Ttab Decisions and Developments

• Publication year: 2021
• Author: Jane Shay Wald

TTAB DECISIONS AND DEVELOPMENTS

Jane Shay Wald

Irell & Manella LLP

If We Can't See Through Your Panties Or Your Shoes Or Your Brassieres Why Pick "Clear," A Mark Suggesting That Your Clothes Are Frail Veneers Your Restriction To Exclude The Very Feature You Extol Won't Resolve A Good Rejection For An Instep, Strap Or Sole

The Board affirmed the Examining Attorney's refusal to register Applicant's proposed mark CLEAR for footwear, lingerie, and other items "excluding transparent goods," because the mark was deceptively misdescriptive of the goods claimed. Applicant argued that CLEAR was "completely arbitrary, and that no consumer could be fooled into thinking Applicant's footwear is transparent because the consumer must see the goods when purchasing them and will see that they are not transparent."

The Examining Attorney submitted screenshots from Applicant's website and third-party web sites showing the word CLEAR was used by competitors in connection with features and characteristics of shoes, such as transparent straps and see-through heels. Evidence from Steve Madden, Nordstrom, Zappos and others supported this point.

The Board explained that a mark is "deceptively misdescriptive" if it misdescribes a quality, feature, function or characteristic of the goods or services with which the mark is used, and that consumers would likely believe the misrepresentation. Applicant argued that its restriction to exclude transparent goods solved the problem. The Board disagreed, noting that the public doesn't know about the restrictions in the file history. "Moreover, Applicant cannot avoid a finding of deceptive misdescriptiveness by excluding from its identification the very characteristic that the mark is misdescribing."

The Examining Attorney was not persuaded that consumers would look at the shoes and clothes before buying to observe lack of transparency. The Board understood that these days, people buy online, or upon the recognition of social media influences.

In re Dolce Vita Footwear, Inc., Ser. Nos. 88554717 and 88554722 (TTAB April 29, 2021).

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Applicant's Pellets Were Not Found Generic For Stuff You Would Throw On The Flame To Make Cooking Better, In Apron Or Sweater Descriptive? The Board Found The Same

On remand from the Federal Circuit, the Board reversed its earlier refusal to register COOKINPELLETS.COM for genericness for "processed wood fuel in the nature of pellets for use in barbeque grills" but found the mark descriptive, without secondary meaning and refused registration on that basis.

Initially, the Board had upheld the Examining Attorney's determination that COOKINPELLETS. COM was generic for the claimed goods. Applicant appealed to the Federal Circuit. Before the Federal Circuit heard the case, the Supreme Court's decision in Booking.com issued. USPTO v. Booking. com B.V., 200 USPQ 2d 10729 (2020). In that case, the Supreme Court "addressed the legal question whether a generic term combined with the top-level domain '.com' results in a combination that is necessarily generic." The Supreme Court rejected a per se rule that a generic term coupled with .com is inevitably and always generic. The Federal Circuit therefore remanded the appeal for further consideration in light of Booking.com.

The Supreme Court rule did not change the analysis of how the Board is to figure out whether a mark is generic. The Federal Circuit's usual two-step inquiry is still the starting point. H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F. 2d 987 (Fed. Cir. 1986). The first step is to establish the genus (category or class) of goods or services at issue. The genus is defined by the goods identified in the application, here, "processed wood fuel in the nature of pellets for use in barbecue grills." The second step is to consider whether the relevant public understands the term to be registered to refer primarily to that genus; if it does, the term is generic.

The Applicant did not dispute the meanings of each term. It conceded the ordinary meaning of COOKING, and the ordinary meaning of PELLET, consistent with dictionary definitions of record. There was no dispute that COOKIN was short for COOKING. The Board found no extra trademark weight was given due to the "compression" of COOKING into COOKIN. The different spelling was not relevant. The Applicant did not contest that Cooking Pellets together forms a generic term. There was ample evidence in the record to show that the public understands the term Cooking Pellets to refer to the genus here, such that "cooking pellets is indisputably generic."

