The Trademark Trial and Appeals Board (TTAB) publishes ongoing reports regarding new case law which can affect the way that trademark applications and litigation are analyzed. Below is a summary of a selection of new cases from January through March of this:
Section 2(a) – Deceptiveness; Section 2(e)(1) – Deceptive Misdescriptiveness:
In re QVC, Inc., Serial No. 86670074 (January 21, 2020) [not precedential].
Applicant sought to register the trademark “DENIM & CO.” for various clothing items made of materials other than denim. The TTAB panel refused to register the mark, finding Denim & Co. to be deceptive under Section 2(a) and, alternatively, deceptively mis-descriptive under Section 2(e)(1), for non-denim clothing.
Section 2(a) – False Association; Section 2(c) – Consent to Register:
In re ADCO Industries – Technologies, L.P., 2020 USPQ2d 53786 (TTAB 2020) [precedential]
Applicant sought to register two logo trademarks for “TRUMP-IT” for utility knives. The Board refused to register the marks, finding they create a false association with President Trump. The Board also found a violation under Section 2(c) since President Trump did not consent to use of his name, and further rejected claims that Sections 2(a) and 2(c) are unconstitutional.
Section 2(d) – Likelihood of Confusion:
Refused:
Shannon DeVivo v. Celeste Ortiz, 2020 USPQ2d 10153 (TTAB 2020) [precedential]
Applicant sought to register the mark “ENGIRLNEER” for “Cups; coffee cups, tea cups and mug; Lanyards for holding badges; Lanyards for holding keys; Hoodies; Shirts; Sweatshirts,” and was opposed by the owner of a common law mark for the same mark for books and for educational and informational services in the STEM fields. The Board found the opposer demonstrated priority of use, and that the identicalness of the marks support a likelihood of confusion.
Entertainment Content, Inc. v. Cooper Holdings, Inc., Opposition No. 91223121 (Mar. 11, 2020) (not precedential)
Applicant sought to register the mark “JUSTICE NETWORK” and was opposed by the owner of “JUSTICE CENTRAL” and “JUSTICECENTRAL.TV” for likelihood of confusion with services related to television programming.
Shadi.com v. People Interactive (India) Private Limited, Opposition No. 91225201 (Mar. 3, 2020) (not precedential) and Cancellation No. 92062719
Applicant sought to register the mark “SHAADI.COM” for various marriage matchmaking services, and was opposed by owner of registrations for “SHADI” as a wordmark and logo, for various marriage introduction services. The Board found that the opposer had priority of use and there was a likelihood of confusion.
Kate Spade LLC v. Thatch, LLC and The Spades Trademark Company, LLC, Oppositions Nos. 91216585 and 91217168 (January 9, 2020) [not precedential]
Applicant sought to register two trademarks, “PATIO BY THE SPADES” for clothing and handbags, and “THE SPADES”for perfume, and was opposed by the owner of the registered mark “KATE SPADE” for clothing, handbags, and perfume. The Board found a likelihood of confusion, holding that the KATE SPADE mark is famous and the commercial impression created by the applied for marks was too similar.
In re Hard Rok Equipment, Inc., Serial No. 87581245 (January 7, 2020) [not precedential]
Applicant sought to register the mark “HARDROK EQUIPMENT INC.” for “distributorship services in the field of industrial machinery and parts therefor in the mineral and aggregate industries” (EQUIPMENT INC. disclaimed). The Board upheld a refusal against the registered mark “HARDROCK” for various drilling equipment, noting that although the relevant purchasers are sophisticated and would exercise care, there was a likelihood of confusion due to the similarity of the marks and the goods and services.
Shared LLC v. SharedSpaceofAtlanta LLC, Opposition No. 91228478 (12, 31, 2019) [not precedential]
Applicant sought to register the mark “SHARED SPACE” in a word+logo form, and was opposed by the owner of the registered mark “SHARED”, both in connection with office space services. Although the Board granted applicant’s counterclaims to cancel opposer’s marks, the Board gave opposer 30 days to refile with a disclaimer, and further found a likelihood of confusion given similarities in sound, meaning, and commercial impression.
In re Bedgear LLC, Serial No. 87147150 (January 3, 2020) [not precedential]
Applicant sought to register the mark “M” (wordmark) for mattresses and related items. The Board refused to register the mark, finding a likelihood of confusion with three other registered marks for stylized “M” logos covering various furniture items.
Allowed:
In re Medline Industries, Inc., 2020 USPQ2d 10237 [precedential]
Applicant sought to register a color mark for a certain shade of green (on the left) in connection with “medical exam gloves” on the Supplemental Register, and was initially refused against a registered mark (on the right) in the Supplemental Registry for “gloves for medical use”. The Board reversed, holding that the colors were distant relatives in the green family and confusion as to source is unlikely.
