Westchester Women's Bar Association
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The two parties involved in this matter are Lion Capital, LLP (hereinafter referred to as either “Opposer” or “Registrant”) and Stone Lion Capital Partners, L.P. (hereinafter referred to as the “Applicant”). The Opposer began using the trademarks LION AND LION CAPITAL in the U.S. in 2005 and filed for registration of the marks under Section 44(d) the Trademark Act. The United States Patent & Trademark Office issued registrations for these marks in 2008 and 2009 respectively. The applicant filed an intent-to-use trademark application on August 20, 2008 for the word mark STONE LION CAPITAL. Both parties identified specific financial services in their respective applications. The Applicant disclaimed the term “Capital” in its trademark application. A disclaimer is a statement within the application wherein the Applicant does not claim the exclusive right to use a specific term or element apart from the mark as shown. See Trademark Manual of Examining Procedure (TMEP) §1213. Essentially, no rights are being asserted in the disclaimed term standing alone, but rights are claimed in the composite mark. The Opposer filed an Opposition with the Trademark Trial and Appeal Board (hereinafter “TTAB” or “Board”) claiming a likelihood of confusion will result if the application for STONE LION CAPITAL registers.

The TTAB refused registration of the Applicant’s mark for STONE LION CAPITAL and the Federal Circuit affirmed the decision. See Stone Lion Capital Partners, L.P. v. Lion Capital, LLP, 110 USPQ2d 1157 (Fed. Cir. 2014) [precedential]. The Board conducted the likelihood of confusion analysis according to the thirteen factors set forth in the case In re E.I. du Pont Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). The Applicant’s appeal to the Federal Circuit focused on alleged errors made by the Board with respect to the comparison of the marks, the comparison of the classes of consumers and trade channels, and the level of sophistication of the purchasers of the services (factors 1, 3, & 4). The second factor was not challenged because the TTAB determined that the parties’ respective investment services were legally identical.

Regarding the comparison of the marks, the Board pointed out that the Applicant’s mark STONE LION CAPITAL incorporated the entirety of both of the Registrant’s marks (LION and LION CAPITAL). “LION” was considered the dominant part of the marks. Adding the term “Stone” although a non-descriptive word in relationship to the services, was insufficient to distinguish the trademarks. The Federal Circuit agreed with the Board’s conclusion that the marks were similar in sight, commercial impression, sound, and meaning. This factor favors the Opposer.

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This recent precedent of the TTAB involves concurrent use registration. This trademark concept allows two unrelated trademark owners to co-exist with legally identical trademarks, each having a registration limited to a distinct geographic area. As practitioners we work with clients with concurrent use issues. However, the TTAB does not render many concurrent use decisions and even fewer are precedential. For these reasons, it is important to pay close attention to the Board’s Findings in Boi Na Braza LLC v. Terra Sul Corporation a/k/a Churrascaria Boi Na Brasa, Concurrent Use No. 94002525 March 26, 2014 [precedential].  In 2002 Boi Na Braza Inc. (hereinafter “Plaintiff”) registered two marks for the term BOI NA BRAZA (one word mark, the other a design mark incorporating the term “Boi Na Braza”) for restaurant services. Terra Sul Corporation (hereinafter “Defendant”) petitioned to cancel the word mark for BOI NA BRAZA, based on priority of use of its mark BOI NA BRASA for restaurant services and other related services. The Board granted the cancellation petition. Then, Plaintiff initiated a concurrent use proceeding for a geographically restricted registration.

Concurrent use proceedings are governed by the Trademark Act, Section 2(d) of 15 U.S.C. §1052. There are two conditions precedent to the issuance of concurrent registrations. These two conditions are as follows: (1) the parties must be entitled to concurrent use of the marks in commerce, and (2) there would be no likelihood of confusion, mistake, or deception as to the source of the goods or services in the market place resulting from the continued concurrent use of the marks. See America’s Best Franchising Inc. v. Abbott, 106 USPQ2d 1540 (TTAB 2013). In addition, the Plaintiff’s use must have commenced prior to the filing date of the Defendant’s trademark application.

