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On remand from the CAFC, the Board granted a petition for cancellation of a registration for the mark ALEX BRADLEY STAR INSIGNIA for “cigars, tobacco, cigar boxes, cigar cutters and cigar tubes,” finding the mark likely to cause confusion with the registered mark INSIGNIA for wines. The CAFC (here) concluded that the Board had applied an “incorrect standard for fame,” and it remanded the case to the TTAB for determination utilizing the correct standard. [TTABloggedhere]. Joseph Phelps Vineyards LLC v. Fairmont Holdings, Inc., Cancellation No. 92057240 (January 3, 2019) [not precedential] (Opinion by Judge Francie R. Gorowitz)
The CAFC pointed out that, unlike for dilution, fame for likelihood of confusion purposes is not an “all-or-nothing” proposition. Consequently, the Board “did not properly apply the ‘totality of the circumstances’ standard, which requires considering all the relevant factors on a scale appropriate to their merits.
In a concurring opinion, Judge Pauline Newman pointed out two additional issues that should be reviewed on remand. First, the Board failed to consider the actual usage of respondent’s mark, with the words ALEC BRADLEY separated from STAR and INSIGNIA, in a different font and size. [See specimens of use above]. Second, the issue of relatedness of the goods should be further considered, since the Board found that the evidence “suggests that the goods are sold in the same channels of trade to the same purchasers.” Again, the Board treated this factor as an all-or-nothing proposition, but the evidence of relatedness should be considered on a “sliding scale.”
On remand, the Board found that the INSIGNIA mark “has achieved a high level of fame with connoisseurs of fine wine, particularly of Cabernet Sauvignon-based wines,” but a lesser degree of fame with other wine consumers.
We conclude that the mark has achieved, overall, a significant level of fame among consumers of wine. While we have no context for sales figures and website visitors, the figures we have been provided are not insignificant. In addition, the long use of the mark, repeated receipt of awards for INSIGNIA branded wine, and the references in specialized and general circulation publications, considered together, establish fame.
As to the marks, the Board considered the actual manner of use of respondent’s mark on its specimen of use, noting that respondent’s registration makes no claim to any font, style, color, or size of display, and therefore is not limited to any particular presentation. Judge Newman had observed that “the dominance of the word INSIGNIA as used on Fairmont’s products is indeed an issue,” and that “the actual use of the ALEC BRADLEY STAR INSIGNIA mark presents a different impression to the consumer than the standard character mark . . . .”
The Board concluded that “the similarities in the marks outweigh any dissimilarities..
Turning to the goods, “the evidence of use of the same mark on both cigars and wine is not extensive,” but it suggested that “cigars and wine can be used together and that the same mark can be used for both products.” The evidence further suggested that the cigars and wine are sold in the same channels of trade to the same purchasers. The Board concluded that the goods “are sufficiently related for likelihood of confusion purposes, involving a famous mark.”
The Board recognized that the parties target sophisticated customers, but the Board must consider the parties’ goods as they are identified in the relevant registrations. Neither registrations restricts the goods to “expensive” or “high-end” products, and therefore the Board must consider all potential consumers of wine and cigars, even the unsophisticated purchasers of cheap wine and cigars.
Considering “the totality of the circumstances standard,” i.e., “consider[ation of] all the relevant factors on a scale appropriate to their merits,” as directed by the CAFC, and “taking into proper
consideration the evidence of fame, which bears on both the relationship of the marks and the relationship of the goods,” the Board found confusion likely and it therefore granted the petition for cancellation.
The Board affirmed a refusal to register the color “copper” for “flexible, plastic tubes used in subsurface drip irrigation systems,” finding the proposed mark to be aesthetically functional under Section 2(e)(5). Moreover, assuming that the color “copper” is not functional for the goods, the Board found that the proposed mark lacked acquired distinctiveness under Section 2(f). In re Rain Bird Corporation, Serial No. 85044106 (January 3, 2019) [not precedential] (Opinion by Judge Robert H. Coggins).
Functionality: The Board observed that a color may be a source indicator (e.g., the green-gold dry cleaning press pads in Qualitex and the pink fiberglass insulation of Owens-Corning), or it can be functional (e.g., the black outboard motors in Brunswick and the black boxes for floral arrangements in Florists’ Transworld (FTD)). [Or it can be neither – ed.].
