USPTO’s Strength Decision Supported by Substantial Evidence

The United States Court of Appeals for the Federal Circuit recently held that the USPTO’s strength finding was supported by substantial evidence when only 8 third-party registrations with no evidence of use were offered by the trademark applicant. The USPTO refused registration of JS ADL LLC’s ARTISAN NY & Design mark in connection with a variety of clothing items and accessories on the ground that it was likely to cause confusion with a prior registered mark for ARTESANO NEW YORK also for a variety of clothing items. The USPTO found that “artesano” is Spanish for “artisan” and JS ADL did not dispute this finding. In doing so, JS ADL’s primary argument was that the words ARTISAN and NEW YORK are so weak that its use of the Spanish word “artesano” and Design element was sufficient to avoid a likelihood of confusion.

To support its argument, in its Office Action response, JS ADL submitted 8 third-party registrations for marks containing the term ARTISAN for various clothing items and accessories. JS ADL actually submitted a total of 10 third-party registrations, but 2 were surnames. JS ADL did not submit any evidence of use for any of these third-party registrations.

The USPTO maintained the registration refusal despite JS ADL’s weakness argument and evidence. Curiously, JS ADL did not submit a Request for Reconsideration and instead chose to simply appeal the USPTO’s decision. To forego a Request for Reconsideration is a gutsy call because the record on appeal is frozen. In other words, all the trademark applicant’s evidence – save for some limited exceptions – must be submitted to during the prosecution of the application. To JS ADL’s credit, the TTAB has not been consistent on whether evidence of use is required in order to establish trademark weakness. Just two months ago, the Board found trademark weakness relying only on third-party registrations, no evidence of use. In this case, it turned out to be a mistake for JS ADL not to submit a Request for Reconsideration.

The Trademark Trial and Appeal Board affirmed the USPTO’s registration refusal and JS ADL appealed that decision to the United States Court of Appeals for the Federal Circuit. The Federal Circuit reviews the TTAB’s factual findings for substantial evidence. Where there is adequate
and substantial evidence to support either of two contrary
findings of fact, the one chosen by the TTAB is binding on
the Federal Circuit regardless of how the Court might have decided the issue if it had been raised de novo. This makes a reversal on appeal very difficult because the benefit of the doubt favors the Board.

The Federal Circuit agreed with the USPTO that JS ADL’s evidence did not establish that ARTESANO NEW YORK is a weak mark. First, the Court held that evidence purporting to show that the individual components of a composite mark are weak does not necessitate a finding that the combined terms also form a weak mark. Second, JS ADL did not offer any evidence of use for the marks displayed in the third-party registrations. Accordingly, the Federal Circuit affirmed that USPTO’s finding on strength.

Louis Vuitton Get’s It Half Right and Loses APOGEE Appeal

"Louis Vuitton store in Paris, France"

Louis Vuitton Malletier appears to employ a common trademark application filing strategy, which is to prepare the trademark application with broad goods descriptions. From there the broad description can be narrowed in an attempt to avoid a registration refusal should the Trademark Office issue an office action. We dare to say that most trademark applicants follow this filing strategy, which is why trademark searches must use broad terms when conducting their trademark searches. But narrowing a goods description alone is no substitute for a proper trademark search and trademark clearance opinion. Louis Vuitton learned this lesson the hard way in a recent case.

Louis Vuitton applied to register the mark APOGEE (in standard characters) for, among other goods, perfumes. The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with a prior registered mark APHOGEE (in standard characters) for “Hair care lotions; hair conditioners; hair creams; hair mousse; hair oils; hair shampoo; hair sprays; hair styling preparations; non-medicated hair treatment preparations for cosmetic purposes; non-medicated preparations all for the care of skin, hair, and scalp; hair moisturizers.”

Realizing that its description was too broad, Louis Vuitton voluntarily amended its description to narrow the channels of trade and classes of consumers to “non-professional use and sold only within Louis Vuitton Malletier stores, on Louis Vuitton Malletier’s website, and within Louis Vuitton Malletier’s store-within-store partnerships with high-end retail stores within Louis Vuitton Malletier’s exclusive distributor network.” Voluntarily narrowing its description was a must because the evidence of legion that it is common for perfume brands to also offer shampoos and other personal products under the same mark. However, Louis Vuitton’s choice of limitation begs the question of whether pursuing the application as hard as it did was worth it.

