Intellectual Property News and Reports

Omaha Steaks International, Inc. (“Omaha Steaks”) appeals a decision of the Trademark Trial and Appeal Board (“Board”) dismissing its opposition (No. 91213527) to Greater Omaha Packing Co., Inc.’s (“GOP”) application to register the mark “GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF” (“Opposed Mark”) for meat, including boxed beef primal cuts. The Board concluded that there is no likelihood of confusion between the Opposed Mark and Omaha Steaks’ previously registered trademarks. We conclude that the Board made certain errors while analyzing the fame of the registered mark, third-party usage, and similarity of the marks. Accordingly, we vacate and remand.

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Converse, Inc., appeals from a final determination of the International Trade Commission (“ITC”) that held invalid Converse’s trademark in the midsole design of its Chuck Taylor All Star shoes, U.S. Trademark Registration No. 4,398,753 (“the ’753 trademark”). Because it found the registered mark invalid and that Converse could not establish the existence of common-law trademark rights, the ITC determined there was no violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (2012), by the importation of the accused products. The ITC nonetheless addressed infringement, finding that various accused products would have infringed Converse’s mark if valid.

We hold that the ITC erred in applying the wrong standard in aspects of both its invalidity and infringement determinations. We vacate and remand for further proceedings.

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Appellant Real Foods Pty Ltd. (“Real Foods”) sought registration of two marks: “CORN THINS,” for “crispbread slices predominantly of corn, namely popped corn cakes”; and “RICE THINS,” for “crispbread slices primarily made of rice, namely rice cakes.” J.A. 279 (emphasis omitted). Cross-Appellant Frito-Lay North America, Inc. (“Frito-Lay”) opposed the registrations, arguing that the proposed marks should be refused as either generic or descriptive without having acquired distinctiveness. See J.A. 241–43 (opposition to RICE THINS), 254–56 (opposition to CORN THINS). The U.S. Patent and Trademark Office’s (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) refused registration of Real Foods’ applied-for marks in an opinion finding the marks “are merely descriptive and have not acquired distinctiveness,” FritoLay N. Am., Inc. v. Real Foods Pty Ltd., Nos. 91212680, 91213587, 2017 WL 914086, at *21 (T.T.A.B. Feb. 21, 2017), but also dismissing Frito-Lay’s “genericness claim,” id. at *14.

Both parties appeal. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B) (2012). We affirm-in-part, vacate-in-part, and remand.

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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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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 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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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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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 (“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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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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