On March 10, Leslie Lott presented a review of important trademark cases decided in 2020 by the United State Supreme Court, United States Circuit Courts of Appeal, United States District Courts, and the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.
TRADEMARK CASE REVIEW 2020
Practising Law Institute
March 10, 2021
Leslie J. Lott
Lott & Fischer, PL
Trademark and Unfair Competition
Federal Court and Trademark Trial and Appeal Board Cases 2020
I. United States Supreme Court
i. United States Patent and Trademark Office v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ 2d 10729; 2020 WL 3518365 (June 30, 2020).
Generic term can be rescued by addition of tld if owner can establish trademark significance to consumers.
Booking.com B.V. offers online hotel and travel registration services. It filed to register its marks, and the United States Patent and Trademark Office (USPTO) refused registration on the basis that “Booking.com” was generic and could not identify the source of the applicant’s services, but only the services themselves. The USPTO sought to adopt a bright line rule that any combination of a generic word with a top level domain, including “.com,” would result in an unregistrable generic term, the top level domain indicating only that the generic services were offered online.
The applicant appealed to the U.S. District Court and ultimately to the U.S. Court of Appeals for the Fourth Circuit, each of which overturned the USPTO, holding that booking.com should register.
The Supreme Court held that there was no such per se rule. The determining question is what the term as a whole signifies to the consuming public. “[W]hether a term is generic depends on its meaning to consumers.” A term’s meaning to customers can be established by evidence such as consumer surveys, dictionaries and usage by consumers.
Although there was no question that “booking” is generic for travel reservations, and no question that the addition of .com adds no distinctiveness, a mark must be considered as a whole and not dissected into its component parts. Taken as a whole, does the mark indicate to the consuming public a class of goods or services or the specific source or provider for such goods or services.
In this case Booking.com B.V.’s consumer survey established that 75% of consumers recognized “booking.com” as a brand rather than a generic service. Since “Booking.com” was not a generic name to consumers, the Court ruled, it should not be precluded from registration on the basis of genericism.
As to the concern that a “generic.com” term only conveys that the generic goods or services are offered on-line, the Court noted that only one entity can use any given domain name, making it far more likely that consumers would consider the domain name as referring to a specific business rather than a class of goods or services.
The USPTO was largely concerned about restricting competition by providing trademark protection to a “generic.com” mark. Specifically, the USPTO was concerned that “trademark protection for ‘Booking.com’ could exclude or inhibit competitors from using the term ‘booking’ or adopting domain names like ‘ebooking.com’ or ‘hotel-booking.com.'”
As far as the Court was concerned, two factors significantly lessened such concerns. Trademark owners would still have to show a likelihood of confusion to establish infringement. The weaker the mark, the less likely the owner of a “generic.com” mark could establish the required likelihood of confusion (Booking.Com B.V. conceded that “Booking.com” would be a weak mark, and because it is one of many similarly worded marks, close variations of the term were unlikely to infringe). The Court reasoned that “[w]hen a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner.”
Secondly, competitors would still be permitted to use the generic wording descriptively under the doctrine of fair use. The fair use defense permits the use of a descriptive term other than as a mark to describe the party’s own goods or services (Booking.com B.V. acknowledged that registration of “Booking.com” would not prevent competitors from using the word “booking” to describe their own services).
The Supreme Court affirmed the Fourth Circuit, finding Booking.com eligible for trademark registration.
This makes it possible for others to seek to register generic terms coupled with top level domains, but obtaining registration is likely to be far from easy. Applicants will need compelling evidence to establish that consumers view the marks as indicating source rather than the class or type of goods or services – as Professor McCarthy says: indicating “who” not “what.” And even if registered, there will also be a question about the scope of protection that will be given such marks. Still, this first hurdle has been overcome.
In October 2020, the USPTO issued Examination Guide 3-20 “Generic.com Terms after USPTO v. Booking.com.” It states, “[a]ccordingly, generic.com terms are potentially capable of serving as a mark and may be eligible for registration on the Supplemental Register, or on the Principal Register upon a sufficient showing of acquired distinctiveness. However, a generic.com term may still be refused as generic when warranted by the evidence in the application of record.” The Examination Guide provided examples of potential evidence of genericism:
• a combination of dictionary excerpts defining the component elements of the
• significant evidence of generic usage of those elements or the combined term by
consumers or competitors in the relevant marketplace;
• evidence of the “generic.com” term used by third parties as part of their domain
names (e.g., “[adjective]generic.com”) in connection with the same or similar goods
and/or services; or
• evidence of the applicant’s own use of the generic.com term.
The Examination Guide noted that: “evidence of five year’s use or reliance solely on a prior registration for the same term will usually be insufficient to support a Section 2(f) claim for a generic.com term. Typically, the applicant will need to prove a significant amount of actual evidence that the generic.com term has acquired distinctiveness in the minds of consumers.”
As examples of evidence that would support a 2(f) claim, the Examination Guide included:
· consumer surveys;
· consumer declarations;
· declarations or other relevant and probative evidence showing the duration, extent, and nature of the applicant’s use of the proposed mark, including the degree of exclusivity of use;
· related advertising expenditures;
· letters or statements from the trade or public; and any other appropriate evidence tending to show that the proposed mark distinguishes the goods or services to consumers.
i. Romag Fasteners, Inc. v. Fossil Grp., Inc., 140 S. Ct. 1492 (2020).
Innocent infringement justifies award of profits under Lanham Act.
In Romag Fasteners, Inc v. Fossil Grp., Inc., the Court determined that, under the language of the Lahnam Act, trademark owners are entitled to an award of even an innocent infringer’s profits.
Lanham Act Section 35, 15 U.S.C. § 1117(a), provides that the owner of a registered mark shall be entitled to recover for a “violation of section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title . . . (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.” In this case, the plaintiff had established a violation of § 1125(a), the section providing a cause of action for false or misleading use of a trademark. The statutory language clearly did not require a showing of willfulness to sustain an award of profits under § 1125(a). In contrast, § 1125(c), which provides remedies for trademark dilution, expressly requires a willful violation for recovery of the defendant’s profits. The Court noted that it did not “usually read into statutes words that aren’t there” and that it is “a temptation we are doubly careful to avoid when Congress has (as here) included the term in question [i.e., willfulness] elsewhere in the very same statutory provision.” (emphasis added).
The Court also relied on other provisions of the Lanham Act, which “speaks often and expressly about mental states.” The section involving counterfeit marks, § 1117(b), provides for treble profits or damages when “a defendant engages in certain acts intentionally and with specified knowledge.” The Court also looked to § 1117(c), which increases the cap on statutory damages for counterfeit marks from $200,000 to $2,000,000 for certain willful violations. The Lanham Act provision that authorizes destruction of infringing items, § 1118, requires that the plaintiff “proves any violation of § 1125(a) or a willful violation of § 1125(c).”
In contrast, § 1114 limits the remedy for certain innocent infringers to an injunction. The Court considered that these various statutory provisions in the Lanham Act reflect that Congress “exhibit[ed] careful care with mens rea standards.” It then stated that, “the absence of any such standard in the provision before us, thus, seems all the more telling.” Accordingly, the Court held that a showing of willfulness is not necessary to an award of profits under § 1117(a).
c. Preclusive Effect
i. Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp., Inc., 140 S. Ct. 1589 (2020).
NO claim preclusion, absent a “common nucleus of operative fact.”
Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp., Inc. concerned claim preclusion (res judicata), and whether the doctrine barred a defense to trademark infringement.
