Updated TTABlog Collection of Section 2(e)(3) "Primarily Geographically Deceptively Misdescriptive" Cases

Friday

Here is an updated collection of Section 2(e)(3) cases. Of course, most of the decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.

There are four elements that must be met to invoke the bar of Section 2(e)(3): (1) The primary significance of the mark is a generally known geographic place; (2) The goods or services do not originate in the place identified in the mark; (3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and (4) The misrepresentation would be a material factor in a substantial portion of the relevant consumer's decision to buy the goods or use the services. In re Spirits Int’l N.V., 563 F.3d 1347, 90 U.S.P.Q.2d 1489, 1490-95 (Fed. Cir. 2009); In re California Innovations, 329 F.3d 1334, 66 U.S.P.Q.2d 1853, 1858 (Fed. Cir. 2003).

Acquired distinctiveness may overcome a Section 2(e)(3) refusal, provided that the mark became distinctive prior to enactment of the NAFTA Implementation Act on December 8, 1993. See In re Boyd Gaming Corp., 57 U.S.P.Q.2d 1944, 1947 (T.T.A.B. 2000).

Marks found to be primarily geographically deceptively misdescriptive under Section 2(e)(3):

Marks found not to be primarily geographically deceptively misdescriptive under Section 2(e)(2):

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

TTAB Posts August 2021 (Video) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled three (3) oral hearings for the month of August 2021. The hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

August 11, 2021 - 11 AM: General Motors LLC v. Bolt Ride, Inc., Opposition No. 91240088 [Opposition to registration of BOLT for "Downloadable computer software for coordinating transportation services" on the grounds of fraud and likelihood of confusion with opposer's registered mark BOLT for "Motor land vehicles, namely, automobiles in the nature of cars."]

August 19, 2021 - 10 AM: Alzheimer's Disease and Related Disorders Association v. Alzheimer's New Jersey, Opposition No. 91245121 [Opposition to registration of the mark ALZHEIMER'S NEW JERSEY WALK TO FIGHT ALZHEIMER'S & Design for charitable fundraising activities, on the grounds of likelihood of confusion with, and likely dilution of, the registered mark WALK TO END ALZHEIMER'S and related marks for charitable fundraising services.]

August 26, 2021 - 10 AM: In re Old Blind Dog BBQ LLC, Serial No. 88727621 [Section 2(d) refusal of OLD BLIND DOG BBQ, in standard character form, for "sauces; BBQ sauces" [BBQ disclaimed] in view of the registered marks OLDE BLIND DOG and OLD BLIND DOG IRISH PUB & Design for restaurant services [IRISH PUB disclaimed].]

Read comments and post your comment here.

TTABlog comment: Since TTAB hearings are supposed to be public, shouldn't these video hearings be available for everyone to (at least) hear?

Text Copyright John L. Welch 2021.

TTAB Denies Fraud Claim But Grants Petition to Cancel SEYIDOGLU Registration on Section 2(a) False Connection Ground

Thursday

In a case decided under the TTAB's ACR regime, the Board granted a petition for cancellation of Nema Foods' ten-year old registration for the mark SEYIDOGLU (in standard form) for various food items, finding that the mark falsely suggests a connection with Petitioner, a major manufacturer of food products, including Turkish desserts and jams. However, the Board dismissed petitioner's claim of fraud, and it rejected Nema's affirmative defense of acquiescence. Gaziantepli Habes Seyidoglu Baklavalari Uluslararasi Nakliyat ve San. Tic. Ltd. Sti. v. Nema Food Distribution Inc., Cancellation No. 92070059 (July 26, 2021) [not precedential] (Opinion by Judge Robert H. Coggins).

Fraud: In 2007, petitioner began exporting its food products bearing the mark SEYIDOGLU to the United States through Nema Kimya, an Istanbul subsidiary of Respondent. In 2009, Respondent Nema Foods filed an application to register the mark, When Nema Kimya became defunct, petitioner began exporting its products directly to respondent. In 2018, petitioner terminated its arrangement with respondent. Respondent then sent a cease-and-desist letter to petitioner, prompting the subject petition for cancellation.

Nema Foods claimed to have an "understanding" with petitioner that Nema would own the trademark, but it provided no evidence to support that claim. The Board observed that "[m]erely being a distributor does not confer ownership of a mark for the goods being distributed. On the contrary, as between a manufacturer and distributor, the manufacturer is presumed to own a trademark applied to the goods."

Petitioner created the mark, registered the mark in Turkey, manufactured the goods, participated in trade shows in the USA, and held itself out as the source and the guarantor of the product. Many of the examples of the goods bore the founding date of 1952, which could point only to petitioner. The Board found that Petitioner was the owner of the SEYIDOGLU mark at the time Respondent filed the application to register the mark.Therefore, Nema Foods' statement that it owned the mark when it filed the underlying application was false and, because only the owner of a mark may apply to register, the statement was material to the issuance of the registration.

However, petitioner failed to provide clear and convincing evidence that Nema Foods intended to deceive the USPTO when it filed the underlying application. Petitioner did not take any testimony, but instead relied on circumstantial evidence of intent, which was not good enough.

Section 2(a): . Petitioner's products are well known within the Turkish-American community, and SEYIDOGLU is a close approximation of Petitioner’s name and identity. Considered in the context of the goods identified in the registration, the term SEYIDOGLU points unmistakably to Petitioner.

One witness testified that “Seyidoglu” is to baklava in Turkey as “Kentucky Fried Chicken” is to fried chicken in the United States. Another witness stated that SEYIDOGLU is known among his Turkish customers because Petitioner is “very old and well-established, dating back to the 1950s." Respondent did not dispute Petitioner’s fame or reputation, either as of the registration date or at the time of trial.

In light of the evidence that SEYIDOGLU is famous in the United States in connection with Turkish food products, including baklava, and given Respondent’s use of SEYIDOGLU for Turkish food products, including baklava, “we may draw an inference that [Respondent] inten[ded] to create a connection with” Petitioner, and that the public would make the false association.

The Board found that all four elements of the Notre Dame Section 2(a) test were met, and so it concluded that petitioner had proven its Section 2(a) claim

Acquiescence: The Board point out that in order to establish the defense of acquiescence, Nema Foods had to show that it suffered undue prejudice as a result of the delay. Here, there was no evidence of Nema's advertising or other expenditures, nor evidence of its sales or growth.

Respondent provided no economic information, and has not shown any economic or other damage resulting from Petitioner’s assumed delay in seeking to cancel the registration, nor any change of position as a result of Petitioner’s assumed delay. Because material prejudice is a necessary element of acquiescence, Respondent has not met its burden of establishing that the petition is barred by acquiescence.

And so, the Board granted the petition for cancellation on the Section 2(a) ground.

Read comments and post your comment here.

TTABlogger comment: I note that the Board did not refer to Nema's ten-year old registration as "incontestable." That's good, because there is no such thing as an inconestable registration.

Text Copyright John L. Welch 2021.

E.D. Va. Upholds TTAB Dismissal of SHUSTOV Cancellation Petition: Registrant Overcame Prima Facie Case of Abandonment

Wednesday

The United States District Court for the Eastern District of Virginia (Judge Liam O'Grady) affirmed the TTAB's decision of January 20, 2020 [TTABlogged here], dismissing a petition for cancellation of a registration of the mark SHUSTOV & Design (shown below) for various alcoholic beverages. The Board found that, although Petitioner GSH established a prima facie case of abandonment based on respondent's lack of use of the mark during the three-year period following registration, respondent successfully established its bona fide intent to commence use of the mark in commerce. The district court adopted the recommendations of Magistrate Judge that the Board's decision be affirmed and that GSH's motion for default judgment be denied. GSH Trademarks Limited v. Sia "Baltmark Invest", Case No. 1:20-cv-0271 (E.D. Va. May 18. 2021).

