Conservative group has no standing to challenge law review membership and article policies

Law review is a prestigious assignment for law students, as they get to edit and publish scholarly articles written by law professors. This case challenges the selection process for law review, as a conservative organization claims the law review's racial and gender preferences violate Title VI and Title IX of the Civil Rights Act, which prohibits gender and racial discrimination in education. The organization loses because it lacks standing to sue.

The case is Faculty, Alumni, and Students Opposed to Racial Preferences v. New York University, issued on August 25. The law review at NYU has 50 student editor positions, 12 of them chosen by a committee that considers in part race, ethnicity, gender, and sexual orientation, along with ideological viewpoint, age, socio-economic background and other factors, including a resume that does not identify them by name. Plaintiffs say this will favor women, racial minorities and LGBT applicants. The law review also includes race and sex considerations in its article-selection process. 

The plaintiff organization claims its members have submitted articles to the law review and will do so in the future, and that the law review's membership and article-selection process will discriminate against white or male authors. Plaintiff also says the diversity requirements will result in having their submissions judged by less-capable editors "who made law review because of diversity criteria, and who leapfrogged students with better grades and writing-competition scores," a process that will hurt the authors who require law review publication to advance their academic careers. 

A threshold issue in cases like this is whether the organization has standing to bring the case. But there is no associational standing to bring this lawsuit, the Court of Appeals (Cabranes, Menashi, and Leval) writes, because the organization does not allege factors that suggest its members will be adversely affected by the law review's practices. The organization will not identify its members for purposes of this lawsuit, and the complaint does not state if and when its members submitted articles. There is no concrete way to know if the organization's members will be affected by the race and gender rules. Moreover, the possible harm is too attenuated for a lawsuit, as the complaint alleges that its members intend to continue submitting articles and intend to apply for law school jobs. The court writes that "some day intentions" are not enough to prove "actual or imminent injury," necessary requirements for standing to sue. So, no standing, no lawsuit.

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TTAB Posts September 2021 (Video) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled six (VI) oral hearings for the month of September 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.

September 8, 2021 - 10 AM: Joshua S. Schoonover v. The Burton Corporation, Cancellation No. 92067794 [Petitioner for cancellation of registration s for the mark FORUM for clothing and snowboards, on the ground of abandonment.]

September 9, 2021 - 4 PM: Maker's Mark Distillery, Inc. v. Bowmaker's Whiskey Company, Opposition No. 91239589 [Opposition to registration of the mark BOWMAKER'S WHISKEY for "Distilled spirits; Whiskey; Bourbon" on the ground of likelihood of confusion with the registered mark MAKER'S MARK for whiskey.]

September 21, 2021 - 1 PM: Patxi's Limited. v. Johnny K. Wang, Opposition No. 91252969 [Opposition to registration of PATXI'S for restaurant services on the ground of likelihood of confusion with opposer's identical common law mark for restaurant services.]

September 23, 2021 - 1 PM: Theragun, LLC v. Theragen, Inc., Opposition No. 91250143 [Opposition to registration of THERAGEN and THERAGEN & Design for "Medical devices, namely, electrostimulatory devices for tissue, bone and/or joint treatment, medical treatment apparel, and a kit comprising an electrostimulatory device and medical treatment apparel" in view of the registered mark THERAGUN for massages apparatus and "vibrating apparatus used to stimulate muscles and increase strength and physical performance for health and medical purposes."]

September 24, 2021 - 2 PM: Spotify AB v. U.S. Software, Inc., Oppositions No. 91243297 and 91248487 [Opposition to registration of the mark POTIFY, in standard character and word-plus-design form, for clothing and for software and services related to medical marijuana dispensaries, on the grounds of likelihood of confusion with, and likely dilution (by blurring and tarnishment) of the registered mark SPOTIFY for clothing, downloadable software, and online services.]

September 29, 2021 - 1 PM: Industria de Diseno Textil, S.A. (Inditex, S.A.) v. Benzara, Inc., Opposition No. 91242880 [Opposition to registration of BENZARA for furniture in view of the registered mark ZARA for various goods, including mirrors and coat racks.]

 

 

Read comments and post your comment here.

TTABlog comment: A pretty boring group of cases. Any predictions?

Text Copyright John L. Welch 2021.

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State cannot prove irreparable harm in abortion-clinic protest case

The State of New York sought a preliminary injunction against an anti-abortion group that was protesting an abortion clinic in Queens, New York, allegedly harassing patients and interfering with the clinic's operation. She did so under the Freedom of Access to Clinic Entrances Act and state law. The district court denied the injunction, and the Court of Appeals affirms.

The case is People of the State of New York v. Griepp, issued on August 26. This case previously went to the Court of Appeals last year, which remained the case to the district court on the basis of evidentiary errors. That was a complex ruling, with a dissent and extensive discussions of evidentiary rules that trial lawyers love but will put everyone else to sleep. The defendants asked the Court of Appeals to reconsider that ruling, hence this decision. 

The State loses the case on appeal because it did not prove irreparable harm, a necessary requirement for any preliminary injunction (you also have to prove likelihood of success on the merits). The case returns to the district court "for a full consideration of the merits." After all, since we are still at the preliminary injunctions stage, the court still has to resolve the case without an expedited schedule, presumable with further consideration of the evidence. It may not look good for the State on remand, as the district court has already ruled it cannot show a likelihood of success on the merits, but the losing party in the injunction context does get a second chance on a full record to change the judge's mind.

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TTAB Affirms Section 2(e)(5) Functionality Refusal of Iconic Eames Chair Design

The Board upheld a Section 2(e)(5) refusal to register the design of the Eames chair (shown below) for "furniture, namely chairs," finding the configuration to be de jure functional. The well known Eames chair was designed in the 1940s and was recognized by Time magazine as the Best Design of the 20th Century. The Board applied the ever-popular Morton-Norwich factors in concluding that "[t]he patent evidence, the advertisements touting the utilitarian advantages of significant design features of the proposed mark, and the limited availability of alternative designs that would work equally well highlight that the features of the proposed mark affect the cost and quality of the chairs." In re Herman Miller, Inc., Serial No. 88027008 (August 25, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch). 

The proposed mark is described as: "The mark consists of a three-dimensional configuration of a chair comprised of a curved trapezoidal seat and back, each with rounded corners but different curvatures and proportions, two arched legs, each of continuous material and offset heights which narrow toward the ground. The broken lines depicting the spine of the chair indicate placement of the mark on the goods and are not part of the mark." [Emphasis supplied].

The Eames Patent: Charles Eames obtained a utility patent in 1951 on a "Furniture Construction" (pdf here) depicted therein:

Reviewing the '490 patent, the Board found that "the contours of the seat and back, the single-piece designs and differing heights of the leg frames, as well as their placement along the spine, contribute to the 'restful and comfortable' nature of the chair, and the ability to 'inexpensively manufacture [it] by mass production methods,' as explicitly stated in the patent." 

Applicant Herman Miller, noting that the spine of the chair is not part of the proposed mark, argued that “the spine is the invention, and the specific seat, back, and legs claimed in the Eames Molded Plywood Chair Design are not essential to the invention." The Board was not persuaded: "[T]he patent claims features of the seat, back, and legs found in the proposed mark, and claims the manner of placement of these features on the spine, as found in the preferred embodiment chair, just as they appear in the proposed mark."

