Thursday, May 24, 2018

Ted Davis: 2018 Annual Review of Trademark Cases

Thank you Ted Davis for allowing me to post a link (here) to your 2018 outline of trademark decisions. The outline (59 pages) covers both federal court litigation and many TTAB cases. Thanks also to all of you who attended yesterday's Annual Review session in Seattle.


Read comments and post your comment here.

Text Copyright John L. Welch 2018.

Wednesday, May 23, 2018

Precedential No. 19: TTAB Rules that Evidence From A Website No Longer Active Is Not Probative

Ruling that website evidence from a no longer active website is not probative, the Board found the term CAVIAR to be not misdescriptive of applicant's pet foods and pet treats, and so it reversed Section 2(a) deceptiveness and Section 2(e)(1) deceptive misdescriptiveness refusals of the mark CANINE CAVIAR. The Board did, however, uphold the requirement that applicant disclaim the word CANINE. In re Canine Caviar Pet Foods, Inc., Serial No. 85710350 (May 17, 2018) [precedential] (Opinion by Judge Lorelei Ritchie).


Deceptiveness under Section 2(a) requires a showing that (1) the mark misdescribes the goods, (2) consumers would likely believe the misdescription, and  (3) the misrepresentation would materially affect the purchasing decision. The examining attorney contended that consumers would understand the word "caviar" to mean that caviar is an ingredient of applicant's goods. There was no dispute that the goods do not contain caviar.

Applicant maintained that consumers are likely to think of CANINE CAVIAR not as a reference to "fish roe," but as a laudatory reference to the quality of the product as "the best of its kind," as in "the caviar of pet foods." A declaration from an expert linguist supported that assertion. The Board found that some consumers would understand "caviar" to refer to fish roe, while others would understand "caviar" in the laudatory sense, the latter not being misdescriptive.

Turning to the second prong of the test, the examining attorney submitted evidence that pet foods and treats may contain caviar and that pet owners give caviar to their pets. The Board, however, found two problems with that evidence.

First, several of the websites reference by the examining attorney are "cached" or stored, and applicant objected that the sites were no longer active. The Board found that to be fatal to the probative value of the evidence:

[A]lthough the Examining Attorney’s evidence did properly include a URL and date, due to Applicant’s objections that certain sites are not active, we find that such evidence is not probative.

The Board noted that even if the URL resolves to an active link, "there may still be an issue raised as to the probative value of the evidence, including, but not limited to, the probative weight to assign consumer perceptions as of the original publishing date."

The second problem with the examining attorney's website evidence was that several webpages referred to foreign use (in the U.K.). Evidence from foreign websites may be probative in some cases (for example, technical fields), but in this case the evidence "does not tell us the norms specific to pet owners in the United States who are relevant consumers."

Applicant submitted a declaration from a consultant in the animal feed industry, stating that "[t]he use of caviar as an ingredient in pet food essentially is non-existent." Two of applicant's distributors stated that they were unaware of anyone being deceived or confused into thinking that applicant's product contains caviar. Instead, the mark is understood as being a metaphor for high quality food.

The examining attorney asserted that the Board should make its own legal conclusions, but the Board noted that the witnesses were also providing factual testimony: i.e., that they were not aware of any confusion or deception that the products in question contain caviar.

Consistent with longstanding practice, we accord these declarations such probative value as they may have, and weigh them with the totality of the evidence.

 The Board acknowledged that a few companies offer caviar for pets as a special, luxury item, but the overwhelming evidence is that caviar is almost never used as an ingredient for pet food. During 20 years of use of the CANINE CAVIAR mark, consumers have not mistakenly believed that applicant's products contain caviar.

While we expect most pet owners to cherish their pets, we do not expect that they consider it be reasonable to spend over one hundred times the cost of comparable pet food on a single meal for these treasured creatures.

The Board concluded that consumers who perceive the word "caviar" in applicant's mark  to mean "fish roe" are not likely to believe that applicant's goods contain caviar. Therefore the mark is not deceptive under Section 2(a), and since the first two prongs under that test were not met, it perforce is not deceptively misdescriptive under Section 2(e)(1).

Turning to the requirement that applicant disclaim CANINE, applicant argued that the mark is unitary due to its alliteration and therefore that no disclaimer is required. The Board noted, however, that the combination of the two words provides no additional meaning beyond that proposed by applicant and its linguistics expert: "luxury dog food." Similarly alliterative terms like CANINE CRUNCHER and CANINE CANDY are registered with disclaimers of CANINE. The Board had no doubt that CANINE will be viewed as a separable term that conveys the information that the product is dog food, and thus is merely descriptive thereof.