The Magistrate Judge reviewed the complaint "against the TTAB's decision and determined that the complaint adduced no new factual evidence that would trigger de novo review of the TTAB's factual determinations."

In reviewing a TTAB decision under Section 1071(b), a district court must conduct "de novo review of the entire record" when factual evidence is submitted. Swatch AG v. Beehive Wholesale, 739 F.3d 150, 155-56 (4th Cir. 2014). If no new evidence is submitted, the court must apply the APA substantial evidence standard to the Board's factual findings. Id. at 155. Findings of fact will be upheld "so long as they are not arbitrary, capricious, or otherwise not in accordance with law." Id.

Plaintiff's objections to the Magistrate Judge's Report and Recommendations mainly boiled down to a question of the legal significance of a specific exhibit, but the court found that even without that exhibit, substantial evidence supported the Board's decision. The testimony of defendant's witness, "standing alone, offers more than a 'mere scintilla' of support for the premise that Baltmark intended to use the disputed mark during the nonuse period. *** Combining this testimony with the corroborative evidence cited by the TTAB, the Court identifies no basis to reverse the agency's decision under the appropriate standard of review."

The court therefore affirmed the TTAB decision.

Read comments and post your comment here.

TTABlogger comment: If you are not going to add new evidence, why seek district court review rather than appeal to the CAFC? The latter would seem to be less expensive.

BTW: If the new nonuse provision of the TMA were in effect, how would this case have come out?

Text Copyright John L. Welch 2021.

Second Amendment victory at the Second Circuit

Tuesday

The Second Circuit has reinstated a Second Amendment lawsuit that alleges that Nassau County had unfairly revoked the plaintiff's pistol license and confiscated his guns following a domestic dispute with his daughter. The Court finds the County lacked substantial evidence that plaintiff is a danger to safety of others.

The case is Henry v. County of Nassau, issued on July 26. It started when plaintiff's daughter got a temporary order of protection against plaintiff after he allegedly put her in a headlock during an argument. The police department's pistol office then suspended plaintiff's pistol license and took all of his firearms pursuant to county policy stating that, pending further investigation, the county may immediately suspend a pistol license under these circumstances and a licensee must surrender his firearms. When the order of protection expired, the county did not return the guns to plaintiff or reinstate his pistol license. The county eventually formally revoked his pistol license and prohibited him from owning any weapons. Plaintiff's internal appeal failed because the county determined that plaintiff had a history of domestic violence, there had been prior orders of protection against him, and plaintiff had failed to notify the county of the order of protection against him and about his son's depression diagnosis.

The district court dismissed the case, but the Second Circuit (Menashi, Walker and Carney) brings it back. The Court notes that the core of the Second Amendment's protections is that law-abiding citizens may "use arms in defense of hearth and home," as per Second Circuit precedent, drawing in turn from Supreme Court authority, District of Columbia v. Heller, 554 U.S. 570 (2008). While the district court said plaintiff has no case because the County has not banned guns for everyone, that was in error. The Second Amendment protects gun ownership even if one person is denied a weapon in violation of constitutional standards.

The Court of Appeals holds that plaintiff sufficiently alleges a substantial burden on his Second Amendment rights because the county's measures against him deprive him of the opportunity to defend himself even though he has never been convicted of any crime. The Court analogizes to First Amendment "time, place and manner" cases that require the government to regulate speech so long as people have alternative means to express themselves. Since the complaint alleges the county did not have a reliable basis to find that plaintiff is a threat to others, the lawsuit is reinstated, as the county did not conduct a bona fide inquiry into whether substantial evidence supported a finding that plaintiff was too dangerous to own firearms.

Precedential No. 20: Claim Preclusion and Issue Preclusion Inapplicable in VALVOLINE Opposition to MAXVOLINE, Says TTAB

In this Section 2(d) opposition, the Board denied Applicant Sunpoint's motion for summary judgment, ruling that neither claim preclusion nor issue preclusion applies to Opposer Valvoline's claim of likelihood of confusion between its registered marks VALVOLINE and MAX LIFE and Sunpoint's proposed mark MAXVOLINE, all for various automotive lubricants and fluids. A previous cancellation proceeding between the parties had resulted in cancellation of Sunpoint's registration for MAXVOLINE on the sole ground of nonuse. [TTABlogged here]. The Board had also concluded, "[f]or purposes of completeness," that Valvoline did not prove its likelihood of confusion claim. However, because Valvoline won that case and therefore could not appeal from the unfavorable Section 2(d) determination, it was not precluded from bringing that claim again. Valvoline Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., 2021 U.S.P.Q.2d 785 (TTAB 2021) [precedential].

The doctrine of claim preclusion, sometimes known by persons of a certain age as res judicata, "bars a second action when there is (1) an identity of parties or their privies; (2) an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the first." See Jet, Inc. v. Sewage Aeration Sys., 55 U.S.P.Q.2d 1854, 1856 (Fed. Cir. 2000); Chutter, Inc. v. Great Concepts, LLC, 119 U.S.P.Q.2d 1865, 1868 (T.T.A.B. 2016).

Issue preclusion, or collateral estoppel, bars a party from re-litigating the same issue in a second action between the parties, B&B Hardware, Inc. v. Hargis Indus., Inc., 125 S. Ct. 1293, 113 U.S.P.Q.2d 2045, 2051 (2015), and requires "(1) identity of an issue in a prior proceeding, (2) that the identical issue was actually litigated, (3) that determination of the issue was necessary to the judgment in the prior proceeding, and (4) that the party defending against preclusion had a full and fair opportunity to litigate the issue in the prior proceeding." Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 76 U.S.P.Q.2d 1310, 1313 (Fed. Cir. 2005) (citing Montana v. U.S., 440 U.S. 147, 153-55 (1979)).

However, neither claim preclusion nor issue preclusion applies against a party if that party cannot appeal the outcome of the earlier proceeding. See AVX Corp. v. Presidio Components, Inc., 2019 U.S.P.Q.2d 171683, at *4-5 (Fed. Cir. 2019). The Board observed that, "[a]s a general rule, a prevailing party may not appeal from a favorable judgment simply to obtain review of findings it deems erroneous." Mathias v. Worldcom Tech., Inc., 535 U.S. 682, 684 (2002) (per curiam) (citing N.Y. Tel. Co. v. Maltbie, 291 U.S. 645 (1934) (per curiam)).

Here, the sole relief requested by Valvoline in the prior proceeding was cancellation of the MAXVOLINE registration. Although the Board determined that Valvoline had failed to carry its burden to prove a likelihood of confusion, that determination did not change the final judgment. Had Sunpoint appealed from the decision, Valvoline could have asserted likelihood of confusion as an alternative ground for affirmance of the Board's judgment. Sunpoint did not appeal, and so Valvoline received all the relief it sought and could not appeal in its own right. See id.; Maremont Corp. 174 U.S.P.Q. at 396.

The Board therefore denied Sunpoint's motion for summary judgment.

