New York Trademark Attorney Blog

TTAB Precedential Decision: JAWS Movie Considered “Famous” Under Likelihood Of Confusion

Published on: May 15, 2016 | By Nikki Siesel

Applicant was refused registration for two marks: (1) JAWS in standard characters and (2) JAWS DEVOUR YOUR HUNGER in standard characters. The services identified in the trademark applications were entertainment services, namely the streaming of audiovisual material via an Internet channel providing programming related to cooking. The Examining Attorney refused registration based on Section 2(d) of the Trademark Act, stating that Applicant’s marks too closely resembled Registrant’s mark JAWS for video recordings in all formats all featuring motion pictures. See In re Mr. Recipe, LLC, 118 USPQ2d 1084 (TTAB 2016) [precedential].

As in any likelihood of confusion analysis, the starting point is the similarities of the marks and the relatedness of the goods and services. Two marks will be found to be confusingly similar if there are sufficient similarities in visual appearance, sounds, meanings, and overall commercial impressions. If a consumer believes that there would be a connection between the parties, this will favor finding a likelihood of confusion. The Trademark Trial and Appeal Board (the “Board”) determined the marks weighed in favor of finding likelihood of confusion.

With regard to the services, the Applicant identifies streaming of audiovisual material, but restricts the subject matter to cooking. The Registrant’s goods for motion pictures do not contain a restriction. Therefore, the subject matter of Registrant’s movies could feature cooking. The Examining Attorney introduced 41 third-party registrations offering both video recordings and streaming video services. Since the registrations are based on use in commerce, they carry some probative weight for demonstrating that the goods and services may emanate from the same source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Applicant failed to submit evidence to contradict this point. The Applicant should have introduced evidence pertaining to the number of registrations for motion pictures and the number for services for streaming audiovisual material to demonstrate that there was a minimal overlap.

Precedential TTAB Holding : Parent And Subsidiary Trademark Use

Published on: April 20, 2016 | By Nikki Siesel

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.

Consent Agreements And Their Effectiveness In Overcoming 2(d) Refusals

Published on: April 7, 2016 | By Nikki Siesel

A Consent Agreement is a written agreement between two trademark owners where typically one party agrees that the other party can use and register its mark. It is usually triggered by a refusal issued in an Office Action by the USPTO. See our web page entitled, Resolving Trademark Disputes Without Litigation, for general information regarding how a Consent Agreement can aid in registering a trademark or in facilitating a resolution in a trademark dispute. In a recent case before the Trademark Trial and Appeal Board (the “Board”) it was determined that the parties’ Consent Agreement was not sufficient to avoid a likelihood of confusion between the sources of the trademarks. See In re Bay State Brewing Company, Inc., Serial No. 85826258 (TTAB February 25, 2016) [precedential], where the Board in a precedential decision determined that despite the parties’ Consent Agreement, consumer confusion was likely to occur.

Bay State Brewing Company, Inc. (the “Applicant”) filed an application for the mark TIME TRAVELER BLONDE in standard characters for beer. The Examining Attorney refused the application on the grounds that when the mark TIME TRAVELER BLONDE is used with the Applicant’s goods it causes a likelihood of confusion with a previously registered word mark, TIME TRAVELER for beer, ale, and lager. There was a final refusal issued and an appeal followed.

Under a 2(d) analysis, all the du Pont factors that are relevant to the facts in evidence are considered. The Applicant offered a Consent Agreement for consideration. It is relevant because it relates to the market interface between the Applicant and the Registrant. Regarding the relatedness of the goods, both parties are using the trademarks to brand beer. Therefore the goods are identical with respect to beer. Because the goods are in part identical, the trade channels and classes of consumers are presumed to be the same. Another factor weighing in favor of finding a likelihood of confusion is the condition of sale. Beer is inexpensive and often subject to impulse purchases.

Are There Differences Between Deceptive Trademarks And Deceptively Misdescriptive Marks?

Published on: March 25, 2016 | By Nikki Siesel

Yes there are differences between a refusal issued on deceptive grounds and one issued because the mark is deceptively misdescriptive. Under the Trademark Act, Section 2(a) a mark cannot register on either the Principal or the Supplemental Register if it is held to be deceptive. An example would be a mark that falsely describes the material content of a product. The following marks were held to be deceptive TEXHYDE AND SOFTHIDE for synthetic fabrics and imitation leather material. See Intex Plastics Corporation, 215 U.S.P.Q. 1045 1982 WL 52076 (TTAB 1982). Compare this finding with A.F. Gallun & Sons Corp., where it was held that the trademark COPY CALF was not deceptive for billfolds and wallets even though it was not made of leather because it was found to be a play on words. The rationale was that consumers would understand COPY CALF to be a pun related to the phrase copy cat insinuating the goods were made of imitation material.