The first requirement means that one must adopt the trademark in good faith without the knowledge of a prior user in another geographical area, without any confusion as to source and there must be a level of public recognition. See Woman’s World Shops Inc. v. Lane Bryant Inc., 5 USPQ2d 1985 (TTAB 1988). The Plaintiff satisfied this mandate. The second condition precedent requires that there be no likelihood of confusion if a geographic restriction is applied to the registration. To determine this the Board looks to how long the parties coexisted without evidence of actual confusion. Here, there has been 15 years of coexistence without confusion as to source. This weighs in favor of allowing concurrent use. In addition, the Board and Courts have held that with certain types of services, specifically restaurant services, confusion can be avoided with identical trademarks and like services if there are geographic restrictions. See Pinocchio’s Pizza v. Sandra Inc., 11 USPQ2d 1227 (TTAB 1989); Nark Inc. v. Noah’s Inc., 212 USPQ 934 (TTAB 1981). The reasoning is that restaurant services by definition are rendered in a particular geographic area. Therefore, the second requirement was also satisfied.

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On May 2, 2014, The Trademark Trial and Appeal Board (TTAB) rendered this precedential decision.  Inter IKEA Systems B.V. v. Akea, LLC, Opposition No. 91196527 (May 2, 2014) [precedential]. This decision sends a message to trademark owners (even to those owners of “famous” marks). Similar trademarks will be allowed in the marketplace, if there are differences in the goods and services, channels of trade and if consumers are using a moderate degree of care in their purchasing decisions. In this case, Akea, LLC (the “Applicant”) filed an application for the mark AKEA.  The trademark application identified Class 5 for nutritional supplements, herbal supplements, and vitamin and mineral supplements, Class 35 for retail services by direct solicitation by sales agents in the field of nutritional supplements; online retail services for nutritional supplements, and advice in the field of career and business opportunities, and Class 44 for providing advice on lifestyle topics of nutrition, diet, nutritional supplements, and gardening (this list is abbreviated). Inter IKEA Systems B.V. (the “Opposer”) challenged the application on the grounds of likelihood of confusion and dilution.

The Board first reviewed whether there would be a likelihood of confusion on the part of the consumers when encountering the marks. To make this determination, the probative facts in evidence would be considered along with the relevant likelihood of confusion factors. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See our firm page entitled, Simple Trademark Rules and Considerations where the thirteen factors are set forth. See also our blog post entitled, Narrowing Identifications In Your Trademark Application May Bring Favorable Results, where the Board was swayed by the differences in the marks and determined that there was no likelihood of confusion. In this case, The TTAB focused on five factors, similarities between the marks, differences between the goods and services, fame of Opposer’s mark, trade channels of the parties, and the consumer’s degree of care in purchasing decisions.

The Board’s analysis is particularly interesting because it found that Opposer’s trademark for IKEA was famous (for retail store services in the area of furniture, housewares, and home furnishings) under the likelihood of confusion determination, but not famous under the dilution analysis. See our blog post entitled, TTAB Precedent -How Fame Impacts A Likelihood Of Confusion Determination. Keep in mind that under the likelihood of confusion analysis, fame is just one factor among multiple factors to  consider. Regarding the goods and services listed in classes 5 & 44, when balancing the remaining factors, the Opposer’s fame was outweighed by differences in the goods and services, channels of trade, and the degree of care exercised by the Applicant’s and Opposer’s relevant consumers. However, there was a different result for the services listed in International Class 35.

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

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

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

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One week ago in a precedential opinion, the TTAB affirmed the Examining Attorney’s refusal of the mark TOURBILLON & Design filed by The Swatch Group Management Services AG (hereinafter either “Applicant” or “Swatch”). The proposed trademark TOURBILLON & Design was seeking registration for  “jewellery, horological and chronometric instruments” in International Class 14. See In re The Swatch Group Management Services AG, Serial No. 85485359, April 18, 2014 [precedential]. The basis for the refusal was Section 2(e)(1) of the Trademark Act on the ground that the trademark was merely descriptive of its goods. A term is merely descriptive of goods or services if it communicates to consumers an immediate idea of a quality, ingredient, characteristic, feature, purpose, function, or use of the goods or services. See In re Chamber of Commerce of the U.S., Serial No. 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also our blog post entitled King.com Limited Abandons Its Federal Trademark Application For Candy, where we discuss how merely descriptive marks may be registered on the Supplemental Register.

Whether a mark is merely descriptive is determined in relation to the goods and services as identified in the trademark application. A finding that a trademark is merely descriptive is a factual finding. This determination must be based on substantial evidence. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). It is important to keep in mind that the question to ask when evaluating a term for descriptiveness is whether someone who knows what the goods and services are will understand the mark to convey information about the goods and services. See DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). Often, applicants believe that the central inquiry is whether someone presented with the mark could guess what the goods and services are; however this is incorrect.

