Appealing a TTAB Decision? Ties Go To the USPTO

The United States Court of Appeals for the Federal Circuit is the primary reviewing Court for a TTAB decision. Certain standards of review apply when the case involves the likelihood of confusion test, which is the same test trademark searchers apply when evaluating the potential for a conflict with a prior trademark. Understanding how the Trademark Trial and Appeal Board must support its factual findings on the likelihood of confusion factors helps us as trademark searchers understand how the examining attorneys at the United States Patent and Trademark Office will support their conclusions on the same likelihood of confusion factors.

In Stratus Networks, Inc. v. UBTA-UBET Communications Inc., the Federal Circuit addressed the standard of review applied to the factual findings of the likelihood of confusion factors from a TTAB decision. The Board’s findings of fact are reviewed for substantial evidence. If the factual findings are supported by substantial evidence in the record, then the Federal Circuit will not disturb the Board’s finding.

At first blush, substantial evidence seems like a high burden. In reality, it’s pretty low. According to the Federal Circuit, substantial evidence is more than a mere scintilla and is such relevant evidence as a reasonable mind would accept as adequate to support a conclusion. Where two different conclusions may be warranted based on the evidence of record, the Board’s decision to favor one conclusion over the other is the decision that the Federal Circuit must sustain.

This substantial evidence standard of review helps to explain the trend where the Board will find a conceptually weak mark when the number of relevant third-party registrations is 10 or more. Anything less may not satisfy the substantial evidence standard of review. It also helps us understand that having good facts in favor of registering a trademark is not good enough if there are also good facts against registering a trademark.

This does not mean that as trademark searchers we need to be overly cautious evaluating the similarity of the marks or relatedness of goods likelihood of confusion factors. It also does not mean that trademark owners need to ensure a mark is 100% in the clear before adopting a particular mark.

What it means is that all involved parties need to understand that ties go to USPTO, which means there should be a plan “B.” In close cases, too often are all of a trademark owner’s eggs put in one basket. When the preferred mark is considered to be a close call, it’s worth having a backup ready if the worst should happen.

Conceptual Weakness Must Focus on Registrant’s Goods

In Entertainment Content, Inc . v. Cooper Holdings, Inc., by change of name from Career Sports & Entertainment, Inc. we saw the Trademark Trial and Appeal Board chip away at the 17 third-party registrations that Cooper Holdings offered to demonstrate the conceptual weakness of the JUSTICE CENTRAL mark. What started as a promising argument quickly deteriorated to a total number of relevant, third-party marks below the 10 mark minimum.

The reason the argument ultimately failed was two-fold. First, Cooper Holdings did not focus on the Registrant’s services as they were described in the registration. Second, Cooper Holdings did not establish the relatedness of the services in most of the third-party registrations to the Registrant’s services.

Cooper Holdings filed an application to register the mark JUSTICE NETWORK (in standard characters) for, among other services, “television programming services” and “the production and distribution of television programs transmitted via various platforms across multiple forms of transmission media and other services.” Registrant had registered the mark JUSTICE CENTRAL for, among other services:

  • television programs in the field of law and courtroom legal proceedings;
  • entertainment programs in the field of law and
    courtroom legal proceedings accessible by cable,
    satellite, television, Internet, wireless devices,
    networks and via various platforms across multiple
    forms of transmission media;
  • providing programs in the field of law and courtroom
    legal proceedings accessible by cable, satellite,
    television, Internet, wireless networks and via various
    platforms across multiple forms of transmission media;
  • production and distribution of television shows.

Registrant’s services were limited to “courtroom legal proceedings” whereas Cooper Holdings’ services were unlimited. Accordingly, the parties’ services were legally identical.

Cooper Holdings offered 17 third-party registrations that contained the term JUSTICE. Five of the 17 third-party registrations were cancelled and one third-party registration was identified in Cooper Holdings’ brief; thus, not properly admitted into evidence. The remaining third-party registrations while identifying some form of entertainment did not identify courtroom legal proceedings as the content type. Cooper Holdings did not establish that the content type identified in the third-party registrations was related to courtroom legal proceedings. Accordingly, the Board chipped away at the 17 third-party registrations until the number was insufficient to establish the conceptual weakness of the JUSTICE CENTRAL mark.