And so the Board affirmed the disclaimer requirement.

Electric eels I might add do it
Though it shocks em I know
Why ask if shad do it, waiter bring me
"shad roe"
(Cole Porter, "Let's Do It.")
Read comments and post your comment here.

TTABlog comment: I think the mark suggests that the pet food contains some caviar, not that it is totally caviar.


Text Copyright John L. Welch 2018.

Tuesday, May 22, 2018

Precedential No. 18: TTAB Extends Safer Rule to Internet Evidence During Ex Parte Prosecution

Observing that there are no precedential decisions regarding an examining attorney's failure to properly submit Internet evidence, the Board ruled that both applicants and examining attorneys must include the URL and the date the webpage was accessed. If an applicant does not object to the examining attorney's failure to do so, "the Board will consider the website for whatever probative value it may have." If the applicant fails to do so without objection from the examining attorney, the Board may consider the objection waived. In re Mueller Sports Medicine, Inc., Serial No. 87209946 (May 16, 2018) [precedential] (Opinion by Judge Marc A. Bergsman).


Until Safer Inc. v. OMS Inv. Inc., there was no requirement that a party include a webpage address when introducing a webpage into evidence in an inter partes proceedings. [Now codified in Trademark Rule 2.122(e)]. The TMEP adopted the Safer requirements for examining attorneys in ex parte proceedings. TMEP § 710.01(b) (October 2017). But the TMEP is not the law.

In determining whether to make those requirements the law, the Board first considered an analogous situation for guidance (namely, lists of third-party registrations):

If the applicant, during the prosecution of the application, provided a listing of third-party registrations, without also submitting actual copies of the registrations, and the examining attorney did not object or otherwise advise the applicant that a listing is insufficient to make such registrations of record at a point when the applicant could cure the insufficiency, the examining attorney will be deemed to have waived any objection to the admissibility of the list. Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 1207.03 (June 2017); see also TBMP § 1208.02.

Following that example, the Board ruled that "if an examining attorney fails to include the website URL and the date that the webpage was accessed but the applicant fails to lodge an objection on that ground, then the Board will consider the website for whatever probative value it may have."

Further more, the Board extended those requirements not only to examining attorneys, but to applicants in ex parte proceedings as well.

Similar to the submission of third-party registrations, Examining Attorneys have a responsibility to make sure that applicants properly submit Internet evidence. If the applicant’s response includes Internet evidence without a URL or date it was printed, the examining attorney must object to the evidence in the first Office action following the response and advise the applicant as to the proper way to make the Internet evidence of record. Otherwise the Board may consider the objection to be waived.

If the applicant files an appeal, the examining attorney should continue the objection to the evidence in his or her appeal brief.

Turning to the substantive issue in the case, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of the mark RECOIL for medical and athletic cohesive tape. Dictionary definitions, third-party website pages, and applicant's own packaging confirmed that "recoil" is used to describe the ability of applicant's tape to return to its original form.

Read comments and post your comment here.

TTABlog comment: Note the use of "will" and "may." If the applicant fails to object, the Board will consider the evidence. If the examining attorney fails to object, the Board may consider the objection waived. Does this difference make sense?

Text Copyright John L. Welch 2018.

Monday, May 21, 2018

Precedential No. 17: TTAB Grants Section 2(d) Petition for Cancellation of KEMI OYL Registration; Laches Defense Fails

The Board granted this petition for cancellation of a registration for the mark KEMI OYL for cosmetics and personal care products, finding the mark likely to cause confusion with opposer's identical mark previously used for overlapping goods. In stipulating to invoke the Board Accelerated Case Resolution procedure, the parties agreed that the sole issue for resolution was priority, but that respondent could pursue its affirmative defense of laches. Kemi Organics, LLC v. Rakesh Gupta, Cancellation No. 92065613 (May 15, 2018) [precedential] (Opinion by Judge Christopher Larkin).


Priority/Abandonment: Respondent was allowed to rely on the filing date of its underlying trademark application, which in turn claimed the priority of its U.K. filing under Section 44(d) (in 2010). While there was some question as to what exact date respondent was entitled to because respondent misstated the foreign filing date in his application, that was of no consequence since petitioner established its use before the earlier priority date.