A product feature such as color can be found functional if it serves a purpose that is so significantly useful or important to the class of consumers that competitors need it to compete effectively, and exclusive use of the feature by one producer would place competitors at a substantial non-reputation-related disadvantage. Brunswick, 32 USPQ2d at 1122-23; see also Qualitex, 34 USPQ2d at 1163-65; FTD, 106 USPQ2d at 1791; M-5 Steel Mfg. Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1096 (TTAB 2001); TMEP § 1202(a)(vi).
Applicant Rain Bird did not dispute that the color “brown” is functional for drip irrigation tubing used above ground, but it argued that for its subsurface irrigation systems, “the Copper Color mark literally disappears beneath the ground, extinguishing any purported aesthetically functional aspect of the shiny metallic COPPER Mark.”
The record showed, however, that Rain Bird’s copper-colored subsurface tubing is in fact marketed for use above ground.The evidence also showed that drip tubing sold by competitors may also be used above ground.
[E]ven though Applicant has purposely drafted a description omitting above ground use, for which use it admits the color brown is functional, we note that subsurface tubing is a good which is used above ground. We have interpreted the nature of Applicant’s subsurface goods in light of what the record shows the subsurface goods to include, which is tubing that may be used above ground.
Despite Rain Bird’s “tactical decision to carve above-ground use out of the identification of goods,” the Board found that “flexible, plastic tubes used in subsurface drip irrigation systems” includes drip
tubing that may be used above ground, since such use is “an ordinary aspect of the goods.” Rain Bird’s drip tubes will be viewed by consumers as being usable above ground when they are offered in the same marketplace with above ground irrigation tubes.
Rain Bird claimed that its “copper” mark “stands out from the aesthetically functional brown” colors used on other tubing that otherwise “seamlessly blends into the surface landscape.” Definitions of “copper” generally supported the conclusion that copper is a shade of brown. Rain Bird’s competitors use various shades of brown, including some that resemble copper, for their drip tubing to blend with the landscape.
Providing a variety of browns, include shades of what may be called “copper,” serves the function of allowing irrigation tubing to blend into a variety of landscapes and mulch. Issuing the applied-for registration to Applicant would unfairly hinder competitors’ use of a color that is commonly used for drip tubing. Considering the record as a whole, we find that registration of Applicant’s proposed mark would put its competitors at a significant non-reputation based disadvantage, as in Brunswick and FTD.
Acquired Distinctiveness: For the sake of completeness, the Board also we considered Rain Bird’s claim that the proposed mark may be registered on the basis of acquired distinctiveness.. Of course, a single color applied to a product can never be inherently distinctive, but it may be registered on the Supplemental Register or on the Principal Register under Section 2(f). “By their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character.”
As shown in the multiple images of drip tubing . . . , most of the drip tubing of record is some shade of brown. It would be difficult to name each shade of brown as it appears in the record, but some appear to be copper colored. In view thereof, Applicant’s use of copper, which is a shade of brown, is unlikely to be seen as an indication of source.
The Board found that Rain Bird had failed to demonstrate the “substantially exclusive” use required by the statute. And even though Rain Baird had proven some “look for” packaging and advertising, it submitted no data regarding same to place the advertising in context.
On balance, weighing together the[Converse] factors for which there is evidence, we determine that Applicant has not met its difficult burden of demonstrating the existence of secondary meaning. Applicant’s evidence, taken altogether, fails to demonstrate that the relevant purchasing public has grown to recognize the primary significance of its proposed copper-colored mark as identifying the source of its products. For these reasons, we find that Applicant has not carried its “unusually high burden” of proving that its proposed mark has acquired distinctiveness. In re Owens-Corning Fiberglas, 227 USPQ at 424; FTD, 106 USPQ2d at 1794.
Concluding that Applicant Scott Stawski was not entitled to concurrent use registrations for the marks PROSPER ESTATE and PROSPER RIDGE for wines, the Board dissolved this concurrent use proceeding. Stawski claimed rights to his marks in nine states, as an exception to John Gregory Lawson’s registration for the mark PROSPER for wines, but Stawski failed to show prior, lawful use of his marks, and also failed to prove that confusion is not likely. Scott Stawski v. John Gregory Lawson, 129 USPQ2d 1036 (TTAB 2018) [precedential] (Opinion by Judge David K. Heasley).