Yarnell Ice Cream, LLC v. Outstanding Foods, Inc., Opposition No. 91244684 (3/17/20) [not precedential]
Applicant sought to register “FULL OF FLAVOR FREE OF GUILT” for vegetable products and snack and meat substitutes but was opposed by the owner of a registered mark “GUILT FREE” for frozen confections. The Board dismissed, finding sufficient differences in the names and goods to avoid confusion.
Garan Incorporated v. Manimal, LLC, Opposition No. 91232774 (Feb. 13, 2020) (not precedential)
Applicant sought to register the mark “MANIMAL” for various clothing, including “children’s clothing” and was opposed by the owner of several registrations including the mark “GARANIMAL”, one in particular for children’s shirts and pants. The Board held there was no likelihood of confusion due to dissimilarities of the marks.
CDOC, Inc. v. Liberty Bankers Life Insurance Company and The Capitol Life Insurance Company, Oppositions Nos. 91236945 and 91237330 (January 16, 2020) [not precedential]
Applicant sought to register the two word+logo marks to the right, and was opposed by the owner of the registered mark “BANKERS LIFE” for “insurance underwriting services”. The Board dismissed the opposition, finding no likelihood of confusion due to purchaser sophistication, lack of actual confusion, and differences in the marks.
Section 2(e)(1) – Mere Descriptiveness:
Refused:
In re Shaklee Corporation, Serial No. 87528703 (March 24, 2020) [not precedential]
Applicant sought to register the mark “PERFORMANCE” for “Energy bars; energy chews; energy gummy; other energy/nutritional supplements, etc. The Board refused to register the mark, agreeing with the Examning Attorney that the mark “merely describes a feature or purpose of [the] Applicant’s goods, in that its supplements and energy foods are for improving one’s athletic performance.”
Allowed:
In re Original Grain, LLC, Serial No. 87511343 (January 23, 2020) [not precedential]
Applicant sought to register the mark “ORIGINAL GRAIN” as a logo (see to right) for restaurant services. The Board reversed the refusal to register, finding the mark was not merely descriptive of the restaurant services because while it may suggest the menu has grain-based items, it “ does not immediately describe, with the required degree of particularity, that menu items containing whole grains or unrefined grains are the “specialty of the house” or its “principal attraction.”
Section 2(e)(2) – Primarily Geographically Descriptive:
Spiritline Cruises LLC v. Tour Management Services, Inc., 2020 U.S.P.Q.2d 48324 (TTAB 2020) [precedential]
Applicant sought to register the mark “CHARLESTON HARBOR TOURS” for various tour and boat charting services. The Board sustained an opposition, finding that the mark was primarily geographically misdescriptive because it was being used in Charleston, S.C., and “Charleston Harbor is a widely recognized place associated with the particular services at issue, and numerous third parties in the tour and charter industry refer to Charleston Harbor”.
Section 2(e)(3) – Primarily Geographically Deceptively Misdescriptive:
In re Branded LLC, Serial No. 87749455 (February 14, 2020) [not precedential]
Applicant sough to register the mark “EMPORIO ITALIA” for various bedding items. The Board refused to register the mark, finding that all three prongs of the primarily geographically deceptively mis-descriptive test were met: (1) the primary significance is Italy, (2) the goods come from India, not Italty, and (3) misrepresentation was material because Italy is known for high-quality textiles.
Section 2(e)(4) – Primarily Merely a Surname:
Refused:
In re Colors in Optics, Ltd., 2020 U.S.P.Q.2d 48321 (T.T.A.B. 2020). [precedential]
Applicant sought to register the mark “J HUTTON” for various eyewear. The Board affirmed refusal to register the mark, finding that it primarily referred the surname of someone associated with applicant, Jade Hutton, and that without more evidence to form a factual record, just adding an initial in front of a surname does not necessarily create the consumer perception that it refers to an individual and not the surname.
In re Jos. A. Magnus & Co., LLC, Serial No. 87618554 (January 15, 2020) [not precedential]
Applicant sought to register the mark “MAGNUS” for various alcohol items such as whiskey. The Board affirmed the USPTO’s refusal “because Applicant strongly promotes a connection between itself and an individual having the surname MAGNUS”, Joseph Magnus, a historical distiller.
Allowed:
In re Chas. H. Challen (1804) Limited, Serial No. 87517062 (March 5, 2020) [not precedential]
Applicant sought to register the stylized mark for “CHALLEN” for various musical instruments. The USPTO refused to register on the grounds that the mark primarily referred to a surname because applicant’s founder in the 1800’s last name was Challen, and there was evidence of others with the same last name. The Board reversed the refusal, holding that “the record, as a whole, does not establish that the primary significance of CHALLEN to the purchasing public is merely that of a surname … and instead would be viewed as a fanciful, coined term.”
Section 2(e)(5) – Functionality:
Poly-America, L.P. v. API Industries, Inc. and API Industries, Inc. v. Poly-America, L.P., Cancellations Nos. 92062517 and 92062601 (Feb. 19, 2020) (not precedential)
Two competitors owned Supplemental Registrations for trade dress relating to garbage bags and colored drawstrings. One party claimed orange, the other grey, and both sought to cancel the other’s registration. The Board decided to cancel both marks, finding them to be generic, and further concluding that the color orange is functional, and thus not protectible, as to trash bag drawstrings.
