Judge Gerald Bruce Lee of the United States District Court for the Eastern District of Virginia, has denied a Rule 12(b)(1) motion to dismiss Pro-Football, Inc.'s Section 1071(b) action seeking review of the TTAB's REDSKINS decision [here]. Judge Lee rejected Defendant's assertions that there is no judicially cognizable dispute because the five Native American defendants have no direct stake in the outcome of the case and are therefore not "parties in interest." Pro-Football, Inc. v. Blackhorse, et al., Civil Action No. 1:14-cv-01043-GBL-IDD (E.D. Va. November 25, 2014). The court stated the overarching issue as follows: "whether, considering the entire record and drawing all reasonable inferences in Pro-Football's favor, the Court should grant Defendants' Motion to Dismiss because Pro-Football cannot bring an action against Defendants who have no commercial interest in the mark under 1071(b) of the Lanham Act."In denying the motion, the court concluded as follows:First, 15 U.S.C. 1071 provides review of a Trademark Trial and Appeals Board's decision in the Federal Circuit or a District Court, and any meritorious interest brought before an administrative proceeding, must carry over into a review of said proceeding. Second, the prior proceeding before the TTAB was an inter partes proceeding where Defendants were the sole adverse parties. Third, Defendants' petition for cancellation evidenced that Defendants have a legitimate direct and personal interest in the registration.Read comments and post your comment hereTTABlog note: I doubt that many people are surprised at this ruling. Difficult to see how a party who successfully brought a proceeding could lack an interest in the outcome of the appeal.Meanwhile, the United States is considering whether to intervene in this case, because Pro-Football has raised constitutional challenges to the validity of Section 2(a) of the Trademark Act. The court has set a deadline of January 9, 2015, for the U.S. to intervene. Discovery is set to close on that date.Text Copyright John L. Welch 2014.
DWG TrueView 2014 Portable
In an enervating 28-page opinion, the Board affirmed a refusal to register the designation PC LAPTOPS for "computers, laptops, and portable computers" and for "retail store services in the field of computer hardware and software," finding the term to be generic for the identified goods and services, or alternatively, merely descriptive under Section 2(e)(1) and lacking acquired distinctiveness. The Board analyzed PC LAPTOPS as a "combined term," allowing consideration of dictionary definitions of the constituent words (as in Gould). But even if viewed as a "phrase" (as in American Fertility), the Board noted, PC LAPTOPS would still be generic. In re PC Laptops, LLC, Serial Nos. 77780768 and 77780823 (November 20, 2014) [not precedential].Genericness: Not much to look at here. Dictionary definitions of PC and LAPTOP, along with media and public usage of PC LAPTOPS, convinced the Board that the applied-for designation is generic for applicant's goods. Furthermore, a term that is generic for certain goods is likewise generic for services featuring those goods. Mere Descriptiveness: Applicant feebly contended that PC LAPTOPS may be considered a double entendre because "PC" is defined not only as "personal computer" but also as "politically correct." The Board, however, found nothing in the record to suggest that consumers would associate the concept of political correctness with computers. [Do some people think Apple computers are more "PC" than PC computers? - ed.].Acquired Distinctiveness: Because PC LAPTOPS is highly descriptive, applicant had a "heavier burden" in demonstrating acquired distinctiveness. Applicant claimed continuous and substantially exclusive use since 1997, extensive advertising, consumer recognition, and recognition by the industry and media. But it failed to provide its advertising expenditures, or any context for comparisons with the industry. Nor did it provide sales volume. Applicant offered the results of a consumer survey, but the Board accorded it little probative value, since no information was provided as to the methodology employed or the questions asked. "[T]here is nothing in the record to provide a basis for the results provided, or even what those results are intended to signify."Finally, applicant's evidence of media recognition and industry awards was noted by the Board, but perhaps more important was applicant's failure to show that its use of PC LAPTOPS has been substantially exclusive, since there were "multiple uses by third-parties in a descriptive or generic manner." The Board concluded that applicant had failed to establish acquired distinctiveness in connection with its identified goods and services.And so the Board affirmed both refusals.Read comments and post your comment hereTTABlog query: WYHA?Text Copyright John L. Welch 2014.