The trademarks involved in this case were respondent Marcel’s registered GET LUCKY mark and petitioner Lucky Brand’s registered LUCKY BRAND mark and other marks containing the word “lucky.” The dispute spanned 20 years and resulted in three rounds of litigation, commencing in 2001, 2005 and 2011. Marcel brought the first action, accusing Lucky Brand of infringing its Get Lucky mark. It was settled in 2003, with Lucky Brand agreeing to stop using the phrase “Get Lucky” in exchange for a release of claims against it based on use of its own marks.
In 2005, Lucky Brand brought the second action, accusing Marcel and its licensees of trademark infringement. Marcel’s counterclaims included an action for Lucky Brand’s continued use of “Get Lucky,” but did not include infringement claims against Lucky Brand’s use of its own trademarks. Lucky Brand raised the settlement agreement in its motion to dismiss the counterclaims and also in its answer to the complaint, claiming the settlement agreement barred the claims. Lucky Brand did not raise the settlement agreement as a defense again as the case progressed. Ultimately, the court ruled against Lucky Brand, permanently enjoining its infringement of Marcel’s LUCKY BRAND mark and the jury ruling against Lucky Brand on Marcel’s remaining counterclaims.
In 2011, Marcel commenced another lawsuit alleging that Lucky Brand’s use of its own marks including the word “lucky” infringed Marcel’s GET LUCKY mark. Lucky Brand asserted, as it had in its answer and its motion to dismiss in the 2005 action, that Marcel had released these claims under the settlement agreement. Marcel argued that Lucky Brand was precluded from raising this defense because it could have but failed to do so in the 2005 Action. The U.S. Court of Appeals for the Second Circuit agreed, finding that claim preclusion barred Lucky Brand from raising the settlement agreement as a defense. The court concluded that “defense preclusion” prohibited Lucky Brand from raising an unlitigated defense that it should have raised earlier.
The Court noted that res judicata comprises two distinct doctrines which address the preclusive effect of prior litigation:
i. Issue preclusion or collateral estoppel precludes a party from re-litigating an issue actually decided in a prior case and necessary to the judgment; and
ii. Claim preclusion sometimes called res judicata, prevents parties from raising issues that could have been raised and decided in a prior action – even if they were not actually litigated. “If a later suit advances the same claim as an earlier suit between the same parties, the earlier suit’s judgment ‘prevents litigation of all grounds for, or defenses to, recovery that were previously available to the parties, regardless of whether they were asserted or determined in the prior proceeding.'” (citations omitted).
The Court declined to adopt the terminology of the Second Circuit, “defense preclusion” as a standalone category of res judicata, saying that any such preclusion of defenses must satisfy the requirements of issue preclusion or claim preclusion. Since assertion of the settlement agreement was never actually litigated, the parties agreed that issue preclusion did not apply. In order for claim preclusion or res judicata to apply, the causes of action would have to have been the same. In this case, however litigation rounds 2 and 3 “were grounded on different conduct, involving different marks, occurring at different times. They thus did not share a ‘common nucleus of operative facts.'”
In the 2005 Action, Marcel alleged that Lucky Brand infringed Marcel’s GET LUCKY mark. The 2011 Action, on the other hand, did not allege use of Marcel’s GET LUCKY mark. The issue was whether Lucky Brand’s use of its own marks that included the word “lucky” infringed Marcel’s LUCKY BRAND mark.
In addition, the challenged conduct occurred after the conclusion of the 2005 Action. Timing is important; claim preclusion does not generally apply to events that arise after the original complaint is filed. Events which occur after the plaintiff commences a lawsuit often “give rise to new material operative facts that in themselves or taken in conjunction with the antecedent facts create a new claim for relief.”
In particular, a claim relating to trademark enforcement and likelihood of confusion “turns on extrinsic facts that change over time.” The Court agreed with Lucky Brand that liability for trademark infringement “turns on marketplace realities that can change dramatically from year to year.” For all of these reasons, the Court found that the two actions did not share a common nucleus of operative fact, a necessary element of claim preclusion. Consequently, Marcel could not preclude Lucky Brand from raising this defense.
II. Federal Courts of Appeal
i. Tiffany & Co. v. Costco Wholesale Corp., Case No. 17-2798, the U.S. Court of Appeals for the Second Circuit (2nd Cir. 2020).
“Diamonds are a girl’s best friend.” $21 Million Judgment on Summary Judgment Reversed. In 2012, Forbes Magazine published an article: “Deconstructing The Tiffany Setting, The World’s Most Popular Engagement Ring.” According to the article, before Tiffany developed its iconic Tiffany setting in 1886, all diamonds were set in a bezel, or a complete circle of metal so
that only the top was visible. Charles Lewis Tiffany developed an entirely new concept lifting a round brilliant cut diamond above the band on six prongs so that light penetrates the sides and enhances the stone’s brilliance. It was immensely popular and reportedly is, to this day, the most sought after style for engagement rings. So much so, that the Tiffany setting nomenclature is often applied to rings manufactured by other jewelers, including Costco Wholesale Corp. (“Costco”). In 2013 Tiffany & Co. sued Costco, under the Lanham Act and New York law, alleging that thousands of Costco members bought engagement rings under the belief that they were authentic TIFFANY merchandise. Costco defended, arguing that it was entitled under the Lanham Act to descriptive fair use of an otherwise protected mark. The district court granted summary judgment for Tiffany, holding that no reasonable jury could find for Costco and that Costco’s infringement constituted counterfeiting as a matter of law. In a 2015 advisory jury trial on the questions of damages, the district court awarded Tiffany trebled profits along with punitive damages and prejudgment interest totaling $21,010,438.35. Costco moved to challenge, among other issues, how the damages amount had been calculated. Not only did the judge reject Costco’s challenge of an incorrect calculation for damages, she also ruled that Tiffany would be entitled to almost $6 million in attorney’s fees.
Costco filed an appeal and the Second Circuit vacated the judgment, agreeing with Costco that the district court’s determination of liability at the summary judgment stage was inappropriate and remanding the case for trial.
The court determined that the evidence submitted at the summary judgment stage was inadequate. Costco raised genuine issues of fact on three relevant factors on likelihood of confusion: actual confusion, bad faith, and sophistication of purchasers. The court determined that “[a] reasonable jury could conclude that Costco did not intend to mislead its customers and that signs bearing the word ‘Tiffany’ were the product of a good-faith attempt to communicate to its customers the setting style of certain rings that it sold.” It noted a prior Second Circuit decision finding “that purchasers of diamond engagement rings educate themselves so as to become discerning customers.”
Costco presented evidence that “‘Tiffany’ is a broadly recognized term denoting a particular style of pronged ring setting,” and the Second Circuit held that Costco created a triable question on its fair use defense, advising that “[t]here is nothing inherently absurd about a single word’s being both a source identifier and a descriptive term within the same product class.”
The Second Circuit also vacated the decision on the counterfeiting claim because it was based on the trademark infringement finding and further noted “that it is likely inappropriate to impose liability for trademark counterfeiting when a defendant is able to establish . . . that it used a term identical to the registered mark otherwise than as a mark.”
b. Product Packaging Design Marks
i. In re Forney Industries, 955 F.3d 940 (Fed. Cir. 2020).
Inherent Distinctiveness Possible for Product Packaging Color Marks.
In 2018, the TTAB ruled that a color mark for multiple colors applied to product packaging cannot be inherently distinctive, upholding the Examining Attorney’s rejection of Forney’s application to register its blister packaging background comprising the colors “red into yellow with a black banner located near the top as applied to packaging” for metal hardware, welding equipment, safety goods and marking products.
The TTAB decision looked to the Wal-Mart and Qualitex opinions, which indicated that product design cannot be inherently distinctive, but the Federal Circuit drew a distinction between product configuration and product packaging, or trade dress, and noted the Two Pesos decision determined that trade dress could be inherently distinctive. The CAFC held that “color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design.”