Applicant cannot avoid the functionality refusal merely by dotting out the spine, but retaining all the other elements in the ‘490 Patent’s preferred embodiment, which are constructed in a particular manner around and joined to the spine in exactly the configuration shown in the proposed mark.

The Board observed that, in order in order to practice the invention of the now-expired ‘490 Patent, as depicted in its preferred embodiment, "the features of Applicant’s proposed mark must be constructed as they are shown in the ‘490 Patent and placed around the spine in the manner that they appear in the proposed mark."

The ‘490 Patent indicates that the features of the proposed mark are essential to the use and purpose of the chair, and affect its cost and quality. The patent thus is strong evidence that the matter is functional. See TrafFix, 58 USPQ2d at 1005; Becton, Dickinson, 102 USPQ2d at 1377. To issue a trademark registration covering Applicant's proposed mark would frustrate the policies of patent law whereby, upon the expiration of the ‘490 Patent, competitors should be free to practice the invention. See TrafFix, 58 USPQ2d at 1007; Valu Eng’g, 61 USPQ2d at 1425.

Advertising: The Board found that "significant features" of the proposed design mark are touted in Herman Miller's advertising, emphasizing, for example, the curve of the seat and back and their contouring to fit the human body. One third-party seller described the shape of the back as “low and expansive” to support ergonomics and “help[] your circulation." The Board concluded that the proposed mark "looks the way it does in order to be a better chair, not in order to be a better way of identifying who made it (the function of a trademark)."

Alternative Designs: The Board pointed out that when the first two Morton-Norwich factors demonstrate that a proposed configuration mark is functional and affects the cost and quality of the product, the availability of other designs is irrelevant. See, for example, TrafFix, 58 USPQ2d at 1005; Becton, Dickinson, 102 USPQ2d at 1378. Nonetheless, the Board observed that the record evidence, "including the patents, the advertising, and the articles on Charles and Ray Eames and their chair design at issue, makes clear that competitors would be disadvantaged in trying to find alternative designs that would work equally well."

Method of Manufacture: The fourth Morton-Norwich factor - whether the design results from a relatively simple or cheap method of manufacturing the product - is likewise irrelevant in light of the Board's findings regarding the first two Morton-Norwich factors. The Board addressed this factor anyway.

Noting the absence of current evidence about Herman Miller's cost of manufacture, the Board found the record inconclusive. It rebuffed Herman Miller's assertion that the Board should consider the retail price of the chair (expensive), pointing out the price does not necessarily correlate with the cost of manufacture. "Applicant’s chair design has achieved considerable renown, and is a museum piece, which likely drives its retail price." The Board found this Morton-Norwich factor to be neutral.

Conclusion: In light of its findings under the first two Morton-Norwich factors, the Board affirmed the Section 2(e)(5) refusal.

Read comments and post your comment here.

TTABlogger comment: Any doubt that this will be appealed? Would Herman Miller have been better off not trying to register the proposed mark?

Text Copyright John L. Welch 2021.

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Fox News sexual harassment case must be resolved in federal court despite arbitration clause

If you're a fan of federal jurisdiction, this case is for you. The plaintiff is a former Fox News commentator who sued the network and Roger Ailes for sexual harassment and retaliation. But there was an arbitration clause in her contract. She sued in federal court anyway, triggering a round of motion practice that wound up in the Court of Appeals. 

The case is Tantaros v. Fox News Channel, issued on August 27. Arbitration clauses take the case out of the courts and into a private justice system. In response to the Me-Too movement, New York tried to deal with this a few years ago in enacting CPLR 7515, which prohibited mandatory arbitration clauses in sexual harassment cases except where inconsistent with federal law. Under the Federal Arbitration Act, arbitration clauses are enforceable. This means that Section 7515 has a trap door for plaintiffs.

Plaintiff filed her case in state court but defendant tried to remove it to federal court on the basis that the case raises a federal claim. State court cases that raise a federal claim can be removed to federal court. Plaintiff opposed that motion, arguing this is not really a federal case. The district court disagreed, and the Court of Appeals (Walker, Cabranes, and Wesley in dissent) disagrees, and the case returns to state court, where I presume Fox News will then try to enforce the arbitration clause and take the case out of the courts completely.

Judge Walker says this case raises a federal claim because it turns on a substantial question of federal law, as per the Supreme Court's analysis in the Gunn/Grable line of cases. Many state law claims cannot be removed to federal court even if they will raise a federal defense, i.e., state law defamation cases that will be met with a First Amendment response. But if the state court case implicates a substantial federal issue, it can be removed to federal court. That's this case, Judge Walker writes, because plaintiffs right to relief necessarily turns on a resolution of a question of federal law. That is, the court must apply federal law to the plaintiff's claim. Since Section 7515 contains a federal exception within that very statute, this case requires the court to consider federal law in determining whether Section 7515's prohibition against mandatory arbitration applies. 

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Candeub and Volokh on Section 230 and Removing "Otherwise Objectionable" Content From Websites

 At Volokh Conspiracy, Eugene Volokh flags a brief article that he coauthored with Adam Candeub that was recently published in the Journal of Free Speech Law. Here's the abstract:

[Communications Decency Act] Section 230(c)(2) immunizes platforms' decisions to block material that they "consider[] to be obscene, lewd, lascivious, filthy, excessively violent, harassing, or otherwise objectionable." The ejusdem generis interpretive canon suggests that "otherwise objectionable" should be read "to embrace only objects similar in nature to those objects enumerated by the preceding specific words."

In this instance, the similarity is that all those words refer to material that was traditionally viewed as regulable in electronic communications media—and was indeed regulated by the Communications Decency Act of 1996, as part of which § 230 was enacted. And restrictions on speech on "the basis of its political or religious content" were not viewed as generally permissible, even in electronic communications.

Candeub and Volokh argue that "otherwise objectionable" material should not be interpreted as a catch all category, but should instead be construed in light of the other terms in Section 230(c)(2)'s list of materials. As a result, they urge that Section 230(c)(2) be read as immunizing Internet companies and websites from restricting "obscene, lewd, lascivious, filthy, excessively violent, or harassing communications," and that the statute not be read to immunize these actors from the removal of content that is objectionable based on its political content.

I think there are several problems with this argument. With the caveats that these are my initial impressions and that it's been a while since I've done intensive research into Section 230, these concerns are listed below. I've tried to list my objections in order of most technical and specific first, followed by broader points.

First, I think the ejusdem generis interpretive canon has less power in the particular context here because Section 230(c)(2) immunizes platforms' decisions to block "otherwise objectionable" content rather than "other objectionable" content. The latter wording would be a clear example of specific terms followed by a general term, and would be in line with most examples in Candeub's and Volokh's article which involve statutes listing examples, followed by "other" things. But the way the statute is actually worded includes the term, "otherwise," which suggests material that is objectionable in ways that are distinct from the preceding examples. Candeub and Volokh do not address this, and their esjudem generis argument therefore seems stronger than the language of the statute warrants, as it implicitly reads the statute as prohibiting "other objectionable" content rather than "otherwise objectionable" content.

