Recent Decisions by the Trademark Trial and Appeal Board

January 8, 2016 | Intellectual Property

Board Dismisses Section 2(a) Challenge to MARATHON MONDAY Application

The Board dismissed an opposition filed by the Boston Athletic Association (“BAA”) to an application filed by Velocity, LLC (“Velocity”) seeking registration of MARATHON MONDAY in connection with “clothing, namely, tops, bottoms, headwear, sweatshirts, sweat pants, jackets, pullovers, caps, hats, socks.”

BAA alleged that the mark should not be registered under Section 2(a) of the Trademark Act because it creates a false suggestion of a connection with BAA.  At the outset, the Board determined that BAA had standing to oppose the application because BAA used both BOSTON MARATHON and MARATHON MONDAY in association with marathon races and, thus, had a reasonable belief that it will be damaged by registration of MARATHON MONDAY.

To establish a claim of false suggestion, the Board stated that BAA must prove: “(1) MARATHON MONDAY is, or is a close approximation of, Opposer’s name or identity, as previously used by it or identified with it; (2) that Applicant’s mark, MARATHON MONDAY, would be recognized as such by purchasers of Applicant’s goods, in that it points uniquely and unmistakably to Opposer; (3) that Opposer is not connected with the goods that are sold or will be sold by Applicant under its MARATHON MONDAY mark; and (4) that Opposer’s name or identity is of sufficient fame or reputation that when used by Applicant as a mark for its goods, a connection with Opposer would be presumed.”

The Board first concluded that MARATHON MONDAY is not a close approximation of BAA’s previously used name or identity as there was “little evidence that MARATHON MONDAY has become known as Opposer’s persona, or as a synonym for Boston Marathon.”  The Board also concluded that MARATHON MONDAY does not point uniquely and unmistakably to BAA.  In that connection, the Board cited to other evidence which demonstrates that entities other than BAA use MARATHON MONDAY to refer to marathons.

Accordingly, the Board dismissed BAA’s opposition and stated that registration to Velocity will issue in due course.

Boston Athletic Association v. Velocity, LLC, Opposition No. 91202562 (October 26, 2015) (precedential)

Board Affirms Refusal to Register THE KITCHEN Under Section 2(d)

After careful consideration of certain of the du Pont factors, the Board affirmed the refusal to register the application filed by The Kitchen Cafe, LLC (“Applicant”) seeking registration of THE KITCHEN based upon an existing registration for DA KITCHEN.

Applicant sought registration of THE KITCHEN in International Class 43 for “restaurant services.”  The Examining Attorney, however, refused registration of THE KITCHEN based on a likelihood of confusion with an existing registration for DA KITCHEN in International Class 43 for “restaurant services; carry out restaurant services; catering services.”

On appeal, the Board affirmed the refusal determining that because the services at issue were identical in part, there was a presumption that the services traveled in the same trade channels to the same classes of purchasers.  The Board also noted that neither the application, nor the cited registration, contained a limitation on the trade channels.

With respect to the comparison of the marks, the Board concluded that “the similarities in meaning and commercial impression outweigh differences in sight and sound.”  In reaching this conclusion, the Board determined that there was no need to consider other meanings of the word DA as the obvious meaning of DA in the context of the services is  clear – – it gives “the clear commercial impression of ‘the kitchen.’”

The Board also rejected Applicant’s argument that the cited registration is weak and, thus, only entitled to a limited scope of protection.  Specifically, the Board concluded that “there is no evidence of commercial weakness of the mark.”

In re The Kitchen Cafe, LLC, Serial No. 85/969,508 (T.T.A.B. November 17, 2015).

Board Rejects Attempt to Register SUGARLANDS DISTILLING COMPANY

Sugarlands Distilling Company, LLC (“Applicant”) attempted to secure a trademark registration for SUGARLANDS DISTILLING COMPANY in connection with “craft moonshine beverages.”  The Examining Attorney, however, refused registration on the basis that the mark was primarily geographically descriptive and, separately, because of a likelihood of confusion with the registered mark SUGARLAND CELLARS.

On appeal, the Board reversed the refusal to register SUGARLANDS DISTILLING COMPANY on the basis that it was primarily geographically descriptive, but, affirmed the refusal based on a likelihood of confusion with the registered mark.

With respect to the geographic descriptiveness refusal, the Board concluded that “the record did not support a finding that [Sugarlands] is a generally known geographic region.”  The record consisted of one Wikipedia entry which identified “The Sugarlands” as a valley in the north-central Great Smokey Mountains.  The Board concluded that this evidence was insufficient to demonstrate that “consumers have been exposed to this term and are aware of its geographic significance.”

At the same time, the Board affirmed the refusal based on a likelihood of confusion with SUGARLAND CELLARS.  The Board concluded that “Applicant’s goods ‘craft moonshine beverages’ are sufficiently related to Registrant’s ‘wine,’ that when used under a very similar mark, confusion is likely.”  To support this conclusion, the Board cited examples of wineries that also distill and sell spirits.

Next, the Board concluded that the: (i) trade channels are similar and would include liquor stores, bars and restaurants, and the alcoholic beverages sections of retail outlets; and (ii) relevant class of consumers is similar and includes connoisseurs as well as ordinary consumers of alcoholic beverages.

Finally, in analyzing the similarity between the marks, the Board held that the similarities between SUGARLANDS DISTILLING COMPANY and SUGARLAND CELLARS outweigh any differences.  Specifically, the Board observed that “[t]he marks begin with the common element which adds to the prominence of that term in both marks…[and that]…the additional wording is merely descriptive and lacks source-identifying significance.”

In re Sugarlands Distilling Company, LLC, Serial No. 85/818,277 (T.T.A.B. November 20, 2015).

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