Lessons from a Rare Trademark Refusal Reversal

The Trademark Trial and Appeal Board issues a trademark refusal reversal only about 10% of the time. So when a trademark refusal reversal occurs it is worth spending some time figuring out what lead to the reversal.

Soletanche Freyssinet applied to register the mark CMC (in standard characters) for “non-metallic underground columns for land stabilization and reinforcement that are fabricated and installed on-site.” The CMC application began with a broader goods description but was narrowed to the current description following a first Office Action. Two of the descriptions included in the original description were “reinforcement rods not of metal” and “non-metallic materials for building.”

The Trademark Office refused registration of Soletanche Freyssinet’s CMC mark based on a prior registered, identical mark CMC (in standard characters) for “full line of metals in sheet, rod, bar, angle, round, beam, castellated beam, cellular beam, flat beam, joist, strip, tube, plate, billet, square, and wire, form.” There were no limitations in the cited CMC mark and Soletanche Freyssinet did not petition to partially cancel the cited CMC mark to have any limitations imposed on the prior registration.

Instead, Soletanche Freyssinet focused on narrowing its identification to the true nature of its goods. In doing so, it introduced a level technicality that would allow the Board to consider evidence instead of relying solely on the words in the description of the goods to decide the relatedness of goods factor. Soletanche Freyssinet offered the declaration of one of its executives who explained the nature of its goods and how they differed from those goods offered under the cited CMC mark.

The Trademark Office did not offer any evidence only argument and speculation. It appears that the Trademark Office continued to argue the descriptions that Soletanche Freyssinet deleted from its application and not the amended description. For example, the Trademark Trial and Appeal Board quickly dismissed the argument the rods identified by the cited CMC mark could be used for stabilization just like Soletanche Freyssinet’s non-metallic rods. In reality, the “columns” identified in Soletanche Freyssinet’s application could have been made of non-metallic rods, but the Trademark Office did not offer evidence to establish this fact.

The Trademark Office offered evidence that in a general construction context, beams and columns are used to support other structures. But because Soletanche Freyssinet’s description identified that its columns were “fabricated and installed on-site” the general construction context was irrelevant. The Trademark Trial and Appeal Board required the Trademark Office to offer evidence in the relevant context.

Starting broad is still a good filing strategy, but voluntarily narrowing the description if a registration refusal issues is important. When making the amendment, introducing where the goods are sold or services are performed can be helpful. Finally, support the amendment with evidence. The Board, in this case, seemed to look at the declaration from Soletanche Freyssinet to understand why the particular words were used in the amended description.

TTAB Sides Heavily with the USPTO on Confusion in 2018

John Welch – author of The TTABlog – reviewed the Trademark Trial and Appeal Board decisions in 2018 that involved a likelihood of confusion refusal. He counted 219 decisions that involved a likelihood of confusion refusal. Two hundred of the 219 likelihood of confusion refusals were affirmed by the Trademark Trial and Appeal Board. Only 19 were reversed for an affirmance rate of 91.3%. He also reported that the 2018 affirmance percentage was slightly higher than the 2017 affirmance percentage.

It goes without saying that these are really bad odds for any trademark applicant contemplating an appeal of a likelihood of confusion refusal. However, it could be that the cases reaching the Trademark Trial and Appeal Board could and should have been prosecuted differently by the trademark applicant.

For example, in 2018, several trademark applicants attempted to win their argument that no likelihood of confusion existed by offering a meager number of third-party marks sharing an identical or similar term. Not being able to establish the conceptual weakness of a cited mark materially undermines that argument that the marks at issue are sufficiently dissimilar. Likewise, several trademark applicants attempted to show the goods or services at issue were unrelated without first narrowing the goods or services descriptions at issue. This is a losing argument 100% of the time unless the goods or services at issue are technical in nature or the goods or services description is vague.

