In re: Detroit Athletic Co.

Detroit Athletic Co. (“DACo”) appeals from a decision of the Trademark Trial and Appeal Board affirming the Patent and Trademark Office’s refusal to register DETROIT ATHLETIC CO. for sports apparel retail services. In that decision, the Board concluded that DACo’s mark is likely to be confused with the third-party mark DETROIT ATHLETIC CLUB, registered for clothing goods. See In re Detroit Athletic Co., No. 86625093, 2017 WL 2876815 (T.T.A.B. June 2, 2017). Because the Board’s conclusion is predicated on factual findings supported by substantial evidence, we affirm.

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Zheng Cai v. Diamond Hong, Inc.

Appellant Zheng Cai DBA Tai Chi Green Tea Inc. (“Mr. Cai”) appeals an opinion of the U.S. Patent and Trademark Office’s (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) cancelling registration of his mark “WU DANG TAI CHI GREEN TEA” due to a likelihood of confusion with Appellee Diamond Hong, Inc.’s (“Diamond Hong”) registered mark, “TAI CHI,” pursuant to 15 U.S.C. § 1052(d) (2012). See Diamond Hong, Inc. v. Zheng Cai, Cancellation No. 92062714, 2018 WL 916315, at *5–8 (T.T.A.B. Feb. 14, 2018); see also 15 U.S.C. § 1052(d) (providing a mark may not be placed on the principal register if it so resembles a mark already registered “as to be likely . . . to cause confusion”). We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B) (2012). We affirm.

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Royal Crown Co., Inc.. v. The Coca-Cola Co.

Royal Crown Company, Inc. and Dr Pepper/Seven Up, Inc. (together, “Royal Crown”) appeal a decision of the Trademark Trial and Appeal Board (“the Board”) dismissing Royal Crown’s opposition to the registration of The Coca Cola Company’s (“TCCC”) trademarks for various soft drinks and sports drinks including the term ZERO. Royal Crown Co. v. Coca-Cola Co. (TTAB Decision), Opposition No. 91178927 (Parent Case), 2016 TTAB LEXIS 234 (T.T.A.B. May 23, 2016). Because we conclude that the Board erred in its legal framing of the question of the claimed genericness of TCCC’s marks, and failed to determine whether, if not generic, the marks were at least highly descriptive, we vacate the Board’s determination and remand for further proceedings.

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IN RE: ERIK BRUNETTI

Erik Brunetti appeals from the decision of the Trademark Trial and Appeal Board (“Board”) affirming the examining attorney’s refusal to register the mark FUCT because it comprises immoral or scandalous matter under 15 U.S.C. § 1052(a) (“§ 2(a)”). We hold substantial evidence supports the Board’s findings and it did not err concluding the mark comprises immoral or scandalous matter. We conclude, however, that § 2(a)’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech. We therefore reverse the Board’s holding that Mr. Brunetti’s mark is unregistrable.

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In re: I.AM.Symbolic, LLC

i.am.symbolic, llc (“Symbolic”) appeals from decisions of the U.S. Patent and Trademark Office (“the PTO”) Trademark Trial and Appeal Board (“the Board”) affirming the examining attorney’s refusal to register the mark I AM (“the mark”) in standard characters for goods in International Classes (“classes”) 3, 9, and 14 on the ground of a likelihood of confusion with registered marks. See In re i.am.symbolic, llc, 116 U.S.P.Q.2d 1406 (T.T.A.B. Oct. 7, 2015) (Symbolic I); In re i.am.symbolic, llc, No. 85044495, 2015 WL 6746544 (Oct. 7, 2015) (Symbolic II); In re i.am.symbolic, llc, No. 85044496, 2015 WL 6746545 (Oct. 7, 2015) (Symbolic III). Because the Board did not err in its likelihood of confusion conclusion, we affirm.

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Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC

Joseph Phelps Vineyards, LLC (“Vineyards”) has produced and sold wines bearing the trademark INSIGNIA since 1978. In 2012, Fairmont Holdings, LLC (“Fairmont”) received federal registration for the mark ALEC BRADLEY STAR INSIGNIA for cigars and cigar products. On Vineyards’ petition for cancellation, the Trademark Trial and Appeal Board (“Board” or “TTAB”) denied the petition,1 stating the finding that:

while it appears that Petitioner’s INSIGNIA branded wine has met with success in the marketplace, we are not persuaded on this record that Petitioner’s mark is a famous mark.

TTAB Op. at 8.

The TTAB found that Vineyards’ INSIGNIA mark is not a “famous” mark and gave this factor no weight. The TTAB erred in its legal analysis, in analyzing the “fame” of INSIGNIA wine as an all-or-nothing factor, and discounting it entirely in reaching the conclusion of no likelihood of confusion as to source, contrary to law and precedent. As a result of this error, the Board did not properly apply the totality of the circumstances standard, which requires considering all the relevant factors on a scale appropriate to their merits. We vacate the Board’s decision and remand for redetermination of the merits of the cancellation petition.

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JobDiva, Inc.

In this trademark case, we must decide whether JobDiva, Inc. used its marks in connection with personnel placement and recruitment services, or whether the Trademark Trial and Appeal Board correctly held that JobDiva failed to do so because it used its marks on software offerings, without more. The Board required JobDiva to prove that it used its marks on more than just software because its software sales alone could not, in the Board’s view, constitute personnel and recruitment services. We disagree with the Board’s approach. The proper question is whether JobDiva, through its software, performed personnel placement and recruitment services and whether consumers would associate JobDiva’s registered marks with personnel placement and recruitment services, regardless of whether the steps of the service were performed by software. Because the Board must visit that question in the first instance, we vacate its decision and remand for further consideration.

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In re: Rearden, LLC

The defendants in the underlying case, Rearden LLC, Rearden MOVA LLC, MO2, LLC, and MOVA, LLC, petition for a writ of mandamus to challenge the district court’s order compelling them to produce allegedly privileged documents. We conclude we have jurisdiction to decide their petition. We further conclude that petitioners’ arguments fail to carry the high burden required on mandamus to overturn the district court’s discovery determination. We therefore deny their petition.

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Christian Faith Fellowship Church v. Adidas AG

Christian Faith Fellowship Church appeals a final judgment of the Trademark Trial and Appeal Board that, in response to a petition filed by adidas AG, cancelled its trademarks for failing to use the marks in commerce before registering them. The Board held that the Church’s documented sale of two marked hats to an outof-state resident were de minimis and therefore did not constitute use of the marks in commerce under the Lanham Act. Because the Lanham Act defines commerce as all activity regulable by Congress, and because the Church’s sale to an out-of-state resident fell within Congress’s power to regulate under the Commerce Clause, we reverse the Board’s cancellation of the Church’s marks on this basis and remand for further proceedings.

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FIU v. FNU

At issue in this trademark case is whether Florida National University, Inc. (“FNU”), infringed the trademark rights of Florida International University (“FIU”) in its registered trademark “FLORIDA INTERNATIONAL UNVERSITY” or committed unfair competition when FNU changed its name from “Florida National College” to “Florida National University.” After thorough review and with the benefit of oral argument, we affirm the district court’s entry of final judgment in favor of FNU on all claims.

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