United States: The Top Ten TTAB Decisions Of 2017 [Part I]

Last Updated: January 8 2018
Article by John L. Welch

The TTABlogger has once again chosen the ten TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year (i.e., 2017). This is the first of two posts, the first five selections being set out below. Additional commentary on each case may be found at the linked TTABlog postings]. The cases are not necessarily listed in order of importance (whatever that means).

In re General Mills IP Holdings II, LLC, 124 USPQ2d 1016 (TTAB 2017) [precedential] (Opinion by Judge Anthony R. Masiello). [TTABlogged here]. Affirming a refusal to register the color yellow appearing on packaging for "toroidal-shaped, oat-based breakfast cereal" (i.e., CHEERIOS®), the TTAB found that the alleged mark lacks acquired distinctiveness and therefore fails to function as a trademark. Although Applicant General Mills submitted voluminous evidence to support its Section 2(f) claim, the Board was convinced by proof of third-party use of yellow packaging for cereal products, that consumers "do not perceive the color yellow as having source significance for the goods." The Board pointed out that, "[b]y their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character." In re Owens-Corning Fiberglas Corp., 227 USPQ 417, 424 (Fed. Cir. 1985). The presence in the market of yellow-packaged cereals from various sources – including cereals that are not made of oats or are not toroidal in shape –undermined any possible source significance for the color yellow. General Mills pointed to its survey evidence purporting to show that 48.3% of respondents associated the yellow box with the CHEERIOS® brand. The Board, however, saw a hole in the survey, namely that the wording of the survey questions suggested that the respondents could name only one brand.

Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184 (TTAB 2017) [precedential] (Opinion by Judge Lorelei Ritchie). [TTABlogged here]. On remand from the CAFC, the TTAB again ruled that PRETZEL CRISPS is generic for pretzel crackers. In a May 2015 ruling, the CAFC vacated the Board's earlier decision with instructions to apply the correct legal standard, namely the two-part test set forth in the Marvin Ginn decision. The CAFC concluded that the Board had failed to consider evidence of the relevant public's understanding of the term PRETZEL CRISPS as a whole. Furthermore, the Board was directed to give "appropriate consideration to the proffered survey evidence." The Board weighed the dictionary definitions of "pretzel" and "crisp," results of LexisNexis database searches of "pretzel crisps," media references, negative dictionary evidence, and consumer feedback. The "Teflon" survey results submitted by the parties were deemed irrelevant because the Teflon format is not appropriate for a term that is not inherently distinctive, and in any case the survey methods were flawed. The Board found that Frito-Lay had proven by a preponderance of the evidence that PRETZEL CRISPS is generic for "pretzel crackers." Assuming arguendo that PRETZEL CRISPS is not generic, the Board also found Princeton Vanguard's evidence of acquired distinctiveness insufficient under Section 2(f).

In re Beds & Bars Limited, 122 USPQ2d 1546 (TTAB 2017) [precedential] (Opinion by Judge T. Jeffrey Quinn). [TTABlogged here]. In yet another decision downplaying the surname rareness factor, the Board affirmed a Section 2(e)(4) refusal of the mark BELUSHI'S for various travel, hotel, and restaurant services, finding it to be primarily merely a surname. Although BELUSHI is an "exceedingly rare" surname (only five people in the U.S. are named BELUSHI), "the celebrity of John Belushi and the continuing media attention on Jim Belushi support a finding that a substantial portion of Americans know BELUSHI to be a surname." Applicant focused on the rarity of the surname, arguing that "because there are only five people in the entire United States with the surname Belushi, substantially no one will be adversely affected by the registration of Applicant's mark BELUSHI'S." The examining attorney pointed to the fame and publicity of the Belushi brothers, John and Jim, in the television and film industries, which greatly increases the public's awareness of BELUSHI as a surname. The Board observed that that "[e]ven a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname." It found that BELUSHI "is so well-known as a result of media publicity that it would be immediately recognized as a surname."

In re University of Miami, 123 USPQ2d 1075 (TTAB 2017) [precedential] (Opinion by Judge Susan J. Hightower). [TTABlogged here]. The Board reversed two refusals to register the mark shown below, for various products and services, finding that the design comprised neither a mutilation of the mark as actually used, nor a phantom mark. The applied-for mark, which "consists of an ibis wearing a hat and a sweater," depicts the mascot of the University of Miami, Sebastian the Ibis. Mutilation: An applicant must submit a drawing that is a "substantially exact representation of the mark" as used. See Rule 2.51(a). Here the mark in the drawing differed from the mark as used in several ways: in use, a stylized letter "U" appeared in the center of the hat; the word "Miami" was displayed on the front of the sweater, and the sweater had striping along the side and shoulders. The Board found that the applied-for design mark creates a separate and distinct commercial impression from the letter "U" and the word "Miami" that appear on the specimens of use, and further that the stripes on the sweater are merely a minor alteration. The Board concluded that "the overall display on the specimens creates the commercial impression of a personified ibis." Phantom Mark: Neither the drawing nor the mark description identified a changeable or missing element. The extra elements that appear within the ibis design on the specimens of use are not "integral to Applicant's mark." In short, applicant was not seeking to register multiple marks.

Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477 (TTAB 2017) [precedential] (Opinion by Judge Karen Kuhlke). [TTABlogged here]. Because Opposer Luxco failed to prove its claims of genericness, lack of legitimate control, and fraud, the Board dismissed this opposition to registration of the mark TEQUILA as a certification mark for "distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant." A certification mark that certifies regional origin as well as the qualities and characteristics associated with that origin "will not be deemed to have become a generic term as applied to particular goods unless it has lost its significance as an indicator of origin for those goods." Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1887 (TTAB 2006). The Board reviewed dictionary definitions of "tequila," encyclopedia and website references, several expert reports, advertising and bottle labels for Tequila, recipes, news articles, retail signage, and consumer survey results. It found that the record evidence was, at best, mixed, and "tends to show that Tequila has significance as a designation of geographic origin." In short, Luxco did not meet its burden to prove genericness by a preponderance of the evidence, and so the Board dismissed that claim. It further found that CRT exercised legitimate control over the mark, and there was nothing in the record - "not one iota of evidence" - to support the claim that CRT made a false statement or intended to deceive the USPTO.

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