Abandonment:
Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086 (TTAB 2020) [precedential]
In 2018, a party sought to cancel a registration held by another party since 2015, for the marl “ZUPR” for software and business services, based on non-use for three consecutive years after registration. However, the Board refused to cancel the mark, finding that the owner of the mark rebutted the presumption of abandonment by presenting evidence that it “had the requisite intent to commence use in commerce of its” mark during the three-year period of non-use.
Bona Fide Intent:
Hole In 1 Drinks, Inc. v. Michael Lajtay, 2020 USPQ2d 10020 (TTAB 2020) [precedential]
One party obtained a registration for “HOLE IN ONE” for sports drinks. The Board granted another party’s petition to cancel the mark, finding that the owner of the mark did not intend to use the mark by himself at the time of filing, but rather with another individual to jointly form a company and market drinks.
Genericness:
In re Antsy Labs LLC aka Antsy Labs, Serial No. 87157508 (February 5, 2020) [not precedential]
Applicant sought to register a trademark for “FIDGET CUBE” in connection with “stress relief exercise toys” [FIDGET disclaimed]. The Board refused to register the mark on the Supplemental Register as a generic name, stating that “the record demonstrates extensive third-party use of the designation FIDGET CUBE as the generic name of a particular type of stress-relieving toy after Applicant began using such designation in commerce. Moreover, while Applicant argues that its policing efforts have caused third parties to cease use of the designation FIDGET CUBE, the record indicates otherwise.”
Nonuse/Specimen of Use/Failure to Function:
In re Carlton Cellars, LLC, 2020 USPQ2d 10150 (TTAB 2020) [precedential]
Applicant sought to register a trademark for “SEVEN DEVILS” in connection with 4 different classes of goods for various wine related goods and accessories. The Board refused to register the mark, stating “Applicant’s continued attempt to maintain a multiple-class application upon payment of only a single class fee exhibits at best a misapprehension of, and at worst blatant disregard for, USPTO policy and procedure. Applicant had a duty under the Trademark Rules to submit the appropriate filing fee for the number of classes for which registration is desired, as well as a duty to include a listing of goods that is “specific, definite, clear, accurate, and concise.” Applicant failed to comply with either requirement.”
In re The Ride, LLC, 2020 U.S.P.Q.2d 39644 (T.T.A.B. 2020). [precedential]
Applicant sought to register a motion mark for “conducting sightseeing travel tours by bus”. The Board agreed to refuse registration of the mark, finding (1) that it failed to function as a service marks, because consumers would more likely view applicant’s trade name, “The Ride”, as the mark, (2) insufficient specimens that did not display the mark as depicted in a drawing, and (3) an incomplete description of the mark.
Concurrent Use:
Hanscomb Consulting, Inc. v. Hanscomb Limited, 2020 USPQ2d 10085 (TTAB 2020) [precedential]
Applicant sought a concurrent use registration for the mark “HANSCOMB CONSULTING” for various business services, but excluded two geographical areas, Hinsdale, IL and Los Angeles, CA, conceding that another party that owned an application for “HANSCOMB” may have common law rights in those two locations. The Board refused the concurrent use registration, finding that the other party had prior use rights in “many more locales throughout the country” than just the two excluded.
Discovery/Evidence/Procedure:
Lacteos de Honduras S.A. v. Industrias Sula, S. De R.L. de C.V., 2020 USPQ2d 10087 (TTAB 2020) [precedential].
Applicant sought to register its trademark “RICA SULA” for snack chips and was opposed by the owner of two registrations for the mark “SULA” for “spreads, namely, vegetable oil and dairy cream-based blends.” Applicant counterclaimed for cancellation of opposer’s marks and asserted the affirmative defense of priority under Articles 7 and 8 of the Pan-American Convention. The Board dismissed the counterclaims and the affirmative defense, finding that Applicant failed to allege that it has rights in Honduras for the same goods as those of Opposer, that Article 7 does not provide for priority against a mark registered in the U.S., and that Article 8 does not provide for priority.
AT&T Mobility LLC v. Mark Thomann and Dormitus Brands LLC, 2020 USPQ2d 43785 (TTAB 2020) (February 10, 2020) [precedential]
Applicant applied for a mark for “CINGULAR” in connection with cell phones, but was opposed by the owner of the company that was once Cingular and bought by AT&T. The Board ruled that Opposer has standing to move forward with it’s claims, given that it still operates a subsidiary which incorporates “Cingular” in its trade name and is used in contracts and various business dealings.
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Disclaimer: DiSchino & Schamy is a boutique, Miami-based law firm which specializes in corporate, business and intellectual properties for businesses in the creative industries. However, this information is being provided for educational purposes only and does not constitute legal advice. Any reader of this article should consult with an attorney directly regarding its legal rights and obligations.