Where the Board saw “no legal distinction between a mark consisting of a single color and one, such as [Forney’s], consisting of multiple colors without additional elements, e.g., shapes or designs,” the CAFC accepted Forney’s argument that the proposed mark “is not just a ‘color mark’ but also a ‘symbol.'” The court differentiated between product design and product packaging marks, holding “a distinct color-based product packaging can indicate the source of the goods to a consumer, and, therefore, can be inherently distinctive.”
The question for the Board was whether the proposed mark is “sufficiently indicative of the source of the goods contained in that packaging.” That assessment must be made “based on the overall impression created by both the colors employed and the pattern created by those colors.”
The court vacated the TTAB decision and remanded for the Board to consider, whether, for the uses proposed, Forney’s proposed mark is inherently distinctive under the Seabrook factors, considering the impression created by an overall view of the elements claimed.
c. First Amendment/Parody
i. VIP Products LLC v. Jack Daniel’s Properties, Inc., 953 F.3d 1170 (9th Cir. 2020).
“Chewy Vuitton” Revisited -“Bad Spaniels” Reversed on Basis of First Amendment.
VIP Products produced a dog toy called “Bad Spaniels Silly Squeaker” which resembled a Jack Daniels whiskey bottle. An image of a spaniel over the words “Bad Spaniels” replaced the “Jack Daniel’s” name on the label, and where the Jack Daniel’s label reads “Old No. 7 Brand Tennessee Sour Mash Whiskey” the label on the “Bad Spaniels” toy reads: “the Old No. 2 on your Tennessee Carpet.” Jack Daniel’s sued for trademark infringement and prevailed at a four day bench trial before the District of Arizona.
The Ninth Circuit affirmed the district court’s summary judgment in favor of Jack Daniel’s that its trade dress and bottle design were distinctive, non-functional and entitled to trademark protection. The district court correctly rejected VIP’s request for cancellation of Jack Daniel’s registered trademark and its nominative fair use defense. The appellate court vacated the district court’s judgment on trademark infringement, however, concluding that the Bad Spaniels dog toy was an expressive work entitled to First Amendment protection.
The court applied the two-pronged Rogers test, requiring the plaintiff to show that the defendant’s use of the mark was either 1) not artistically relevant to the underlying work, or 2) explicitly misleading consumers as to the source or content of the work.
It cited to its recent decision in connection with greeting cards reading “Honey Badger Don’t Care” and “Honey Badger Don’t Give a S——” Gordon v. Drape Creative, Inc., 909 F. 3d 257, 264 (9th Cir. 2018), among others, in requiring a balance between the First Amendment and trademark rights. “Like the greeting cards in Gordon, the Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work.” The court also cited to the Fourth Circuit’s decision in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F. 3d 252 (4th Cir. 2007), which held that dog toys which “loosely resemble[d]” small Louis Vuitton handbags were “successful parodies of LVM handbags and the LVM marks and trade dress” and therefore did not infringe. Finding the two cases very similar, the court said: “No different conclusion is possible here.”
Because the Bad Spaniels toy was an expressive work, the trial court erred in not applying the Rogers test before finding trademark infringement. Further, even though VIP used Jack Daniel’s trade dress and bottle design to sell Bad Spaniels, they were also used to convey a humorous message, protected by the First Amendment, and were therefore noncommercial under the Lanham Act. VIP was therefore entitled to judgment in its favor on the federal and state law dilution claims.
The Ninth Circuit affirmed the district court’s summary judgment in favor of Jack Daniel’s on the issues of aesthetic functionality and distinctiveness, affirmed the judgment as to the validity of Jack Daniel’s registered mark, reversed the judgment of dilution, vacated the judgment after trial of infringement and remanded for further proceedings. The panel also vacated the permanent injunction prohibiting VIP from manufacturing and selling the Bad Spaniels dog toy.
d. False Advertising
i. Molson Coors Beverage Co. USA LLC v. Anheuser-Busch Companies, LLC, 957 F.3d 837 (7th Cir. 2020).
Mocking Super Bowl Ad Not False Advertising.
The annual NFL Super Bowl is famous not only as a sports contest, but also for the creative and entertaining advertising that is produced specifically for the event each year. In fact, rumor has it that among the roughly 100 million people who watch “the most-watched television event of the year” are a number who are drawn primarily by the commercials.
During 2019’s Super Bowl LIII, Anheuser Busch aired a commercial that mocked Miller Light and Coors Light for using corn syrup as an ingredient. Molson Coors filed suit for false advertising under the Lanham Act, claiming that the ads would deceive customers into thinking that its products actually contained corn syrup when, in fact, it was actually used only as a “brewing fermentation aid” and is not an actual ingredient of the final product. Molson Coors claimed the Bud Light ad campaign was intentionally designed to mislead consumers into believing that when they drink Miller Lite or Coors Light they are consuming corn syrup. Even if the ads never explicitly said so, this was, according to Molson Coors, their clear intention and likely effect. Molson Coors also argued that the campaign was especially damaging because corn syrup is a “triggering” substance: “Consumers have become increasingly health-conscious in recent years, and negatively associate corn syrup, particularly the [high fructose corn syrup] sweetener added to some soft drinks . . . with adverse health effects and an unhealthy lifestyle.”
On Motion for preliminary injunction, Anheuser-Busch was required to discontinue some of its ads, but not others. The court ruled, for example, that Anheuser-Busch could continue accurately stating that Miller Lite and Coors Light are “brewed with” or “made with” corn syrup (and that Bud Light is not), but could not use the words “corn syrup” in connection with Miller Lite or Coors Light, without terms such as “brewed with” or “made with.”
The appellate court, on the other hand, was decidedly unsympathetic. The court focused on the fact that the plaintiff itself admits it uses corn syrup in making its products. “By choosing a word such as ‘ingredients’ with multiple potential meanings, Molson Coors brought this problem on itself. It is enough for us to hold that it is not ‘false or misleading.'” Whether the use of that ingredient was a bad thing, the court said, was for “consumers rather than the judiciary to decide.” “If Molson Coors does not like the sneering tone of Anheuser-Busch’s ads, it can mock Bud Light in return, the court wrote. “Litigation should not be a substitute for competition in the market.”
While Anheuser-Busch was ultimately exonerated in this case, it is important to note that the case was brought on the basis of the implied message, not on the literal claim that Molson Coors uses corn syrup. Advertising must not only be literally true, but must not create a false impression, or risk a potentially successful claim for false advertising.
III. Federal District Courts
a. First Amendment
i. AM Gen. LLC v. Activision Blizzard Inc., 450 F. Supp. 3d 467 (S.D.N.Y. 2020).
First Amendment Permits Depiction of HUMVEE in Call of Duty games.
AM General (AMG) was first awarded a U.S. Department of Defense contract to build the High Mobility Multipurpose Wheeled Vehicle (HMMWV) in 1983. Known popularly as the HUMVEE, the brand encompasses a family of light, four-wheel drive military trucks and utility vehicles and has become “the backbone of U.S. defense tactical vehicle fleets around the world” and “an essential part of U.S. military operations.” “[T]he Humvee has become an iconic and a ubiquitous symbol of the modern American military” not only for U.S. forces, but for the militaries of over 50 other countries.
In addition, AMG owns the HUMVEE brand for an astounding array of other products, and licenses its use, including for toys and video games.
Defendant, Activision Blizzard is the owner of the popular first person shooter “Call of Duty” video games that commonly feature HUMVEE vehicles in their realistic, cinematic set depictions of warfare. AMG took exception to the “Call of Duty” HUMVEE depictions and filed suit in the Southern District of New York for trademark and trade dress infringement, unfair competition and dilution. The parties filed cross motions for Summary Judgment.
