Westchester Women's Bar Association
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Thor Tech, Inc. (“Applicant”) sought to register the mark TERRAIN, in standard character form for “recreational vehicles, namely, towable trailers”. The Examining Attorney refused to register Applicant’s mark based on a likelihood of confusion with General Motors’ (“Registrant”) registration for the mark TERRAIN for “motor vehicles, namely, trucks”. The Trademark Trial and Appeal Board (the “Board”) reversed the refusal to register. See In re Thor Tech, Inc., Serial No. 85667188 (January 26, 2015) [precedential]. To learn about the basics of these types of trademark refusals, see our webpage entitled, Likelihood Of Confusion Refusals -2(d) Refusals.

This precedential decision is significant for several reasons. The first reason is that even though the marks were identical for complementary goods, the Board held that there was not a likelihood of confusion between the marks. The second important factor is that often evidence of third-party registrations is not given great weight in a likelihood of confusion analysis. Here, the Applicant managed to impress the Board with its third-party registrations, so much so that the Board reversed the refusal to register the mark. Lastly, this case is noteworthy because the Board overwhelmingly affirms refusals to register based on findings of likelihood of confusion. In 2014, the Board affirmed about 90% of the Examiners 2(d) refusals. Yet, here the Board reversed the refusal even though the marks were identical and the uses of the goods were complementary.

Once the Board concluded that the parties’ marks were identical, it moved on to consider the similarities between the goods. Applicant’s goods are recreational vehicles defined as large vehicles typically containing a bathroom, kitchen, and beds for use during travel. Applicant’s vehicles are also towable which means that attaching them to a truck, van or car can transport the trailers. Registrant’s goods are trucks. The Examining Attorney submitted into evidence two third-party registrations that showed that trucks and trailers may emanate from the same source.

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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 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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At the end of 2014, the Trademark Trial and Appeal Board (the “Board” or “TTAB”) issued a surprising decision (albeit non-precedential), finally questioning the rule that bars all titles of single creative works from receiving federal trademark registration. See In re King Productions, Inc. Serial No. 76703458 (November 19, 2014) [not precedential]. King Productions, Inc. (“Applicant”) was seeking registration of the phrase, ROCK YOUR BODY on the principal register for DVDS and books in the fields of dance, exercise and fitness. The Examining Attorney refused registration on the basis that the term did not function as a trademark under Sections 1, 2, & 45 of the Trademark Act. The Examiner stated that the specimens of record showed that the proposed mark was merely the title of a single creative work (the title of a book and a DVD). When the refusal was made final the Applicant appealed to the TTAB.

For decades, the USPTO has held that the title of a single work such as a book, DVD, movie or play is not considered a trademark and is not capable of registration. See Herbko Int’l Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002). Although, titles of a series of works can be registered. The reasoning for this is because a series provides a trademark function in that the series indicates that each work comes from the same source. Keep in mind that each work in the series may have its own title separate from the trademark for the series. The name of the series is not descriptive of any one work.

The Board noted that titles of single works have been refused under sections 1, 2, & 45 of the Trademark Act for some time now. However, the Board declared that the proper basis for refusal of titles of single works should be based on Section 2(e)(1) of the Trademark Act. This basis is appropriate because the title describes the work. The Board’s assertion and change of the basis for refusal of a title of a single work is significant because an applicant can now overcome the refusal by showing the mark has acquired distinctiveness under Section 2(f) of the Trademark Act. An applicant would have to show that the relevant public understands that the primary significance of the mark is to indicate or identify the source of the product or service rather than the product itself. If the public views the mark merely as a title of a single work, then it has not acquired distinctiveness or secondary meaning. Although, the Board opened the door to overcome a potential refusal under Section 2(e)(1), the applicant will have a difficult challenge to produce evidence of secondary meaning.

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The most popular change at the United States Patent & Trademark Office (“USPTO”) is the fee reductions for trademark applications and trademark renewals. These reductions become effective on January 17, 2015. The Trademark Electronic Application System (“TEAS”) at the USPTO allows for two types of trademark application filings. One is the TEAS Plus application which requires the applicant to utilize an identification in the Trademark Manual of Acceptable Identifications and to provide very specific information in its filing. It is less expensive because it requires less of the Examining Attorney’s time. Further information regarding the TEAS Plus application can be found at Trademark Manual of Examining Procedure (“TMEP”) §819.01.

The other is a TEAS application that permits the applicant to create its own identification for its goods or services in free text and allows more general information in the trademark application. However, the applicant must provide an email address and authorize the USPTO to send email correspondence relating to the trademark application for the duration of the application process. In addition, the applicant has to agree to electronically file through TEAS for certain submissions, such as voluntary amendments, responses to office actions (except notices of appeal), requests for reconsideration of final Office Actions, appointment or revocation of a power of attorney, and appointment or revocation of a domestic representative. The USPTO is referring to this filing option as TEAS Reduced Fee (TEAS RF) application.

