New York Trademark Attorney Blog

How To Avoid The Supplemental Register If The Mark Consists Of A Surname

Published on: July 26, 2015 | By Nikki Siesel

Under Section 2(e)4 of the Trademark Act a mark that is primarily merely a surname can not be registered on the Principal Register absent a showing of acquired distinctiveness under Section 2(f) of the Trademark Act. See Suisman, Shapiro, Wool, Brennan, Gray & Greenberg P.C. v. Suisman, 80 U.S.P.Q.2d 1072, 2006 WL 387289 (D. Conn. 2006), where the law firm’s name developed secondary meaning and was protectable as a trademark. The reasoning behind the refusal rule for surnames is that the law recognizes that many may share the same last name, and each of whom may have an interest in using their last name as a brand.

See our blog post entitled, Can You Use A Surname (Last Name) As A Trademark? for the five factor test used by the Trademark Trial and Appeal Board (TTAB or Board) for making this determination. A mark that is primarily merely a surname may be registered on the Supplemental Register in an application under Section 1 or Section 44 of the Trademark Act. To avoid the Supplemental Trademark Register, a trademark applicant with a mark containing a surname should consider several options. For more details on the Supplemental Register, see our web page entitled, A Comprehensive Overview Of The Supplemental Register. The Supplemental Register offers only a few benefits of federal trademark registration and it is reserved for descriptive marks.

A combination of two surnames is not primarily merely a surname within the meaning of §2(e)(4), unless evidence is presented showing that the combination would be perceived by the public as merely a surname. See Application of Standard Elektrik Lorenz Aktiengesellschaft, 54 C.C.P.A. 1043, 371 F.2d 870, 152 U.S. P.Q. 563 (1967), where it was held that the proposed mark SCHAUB-LORENZ was not primarily merely a surname. The Court noted that there was no evidence submitted that the mark as a whole was merely a surname. Some evidence was put forth to demonstrate that the individual terms “SCHAUB” and “LORENZ” had surname significance, but the Court insisted that the mark be considered as a whole and not dissected.

A Trademark Victory For The Yankees

Published on: July 3, 2015 | By Nikki Siesel

Since 2009 the Yankees have been fighting to block several trademarks that were intended to parody two of their own trademarks and on May 8, 2015 they succeeded. IET Products and Services Inc. (“Applicant”) filed two applications with the United States Patent & Trademark Office (“USPTO”) seeking to register the slogan THE HOUSE THAT JUICE BUILT for T-shirts, baseball caps, hats, jackets, sweatshirts, and mugs. New York Yankees Partnership (“Opposer” or the “Yankees”) filed an opposition with the Trademark Trial and Appeal Board (“Board”) based on three grounds. The Applicant also attempted to register a design logo that includes a patriotic (red white and blue) top hat similar to the one utilized in the Yankees famous logo, but replaces the baseball bat with a syringe. Compare the Yankees logo USPTO Yankees Trademark with the proposed design mark of the Applicant http://tsdr.uspto.gov/documentviewer.

The first ground asserted by Opposer was that the Applicant’s marks would cause a likelihood of confusion with Opposer’s registration for the mark THE HOUSE THAT RUTH BUILT and with their famous design logo (red white and blue top hat with baseball hat). The second ground was that Applicant’s proposed marks would likely cause dilution of its marks by blurring pursuant to Trademark Act Section 43(c). Lastly the Opposer alleged that the Applicant’s marks would falsely suggest an association with its New York Yankees Major League Baseball Club pursuant to Section 2(a) of the Trademark Act. Regarding the design logo mark, the Applicant’s intent was to communicate that steriods acted as a player on the Yankee Baseball team. The Board dismissed the Applicant’s three trademark applications on the ground that the proposed marks diluted the fame of the Yankee’s registrations.

The Board determined that both marks of the Yankees, THE HOUSE THAT RUTH BUILT and the Yankee design logo of the patriotic top hat with baseball bat were legally famous marks for the purposes of the dilution claim. See New York Yankees Partnership v. IET Products and Services Inc., Opposition No. 91189692 (TTAB May 2015). The Opposer satisfied the more stringent definition of “fame” for dilution purposes as compared to the lesser degree of “fame” required for likelihood of confusion purposes. See In Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012), where the Court of Appeals for the Federal Circuit held that the following elements are necessary to prevail on a claim of dilution by blurring:

(1) The plaintiff must own a famous mark that is distinctive;

(2) The defendant uses the mark in commerce and it allegedly dilutes the plaintiff’s famous mark;

(3) The defendant’s use of its mark must begin after the plaintiff’s mark becomes famous; and

(4) The defendant’s use of its mark is likely to cause dilution by blurring or by tarnishment.

The Federal Circuit Vacates And Remands The Board’s Refusal To Register PRETZEL CRISPS

Published on: June 19, 2015 | By Nikki Siesel

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.