Citing to First Amendment free speech concerns when a defendant’s product is artistic or expressive, the court interpreted the Lanham Act narrowly, applying the Rogers v. Grimaldi, two-prong test. When a use is expressive, the Lanham Act applies only: 1) if the use of the Trademark has no artistic relevance to the underlying work whatsoever; or 2) explicitly misleads as to the source of the content of the work. Likelihood of confusion evidence must be “particularly compelling” to outweigh First Amendment concerns. The court noted, citing the Rogers case, that even a survey that establishes confusion is not necessarily adequate.
The court found an “artistically relevant” use of the HUMVEE depictions as an integral element of the artistic work, adequate to outweigh what it found was a moderate risk of confusion.
“If realism is an artistic goal, then the presence in modern warfare games of vehicles employed by actual militaries undoubtedly furthers that goal.” AMG failed to establish that Activision’s depictions of HUMVEES in its video games and related promotional explicitly mislead consumers, and entered summary judgment for Defendant on all claims.
b. Preliminary Injunction
i. Future Proof Brands, LLC v. Molson Coors Bev. Co., 982 F.3d 280 (5th Cir. 2020).
Vizzy v. Brizzy no Preliminary Injunction absent Proof of Confusion.
Future Proof Brands launched its “BRIZZY” hard seltzer in September of 2019. Millercoors LLC, Molson’s former U.S. entity, announced its introduction of “VIZZY” hard seltzer in the spring of 2020. Seeking to prevent the launch of VIZZY, Future Proof brought action for trademark infringement on February 6, 2020 and moved for preliminary injunction and expedited discovery.
Without setting the motion for hearing, the court ruled. The plaintiff failed to meet its burden of proof on likely success on the merits and its motion was denied. Analyzing the likelihood of confusion factors, the court looked first to the strength of the mark, both conceptual and commercial. The court found “a common root between the plaintiff’s mark and that of the defendants: ‘fizzy,'” a descriptive adjective. “Plaintiff cannot realistically hope that by obtaining a mark based on and characterized dominantly by one word (‘fizzy’), it can prevent competitors from doing the same.” Conceptually, the mark was weak.
Finding “a plethora of competing products humorously close to plaintiff’s mark,” including IZZY, BIZZY, FIZZY and IZZE, the plaintiff’s mark lacked commercial strength as well. Absent evidence of actual confusion, and with notable differences in logos, font, coloring, cans and packaging, evidence of likelihood of confusion was lacking.
Because the plaintiff’s evidence was insufficient to carry its burden of persuasion on the substantial likelihood of success prong, the court was unable to grant the “extraordinary remedy” of preliminary injunction. Since the motion for expedited discovery was in anticipation of preparing for the preliminary injunction hearing, that motion was denied as moot. In a statement released after the ruling, plaintiff insisted that its legal position had merit and that it would be moving forward, confident in its ultimate success.
c. Likelihood of Confusion
i. Reply All Corp. v. Gimlet Media, Inc., Case No. 1:15-cv-04950, in the U.S. District Court for the Eastern District of New York.
The Eastern District of New York entered summary judgment for the defendant on all counts and dismissed the complaint against the defendant, a producer of podcasts, including a podcast titled Reply All. Plaintiff, Reply All Corp., provides a software service “through which users can create and share publicly available conversations.” Its trademark REPLYALL predated the defendant’s podcast. It is registered for “computer services, namely, creating an on-line community for registered users to form groups and create publicly viewable conversations where group members are the only individuals who can contribute to the conversations.” The defendant obtained a U.S. registration for its mark in respect of: “entertainment services, namely, providing podcasts on the subject of the internet.”
The court evaluated the Second Circuit’s eight Polaroid factors and found “moderate” conceptual strength in the plaintiff’s REPLYALL mark, and a lack of commercial strength. The court found the marks used for different purposes and presented differently to the public, appearing in different channels of trade, and plaintiff unlikely to bridge the commercial gap between them. Misdirected social media posts and unsolicited emails praising the defendant’s podcast were evidence only of general confusion and not “mistaken purchasing decisions, damage to good will or loss of control of reputation.” Two emails which actually appeared to mistake plaintiff with defendant’s podcast were insufficient to evidence actual confusion. Notwithstanding defendant’s entering into pre-suit negotiations for a license from the plaintiff, the court made no finding of bad faith.
Finding the plaintiff’s motion for summary judgment to be “without merit,” the court granted the defendant’s motion for summary judgment on all counts.
IV. Trademark Trial and Appeal Board
i. AT&T Mobility LLC v. Mark Thomann and Dormitus Brands LLC, 2020 USPQ2d 43785 (TTAB 2020) [precedential].
The Board bifurcated this proceeding into two phases, addressing in this case only the question of whether Opposer AT&T Mobility, LLC (“AT&T”) had standing to bring the action against Applicant Dormitus Brands LLC (“Dormitus”) with respect to Dormitus’ trademark applications for the marks CINGULAR and CINGULAR WIRELESS and Design for cell phones and related products. AT&T opposed registration of Dormitus’ marks on the following grounds: (1) false suggestion of a connection under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a); (2) misrepresentation of source under Section 14(3), 15 U.S.C. § 1064(3); (3) lack of a bona fide intention to use the marks as of the filing date of the involved applications; and (4) that the applications are void ab initio due to an invalid assignment under Section 10(a)(1), 15 U.S.C. § 1061(a)(1). Applicant argued that Opposer had abandoned the mark CINGULAR when it changed its name from Cingular Wireless LLC to its current name, AT&T Mobility LLC, and consequently lacked standing.
In its opinion, the Board reasoned, “[t]o establish its standing, Opposer must prove that it has a ‘real interest’ in the proceeding beyond that of a mere intermeddler, and a ‘reasonable basis’ for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). The Board further explained that for a claim under Section 2(a) – a claim of false suggestion of a connection, which was one of Opposer’s four claims – “Opposer need show only that it has a real interest in the proceeding and a reasonable belief that it will suffer injury flowing directly from the registration of Applicant’s marks.” Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1385 (TTAB 1991). If Opposer demonstrates standing on this ground, then it may assert any other available statutory grounds for opposition set forth in the Trademark Act.
The Board analyzed Opposer’s claims in support of its standing, namely:
(1) its persona as the original Cingular Wireless LLC, whose business continues to this day; (2) its interest in use of the term CINGULAR by its controlled subsidiary, New Cingular Wireless PCS, LLC (“New Cingular”), in its trade name; (3) its reasonable belief that due to residual goodwill in the marks, Applicant’s use of the CINGULAR mark would “cannibalize” Opposer’s business; and (4) its reasonable belief that if the Federal Communications Commission (“FCC”) were to receive complaints from consumers about Applicant’s business conducted under the mark CINGULAR, the FCC would mistakenly and harmfully investigate Opposer.
And it then analyzed Applicant’s arguments:
Opposer abandoned the CINGULAR marks when it stopped using the mark after “making the switch” to AT&T; that Opposer’s CINGULAR registrations have expired; that New Cingular does business as AT&T Mobility and does not use its legal name (New Cingular Wireless PCS, LLC) except on formal legal documents; and that “[c]ustomer-facing interactions are under the name AT&T Mobility.”