The limitation made by Louis Vuitton means that its rights in the APOGEE mark would exist only in the channels where only its products are sold. There is no opportunity for another company’s branded product to appear at the point of sale. Strength is not transferable from one well-known brand to another. And at least according to the Amazon reviews, the APHOGEE brand receives positive reviews. Difficult to see where Louis Vuitton’s hard would emanate from in this case. So while recognizing that an amendment is necessary, it is equally important to ensure that the proposed amendment does not render the resulting registration borderline worthless.

Despite the detailed description volunteered by Louis Vuitton, the company did not seek a corresponding amendment in the APHOGEE registration. Accordingly, the APHOGEE registration remained broad enough to include stores and channels where only Louis Vuitton goods are sold. Moreover, Louis Vuitton did not offer any evidence that APHOGEE was weak in its entirety or partially. Accordingly, the Trademark Trial and Appeal Board affirmed the registration refusal.

Minimum Third-Party Registration Trend Bites The Trademark Office

"ferret with mouth open symbolic of third-party registration trend biting trademark office"

It’s not often, but sometimes the Trademark Office relies on the trademark weakness argument to support a decision to refuse registration of a mark. In 2018, we talked about the emergence of a trend requiring a trademark applicant to offer at least 10 relevant, third-party registrations in order to demonstrate conceptual weakness. This trend carried over to 2019 and for the first time, we saw the trend applied to the Trademark Office.

Morgenstern Center for Orbital and Facial Plastic Surgery Inc. – that’s a mouthful so we will just use “Applicant” going forward – applied to register the mark MAIN LINE REFRESH (“MAIN LINE” disclaimed) for “medical consultations; medical services; cosmetic and plastic surgery.” The Trademark Office refused registration of Applicant’s mark on the ground that it was likely to cause confusion with three prior registered marks owned by two different entities:

(1) MAIN LINE HEALTH (standard characters, “HEALTH” disclaimed) for, among other services, “medical services”;

(2) MAIN LINE HEALTH & Design (“HEALTH” disclaimed) for, among other services, “medical services”; and

(3) MAIN LINE PLATIC SURGERY & Design for, among other services, “cosmetic and plastic surgery.”

Neither Applicant’s mark nor any of the cited marks contained limitations in the descriptions of the services. Accordingly, the services were deemed to be legally related, traveled in the same channels of trade, and appealed to all classes of consumers. It also meant that less similarity between the marks was necessary for a likelihood of confusion to exist.

Applicant successfully demonstrated that MAIN LINE was a weak term. Not only is the term geographically descriptive of a place in Pennsylvania, but it is also used by 110 medical clinics, physicians, and surgeons located in Pennsylvania. Accordingly, Applicant argued that the addition of the suggestive term REFRESH was sufficient to distinguish its MAIN LINE mark from the other MAIN LINE marks.

The Trademark Office attempted to demonstrate that REFRESH was conceptually weak and even descriptive of Applicant’s services by offered seven third-party registrations. This showing was three less than what the Trademark Trial and Appeal Board required in prior cases, so the Board held that REFRESH was suggestive of Applicant’s services. Because of this finding, the Board reversed the Trademark Office’s registration refusal.

Trademark Review Places COVFEFE Decision in the Top 7

"wristband with covfefe on it"

It is hard to forget the moment when then Candidate Trump tweeted late one night “Despite the constant negative press covfefe.” This tweet sparked a nationwide debate about the word “covfefe.” Not only did this word spark a debate, but it also caught the eye of some opportunists. One of those opportunists was John E. Gillard who applied to register the mark #COVFEFE (in standard characters) for “hats, t-shirts, wristbands as clothing; hoodies; jackets; ties as clothing; tops as clothing” in International Class 25. Unfortunately for Mr. Gillard, the Trademark Office refused registration of his #COVFEFE application on the ground that the term fails to function as a trademark.

Although a trademark applicant must declare that the mark is being used on all of the applied for goods, the Trademark Office requires an example of only one good displaying the mark to support a registration. Mr. Gillard submitted a rubber wristband, polo shirt, and baseball hat displaying the mark #COVFEFE as his specimens.

The Trademark Office argued that COVFEFE had no meaning when it was used by then Candidate Trump, but took on a meaning to refer to Donald Trump because of the extensive media and Internet coverage the Tweet received. The Trademark Office also offered evidence of the term COVFEFE used in an ornamental way on a variety of goods. All of this evidence suggested that consumers would understand Mr. Gillard’s use of #COVFEFE as commentary of then Candidate Trump and not as an indicator of source.

Just because a term has a known meaning does not remove it from the universe of terms available as potential trademarks. In fact, dictionary terms are commonly adopted as trademarks and service marks. The beauty about the Trademark Act is that any matter (words, sounds, smells, environments, touch, designs, colors, shapes, and taste) can function as a trademark.