The Fine Line Between Descriptive Trademarks And Generic Terms

Published on: June 4, 2015 | By Nikki Siesel

In a recent precedential decision of the Trademark Trial and Appeal Board (the Board) issued on April 21, 2015 the Board affirmed the Examiner’s refusal to register the mark BUYAUTOPARTS.COM with a disclaimer for “.com”. Meridian Rack & Pinion (the “Applicant”) sought registration on the Supplemental Register for the mark BUYAUTOPARTS.COM for online retail store services featuring auto parts. The Examining Attorney refused registration on the basis that the mark was generic for the services indicated and incapable of distinguishing the Applicant’s services. See In re Meridian Rack & Pinion DBA BUYAUTOPARTS.COM.

Generic terms are common names understood by the relevant consuming public to be the principal category of the goods or services. The Court of Appeals for the Federal Circuit has held that the most significant issue in a generic trademark case is whether the relevant public primarily understands that the proposed mark refers to the genus of the goods or services. See H. Marvin Ginn v. International Association of Fire Chiefs, 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1985). There is a two-part analysis when determining if a mark is generic. The first inquiry is what is the genus of the goods or services (what is the class of goods or services or the principal category) and the second inquiry is does the relevant group of consumers understand that by use of the subject mark it refers to a principal category of goods or services.

To determine the principal class of goods or services one can typically look to the Applicant’s identification of goods or services. See Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991). Here, the Applicant’s identification of goods is “on-line retail store services featuring auto parts”. To better understand the identification utilized by the Applicant one should look to the dictionary definition (which was submitted into the record by the Examining Attorney). The dictionary defines “retailing” as selling of merchandise directly to the consumer.

Precedential Board Decision Refusing To Consider Evidence Of Marketplace Usage

Published on: May 21, 2015 | By Nikki Siesel

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.

SMART ONES Brand (Heinz) challenges SMART BALANCE At The TTAB

Published on: May 8, 2015 | By Nikki Siesel

H.J. Heinz Company and Promark Brands (collectively “Opposers”) commenced opposition proceedings against GFA Brands (the “Applicant”) attempting to block registration of the mark SMART BALANCE based on their registrations for the mark SMART ONES. The Opposers use their mark to brand frozen entrees, frozen desserts and other frozen foods, while the Applicant identified frozen entrees, desserts, and frozen snack foods in their applications for SMART BALANCE. See ProMark Brands Inc. and H.J. Heinz Company v. GFA Brands, Inc., Opposition Nos. 91194974 and 91196358 (March 27, 2015) [precedent]. Applicant did not counterclaim for cancellation of the Opposers’ registrations, therefore priority was not in issue. The primary issue centered on likelihood of confusion. The Board’s analysis focused on the similarities between the marks, the relatedness of the goods and the trade channels, the degree of care made in purchasing decisions, and the fame of Opposers’ mark.

The general rule for comparing the parties’ marks is that the trademarks must be considered in their entireties focusing on the appearance, sound, connotation and commercial impression. Then, it is appropriate to inquire if one element is dominant in creating the commercial impression. It is reasonable to give more or less weight to a particular element of the mark. See our firm site page entitled, Similarities In Trademarks.

In this case, the marks share the term “smart” which is a laudatory term and considered to be descriptive. Descriptive marks are weak by nature and will not be given the same scope of protection as an inherently distinctive mark. To support the position that the term “smart” is descriptive and weak, Applicant introduced into evidence third-party registrations and third party uses of the term “smart” in the food industry. Often the word “smart” is used in marketing food products to mean low calorie, low in fat, heart healthy, nutrient rich, high in fiber, etc.

Recent TTAB Decision Involving Wine And Likelihood of Confusion

Published on: April 26, 2015 | By Nikki Siesel

Kinney Family Vinters LLC doing business as Occasio Winery (“Applicant”) filed a trademark application for the mark APOTHEOSIS for various types of wine. E. & J. Gallo Winery (“Opposer”) filed a Notice of Opposition, claiming prior use of the mark APOTHIC for wine. It was undisputed that the Opposer has used the trademark APOTHIC for wine since 2010. Applicant filed an intent-to-use application on January 18, 2012. Therefore, there was no dispute pertaining to priority rights. The primary issue in this case is likelihood of confusion. See E. & J. Gallo Winery v. Kinney Family Vinters LLC d/b/a Occasio Winery, Opposition No. 91207656 (March 10, 2015) [not precedential].

The two primary considerations in a likelihood of confusion analysis are the similarities of the marks and the relatedness of the goods or services. Opposer bears the burden of establishing likelihood of confusion by a preponderance of the evidence. This standard requires that the evidence be sufficient to determine that the claim is more likely to be true than not. In this case the goods analysis is a simple one as both parties are seeking to use their trademarks in connection with wine. Therefore the goods are identical.