Section 2(d) provides a ground for cancellation based upon likelihood of confusion with "a mark ... previously used in the United States ... and not abandoned .... A mark is deemed abandoned when its use has been discontinued with intent not to resume use." Respondent asserted abandonment as a defense to petitioner's claim of prior use.

Looking at the record as a whole, as required, the Board found that petitioner's documentary evidence had little or no probative value. However, its principal witness testified that petitioner sold hair and skin care product under the KEMI OYL mark for more than thirty years, that the products are sold throughout the United States, and that annual sales for the years 2010 through 2016 have been in the six-figure range.

Respondent contended that petitioner's testimony failed to establish that the KEMI OYL mark was in continuous use, but the Board pointed out that "continuous use is not required to establish priority."

Section 2(d) “does not speak of ‘continuous use,’ but rather of whether the mark or trade name has been ‘previously used in the United States by another and not abandoned.’” West Fla. Seafood, 31 USPQ2d at 1665. *** Although the record as a whole suggests sporadic past use of the KEMI OYL mark, Petitioner is only required to show “proprietary rights in its pleaded common-law mark that precede [Respondent’s] actual or constructive use of its involved mark,” Exec. Coach Builders, 123 USPQ2d at 1180, which rights were not thereafter abandoned. West Fla. Seafood, 31 USPQ2d at 1665.

The Board observed that even if petitioner abandoned the KEMI OYL mark through non-use from 2001-2005, as respondent claimed, or at some other point, it was respondent's burden to show that petitioner did not resume use before respondents priority date.

Respondent's attacks on the probative value and credibility of petitioner's witness were rejected by the Board. "[O]ral testimony of even a single witness may be adequate to establish priority ... if sufficiently probative. Such testimony should not be characterized by contradictions, inconsistencies, and indefiniteness but should carry with it conviction of its accuracy and applicability." Although the witness's testimony declaration was "far from being a model of clarity and completeness" and was not accompanied by "the type or quantity of documentary evidence that one would expect to be readily available" to show use of a supposedly famous mark, the critical portions of his testimony were clear and neither contradicted by respondent nor indefinite or internally inconsistent.

The Board found that this testimony "established, at minimum, that Petitioner used the KEMI OYL mark at least as early as 2010, prior to Respondent's constructive use date, and that Petitioner has not abandoned the mark." The Board was also persuaded by two third-party witnesses who sold petitioner's products from a time prior to respondent's constructive use date.

"Petitioner's evidence of prior use stands unrebutted." Therefore, the Board concluded, petitioner was entitled to cancellation of respondent's registration, unless respondent could establish its claim of laches.

Laches: Section 19 provides that in "all inter partes proceeding equitable principles of laches, estoppel, and acquiescense, where applicable, may be considered and applied." Laches requires undue or unreasonable delay and resulting prejudice.

Respondent's registration issued on June 3, 2014 and this proceeding was commenced on March 14, 2017. Respondent contended that petitioner was on notice of his mark on May 1, 2013, when petitioner's pending application was suspended based on respondent's (non-use based) underlying application. The Board was unimpressed, noting that respondent cited no authority for the proposition that "the prospective citation of Respondent's intent-to-use application . . . put Respondent on notice of Respondent's use of his mark." There was no evidence that the mark was in use at the time, and in fact respondent's statement of use alleged a first use date of November 1, 2013.

In the absence of evidence of Petitioner’s actual knowledge of Respondent’s actual use of his mark prior to the close of the opposition period, the June 3, 2014 date of registration is the operative date for laches. Ava Ruha Corp., 113 USPQ2d at 1580.

Although petitioner's delay was a bit less than three years, shorter and slightly longer periods of delay have sufficed to support a laches defense. The Board then turned to consideration of the reasons for the delay.

Shortly after the registration issued, the parties exchanged correspondence but after respondent provided information about his mark, petitioner was silent for two years. During that period, petitioner's pending application was abandoned and revived on three separate occasions, but ultimately went abandoned. In a letter in June 2016, petitioner stated that it had priority and accused respondent of being the infringer. There was no testimony explaining why petitioner waited another nine months or so to file its petition.

Petitioner's claim that its delay was justified by the claim that respondent's use of the marks was inconspicuous was supported by discovery responses, which indicated that his sales between 2014 and 2016 were negligible.

