Westchester Women's Bar Association
NYSBA

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The Trademark Trial and Appeal Board (the “Board”) issued a precedential decision last week that will be helpful to applicants submitting either a Consent Agreement or a Coexistence Agreement to overcome a likelihood of confusion refusal. Dare Foods Inc. filed an application to register the proposed mark RAINCOAST DIP in standard characters with a disclaimer for “DIP” for snack foods. The Examining Attorney refused the application based on a registration for RAINCOAST TRADING, in standard characters with a disclaimer for “TRADING” for various seafood products.

The Board reversed the refusal stating, “clothed consent agreements where competitors have clearly thought out their commercial interests should be given great weight, and the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.” See In re Dare Foods Inc., 2022 USPQ2d 291 (TTAB 2022) [precedential]; Four Seasons Hotels, 26 USPQ2d at 1073 (quoting In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985)); see also DuPont, 177 USPQ at 568; Am. Cruise Lines, 128 USPQ2d at 1163. See the firm’s blog post entitled, A Precedential Board Decision Giving Great Weight To Consent Agreements, where the Board again reversed a refusal to register while giving substantial weight to the consent agreement entered into between the parties. The Board for In re Dare Foods Inc., concluded a detailed, “clothed” consent agreement will play a dominant role in a likelihood of confusion analysis.

In this case, the Board reviewed the following DuPont factors, similarities of the marks, similarities of the goods, the trade channels and classes of consumers, and the market interface and co-existence agreement. Regarding the marks, it was a simple task. Both applicant’s and registrant’s mark use the identical term RAINCOAST, and both marks contain a descriptive element that was disclaimed in each respective mark. Not only is the dominant element shared, but RAINCOAST appears as the first element in both marks. The marks in their entireties are similar.

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In two recent precedential decisions of the Trademark Trial and Appeal Board (the “Board”), it was determined that the proposed trademark CLEAR for footwear, lingerie, and other related clothing items and for purses and other types of handbags was deceptively misdescriptive of the goods. See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478 (TTAB 2021) [precedential] and In re Dolce Vita Footwear, Inc., 2021 USPQ2d 479 (TTAB 2021) [precedential]. See our webpage entitled, Trademark Application Refusal Based On Descriptiveness and Deceptiveness, for more details on deceptively misdescriptive refusals. It should be noted that the Examining Attorney first refused the application based on the grounds of the mark being merely descriptive of the goods. Once the Applicant raised the issue that its goods did not have features that could be described as clear or transparent, the Examining Attorney then refused the application on the alternative ground that the proposed mark is deceptively descriptive of the goods. In the final office action, both 2(e)1 refusals were maintained, and the id was amended to exclude “transparent goods”. The Applicant filed an appeal.

It is important to keep in mind that the Examining Attorney’s primary objective is to protect the public from confusion or deception. Based on use of Dolce Vita Footwear Inc.’s (Applicant’s) proposed trademark CLEAR for apparel, bags, and footwear the Examining Attorney argued that the public will believe that the branded goods are transparent or clear. The determination that the mark is misdescriptive is based on evidence showing it is common in the fashion industry to have clear footwear, clothing, and bags even though Applicant amended the id to exclude transparent goods.

The Examining Attorney submitted definitions for the term “Clear”, screenshots from the Applicant’s website showing descriptive use of the word “Clear”, and webpages from competitors’ websites in the fashion industry. These screenshots demonstrated use of the term “Clear” in conjunction with features such as transparent straps or heels on footwear or features of lingerie, skirts, dresses or bags. For the second prong of the test, the “reasonably prudent consumer” test is applied.

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The Trademark Modernization Act (“TMA”) was enacted on December 27, 2020, and most rules go into effect on December 27, 2021. Many believe that the Trademark Act of 1946 needed this update. Two of the most significant rule changes include creating ex parte procedures for petitioning the Director for expungement and reexamination of registrations that have allegedly failed to meet the mandatory “use in commerce” requirement. A third party can initiate either of the two new proceedings or the Director can initiate the proceedings. The fee set for filing a Petition to the Director for either expungement or reexamination is $400 per class and the Petitions should be filed through TEAS. Once filed the Petitions will be uploaded into the registration record and visible in TSDR.

The USPTO will send an email notification to the Registrant or Registrant’s attorney once the Petition is filed. The Director will then determine if the Petition has made a prima facie case of nonuse and if so, institute one of the two proceedings. If this occurs the Petitioner will have no further involvement. This determination is final and non-reviewable. The proceeding is set forth in an Office Action. The Office Action must be responded to within three months but the Registrant may extend the response time for one additional month for a fee of $125.

The Registrant will need to provide evidence of use to rebut the prima facie case of nonuse. Documentary evidence of use will most probably take the form of specimens of use. However, if the issue focuses on an Allegation of Use or Statement of Use from years ago, and the specimen of use is no longer available, then declarations can be submitted to explain how the mark was used at the relevant time.