Common laudatory phrases or statements that are ordinarily used in business or in a particular trade or industry, and slogans or other terms that are merely informational, are examples of claimed trademarks that may fail to function as such due to their nature. And how the mark is used on the good is not dispositive of whether the word functions as a trademark. Although placement of the proposed mark across the front a t-shirt (for example) is often used by the Trademark Office as evidence that the mark is merely ornamental and fails to function as a trademark. In this case, Mr. Gillard was smart and placed in the #COVFEFE mark in a small font size on the polo shirt and baseball hat in locations where consumers expect to see trademarks.

Nevertheless, the inclusion of the “#” symbol in the mark drawing primarily sunk Mr. Gillard’s application. The Board found that the hashtag symbol is understood as a piece of metadata used to identify or facilitate a search for a keyword or topic of interest. In this case, consumers would understand that #COVFEFE promoted the discussion of then Candidate Trump’s Tweet. Mr. Gillard may have stood a better chance of success if he would have applied for COVFEFE without the hashtag.

Three Tips for Reviewing Search Results with Broad Descriptions

"man in forest holding compass like navigating search results filled with broad descriptions"

The USPTO’s Acceptable Identifications Manual has been a blessing and a curse. It is a blessing because trademark applicants can find pre-approved goods or services description that accurately covers their actual goods or services, which eliminates one potential Office Action (i.e., registration refusal) the Trademark Office could issue against a pending trademark application. However, the Trademark Office has pre-approved some very broad descriptions.

In the software context, two of the broad descriptions are “computer software consultancy” and “downloadable software development kits (SDK).” These descriptions cover many fields for and functionality of the actual software. In the advertising context, there is a description of “advertising services.” This too covers a lot of ground. Nevertheless, trademark applicants routinely use these descriptions. In fact, a majority of trademark attorneys start with a pre-approved description and resort to crafting a manual description only if no legitimate option from the Acceptable Identifications Manual exists.

As trademark searchers, we know that the Trademark Office’s likelihood of confusion analysis is limited to the goods and services descriptions used in the application. And we also know that we need to use broad descriptions when we search even though this strategy may return a significant number of results to review. Here are three tips for reviewing results that include broad descriptions like “advertising services”:

  1. Look at the marks first. If the marks are similar, then look at the goods or services descriptions.
  2. If the goods or services descriptions are broad, then search the Internet to determine what goods or services the trademark owner is actually offering.
  3. If the goods or services the trademark owner is actually offering are similar to what you or your client is offering, put that mark in the “no” column. However, if the actual goods or services are different than what you or your client is offering, then put that mark in the “yes” column with an asterisk. The caveat is that the broad description used by the prior trademark owner may illicit an Office Action from the Trademark Office, but it may be overcome with a petition for partial cancellation to narrow the broad description to the marketplace reality.

Improper Strength Analysis Sinks Another Trademark Applicant

"skate boarder going descending skate ramp was the subject of a strength analysis case"

The strength analysis trend of a 10 third-party registration minimum to establish the conceptual weakness of a trademark rolls on. In the most recent Trademark Trial and Appeal Board case, seven third-party registrations were insufficient, and so were the statements of one trademark owner.

Shin-Kyu Choi applied to register the mark PRINCE KONG (in standard characters) for a variety of toys, games, sporting goods, and sporting good equipment. The Trademark Office refused registration of the PRINCE KONG mark on the ground that it was likely to cause confusion with two prior registered marks for KING KONG (stylized) in connection with toys, games, sporting goods, and sporting good equipment. Because Shin-Kyu Choi did not attempt to narrow the descriptions in the PRINCE KONG application or the KING KONG registrations, the Board concluded that the goods at issue were legally related.

With the goods at issue legally related, Applicant’s primary argument to focus on the strength analysis; namely, that the KING KONG registrations were conceptually weak and entitled to a narrow scope of rights. To support this argument Shin-Kyu Choi offered seven third-party registrations for KING KONG or contained the KONG term. There were issues with the relevance of the third-party registrations offered by Shin-Kyu Choi but the Board found that even giving the Applicant the benefit of the doubt, seven third-party registrations were too few to establish conceptual weakness.

Shin-Kyu Choi also offered the prior statements of one KING KONG trademark owner where during the prosecution of the application the trademark owner made the statement that KING KONG was a weak mark. The Board stated that a trademark owner’s contrary position during the prosecution of the application cannot substitute for the Board’s reaching its own conclusion on the record before it. The Board went on to say that such prior statements may be received in evidence “as merely illuminative of shade and tone in the total picture confronting the decision maker.”

