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

Last Updated: January 9 2018
Article by John L. Welch

This is the second of two posts; the first five selections were posted here. 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).

Estudi Moline Dissey, S.L. v. BioUrn Incorporated, Cancellation No. 92061508, 123 USPQ2d 1268 (TTAB 2017) [precedential] [TTABlogged here]. Addressing the revised Trademark Rules of Practice that came into effect on January 14, 2017, the Board found that petitioner had served its discovery requests too late. Rule 2.120(a)(3) now requires that written discovery requests be served early enough in the discovery period that responses will be due no later than the close of discovery. A responding party must serve its responses (by email) within 30 days of service of the requests. Here, the last day to serve discovery (31 days before the end of the discovery period, not counting the day of service) was February 19, 2017. Because that was a Sunday, petitioner concluded that, under Rule 2.196, it had until the next business day, Monday, February 20, to timely serve its discovery requests. Not so, said the Board. In light of the revision of Rule 2.120(a)(3), Rule 2.196 no longer applies to the deadline for service of written discovery requests. Nonetheless, because this case was commenced under the old rules, the current dispute arose during the transition to the new rules, and the dispute involves a scheduling matter, the Board exercised its discretion to reopen discovery for the limited purpose of allowing respondent time to respond to petitioner's (tardy) written discovery requests.

I n re United Trademark Holdings, Inc., 122 USPQ2d 1796 (TTAB 2017) [precedential] (Opinion by Judge Marc A. Bergsman). [TTABlogged here].  Affirming a Section 2(e)(1) refusal of LITTLE MERMAID, the Board found the mark merely descriptive of "dolls," concluding that consumers will not perceive LITTLE MERMAID as a source identifier but instead will "understand the mark to describe the public domain character in the Hans Christian Andersen fairy tale, as well as a young or little mermaid." "The Board observed that its case law draws a distinction between "situations where the character is in the public domain and where the applicant owns intellectual property rights in the work from which the character arose." [E.g., SUPERMAN]. A fictional public domain character like the Little Mermaid is not necessarily linked to a specific entity. "[P]rospective purchasers expect dolls labeled as LITTLE MERMAID to represent the fairy tale character and, thus, [the mark] describes the purpose or function of the goods (i.e., to represent the Little Mermaid of the fairy tale)." Other doll makers have a competitive need to use the name LITTLE MERMAID to describe their products.

In re Shabby Chic Brands LLC, 122 USPQ2d 1139 (TTAB 2017) [precedential] (Opinion by Judge Thomas Shaw) [TTABlogged here]. The TTAB affirmed a Section 2(b) refusal of the mark shown below left, for various goods including furniture, dinnerware, and fabrics, on the ground that the mark comprises a design that simulates a governmental insignia of the United Kingdom, namely, the Prince of Wales' emblem, shown below right. Section 2(b) bars registration of a mark that "[c]onsists of or comprises the flag or coat of arms or other insignia ... of any foreign nation, or any simulation thereof." The Government of the United Kingdom identified the emblem as "[t]he official emblem of the Prince of Wales" when it notified WIPO in 2005, under the Paris Convention, that this emblem is a 'state emblem' of the United Kingdom. The emblem is included in the USPTO database and may form the basis of a Section 2(a) or 2(b) refusal. The Board concluded that the Prince of Wales' emblem is an "insignia of national authority" on a par with a coat of arms. In determining whether the mark is a "simulation" of the emblem, the Board must consider the "first impression gathered from a view of such mark without a careful analysis and side-by-side comparison ...." The Board concluded that that the similarities in the commercial impressions of the marks outweighed their differences and it found that the applied-for mark is a simulation of the Prince of Wales' emblem. Applicant also asserted that its mark has co-existed with the Prince of Wales' emblem for 13 years without objection or confusion, but the Board pointed out that absence of objection or confusion is irrelevant, since Section 2(b) is an absolute bar, and confusion plays no part in the analysis.

In re Empire Tech. Dev. LLC, 123 USPQ2d 1268 (TTAB 2017) [precedential] (Opinion by Judge Christopher Larkin) [TTABlogged here]. Affirming a refusal to register COFFEE FLOUR on the Supplemental Register, the Board found the term to be generic for "flour made by processing and blending together coffee cherry skins, pulp, and pectin for use, alone or in combination with other plant and milk based products, as a dry ingredient in food and beverage products for consumer use." After an exhaustive review of the evidence, the Board concluded that relevant consumers understand the term to refer to flour made from the skin, pulp, and pectin of the coffee cherry portion of the coffee plant. "Applicant itself has communicated this meaning of the term 'coffee flour' to the public, and the articles in the record, from which we can infer the public's understanding of the term, show that this message has been received and understood." The Board noted that this appeal involves the rare situation in which an applicant has created a new genus of goods by being the first (and apparently the only) producer and seller of a new product. Professor McCarthy has noted the branding challenges involved: "If the public adopts as the generic name of the thing the word that the seller thinks is a mark, then it is no longer a mark at all...." He suggests that the creator adopt two new words - the mark and the generic name.

Tao Licensing, LLC v. Bender Consulting Ltd. d/b/a Asian Pacific Beverages, ___ USPQ2d ___ (TTAB 2017) [precedential] (Opinion by Judge Cynthia C. Lynch) [TTABlogged here]. The Board granted a petition for cancellation of a registration for the mark TAO VODKA for "alcoholic beverages except beer" (VODKA disclaimed) on two grounds: nonuse and likelihood of confusion with petitioner's registered and famous mark TAO for restaurant and nightclub services. Nonuse: Respondent conceded that, prior to filing its Statement of Use, it had not sold any goods under the mark TAO VODKA, but it contended that the distribution of samples to three entities – a restaurant, a distributor, and a shareholder of a related entity – sufficed. The Board concluded that the "sharing of these samples ... was more in the nature of a preliminary advisory consultation than bona fide use of the TAO VODKA mark in the ordinary course of trade." Likelihood of confusion: The Board found the "something more" required to establish that alcoholic beverages and restaurant services are related, in the facts that Petitioner uses its TAO mark to promote alcoholic beverages and sometimes engages in joint promotional efforts with vodka manufacturers, and in respondent's "eyebrow-raising activities" in choosing its mark after petitioner refused to purchase its vodka, including adoption of a font very similar to the font used by petitioner, showing that respondent itself "believed that consumers would view respondent's vodka and petitioner's services as related."

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