Evidence will vary based on whether the proceeding is for reexamination or expungement. Reexamination focuses on registrations that alleged use of the mark. The Petitioner or the Director will submit evidence that the mark was not in use on certain dates either as of the date the application was filed or as of the date the Statement of Use was filed. The Registrant must show use of the mark with the goods or services before the relevant date. The Petition must be filed before the fifth anniversary of the registration.

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If you are an owner of either a supplemental registration or of common law rights, and you are challenging another party before the TTAB based on priority and likelihood of confusion, you would face similar hurdles. Only a trademark registration on the principal register will receive all the rights provided by the Trademark Act of 1946. A Principal Registration is entitled to: (1) constructive notice to the public of the registrants claim of ownership; (2) a legal presumption of ownership of the mark and of the exclusive rights to use the mark in commerce for the goods and services listed in the registration; (3) a date of constructive use of the mark as of the filing date of the application; (4) the ability to bring an action concerning the mark in federal court and to rely on the presumptions of ownership and exclusive right to use; and (5) acquiring “incontestable” status for the goods and services identified in the application, subject to certain statutory defenses.

There are additional rights granted to marks on the Principal Register, but the ones listed above apply only to marks on the principal register and not to marks on the supplemental register. The additional rights which apply both to the principal and supplemental register include: (1) use of the registration symbol ® with the mark; (2) filing suit in federal court for infringement, but note that the owner of the supplemental registration must prove it owns a proprietary interest in the mark by showing the mark has acquired secondary meaning before the adverse party’s priority date; (3) protection against registration of a confusingly similar mark under the Trademark Act, but marks on the principal register will receive broad protection while marks on the supplemental register will generally receive narrow protection based on how descriptive the mark is for the identified goods and services; and (4) the registration can be used as a basis for filing in a foreign country under the Paris Convention and other international agreements.

Regarding challenges before the Board (aka TTAB), the owner of a supplemental registration will have standing to oppose, but will still have to prove secondary meaning/acquired distinctiveness. Since marks on the supplemental register are presumed to be merely descriptive, evidence of secondary meaning must be submitted to the TTAB. If such evidence is not submitted, the Board will find against the owner of the supplemental registration and dismiss the notice of opposition with prejudice. See Otter Products LLC, v. BaseOneLabs LLC, 105 USPQ2d 1252 (TTAB 2012).

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Recently I had the opportunity to virtually meet with David Gooder, the Commissioner for Trademarks of the United States Patent & Trademark Office. It was a unique opportunity and it afforded me the time to discuss an issue with the Commissioner that I believe has caused many of my clients to misunderstand the Examining Attorneys’ role at the Trademark Office. There is a lack of information on the USPTO website pertaining to common law rights. I find myself time and time again explaining to my clients why it is so important to conduct full U.S. clearance searches (comprehensive trademark research) in advance of filing a trademark application.

Many prospective trademark applicants wrongly assume that the Examining Attorneys at the Trademark Office when conducting trademark searches for the applicant’s proposed mark will search common law rights (use rights/unregistered rights) in addition to the registered and pending marks. This is not true. The Examining Attorneys at the USPTO do not have the resources to conduct common law searching. Therefore, if an applicant does not conduct comprehensive research in advance of the trademark filing, it’s possible to invest the time and resources to register one’s mark on the federal level, but still be infringing on a third party’s trademark rights and thus be vulnerable to being a named defendant in litigation.

The United States has a first to use trademark system, not a first to file system like many other countries. This means that common law rights (use rights) matter and cannot be ignored. If a third party possesses senior common law rights, a proceeding can be brought at the Trademark Trial and Appeal Board to either oppose a pending application during the publication period or cancel a trademark registration. The owner of common law rights may NOT have filed or registered its trademark but has simply used the mark in commerce before the applicant filed its trademark application with the United States Patent & Trademark Office.

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In a recent reversal by the Trademark Trial and Appeal Board (the “Board” or the “TTAB”),  In re Just a Pinch Recipe Club, LLC, Serial No. 88463841 (April 15, 2021) [not precedential], it becomes evident that just because two trademarks share terms, this may not be enough to find a likelihood of confusion. There must be an evaluation of whether the shared terms are distinctive terms and thus strong or highly suggestive or descriptive terms and therefore weak. Assuming that one of the marks contains additional terms (other than the shared terms) that consumers can rely on to distinguish the goods, then the fact that the marks share identical terms may not be enough to support a 2(d) refusal. The applicant in In re Just a Pinch Recipe Club, LLC, was seeking to register the standard character mark PINCH IT! RECIPE BOX (RECIPE disclaimed), and the registrant’s mark was THE RECIPE BOX (RECIPE was disclaimed and the mark was in standard characters). Both parties’ goods were for mobile phone application software for managing recipes. There was no dispute that the goods were related, and the TTAB in the end determined that the goods were either legally identical or closely related.

