark in its entirety.

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On March 24, 2015 the U.S. Supreme Court held there could be Trademark Trial and Appeal Board (TTAB) decisions warranting a preclusive effect on judgments by federal district courts, reversing the Eighth Circuit’s decision and remanding the matter for further proceedings. Attorneys and litigants alike were eagerly awaiting this U.S. Supreme Court decision. This decision is significant because it will impact a trademark owner’s decision-making process when determining whether to utilize the administrative dispute resolution tribunal of the United States Patent & Trademark Office (known as the TTAB) or to initiate an action before a federal district court. See our blog post entitled, Should Federal Courts Be Bound By TTAB Rulings, where we review the prior proceedings of B&B Hardware, Inc. v. Hargis Industries, Inc. in detail and provide background information leading up to the U.S. Supreme Court Decision.

A brief summary of the prior proceedings is necessary to fully understand the meaning of the current U.S. Supreme Court decision. B&B Hardware Inc. (“B&B”) filed a Notice of Opposition before the TTAB against Hargis Industries Inc.’s (“Hargis”) trademark application. The TTAB refused to register Hargis’s mark on the grounds of likelihood of confusion. B&B then sued Hargis in federal court and argued that Hargis was precluded from contesting the issue of likelihood of confusion due to the TTAB’s decision. Both the district court and the Eighth Circuit disagreed.

The Eighth Circuit held that preclusion was not justified because the TTAB and the court utilized different factors when analyzing likelihood of confusion. B&B petitioned the U.S. Supreme Court for certiorari and the Supreme Court granted the petition. The U.S. Supreme Court held that if the usages adjudicated by the TTAB were materially the same as the trademark uses before the district court, and the common elements of issue preclusion are satisfied, then preclusion should apply. The Court further held that issue preclusion may apply to an agency decision. The U.S. Supreme Court acknowledged that many TTAB decisions would not satisfy the ordinary elements of issue preclusion, but some may and for those cases preclusion will be implemented.

The Supreme Court relies on the Restatement of Judgments for the rule for implementing issue preclusion. The general rule is that “[w]hen an issue of fact or law is actually litigated and determined by a valid and final judgment, and the determination is essential to the judgment, the determination is conclusive in a subsequent action between the parties, whether on the same or a different claim.” See Restatement (Second) of Judgments §27, p. 250 (1980).

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On December 19, 2014, in a precedential opinion, the U.S. Court of Appeals, for the Federal Circuit overturned the Trademark Trial and Appeal Board’s (the “Board”) decision which had affirmed a Section 2(d) refusal.  See In re St. Helena Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) [precedential]. The Federal Circuit has now clarified its goods and services standard in likelihood of confusion cases.  St. Helena Hospital (“Applicant”) filed a use-based trademark application to register the mark TAKETEN for “health care services, namely evaluating weight and life-style health and implementing weight and life-style health improvement plans in a hospital based residential program.” The Examining Attorney refused to register the Applicant’s mark based on a likelihood of confusion with two previously registered trademarks both owned by Ilsi Research Foundation Corporation (“Registrant”).

The previously registered marks included: (1) TAKE 10! in standard character format for printed manuals, posters, stickers, activity cards and educational worksheets, dealing with physical activity and physical fitness and (2) TAKE 10! a stylized mark for prerecorded videocassettes featuring physical activity and physical fitness promotion programs in addition to the goods identified in the first registration. The Board determined that the two marks were phonetically identical (TAKETEN and TAKE 10!). In addition, it determined the meanings were the same. The phrase means to take a break especially from work. Also, the Board concluded that the commercial impressions were comparable. On all four counts, appearance, sound, meaning, and commercial impression, the Board found that it weighed in favor of finding a likelihood of confusion.

Next the Board examined the parties’ services. The evidence showed that the Applicant’s written materials, forms, worksheets, notebooks, and newsletters were used in connection with health-care services for evaluating weight loss programs and implementing weight and health improvement programs. The Board held that these products were related to the Registrant’s goods and that consumers were likely to believe that the services and products came from the same source or were sponsored by a common company. After weighing the other du Pont factors, the Board affirmed the refusal to register. See In re St. Helena Hospital, Serial No. 85416343 (June 25, 2013).

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As most people know Swatch AG is a Swiss corporation that sells watches, clocks and jewelry. It owns three United States registrations for the trademark SWATCH. It filed a Notice of Opposition against Beehive Wholesale, L.L.C. Beehive is in the wholesale and retail business, selling multiple goods, including watches and watch parts. It sells these watch parts and products under the trademark SWAP. Beehive’s watch line includes interchangeable components, hence the mark SWAP. Swatch AG opposed Beehive’s application on the grounds of mere descriptiveness, likelihood of confusion, and dilution. The Trademark Trial and Appeal Board (“TTAB”) dismissed the opposition on all counts.

-watch-Swatch dissatisfied with the Board’s finding, sued in District Court in Virginia. See Swatch, S.A. v. Beehive Wholesale, L.L.C., Civil Action Number 1:11-cv-434 (E.D. Va. August 16, 2012). Swatch filed this civil action pursuant to §1071(b) of Title 15 of the United States Code.  This section allows a trademark litigant to file a civil action instead of filing an appeal of the TTAB decision with the Federal Circuit. In this type of action, the District Court reviews the matter de novo.

Swatch brought causes of action for trademark infringement and unfair competition under federal and state statutes and also a federal cause of action for dilution. The District Court of Virginia held that the TTAB’s decision was supported by substantial evidence and found no likelihood of confusion or dilution. The TTAB and the District Court held that the marks SWATCH and SWAP were dissimilar in sight, sound and meaning and this was supported by substantial evidence. The evidence relied on were the trademarks, as well as definitions from the dictionary. Swatch argued that the District Court did not give enough weight to the “SWA” portion of the mark. However, this was not a persuasive argument because the analysis requires the fact finder to compare whole words not parts of words. Lastly, The TTAB, as well as the District Court found that there were significant differences in trade channels for the two marks.  Beehive directed its advertising to wholesale customers through magazines and trade show appearances, while Swatch utilized television, social media and billboards primarily to conduct advertising. Swatch was unable to produce a single incident of actual consumer confusion about the origin of the parties. The absence of actual confusion creates an inference that there is no likelihood of confusion between the marks.

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