Swatch’s trademark consisted of the word “Tourbillon” and a design of a tourbillon. The Examining Attorney submitted into evidence an excerpt from wikipedia.org that essentially stated that a “Tourbillon” was an addition to the mechanics of a watch escapement. The Applicant admitted that the term Tourbillon described a mechanism that is part of the escapement found in highly specialized watches. There were also several other descriptions admitted into the record by the Examining Attorney, all consistent with the definition cited in wikipedia.org. Moreover, Applicant voluntarily entered a disclaimer of the exclusive right to use Tourbillon apart from the mark as shown (then later tried to restrict it to only certain goods). This evidence is incredibly persuasive because the applicant by admission acknowledged that the term lacked distinctive value for the goods identified in the trademark application.

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

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

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

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This Trademark Trial and Appeal Board (TTAB) dispute involves the mark SHAPE (in both standard character and stylized format) owned by Weider Publications, LLC (Opposer) and the trademark SHAPES in standard character format owned by D & D Beauty Care, LLC’s (Applicant).   See Weider Publications, LLC v. D & D Beauty Care Company, LLC, 109 USPQ2d 1347 (TTAB 2014) [precedential]. The Applicant attempted to register SHAPES for beauty salon services, day spa services, and health spa services. The Opposer owns several registrations for the mark SHAPE, among them : (1) a magazine relating to physical fitness and exercise, in print format and online; (2) DVDs and CD-Roms featuring audio and video recordings in the areas of health, fitness and nutrition; and (3) apparel. Weider Publications filed a Notice of Opposition on the grounds of priority of use, and likelihood of confusion under Section 2(d) of the Trademark Act, and likelihood of dilution by blurring under Section 43(c) of the Trademark Act. The Applicant did not contest the Opposer’s priority of use. Therefore, the only issue to be determined is likelihood of confusion.

Likelihood of confusion must be proven by the Opposer by a preponderance of the evidence. When one of the parties alleges its trademark is “famous” under the definition of trademark law, often the TTAB will commence its analysis with the fame factor under the du Pont paradigm. Fame has a different definition under likelihood of confusion than it does under dilution. For purposes of likelihood of confusion, fame arises as long as a ” significant portion of the relevant consuming public … recognizes the mark as a source indicator.”  See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed Cir. 2005). Other relevant factors are volume of sales, length of time the trademark has been used in commerce, the reputation of the products and services, advertising expenditures of the goods and/or services sold under the mark, and recognition by independent sources of the goods and/or services identified by the trademark.

The evidence demonstrated that the Opposer had used the trademark SHAPE with its goods and services for over 30 years to identify its print magazine and for 15 years in connection with its online magazine. The print version of SHAPE magazine reached over 1.6 million readers while the online SHAPE magazine received an average of 3 million visitors per month. In addition, there is a newsletter wherein 700,000 readers subscribe. In the end, the audience for SHAPE magazine across all platforms is approximately 6 million per month. Deposition testimony supported these facts. There was also testimony regarding what an advertiser spent in the print version of the magazine for a full page ad – $182,000. SHAPE magazine generated substantial revenue since 2009.  It received multiple awards and widespread media coverage. Regarding the fame determination, the Board concluded that for purposes of likelihood of confusion, the SHAPE marks were famous for its print magazine and online content.

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Trademark practitioners will encounter a 2(d) Refusal (refusal due to a likelihood of confusion with a prior trademark registration) or a Notice of Opposition sooner or later in their practice. The case of Embarcadero Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825 (TTAB 2013) [Precedential], reminds practitioners and applicants alike that the outcome of a 2(d) refusal or of an Opposition may be favorable if the Applicant is able to narrow its identification in such a manner as to avoid a likelihood of confusion with a prior registered mark or a senior user. A defendant may assert an affirmative defense by moving to restrict its goods and services.

Here, the applicant filed three applications for RSTUDIO in standard character format in International Classes 9, 41, & 42, for the following goods and services: computer software for statistical computing; computer software for software applications development; providing training in the use of computer software; providing training in the use of statistical methods; application service provider, computer software consultation, design and development of software; and technical support services. The Opposer filed a Notice of Opposition based on the grounds of priority and likelihood of confusion. Its registration is for ER/STUDIO in standard character format for entity relationship modeling software for SQL databases.