Second, this reading takes an overly narrow view of the purpose of the provision it analyzes and the Stratton Oakmont, Inc. v. Prodigy Services Co. case that played a significant role in prompting the inclusion of the provision. In Stratton Oakmont, the plaintiff sued a website message board for defamation based on several allegedly defamatory posts from message board users. The plaintiff alleged that the message board was liable because it exercised editorial control over the message board, noting that the site set forth detailed content guidelines that discourage the posting of "insulting" notes, as well as notes that "harass other members or are deemed to be in bad taste or grossly repugnant to community standards, or are deemed harmful to maintaining a harmonious online community" stating that such content would be removed when brought to the site's attention. The court cited this choice to engage in this editorial control as opening up the site to greater liability than other sites that did not take such measures. 

Congress was aware of this case when it passed Section 230, which Candeub and Volokh recognize. But they only focus on remarks from legislators who cite the blocking of material that is not "family-friendly," which (sort of) lines up with their restrictive reading of the statute. But this narrow focus ignores the extent of editorial restrictions at play in Stratton Oakmont, which included guidelines for the removal of "insulting," [non]-harmonious," and "bad taste" comments. It also suggests a narrow view of "family friendly," content, which may well exclude truthful, politically significant content such as images and discussions of war or terrorism, litigation and legislation over sexual privacy and abortion, and other such political content. Stratton Oakmont illustrated the danger of any sort of editorial policy giving rise to heightened liability, and Section 230(c)(2) was the response. Candeub and Volokh's narrow reading is inconsistent with this broad concern that prompted the immunity provision.

Third, a reading of the statute that removes immunity concerning the removal of political content while immunizing the removal of other content would run into significant First Amendment problems. Those who run websites or forums may have their own political preferences, and may moderate content based on these preferences. Limiting this ability would infringe on those providers' First Amendment rights--an aspect of online content moderation that is often ignored by Section 230 critics (and misinterpreters) who prefer to focus only on the purported rights of users.

To Candeub's and Volokh's credit, they recognize that the First Amendment may be relevant, but set it aside for the purpose of their article. Because of this, though, the article's analysis is in a misleading vacuum.  What is the point of this discussion about ejusdem generis if the First Amendment will ultimately require a different reading? Indeed, the First Amendment may well be relevant to discussions of interpretive canons: to the extent that the narrow reading of "otherwise objectionable" content leads to First Amendment problems, the canon of constitutional avoidance would weigh in favor of an expansive interpretation that avoids this issue.

These are my initial concerns with the conclusions in the article, but I'll be interested in seeing what others have to say--particularly those who are more involved in Section 230 research and litigation than me.

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Do the broken elevators in the NYC subway system violate the disability discrimination laws?

This class-action involves broken down elevators in the New York City transit system. A disability-rights groups sues the Metropolitan Transit Authority for disability discrimination because the broken elevators make it nearly impossible for some transit passengers to make it through the city. The Court of Appeals (Jacobs, Cabranes and Menashi) vacates summary judgment in favor of the MTA and remands the case to see if the MTA was providing the disabled plaintiffs a reasonable accommodation.

The case is Brooklyn Center for Independence of the Disabled v. Metropolitan Transit Authority, issued on August 23. While the vast majority of elevators are usually in working order, many are not, and commuters may encounter outages 8 to 15 percent of the time. This causes great inconvenience for commuters, since a single elevator is all there is at some stations, and many stations lack an elevator to begin with. Since most elevator outages are unplanned, it takes time to fix them. All of this will greatly affect the commutes for disabled transit users, as the outages are not isolated or temporary. 

After rejecting the Transit Authority's argument that the court lacks authority over the case because the court should not "become an elevator-repair watchdog," the court gets to the real issues, rejecting the MTA's argument that there is no disability discrimination because the system as a whole, including subways, buses and paratransit, is fully accessible. On a summary judgment motion, the "big-picture" defense will not always work.

But the district court, in granting summary judgment to the MTA, did not consider whether the transit system provides reasonable accommodations to disabled passengers who cannot use the subway because of the broken elevators. The court notes there are other ways to get around the city, including buses, to which the MTA can refer the public when the subways are not working. But the Court of Appeals cannot on this record determine whether the bus system is a reasonable accommodation under the Americans with Disabilities Act and federal regulations. One issue is whether the MTA provides the public with reasonable notice of the bus alternatives when the elevators are broken, i.e. proper signage and proper advance notice of the elevator malfunctions. Back to the district court does this case go.

READ MORE - Do the broken elevators in the NYC subway system violate the disability discrimination laws?

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TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?

The TTAB (Tee-Tee-Ā-Bee) recently decided the appeals from the three Section 2(d) likelihood of confusion refusals summarized below. At least one of the three refusals was reversed. Let's see how you do in predicting the results. [Answer will be found in the first comment.]

In re Juice Generation, Inc., Serial No. 88536980 (August 25, 2021) [not precedential] (Opinion by Judge Angela Lykos) [Section 2(d) refusal of HI-FIBE for "Non-alcoholic beverages containing fruits and vegetables juices; smoothies; vegetable-fruit juices and smoothies," in view of the registered mark HI FIBE for "Food additives for non-nutritional purposes high in fiber for use as a flavoring, ingredient or filler for use in bread, tortillas, frozen food entrees, muffins, bagels, cheese, juice drinks, soups, cookies and nutritional bars."]

In re UT Fidem Foundation, Serial No. 88592284 (August 24, 2021) [not precedential] (Opinion by Judge Cheryl S. Goodman) [Section 2(d) refusal of the mark shown below for "Small group Christian ministry services and providing religious faith counseling services" in view of the registered mark KEEP THE FAITH for "Providing a website featuring information about religious belief systems, and, in particular the Catholic religious belief system."]

In re Real-Time Marketing, Ltd., Serial No. 88590001 (August 24, 2021) [not precedential] (Opinion by Judge Michael B. Adlin) [Section 2(d) refusal of METALHEAD for "air fragrancing preparations for automobiles or vehicles," in view of the registered mark METAL HEAD for "non medicated skin care preparations; skin masks."]

 

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHAs here?

Text Copyright John L. Welch 2021.

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TTABlog Test: Is FAST DRINK Merely Descriptive of Nutritional Meal Replacement Drinks?

The USPTO refused to register the proposed mark FAST DRINK, finding it to be merely descriptive of "Nutritional meal replacement drinks adapted for medical use; herbal teas for medical treatments." The Examining Attorney contended that FAST DRINK merely describes a significant feature of the identified goods, namely, that the goods are "for use during periods when a consumer either completely abstains from food, instead consuming herbal teas or meal replacement drinks such as those described in applicant’s application or when a consumer greatly reduces the food for a certain period, instead consuming herbal teas or meal replacement drinks[.]" How do you think this appeal came out? In re L-Nutra, Inc., Serial No. 87635652 (August 24, 2021) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

The Examining Attorney relied on dictionary definitions of the constituent words and on articles, blog posts, and L-Nutra's own advertising materials indicating that its products are used to provide nourishment to someone who is fasting or preparing to fast. 

The Board, however, noted the lack of evidence that FAST DRINK as a unitary term is used to refer to such a drink. This suggests that FAST DRINK "is not a grammatically correct expression or term of art identifying a type of drink used during a fast, and it is unclear whether consumers would understand it as a merely descriptive term when applied to the identified goods." 