The Federal Circuit has enunciated a test utilized to determine if matter is deceptive and thus not registrable at the United States Patent & Trademark Office:

(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?

(2) If it is misdescriptive, then would a potential consumer likely believe that the misdescription actually describes the goods?

To prove this prong of the test an Examining Attorney could produce evidence that consumers regularly encounter goods or services containing the characteristic alleged in the mark. For example, in a case where the mark was LOVEE LAMB for seat covers and the seat covers were not made of lambskin, the Examiner provided evidence that seat covers can be and sometimes are made of lambskin. In that case, the Examiner concluded that the mark LOVEE LAMB was deceptive for seat covers.

A Rare TTAB Reversal Of A Section 2(d) Refusal

Published on: March 11, 2016 | By Nikki Siesel

One of the many grounds an Examining Attorney can cite for a refusal of a trademark application is likelihood of confusion between a proposed trademark and a mark contained either in a pending application or a prior registration. A Section 2(d) Refusal is a trademark refusal based on likelihood of confusion grounds. If dissatisfied with a refusal, an applicant can appeal the decision to the Trademark Trial and Appeal Board (“TTAB” or “Board”) of the United States Patent & Trademark Office (“USPTO”). This is an extremely common ground for refusal, however when appealed often the refusal is affirmed. In the year 2014, there was a 90% affirmance rate for refusals based on likelihood of confusion grounds. Recently, the Board issued a reversal, see In re SDI Petroleum, LLC, Serial No. 86011946 (November 30, 2015).

The applicant in In re SDI Petroleum, LLC was seeking registration of the mark DASH NEIGHBORHOOD for retail store services featuring gasoline. The Examining Attorney refused the application based on prior registrations for the marks DASH IN and D DASH & Design for retail store services featuring convenience store items and gasoline. The registered marks are owned by the same registrant. The applicant requested reconsideration and that was denied and the appeal proceeded.

A likelihood of confusion analysis will consider all relevant facts in evidence and the factors set forth in In re E.I. du Pont de Nemours & Co 476 F.2d 1357, 177 USPQ 563 (CCPA 1976). The Board first reviewed the services. The marks contained services that were in part identical. There were no restrictions in the identification of services pertaining to the channels of trade. Since the identifications were in part identical, it is presumed that the trade channels and classes of consumers are overlapping for those identical services. Therefore, trade channels and services weigh in favor of finding likelihood of confusion.

TTAB Reverses Trademark Refusal And Allows Acronym RBAM To Register

Published on: February 25, 2016 | By Nikki Siesel

A frequently asked question in our practice is, can an acronym register at the United States Patent & Trademark Office (USPTO) and be protected as a federal trademark? The answer is it depends on the circumstances, but under the right circumstances acronyms as well as abbreviations can function as trademarks. See our web page entitled, Can Abbreviations And Acronyms Be protected Under U.S. Trademark Law, for a summary of the treatment of abbreviations, acronyms, and initialism by the USPTO. A recent case from the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) supports the use of acronyms as trademarks as long as they satisfy the standard enunciated in the case of Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293 (CCPA 1956).

See In re Life Cycle Engineering, Inc. Serial No. 85692710 (August 4, 2014) [not precedential], where the Board reversed a refusal of an acronym based on merely descriptiveness. The applicant filed for registration of the acronym RBAM for business management and consultation in the field of engineering and maintenance of industrial, military, and marine equipment in addition to some other related services. The applicant filed a request for reconsideration after the final refusal but that was denied and this appeal followed.

The merely descriptiveness refusal is based on Section 2(e)(1) of the Trademark Act. This section mandates refusal on the Principal Register if the mark immediately conveys information regarding a function, feature, purpose, characteristic, quality, ingredient or use of the goods or services. This determination is a finding of fact and must be based on substantial evidence. An acronym is merely descriptive of the goods and services only if it has become so generally understood by the relevant consumers that it is representative of the descriptive words and it is accepted as substantially synonymous therewith. In other words, a consumer or user of the services when viewing the acronym in connection with the services would recognize it as an abbreviation for the descriptive wording.

Mistakes To Avoid If A Descriptiveness Refusal under Section 2(e)(1) is issued

Published on: February 12, 2016 | By Nikki Siesel

A recent decision from the Trademark Trial and Appeal Board (the “Board”) highlighted several mistakes made by the Applicant when appealing a descriptiveness refusal. See In re Olawale Mafolasire, Serial Nos. 85895010, 85895067, 85895083 and 85895103 (January 12, 2016), where the Board affirmed the Examining Attorney’s refusal to register several applications based on the marks being merely descriptive of the goods. There are several lessons to learn from the Applicant’s arguments to the Board in this case.

