Recent Decisions by the Trademark Trial and Appeal Board

August 17, 2016 | Insurance Coverage | Intellectual Property

Mark Fails To Satisfy Lawful Use Requirement

The Trademark Trial and Appeal Board (“the Board”) affirmed the refusal to register HERBAL ACCESS on the grounds that the mark was not used in lawful commerce.  The Board started its analysis with the principle that to qualify for federal trademark protection, the mark must be lawfully used in commerce.  The Board reasoned that “…registration will not be refused based on unlawful use in commerce unless either (1) a violation of federal law is indicated by the application record or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation, or (2) when the applicant’s application-relevant activities involve a per se violation of a federal law.”

With respect to HERBAL ACCESS, the Examining Attorney claimed that there was a per se violation of federal law based on the Applicant’s services as identified in the application.  The Examining Attorney relied on both the Applicant’s specimen of use, and website, to conclude that the Applicant’s retail store services included the provision of marijuana.  The Board agreed holding that “[t]he specimen and the webpage, taken together, support the conclusion that Applicant is engaged in the provision of marijuana via the retail services provided at the facility shown in the specimen and advertised in the website.”

Based on the foregoing, the Board found that the Applicant’s services involved the provision of an illegal substance – – marijuana – – in violation of the federal Controlled Substances Act which, despite conflicting individual state laws, prohibits the manufacturing, distributing, dispensing, or possessing of marijuana.  The Board concluded that there was a per se violation of the Controlled Substances Act and, thus, Applicant could not satisfy the lawful use requirement for federal trademark registration.

The Board also rejected the Applicant’s claim that the recitation of services was for “retail store services featuring herbs” and that selling “herbs” is not illegal.  The Board held that “[t]he mere fact that lawful use is also contemplated by the identification does not aid Applicant’s cause,” and that it was proper for the Examining Attorney to look to the Applicant’s specimen of use and website to determine that “herbs,” in this context, encompasses marijuana.

In re Morgan Brown, Serial No. 86/362,968 (TTAB July 14, 2016) (precedential).

Board’s Accelerated Case Resolution Procedure Used To Sustain Opposition

The Trademark Trial and Appeal Board (“the Board”), with the parties’ consent, used the Accelerated Case Resolution Procedure to, by way of a summary bench trial, resolve outstanding factual issues that remained after the parties’ cross motions for summary judgment were denied.  By way of background, the Applicant sought registration of a stylized design featuring the phrase “Black Men Rock” in connection with “[c]aps, hats, jackets, t-shirts,” and “[e]ducation services, namely, providing live and on-line classes, seminars, workshops in the field of personal development.”

The Opposer owns a registered trademark for BLACK GIRLS ROCK! for use in connection with “tee shirts,” “[c]haritable services, namely, organizing volunteer programs for at-risk teenage women of color,” and “[e]ntertainment, namely, a continuing award show  broadcast over television; arranging and conducting of concerts; and entertainment services in the nature of live musical performances.”

In assessing the nature of the goods and services at issue, the Board found that the goods were, in part, identical based on the identification of t-shirts in the goods description for both marks.  In comparing the services, the Board reasoned that “…since Applicant’s recitation of services does not restrict his education services to ‘black men,’ these services could be rendered to ‘black girls.’”  With respect to the marks themselves, the Board first stated that it was the verbal portion of the Applicant’s mark which was likely to indicate the origin of the goods and services and concluded that:

[t]he only differences in the literal portions of the marks BLACK MEN ROCK and BLACK GIRLS ROCK! are the word “MEN” in Applicant’s mark, and the word “GIRLS” and the exclamation point in the Opposer’s mark.  Both marks connote that the subject of the services (“black girls” and “black men”) are “very good, impressive, or exciting.”  Thus, Opposer’s and Applicant’s marks suggest that the programs offered by Opposer and Applicant improve the self-images of the participants.  Both the design in Applicant’s mark, consisting of the silhouette of a man with his arms outstretched in a sign of victory, and the exclamation point in Opposer’s mark emphasize the positive outcome the programs hope to have on the participants.

In addition, the Applicant argued that registration should be allowed because the U.S. Patent and Trademark Office “has allowed different BLACK – – – ROCK format marks.”  But this argument was predicated upon citation to an abandoned trademark application and a cancelled trademark registration and, as result, was rejected by the Board.  The Board also rejected the Applicant’s reference to one instance wherein a third-party used a similar phrase (BLACK WOMEN ROCK) on the internet.

Finally, the Board rejected the Applicant’s argument that there was no actual confusion.  The Board stated that there was nothing in the record to demonstrate that the Applicant had been using the mark long enough for any such confusion to actually occur.

Beverly A. Bond v. Michael Taylor, Opposition No. 91213606 (TTAB June 16, 2016) (precedential).


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