The Board first considered whether New Cingular Wireless PCS, LLC (“New Cingular”) uses CINGULAR in its trade name and then whether New Cingular’s use establishes Opposer’s standing. As to the first question, the Board concluded that the record supported New Cingular’s use of CINGULAR in its trade name and that the trade name is known to the relevant public. As to the second question, the Board stated, “[t]he parent corporation of a wholly owned subsidiary ‘can reasonably believe that damage to the subsidiary will naturally lead to financial injury to itself'” and concluded that because Opposer had shown that it owns a majority interest in AT&T Mobility II LLC, which owns a 100% interest in New Cingular, Opposer had established the requisite relationship to New Cingular such that it “‘can reasonably believe that damage to the subsidiary will naturally lead to financial injury to itself.'” (quoting Univ. Oil Prods. Co. v. Rexall Drug & Chem. Co., 463 F.2d 1122, 174 USPQ 458, 459 (CCPA 1972)). Accordingly, the Board found that AT&T had standing to bring the opposition against registration of Dormitus’ marks and it therefore did not need to address Opposer’s alternative bases for finding standing. The Board then set a schedule for discovery and trial of the remaining issues in the case, i.e. Phase Two.
ii. Cloudworks Consulting Services Inc. v. Ongoing Operations, LLC, 2020 USPQ2d 10019 (TTAB 2020) [precedential].
This case is a consequence of the USPTO’s amended rule, effective August 3, 2019, requiring applicants, registrants, or parties to a proceeding before the Board whose domicile is not located within the United States or its territories to be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the United States, or the District of Columbia, or any Commonwealth or territory of the United States. See Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants, 84 Fed. Reg. 31498 (July 2, 2019), and Trademark Rule 2.11, 37 C.F.R. § 2.11; see also Patent and Trademark Rules 11.1 and 11.14, 37 C.F.R. §§ 11.1 and 11.14.
On December 31, 2019, Petitioner Cloudworks, a Canadian corporation domiciled in Toronto, filed a petition for cancellation of a registration for the mark CLOUDWORKS and Design for various computer services under Class 42, on the grounds of abandonment and fraud. Petitioner was represented by Canadian attorney/agent John H. Simpson who “is listed on the Office of Enrollment and Discipline’s roll of recognized Canadian Trademark Agents.” Although Mr. Simpson has been granted reciprocal recognition by the USPTO pursuant to Patent and Trademark Rules 11.14(c) and (f), 37 C.F.R. §§ 11.14(c) and (f), “[a] reciprocally recognized attorney or agent may only appear as an additionally appointed practitioner.” As the Board stated, in order to satisfy the USPTO’s amended rule, “[a] qualified attorney licensed to practice law in the United States, or in any Commonwealth or territory of the United States, must still be appointed as the party’s representative who will file documents with the Board and with whom the Board will correspond.” (citing Patent and Trademark Rule 11.14(c)(2), 37 C.F.R. § 11.14(c)(2)). Accordingly, the Board explained that Petitioner could appoint Mr. Simpson as an authorized representative before the USPTO, but it also had to “appoint a qualified attorney licensed to practice law in the United States, or in any Commonwealth or territory of the United States, to represent it and file all documents with the Board in this proceeding.”
b. False Connection and Consent of Living Individual
i. In re ADCO Industries – Technologies, L.P., 2020 USPQ2d 53786 (TTAB 2020) [precedential].
This case concerns the rejection of two trademark applications for word plus design marks – TRUMP-IT MY PACKAGE OPENER MAKE OPENING PACKAGES GREAT and Design and TRUMP-IT MY PACKAGE OPENER and Design – for “utility knives.”
The Board affirmed two refusals to register the subject marks shown above finding that 1) the marks falsely suggest a connection with Donald Trump under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a) and 2) because the marks identify Donald Trump, a living individual, and he did not consent to registration of his name, the marks violate Section 2(c) of the Trademark Act, 15 U.S.C. § 1052(c).
The Board reasoned that President Donald Trump is a well-known figure and “[t]hus his identity is an interest that Section 2(a) of the Trademark Act is designed to protect.” (citing Univ. of Notre Dame du Lac v. J.C. Food Imps. Co., 703 F.2d 1372, 217 USPQ 505, 509 (Fed. Cir. 1983)). The Board further reasoned that the fact that Donald Trump has never used the term “Trump-It” as his name or identity does not avoid the refusal based on a false suggestion of a connection. “A term may be considered the identity of a person even if the person has not used the term. All that is required is that the mark sought to be registered clearly identifies a person (in this case, Donald Trump).” Accordingly, the Board examined the evidence of record and determined that the relevant public would understand the two marks shown above as identifying Donald Trump. Specifically, the Board reasoned, “[w]hile the marks are displayed in conjunction with goods, consumers will view TRUMP-IT as referring to Donald Trump, whose companies use the name “Trump” as a trademark for goods and services, and concluded that, “Applicant’s marks, considered in their entireties, are a close approximation of Donald Trump’s previously used name or identity because the marks’ design elements and wording evoke Donald Trump.”
The Board also evaluated whether purchasers of Applicant’s goods would recognize Applicant’s marks as pointing uniquely and unmistakably to Donald Trump. Reasoning that Donald Trump uses his name in connection with a wide variety of products, the Board found that consumers encountering utility knives bearing Applicant’s marks would indeed associate same with Donald Trump and would believe that Applicant’s utility knives are merely another product for which Donald Trump has licensed use of his name.
As for the refusal under Section 2(c) of the Trademark Act, Section 2(c) of the Trademark Act provides the following:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it … (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
The Board found that because Applicant’s marks include Donald Trump’s name and likeness, Donald Trump’s written consent to the use and registration of his name and likeness were required. Because the application did not include Donald Trump’s written consent to the use and registration of his name and likeness, the Board affirmed the Section 2(c) refusal to register Applicant’s marks.
Finally, and interestingly, Applicant argued in its appeal brief that Sections 2(a) and 2(c) of the Trademark Act are unconstitutional because they violate the First Amendment to the Constitution, and although the Board noted that it has no authority to rule on the constitutionality of the Trademark Act, the Board disagreed with Applicant’s assertions. The Board wrote in its opinion:
While the Trademark Trial and Appeal Board is an administrative tribunal, not an Article III court, and is not empowered to strike down a statute as contrary to the Constitution, recent case law suggests that administrative agencies of the executive branch of the federal government can address constitutional questions.
c. Unlawful Use
i. In re Stanley Brothers Social Enterprises, LLC, 2020 USPQ2d 10658 (TTAB 2020) [precedential].
This case concerned the use of the mark “CW” for “Hemp oil extracts sold as an integral component of dietary and nutritional supplements.” The Board rejected the Applicant’s use of the “CW” mark in commerce in connection with the designated goods as per se unlawful because such goods are illegal under both the Food, Drug and Cosmetics Act (FDCA) and the federal Controlled Substances Act (CSA).
The Board did not address the removal of the term “hemp” from the 2014 and 2018 Farm Bills. Instead, the Board focused on the FDCA’s prohibition against marijuana stating: “[t]he introduction or delivery for introduction into interstate commerce of any food to which has been added . . . a drug or biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public . . . .” FDCA Section 301(ll) (often referred to as the “Drug Exclusion Rule”).
On appeal, the Board declined to reach a decision on the Applicant’s alleged violation of the CSA. The Board concluded that the Examining Attorney had established a per se violation of the FDCA because (a) the applicant’s goods constitute food to which a drug (i.e., CBD – the active ingredient in Epidolex®, a drug approved by US Food and Drug Administration (FDA)) has been added, (b) substantial clinical investigations of CBD had been instituted and made public, and (c) there was no evidence on record that CBD had been marketed in food before the institution of the substantial clinical investigations of CBD.
The Board rejected the Applicant’s argument that the 2014 Farm Bill’s Industrial Hemp Provision superseded the FDCA. Rather, it found that the Industrial Hemp Provision permits authorized entities to “grow or cultivate industrial hemp,” but “it does not permit the distribution or sale of CBD in food when CBD is the subject of clinical investigation, even if the CBD is derived from industrial hemp which falls outside the CSA.”
d. Likelihood of Confusion
i. In re Medline Industries, Inc., 2020 USPQ2d 10237 [precedential].