An applicant that files a TEAS RF application, but does not satisfy the requirements will be mandated to submit an additional processing fee of $50.00 per international class of goods or services. The following types of trademark applications are eligible for TEAS RF: (1) Trademark/Service Mark Application, Principal Register; (2) Trademark/Service Mark Application, Supplemental Register; (3) Certification Mark Application; (4) Collective Membership Mark Application; (5) Collective Trademark/Service Mark Application, and (6) Transformation Requests. For more details see the USPTO’s webpage on the Reduced Fee initiative.

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McSweet LLC (“Applicant”) filed two trademark applications to register the mark MCSWEET for “pickled gourmet vegetables, namely, pickled cocktail onions, pickled garlic, and pickled, marinated olive medley” and “pickled asparagus.” (the amended identification). McDonald’s Corporation (“Opposer”) opposed both trademark applications on the grounds of likelihood of confusion, dilution, and lack of ownership. Opposer based its oppositions on the allegations that it owns a family of trademarks that include the prefix “MC” followed by another term that is either descriptive or generic. McDonald’s also alleged that its “MCDONALD’S” mark and its family of “MC” marks are famous. Some of its “MC” registrations include: MC for restaurant services; MCDONALD’S for restaurant services; MC CHICKEN; MC DOUBLE; MCRIB; MCMUFFIN; MCNUGGETS; MCFLURRY; MCGRIDDLES; MCCAFE; and MCSKILLET for various food products and beverages. See McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268 (TTAB 2014) [precedential].

In terms of priority, Opposer has been using the mark MCDONALD’S for restaurant services since 1955. In addition, the Opposer has been using variations of the “MC” formative mark in connection with food, restaurant services, and merchandising since 1973. Applicant has been using its mark MCSWEET for pickled vegetables since 2006 and is now seeking to expand the use of the mark on the goods listed above. Based on these facts, priority was not at issue in the proceedings. However, the Trademark Trial and Appeal Board (the “Board”) had to determine if the Opposer owned a “family of marks” and if a family of marks did exist was that family of marks legally “famous”.

The Federal Circuit has defined a family of marks as a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Opposer currently uses all of the registrations listed above in paragraph one. According to witnesses, the Opposer’s efforts to establish a family of marks has been so successful that consumers use the MC prefix to refer to all of the Opposer’s food and beverage products. In addition, the Opposer has invested substantial resources in promoting the MC formative marks. McDonald’s operates 14,000 restaurants across the United States that collectively serve 26 million people. The Board concluded that the Opposer owns a family of marks consisting of the prefix “MC” and this weighs in favor of finding a likelihood of confusion.

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Happy Green Company LLC, (“Applicant”) filed a trademark application with the United States Patent and Trademark Office (“USPTO”) for the mark Anthō for goods in International Class 3 including, but not limited to beauty products and cosmetics; skin care preparations; and perfumes and colognes. Anthropologie, Inc. and U.O. Merchandise, Inc. (“Opposers”) opposed the registration with the Trademark Trial and Appeal Board (“TTAB”) based on likelihood of confusion grounds in connection with their two marks (registrations). These marks include: (1) ANTHROPOLOGIE for retail department store services, clothing, handbags, and clothing and fashion accessories and (2) ANTHRO for customer affinity loyalty services. Each of the Opposers established its standing for the proceeding. See  Anthropologie, Inc. and Urban Outfitters Wholesale, Inc. v. Happy Green Company LLC, Opposition No. 91204412 (Oct. 21, 2014) [not precedential].

Regarding the services rendered under the mark ANTHROPOLOGIE, the record shows that identical types of goods are sold through the retail store including moisturizers, perfumes and colognes, and bath salts, but under third-party manufacturers. In connection with the trademark ANTHRO the record demonstrated that it is used as a nickname and/or an abbreviation for ANTHROPOLOGIE, in addition to being used for customer loyalty programs. Customers receive a card branded with the name ANTHRO that they present at check out. This card keeps track of the customers’ purchases and allows them to return items without a receipt. There have been 2.3 million cards issued since the inception of the program. Evidence showed that ANTHRO is used on blogs and on social media platforms by consumers to refer to Opposer and its goods and services. Opposers also presented evidence showing common law rights for the mark ANTHRO for administering a customer service program in connection with retail services for a department store featuring cosmetics and beauty products.

For purposes of likelihood of confusion, the Board compared the marks Anthō and ANTHRO. Neither party submitted evidence of meaning for their respective marks therefore, it was not considered. However, based on the similarity of the appearance and sound alone, the Board held that the marks were very similar. The first Du pont factor favors the Opposers. Next, the Board considered the Applicant’s goods and the Opposers’ services. It is well settled law that goods and services need not be identical or even competitive to support a finding of likelihood of confusion. The goods and services only need to be related in some way or the conditions or the activities surrounding the marketing of the goods or services lead to the same consumers encountering the marks and due to the similarities between the marks, consumers could have the mistaken belief the marks originated from the same source.