The Board observed that "The defense of laches is not determined by adherence to rigid legal rules; rather, we analyze laches by a consideration of the specific facts and a balancing of the respective interests and equities of the parties, as well as of the general public.” Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1117 (TTAB 2007). Noting respondent's negligible sales and his inaction after July 2014, the Board found petitioner's delay to be not unreasonable, and it concluded that respondent failed to prove its laches defense.

For completeness, the Board also considered respondent's claim of prejudice but found it unsupported. Resondent's sales increased 18-fold from 2015 to 2016, but that was only from about $500 to $7000, and his sales trended downward in 2017. Thus respondent did not, as he claimed, build up a  "valuable business and goodwill" during the relevant period. The Board concluded that this lack of prejudice was a further ground for denial of the laches defense.

And so the Board dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment:

Text Copyright John L. Welch 2018.

Friday, May 18, 2018

TTAB Shuts Down NJ Turnpike Authority's 2(d) Opposition to JERSEY BOARDWALK PIZZA logo

The Board dismissed an opposition to registration of the mark shown below right for "restaurant services," finding that the New Jersey Turnpike Authority failed to prove likelihood of confusion with its registered mark shown below left, for highway maintenance services and information services, and its common law mark shown below center for those same services and for "service areas along the Garden State Parkway that include restaurants, many of which feature pizza." New Jersey Turnpike Authority v. Jersey Boardwalk Franchising Co., Opposition No. 91219067and Cancellation No. 92059657 (May 15, 2008) [not precedential] (Opinion by Judge Cynthia C. Lynch).


Priority: Plaintiff NJTA established priority as to its highway maintenance and information services, but it failed to prove any rights in its marks for restaurant services. NJTA merely acts as a landlord for various restaurant facilities - such as Burger King and Pizza Hut - located at its service areas. In fact, its marks are not even displayed at or near the service areas.

The only item of evidence showing NJTA's use of its logo comprised a discount coupon for an Extra Value Meal that was apparently distributed in 1996, but there was no evidence as to how many were distributed. This sole piece of evidence was insufficient to establish common law rights as to restaurant services.


Strength of the Mark: NJTA contended that its mark is famous. The Board found the mark to enjoy "some degree of renown" in view of length of use, revenue figures, media coverage, and third party infringements and successful enforcement efforts. The Board concluded that the marks is "reasonably strong for highway management and maintenance and travel information services."

The Marks: Because of the strong visual resemblance between the marks, the Board found the commercial impressions of the marks to be "fairly similar," and the marks as in their entireties to be "similar."

The Services: There was no evidence that consumers would expect restaurant services and highway maintenance services to emanate from the same source.

Trade Channels: The same travelers who encounter NJTA's road maintenance and management services, or travel information services, also stop and eat at restaurants. And so there is at least a partial overlap in channels of trade and classes of consumers.

Bad Faith: Pointing to the 13th du Pont factor, plaintiff claimed that defendant chose the applied-for mark in bad faith. The Board, however, found no bad faith in defendant's creation of a New Jersey-themed motif for its restaurants, or from submission of an application to register after receiving a cease-and-desist letter, because (as defendant responded), there is no likelihood of confusion.

Conclusion: The Board concluded that source confusion is unlikely, and it dismissed NJTA's Section 2(d) claim.

Counterclaims: Defendan'ts two counterclaims, based primarily on its interpretation of New Jersey state law, were meritless. Its challenge to NJTA's ownership of the registration was barred by Section 14 of the Trademark Act, since the registrations that are more than five years old may be challenged only on certain enumerated grounds, and ownership is not one of them. [Thankfully, the Board did not refer to the registration as "incontestable" - ed.].

Read comments and post your comment here.

TTABlog comment: In a cancellation proceeding consolidated with the opposition, defendant conceded that it discontinued use of an earlier version of its pizza logo mark with intent not to resume use, and so the Board granted NJTA's petition for cancellation on the ground of abandonment.

BTW: What is stopping defendant from opening a pizza restaurant just off a NJ Turnpike exit? Would consumers think it was affiliated with or sponsored by the Turnpike Authority? I suspect so.

Text Copyright John L. Welch 2018.

Thursday, May 17, 2018

TTAB Test: Which of these Three Section 2(d) Refusals Was Reversed?

Here are three recently decided Section 2(d) appeals. One of the refusals was reversed. Applying your jurisprudential skills and/or well-honed TTAB instincts, how do you think these came out? [Answer in first comment].



