05/12/16

IN THIS ISSUE
ALPHA AND OMEGA FIGHT OVER FAME
DESCRIPTIVENESS CHEWS UP GUMMY BITES

ALPHA AND OMEGA FIGHT OVER FAME

Timothy J. Lockhart

The U.S. Trademark Trial and Appeal Board (TTAB) has held that to prevail on a claim of dilution by blurring in an inter partes proceeding before the TTAB, a plaintiff must show that its allegedly diluted mark became famous before “any established, continuous use” of the defendant’s mark as a trademark or trade name.  Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289 (TTAB 2016) [precedential].  The TTAB rejected the idea that showing fame prior to the defendant’s use of its mark for the goods or services identified in a challenged application or registration would be sufficient.

The Omega Watch Company opposed the applications of national service fraternity Alpha Phi Omega (Fraternity) to register the mark AΦΩ (the Greek letters that form the Fraternity’s name) for use with clothing and the Fraternity’s crest (Crest Mark; shown below) for use with jewelry.  On the basis of five registrations for marks including the Greek letter Ω and/or the word OMEGA (collectively, Omega Marks), Omega opposed each application on the grounds of likelihood of confusion and dilution by blurring.

Although it noted that Omega had failed to plead when its marks allegedly became famous—an essential element of a dilution claim—the TTAB nevertheless considered Fraternity’s motion for summary judgment “in the interest of efficiency.”  The TTAB said that because of the numerous differences between the Crest Mark and the Omega Marks, there was no likelihood of confusion.  (The Crest Mark includes the words “Alpha Phi Omega,” but in letters so small that the TTAB said “the design elements constitute the dominant element of the mark.”)  Likewise, the TTAB held that the Crest Mark is so different from the Omega Marks that it could not dilute any of those marks.  Accordingly, the TTAB granted the Fraternity’s motion and dismissed the opposition to the Crest Mark application. 

However, finding that there were genuine issues of material fact as to the similarities between the mark AΦΩ and the Omega Marks and between the parties’ respective goods, the TTAB denied the Fraternity’s motion for summary judgment on the likelihood-of-confusion claim regarding the mark AΦΩ.  Then the TTAB turned to the dilution claim regarding that mark.  The TTAB rejected Omega’s argument that even though the Fraternity’s application for the mark AΦΩ was use-based, Omega needed to show only that the OMEGA Marks were famous prior to the filing of the application, not that they were famous prior to the Fraternity’s first use of the mark.

The TTAB said it had previously drawn a distinction between dilution claims involving use-based applications and those involving intent to use (ITU).  Pointing to its decision in Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001), the TTAB said that when an ITU application was the subject of an opposition, “the opposer must plead that its mark became famous prior to the filing date (i.e., date of constructive use) of the opposed intent-to-use application.”

The TTAB said Omega apparently believed that Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012), which involved use-based applications, reflected a Federal Circuit decision to apply the Toro rationale to such applications as well as to ITU applications.  But the TTAB said that when the Coach Services court cited Toro, the court did so within the context of comparing the standards for showing fame for dilution purposes to those for showing a likelihood of confusion.  The TTAB also said that despite some minor differences in wording, the Trademark Dilution Revision Act of 2006 did not change the requirement in the 1996 Federal Trademark Dilution Act that a mark allegedly diluted by blurring must have become famous prior to the first use (or, for ITU applications, the first constructive use) of the challenged mark.

After explaining the correct standards for finding dilution by blurring, the TTAB found that with regard to the mark AΦΩ, genuine disputes of material fact existed as to (1) whether the mark was sufficiently similar to the OMEGA Marks to create an association with those marks and (2) when the Fraternity first used its mark AΦΩ, whether as a trade name for its fraternal organization or as a trademark for any goods.  Accordingly, the TTAB denied the Fraternity’s motion for summary judgment on Omega’s dilution claim with respect to the mark AΦΩ and gave Omega 20 days to amend its notice of opposition by properly pleading a claim of dilution.