To obtain the desired concurrent use registrations for his marks, Applicant Stawski was required to show (1) that he made lawful use of the marks in commerce before February 29, 2012, the filing date of the application that issued as Lawson’s registration, and (2) that the concurrent use of his two marks with Lawson’s mark is not likely to cause confusion.
Lawful Prior Use in Commerce: Stawski had to prove “technical use of his trademarks” in commerce prior to Registrant Lawson’s February 29, 2012 filing date: i.e. use sufficient to support a trademark registration. Priority was not the issue, but rather whether Stawski could satisfy the jurisdictional requirement for a concurrent registration. “[E]evidence of analogous use, as opposed to technical trademark use, which could be considered when establishing priority for the purposes of likelihood of confusion, will not be considered in this concurrent use proceeding.”
The Lanham Act’s concurrent use provision expressly requires “lawful use in commerce” prior to the filing date of an excepted user’s application or registration. 15 U.S.C. § 1052(d). “Use in commerce” means “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127.
Applicant Stawski failed to establish that his use was “in commerce,” and likewise failed to prove that, if his use was in commerce, it was lawful. Thus he failed to meet the jurisdictional requirement of Section 2(d).
Use in Commerce: Stawski’s selection of the trademarks in 2007 did not constitute use of the marks in commerce, nor did his 2007 registration of “Prosper Estate Vineyards” as an assumed business name, or his 2007 registration of PROSPER-formative domain names, or his 2009 registration of domain names that connect to a website.
Stawski knew that his grapevines would not mature for ten years after their planting in 2008, and that his vineyard would not become the source of commercially marketable wine for more than a decade. Although he did not have a product ready to market, Stawski attempted “to establish the reputation and brand identity of the vineyard and the Prosper Estate and Prosper Ridge wine labels” by placing the labels on bottled wine purchased from a third party. However, critical details and corroboration regarding these purchases was lacking, and there was no evidence that Stawski made any sales to customers. The Board noted that, “[w]hile actual sales are not required for statutory use in commerce, . . . in the context of test marketing, whether the goods are sold can help inform whether the activity is in the ordinary course of trade.” Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1054 (TTAB 2017). The Board deemed Stawski’s evidence regarding the distribution of samples to be “vague, equivocal, mostly undated,” and he failed to prove bona fide use in the ordinary course of trade.
The Board found that Stawski’s placement of labels on wine ordered from the third-party vintner served “merely as a placeholder, until he had a product ready to market.” His minimal distribution under the private labels “tacitly acknowledges that his ‘activity was preliminary and exploratory, and [he] was not yet ready to introduce the product in the ordinary course of trade.'” Tao Licensing v. Bender Consulting, 125 USPQ2d at 1054.
The Board concluded that Applicant Stawski had failed to carry his burden of proving prior use in commerce by a preponderance of the evidence, as required by Section 2(d).
Lawful Use: Registrant Lawson further contended that Stawski’s purported use of his marks was not lawful because he did not comply with the regulations promulgated by the Alcohol and Tobacco Tax and Trade Bureau (TTB) concerning the labeling of wine that is introduced into interstate commerce. More specifically, Stawski (as he admitted) did not obtain from TTB the required Certificate of Label Approval (COLA) for his wines.
The Board ruled that, because Stawski did not obtain prior COLA approval, he could not prove that his use of the marks was lawful, as required by Section 2(d).
Likelihood of Confusion: For the sake of completeness, the Board went on to consider the issue of likelihood of confusion. Under Section 2(d), a concurrent use registration may issue only when “confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used . . . .”
Applying the relevant du Pont factors, the Board found that Stawski’s addition of the nondistinctive geographic elements, “RIDGE” and “ESTATE,” to the registered mark PROSPER did not diminish the strong similarity between the marks.
Stawski argued that Lawson’s channels of trade are limited because Lawson had few assets and is unlikely to expand his business. The Board found that discussion to be premature.
In a concurrent use proceeding, however, consideration of the parties’ respective wherewithal, business activity, and planned expansion, among other factors, is relevant only in determining the extent of their respective geographic territories. See, e.g.,Boi Na Braza v. Terra Sul, 110 USPQ2d at 1394 (listing factors, and citing Weiner King, 204 USPQ at 830). We do not reach those factors unless and until the applicant carries his burden of proving the two conditions precedent: that there was prior lawful use in commerce and that the geographic territorial division he proposes would be likely to avoid consumer confusion.