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United Trademark Holdings, Inc. (Applicant) filed an application for the mark ZOMBIE CINDERELLA in standard character format for dolls. The Examining Attorney refused registration pursuant to § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) based on a likelihood of confusion with the registration, WALT DISNEY’S CINDERELLA & Design owned by Disney Enterprises Inc. (Registrant). The Disney mark is registered in multiple international classes, most relevant for this analysis is International Class 28 for “toys, namely, plush toys, action figures, dolls, soft sculpture toys, and stuffed toys”.  After a final refusal Applicant appealed to the Trademark Trial and Appeal Board (the “Board”). See In re United Trademark Holdings, Inc., Serial No. 85706113 (October 9, 2014).

The Board noted that the goods of the Applicant and the Registrant were identical. Both parties used their trademark to brand dolls. Since the goods were identical the Board was entitled to presume that the Applicant’s and the Registrant’s goods moved in the same channels of trade and were offered to the same classes of consumers. This presumption is warranted even though there was no evidence presented by the parties in connection with trade channels. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). For information on the goods and services analysis see our webpage entitled, The Importance Of The Relatedness Of The Goods Or Services.

The Board then moved on to consider the similarities between the marks. For more details on the similarity analysis see our web page entitled Similarities In Trademarks. The Board reminded the parties of several general rules before analyzing the specific features of the marks. Since the goods are identical, the degree of similarity required to find a likelihood of confusion is not as great as where there are differences between the goods or services. If trademarks share common terms, then the additions or deletions made to the mark may be enough to avoid a likelihood of confusion. This may be the case, if the modifications to the mark convey a different commercial impression or if consumers are not likely to view the common term as distinguishing the source because the common term is descriptive or diluted. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011), where it was held that CAPITAL CITY BANK would not be confused with CITIBANK due to the common use of “City Bank” in the banking industry.

Regarding the specific facts, the Board agreed with the Applicant’s argument that the term “Cinderella” is diluted by third party use and is commercially weak. Applicant bases its theory on the fact that the story of “Cinderella” is a well-known narrative going back to 1697 with a famous fairytale character of Cinderella. Upon hearing the name Cinderella consumers expect a product associated with the character Cinderella. The evidence showed that there was widespread recognition for the character Cinderella. The record demonstrated that based on third-party use of the term “Cinderella”, the mark will be entitled to a limited scope of protection. Applicant made of record multiple third-party registrations using the term “Cinderella” (but mostly for unrelated goods) and nine marketplace uses of the mark CINDERELLA in connection with dolls. Applicant’s evidence demonstrated that the term “Cinderella” was weak and diluted for dolls depicting the character Cinderella.

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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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The Trademark Trial and Appeal Board (hereinafter the “Board”) rendered an interesting decision involving Section 2(a) of the Trademark Act and a famous pop singer’s clothing line. Gwen Stefani, one of the judges on the popular T.V. show The Voice has been battling a refusal issued by the United States Patent & Trademark Office (USPTO). Gwen Stefani’s company (the Applicant) appealed the refusal and twice sought reconsideration. After the Examining Attorney denied both requests for reconsideration, the appeal followed. The Applicant applied for the mark L.A.M.B. in International Class 25 for different apparel items, footwear and headwear. The refusal was based on the ground that the mark is deceptive for the identified goods. The Examiner’s argument is that consumers would be deceived into thinking that the clothes are made out of lambskin. See In re LAMB-GRS LLC, Serial No. 77756492 (September 30, 2014).

Pursuant to Section 2(a) of the Trademark Act, an application must be refused if a mark is deceptive of a characteristic or feature of the identified goods or services. The test for determining if a mark is deceptive has been delineated in In re Budge, 857 F.2d 773, 8 U.S.P.Q.2d 1259, 1260 (Fed. Cir. 1988), aff’d 8 U.S.P.Q.2d 1790 (TTAB 1987). The areas of inquiry are as follows:

  • Is the term misdescriptive of the character, quality, function, composition, or use of the goods?
  • If so are relevant consumers likely to believe that the misdescription actually describes the goods?
  • If so is the misdescription likely to affect a significant portion of the prospective purchasers’ decision to purchase the goods?

Section 2(a) bars registration on the Principal Register and the Supplemental Register. Therefore, continuous and long use of the mark in commerce cannot overcome the refusal on that basis alone. However, evidence of duration of use and recognition by consumers can be considered when evaluating the first two prongs of the test. This type of evidence was considered in the case of In re Woolrich Woolen Mills, Inc., 13 USPQ2d 1235 (1989). The applicant sought registration for the mark WOOLRICH for clothes not made of wool. In this case, the mark was found not to be deceptive since there was strong consumer and trade recognition of the term WOOLRICH as a trademark due to the duration of the applicant’s use.

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