Moreover, said the Board, "we believe consumers would perceive FAST DRINK as referring to a product they can prepare quickly or they can use as a quick snack or as on on-the-go meal replacement." The Board observed that marks that creates a double entendre are not merely descripitive. Here, FAST DRINK has multiple meanings and qualifies as a double entendre. 

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I'm not convinced. FAST DRINK in the context of a drink for fasting people would seem to be readily perceived as describing the key purpose of the drink . Moreover, even if it has a second meaning, that meaning is also merely descriptive of the goods. So I dissent.

Text Copyright John L. Welch 2021.

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Precedential No. 22: TTAB Allows Withdrawal of Cancellation Petition Prior to Answer, Without Prejudice, Despite Federal Court Ruling Adverse to Petitioner

Petitioner Jim Beam filed a voluntary withdrawal, without prejudice, of its petition for cancellation of a registration for the mark shown immediately below, for "distilled spirits." In the petition, Jim Beam claimed that JL Beverage's "Lips Mark" was merely ornamental and lacked acquired distinctiveness. The cancellation proceeding had been suspended before JL Beverage filed its answer, in light of an infringement action brought by JL Beverage. The Board observed that, under Rule 2.114(c), a petition for cancellation "may be withdrawn without prejudice before the answer is filed." The Board saw no reason to depart from the language of the Rule, which is "plain, clear, and mentions no exceptions," and so it dismissed the petition without prejudice. Jim Beam Brands Co. v. JL Beverage Company LLC, 2021 USPQ2d 885 (TTAB 2021) [precedential]. 

The US Court of Appeals for the Ninth Circuit, on May 17, 2020, affirmed Jim Beam's victory over JL Beverage in the infringement action, finding that Jim Beam's "Pucker" vodka mark did not infringe JL Beverage's Johnny Love "Lips Mark",  based on differences between the bottle designs, marks, product names, and labels. [Ninth Circuit opinion here.]

 

In the civil action, Jim Beam had asserted counterclaims for cancellation of the "Lips Mark" registration on the ornamentality ground, as well as alleging certain claims of infringement of a prior Jim Beam registration. The Ninth Circuit upheld the district court's denial of all claims of the parties.

JL Beverage argued that the Board should dismiss the petition for cancellation with prejudice because the district court denied Jim Beam's counterclaims, which included a claim allegedly mimicking the claim pending in the Board proceeding. It urged the Board to create an exception to Rule 2.114(c) "in cases where a federal court judgment has a bearing on the Board case," but it failed to provide a persuasive reason for the Board to do so.

Finally, the Board noted that if Jim Beam files another petition for cancellation of the subject registration, JL Beverage may assert any preclusion arguments at that time.

Read comments and post your comment here.

TTABlogger comment: Seems pretty straightforward to me. If the Rule is so plain and clear, why make this decision precedential?

Text Copyright John L. Welch 2021.

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CAFC Rules that the USPTO is not Entitled to Expert Witness Fees in a Civil Action for Review of a PTAB Decision. What about the TTAB?

You will recall that in Peter v. Nantkwest, the Supreme Court unanimously upheld an en banc decision of the CAFC, ruling that the USPTO is not entitled to recover its attorney's fees in an appeal from an adverse PTAB (Patent Trial and Appeal Board) decision via a civil action under Section 145 of the Patent Statute. [TTABlogged here]. Well, last week, in Hyatt v. Hirshfeld, Appeal No. 2020-2231 et al. (Fed. Cir. August 18, 2021), the CAFC ruled that the USPTO is not entitled to recover expert witness fees in a Section 145 action. [pdf here]. What's the story on the trademark side, where the issue of recover of attorney fees under Section 1071(b) has been hanging around for several years?

In the Booking.com case, in 2019 the Fourth Circuit upheld the district court's award of attorney's fees to the USPTO in a successful appeal from a TTAB decision deeming the term BOOKING.COM to be generic for travel agency services. However, the Supreme Court in July 2020 remanded the case back to the Fourth Circuit for consideration of the attorney fee award in light of its Nantkwest decision. [TTABlogged here].

Prior History: The Fourth Circuit had followed (seemingly with reluctance) its own decision in Shammas v. Focarino, 784 F.3d 219, 225 (4th Cir. 2015) by affirming the district court's award of attorney's fees to the USPTO. Despite statutory language in Section 1017(b)(3) of the Trademark Act that is virtually identical to that of Section 145 of the Patent Statute, the Fourth Circuit confirmed that the USPTO was entitled to recover its attorney's fees. The district court had awarded the USPTO the sum of $76,873.61, which included $51,572.53 in attorney fees (i.e., USPTO personnel costs) and $21,750.000 in expert witness fees. [TTABlogged here].

Back to the Fourth Circuit: On remand from the Supreme Court, the Fourth Circuit kicked the case back down to the U.S District Court for Eastern District of Virginia "for further consideration in light of the United States Supreme Court's decision in [Peter v. Nantkwest]."

At the district court, both parties agreed that the USPTO was no longer entitled to recover the $51,472.53 previously awarded for the USPTO's personnel costs. On June 3, 2021, the district court allowed Booking.com to reduce the remainder of the award by its costs, resulting in a final award of $23,676.58, which included the USPTO's expert witness fees. [Opinion here].

In late June 2021, Booking.com asked the district court to re-consider the award in light of the anticipated CAFC ruling in Hyatt v. Hirshfeld, but the district court declined. The parties then agreed to an award of $18,676.58, and the court entered an agreed-upon order and closed the case.

Two months later, the Hyatt v. Hirshfeld decision came down.

Read comments and post your comment here.

TTABlogger comment: So where do things stand on the trademark side? Shamas v. Focarino has not been overruled by the Fourth Circuit, and the award of expert witness fees to the USPTO in Booking.com apparently will go unchallenged.

Text Copyright John L. Welch 2021.

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Second Circuit protects fair-trial claims under Section 1983

The Court of Appeals has held that fabrication-of-evidence claims (also known as fair-trial claims) do not require the plaintiff to show the underlying arrest terminated in his favor, as that phrase is defined in malicious prosecution claims. In a victory for plaintiffs, this ruling confirms that fair trial claims are separate and apart from malicious prosecution claims.

The case is Smalls v. Collins, issued on August 20, 2021. The case was consolidated for oral argument and decision with Daniel v. Taylor. Along with Gregory Antollino, I argued this case on behalf of Daniel. This case represents as complex an analysis under 42 U.S.C. 1983 as you'll find, as the Court of Appeals had to take close look at a recent Supreme Court case and reconcile it with longstanding Second Circuit cases on fair-trial claims.

For years, the Second Circuit recognized that fair-trial claims, in which the plaintiff alleges the police fabricated evidence against a criminal defendant, are brought under the Due Process Clause, which protects the integrity of the trial process, even if there was probable cause to arrest the defendant. Malicious prosecution claims, on the other hand, are brought under the Fourth Amendment, which prohibits unreasonable searches and seizures, which means that the plaintiff cannot sue unless the criminal prosecution terminates in a manner indicating the defendant was innocent. That means ACD's and dismissals "in the interest of justice" make it impossible to bring a malicious prosecution claim. Under this calculation, plaintiffs are better off with a fair-trial claim than a malicious prosecution claim.