In addition to the summary judgment issue, the Board also addressed Valvoline's motion to amend its notice of opposition to plead the registered mark MAXLIFE TECHNOLOGY as an additional basis for its Section 2(d) claim. The Board granted the motion, finding that Valvoline did not unduly delay in seeking this amendment and that Sunpoint did not show that it would be materially prejudiced by the addition of that mark to proceeding.

Read comments and post your comment here.

TTABlogger comment: The Board strongly encouraged the parties to proceed via ACR, since the parties had taken discovery in the previous proceeding regarding many of the relevant issues. What would you do? Is the handwriting on the wall with regard to the Section 2(d) issue?

Text Copyright John L. Welch 2021.

Precedential No. 19: Does Eastern Standard Time Control the Timeliness of Discovery Requests? TTAB Says No

Monday

The Board faced head on the scintillating issue of the timing of service of discovery requests, and more particularly whether Eastern Standard Time (EST) controls the timeliness thereof, regardless of the location of the serving party. Defendant JBX contended that Plaintiff Island's discovery requests were served too late because they were after midnight EST of the last day for written discovery. Island (located in California) disagreed because it served the requests before midnight Pacific Standard Time (PST). That pesky three-hour difference between EST and PST was the cause of the problem. Island, LLC v. JBX Pty Ltd, 2021 U.S.P.Q.2d 779 (T.T.A.B. 2021) [precedential].

Discovery requests must be served in time to require responses prior to the close of discovery. See Rule 2.120(a)(3). Here, discovery was set to close on January 2, 2021, and since a receiving party must respond in thirty days, the deadline for Plaintiff Island to serve written discovery requests was December 3, 2020. Island served its requests by email from California at 11:43 PM PST on December 3rd, which translated to 2:43 AM EST on December 4th. Defendant JBX responded to the discovery requests by objecting to their timeliness. Island than filed the subject motion to compel.

Although Eastern Time governs documents that are filed with and received by the USPTO (Rule 2.194(a)), nothing in the Trademark Rules of Practice or in the TBMP discusses the applicability of Eastern Time in the context of documents served between parties. For discovery requests, timeliness is based on when a document is served, not received. See Rule 2.120(a)(3).

The Board noted that, under Rule 2.119(b), a party who, because of technical problems or extraordinary circumstances, cannot serve discovery by email may serve in a manner described in Rule 2.119(b)(1) - (b)(4) [(b)(5)? - ed.], including first-class mail, Priority Mail Express®, or overnight courier. "When service is made by first-class mail, Priority Mail Express®, or overnight courier, the date of mailing or of delivery to the overnight courier will be considered the date of service." Rule. 2.119(c). [When service is made by first-class mail, does the receiving party get any extra days for responding? Apparently not. - ed.].

Accordingly, a party who meets the requirements to serve discovery requests by, for example, overnight courier will have timely served its discovery requests if it delivers them to the overnight courier thirty-one days before the close of discovery. And this is so even though the responding party would receive the discovery requests thirty (rather than thirty-one) days before the close of discovery. In such a situation the responding party’s responses are still due based on the date of service, even though it does not have the benefit of additional time to respond due to the manner of service. See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69960 (October 7, 2016); see also TBMP § 403.03.

The Board brushed aside Defendant JBX's argument that if PST applied, it (JBX) would not be afforded a full thirty-day period to respond. "The Board's rules are clear that the time to respond to discovery requests is measured in days, not hours."

And so, the Board granted Island's motion to compel discovery responses and allowed JBX thirty days to respond to Island's discovery requests.

Read comments and post your comment here.

TTABlogger comment: Does this ruling disadvantage parties located on the east coast? If so, how? Would a foreign party be wise to hire an attorney in Hawaii, where Hawaii–Aleutian Standard Time (HST) applies, three hours behind PST?

Text Copyright John L. Welch 2021.

Ageist comments not enough to survive Rule 12(c) motion to dismiss

Friday

The Court of Appeals has held that a plaintiff failed to plausibly plead age discrimination and retaliation even though he was terminated five months after he reported that a supervisor made negative comments about his age.

The case is Lively v. WAFRA Investment Advisory Group, issued on July 23. Plaintiff worked for this company for 21 years and was a "top performer." He alleges that a supervisor, Al-Mubaraki told company executives and others that plaintiff was "too old and that he would seek to replace Lively (and them) with younger employees." Plaintiff also alleges that this supervisor told plaintiff's son that the company "needed to replace older employees like his father with younger employees like Lively's son." The first comment took place after June 2017. The second comment happened in November 2017. In November 2017, plaintiff reported these comments about "the discriminatory pattern that was emerging" and specifically reported his supervisor's age-related comments. The HR Director expressed frustration that Al-Mubaraki continued to engage in inappropriate conduct. Another company executive told plaintiff that Al-Mubaraki's comments were intended as a joke. Plaintiff was fired in On May 1, 2018 after the company determined that he had sexually harassed a female subordinate. Plaintiff alleges this justification is false and that the female subordinate had in fact solicited plaintiff's involvement in her personal and professional life and plaintiff had no reason to know their interactions were unwelcome.

This case was dismissed under Rule 12(c), or judgment on the pleadings, which happens after the defendant files its answer. The Court of Appeals (Nardini, Park and Walker) provides a brief detour about the reasons behind Rule 12(c) (as opposed to the more common Rule 12(b)(6), where the defendant seeks to dismiss the case in lieu of an answer). The Court cites a D.C. Circuit case for the proposition that "[J]udgment on the pleadings is not appropriate if there are issues of fact which if proved would defeat recovery, even if the trial court is convinced that the party opposing the motion is unlikely to prevail at trial.” In other words, the Second Circuit says, "a court may consider undisputed allegations of fact on a Rule 12(c) motion under the same standard as Rule 12(b)(6), but it may not use a motion for judgment on the pleadings to weigh disputed factual allegations."

On the discrimination claim, after noting the plaintiff must prove that age was the "but-for" cause of the adverse decision, citing recent Supreme Court authority, Comcast Corp. v. National Assn. of African Am.-Owned Media, 140 S.Ct. 1009 (2020), the Second Circuit states that "the 'but-for causation standard applies not only at trial but at the pleading stage as well." A footnote in this opinion suggests the Second Circuit's analysis in Littlejohn v. City of New York, 795 F.3d 297 (2d Cir. 2015), which offers a generous legal standard for plaintiffs on a Rule 12(b)(6) motion, may not survive the Supreme Court's analysis in Comcast.

The age-related comments lie at the heart of the case. But these are "stray remarks," the Court of Appeals holds, for the following reasons:

First, Al-Mubaraki made only two remarks, and Lively provides details for only one of those remarks. More significantly, Lively has failed to raise a reasonable inference that there is 'a direct link' between the age-related remarks and his termination. Al-Mubaraki’s comments were separated by several months and occurred five and ten months before Lively’s termination."

Second, "Lively has alleged no facts concerning 'other indicia of discrimination' that would make Al-Mubaraki’s remarks 'bear a more ominous significance.' To the contrary, the complaint alleges that Lively was promoted and received positive feedback from Al-Mubaraki after Al-Mubaraki made the discriminatory remarks."

Third, "Lively [does not] allege that Al-Mubaraki played any role, much less 'a substantial role[,] in the decision to terminate.' Instead, the complaint states that WAFRA’s HR Director and Chief Administrative Officer handled his termination." This third factor is a way for plaintiffs to distinguish this case from their own cases.

