Ttab Decisions and Developments

• Citation: Vol. 41 No. 2
• Publication year: 2016
• Author: JANE SHAY WALD

TTAB Decisions and Developments

JANE SHAY WALD

Irell & Manella LLP

APPLICANT'S SEC. 2(F) CLAIM OF ACQUIRED DISTINCTIVENESS STRUCK DOWN FOR LACK OF "SUBSTANTIALLY EXCLUSIVE USE" OF THE MARK; ACQUIESCENCE TO AVOID LITIGATION DOES NOT SUPPORT DISTINCTIVENESS; REQUEST FOR UNCONSENTED CONDITIONAL AMENDMENT TO SUPPLEMENTAL REGISTER WAS UNTIMELY AND IMPROPER

The Board sustained an opposition on the basis that the Applicant's Section 2(f) claim of acquired distinctiveness could not stand, and that the AYOUB mark sought to be registered was primarily merely a surname.

To defeat the surnominal rejection of Sec. 2 (e) (4), the Applicant had amended its application to claim "substantially exclusive and continuous use" of the mark for at least the immediately preceding five years. To successfully rebut the Applicant's Section 2(f) claim, Opposer evidenced use of the same surname by its own company, and by a significant number of third parties for the same or related services. Opposer's evidence of third-party use consisted of its testimony, telephone directory listings and ads, and internet website printouts. The Board noted that while the probative value of such non-testimonial evidence of third-party use is limited to what it shows on its face and does not establish the truth of the matter appearing in the documents, it is nonetheless the case that telephone directories and internet printouts "show that the public may have been exposed to [those] and therefore may be aware of the advertisements contained therein." Moreover "white pages and Yellow Pages listings carry the presumption that the term is being used by third parties in connection with the offering of the advertised services."

Applicant itself had placed a statement on its own website alerting customers that there were many using the term AYOUB for cleaning and flooring and that, despite a familial relationship among these businesses, there was no business relationship. This admission further undercut Applicant's claim of substantial exclusivity.

Applicant pointed to its policing efforts that resulted in some competitors agreeing to discontinue use of the AYOUB mark. The Board did not find this acquiescence to be an acknowledgement of distinctiveness. "... this merely shows a desire by those competitors to avoid litigation, rather than an acknowledgement of...distinctiveness."

The Board noted that absolute exclusivity is not required but "the widespread use of the surname Ayoub by unaffiliated rug, carpet and flooring businesses is inconsistent with Applicant's claim of acquired distinctiveness." The Board cited Levi Strauss & Co. v. Genesco, Inc., 742 F. 2d 1401 (222 U.S.P.Q. 939, 940-41 (Fed. Cir. 1984) and others for the point: "When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances."

Applicant requested in its trial brief that, should it not prevail, its application be amended to the Supplemental Register. The issue was raised for the first time in its trial brief, was not tried with Opposer's consent, and was untimely. This request was therefore denied, as was Applicant's unconsented motion to restrict the identification of goods, made for the first time along with the filing of its trial brief.

Ayoub, Inc. and Ayoub Supply, LLC v. ACS Ayoub Carpet Service, Opposition No. 91211014; ___ 117 U.S.P.Q. 2d ___ (T.T.A.B. 2016).

PARTIES' CONSENT TO REGISTRATION WAS NOT ACCEPTED BY TTAB; "TIME TRAVELER BLONDE" LIKELY TO CAUSE CONFUSION WITH "TIME TRAVELER," FOR BEER

The Board emphasized that the Federal Circuit has found consent agreements should frequently be accorded great weight, and underscored that the Board has frequently given them great weight. However, despite the parties' detailed consent agreement, the Board found TIME TRAVELER BLONDE too close to TIME TRAVELER, both for beer, given the circumstances. The terms of the agreement required each party not to use the trade dress of the other, without requiring the use of any particular trade dress by either. "Applicant essentially is asking the Board to make a likelihood of confusion determination based upon its mark (with use of its house mark and trade dress as shown in the examples) that not only is not being registered, but is not even in use yet, as reflected by its Section 1(b) application, and which Applicant will not be required to use....and thus would result in a failure of the public notice function of registrations." The impulse purchase factor further contributed to...