What is important about the 91.3% affirmance rate is that there are things that can be done at the front end to avoid a likelihood of confusion refusal in the first place. This starts with conducting a preliminary trademark search that focuses on what is important: (1) mark similarity; (2) relatedness of the goods; and (3) dilution. A proper assessment of the search results will then lead to the preparation of a trademark application that has a good chance of avoiding a likelihood of confusion refusal.

KARUNA Fruit Infused Water is Related to Nutritional Supplements

Fulfill Food and Beverages, LLC’ s attempt to convince the Trademark Trial and Appeal Board that its KARUNA fruit infused water is unrelated to nutritional supplements when the marks at issue share an element fell flat. Fulfill’s failed attempt demonstrates once again that relying on intuition when evaluating the relatedness of goods and services factor can be a dangerous game.

FulFill sought to register the mark KARUNA THE ROOT OF GOOD HEALTH & Design for “a fruit infused plant-based drink, namely, filtered water infused with a fruit flavoring and plant-based ingredients,” which is a trademark attorney way of saying “fruit infused water.” The Trademark Office refused registration of FulFill’s mark on the ground that it was likely to cause confusion with a prior registration for KARUNA in connection with “nutritional supplements.” With respect to the similarity of the marks, the Board found that the dominant term in FulFill’s mark was KARUNA because the phrase THE ROOT OF GOOD HEALTH would be perceived by consumers as a slogan or motto and words are given more weight than designs. It is interesting that the Board found a slogan has less source identifying significance than a single word. Obviously some slogans, such as Nike’s Just Do It, have as much if not more source identifying significance than the single word.

Likewise, the Board too often give too little weight to the significance of designs. While it is true that a human has to physically say words to place an order, designs play a critical role in bringing the customer in to place that order in the first place.

The Board began its discussion of the relatedness of goods factor by reciting its standard policy.

When considering the similarity or dissimilarity of the goods, we note that goods need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is enough that the goods are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used or intended to be used therewith, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of the parties’ goods or services.

Based on the evidence submitted by the Examining Attorney, the Board found that fruit infused water can include or perform the same function as nutritional supplements. The Board ignored FulFill’s evidence of the actual nature of the KARUNA nutritional supplements. Because “nutritional supplements” is such a broad description, the Board said its hands are tied by precedent and it can’t consider the real world marketplace.

Toy Figures and Plush Toys are Similar Goods

Intuitively, toy figures and plush toys appear to be similar goods. Whether they are in fact similar goods is what the Trademark Trial and Appeal Board had to decide. The similar goods likelihood of confusion factor was the deciding factor in the In re Funko, LLC case. In disputes before the Trademark Office, the 13 factor DuPont test is applied. The Trademark Office will consider each DuPont factor for which there is evidence or argument. However, it is important to highlight that of the 13 DuPont factors, only two are considered to be dispositive of the likelihood of confusion finding. Those two DuPont factors are:  (1) the similarity of the marks; and (2) the similarity of the goods or services. Because these two factors can be dispositive, it is imperative that both are included in a trademark search.

Funko, LLC applied to register the mark PINT SIZE HEROES (Stylized) for “collectable toy figures.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark PINT SIZE PRODUCTIONS & Design for “plush toys; stuffed and plush toys; stuffed toy animals.” The Trademark Trial and Appeal Board had to decide the marks were being used in connection with similar goods. Pint Size Productions does not sell a branded stuffed animal. Instead, it is an online retailer that sells stuffed animals associated with the Boynton children’s book series.  It does not sell any brand of toy figure.

The Trademark Trial and Appeal Board focused on the evidence in the record that showed toy manufacturers selling both a plush toy and toy figure under the same mark. What was lacking from the record was any evidence that online or brick and mortar retailers not only sell other branded plush toys and toy figures, but also plush toys and toy figures branded with the store’s name. And it does not appear that Funko made this argument.

Instead, the Trademark Office went back to the well for its standard line that the determination of relatedness must be based on the descriptions contained in the application and registration at issue. Where the goods in an application or registration are broadly described, they are deemed to encompass all the goods of the nature and type described therein. In this case, the Board found that “collectable toy figures” can encompass plush toys. Therefore, all the Board waded into the real world marketplace waters, its decision was based on the tried and true presumptions that apply to broad identification of goods descriptions.