Omega filed its amending pleading on April 20, alleging that its mark OMEGA was famous prior to established, continuous use of the mark AΦΩ.  Because the Fraternity claims to have been formed in 1925, it will be interesting to see whether Omega can show that its OMEGA mark was already famous over 90 years ago.

 

      

DESCRIPTIVENESS CHEWS UP GUMMY BITES

Timothy J. Lockhart

Underscoring the pitfalls of choosing a trademark that describes the goods it brands, the U.S. Trademark Trial and Appeal Board (TTAB) ruled that the mark GUMMY BITES is deceptively misdescriptive of dog treats and therefore unregisterable. In re Green Bark Gummies, Inc., Serial No. 86283461 (April 8, 2016) [not precedential].

The applicant, Green Bark Gummies, Inc., filed an intent-to-use application to register GUMMY BITES on the Principal Register of the U.S. Patent and Trademark Office (PTO). The PTO Examining Attorney refused the application on the grounds that the mark describes dog treats.  The Examining Attorney relied on the definition of GUMMY as something “made of, containing, or covered with gum or a sticky or chewy substance” and of BITES as a “snack.”

The Examining Attorney asserted that when GUMMY and BITES were combined, “the resulting mark immediately conveyed that the goods are a dog snack that is made of, containing, or covered with gum or a sticky or chewy substance.”  In addition, the Examining Attorney pointed to third-party registrations in which BITES was disclaimed as descriptive or in which BITES marks were registered on the PTO’s Supplemental Register, where wholly descriptive marks must be registered.

The applicant submitted arguments against the refusal, but the Examining Attorney rejected the applicant’s arguments and confirmed the refusal.  The applicant probably could have registered GUMMY BITES by putting the mark into use and amending its application to be use-based and designated for the Supplemental Register.  Although a registration on the Supplemental Register is not as valuable as one on the Principal Register, a mark registered on the Supplemental Register can often be “moved” to the Principal Register after five years by submitting a new application for the mark.

However, the GUMMY BITES applicant chose a different approach.  The applicant filed a request for reconsideration in which it amended the identification of goods to “dog treats, namely, treats that are a soft solid without having the attribute of being a gum or a sticky or chewy substance that require mild to moderate forces to masticate a few times before breaking apart, being ground down and being swallowed.”  Also, the applicant asserted that its GUMMY BITES product would “not be a traditional gummy product.”

Those changes led the Examining Attorney to refuse the amended application on the rarely invoked grounds that the mark was deceptively misdescriptive of the goods under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).  In addition, on the basis of evidence that described the applicant’s dog treats as “gummy,” the Examining Attorney continued the refusal for descriptiveness.

At that point—worse off than when confronted only by the initial descriptiveness refusal—the applicant attempted to amend its application to disclaim both the words GUMMY and BITES.  The Examining Attorney responded by confirming the new refusals and rejecting the proposed disclaimer on the grounds that an entire mark may not be disclaimed as descriptive.  (Note, however, that all of the wording in a mark containing both words and a design element—which was not the case with GUMMY BITES—may be disclaimed.)

The applicant appealed the refusals to the TTAB. Before discussing the evidence of record the TTAB laid out the test for deceptive misdescriptiveness:  (1) does the matter sought to be registered misdescribe the goods or services; and (2) are consumers likely to believe the misrepresentation. In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015) (internal citations and footnote omitted).

The TTAB then reviewed the Examining Attorney’s evidence that both GUMMY and BITES are often used to describe pet treats.  The TTAB noted the applicant itself had disclaimed the word GUMMIES as descriptive when successfully prosecuting its application for GREEN BARK GUMMIES for dog treats (shown below on product packaging).

The TTAB said that in view of such evidence, the applicant could not “avoid a finding of deceptive misdescriptiveness by excluding from its identification the very characteristic that its mark is misdescribing.”  The TTAB also said that “consumers who see the mark GUMMY BITES for dog treats are likely to believe that the dog treats are gummy or chewy.”  For those reasons the TTAB found the mark to be deceptively misdescriptive and upheld the refusal to register it.

 

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