Before discovery closed, Applicant filed a motion to amend the application to narrow his identifications (limit his description of the goods and services). Under the Lanham Act Section 18, the Board is given equitable power to restrict the goods or services in a trademark application or registration. See 15 U.S.C. §1068, and TBMP 311.02(b). The current description of the Applicant’s goods is relatively broad.  From a reading of the goods in International Class 9 it is presumed that the software incorporates all types of statistical computing software. Similarly the software design, development and training services are broad enough to include all types of software design, development and training, including those described in Opposer’s registration. However, based on the proposed modification to the identification, Applicant will narrow the descriptions to the field of “advanced” statistical software using the “R” computer software language.

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One reoccurring question we receive in our practice is what constitutes “use in commerce” for a service mark. This question sounds simple enough, but often it involves a complicated analysis that is fact dependent. In a recent case before the Trademark Trial and Appeal Board (TTAB), David Couture (Couture), the owner of U.S. Registration No. 3560701 for the mark PLAYDOM misunderstood the law and what constituted use in commerce and as a result his trademark was cancelled. See Playdom, Inc. v. Couture, Cancellation No. 92051115 (February 3, 2014) [not precedential].

Couture applied for the mark PLAYDOM in standard character format on May 30, 2008. It registered on January 13, 2009. Couture filed a use-based application for entertainment and educational services with regard to script development for television and film production. Couture alleged that he first used the mark on May 30, 2008. Section 45 of the Trademark Act, 15 U.S.C. §1127 states that a service mark is used in commerce when the mark is used or displayed in the sale or advertising of the services and the services are rendered in commerce.

Unfortunately for Couture, Walt Disney & Co. (Disney) purchased a game development company known as Playdom. Disney was looking to expand its gaming presence online with social networks such as Facebook. On February 9, 2009 the company purchased by Disney filed an application for the mark PLAYDOM in International Classes 9, 41, 42, & 45. The application was refused because of a likelihood of confusion with Couture’s U.S. Registration for PLAYDOM. Soon thereafter, Playdom Inc. filed a cancellation action with the TTAB based on fraud on the PTO. To support its case the Petitioner (Playdom Inc.) submitted a letter written by Couture that essentially states that Couture had been advertising his services since the date of his filing, but he had not rendered the services identified in U.S. Registration No. 3560701. Petitioner argued that if this was the case, then the information contained in the trademark application was false.

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In a precedential decision released on February 28, 2014, the TTAB (Trademark Trial and Appeal Board) granted the petition for cancellation of Frito-Lay Inc. (“Frito-Lay”) and the Board declared the term “Pretzel Crisps” was generic for pretzel crackers. In turn, the Supplemental Registration for Pretzel Crisps owned by Princeton Vanguard, LLC (“Princeton”) was cancelled. Frito-Lay North America Inc., v. Princeton Vanguard, LLC, 109 USPQ2d 1949 (TTAB 2014) [precedential]. Princeton filed an application for Pretzel Crisps for pretzel crackers on the Supplemental Register. The registration was issued on July 26, 2005 with a disclaimer of the exclusive right to use the term “pretzel” apart from the mark as shown. The United States Patent & Trademark Office (USPTO) allows trademarks to be registered on both the Principal and the Supplemental Register. The Principal Register is reserved for marks that are inherently distinctive and unique indicators of a single source of goods and/or services. The Supplemental Register maintains marks that are descriptive and at the time of registration are unable to indicate a single source of goods and/or services. Trademarks on the Principal Register are afforded the full benefits of the trademark laws, in contrast to marks on the Supplemental Register that receive partial advantages. See our webpage entitled Filing Your Mark On the Principal Register And Supplemental Register for more details on the two registers.

Trademarks on the Supplemental Register do receive certain key benefits. These benefits include being able to use the ® symbol in conjunction with the mark once it is registered, USPTO Examiners protecting it against potential registrations of confusingly similar marks under the Trademark Act Section 2(d), filing an infringement action in federal court, and lastly the Supplemental Registration can act as the basis for a foreign filing. In addition, if the mark acquires secondary meaning, the registrant can file a new application to register on the Principal Register. The registrant can demonstrate secondary meaning in various different manners, however continuous use of the trademark in commerce with the goods or services identified in the application for approximately five years is generally sufficient.

Several years after the Supplemental Registration for Pretzel Crisps issued, Princeton filed a trademark application for Pretzel Crisps on the Principal Register claiming acquired distinctiveness for the term as a whole. Frito Lay filed an opposition to this application in July 2010. Then in September 2010, Frito Lay filed a cancellation petition against the Supplemental Registration for Pretzel Crisps. The TTAB consolidated the cases.

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