This case turned on the first (similarities and dissimilarities of the marks) and sixth (number and nature of similar marks in use on similar goods) DuPont factors. When assessing whether DuPont factor one weighs in favor of finding a likelihood of confusion the marks in their entireties must be evaluated. This means examining the similarities in the appearance, sound, meaning and commercial impression of the marks. Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018). This test focuses on the recollection of the average customer, who retains a general rather than specific impression of marks. In re i.am.symbolic, llc, 127 USPQ2d 1627, 1630 (TTAB 2018).

An important consideration for the comparison of marks’ similarities is whether the marks share identical terms, and whether the shared terms are the dominant part of each respective mark. The dominant term of the registrant’s mark was “RECIPE BOX”. The Board determined that the dominant term of the applicant’s mark, PINCH IT! RECIPE BOX was PINCH IT! The TTAB’s logic was that the term PINCH IT! was arbitrary and it was the first element of applicant’s mark. The first part of a mark is often its dominant portion. See, e.g., In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing Presto Prods., Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (the first part of a mark “is most likely to be impressed upon the mind of a purchaser and remembered”); Palm Bay Imps., 73 USPQ2d at 1692. Here, the exclamation mark draws attention to the first element and underscores it. Moreover, both marks disclaimed the term “Recipe” since it is descriptive of the parties’ respective goods. The dominant element of the mark will be given greater weight in the likelihood of confusion analysis. The Board concluded that PINCH IT! was the dominant part of the applicant’s mark.

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As most already know, the United Kingdom (UK) left the European Union (EU) on January 31, 2020. The UK remained within the EU’s structure for trademarks during this transition period. The transition period will end on December 31, 2020. New UK “comparable rights” will be created. After the transition period, all EU trademark rights holders will be granted comparable rights in the UK. These comparable rights will also exist for marks that designated the EU in an International Registration through the Madrid Protocol. For more information on International Registrations, see our webpage entitled, International Trademark Filings and our webpage entitled, Madrid Protocol Trademark Filings. The UK Trademark Office will not require any additional examination of the trademark registration, nor will there be any additional fees due.

The comparable rights in the UK will maintain the same filing date, priority date and renewal dates as the EU registration. The trademark registration number will be the eight-digit number of the EU registration preceded by the letters UK. The UK Intellectual Property Office requires that a trademark applicant maintain a UK address for service. However, there will be certain exceptions made for EU registered trademarks for a limited time period which will enable right holders ample time to provide the UK Trademark Office with this information.

Please note that any trademark applications pending with the EU at the end of the transition period will not be allowed comparable rights. Instead, there will be a grace period of nine months where the EU trademark application will be given an opportunity to be re-filed in the UK. If the applicant takes advantage of the nine month “grace period” and re-files in the UK, then it can maintain the same priority filing date as the EU application. However, The UK Trademark Office will require a new period for opposition of the application filed during the grace period.

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Since about 90 percent or more of 2(d) cases appealed are affirmed by the Trademark Trial and Appeal Board (the “Board”), it is unlikely that the Board disagrees with the Examining Attorney’s conclusions. However, the Board did not see eye to eye with the Examining Attorney on this recently decided matter. In my opinion, the Board got this one right.  The Applicant was seeking to register the mark SIMONIZ CERAMICSHIELD for paint sealant for exterior surfaces of vehicles. The Examining Attorney refused registration based on the mark PLATINUM CERAMIC SHIELD in standard characters and PLATINUM CERAMIC SHIELD & Design for clear coating protectant for use on vehicles with the term “Ceramic”`disclaimed. The Board reversed finding the dominant word in each mark was the first term, SIMONIZ and PLATINUM respectively which allowed consumers to distinguish the sources of the sealant products. See In re Simoniz USA, Inc., Serial No. 85865135 (TTAB November 3, 2020).

In this case, the relatedness of the products was not disputed. Both products are used on vehicles to protect the exterior of the vehicle from environmental elements such as water, air etc. The analysis focused on the similarities and dissimilarities of the marks, since both the Applicant and the Examining Attorney agreed that the first du Pont factor was dispositive in this case. Often, properly identifying the dominant portion of the mark will lead to the ultimate conclusion of whether there will be confusion between the sources of two goods and/or services.

