Trademark Trial and Appeal Board decisions, week by week. Precedential decisions come first; the notable ones get full analysis, and every decision gets a summary.
Cielo e Terra, S.p.A. v. Hoteles y Viñedos del Valle de Guadalupe S.A. de C.V. · Opposition No. 91287216 · Opposition sustained
Applicants who argue that a cited mark is weak must show third parties using the shared term itself, not its English meaning. And a handful of web captures will not prove a crowded field in a large national market, because the Board ties the number of uses needed to the number of sellers in that market.
Precedential. Under the sixth DuPont factor, third-party registrations of SKY marks were not probative of the conceptual weakness of CIELO, because they lack the element common to both parties' marks. The Board left the door open on a different record (slip op. at 27–28 & n.29).
The Board offers counting guidance: there is no bright-line number of third-party uses, the number needed depends on the size of the market, and five website captures were not enough in the US wine market (at 37–38).
Cross-border parties: an Italian opposer with US sales since 1978 against a Mexican applicant whose geographic wording was disclaimed (at 3–5, 41–42).
It confirms that an examining attorney's withdrawal of a §2(d) refusal carries no weight in an opposition (at 8–9 n.11).
In re Ralph's Famous Italian Ices Franchise Corp. · Refusal affirmed in part (all classes, ornamental and not shown to have acquired distinctiveness); Class 35 specimen refusal reversed
The Board measures a pattern's distinctiveness separately for every class in an application, and a handful of third-party users can be enough to defeat a basic design. Once many others use the same ornament, sales, advertising spend and years of use do little, and calling those users infringers does not help without enforcement. Filers of color, stripe and pattern marks should expect the examining attorney's image search to decide the case.
In a precedential decision, the TTAB affirmed refusals of WEMBY for athletic apparel because the record showed WEMBY was Victor Wembanyama’s nickname, pointed uniquely and unmistakably to him, and would make buyers presume a connection. The same record also made written consent necessary under Section 2(c).
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Olsman, MacKenzie, Peacock & Wallace, P.C. v. Emily Grace Thomas · Opposition · Opposition No. 91272167 · Non-ownership (application void, §1(a)); fraud and §2(d) not reached
A mark that an employee develops and first uses within the scope of employment is presumed to belong to the employer, even if the employee thought of it before being hired. Conceiving a mark and registering a domain name create no rights of their own.
Cielo e Terra, S.p.A. v. Hoteles y Viñedos del Valle de Guadalupe S.A. de C.V. · Opposition · Opposition No. 91287216 · Likelihood of confusion, §2(d); DuPont factor 6 (third-party marks, foreign equivalents)
Third-party marks that share only an English translation of the parties' common term, not the term itself, do not show that the term is conceptually weak. And no fixed number of third-party uses makes a crowded field: how many are enough depends on the size of the market for the goods.
Opposition · Opposition No. 91254798 · Mere descriptiveness, §2(e)(1); lack of bona fide intent to use, §66(a)
Conceding in a trial brief that there is no intent for some listed services forfeits them, and deleting them then comes too late; REALITY ENGINE opposition sustained.
Opposition sustained (§2(e)(1), all services; lack of bona fide intent, in part)Read the brief
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