Fourth, "Lively’s own complaint describes the stated reason for his termination—i.e., 'violating company policies and the code of ethics prohibiting sex discrimination and harassment in the workplace.' Even without considering the truth of the allegations contained in Kraut’s EEOC and federal court complaints, the district court could properly have taken judicial notice of the fact that those complaints had been filed. Moreover, Lively’s termination letter, which was attached as an exhibit to Defendants’ answer, was also within the universe of materials the district court could consider on a Rule 12(c) motion as a document incorporated by reference into the complaint. In light of that factual context, Lively’s conclusory narrative that the sexual harassment allegation 'was nothing
more than a pretext to fire him for being an older worker' is implausible."

The retaliation claim is also gone. The Court of Appeals holds that plaintiff has not plausibly plead that his protected activity was the "but for" cause of his termination. Borrowing from Title VII caselaw, the Court states that "ADEA retaliation claims likewise require 'proof that the unlawful retaliation would not have occurred in the absence of the alleged wrongful action or actions of the employer.'”

The Court holds that plaintiff "has alleged no facts suggesting that the reporting of Al-Mubaraki's comments was the 'reason' for his termination. He alleges no evidence (direct or circumstantial) of retaliatory motive based on his reporting of Al-Mubaraki’s comments. Instead, he “has simply asserted in conclusory fashion that ‘as a result of reporting Al-Mubaraki’s misconduct WAFRA seized the opportunity to terminate Lively based on the basis of a false accusation of sex discrimination and harassment.’”

What about temporal proximity? Isn't that enough to satisfy the pleading burden? The Court of Appeals holds that plaintiff has not alleged temporal proximity between his reports and his termination sufficient to raise a plausible inference of causation." For that holding, the Court cites Duplan v. City of New York, 888 F.3d 612, 625 (2d Cir. 2018), which stated in turn:

Relying on Grant v. Bethlehem Steel Corporation, 622 F.2d 43 (2d Cir. 1980), Duplan contends that the more than two-year delay between his first EEOC charge and these alleged adverse employment actions does not break the chain of causation because the City retaliated against him at the "first available opportunity" to do so in that particular manner. Appellant's Br. at 26. Even assuming that Grant establishes the principle that causation can be shown on that theory, however, it would be difficult to apply it to the facts that Duplan has alleged. In part, that problem is caused by the lengthy gap in time between his initial protected act and the ensuing instances of retaliation that were properly exhausted by his 2014 complaint. For instance, Duplan does not specify whether he was eligible for or received other raises between his 2011 complaints and the 2013 raise he was denied. It is also unclear how we could apply a "first available opportunity" theory to what Duplan alleges to be a persistent pattern of denying his applications for new positions when he has only exhausted the last denial in that chain.

TTABlog Test: Is "BEAUTY SG" Primarily Geographically Descriptive of Cosmetics and Supplements?

The USPTO refused to register the proposed mark BEAUTY SG for cosmetics and dietary and nutritional supplements [BEAUTY disclaimed as to cosmetics], on the ground that the mark is primarily geographically descriptive of the goods under Section 2(e)(2). Examining Attorney Chioma (Bata) Oputa contended that BEAUTY is descriptive of the goods and SG is "substantially synonymous" with Singapore. Applicant Shim Phyau Min argued that BEAUTY merely suggests a desired outcome from use of the supplements, and SG is an abbreviation for many terms besides Singapore. How do you think this came out? In re Shim Phyau Min, Serial Nos. 88255234 and 88258789 (July 21, 2021) [not precedential] (Opinion by Judge Michael B. Adlin].

A mark is primarily geographically descriptive under Section 2(e)(2) if "(1) the primary significance of the term is the name of a place known generally to the public; (2) the public would make a goods/place association, i.e. believe that the goods for which Applicant seeks registration originate in that place; and (3) the source of the goods is the geographic region named in the proposed mark."

The examining attorney relied on various reference works that state that SG is an abbreviation for Singapore, dictionary definitions of "cosmetics," third-party website pages using the word "beauty" to describe their cosmetics and supplements, and evidence that a number of Singapore companies offer cosmetics and other beauty products, with some of them using names, marks, or descriptors that include BEAUTY or SG, or both.

Applicant pointed out that SG may also refer to the chemical element Seaborgium, Specific Gravity, Solicitor General and surgeon. She claimed that she uses SG in her mark not to refer to Singapore, but instead as an acronym for "serums and gels." Finally, she maintained that Singapore is a tiny country, not generally known to relevant American consumers.

The Board found that the primary significance of SG in Applicant’s proposed mark is Singapore. Although SG may have other meanings, none of the meanings in the record related to cosmetics or supplements. "Thus, we find that relevant consumers will perceive the SG element of Applicant’s mark as referring to Singapore, Applicant’s domicile and the term’s first meaning according to reference works." In fact, Applicant's Facebook page makes clear that SG refers to Singapore. And the abbreviation SG for Singapore is "widely used by many Singapore websites, the domain name system generally, the United Nations and ISO, news organizations, and, significantly, Applicant’s competitors in, and media reporting on, the Singapore beauty industry."

The evidence showed that a substantial number of relevant United States consumers are familiar with Singapore, "as they likely would be with any of the 'world’s greatest commercial centers.'"

The Board had not doubt that "beauty" is descriptive of supplements The record evidence showed that "'beauty supplement' is essentially a term of art in the industry to refer to dietary and nutritional supplements intended to improve skin, hair or nails or otherwise enhance one’s beauty."

As to the second element of the Section 2(e)(2) test, because the applicant resides in Singapore, the Board presumed that relevant consumers would believe that the involved goods originate in Singapore. The evidence "bolstered this presumption" because it revealed "not only that Singapore’s beauty industry is 'thriving' and 'lucrative,' but that 'SG beauty brands' also use the terms SG and BEAUTY for their hair, nail and skincare goods."

Finally, Singapore is the actual source of the applicant's goods, satisfying the third element of the test.

The record leaves no doubt that Singapore, often referred to by the recognized abbreviation SG, is known generally to Americans; and Applicant’s beauty focused supplements, and cosmetics and hair, nail and skincare products originate there. Other providers of beauty products that compete with Applicant have a "legitimate interest … in truthfully being able to use [the geographic abbreviation SG] to inform the public of the origin of their similar products."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2021.

Current Roster of TTAB Judges (July 2021)

Thursday

Here is the current roster of Administrative Trademark Judges at the TTAB. There are 26 judges, including Chief Judge Gerard F. Rogers and Deputy Chief Judge Mark A. Thurmon.

Rogers, Gerard F. (Chief Judge): Appointed to TTAB in 1999; Prior Professional Experience: Trademark Examining Attorney; Assistant to the Assistant Commissioner for Trademarks; TTAB Staff Attorney; Education: B.A., University of Massachusetts Amherst; J.D. magna cum laude, New England School of Law.

Thurmon, Mark A. (Deputy Chief Judge): Appointed to TTAB in 2019; Prior Professional Experience: Private Practice; Adjunct Professor of Law, University of Texas School of Law; Assistant Professor of Law, Levin College of Law, University of Florida; Professor of Law at the Southern University Law Center, Southern University; Education: B.S., Louisiana State University; J.D. with high honors, Duke University School of Law.

Adlin, Michael B.: Appointed to TTAB in 2012; Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University; J.D., Boston University School of Law.