This distinction between fair-trial and malicious prosecution claims was placed in jeopardy in 2019, when the Supreme Court issued McDonough v. Smith, 139 S.Ct. 2149 (2019), which borrowed from malicious prosecution doctrine in holding that the statute of limitations on fair-trial claims starts when the criminal prosecution terminates in the criminal defendant's favor. The City of New York, and some district court judges in New York, interpreted McDonough to mean that fair-trial claims cannot proceed unless the criminal charge terminates in the defendant's favor, as per malicious prosecution claims. That is why Smalls' and Daniel's federal civil rights cases were dismissed: neither plaintiff's criminal case (on weapons charges) ended with a resounding verdict of acquittal at their criminal trials. Smalls' case terminated after the Appellate Division vacated his conviction because it stemmed from an unlawful search, and the remaining charge was dropped against Smalls on remand in criminal court, as that charge was the fruit of an unlawful seizure as well. And Daniel took an ACD. Under the City's analysis, fair-trial claims would essentially be folded into malicious prosecution claims, and these claims as a whole would be far less common as many criminal defendants, even in the face of police misconduct, end in ACD's and dismissals in the interests of justice.

The Second Circuit (Sack, Menashi and Kaplan [D.J.]) rejects the City's interpretation, holding that fair-trial claims are viable if the criminal case against the plaintiff has terminated, under principles set forth in Heck v. Humphrey, 512 U.S. 477 (1994), which holds that Section 1983 claims cannot proceed if they would necessarily undermine a parallel criminal conviction, such that, in the most obvious case, someone convicted in criminal court cannot claim the underlying arrest lacked probable case. In the fair-trial context, Judge Sack holds that "McDonough's accrual rule does not import malicious prosecution's favorable-termination requirement onto section 1983 fair-trial claims. Where the plaintiff asserts a section 1983 fair-trial claim based on fabricated evidence, all that is required is that the underlying criminal proceeding be terminated in such a manner that the lawsuit does not impugn an ongoing prosecution or outstanding conviction." Since Smalls and Daniel both had their criminal cases terminated before they filed suit under Section 1983, their cases are revived. For Small, that means his favorable Section 1983 verdict is reinstated. For Daniel, it means the Rule 12 dismissal is vacated and his case proceed to discovery.
 

READ MORE - Second Circuit protects fair-trial claims under Section 1983

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TTAB Dismisses HUDL Opposition to HUDL BREWING COMPANY: Proof of Dilution Fame Fails and Goods/Services Too Different for Section 2(d)

In a 96-page opinion, the Board gave the boot to this Section 2(d) and 43(c) consolidated opposition to registration of HUDL BREWING COMPANY for beverage glassware, clothing, and beer (BREWING COMPANY disclaimed). Opposer Agile Sports Technologies claimed likelihood of confusion with, and likelihood of dilution (by blurring) of, its registered HUDL and HUDL-formative marks for various sports-related software and video goods and services. The Board found Agile's evidence insufficient to prove fame for dilution purposes, and concluded that the involved goods are too different to support a conclusion of likely confusion. This post will attempt to hit the high points. Agile Sports Technologies, Inc. v. Hudl Brewing Company LLC, Oppositions Nos. 91247770, 91248316, and 91248342 (August 20, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

Opposer's Common Law Rights: The Board refused to consider evidence regarding Agile's use of the HUDL mark for clothing and beverageware because Agile did not plead common law rights in its notice of opposition. The applicant objected to this evidence, and Agile did not raise the issue of trial by implied consent.

Dilution Fame: Opposer Agile's software products "are built around digital video playback and provide sports teams with an online mobile platform for video sharing, editing, and review." Agile's HUDL products are nearly universally used by coaches and players at all levels, from professional to high school.

The Board observed that dilution fame is difficult to prove. "An opposer must show that, when the general public encounters the mark 'in almost any context, it associates the term, at least initially, with the mark’s owner," TiVo Brands, 129 USPQ2d at 1103 (quoting Coach Servs., 101 USPQ2d at 1725), and that the mark has "become a ‘household term [with] which almost everyone is familiar.'" Neither Agile's advertising and promotion under its HUDL mark, nor the amount, volume, and geographic extent of its sales, supported a finding of "ubiquitous and sustained exposure of the mark to the general public." Agile's evidence of media coverage was "not the sort of media coverage that supports a finding that a mark is a 'household term.'"

The Board concluded that "[b]ecause Agile cannot satisfy the threshold requirement of fame under Section 43(c), it cannot prevail on its likelihood of dilution claim in each opposition."

Likelihood of Confusion: Agile’s marketing numbers were "nowhere near as large as those that have supported fame findings under Section 2(d) in multiple Federal Circuit and Board cases." The Board found the HUDL standard character mark to be "quite strong" in the high school sports sub-market, but of average strength in other sub-markets. Its strength has not been diminished by third-party uses of HUDL- and HUDDLE-formative marks.

The Board found HUDL and HUDL BREWING COMPANY to be "more similar than dissimilar in all means of comparison."

As to the applicant's beverage ware (class 21), the four third-party registrations submitted by Agile, without any evidence regarding use, were insufficient to show relatedness with Agile's services. Similarly with regard to clothing (class 25), eight third-party registrations without proof of use, did not show relatedness with Agile's services. As to beer (class 32), Agile submitted two third-party registrations and argued that "beer and sports (particularly sports as entertainment) are uniquely intertwined." Not good enough, said the Board.

As to channels of trade, Agile failed to show that its software or service overlap with the normal channels of trade for applicant's goods.

The Board concluded that Opposer Agile failed to prove by a preponderance of the evidence that confusion is likely, and so it dismissed Agile's Section 2(d) claim.

Although the marks are similar, Opposer’s HUDL mark is quite strong in the high school sub-market for the goods and services for which it is registered, and Applicant’s goods may be subject to impulse purchase by some consumers, we give greater weight in our analysis to the stark dissimilarity of the goods and services identified in Opposer’s registration and the goods identified in Applicant’s applications, and the lack of any evidence that the respective goods and services are sold in overlapping channels of trade to overlapping consumers. We conclude that the goods and services are simply too far afield for confusion to be likely.

Read comments and post your comment here.

TTABlogger comment: What do you think will happen next?

Text Copyright John L. Welch 2021.

READ MORE - TTAB Dismisses HUDL Opposition to HUDL BREWING COMPANY: Proof of Dilution Fame Fails and Goods/Services Too Different for Section 2(d)

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TTABlog Test: Three Recent Section 2(d) Appeals - How Did They Come Out?

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods or services. Here are three recent decisions in appeals from Section 2(d) refusals. How do you think these came out? [Answers in first comment].

In re Draion M. Burch DO Inc., Serial No. 888603134 (August 17, 2021) [not precedential] (Opinion by Judge Frances S. Wolfston). [Section 2(d) refusal of MOMENTUM for "Vaginal moisturizers; Personal lubricants" in view of the registered mark MOMENTUM NUTRITION for nutritional supplements  [NUTRITION disclaimed].]