This is an interesting position taken by the Board that prior statements are not given more weight. The second rule in the Trademark Trial and Appeal Board Manual of Procedure says that the rules of evidence for proceedings before the Board are the Federal Rules of Evidence. Federal Rule of Evidence 804 governs statements against interest, which is a statement statement made by a person which places them in a less advantageous position than if they had not made the statement and is as a consequence deemed credible as evidence. Finally, the Board’s precedent is clear that the Trademark Office’s opinion for what theoretically is happening in the marketplace should not displace the opinion of those in the marketplace.

Trademark attorneys are generally very careful about the positions are taken during the prosecution of an application for this very reason. And we should want trademark applicants to have consistent positions. Facts and circumstances change all the time when it comes to analyzing a trademark, but the burden should be on the party to demonstrate the change in circumstances, not that the Board simply gives prior statements little weight even in an ex parte situation.

Will the Trailblazer Benefit from Residual Goodwill in the U.S.?

Chevy license plate residual goodwill for trailblazer"

The Chevy Trailblazer is making its comeback to the United States after a ten-year hiatus. Chevy stopped production of the SUV in the U.S. in 2009, but did that effectively stop its trademark rights in the TRAILBLAZER mark as well? Likely not if Chevy can benefit from the concept of residual goodwill (also known as lingering goodwill).

The United States Patent and Trademark Office has a policy that absent an extraordinary situation, everything filed with the Trademark Office will remain public. This includes any pending applications or registrations that subsequently are abandoned. When an application or registration is abandoned, the record is marked “dead” in the Trademark Office’s database.

The legal precedent is legion that “dead” registrations cannot prevent the registration of a subsequent mark. Nevertheless, some trademark searchers argue that reviewing “dead” records is time well spent because abandoning a registration is not tantamount to abandoning all trademark rights and because of the concept of residual goodwill.

Residual goodwill occurs after a trademark owner has permanently discontinued use of a trademark or service mark (i.e., abandoned the mark), but there remains some minimal use of the mark in connection with selling off inventory, for example, or in connection with related goods or services. This argument generally only succeeds when additional factors favor a finding of non-abandonment, for example, where there has been a continued presence of branded products in the marketplace or the manufacture and sale of replacement parts.

It seems pretty clear that General Motors permanently discontinued use of the TRAILBLAZER mark for vehicles when it decided to end production. However, General Motors was smart when it prepared its trademark application for the TRAILBLAZER mark back in 1997. The description of goods in the TRAILBLAZER application read “motor vehicles, namely, sport utility vehicles, engines thereof and structural parts therefor.” According to the General Motors Parts Store website, parts for the Trailblazer continued to be available after production of the SUV stopped. General Motors next renewal deadline is July 1, 2019, so we will see what General Motors renews.

Advertising Copy and the Value a TM Attorney Can Provide

"Hugo Boss cologne hovering above a hand with no advertising copy"

The obvious service a trademark attorney provides is to evaluate the availability of prospective names and taglines as trademarks or service marks. After the prospective name is searched and the trademark attorney has delivered the opinion on its availability, then the focus turns to filing and prosecuting the trademark application. Leaving the trademark attorney to focus only on the prosecution of the trademark application could lead to a costly mistake.

Trademark owners should involve their trademark attorneys in reviewing advertising copy especially when that copy includes a reference to the trademark. This is a lesson that one trademark owner learned too late.

Talyoni, LLC applied to register the mark EL PATRON (in standard characters) for “perfumes and colognes.” The Trademark Office refused registration of Talyoni’s mark on the ground that it was likely to cause confusion with a prior registered mark BOSS (in stylized form) for, among other goods, “perfumery for personal use, namely, perfumes, eau de parfum.”

The Trademark Office offered numerous translations of the wording comprising EL PATRON, which translates in Spanish to “the boss.” However, the most damning evidence was Talyoni’s advertising copy. On its website, Tayloni wrote:

The boss knows that looking his best starts with the best. From a lush, verdant shampoo enriched with eucalyptus and aloe to an intensely hydrating conditioner with algae, sea minerals, and Moroccan oil, El Patron delivers luxury and refinement to your regimen.

El Patron

Be the boss. This is the spirit of El Patron. Born out of the desire to bring out the best in a man’s personal style.