Bergsman, Marc A.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; Trademark Managing Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., Miami University of Ohio; J.D., Cleveland Marshall College of Law, Cleveland State University.

Cataldo, Peter W.: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Canisius College; J.D., Albany Law School.

Coggins, Robert H.: Appointed to TTAB in 2017; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.S., Davidson College; J.D., Wake Forest University School of Law.

Dunn, Elizabeth A.: Appointed to TTAB in 2019; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Boston University; J.D., American University Washington College of Law.

English, Christen M.: Appointed to TTAB in 2019; Prior Professional Experience: Private Practice; TTAB Interlocutory Attorney; Education: B.A., Boston College; J.D. Catholic University Columbus School of Law.

Goodman, Cheryl S.: Appointed to TTAB in 2014; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State College of Law.

Greenbaum, Cindy B.: Appointed to TTAB in 2012; Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Heasley, David K.: Appointed to TTAB in 2015; Prior Professional Experience: Private Practice (Washington, D.C.); Education: B.A., The Johns Hopkins University; J.D., University of Maryland School of Law.

Hudis, Jonathan: Appointed to TTAB in 2019; Prior Professional Experience: Private Practice (Washington, D.C. and Alexandria, Virginia); Education: B.A., State University of New York at Albany; J.D., Brooklyn Law School.

Johnson, Melanye K.: Appointed to TTAB in 2020; Prior Professional Experience: Corporate Counsel; Senior Counsel, Office of General Counsel at the U.S. Department of Health and Human Services (HHS); Education: B.A., University of Michigan; J.D., Ohio State University Moritz College of Law.

Kuczma, Linda A.: Appointed to TTAB in 2011; Prior Professional Experience: Private Practice (Chicago, Illinois); Education: B.S., St. Mary's University; J.D., Loyola University Chicago School of Law.

Kuhlke, Karen: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (Washington, D.C.); Education: B.A., University of Kansas; M.A., Columbia University; J.D., Georgetown University.

Larkin, Christopher: Appointed to TTAB in 2016; Prior Professional Experience: Private Practice (Los Angeles, CA; New York, N.Y.); Education: B.A., Stanford University; J.D., Columbia Law School.

Lebow, Mark: Appointed to TTAB in 2020; Prior Professional Experience: Private Practice (Alexandria, Virginia); Education: B.A., Florida Atlantic University; J.D., Hofstra University School of Law; LL.M., John Marshall Law School.

Lykos, Angela: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., The Johns Hopkins University; J.D., Duke University Law School.

Lynch, Cynthia C.: Appointed to TTAB in 2015: Prior Professional Experience: Private Practice; Attorney-Advisor at the International Trade Commission; USPTO Assistant Solicitor: USPTO Administrator for Trademark Policy and Procedure; Education: B.A., University of North Carolina; J.D., University of Virginia School of Law.

Mermelstein, David: Appointed to TTAB in 2006: Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Supervisory Interlocutory Attorney; Education: B.A., New College, Hofstra University; J.D., American University.

Pologeorgis, George C: Appointed to TTAB in 2015; Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Attorney in the Office of Trademark Quality Review and Training; Trademark Examining Attorney; Private Practice; Education: B.A., University of Pennsylvania; J.D., George Washington University National Law Center.

Shaw, Thomas: Appointed to TTAB in 2011; Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.

Taylor, Jyll: Appointed to TTAB in 2006; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of North Carolina at Chapel Hill; J.D., Howard University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007; Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Wolfson, Frances: Appointed to TTAB in 2010; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., U.C. Santa Barbara; J.D., U.C.L.A.

Zervas, Albert: Appointed to TTAB in 2005; Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.

Text Copyright John L. Welch 2021.

TTAB Denies Motion for Relief From Default Judgment Issued in December 2018

In this cancellation proceeding targeting two registrations for the mark BLEU ICE for clothing, the Board entered judgment by default on December 19, 2018, after Respondent Davoudzadeh failed to file an answer or respond to the notice of default. Two applications owned by Petitioner that had been blocked by the registrations then proceeded to registration on June 14, 2019. On February 4, 2020, Davoudzadeh filed a motion for relief from the default judgment, but it was denied as untimely because it was not filed within one year of the entry of judgment, as required by FRCP 60(c)(1). On March 14, 2020, Davoudazdeh moved for reconsideration, asserting that his motion was based on FRCP 60(b)(6), which has no time limit. The Board has now denied that motion for reconsideration. Blue Ice Mountain Works SA v. Massoud Davoudzadeh, Cancellation No. 92069506 (July 19, 2021) [not precedential].

Whether the time of filing a motion under FRCP 60(b) is "reasonable" depends on the facts of the case, including "the length and circumstances of delay in filing, any prejudice to the opposing party by reason of the delay, and the circumstances warranting equitable relief." Since Davoudzadeh's Rule 60(b)(6) motion was filed 13-and-one-half months from entry of default, the Board deemed the motion timely.

As to the merits of the motion, the Board noted that relief from a final judgment is an extraordinary remedy, but default judgments based on a failure to timely answer are generally treated more liberally than motions for relief from other types of judgments.

Factors to be considered in a motion to vacate a default judgment for failure to answer are 1) whether the plaintiff will be prejudiced, 2) whether the default was willful, and 3) whether the defendant has a meritorious defense to the action.

Davoudzadeh asserted that he never received the petition for cancellation, nor the "notice of cancellation." He claimed limited facility with the English language, and he "may have assumed it was related to the renewal process rather than a petition to cancel." The Board noted that the institution order was never returned as undeliverable, and Davoudzadeh did not say that the Board had the wrong address. So, presumably, he received the petition.

As to the language issue, Davoudzadeh was on notice that proceedings are conducted in English. He signed and submitted his trademark application for one of the registrations, in English. Many of the documents he submitted are in English, and he executed his affidavit in English. Moreover, he has operated his business in this country for more than 30 years, which suggests that he has some proficiency in English.

The Board concluded that the evidence does not support his claim that he could not understand trademark documents. "In sum, while the record does not show a willful disregard for this proceeding, Respondent's explanations are either ill-supported or are not of such a nature that they demonstrate extraordinary circumstances."

As to the meritorious defense factor, Davoudzadeh indicated in his motion papers that he "wishes and is able to address and defend against Petitioner's allegations" (abandonment and fraud).

Finally, as to prejudice to the petitioner, the Board observed that Davoudzadeh's delay resulted not only in the cancellation of his two registrations, but also the issuance of two registrations to the petitioner, the benefits of which the petitioner has enjoyed for more than two years. "A change in economic position can be presumed under these circumstances." Thus, this factor weighed in favor of the petitioner.

The Board found that Respondent Davoudzadeh failed to demonstrated extraordinary circumstances that warrant granting him relief from judgment under FRCP 60(b)(6).

Read comments and post your comment here.

TTABlogger comment: Hat Tip to FOB Pamela Chestek.

Text Copyright John L. Welch 2021.

Court of Appeals sustains West Point's disciplinary procedures

Wednesday

It is quite prestigious to matriculate at West Point Military Academy. The plaintiff in this case became a West Point cadet, but he was kicked out of the program and ordered to pay the government more than $200,000 in restitution. He challenges the due process leading up to his removal, but that challenge fails.

The case is Doolen v. Wormuth, issued on July 20. West Point has an elaborate mechanism for cadet discipline, including remedial measures short of expulsion, formal disciplinary proceedings that include an evidentiary hearing, and appellate rights within the system. The Second Circuit devotes close to seven pages describing the process.