In re Altoz, Inc., Serial No. 88625236 (August 17, 2021) [not precedential] (Opinion by Judge David Mermelstein). [Section 2(d) refusal of TRX for "[z]ero turn riding lawn mowers," in view of the identical mark registered for "[a]ll terrain vehicles and structural parts therefor."]

In re Edward Kwak, Serial No. 88687305 (August 17, 2021) [not precedential] (Opinion by Judge Peter W. Cataldo) [Section 2(d) refusal of KINDSKIN for "Cosmetic skin care services; Health spa services, namely, cosmetic body care services; Medical spa services, namely, minimally and non-invasive cosmetic and body fitness therapies," in view of the registered mark KIND HEALTH GROUP for "Medical spa services, namely, minimally and non-invasive cosmetic and body fitness therapies."]
 

Read comments and post your comment here.

TTABlog comment: How did you do? Any WYHAs here?

Text Copyright John L. Welch 2019.

READ MORE - TTABlog Test: Three Recent Section 2(d) Appeals - How Did They Come Out?

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TTABlog Test: Is "GENRESTORE" Confusable With "RESTOREGEN" for Dietary Supplements?

The USPTO refused registration of the mark GENRESTORE, finding confusion likely with the registered mark RESTOREGEN, both for dietary supplements. Applicant Live Good conceded that the commercial impression of both marks is that the dietary supplements will “restore” something missing in the user’s body or diet, but the marks differ in sound and appearance. Live Good contended that consumers will will exercise heightened care in purchasing products they intend to ingest. How do you think this appeal came out? In re Live Good Inc., Serial No. 88877980 (August 17, 2021) [not precedential] (Opinion by Judge Michael B. Adlin). 

Live Good argued that the word RESTORE is a weak formative but it failed to timely submit its supporting evidence (a dictionary definition and third-party registrations).

As to the goods, since they are identical, the Board must presume that they travel in the same trade channels to the same classes of consumers. Moreover, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Live Good argued that its supplements are a "pre-dopamine regulater" used for "addiction management," but the Board pointed out once again that it is constrained to consider applicant's goods as they are identified in the application ("dietary supplements"), regardless of actual marketing or use.

As to the marks, the Board noted the differences between the marks but concluded that the similarities outweigh the differences. The reversal of word order was insufficient to overcome "the confusion that would arise out of Applicant and Registrant using identical terms for identical goods." The Board pointed out that word marks and transposed versions thereof "are often found to create highly similar meanings and commercial impressions." [E.g., DIET-RITE and RITE DIET, RUST BUSTER AND BUST RUST, SPRINT STEEL RADIAL and RADIAL SPRINT.]

“[T]he reversal in one mark of the essential elements of another mark may serve as a basis for a finding of no likelihood of confusion only if the transposed marks create distinctly different commercial impressions.” In re Nationwide Indus. Indus., 6 USPQ2d at 1884. Here, there is no evidence that the marks create “distinctively different commercial impressions,” nor any other basis for finding that they do.

As noted, Live Good conceded that the commercial impression of both marks is that the products will "restore" something that's missing. "Thus, to at least that important extent the marks create similar commercial impressions."

Finally, the Board observed that the "average" purchaser "normally retains a general rather than a specific impression of trademarks," and the purchaser "may well transpose the elements of [the marks} in his mind."

The Board acknowledged that some purchasers may exercise heightened care in purchasing a product that they will ingest, but the Board found this factor to be outweighed by the identity of the goods, the overlapping trade channels and classes of consumers, and the similarities between the marks.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Some say the "average" American consumer is below average.

Text Copyright John L. Welch 2021.

READ MORE - TTABlog Test: Is "GENRESTORE" Confusable With "RESTOREGEN" for Dietary Supplements?

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Pennsylvania State Legislator Contemplates Statewide Law Against "Distracted Walking"

A recent editorial from TN Online reports:

State Rep. Karen Boback, a Republican whose district includes parts of Luzerne and Lackawanna counties, says she is going to introduce legislation that provides penalties for walkers who are inattentive while crossing a street or highway.

In a memo to legislative colleagues seeking co-sponsors for her bill, Boback said that distracting walking is a “very real and serious issue.”

Boback is most concerned with pedestrians who are inattentive because they are engrossed in conversations on their cellphones or are listening to music or other programming.

“Technology has invaded our life, and, as a result, people have stopped paying attention to their surroundings,” Boback wrote.

More reporting on this is available at Patch. It isn't clear why Boback is choosing to take a stand against "distracted walking." The TN Online writer notes that fewer pedestrians were killed by drivers in 2020 than in 2019. Of those 145 deaths, there is no indication how many of them, if any, were due to pedestrians who were distracted. 

Seeking to do Boback's job of justifying her proposed policy, the article cites a Governors Highway Safety Association Report which purportedly shows that "texting while walking has taken on a key role in pedestrian death in recent years as communication devices have become more mobile, compact, and numerous." The article fails to link to the report, or provide a year for when it was written. It may be citing this 2016 report which speculates that pedestrian distractions are contributing to pedestrian deaths and injuries, although it explicitly states that it "remains unknown" how many pedestrians killed in crashes with distracted drivers were themselves distracted. The report cites instances and studies suggesting that pedestrian distractions are on the rise, but does not draw a link between such distractions and traffic deaths. Indeed, a New York study specifically investigating whether distracted walking contributed to pedestrian fatalities and injuries found "little concrete evidence" of a connection.

The Pennsylvania law appears to be in its early stages, as it does not appear that a statute has been drafted yet. Hopefully Boback will give the bill some more thought and conclude that it isn't worth it. Indeed, her basis for contemplating the bill appears to be anecdotal notions of technology "invading" people's lives. Reports on her proposal have to do the work themselves to dig up evidence supporting measures restricting texting while walking, and these reports often fail to confirm a link between instances of distracted walking and increased pedestrian deaths. As I have noted before, legislators seeking to prevent traffic deaths, and particularly pedestrian deaths, would do better to focus on infrastructure by making cities and towns safer for pedestrians. This includes increasing the number of crosswalks, ensuring adequate lighting, lowering speed limits, and reducing the width of streets, among other measures. Boback herself appears to have been involved in such infrastructure measures in the recent past, which makes it all the more surprising that she is seeking to put the onus on pedestrians--who are most at risk of death or serious injury. A statewide restriction on distracted walking is a blunt instrument that targets the wrong actors and ignores factors that lead to greater risks of pedestrian death and injury.

In addition to being misguided from a public safety perspective, laws against distracted walking criminalize ubiquitous behavior, which promotes selective enforcement. Many people check their phones while walking, including while crossing the street. As a result, police officers tasked with the enforcing the law will use their discretion to determine who to stop and ticket for these violations, meaning that the brunt of any law will likely fall more heavily on people in poorer neighborhoods and racial minorities.

A few cities and municipalities in the United States and other countries have banned various forms of walking while on the phone or while using other electronic devices. All of these measures target a phenomenon that most have likely observed or experienced, but which has little ultimate impact on pedestrian safety--at least when compared with other measures that legislatures can take to reduce traffic deaths and injuries. This story is notable because it suggests that a statewide ban may be possible. One can only hope that the bill, if it is ever written, will fail to gain the support necessary to become law.