In re Dyson Technology Limited, Serial No. 79188560 (May 8, 2018) [not precedential] (Opinion by Judge Anthony R. Masiello). [Section 2(d) refusal of CU-BEAM for "Suspended lights in the nature of LED lighting fixtures designed to be suspended from a ceiling with uplighters and/or downlighters, the aforesaid optimized to reduce eye strain and increase comfort and productivity; parts and fittings for the aforesaid goods," in view of the registered mark Q-BEAM SPOT/FLOOD for a "hand-held combination spotlight and floodlight" [SPOT/FLOOD disclaimed]].


In re Bodegas Eduardo Garrido, S.L., Serial No. 87334693 (May 14) [not precedential] (Opinion by Judge Frances Wolfson). [Section 2(d) refusal of the mark shown below left for "wine" in view of the registered mark shown below right, both for wine].


In re Henson, Serial No. 87130461 (May 14, 2018) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of the mark LYKAN for athletic apparel, in view of the identical mark registered for watches and jewelry].


Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.

Wednesday, May 16, 2018

LAST CALL! Meet The Bloggers XIV: Garage Billiards, Tuesday, May 22, 8-10 PM

MEET THE BLOGGERS is returning for the 14th (XIVth) time. Perhaps the best non-INTA event ever devised by woman or man, MTB XIV will be convened on Tuesday, May 22nd, 8:00 - 10:00 PM, at Garage Billiards, 1130 Broadway, Seattle. Come and meet some of the best trademark attorneys in the world, and while you're at it say hello to the hosts of this year's event. For details, directions, a look at the sponsoring bloggers, and the RSVP link, go HERE.

 .
Here's a pictorial stroll through memory lane, in reverse chronological order. Tara Aaron and Marc Randazza join us as hosts for this year's event.

Barcelona 2017
Pelton, Welch, Coleman, Schwimmer, Chestek, and Oppedahl

Orlando 2016

San Diego 2015

Hong Kong 2014

Dallas 2013

Washington, D.C. 2012: Pelton, Welch, Coleman, Schwimmer

San Francisco, 2011


Boston 2010. Coleman, Chestek, Schwimmer, and Welch


Seattle 2009


Berlin 2008

Coleman, Schwimmer, Welch, Chicago 2007

Toronto 2006

San Diego 2005
Click on photos for larger pictures

Read comments and post your comment here

TTAB Affirms Geographical Descriptiveness Refusal of LEIPER'S FORK DISTILLERY for Clothing

The Board affirmed a Section 2(e)(2) refusal of the mark LEIPER'S FORK DISTILLERY for "insulating sleeve holders for beverage cans," various clothing items, and alcoholic beverages, finding the mark to be primarily geographically descriptive of the goods. Applicant argued, without success, that Leiper's Fork is "an obscure location which, even if the public were aware existed, would not have led them to believe Applicant's Goods originate there." In re Leiper’s Fork Distillery, LLC, Serial No. 86894726 (May 14, 2018) [not precedential] (Opinion by Judge Lorelei Ritchie).


Leiper's Fork, a rural village in Tennessee with a population of 650 is listed on the National Register of Historic Places. Negative dictionary evidence showed no other meaning of Leiper's Fork.

A Section 2(e)(2) refusal is appropriate when:

(1) the primary significance of the mark is a generally known geographic location:

(2) the source of the goods is the geographic location named in the mark; and

(3) purchasers would be likely to believe the goods or services originate in the geographic place identified in the mark.

Primary Significance: The Board noted that, although Leiper's Fork has a small population, "it has a large draw." Leipers's Fork is a tourist destination of growing popularity. Well known musicians and artists come from Nashville to take part in the village's cultural scene. Justin Timberlake recently paid $4 million for a tract of land there. In short, "Leiper's Fork has built up a reputation that is not remote or obscure."

Leiper's Fork Distillery

Origin of the Goods:: Applicant did not dispute that it is located in Franklin, Tennessee, which neighbors Leiper's Fork. Close enough said, the Board, finding that the goods therefore originate from Leiper's Fork for Section 2(d) purposes. See In re Spirits of New Merced, 85 USPQ2d 1614 (TTAB 2007) (YOSEMITE  BEER held geographically descriptive of beer sold in Merced, California, near Yosemite National Park).