Since Lawson’s registration is geographically unrestricted, the Board must consider him “as having rights to use his mark in the entire United States, but for that territory where Applicant could show actual use prior to Registrant’s filing date.”
Because the involved goods are identical, the Board must presume that they would be marketed to the same classes of customers―ordinary adult wine drinkers and purchasers―through the same channels of trade. See In re Viterra, 101 USPQ2d at 1908. Moreover, there are no limitations as to price or quality, and so there is no reason to believe that purchasers would be particularly discriminating or careful in distinguishing the parties’ products.
The question, then, was whether a geographical restriction would suffice to prevent confusion. In this regard, the Board considered two ways in which wine may be distributed: directly to consumers, or through distributors to wine retailers. Consumers seeking to purchase directly would encounter the marks of both parties on the Internet and in national publications that review wine. “[O]rdinary wine consumers and purchasers encountering these highly similar marks on identical products could easily infer, mistakenly, that the brands are related or affiliated, even if they originate from different regions.” The Board observed that, even if the parties’ wines were marketed in different parts of the country and did not appear on the same store shelves, “that would not suffice to allay the likelihood of confusion.”
Thus, we find that even if there were a geographic division of territories, the parties would still have overlapping classes of customers, whose susceptibility to confusion, engendered by the marked similarity of the parties’ marks on identical goods, would not be appreciably reduced.
Conclusion: The Board ruled that Applicant Stawski was not entitled to concurrent registration of his marks, and so it dissolved the concurrent use proceeding.
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The Board denied the Rule 12(b)(6) motion of Applicant, United Trademark Holdings, Inc., to dismiss this opposition to registration of the mark RAPUNZEL for dolls and toy figures. Opposer Rebecca Curtin, a professor at Suffolk University Law School, alleged that applicant’s mark fails to function as a trademark under Sections 1, 2, and 45 of the Trademark Act on the grounds that it is purely informational and highly descriptive, if not generic, of the goods. United asserted that Professor Curtin lacks standing because she is not a competitor and “has not used the mark in connection with the manufacture or sale of dolls.” The Board, relying on the CAFC’s Ritchie v. Simpson decision, disagreed, observing that “Consumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain.”Rebecca Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (December 28, 2018) [not precedential].
Standing: Professor Curtin maintained that, as a consumer of dolls, “she has purchased and continues to purchase said goods, and that registration of the applied-for mark by Applicant would constrain the marketplace of such goods sold under the name ‘Rapunzel,’ raise prices of ‘Rapunzel’ dolls and toy figures, and deny consumers, such as herself, the ability to purchase ‘Rapunzel’ dolls offered by other manufacturers.” The Board deemed these allegations sufficient to establish that she has a direct and personal interest in the outcome of the proceeding, in accordance with the “liberal threshold” established in Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
The Board was unmoved by United’s contention that Curtin did not differentiate herself from “any other potential consumer of dolls.”
As the Federal Circuit has stated, “In no case has this court ever held that one must have a specific commercial interest, not shared by the general public, in order to have standing as an opposer. Nor have we ever held that being a member of a group with many members is itself disqualifying. The crux of the matter is not how many others share one’s belief that one will be damaged by the registration, but whether that belief is reasonable and reflects a real interest in the issue.” Ritchie v. Simpson, 50 USPQ2d at 1027 (citing 15 U.S.C. § 1063). Consumers, like competitors, may have a real interest in keeping merely descriptive or generic words in the public domain, “(1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.” In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978) (internal citation omitted) (Board emphasis).
Since Professor Curtin established standing as to her mere descriptiveness claim, she may also assert any other grounds in the opposition. Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1877 (TTAB 2011).
Asserted Claims: The Board dismissed with prejudice Curtin’s Section 2(e)(5) functionality claim because Section 2(e)(5) “has no bearing on an application to register a word mark.” The Board struck her fraud claim because she did not set forth allegations of specific facts upon which the claim was based. And the Board also struck Curtin’s claim of genericness because she did not allege that consumers primarily understand the word “Rapunzel” to be the generic name or adjective for dolls and toy figures.
The Board found, however, that the claims of mere descriptiveness and failure-to-function were adequately pleaded.
Professor Curtin was allowed 30 days within which to submit a second amended notice of opposition with sufficiently pleaded fraud and genericness claims.