READ MORE - Pennsylvania State Legislator Contemplates Statewide Law Against "Distracted Walking"

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En banc court upholds police search, producing passionate dissenting opinions

In a rare en banc ruling, the Second Circuit has held that a police officer legally searched a car passenger because he had reasonable suspicion that he was carrying contraband. The en banc ruling produced passionate dissenting opinions from three Circuit judges, one of whom suggested the search was actually motivated by race.

The case is United States v. Weaver, issued on August 17. It started when the police in their unmarked vehicle drove by a pedestrian who peered into the car window for a few seconds, "longer than one would typically look at a vehicle," one officer testified. The officers then saw the pedestrian, Weaver, tug his pants up as he approached another vehicle and got inside the car. Moments later, that vehicle activated the turn-signal too close to the intersection, and the officers pulled the car over. At that point, the officers grew suspicious of Weaver, who was pushing down on his pelvic area and squirming in the seat left and right. The officer thought Weaver was trying to push something down. They ordered Weaver out of the vehicle and made him stand spread-eagle against it; when Weaver did so, he seemed to be pressing his pelvic area toward the car. The officers conducted the search, finding guns and drugs.

The trial court denied the suppression motion, but the three-judge Court of Appeals panel overturned the trial court and said the search violated the Fourth Amendment because the officers acted on a hunch and lacked reasonable suspicion. Hearing the case en banc, the Court of Appeals rules, 9-3, that the search was legal.

Writing for the majority, Judge Nardini rules that the search was justified and that the suspicious behavior outside the vehicle (after Weaver was ordered to exit the car following the vehicle stop) factors into the determination of whether the officer had reasonable suspicion. This holding is a flash-point for the majority and dissenting judges. While the officer ordered Weaver to stand spread-eagle against the car, that order did not have any Fourth Amendment significance because it did not constitute a physical trespass or invade his privacy. While Weaver argues that a search begins when an officer pursues a course of action that would cause a reasonable person to believe he was being subjected to a search, that is incorrect, the majority says, and the real focus is whether the police committed a physical trespass into a protected area, or whether they violated a reasonable expectation of privacy. That order was not a search.

The search was otherwise reasonable, the majority holds, because by the time the officer searched Weaver, he had three times witnessed him make suspicious movements concentrated around his waist and pelvis: the pants tug on the street, the hip-shifting in the car, and the pelvic movements outside the vehicle. This evasive and furtive behavior is enough to support a Terry-stop.

In dissent, Judge Calabresi writes that search and seizure law has slowly creeped away from legitimate police practices because most published decisions on this issue are close-calls in favor of the police, prompting courts to push the line a little further each time in the officers' favor with each case. In part also because of qualified immunity, and that fact that an unlawful search may not create a financially viable lawsuit to start with, this means that few published cases favor the innocent people who are searched without producing any contraband. So the cases in this area mostly favor the police. An interesting dissent that notes that judges cannot relate to criminal defendants and will naturally identify with the police, figuring that police misconduct happens to other people, but not judges or their family and friends. He is especially critical of Supreme Court doctrine that precludes any consideration of an officer's subjective intent to searching and seizing motorists and other civilians, thereby permitting pretextual stops. Judge Chin notes in dissent that race may have been a factor in the decision to search and seize Weaver, noting that statistics show that Blacks are far more likely to be searched, arrested, and incarcerated, than Whites.

READ MORE - En banc court upholds police search, producing passionate dissenting opinions

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TTABlog Test: Is "THE TAILORY" Generic for Custom Tailoring or Dressmaking?

SY Custom, Inc., who offers services under the name "The Tailory of New York," petitioned for cancellation of a registration (on the Supplemental Register) for the mark THE TAILORY for "custom tailoring and dressmaking," on the ground of genericness. SY Custom relied on a dictionary definition of "tailory," on 32 testimony declarations, and on Internet evidence showing the term "tailory" and similar terms. How do you think this came out? Not a fair question, I know, because you have to look at the evidence first. SY Custom, Inc. v. The Tailory, LLC, Cancellation No. 92070569 (August 12, 2021) [not precedential] (Opinion by Judge Michael B. Adlin).

As usual, the Board found the genus of services at issue to be adequately defined by the recitation of services in the targeted registration. Noting that the word "custom" is superfluous since all tailoring is "custom," the Board found the relevant public to be consumers of these services, whether simple or complicated.

The Board found the single definition of "tailory" ("the work or business of a tailor" and "clothing made by a tailor") to be the most persuasive evidence submitted by Petitioner SY Custom. This was "strong evidence that TAILORY is at best merely and highly descriptive of Applicant's services." The issue, though, was "whether this record establish that the relevant public understands THE TAILORY to refer to custom tailoring services." 

As to SY Custom's 32 declarations, "[t]he quantity of this evidence is impressive. The quality is not." All but one of the declarations were "essentially identical and obviously drafted by someone other than the witness, presumably Petitioner's counsel." They consisted of form, typed paragraphs with blanks or boxes to be filled in by the declarant.  They suffered from many deficiencies and all were unintelligible to some extent. 

The sole remaining declaration was likewise not probative. Rather than make a factual statement, it stated the legal conclusion that three forms of "tailor" are generic. The declarant worked for a single, French company, and he stated only what that company does, not the relevant public. Moreover, the declaration was not specific to the United States.

SY Custom's Internet evidence consisted of truncated results from a Google search for the word "tailor" in various forms. Without appropriate context,  the results had little probative value. SY pointed to respondent's use of "The Tailory" at its own website, but the examples showed the term in initial capitals, used only to identify respondent rather than tailoring services. Respondent did use "tailor," "tailored," and "tailoring" descriptively or generically, but those were not the term in question.

Uses of the term "tailory" in certain video games was of limited value, since it was unclear whether the games reflect the real world use of the term, or even whether these games are played in the United States.

The Board concluded that SY Customs failed to carry its burden of proof.

Given the dictionary definition, we acknowledge that had Petitioner built a different (more extensive and directly relevant) record here, the result could have been different. But on the “mixed” and “ambiguous” record submitted, much of which is illegible, we find that Petitioner has not met its burden of proving that THE TAILORY is generic for tailoring services or the more specifically identified custom tailoring or dressmaking services.

And so, the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: What do you think will happen next? Why would one submit "illegible" evidence?

Text Copyright John L. Welch 2021.

READ MORE - TTABlog Test: Is "THE TAILORY" Generic for Custom Tailoring or Dressmaking?

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TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

The TTAB recently ruled on the appeals from the three Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them, keeping in mind that the Board affirms, by my calculation, some 90% of these refusals. Answer(s) will be found in the first comment.


In re Alpha Link Trading Ltd., Serial No. 88617904 (August 5, 2021) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Mere descriptiveness refusal of BLOOD SUGAR PREMIER for "dietary supplements." Applicant argued that "the notion that blood sugar is first [in importance] is nonsensical" since blood sugar can be "high," "low" or "okay," and the notion that blood sugar is first has no relationship to or in any way describes the goods.]