The third element, which must now be considered post- Booking.com, is the meaning of ".com," which is defined as a coveted top-level Internet domain. The Board explained that: "Whether COOKINPELLETS. COM is generic turns on how the addition of the term '.COM' affects our analysis." The Board began "by noting that the Supreme Court in Booking. com left undisturbed the circuit court's finding that '.com does not itself have source-identifying significance when added to [a second-level domain] like booking.'" The Board found that there was at least some evidence in the record to show that consumers understood "cooking pellets" as a generic term, but nonetheless understood "cookinpellets. com" to refer to the Applicant, as a brand name. This evidence, while scanty, was sufficient to create a doubt about whether consumers would find cookinpellets.com to be generic or not. Where such doubt exists, it is resolved in the applicant's favor, and the Board therefore reversed the finding of genericness of cookinpellets.com.

Despite finding that the mark was not generic, the Board upheld the refusal to register on the basis that the mark was highly descriptive, stating that a mark as descriptive as this one would need a substantial amount of evidence to support acquired distinctiveness. The rebuttable presumption of acquired distinctiveness from five years' uninterrupted use accorded by Sec. 2 (f) of the Trademark Act did not help, as the mark was too descriptive. The Applicant's total advertising and promotion expenses over ten years' time totaled only $25,000, which did not impress the Board. Applicant's sales of 250,000 units generating $3M in revenue over ten years "also appears modest." There was insufficient evidence as to Applicant's market share to assess possible impact on consumers of these numbers. "Our precedents have long alerted practitioners to the fact that the absence of evidence of competitive contextual information may limit the probative value that we might otherwise accord advertising and sales numbers in the acquired distinctiveness inquiry. Applicant asserted a strong social media presence, but its evidence of likes and numbers of people receiving Applicant's twitter feed was illegible. Even if Applicant could support the numbers it claims, namely, 32,339 followers across various social media web sites, the lack context precluded the Board from considering the extent or effectiveness of applicant's social media reach.

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In re GJ & AM, LLC, Ser. No. 86858003 (TTAB June 8, 2021).

We Look At The Mark And The Goods As Applied Without A Back-Story, Enchanting The Fans And That's Why The Board Looked At This Mark And Denied Registration Regardless Of Applicant's Plans

The Board upheld the Examining Attorney's refusal to register TRUST THE PROCESS for shoes as likely to cause confusion with a prior registration for the mark TRUST THE PROCESS for "clothing, namely shirts and sweat suits." The Applicant's mark and the registered mark were standard character marks. Neither the application nor the registration had any restriction as to channels of trade or the like. The presumption, then, is that the goods of both parties consist of clothing items which travel in the same channels of trade to the same consumers.

The background is unusual. Applicant claims his TRUST THE PROCESS mark is uniquely associated with him for shoes, and the cited registration is uniquely associated with one Marcus Lemonis for clothing. The Board considered how TRUST THE PROCESS "has taken on a life of its own," providing some background. Applicant's mark comes from efforts to revitalize the NBA Philadelphia 76ers performance and stature. Its then-new General Manager, Sam Hinkie, stated he would focus on "process, not outcome" to rebuild the team. "Fans and others came to view Hinkie's strategy as 'the process,' and some fans indicated in social media that they would 'trust the process.'" Applicant was drafted by the team in 2014, but injuries prevented him from playing until the 2016-17 NBA season. While he was rehabilitating, he encouraged 76ers fans to "trust the process," using the phrase on social media. Hinkie departed, but Applicant began to refer to himself as THE PROCESS, and the nickname caught on.

Marcus Lemonis is the host of the CNBC program The Profit, "and is known for the mantra 'People/Process/Product..." Lemonis "is also associated with the mantra on his website, which displays a t-shirt bearing the phrase Trust the Process...which states that visitors can customize shirts 'with your favorite #the profit quotes...." The cited registration is for TRUST THE PROCESS.

Applicant argues that because he is associated with the mark for his products, and Lemonis is associated with his own mark for his own products, their distinct fan followings will make confusion unlikely. Applicant pointed to extrinsic evidence of...