The Trademark Trial and Appeal Board had a typically busy January, with several reported decisions that were atypically interesting (and a few that weren’t). This post takes a look at each.
The More-Interesting Cases
Likelihood of Confusion
In re Thor Tech, Inc., Ser. No. 85667188 (TTAB Jan. 26, 2015)
The Board held that TERRAIN for towable RV trailers was unlikely to be confused with TERRAIN for trucks. The new law is in the section of the opinion dealing with similarity of the goods.
While trucks can pull TV trailers, and there were two third-party registrations that contained both types of goods, the Applicant’s evidence of 50 third-party registrations of similar or identical marks registered by different companies for RV trailers and for trucks – including marks like Silverado, Colorado, Trailblazer, Denali, Avalanche, Stratus, and Tahoe – carried the day.
This is a neat development, and is almost definitely going to be my favorite TTAB decision of 2015. Under Mucky Duck and its progeny, the Board has heretofore been disinclined to consider relative likelihood of overlap. Often, so long as there are several (usually three or more) active, use-based registrations that contain both types of goods, and/or a plausible complementary use case, the goods tend to be considered similar. The new approach in Thor Tech is much better, and more likely to yield an approximation of actual consumer expectations.
Ava Ruha Corp. v. Mother’s Nutritional Ctr., Inc., Canc. No. 92056067 and 92056080 (TTAB Jan. 29, 2015)
Laches is asserted frequently in trademark cases, but rarely carries the day. It did – almost – here!
First, some basic facts – Mother’s Nutritional Center (“Center”) owned a couple of registrations for MOTHER’S pregnancy-focused groceries, and Ava Ruha dba Mother’s Market & Kitchen (“Kitchen”) owned a registration for MOTHER’S MARKET & KITCHEN & Design for grocery and restaurant services.
Center’s burden was to show that (1) there was undue or unreasonable delay by Kitchen in asserting its rights and (2) that Center was prejudiced by the delay.
Center met the first part of its burden by showing that Kitchen had actual notice of Center at least as early as February 5, 1998, thus making the relevant date for the laches inquiry the publication date of Center’s registrations (June 16, 2009). This left a period of delay of three years and two months. While this delay “is not extreme” it was still enough time to support a laches defense, bringing laches almost in line with the three year abandonment presumption. The Board rejected Kitchen’s arguments that Center had become more directly competitive (“progressive encroachment”) through offering of produce and baby food and expanded beyond one store location, and Center’s own opinion on confusion between the marks in unrelated litigation. The Board held that there can be no “progressive encroachment” where “the alleged encroachment is within the scope of the registration at issue.”
On the second point, Board agreed with Center that it would be prejudiced by Kitchen’s delay: it had expanded by 15 stores and spent millions on promotion of its marks since 2009. Since Center had “changed its economic position during the period of [Kitchen’s] delay,” Kitchen’s delay was, as a matter of law, “unreasonable and prejudice [Center.]”
Interestingly, and even though Kitchen had not raised the issue, the Board went on to find that Kitchen had not waived its right to argue that confusion was “inevitable” – an exception to the laches defense. While “inevitable” confusion requires a higher evidentiary standard, this really feels like the Board demonstrating its usual disinclination to completely determining a contested proceeding via summary disposition. The evidence of record only showed one instance of alleged actual confusion – and anonymous at that. The Board really should have simply decided the entire matter, instead of forcing the parties to continue to spend time and money litigating an issue that Kitchen did not even plead or raise in its briefing.
The Less-Interesting Cases
These cases came out as expected, with little of interest doctrinally that would appear to justify their selection for precedential status.
Entravision Comm. Corp. v. Liberman Television LLC, Opp. No. 91188847 (TTAB Jan. 26, 2015)
Entravision held that a party could replace the previously-declared expert marketing witness when that witness changed jobs, and the expert’s new employer would not permit her (or any other employees) to serve as expert witnesses. Since the party calling the expert notified the other side and sought to substitute an alternative quickly – within a couple of weeks of learning of her unavailability – the party met its burden under the five-factor Great Seats test, which helps the Board decide whether the substitution is due to gamesmanship (and thus impermissible) or due to unavoidable circumstance (as here, and thus permissible).
Domond v. 37.37, Inc., Canc. No. 92058841 (TTAB Jan. 2, 2015)
Domond held that the petitioner’s service of 872 requests for admission, 247 document requests, and 26 interrogatories exceeded those “proper and relevant to the issues.” As a result, it granted the respondent’s request for a protective order, and limited the total number of discovery requests to 150.
The Board may not be always be the fastest-moving tribunal (this motion took almost six months to decide), but its willingness to aggressively limit discovery is a huge plus compared to state or federal district courts.
2(a) False Association
In re Nieves & Nieves LLC, Ser. Nos. 85179263 and 85179243 (TTAB Jan. 30, 2015)
The Board rejected applications for ROYAL KATE for various cosmetics, watches, bags, bedding, and clothing, on the predictable grounds that it falsely suggests a connection with Catherine, Duchess of Cambridge, also known as Kate Middleton. The Board brushed aside arguments that the Duchess does not call herself “Royal Kate” and that she is not officially “royal,” and focused instead, quite correctly, on the likely impression on consumers. Since consumers were reasonably likely to view ROYAL KATE as closely the quite-famous basically-royal Kate Middleton, the Board upheld the refusal.