Goods/Place Association: When the first two prongs of the Section 2(d) test are met, the third may be presumed. In any case, applicant did not dispute that Tennessee is generally known for its whiskey and distilled spirits. Moreover, there is a history of whiskey production in Williamson County, where Leiper's Fork is located.

Conclusion: The Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Next time I'm in Tennessee, I'll check it out.

Text Copyright John L. Welch 2018.

Tuesday, May 15, 2018

TTAB Reverses Section 2(e)(3) Geographical Deceptiveness Refusal of LAROMANA for Brown Sugar

The Board reversed a Section 2(e)(3) refusal to register the mark LAROMANA for "brown sugar," finding the mark not to be primarily geographically deceptively misdescriptive. Although the Board agreed with the USPTO that Laromana is a known geographic location and that consumers would believe the misrepresentation that the goods come from that place, the evidence was insufficient to show that the misrepresentation would be material to the purchasing decision. In re Marcos A. Castillo, Serial No. 87117266 (May 11, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).


The Section 2(e)(3) bar to registration requires an affirmative answer to each of the following three questions (In re Miracle Tuesday LLC, 104 USPQ2d 1330, 1332 (Fed. Cir. 2012):

1. Is “the primary significance of the mark … a generally known geographic location?”;

2. Is “the consuming public … likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place?”; and

3. Would “the misrepresentation [be] a material factor in the consumer’s decision” to purchase the goods?

Primary significance? The examining attorney submitted evidence showing that La Romana is a province in the Dominican Republic along the Caribbean Sea coast, as well as the major port city of the La Romana province and the site of several resort hotels. The Board noted that the spelling LAROMANA rather than La Romana (two words) was irrelevant in the Section 2(e)(3) analysis.

Applicant Castillo submitted a translation of the mark as "THE ROMAN" and asserted that, because Spanish is widely spoken in the USA, this is the primary significance of the mark. The Board, however, pointed out that the meaning of a mark must be considered in the context of the goods, and it therefore rejected Castillo's argument, noting that there was no evidence that Senor Castillo markets brown sugar using Roman imagery:

While the term LAROMANA may have a different connotation depending on context, in the context of brown sugar, there is no allusion to the alternative meaning of “The Roman” particularly where, as here, the evidence regarding the meaning of LAROMANA as “The Roman” is so thin.



Believable misrepresentation? It is enough for the required "goods-place association" that the consumer identifies the place as a known source of the product. The evidence established that consumers recognize La Romana as a source of sugar: the economy of La Romana is driven by sugar and tourism. Castillo admitted that his sugar did not have any connection with La Romana. The Board therefore found that the evidence established a goods/place association.

Materiality?: Materiality is key to proving deceptiveness. It may be proven by showing that the place named is well known for the goods, or that the goods are a principal product of the place named, or the goods are the traditional products of the place named or an expansion thereof.

The Board found that "[a]lthough the evidence demonstrates that sugar is a principal product of La Romana, the evidence does not demonstrate the consumers are interested in purchasing sugar from La Romana or that the origin of sugar has any role in their purchasing decision." There was no evidence that La Romana was famous or well known for sugar. Nor was there evidence indicating what factors consumers consider when they buy sugar. "[T]he evidence of record does not demonstrate that a significant portion, or any portion, of the relevant consumers would be influenced, let alone materially influenced, in the decision to purchase brown sugar by the geographic meaning of LAROMANA."

Conclusion: The Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: How do you say "How sweet it is!" in Spanish?

Text Copyright John L. Welch 2018.

Monday, May 14, 2018

Precedential No. 16: TTAB Orders Cancellation of Four "GIDGET" Registrations Due to Abandonment

The Board granted a petition for cancellation of four registrations for the mark GIDGET for clothing, cosmetics, jewelry, entertainment, and various other goods and services in eight classes, ruling that respondent had discontinued use of the mark with intent not to resume use. Respondent failed to show either activities or special circumstances negating or excusing its nonuse. Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., Cancellation No. 92056548 (May 7, 2018) [precedential] (Opinion by Judge Peter W. Cataldo).


A mark is abandoned when "its use has been discontinued with intent not to resume use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment." 15 U.S.C. Section 1127.

The testimony of officers of respondent's predecessors-in-interest and of third parties established that there was no use of the GIDGET mark from at least 2008 to 2012. Because this established a prima facie case of abandonment, the burden of coming forward and rebutting the prima facie showing fell on respondent.