These statements in Talyoni’s advertising copy left no room for arguing that El Patron conveyed a meaning to consumers other than “the boss.” This limitation was completely avoidable if Talyoni’s trademark attorney reviewed the advertising copy. But this is not an isolated incident and happens more frequently than it should. Therefore, have a trademark attorney briefly review advertising copy before using it.

Nestle is Next to Battle the First Sale Doctrine

"arm holding a Nestle crunch candy bar outdoors the importation of which is protected under the first sale doctrine"

Nestle USA, Inc. filed a lawsuit against Market Centre, Inc. for selling in the United States genuine product purchased in Mexico from Nestle Mexico, S.A. de C.V. The goods sold in the U.S. is considered a grey market good. Société des Produits Nestlé S.A. is the owner of the NESTLE and other trademarks in the United States and Mexico. Société des Produits Nestlé S.A. exclusively licenses its U.S. trademarks to Nestle USA and exclusively licenses its Mexican trademarks to Nestle Mexico, which are its operating subsidiaries in these two countries.

Nestle USA alleged, similar to PopSockets, that it has a robust quality control program in the U.S. and provides after-sale benefits to consumers such as receiving and addressing complaints and addressing spoilage issues. Not surprising, no allegations are made with respect to the quality control program administered by Nestle Mexico or the after sale benefits to consumers provided by Nestle Mexico. However, chances are the programs are very similar if not the same.

Similar to the PopSockets case where reselling a domestic product is not per se illegal, importing a genuine good from a foreign country to the United States is not per se illegal because in the United States under the first sale doctrine a trademark owner that releases its goods into commerce cannot prevent the subsequent resale of those goods by others. Whether “material differences” between imported goods and domestic goods exist will determine whether the sale of the grey market good is illegal.

The “difference” does not need to be enormous. Slight variations in labeling, packaging, or quality control measures can be sufficient if they are likely to influence consumers’ purchasing decisions. Some U.S. courts have held that when the U.S. distributor is a wholly-owned subsidiary of a foreign manufacturer, the existence of material differences does not give rise to trademark infringement because the goodwill associated with the trademark still remains under the control of the foreign manufacturer.

This is an argument that Nestle USA will undoubtedly have to face. Despite Nestle USA and Nestle Mexico being operating entities, the goodwill associated with the marks from these countries remains under the control of the trademark owner Société des Produits Nestlé S.A. And the trademark owner has an interest in maintaining consistent quality in its products and ensuring a positive consumer experience regardless of what geographic location in which its goods are sold.

However, whether consumers are likely to be confused trumps all including the first sale doctrine. If the court believes that consumers are likely to be confused by the differences between the goods imported from Mexico and the goods authorized for sale in the U.S., the Court is likely to side to Nestle USA in this case.

Service Mark Strength Can’t Be Established By A Strong Trademark

"orange grove trees where Sunkist has strong trademark rights can't establish service mark strength"

Trademark strength for likelihood of confusion purposes is often misunderstood for fame in the context of dilution. The two concepts are different with fame for dilution being difficult to achieve. The common mistake service mark owners make is to assume that because their rights are strong for particular goods or services that this strength transfers to other goods or services. Trademark strength in the likelihood of confusion context does not transfer this way, which is a lesson Sunkist Growers, Inc. learned too late.

Sunkissed Families sought to register the service mark SUNKISSED FAMILIES (in standard characters with FAMILIES disclaimed) for “information in the field of parenting concerning the health of children” in International Class 44. The Trademark Office approved the mark for publication and Sunkist Growers, Inc. opposed.

Sunkist Growers plead numerous registrations for marks containing SUNKIST in connection with a wide variety of goods and services. However, because Sunkist Growers did not plead a family of SUNKIST marks, the Board focused on the registration with the most relevant description; namely, SUNKIST KIDS (Stylized) for “education and entertainment services, namely, providing a website featuring games, quizzes, experiments, educational lesson plans for teachers and educators, and related multimedia materials all in the field of food, health, and diet for the benefit of children” in Class 41. All trademark searchers should note that the Board looked for related services descriptions not overlapping International Class numbers.

Sunkist Growers argued that its mark was commercially strong entitling it to a broad scope of rights. The Board found that while Sunkist Growers provided evidence of its strength in the fruit field it provided no evidence of the strength of the SUNKIST KIDS mark in the education and entertainment services field. Therefore, the Board held that the SUNKIST KIDS mark was entitled to a normal scope of protection afforded to inherently distinctive marks. Sunkissed Families was only able to must 9 instances of third-party use of the SUNKIST mark, which was less than the 10 third-party registrations or use needed to establish conceptual weakness.