In re Liebherr-Werk Biberach GmbH, Serial No. 79271097 (August 10, 2021) [not precedential] (Opinion by Judge Jonathan Hudis). [Mere descriptiveness refusal of FIBRE for, inter alia, "cranes of all kinds, in particular, rotating tower cranes, truck-mounted cranes, ship cranes, container cranes, mobile harbour cranes, crawler cranes, stacker cranes" and "support systems for mobile cranes." Although conceding that fibre rope is a specific type of rope that can be used with its goods, applicant contended that "[t]here is at least one degree of separation, one mental leap, required for consumers to take the descriptive meaning attributed to FIBRE when they see FIBRE in connection with machinery and cranes, and there are other reasonable interpretations of FIBRE in connection with machinery and cranes which do not involve taking this mental leap."]

 

In re Advanced Nutritional Supplements, Serial No. 88766676 (August 13, 2021) [not precedential] (Opinion by Judge Jonathan Hudis). [Mere descriptiveness refusal of  QUAD-MASS for "dietary and nutritional supplements." Applicant challenged the Internet articles made of record by the examining attorney as having low probative value, because the Board may consider "these hearsay articles" only for what they say on their face but not for the truth of what is stated in them, and (2) no proof was submitted regarding consumer exposure to the articles.]

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHAs here?

Text Copyright John L. Welch 2021.

READ MORE - TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

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WYHA? TTAB Affirms Section 2(d) Refusal of "BRUNO AND THE HOOLIGANS" in view of "THE HOOLIGANS," Both For Live Musical Entertainment

The Board affirmed a Section 2(d) refusal of the proposed mark BRUNO AND THE HOOLIGANS, finding confusion likely with the registered mark THE HOOLIGANS, both for live performances by a musical group and other related services. Applicant David Ceniceros argued, inter alia, that the marks differ in appearance and sound, and further that the cited mark is used only in connection with "Celtic-themed music." The Board was unmoved. In re David Ceniceros, Serial No. 88636171 (July 29, 2021) [not precedential] (Opinion by Judge Peter W. Cataldo).

Because the involved service are, in part, identical, the Board must presume that those services are offered in the same channels of trade to the same, normal classes of consumers.

Turning to the marks, Ceniceros feebly contended that the cited mark is weak because "there is no evidence that the cited Prior Mark is famous or has acquired secondary meaning ...." The Board pointed out that since the cited registration issued on the Principal Register, it is entitled to the presumption of validity afforded by Section 7(b) of the Act. Moreover, there was no evidence of third party use or registration of similar marks for related products or services. 

Although there was no evidence showing marketplace strength, the owner of the cited mark is not a party to the appeal and does not have an opportunity to provide relevant evidence, nor was Examining Attorney Samuel R. Paquin obligated to provide any such evidence. The Board found that the cited mark is arbitrary and distinctive.

As to the applicant's mark, the leading term "BRUNO AND" suggest an individual who is a member of the "THE HOOLIGANS." Although the lead term differentiates the mark aurally and visually, this distinction "does not significantly diminish the strong similarities in connotation and overall commercial impression engendered by these two marks."

[W]e find that BRUNO AND THE HOOLIGANS is more similar than dissimilar to the mark THE HOOLIGANS in terms of appearance, sound, connotation, and commercial impression. As a result, consumers encountering BRUNO AND THE HOOLIGANS and THE HOOLIGANS could mistakenly believe the former is a variation on the registered mark used to identify a particular musical act, e.g., THE HOOLIGANS featuring or appearing with BRUNO as a subset of Registrant’s services, but nonetheless emanating from a common source.

Ceniceros asserted, without evidentiary support, that the involved services can be "extremely expensive," and therefore consumers will be careful in their purchases and less likely to be confused. The Board noted, however, that there are no restrictions in the application or cited registration as to types of consumers or the price points at which the services are offered. Therefore, "[t]he standard of care is that of the least sophisticated purchaser."

Finally, Ceniceros pointed to the lack of evidence of actual confusion. However, as the Board noted, the lack of evidence of actual confusion carries little weight in an ex parte proceeding, where the cited registrant has no opportunity to submit relevant evidence.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Well, would you have appealed?

Text Copyright John L. Welch 2021.

READ MORE - WYHA? TTAB Affirms Section 2(d) Refusal of "BRUNO AND THE HOOLIGANS" in view of "THE HOOLIGANS," Both For Live Musical Entertainment

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For fans of constitutional "standing" only

The "standing" doctrine is not well known to non-lawyers, but you'll notice if comes up more and more frequently in high-profile cases as organizations and citizens try to overturn governmental policies, turning to the courts to address issues that they could not resolve through the political process. What we find in the standing cases is that not everyone can sue to overturn these policies. You have to satisfied strict standing policies as defined by the courts.

The case is Connecticut Parents Union v. Russell-Tucker, issued on August 11. The plaintiff organization (CTPU) sued the State of Connecticut over the state's standards regarding the racial composition of its interdistrict magnet schools. The organization claims the standards violate the Equal Protection Clause. Under the standards, "all interdistrict magnet schools in Connecticut [must] enroll at least 25% non-Black and non-Hispanic students." CTPU claims this requirement is a "hard racial quota." The organization claims that its efforts to repeal the standards has prevented it from devoting its time and energies to other matters, imposing "opportunity costs" on the organization.

When organizations challenge government policies in court, they always run into a standing argument. They have to show associational or representational standing to sue on behalf of its members. Or they can show standing if the organization is personally affected by the challenged policy. You don't see that very often. 

To show standing, the organization must show "an imminent injury in fact to itself as an organization (rather than its members) that is distinct and palpable" and "that its injury is fairly traceable to the challenged act." Plus it has to show "that a favorable decision would redress its injuries." The Court of Appeals has held that "an organization may suffer the requisite injury when it diverts its resources away from its other current activities" or suffers "some perceptible opportunity cost."

CTPU cannot show standing. The Court of Appeals (Cabranes, Lynch and Marrero [D.J.]) reasons:

Under CTPU’s argument, an organization could establish  standing by claiming to have  been  injured  by  any  law  or regulation touching any issue within the scope of its mission (which the organization itself can define) so long as it expends resources to oppose that law or regulation. For example, under CTPU’s theory of organizational standing, CTPU would be able to successfully plead an injury simply by pointing to any Connecticut law relating to education that it makes a significant effort to oppose. Accordingly, we reject such an expansive concept of organizational injury for standing purposes.

Where, as here, an organization is not directly regulated by a challenged law or regulation, it cannot establish “perceptible impairment”absent an involuntary material burden on its established core activities. In other words, the challenged law or regulation must impose a cost (e.g., in time, money, or danger) that adversely affects one of the activities the organization  regularly  conducted  (prior  to  the  challenged  act)  in pursuit of its organizational mission. For example, we have recognized that a cognizable injury may arise via a burden that is imposed on an organization when there is an increased demand for an organization’s services. But  we  think  that  expenditures  or  other  activities,  if incurred at the organization’s own initiative, cannot support a finding of injury—that is, when the expenditures are not reasonably necessary to continue an established core activity of the organization bringing suit, such expenditures, standing alone, are insufficient to establish an injury in fact for standing purposes. In other words, an organization’s decision to embark on categorically new activities in response to action by a putative defendant will not ordinarily suffice to show an injury for standing purposes, even if the organization’s own clients request the change.

READ MORE - For fans of constitutional "standing" only

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