To support a finding of intent to resume use, an owner "must do more than simply assert a vague, unsubstantiated intent to make use of the mark at some unspecified time in the future." Respondent did not carry its burden.

Simply put, there is no credible evidence that Respondent or its predecessors made any use of the GIDGET mark apart from a few sporadic promotions of surfing events – which activity is not listed among the goods or services identified in the subject registrations – and vaguely described, unsuccessful attempts at licensing the GIDGET mark in connection with its numerous identified goods and services.

Respondent's "vaguely explained attempts" to license the mark fell far short of rebutting the presumption of abandonment. All other activities of respondent and its predecessors added up to little more than attempts to secure additional investors. There was no evidence of serious negotiations toward a license agreement. "Respondent's efforts were neither consistent nor sustained, and assertions of discussions concerning the potential use of the marks at some unknown point in the future are insufficient to show an intent to resume use."

Quite simply, the record is devoid of any evidence showing a specific and consistent plan to resume use – to the extent Respondent ever used the GIDGET mark – during a period of at least four years from 2008 through 2012.

The Board concluded that the GIDGET mark has been abandoned with no intent to resume use. And so it granted the petition for cancellation.


Read comments and post your comment here.

TTABlog comment: I guess there will be a sequel to "Gidget Goes Hawaiian," called "GIDGET Goes Abandoned."

Text Copyright John L. Welch 2018.

Friday, May 11, 2018

Despite Phony Specimen of Use, TTAB Finds No Fraud, Dismisses COPPER 88 Opposition

The Board dismissed this opposition involving the two marks shown immediately below, for clothing embedded or infused with copper [COPPER 88 disclaimed], finding the marks too dissimilar to support a Section 2(d) likelihood of confusion claim. The Board also dismissed Opposer Tommie Copper's fraud claim, despite applicant's admission that its specimen of use were "mock ups" that were never used. Tommie Copper IP, Inc. v. Gcool-Tech Usa LLC, Opposition No. 91223768 (May 9, 2018) [not precedential] (Opinion by Judge Thomas Shaw).


Applicant's brand manager testified that applicant was not selling any goods bearing its COPPER 88 + Design mark in this country as of the filing date of the opposed application. Samples were given out to reps and his mother gave a few items to friends. The claimed dates of first use actually applied to goods offered under a different mark.

The Board found that applicant "was not selling any of its goods under the applied-for mark in the United States as of the filing date," and that applicant's statement that it was "using the mark in commerce was a false, material representation of fact to the USPTO."

The question, then, was whether applicant intended to deceive the USPTO.

Applicant's witness testified that his father (applicant's founder) "was under the mistaken impression that its use of the mark in other countries constituted use in commerce in the United States."

A: So the way that I see it, I think he got confused because he was using it. And I think he was confused. Also, I think he was confused about using CU Compression by GCool as something. So my dad’s – my dad’s not a lawyer.

Of course, the witness expressly denied that Applicant had any intent to deceive the USPTO. He agreed with with the question posed by opposer's lawyer that applicant "just didn't really understand legally what it meant to use a trademark in commerce." "I honestly think there was a lot of confusion."

The Board found no direct evidence of an intent to deceive the USPTO and insufficient evidence to warrant the inference of an intent to deceive.

As established above, at the time of filing the application, Applicant had distributed samples to prospective distributors in the United States, was developing prototype garments including “hooded sweatshirts,” was selling copper-embedded fabric under a different brand, and had sold goods in Canada under the applied-for mark.

None of those acts qualified as use in commerce, but just because applicant was wrong in thinking that these acts satisfied the requirements for filing an application does not mean that applicant had a deceptive intent. As stated in In re Bose:

There is no fraud if a false misrepresentation is occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive. . . . Unless the challenger can point to evidence to support an inference of deceptive intent, it has failed to satisfy the clear and convincing evidence standard required to establish a fraud claim.

Opposer pointed to no evidence of a deceptive intent. In fact, in its questioning of the witness, opposer expressly assumed that applicant had a "mistaken belief" at the time of filing, and that it "didn't really understand" the concept of use in commerce.

And so the Board dismissed opposer's fraud claim.

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TTABlog comment: What about the mock-up specimen? Did applicant think that was a real specimen? And the false first use dates?
BTW: applicant hired an attorney, who amended the application to Section 1(b) intent-to-use. How, then, could the phony specimen be material to the examination?

Text Copyright John L. Welch 2018.