When the goods are identical it is presumed that the trade channels and the classes of purchasers are also identical. See In re Vitterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). This rule applies even when there is no evidence regarding trade channels. The Trademark Trial and Appeal Board (the “Board”) is entitled to rely on this presumption.

The Applicant attempted to introduce evidence that he utilizes a membership system that involves among other things methods of sales different than Opposer’s methods and maintained a sophisticated customer base. However, the Board determined that since this type of information was not included in the identification of the trademark application, it could not be considered. Applicant’s identification includes “wine” without any restrictions or limitations. Since the parties’ goods are identical, it is therefore presumed that the trade channels and classes of consumers are overlapping which leads to another rule that works to the Opposer’s benefit and the applicant’s detriment. Under these circumstances, the degree of similarity of the marks required for a finding of likelihood of confusion is lessened or reduced.

U.S. Supreme Court’s Decision in B&B Hardware, Inc. v. Hargis Industries, Inc.

Published on: April 10, 2015 | By Nikki Siesel

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).

Use In Commerce For Purposes of Priority Under Trademark Law

Published on: March 20, 2015 | By Nikki Siesel

A recent decision of the Trademark Trial and Appeal Board (the “Board”) highlights what the Board looks for when determining which user of the trademark has priority of use. See Parley, LLC v. Vi-Jon, Inc., Cancellation No. 92055751 (February 27, 2015). One common issue often raised in cancellation proceedings is who is the senior user of the trademark. This recent Board decision reminds trademark owners that use in commerce is a legal term that a trademark owner may not be able to satisfy if sales of the goods were token sales made to personal friends or relatives.

In this case, Vi-Jon Inc. (the “Respondent”) owns a registration for the mark DIP-IT in standard characters for nail polish remover. Parley LLC (the “Petitioner”) claims prior use of and ownership of a pending trademark application for an identical mark for identical goods and other related nail products. Petitioner alleges that Respondent’s use of the mark will cause a likelihood of confusion with Petitioner’s mark. Petitioner further alleges that his trademark application was refused based on a likelihood of confusion with Respondent’s registered mark for DIP-IT. Respondent denied the allegations in the Petition, but admitted that its first use of the trademark was on October 25, 2010. In fact, the Respondent was able to prove that he did continuously use the trademark DIP-IT for nail products since October 25, 2010. The pressing issue in this case was could the Petitioner establish a priority use date earlier than October 25, 2010.

Tuan Nguyen M.D. is one of the founders of the Petitioner. He and his family have been in the nail industry since 1996. During the first week of October 2010, the Petitioner alleged that he started to promote its nail products on its website and later promoted DIP-IT goods at trade shows. However, the receipts produced by the Petitioner in connection with participation in a nail tradeshow indicated that the tradeshow occurred in 2011 and not 2010. Additional receipts produced by Petitioner showed sales of DIP-IT nail products in 2011 and 2012.

Can Third Parties Present Evidence To Examiners To Prevent Trademark Registration?

Published on: March 8, 2015 | By Nikki Siesel

We frequently receive inquiries from our clients regarding what if any methods exist to submit evidence to the USPTO to prevent the registration of a third party’s mark. The answer of course is it depends on the type of evidence you wish to submit and the reason for submission. The proper method for submission of evidence is a letter of protest. This is an informal procedure utilized by the United States Patent & Trademark Office (“USPTO”). It enables a third party to bring evidence to the attention of the Examining Attorney during the ex parte examination, if the evidence is relevant to the registration of the mark. Of course, you can wait until publication and file an opposition proceeding as well.

This is a useful procedure if you have a matter that is clear-cut. This procedure will be much less expensive than filing a Notice of Opposition. It is also another bite at the apple. If your letter of protest fails to persuade the Deputy Commissioner or the Examining Attorney, you still can file a Notice of Opposition and make the same arguments to the Trademark Trial and Appeal Board (“TTAB”).

Letters of Protest are first reviewed by the Office of the Deputy Commissioner for Trademark Examination Policy to determine if the evidence (declarations or affidavits) submitted should be given to the Examining Attorney. A small percentage of letters of protest are granted. The Deputy Commissioner will consider the letter of protest and grant it before publication, if the evidence is relevant and supports a reasonable ground for refusal in an ex parte examination. If the application in question already published, then there has to be prima facie evidence supporting a refusal of registration.

Appropriate subjects for a letter of protest include: (1) if the mark in the pending application is generic or descriptive and if this is the case, then the letter must be accompanied by evidence which is objective, independent and factual; (2) if a federally registered mark or prior pending application exists that causes a likelihood of confusion with the mark in the pending application; or (3) if there is pending litigation claiming infringement of the applicant’s mark, then the letter must include a copy of the pleadings. Normally a court proceeding is not considered relevant to the registration of a trademark unless the remedy requested in the court proceeding is cancellation, abandonment or amendment of the application.