The Applicant’s marks included: 1-TAP GIVE1 • 1-TAP GIVE NOW2 • 1-TAP DONATE3 and • 1-TAP DONATE NOW for computer application software for mobile phones and portable mobile devices allowing a user to donate money to a recipient. The four applications were consolidated into one appeal because despite the variations in marks they presented similar questions of law and fact. The general rule that guides every Section 2(e)1 refusal is that a trademark will be considered merely descriptive if it immediately conveys knowledge or information of a quality, purpose, feature, function, or characteristic of the goods or services. This analysis must be conducted in relationship to the goods and services. The Applicant argued that a consumer would not know what the goods were from simply viewing the trademark. This is a common mistake and the Board replied that a determination of descriptiveness is not made in the abstract. The test is whether a consumer who knows what the goods or services are will understand the mark to immediately convey information about a quality, purpose, feature, function, or characteristic of the goods or services.

The Board pointed out that the terms “give”, “donate”, and “now” are descriptive in relationship to the goods and that the single ordinary meaning of these terms will be understood by consumers. In addition, the Examiner produced evidence to show that the term “tap” when used in association with computers and mobile devices means moving a stylus or a finger on a screen of a device equivalent to a mouse click. Therefore, “1-TAP” means to touch a screen one time. The Applicant tried to argue that the term “1-TAP” could have other meanings unrelated to goods and therefore one of the other meanings could apply. However, it is well settled law that as long as one of the meanings of the term is descriptive in relationship to the goods, the term will be held merely descriptive.

How To Evaluate Trademarks: Word, Design And Composite Marks

Published on: January 29, 2016 | By Nikki Siesel

Word Marks

One of the most frequently asked questions in our practice is how do you evaluate trademarks to determine if a likelihood of confusion would result in the marketplace. The applicable rules will vary based on the type or types of marks in question. For example, if both marks are word marks and contain no design elements, then the points of comparison are appearance, sound, meaning, and commercial impression. See our web page entitled Similarities In Trademarks for a detailed description of the analysis for each of the points of comparison for word marks.

The general rule is that similarity as to one factor alone may be enough to support a holding that the marks are confusingly similar. If the mark is a compound trademark (contains multiple words), one must determine if a portion of the mark is dominant in creating the commercial impression. The dominant portion of a mark will be the fanciful, arbitrary, or suggestive portion of the mark and not the descriptive or generic portion. Therefore, descriptive or weak terms are only entitled to a narrow scope of protection. Another view is that the first word in a multiple word mark is dominant. The reasoning is that consumers are more inclined to focus on the first word of a trademark.

Another general rule often cited by Examining Attorneys at the United States Patent & Trademark Office (USPTO) is that by merely adding or deleting a house mark or other term that is suggestive or descriptive of the goods or services, will not avoid a finding that the marks are confusingly similar. In other words, if the dominant portion of both marks is the same, adding or deleting other terms does not obviate the similarity between the marks. There are exceptions to this rule. Here an exception will arise if the marks in their entireties convey significantly different commercial impressions or if the term in common in the two subject marks is weak (due to descriptiveness or dilution) and not likely to be perceived as distinguishing source.

The Origin Of The “Something More” Standard In Trademark Law

Published on: January 15, 2016 | By Nikki Siesel

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.

Relying On Section 44 Of The Trademark Act For A Filing Basis

Published on: January 4, 2016 | By Nikki Siesel

A frequently asked question in our trademark practice is what filing basis should the trademark applicant rely on when filing its trademark application with the United States Patent & Trademark Office. There are five filing bases to choose from to fulfill the statutory requirements when filing a trademark application. For details on the five bases, see our web page entitled, Determining Which Filing Basis Is Appropriate For Your U.S. Trademark Application. This blog post will focus on Section 44 of the Trademark Act that allows a trademark applicant to utilize a previously filed foreign application or a previously issued foreign registration as a filing basis.

Section 44 of the Trademark Act (15 U.S.C. §1126) applies to two types of trademark applications. Section 44(d) pertains to applications relying on foreign applications to secure a priority filing date in the U.S. Section 44(e) is relevant to applications relying on the ownership of a foreign registration for U.S. registration. A trademark applicant asserting 44(d) must assert another basis for registration since 44(d) provides a basis for a receipt of a filing date, but not a basis for publication or registration. For more details on this concept, see the Trademark Manual of Examining Procedure (“TMEP”) §1003.03. If an applicant asserts 44(d) and 44(e) as filing bases the applicant must assert a verified statement that the applicant has a bona fide intention to use the mark in commerce, but use in commerce is not required prior to registration (see TMEP §1009).

If a trademark applicant wishes to rely on Section 44 of the Trademark Act, it is prudent to consult with experienced trademark counsel. This section of the Trademark Act has a tendency to be misunderstood. As stated above Section 44(d) only applies to receiving a priority filing date. Therefore, if you include Section 44(d) as a basis for filing the application, before the application can be approved for publication or registration, the applicant must establish a basis under another section of the Trademark Act. In addition, the U.S. trademark application must be filed within six months of the filing date of the foreign application.