The Board ruled that the title of a single book or a single DVD is properly refused registration under Section 2(e)(1) on the ground of mere descriptiveness, but is registrable under Section 2(f). Here, however, applicant failed to prove acquired distinctiveness, and so the Section 2(e)(1) refusal was affirmed. In re King Productions, Inc., Serial No. 76703458 (November 19, 2014) [not precedential].The Examining Attorney refused registration under Sections 1, 2, and 45 of the Trademark Act on the ground that the title of a work fails to function as a trademark. Applicant for some reason focused on the issue of whether the specimens of use were acceptable, but that was not the basis for the refusal. The Board observed that, although the registration of a title has often been refused registration under Sections 1, 2, and 45, the proper basis for refusal is Section 2(e)(1) because the title describes the work. A title is capable of registration if it is used for a second work (i.e., as the title of a series), and courts have protected the title of a single work once secondary meaning has been established. So a title is capable of functioning as a trademark. Of course, a Section 2(e)(1) refusal can be overcome by a showing of acquired distinctiveness under Section 2(f). And so the question here became whether applicant's mark had acquired distinctiveness. Applicant had a "significant burden" under Section 2(f) because a title is highly descriptive of a book or DVD. Was there "sufficient public exposure of ROCK YOUR BODY in such a manner that consumers would view ROCK YOUR BODY not merely as a title of the book and DVD, but as a trademark indicating source?" Applicant sold only 884 sets of the book and DVD. Its website showed the mark used with apparel and workshops, which would convey to consumers that ROCK YOUR BODY plays a role beyond that of a title, but the evidence failed to show the extent of exposure of the website (e.g., the number of hits or visitors). The Board found that evidence insufficient to establish acquired distinctiveness, and so it affirmed the refusal under Section 2(e)(1).Read comments and post your comment hereTTABlog note: Was the applicant aware that the Board would turn this appeal into a hunt for acquired distinctiveness?Text Copyright John L. Welch 2014.
Applicant Go Pro Workouts trotted out several of the most frequent losing TTAB arguments in this Section 2(d) opposition to registration of GO PRO OR GO HOME for various clothing items. The Board not surprisingly found the mark likely to cause confusion with the registered mark GO PRO for overlapping clothing items. Gary Hale v. Go Pro Workouts, LLC, Opposition No. 91211810 (November 18, 2014) [not precedential].The parties agreed to Accelerated Case Resolution (ACR), which resulted in a faster, although perhaps less expensive, defeat for applicant. Because the goods overlap, the Board presumed that they travel through the same, normal channels of trade to the same classes of consumers. Applicant argued that opposer sells only clothing, while opposer's goods are ancillary to its sports training services. So, applicant maintained, its customers are athletes who train with applicant. That argument, the Board found, had little merit because the Board must make its determination based on the goods identified in the opposed application, regardless of what other goods and services applicant offers. Here there were no limitations on the channels of trade or classes of consumers. Applicant further contended that its goods are purchased with an enhanced degree of care because a visitor to its website must register for a workout or nutritional plan before he or she can purchase any clothing item. The Board again pointed out there was corresponding limitation in applicant's identification of goods, and even if there were there was no evidence that purchasers of opposer Hale's products exercise extra care, and they may be confused by the marks.As to the marks, applicant attempted to distinguish them by pointing to the dietary supplements and sports training services that it provides in connection with its mark, as if that significantly change the meaning of the mark. The Board again observed that applicant's supplements and training services are not part of this proceeding. The Board found the marks to be similar in sound, appearance, meaning, and commercial impression. Notably, opposer's GO PRO s mark is contained in its entirety in applicant's mark and appears as the first part of the latter mark.Applicant's assertion that GO PRO is in common use in the marketplace was not supported by the evidence. Applicant pointed to some three years of concurrent use of the involved marks with no evidence of actual confusion, but the Board pooh-poohed that argument. Three years is a relatively short period of time, and the fact that both parties' goods are sold on the Internet does not establish that there has been a meaningful opportunity for confusion to occur. Moreover, evidence of actual confusion is notoriously difficult to obtain, and the test is likelihood of confusion, not actual confusion.To the extent that applicant argued that opposer's use of his mark was minimal and therefore confusion was unlikely, the Board noted that the rights flowing from a federal registration "do not vary with the size of the registrants." The Board concluded that, even if GO PRO is a weak mark, it is entitled to protection, since "likelihood of confusion is to be avoided, as much between 'weak' marks as between 'strong' marks, or as between a 'weak' and 'strong' mark."Read comments and post your comment hereTTABlog note: In short, the Board told applicant to GO HOME. Text Copyright John L. Welch 2014.
2ff7e9595c
Comentários