The Examining Attorney argued that the first terms in the respective marks, SIMONIZ and PLATINUM were suggestive and that the more distinctive terms were the shared terms “CERAMIC SHIELD”. The Examining Attorney submitted dictionary definitions for the words Simonize (meaning to polish) and Platinum (of a superior quality). However, the Board, did not agree with the Examining Attorney’s argument that the first terms were suggestive. The Applicant’s mark SIMONIZ CERAMICSHIELD does not use the spelling listed in the dictionary “Simonize”. In addition, the dictionary definition states that the term SIMONIZE has an origin in the term SIMONIZ which is a trademark for metal polish referring to Applicant’s mark. The Board also emphasized the fact that Applicant owns multiple SIMONIZ registrations for coating products for automobiles, including paints, sealants and polishes. The mark SIMONIZ has been in commerce in use with these types of products for over 100 years. SIMONIZ is the oldest brand of automobile products in the marketplace.

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The case I am blogging about today, illustrates why federal registration is so important and how failing to register a mark can have devastating effects for your business. See Jean Leon, S.L. v. La Scala Restaurants, Corp., Opposition No. 91241804 (July 22, 2020) [not precedential], where an opposition was sustained despite the Applicant having senior common law rights. The Applicant was seeking to register the mark JEAN LEON’S LA SCALA for restaurant and cafe services and the registrant filed a Notice of Opposition. The Registrant/Opposer owned the mark JEAN LEON for wines. The Applicant opened a restaurant under the name JEAN LEON’S LA SCALA in Beverly Hills and started using the mark in 1962 but did not register the mark.

Clearly Applicant is the prior user of the mark at common law for restaurant services. However, that fact does not help Applicant with regard to the issue of priority in the opposition. Section 2(d) of the Trademark Act prohibits registration of a trademark if a mark resembles another mark as to cause confusion. See 15 U.S.C. §1052(d). One must remember that the policy behind Trademark law is not only to prevent consumer confusion, but it is also to encourage registration of marks.

The United States Court of Appeals for the Federal Circuit declared in part: “the board’s requirement that the registrant-opposer also be a prior user impermissively negates the statutory distinction (“or”) in Section 2(d) between a registered mark and a previously-used-but-unregistered mark, would permit simultaneous registration of the same mark for the same goods to different parties, and disregards–in effect conflicts with–Patent Office Rule 2.106(b), which forbids any attack (other than a request for cancellation) on the validity of a registration in an opposition;”, see King Candy Co., v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110-11 (CCPA 1974). Therefore, Applicant’s prior use at common law is irrelevant to the question of whether Applicant can register its mark with the USPTO.

This highlights an important lesson that a senior first user must either oppose a confusingly similar mark when it publishes, or initiate a cancellation proceeding within five years from the registration date, or else the first user can lose the opportunity to effect cancellation. The first user of the mark is then penalized by the law and is unable to register its mark. However, the right to exclusive use may be determined in district court. If an opposition is sustained, then the Applicant-senior user is forced to undertake the financial burden to initiate a court action.

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On June 30, 2020, the U.S. Supreme Court issued a long-awaited significant decision in trademark law. Justice Ginsburg wrote the majority opinion. The United States Patent and Trademark Office (“USPTO”) refused registration to the applicant, Booking.com B.V. (“Booking.com”) on several trademark applications involving services for travel reservations in classes 39 and 43.  The USPTO concluded that BOOKING.COM was a generic name for online hotel reservation services. The case made its way from the District Court, to the Fourth Circuit and finally to the U.S. Supreme Court.

The U.S. District Court for the Eastern District of Virginia ruled that BOOKING.COM was not generic, but descriptive of booking services for hotel reservations. It also held that BOOKING.COM acquired secondary meaning for hotel services. The USPTO only appealed the District Court’s holding that BOOKING.COM was not generic. The Court of Appeals for the Fourth Circuit affirmed the District Court’s decision, and the USPTO petitioned the Supreme Court to review the decision.

A generic name is one that is the name of the class of products or services, and therefore will be refused trademark registration at the USPTO. The parties did not dispute that the term “booking” was generic for hotel reservation services. The USPTO’s decision was based on its position that a generic term added to a “.com” will not change the meaning of the term, it will still be generic. The U.S. Supreme Court disagreed. The Supreme Court pointed out that consumers do not perceive the term BOOKING.COM to indicate hotel services as a class. The relevant meaning of a term is its meaning to consumers. In addition, since the term BOOKING.COM is a compound term, its meaning must be evaluated from the perspective of the mark as a whole and not in its isolated parts. Lastly, the mark must be able to function as a source indicator and distinguish Booking.com’s services from the services of a competitor.

Although, the USPTO was enunciating a per se rule that the combination of a generic term with a “.com” (or other top-level domain) would be generic, its previous practice and actions did not support this far reaching policy. Justice Ginsburg pointed out several registrations on the Trademark Register in conflict with this general rule, U.S. RN 3,601,346 ART.COM on the Principal Register for  “[o]nline retail store services” offering “art prints, original art, [and] art reproductions”), and U.S. RN 2,580,467 DATING.COM on the Supplemental Register for dating services. The Supreme Court could not find policies or precedents to support this sweeping rule.

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