The opening line of this opinion is telling of the Board’s decision in this case – “If this appeal were a movie, it would be entitled “Fifty Shades of Green.” The Board concluded that Applicant Medline Industries, Inc.’s trademark application seeking registration on the Supplemental Register of “the color green (Pantone 2274C)” for “medical examination gloves” was not likely to cause confusion with another mark registered on the Supplemental Register for “the color green Pantone 7488U” for “gloves for medical use” and “protective gloves for medical use,” finding that “the claimed marks would be viewed and remembered, at most, as distant relatives in the green family.”
The Board noted that this case is “unusual,” as In re Cook Med. Techs. LLC, 105 USPQ2d 1377 (TTAB 2012) was the only other precedential decision where the Board decided the issue of likelihood of confusion between two single-color marks in the twenty-five years following Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1162 (1995), the Supreme Court’s seminal case on color trademarks (in Cooke Medical, the Board found “teal” for applicant’s medical devices confusingly similar to registrant’s “blue” for catheters).
In this case Applicant Medline argued “that consumers are unlikely to be confused as to the source of its gloves and the gloves in the cited registration because the two green shades are noticeably different, there are medical gloves on the market in many shades of green in between (more than 40 shades of green in all), and there are many additional shades of green occurring in nature.” However, the Examining Attorney made the refusal final and denied Applicant’s request for reconsideration, resulting in an appeal before the Board, and ultimately the Board’s reversal of the refusal to register Applicant’s mark.
Unlike in Cooke Medical where the Board reasoned that the absence of evidence of use or registration of color marks in the medical field tended to show that the cited mark (the color “blue” for catheters) “is unique or at least not coexisting with similar marks in the field,” in this case the Board noted as to the sixth du Pont factor – the number and nature of similar marks in use on similar goods – that “[n]one of the third-party green medical gloves in the record are displayed in such a way that green or a particular shade of green is referred to, or is otherwise identified or designated, as a mark” and thus concluded that “it is very unlikely that the colors or shades of green used by third parties on medical gloves would be perceived as marks.” The Board further noted that under the thirteenth du Pont factor – any other established fact probative of the effect of use – the evidence of third-party (non-trademark) use of the color green “corroborates the weakness of the cited mark and its limited potential scope of protection” and found that this “weighs against a likelihood of confusion.”
i. In re UST Global (Singapore) Pte. Ltd., 2020 USPQ2d 10435 (TTAB 2020) [precedential].
In a precedential case about disclaimers, the Board held that a disclaimer applies to all services in a particular class even if the disclaimed term(s) is not descriptive of some of the services in that class. Applicant UST Global (Singapore) Pte. Ltd. applied to register the mark INFINITY LABS (in standard characters) on the Principal Register for the following services:
· Incubation services, namely, providing work space containing business equipment to freelancers, start-ups, existing businesses and non-profits, in International Class 35;
· Incubation services, namely, providing financing to freelancers, startups, existing businesses and non-profits; Think tank services in the nature of consultation services in the field of digital finance, in International Class 36;
· Think tank services in the nature of consultation services in the field of additive manufacturing, in International Class 40; Education services, namely, providing on-line classes, seminars, meetups, and workshops in the fields of retail, software design, technology research and development, and customer service; Education services, namely, one-on-one mentoring in the field of retail technology, in International Class 41; and
· Scientific and technological services, namely, research and design in the fields of smart cities and digital governments, industrial Internet of Things, additive manufacturing, enterprise mobility, pervasive computing, machine intelligence, cognitive computing, digital optics, mixed reality, block chain, digital finance, bio informatics, biometric identity systems, hyperimaging, artificial vision, cyber defense, digital forensics, neuromorphic chips, neural analytics, quantum computing, id3 algorithms, and cryptography; Providing temporary use of on-line non-downloadable software development tools; Collaborative computer programming for others in the nature of hackathons; Think tank services, namely, providing new ideas and concepts for web-based applications for others; Think tank services in the nature of technical consultation services in the field of smart cities technologies and digital governments technologies, industrial Internet of Things, enterprise mobility technologies, pervasive computing, machine intelligence, cognitive computing, digital optics technologies, mixed reality, block chain, biometric identity systems, hyperimaging, artificial vision, cyber defense, digital forensics, neuromorphic chips, neural analytics, quantum computing, and cryptography; Platform as a service (PAAS) services, namely, hosting software for use by others for use in research, design, and utilization of block chain software, robotic process automation, social networks, machine learning, Internet of Things, augmented reality, and advanced analytics; Computer services, namely, hosting on-line web facilities for others for organizing and conducting online meetings, gatherings, and interactive discussions, in International Class 42.
During prosecution of the application, the Examining Attorney required Applicant to disclaim “LABS” apart from the mark as a whole with respect to all of the services in the application. Applicant disclaimed “LABS” for the Class 35 services and a portion of the Class 42 services, but not as to the remaining services in Class 42 and the services identified in Classes 36, 40 and 41. The Examining Attorney issued a final refusal and Applicant appealed and requested reconsideration. The Examining Attorney denied the request for reconsideration and this matter came before the Board. The Board affirmed the refusal to register Applicant’s mark based on the requirement for a disclaimer of the term “LABS” in Classes 36, 40, 41 and 42 but allowed Applicant to submit a disclaimer within thirty days of the Board’s decision to allow the application to proceed to publication.
In its analysis, the Board began with the applicable law, Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), which states that the USPTO “may require the applicant to disclaim an unregistrable component of a mark otherwise registrable,” such as a component which is merely descriptive under Section 2(e)(1). The Board noted that failure to comply with the requirement is a basis for refusing registration of the subject mark. The Board then noted the evidence of record – the Examining Attorney’s dictionary definitions of “incubation, “labs,” and “laboratory”; Applicant’s definition of “think tank”; and the twenty-three use-based third-party registrations for marks that include and disclaim, the term “LABS,” which the Examining Attorney also made of record. The Examining Attorney argued that the evidence of record shows that “LABS” is merely descriptive of all services identified in each of the subject application’s four classes, but Applicant submitted arguments to the contrary.
The Board evaluated all of the services recited in each of the classes to determine whether “LABS” is merely descriptive of the identified services and found that “LABS” is merely descriptive of all services in Classes 40 and 41, and a portion of the services in Classes 36 and 42. However, and most noteworthy, the Board stated, “[w]e need not find “LABS” to be merely descriptive of all services in Classes 36 and 42 to require a disclaimer for all of the services in those classes. The Board reached this conclusion by applying to disclaimer refusals the same principle that it applies regarding descriptiveness refusals under Section 2(e)(1) of the Trademark Act, namely, that “[i]f a mark is descriptive of any of the services in a class for which registration is sought, it is proper to refuse registration as to the entire class.” (citing Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Positec Grp. Ltd., 108 USPQ2d 1161, 1171 (TTAB 2013)). That being said, the Board included an important footnote (and practice tip) about its holding:
Our holding herein would not prevent a future applicant from dividing its application pursuant to Trademark Rule 2.87, 37 C.F.R. § 2.87, and separately appealing a disclaimer requirement for other goods or services within a single class.
ii. City of London Distillery, Ltd. v. Hayman Group Limited, 2020 USPQ2d 11487 (TTAB 2020) [precedential].
Applicant Hayman Group Limited sought to register on the Principal Register the mark CITY OF LONDON for gin, with a disclaimer as to the term “LONDON.” City of London Distillery, Ltd. opposed registration of Applicant’s mark based on four grounds: Section 2(e)(3) of the Trademark Act primarily geographically deceptively misdescriptive; Section 2(e)(2) of the Trademark Act primarily geographically descriptive; Section 2(e)(1) of the Trademark Act merely descriptive; and failure-to-function as a trademark under Sections 1, 2 and 45 of the Trademark Act.