Plaintiff was subjected to discipline relating to alcohol violations and excessive demerits. The Court says he snuck alcohol into the barracks and engaged in a loud and profane argument with other cadets; that argument became physical. After he was removed as a cadet, he returned following a Judge Advocate General finding about procedural deficiencies associated with that expulsion. But when plaintiff returned, defendants initiated disciplinary proceedings again, the investigating officer ruled against him, determining he lacks the "attributes essential to lead as an officer of the United States Army." The IO also said plaintiff is immature and selfish. Plaintiff was expelled from West Point and ordered to recoup the government for the cost of education.

While courts are loathe to second-guess military determinations under the Intra-Military Immunity Doctrine, one exception that rule involves the failure to follow its mandatory regulations in cases that substantially affect a service member. That exception applies here, so plaintiff wins that hurdle.

While plaintiff is able to overcome the immunity hurdle, he loses the war, so to speak. The Court of Appeals finds that West Point provides enough due process to protect cadets from unfair discipline. These procedures suffice both prior to discipline and after a disciplinary violation is found. We call that pre- and post-deprivation procedures.

GOYA Fails to Submit Evidence On Time, TTAB Dismisses Opposition to GOLA FOODS for Health Food Supplements

The Board dismissed this Section 2(d) and 43(c) opposition to registration of the mark GOLA FOODS for "health food supplements" because opposer Goya Foods failed to submit its evidence on time. The Board, however, went on to decide Goya's likelihood of confusion and dilution claims on the merits, in case a reviewing court disagrees with the Board's finding that all of Goya's evidence was not timely submitted. Goya Foods, Inc. v. George Lage de Assis Rocha, Opposition No. 91247918 (July 19, 2021) [not precedential] (Opinion by Judge Albert Zervas).

Untimely evidence: The only evidence in the record consisted of the pleadings and the opposed application, automatically of record pursuant to Rule 2.122(b)(2). Applicant did not submit any evidence or testimony, while all of Opposer Goya's evidence was submitted late.

The Board had set October 5, 2020, as the closing date for Goya's testimony period. Goya did not submit any testimony. It filed its first notice of reliance on October 6th, which document included a certificate of service dated October 5th. The second and third notices of reliance were filed and served on October 7th.

Rule 2.121(a) states: "No testimony shall be taken or evidence presented except during the times assigned by the Board, unless by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board."

Goya missed the October 5th deadline for filing its proofs. The Board concluded that, "[b]ecuase there is no admission by Applicant nor proof to support Opposer's claims, Opposer's claims must fail." It Board therefore dismissed Goya's claims of likelihood of confusion and dilution.

Goya's Claims: Nonetheless, the Board proceeded to consider Goya's claims on the merits, as if Goya had introduced its evidence on time. Goya alleged likelihood of confusion with, and likely dilution of, its registered marks GOYA and GOLLA and its common law mark GOYA FOODS, for various food items, including black beans, hot peppers, coffee, and fruit drinks, and for retail and wholesale food services. However, Goya did not submit any evidence regarding it GOYA FOODS mark, and thus failed to prove priority, and so the Board gave that mark no consideration.

Rumbling through the DuPont factors, the Board found GOLA FOODS to be similar in sound, appearance, and commercial impression to the GOYA and GOLLA marks. However, as to the involved goods and services, the Board was not able to locate "a shred of evidence" supporting Goya's arguments that the involved goods are "complimentary" (sic) because they are often purchased together at a grocery store or supermarket and are taken together at meals. "Attorney argument is no substitute for evidence." The Board therefore considered this factor to be neutral. Likewise, there was no probative information in the record about the parties' respective trade channels, and so this factor was also deemed neutral.

As to the strength of opposer's marks, the Board found both GOYA and GOLLA to be inherently distinctive and conceptually strong; as to commercial strength, Goya alleged that its marks are famous, but its evidence was limited, particularly after the Board rejected much of the evidence as hearsay. The Board concluded that opposer's marks are entitled to the "normal scope of protection accorded to inherently distinctive marks," and this factor slightly favored a finding of likelihood of confusion.

In sum, despite the similarity of the marks and the overlap in classes of consumers, opposer did not establish that the involved goods and services are related or that their marketing channels overlap or are related. The Board concluded that Goya failed to carry its burden to prove likelihood of confusion by a preponderance of the evidence, and so it dismissed the Section 2(d) claim.

As to Goya's dilution-by-blurring claim, Goya's evidence fell "far short" of proving that its marks are famous for dilution purposes. And so, the Board also dismissed the dilution claim.

Read comments and post your comment here.

TTABlogger comment: Oh boy! The bigger they are, the harder they fall.

District Court Grants Stay of Recently-Filed Infringement Suit in Favor of TTAB Proceeding Nearing Completion

Tuesday

The United States District Court for the Northern District of Georgia granted Defendant HMW's motion to stay Primerica's civil action pending resolution of a TTAB cancellation proceeding involving the mark HOW MONEY WORKS for financial services. The TTAB proceeding, commenced by Primerica in August 2019, was entering the trial testimony stage when, in April 2021, Primerica filed its complaint for unfair competition, trademark dilution, and deceptive trade practices. The court concluded that "a stay pending a decision in the TTAB Proceeding is warranted pursuant to the Court's inherent discretion, and that such a stay would not be immoderate." Primerica, Inc. v. How Money Works, LLC, Civil Action No. 1:21-CV-01613-ELR (N.D.Ga July 7, 2021).

At the TTAB, the parties had completed discovery and the Board had set a trial schedule with all briefing to be completed by November 2021. When Primerica filed its federal complaint, the TTAB suspended the cancellation proceeding at Primerica's request, but the Board noted that "if the district court suspends the civil action to allow the [TTAB Proceeding] to go forward, the Board will entertain a motion to resume the [TTAB Proceeding].

Defendant HMW then moved to stay the civil action, contending that Primerica would not be prejudiced by a stay, but that HMW would be harmed by having to re-litigate the case after nearly two years of proceedings before the Board. In addition, any TTAB decision would likely simplify or dispose of Primerica's civil claims. Primarica argued that granting the motion to stay would be "immoderate" and therefore an abuse of the court's discretion.

Eleventh Circuit precedent dictated that, in exercising its discretion to stay a proceeding pending resolution or related proceedings in another forum, "the district court must properly limit the scope of the stay. A stay must not be 'immoderate.'"

“When deciding whether to grant a stay, courts generally consider the following factors: (1) whether a stay would unduly prejudice or present a tactical disadvantage to the nonmovant; (2) whether a stay will simplify the issues in the case; and (3) whether discovery is complete and a trial date has been set.” Collegiate Licensing Co. v. Am. Cas. Co. of Reading, Pa., 842 F. Supp. 2d 1360, 1369 (N.D. Ga. 2012) (internal citation omitted).

The court recognized that the TTAB proceeding was near completion, but the exact length of the proposed stay was unknown. Nonetheless, the court found that a stay of the civil action was appropriate. The TTAB proceeding involves the same mark and the same parties, who have expended significant time and resources in that proceeding. The lengthy discovery process has been completed and the final aspects of the proceeding have been scheduled. In contrast, the civil action is in its infancy, no scheduling order has been entered, and no discovery has occurred.