TTABlog comment: For more details and commentary, see the October 29, 2018 blog post by Kira-Khanh McCarthy: “Does a Law School Professor Have Standing to Oppose RAPUNZEL for Dolls and Toy Figures?” [here]
The Board affirmed a refusal to register the product configuration mark shown below, for “Concession trailer for snowball vendors to operate a viable snowball business” [the word SNOBALLS being disclaimed], finding that Applicant SnoWizard, Inc. failed to prove acquired distinctiveness under Section 2(f). After rejecting SnoWizard’s claim that the mark at issue constitutes packaging trade dress (which can be inherently distinctive), the Board applied the CAFC’s recently-minted Converse factors to the Section 2(f) issue. In re SnoWizard, Inc., 129 USPQ2d 1001 (TTAB 2018) [precedential] (Opinion by Judge George C. Pologeorgis).
Product Packaging or Product Design?: The applied-for mark is described as “a three-dimensional configuration of a snowcapped roof with the word “SNOBALLS,” a snowball and associated beverage container positioned on top of a concession trailer for snowball vendors.”
SnoWizard sought registration under Section 2(f) of the Lanham Act, thereby “effectively” conceding that its mark is not inherently distinctive. See In re MGA Entm’t, Inc., 84 USPQ2d 1743, 1747 (TTAB 2007). Nonetheless, it argued that the mark constitutes product packaging, not product design, and therefore a showing of acquired distinctiveness is not necessarily required – although a product design mark can never be inherently distinctive, product packaging marks can be. Wal-Mart Stores Inc. v. Samara Bros Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081 (1992)).
In Wal-Mart, the Supreme Court stated that, in close cases, “courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning,” 54 USPQ2d 1070, but the Board pointed out that “this is not a close case.”
Clearly, the product at issue in this case is the concession trailer; that is the product offered for sale, purchased by, and used by snowball vendors. It is not a container for flavored shaved ice or snowballs sold to consumers, as suggested by Applicant. Accordingly, Applicant’s applied-for mark is properly characterized as a product design.
Acquired Distinctiveness: The Board applied the “secondary meaning” factors set out by the CAFC in its recent decision in Converse, Inc. v. ITC, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018).
[T]he considerations to be assessed in determining whether a mark has acquired secondary meaning can be described by the following six factors: (1) association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.
Snow Wizard annual sales of the “claimed trade dress concession trailer average” amounted to approximately $35,000 per year over the past nine years. The Board found this figure to be meaningless, since there was no information as to the cost of each concession trailer, how many consumers have purchased the trailers, or how many trailers SnoWizard sold per year. “Indeed, one could reasonably assume that the sales average is modest for large items such as concession trailers.” In any case, even assuming that the sales were more than modest, “mere figures demonstrating successful product sales are not probative of purchaser recognition of a configuration as an indication of source.”
The Board noted that “look for” advertising may be “particularly probative on the issue of whether a product design functions as a source identifier,” but the record was devoid of any such advertising. Moreover, SnoWizard did not provide “any of the other kinds of evidence that may show that the mark has acquired distinctiveness, namely: (1) advertising figures for its goods, (2) the number of customers for its goods, (3) evidence regarding its exclusivity of use, (4) the unit amount of concession trailers it has sold, (5) evidence demonstrating an association of Applicant’s applied-for product design or trade dress with Applicant by actual purchasers, (6) evidence showing that others have intentionally copied Applicant’s product design, or (7) unsolicited media coverage of its concession trailer product design. See, e.g., Converse, Inc., 128 USPQ2d at 1546.
Examining Attorney Carol Spils submitted evidence that concession trailers with decorative roofs having representations of ice, snow cones, and similar food items are “not uncommon.” There was no indication that any of the third-party configurations were “perceived by consumers as indicators of source for any goods or services, let alone for the trailers themselves.”
Moreover, while these third-party uses of concession trailer designs may not be substantially similar to Applicant’s applied-for mark, this evidence nonetheless shows that consumers are accustomed to seeing decorative roofs with snow cones, ice cream and similar food item designs on concession trailers and the like, presented in a non-source-indicating manner. Under such circumstances, consumers for concession trailers would look to differently designed concession trailer roofs as being aesthetic features, or generally advertising food items sold within, rather than acting as an indicator of source.
Weighing the Converse factors, the Board found that SnoWizard failed to prove acquired distinctiveness in its product configuration, and so the Board affirmed the refusal to register under Sections 1, 2 and 45 of the Trademark Act.