The Board evaluated the following questions:
I. Whether Applicant’s mark CITY OF LONDON for gin is primarily geographically descriptive under Section 2(e)(2) of the Trademark Act?
a. Whether the “City of London” is a generally known geographic place?
b. Whether Applicant’s gin originates from the “City of London” and whether American gin purchasers and drinkers are likely to believe that Applicant’s gin originates there?
II. Whether Applicant’s mark CITY OF LONDON for gin is primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Trademark Act?
III. Whether Applicant’s mark CITY OF LONDON for gin is merely descriptive under Section 2(e)(1) of the Trademark Act?
IV. Whether Applicant’s mark CITY OF LONDON for gin fails to function as a mark?
V. Whether Applicant’s motion to amend its application [to seek registration under Section 2(f) or on the Supplemental Register] is timely and procedurally proper?
VI. Whether Applicant’s mark CITY OF LONDON has acquired distinctiveness?
a. Degree of geographic descriptiveness as used in connection with Applicant’s gin.
b. Evidence of acquired distinctiveness.
The Board sustained the opposition as to the claim under Section 2(e)(2), primarily geographically descriptive; dismissed the opposition as to the claim under Section 2(e)(3), primarily geographically deceptively misdescriptive; dismissed the opposition as to the claim under 2(e)(1), merely descriptive; dismissed the opposition as to the failure to function as a mark claim under Sections 1, 2 and 45 of the Trademark Act; and rejected Applicant’s claim of acquired distinctiveness, but granted Applicant’s motion to amend its application to seek registration on the Supplemental Register. The Board ultimately concluded that Applicant’s mark CITY OF LONDON for gin is primarily geographically descriptive, as CITY OF LONDON is the name of a geographic place known generally to the American gin drinking and purchasing public, namely London, England. Although Applicant’s gin does not originate in the technical City of London (the “City of London” is technically a subdivision of London), it does originate in London. So the Board found “that a goods-place association exists (the third element of a 2(e)(2) claim) because American gin purchasers and drinkers will believe that Applicant’s gin originates within or near the city limits of London and there is some association or connection between the gin and London.”
While the Board found that CITY OF LONDON for gin is primarily geographically descriptive, it reasoned that it is not so highly geographically descriptive and commonly used that it could never function as a trademark, so it then addressed Applicant’s motion to amend its application and approved the mark for registration on the Supplemental Register.
f. Failure to Function
i. In re Vox Populi Registry Ltd., 2020 USPQ2d 11289 (TTAB 2020) [precedential].
The Board affirmed two refusals related to .SUCKS. The first related to Applicant’s application to register the generic Top Level Domain (gTLD) “.SUCKS” in the standard character mark; the second related to Applicant’s application to register the stylized form of the mark shown below.
According to the Board, despite Applicant’s attempts to use .SUCKS as a source-identifier, “the evidence shows that consumers will view it as only a non-source identifying part of a domain name, rather than as a mark.”
There was no dispute that .SUCKS is a generic top level domain (gTLD). Pursuant to a 2014 Registry Agreement between ICANN and Applicant’s predecessor-in-interest, and a subsequent assignment, Applicant is the designated “Registry Operator” for the generic string gTLD “.Sucks.” TMEP Section 1215.02(d) applies to examination of applications for marks composed entirely of gTLDs for domain name registry operator and domain name registration (or “registrar”) services and states:
A mark composed solely of a gTLD for domain-name registry operator or registrar services fails to function as a trademark because consumers are predisposed to view gTLDs as merely a portion of a web address rather than as an indicator of the source of domain-name registry operator and registrar services. Therefore, registration of such marks must initially be refused … on the ground that the gTLD would not be perceived as a mark.
Since ICANN allowed the creation of new gTLDs based on existing brand names, the TMEP “acknowledges that, ‘in some circumstances, a gTLD may have source-indicating significance.'” TMEP Section 1215.02(d). The TMEP further states:
[T]he applicant may, in some circumstances, avoid or overcome the refusal [on the ground of failure-to-function] by providing evidence that the mark will be perceived as a source identifier. In addition, the applicant must show that: (1) it has entered into a currently valid Registry Agreement with the Internet Corporation for Assigned Names and Numbers (“ICANN”) designating the applicant as the Registry Operator for the gTLD identified by the mark and (2) the identified services will be primarily for the benefit of others.
In both of the instant appeals, the Examining Attorney conceded that a current, valid agreement exists showing that ICANN had designated Applicant as the Registry Operator for the gTLD .SUCKS and that Applicant’s recited services would be for the benefit of others. However, the Examining Attorney also found that the Applicant did not own a prior trademark registration for .SUCKS. The Board noted that “a prior registration is relevant evidence, but not dispositive . . . of . . . whether consumers will perceive .SUCKS as capable of functioning as a source identifier for domain name registry operation and domain name registration services.” The Board further reasoned:
As the Board recently explained in AC Webconnecting, consumers are “highly conditioned” to view a gTLD as signifying its function as a portion of an Internet domain name, and due to this consumer predisposition and the fact that “gTLDs are intended to be used by multiple, often numerous, parties as part of their own domain names,” a gTLD proposed for registration as a mark for services involving registration of domain names in the specified gTLD typically will not be perceived as a source indicator.
See In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, 2020 BL 350997 at *3.
Based on the evidence, the Board concluded “that .SUCKS . . . will not be perceived as a source identifier for Applicant’s Class 42 domain registry operator services or its Class 45 domain name registration services”; instead, “when viewed in the context of domain registry and registrar services, [.SUCKS] will be perceived merely as one of many gTLDs that are used in domain names.” Accordingly, the Board found that consumers would perceive .SUCKS not as a trademark but as a non-source identifying part of a domain name.
As for the refusal of Applicant’s stylized version of the mark on the basis of its failure to function as a mark, the Board reasoned that “[w]here an element of a mark is held unregistrable, as is the case here with .SUCKS, a design or stylization may render the overall mark registrable if it creates an impression on purchasers separate and apart from the impression made by the unregistrable term itself.” Applicant described the stylization of its mark as “a ‘retro’ pixelated font that resembles how letters were displayed on early CRT computer screens” in an attempt to assert that this sets its mark apart from other marks composed entirely of a gTLD, but the Board disagreed. The Board found that “[w]ith respect to the pixelated design, or any ‘retro’ suggestion, of Applicant’s mark, it does not create a sufficiently distinct commercial impression separate from the non-source-identifying element, .SUCKS” and “[w]hile the pixelated design may be antiquated since it was once ‘mandated by technological limitations,’ given the ubiquity of the design in the ‘early days’ of computing, consumers would view pixelated lettering as ordinary.”
g. Concurrent Use
i. Hanscomb Consulting, Inc. v. Hanscomb Limited, 2020 USPQ2d 10085 (TTAB 2020) [precedential].
Plaintiff Hanscomb Consulting, Inc. (“HCI”) sought a concurrent use registration of the composite mark (CONSULTING disclaimed) on the Principal Register for “Business consultation, particularly in the fields of estimating contract work, business and economic feasibility studies and data analysis/dissemination, cost analyses, project risk management, negotiation and settlement of commercial transactions for third parties, scheduling services, cost assessment services; project management services for others for business purposes in the fields of architecture, engineering interior design and urban planning design,” in Class 35. HCI sought registration of its mark for the services “throughout the United States of America with the exception of the following geographical areas: 1) Within zip code 60521 in Hinsdale, IL; and 2) Within zip code 90071 in Los Angeles, CA.” In its application, HCI conceded that its use of the mark was not exclusive, that Defendant Hanscomb Limited (“HL”) owns an application to register HANSCOMB for identical services and that HL may have established common law rights in those two locations.