Primerica argued that it would be prejudiced by the stay because it could not get full relief from the Board: i.e., injunctive relief or determination of its common law claims. The district court was unmoved. Primerica could have brought suit in 2019 when it learned of HMW's alleged infringement but it chose the TTAB forum despite the limited relief available there. This initial choice undermined Primerica's claim for immediate injunctive relief to prevent irreparable harm.

The court concluded that a TTAB decision regarding underlying issues - priority, likelihood of confusion, and defendant's use of the mark - will aid in resolution of the civil action. Primerica asserted that awaiting a TTAB decision would be "pointless" because the decision would be subject to de novo review, but HMW pointed out that Primerica had offered no new evidence on the issue of priority, and that any district court review of issues untouched by new evidence would be subject to the substantial evidence standard.

The court observed that a TTAB decision, even if subject to de novo review, would be likely to simplify at least some of the issue in the civil action. And so it granted the Defendant HMW's motion for a stay.

Read comments and post your comment here.

TTABlogger comment: Perhaps it finally dawned on Primerica that it was facing defeat in the TTAB proceeding?

Police bribery conviction is upheld

Monday

This man was charged with the most unusual crime I have ever seen in reviewing Second Circuit opinions: he was a go-between corrupt police officers and criminal defendants. He would provide expensive gifts to the high-ranking officers in exchange for using their influence to obtain lenient treatment for the defendants. Bribery through gifts, not money. The defendant was convicted at trial, and the Court of Appeals affirms.

The case is United States v. Reichberg, issued on June 15. Here is how the Court of Appeals describes the arrangement:

The benefits the officers received took many forms, including trips on private jets and luxury hotel stays with prostitutes; football, basketball, and hockey tickets worth tens of thousands of dollars; international travel arrangements to Israel and the Dominican Republic; home improvements worth thousands of dollars; and approximately $60,000 in business steered toward certain of the officers’ private security companies.

Reichberg and [co-defendant] Rechnitz’s largesse obtained a host of favors from NYPD officers. For example, one of Reichberg’s clients was arrested three separate times, but each time was released from custody after Reichberg contacted NYPD officers. [Co-defendant] Grant exerted his influence to secure the processing and approval of gun licenses, even when those applications were deficient or the applicants unqualified for the type of license sought. Grant conferred this benefit on Reichberg, who obtained a full-carry gun license without the licensing division bothering to investigate whether he qualified for one. Banks secured Grant’s promotion to Inspector in the 19th Precinct, on Manhattan’s Upper East Side—a strategic posting valuable to Reichberg and Rechnitz because of its proximity to Rechnitz’s Manhattan office. Officers also provided police rides and police escorts to Reichberg and Rechnitz’s friends to cut through traffic, arranged for an NYPD police boat to give rides to attendees at a barbecue Reichberg hosted, and arranged for an NYPD helicopter to do a flyover of a cocktail cruise organized by Reichberg.

Defendant raises a series of issues on appeal. One alleges a Fourth Amendment violation over the unlawful seizure of electronic evidence, which I imagine is how many of these bribes were proven at trial. It appears the government sent to Reichberg's co-defendants electronic discovery that was seized from his devices, but in doing so it sent them more information than they were entitled to, and that this extra evidence hurt his case. But the trial court found, and the Court of Appeals agrees, that the government released this information in error, and not on purpose. Fourth Amendment suppression remedies are available to deter the government from conducting unlawful seizures in the future. That interpretation of the exclusionary rule was articulated by the Supreme Court Herring v. United States, 555 U.S. 135 (2009), a controversial 5-4 ruling from the Supreme Court. What it means for this case is that since the data was mistakenly released, there is no Fourth Amendment violation because it was done in the good faith that Reichberg was consenting to the release of all of this data.

TTAB Gives District Court Judgment Only Partial Res Judicata Effect, Strikes 8 of 10 Affirmative Defenses in EASYLING Cancellation Proceeding

Having successfully defeated an action for unfair competition brought in the Massachusetts federal court, Respondent Skawa Innovation moved for summary judgment in this cancellation proceeding that had been suspended pending the outcome of the litigation. Petitioner Smartling sought cancellation of a registration for the mark EASYLING (standard form) for a wide range of services, including language interpreter services, on the grounds of likelihood of confusion with its registered mark SMARTLING, abandonment, and lack of bona fide intent. Skawa asserted that claim and issue preclusion barred Smartling's claims. The Board agreed as to abandonment and lack-of-bona-fide-intent, but not as to likelihood of confusion. Smartling, Inc. v. Skawa Innovation Kft., Cancellation No. 92063654 (June 25, 2021) [not precedential.].

Affirmative Defenses: The Board found that Respondent Skawa had sufficiently pleaded its affirmative defenses of claim preclusion and issue preclusion, but eight others failed to pass muster. Neither failure to state a claim nor lack of "standing" is an affirmative defense. Likewise, "no likelihood of confusion" and the alleged weakness of petitioner's mark are not affirmative defenses. Skawa's affirmative defenses of "laches, waiver, estoppel, and/or acquiescence" and "inequitable conduct, unclean hands, and fraud" were stricken because they were not supported by any factual allegations. Finally, the purported defense that Smartling's registration could be restricted under Section 18 to avoid confusion, was stricken because Skawa did not plead a Section 18 claim in its answer or file a motion to restrict. Finally, the Board rejected Skawa's assertion that it was reserving the right to add additional defenses.

Claim Preclusion: In the civil action, Smartling had claimed unfair competition under Section 43(a), alleging infringement of Smartling's mark and name. Smartling had also asserted a claim for cancellation of Skawa's registration under Section 18. The jury found that Smartling did not prove that Skaw "engage[d] in unfair competition by infringing on [Petitioner's] trademark" and the court entered judgment in favor of Skawa "on all counts."

The Board found that Smartling could have raised the claims of abandonment and lack of bona fide intent in the civil action, and therefore those claims were barred by claim preclusion. Those claims are based on the same transactional facts as were available in the civil action. And so the Board granted Skawa's motion for summary judgment as to those claims.

As to Smartling's Section 2(d) claim, however, the Board declined to enter judgment summarily because the trademark infringement claim before the court "involves different transactional facts than the likelihood of confusion claim or the issue of registrability before the Board in a cancellation proceeding." See Jet, Inc. v. Sewage Am. Sys., 55 USPQ2d 1854, 1856 (Fed. Cir. 2000) (“Th[e] array of differences in transactional facts conclusively demonstrates that claim preclusion cannot serve to bar a petition for cancellation based upon an earlier infringement proceeding.”).

Issue Preclusion: Issue preclusion was inapplicable because the "neither the jury verdict nor the court's judgment explained the basis for the finding of likelihood of confusion in the context of the Section 43(a) claim, and it is not apparent what specific facts were litigated and decided as necessary to entering judgment in Respondent's favor on the claim." And so, the Board denied Skawa's issue preclusion defense.

Conclusion: The Board allowed Skawa one month to file an amended answer in which it may attempt to adequately re-plead the stricken affirmative defenses of laches, waiver, estoppel, acquiescence, inequitable conduct, trademark misuse, unclean hands, and fraud, and its Section 18 defense based on a proposed amendment and restriction of its registration.

Read comments and post your comment here.

TTABlogger comment: Do you think these two marks are confusingly similar?

Decision rejecting religious organizations' challenge to Vimeo's policies is vacated

Friday

In March, the Court of Appeals held that a religious organization could not sue Vimeo, an Internet video platform, for religious discrimination after Vimeo removed its videos on the ground that the religious organization violated Vimeo's policies barring the promotion of "sexual orientation change efforts." The case interpreted the Communications Decency Act, which states that no provider or user of an interactive computer service shall be held liable for:

any action voluntarily taken in good faith to restrict access to or availability of material that the provider or user considers to be obscene, lewd, lascivious, filthy, excessively violent, harassing, or otherwise objectionable, whether or not such material is constitutionally protected; or any action taken to enable or make available to information content providers or others the technical means to restrict access to [the] material described.

The March ruling has now been vacated. The Court of Appeals has granted the religious organization's petition for rehearing. The order was issued on July 15. The district court's ruling, which also rejected the organization's argument, remains in place.

Age discrimination claim against Department of Education fails

The Second Circuit hears its fair share of employment discrimination cases, but very few of them result in precedential, published opinions that favor the plaintiff. This is another case where the plaintiff loses by summary affirmance. What it means is the plaintiff lost the appeal shortly after oral argument because the Court of Appeals thought this was a routine case with an easy answer.

The case is Reiss v. Hernandez, issued on July 14. Plaintiff claims age discrimination motivated the Department of Education's determination to terminate her employment. Upon such an allegation, the courts require management to articulate a reason for the adverse decision. The plaintiff then has to show this was not the real reason and that age discrimination was the true motive. The plaintiff's burden is more difficult to satisfy than you might think. The courts tend to be deferential to managerial prerogative.

The Department says plaintiff was let go because she has ineffective ratings as a teacher. Plaintiff says the older teachers got worse ratings than the younger teachers. The court's reasoning tells us how particularized the evidence of age discrimination must be in cases like this:

Although Reiss asserted that older teachers were given disproportionately worse ratings than younger teachers, she did not provide any evidence that younger teachers who received effective ratings were similarly situated to Reiss, an above-40-year-old teacher who received ineffective ratings. Nor did Reiss adduce evidence to support her contention that Defendants pushed out older teachers for younger teachers, let alone evidence that younger teachers in fact replaced older teachers at P.S. 123.

Plaintiff needed to identify comparator, younger teachers who were a close match to her employment status in order to prove age discrimination. The Court of Appeals (Parker, Cabranes and Newman) says does not have this evidence.

While plaintiff claims the principal made ageist comments, the Court of Appeals sweeps this evidence aside, reasoning that "were insufficient to create a triable issue of fact that Defendants’
justification was merely pretext." The district court ruling states that "Reiss specifically claims that Principal Hernandez told her to retire because she was ‘too old’ to be effective at anything.” The district court said this was not enough to win the case, as this comment "appears to be a mischaracterization. In the Second Amended Complaint, Reiss alleges that Principal Hernandez wanted her to retire because in [Principal Hernandez’s] world [Reiss] was ‘too old’ to be effective at anything.' In other words, Reiss now attributes that comment directly to Principal Hernandez, whereas it initially served as Reiss’s subjective view of Principal Hernandez’s state of mind."

Would a jury interpret this evidence differently? Most federal complaints are not filed under oath, but the comment plaintiff highlights on appeal was probably from her sworn deposition. But the Court of Appeals agrees with the district court, and what might appear to be "smoking gun" evidence is not enough to survive summary judgment, and the case is over.

TTAB Denies Petition to Cancel "ONEPACKET" Registration: Failure to Prove Nonuse

Respondent's rope-a-dope defense proved to be successful in this cancellation proceeding aimed at a registration for the mark ONEPACKET (standard form) for computer-related services. The Board concluded that petitioner Equinix failed to establish a prima facie case of abandonment. Respondent did not submit any testimony or evidence and did not file a brief. The record consisted only of circumstantial evidence of abandonment; Equinix did not take the testimony of respondent regarding its use or nonuse of the mark, and respondent did not respond to Equinix's discovery requests. Equinix, Inc. substituted for Packet Host, Inc. v. OnePacket LLC, Cancellation No. 92069714 (July 2, 2021) [not precedential] (Opinion by Judge Linda A. Kuczma).

The sole issue, according to the Board, was "whether Respondent abandoned its registered mark ONE PACKET by failing to use, or cease using of, the mark in the United States in connection with the services listed in its registration without an intent to resume use." [Emphasis supplied.].

[Actually, Section 45 says "with intent not to resume such use." Is the lack of intent to resume use the same as an intent not to resume use? I think not. Proving an intent not to resume use seems like a higher burden than proving no intent to resume use. What if the registrant has no intent one way or the other? Then registrant wins. - ed.]

Petitioner Equinix's evidence of nonuse consisted of a visit to respondent's address in New York City, where respondent could not be found, a copy of respondent's website having a 2014 copyright notice and failing to list any employees or officers of respondent or provide any other indication that the mark was in use, and copies of Internet search results showing no trace of respondent other than its website. The Board was not impressed by this showing:

Although this evidence is relevant, it does not establish Respondent’s lack of use of its mark for a three-year period. While use in commerce of a service mark requires rendering the services, it does not require updates to a website, location at a specific address, or advertising in any specific venue. Abandonment is a question of fact; thus, any inference of abandonment must be based on proven fact

Under Section 45, proof of nonuse for a three-year period would have triggered a presumption of abandonment and would have shifted the burden to respondent. Equinix failed to make a prima facie showing of abandonment because it failed to prove nonuse of the subject mark.

Read comments and post your comment here.

TTABlogger comment: At a minimum, petitioner should have moved to compel discovery responses. And, as the Board pointed out, it could have taken respondent's testimony.

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Updated TTABlog Collection of Section 2(e)(3) "Primarily Geographically Deceptively Misdescriptive" Cases

Friday

TTAB Posts August 2021 (Video) Hearing Schedule

TTAB Denies Fraud Claim But Grants Petition to Cancel SEYIDOGLU Registration on Section 2(a) False Connection Ground

Thursday

E.D. Va. Upholds TTAB Dismissal of SHUSTOV Cancellation Petition: Registrant Overcame Prima Facie Case of Abandonment

Wednesday

Second Amendment victory at the Second Circuit

Tuesday

Precedential No. 20: Claim Preclusion and Issue Preclusion Inapplicable in VALVOLINE Opposition to MAXVOLINE, Says TTAB

Precedential No. 19: Does Eastern Standard Time Control the Timeliness of Discovery Requests? TTAB Says No

Monday

Ageist comments not enough to survive Rule 12(c) motion to dismiss

Friday

TTABlog Test: Is "BEAUTY SG" Primarily Geographically Descriptive of Cosmetics and Supplements?

Current Roster of TTAB Judges (July 2021)

Thursday

TTAB Denies Motion for Relief From Default Judgment Issued in December 2018

Court of Appeals sustains West Point's disciplinary procedures

Wednesday

GOYA Fails to Submit Evidence On Time, TTAB Dismisses Opposition to GOLA FOODS for Health Food Supplements

District Court Grants Stay of Recently-Filed Infringement Suit in Favor of TTAB Proceeding Nearing Completion

Tuesday

Police bribery conviction is upheld

Monday

TTAB Gives District Court Judgment Only Partial Res Judicata Effect, Strikes 8 of 10 Affirmative Defenses in EASYLING Cancellation Proceeding

Decision rejecting religious organizations' challenge to Vimeo's policies is vacated

Friday

Age discrimination claim against Department of Education fails

TTAB Denies Petition to Cancel "ONEPACKET" Registration: Failure to Prove Nonuse

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