HL filed an application to register the mark HANSCOMB prior to HCI’s filing of its application and claimed use dates earlier than those claimed by HCI. As the Board explained:
While HL’s earlier filing date might have led to HL’s application being noted as a prior pending application and potential bar to registration for HCI during prosecution, HCI’s acknowledgment in its application that HL was an exception to HCI’s rights and its allegation of first use before HL’s filing date meant the USPTO could approve HCI’s concurrent use application for publication for opposition.
(citing TMEP § 1207.04(c) (October 2018)). Therefore, the USPTO approved HCI’s application for publication and HL opposed it. The Board then instituted the concurrent use proceeding that is the subject of this case and dismissed HL’s opposition without prejudice.
In a prior proceeding, HL had opposed HCI’s application for a nationwide registration for HANSCOMB CONSULTING and Design on the basis of priority and likelihood of confusion (the “Previous Opposition”). HCI moved to amend its application to seek a concurrent use registration, but because HCI’s application was based on intent to use rather than actual use, its application could not be amended and so the Board denied the motion. Consequently, HCI withdrew its application, HL’s opposition was sustained, and final judgment was entered against HCI. The Board stated in the opinion of this case that the outcome of the Previous Opposition “prevents consideration of any assertion by either party that no likelihood of confusion exists based on the parties’ use of their marks in overlapping geographic areas.”
In the concurrent use proceeding that is the subject of this case, HL sought a geographically-unrestricted registration of the mark HANSCOMB on the Principal Register for services identical to those covered by HCI’s application, contending that it had used its mark throughout the U.S. for many years. Because HL was listed as an excepted prior user in HCI’s concurrent use application and because HL filed an application for an unrestricted registration, the Board determined that HL had a presumptive entitlement to a nationwide registration.
Accordingly, the Board was tasked with “determin[ing] the extent of HL’s use of its mark prior to HCI’s established use dates and whether HCI has carried its burden of proving that it is entitled to geographically restrict HL’s use of its mark.” The Board found that HL’s use of its HANSCOMB mark in connection with its service was not in fact confined to Hinsdale, Illinois, and Los Angeles, California and that actually, “HL ha[d] demonstrated prior and continuous use of its HANSCOMB mark in many locations throughout the U.S.” Thus, the Board found that HCI was not entitled to a concurrent registration of its mark.
h. Simulation of Flag
i. In re Alabama Tourism Department, 2020 USPQ2d 10485 (TTAB 2020) [precedential].
The Board affirmed a Section 2(b) refusal to register the mark U.S. CIVIL RIGHTS
TRAIL and Design (shown below) for “Advertising and marketing services, namely, promoting travel and tourism related to historical information on civil rights in the United States,” in International Class 35, on the ground that the mark includes a simulation of the flag of the United States.
Section 2(b) of the Trademark Act prohibits registration of a mark that “[c]onsists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.” The Board stated in its opinion that “[t]here is very little case law discussing the registrability of a mark that ‘consists of or comprises the flag . . . of the United States'” and cited In re Family Emergency Room LLC, 121 USPQ2d 1886 (TTAB 2017) – which was the only Section 2(b) case cited by the Examining Attorney in his brief – “not[ing] that § 2(b) requires that registration be refused ‘if the proposed mark includes a true representation of [a] flag . . . or a simulation thereof.'” The Board also noted that [t]he TMEP . . . contains examination guidelines for ‘Flags and Simulations of Flags’ that discuss the American flag, and display multiple examples of American flag-related marks that should and should not be refused registration under § 2(b).” TMEP § 1204.01(a)-(b). The Board further noted:
The TMEP instructs examining attorneys to consider the following factors that the Board found in Family Emergency Room to be appropriate in determining whether consumers will perceive matter in the mark as a flag: “(1) color; (2) presentation of the mark; (3) words or other designs on the drawing; and (4) use of the mark on the specimen(s).”
TMEP § 1204.01(a) (citing Family Emergency Room, 121 USPQ2d at 1888 (discussing these factors in the context of the Swiss flag)). According to the Board, Section 1204.01(a) applies to marks in both black and white, and in color.
TMEP Section 1204.01(b) lists five scenarios under which registration should not be refused on § 2(b) grounds and includes seven examples of registrable stylized designs of the American flag:
• The flag design is used to form a letter, number, or design.
• The flag is substantially obscured by words or designs.
• The design is not in a shape normally seen in flags.
• The flag design appears in a color different from that normally used in the national
• A significant feature is missing or changed.
The Board held “that both sets of the ‘above standards, as set forth in the TMEP, are appropriate under the statute'” and that it “will apply those standards in [their] analysis of the registrability of Applicant’s proposed mark under § 2(b).” It then evaluated the Applicant’s and Examining Attorney’s respective arguments in its analysis of the merits of the refusal. Applicant argued that the flag design in its mark: “(i) is missing significant features of the U.S. flag, (ii) forms another design, (iii) is substantially obscured by other designs in Applicant’s mark, and (iv) is not in a shape normally seen in the U.S. flag” and that the USPTO ‘s approval of a number of marks with designs that portray the U.S. flag “shows that marks containing stylized or incomplete flag elements should not be refused registration under § 2(b).” On the other hand, the Examining Attorney argued that none of the five scenarios of TMEP Section 1204.01(b) is applicable, that the public will perceive the flag depicted in Applicant’s mark as a simulation of a U.S. flag, and that the issuance of third-party registrations containing elements of the U.S. flag is irrelevant, as each application must be examined on its own merits.
In determining whether the flag design in Applicant’s mark is a prohibited simulation under Section 2(b), the Board looked to “‘a visual comparison of the [design] and the actual flag.'” (quoting Family Emergency Room, 121 USPQ2d at 1887). The Board concluded that the flag in Applicant’s mark “contains ‘unmistakable features of the flag.'” TMEP § 1204.01(a). As to Applicant’s argument about the existence of third-party registrations of marks containing elements of the U.S. flag and the USPTO’s consistency in the examination of same, the Board stated that it “recently reiterated that ‘[w]hile we recognize that ‘consistency is highly desirable,’ . . . consistency in examination is not itself a substantive rule of trademark law, and a desire for consistency with the decisions of prior examining attorneys must yield to proper determinations under the Trademark Act and rules.'” In re Am. Furniture Warehouse Co., 126 USPQ2d 1400, 1407 (TTAB 2018) (quoting In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007) and citing In re Cordua Rests., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016)). Thus, the Board held that the Examining Attorney’s refusal of Applicant’s mark under Section 2(b) was appropriate “based on [the TTAB’s] precedent and applying the examination guidelines set forth in TMEP § 1204.01.”
 Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
 Patent and Trademark Rule 11.14(c)(1) provides: “Any foreign attorney or agent not a resident of the United States who shall file a written application for reciprocal recognition under paragraph (f) of this section and prove to the satisfaction of the [Office of Enrollment and Discipline] Director that he or she is a registered and active member in good standing before the trademark office of the country in which he or she resides and practices and possesses good moral character and reputation, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark matters, provided: the trademark office of such country and the USPTO have reached an official understanding to allow substantially reciprocal privileges to those permitted to practice in trademark matters before the Office.” Currently, only Canadian attorneys and agents are reciprocally recognized under this rule and, in accordance therewith, any representation must be limited to parties located in Canada.
 The Applicant ultimately disclaimed “LABS” with respect to its entire application and the application was subsequently published for opposition. The USPTO issued the Notice of Allowance on September 8, 2020.
 As stated in the Board’s opinion, “[t]he phrase “flag . . . of the United States” appears in Section 2(b) of the Trademark Act.