Category Archives Trademark Trial and Appeal Board

The Federal Circuit has affirmed a Trademark Trial and Appeal Board (TTAB) decision refusing to grant a trademark to Real Foods Pty Ltd. for “Corn Thins” and “Rice Thins,” finding the terms to be “merely descriptive.” Real Foods Pty Ltd. v. Frito-Lay N. Am. Inc., Nos. 17-1959, 17-2009 (Fed. Cir., entered October 4, 2018). Frito-Lay North America opposed Real Foods’ trademark application, but Real Foods argued both that the terms were not descriptive and that even if they were descriptive, they had acquired distinctiveness. The Federal Circuit found significant evidence to support TTAB’s conclusion that the terms are descriptive, noting that the first part of the terms is the primary ingredient and the second is the shape. “The composite marks are ‘merely descriptive’ because they ‘immediately convey[] knowledge of a quality or characteristic of the product[s],’ specifically the products’ main ingredients and thickness,” the court held. The court also found…

The Trademark Trial and Appeal Board (TTAB) has dismissed The Wonderful Co.'s opposition to Comrade Brewing Co.'s application to register "Superpower" as a mark used in relation to beer. Wonderful Co. v. Comrade Brewing Co., No. 91230877 (T.T.A.B., entered August 2, 2018). The Wonderful Co. uses its mark "Antioxidant Superpower" to describe its POM pomegranate juice, which it alleged will be sold in the same aisle as beer in some stores. TTAB was unpersuaded, finding that consumers are not likely to view fruit juices and beer as produced by a common source under one brand's mark. TTAB also found the term "antioxidant superpower" to be "somewhat suggestive of the identified goods, and thus conceptually is somewhat weaker than an arbitrary mark."

A consumer has filed a putative class action alleging Trader Joe's Co. falsely advertises its Sour Gummies by failing to disclose that the product contains d-l-malic acid. Wong v. Trader Joe's Co., No. 18-0869 (S.D. Cal., removed to federal court May 4, 2018). The plaintiff asserts that under California law, "any artificial flavor must be identified on both the front-of-package label and the product ingredient list. Defendants fail to do either." According to the complaint, "Trader Joe's maintains a pervasive national marketing campaign guaranteeing that all its house-brand products are only naturally flavored," including the statement "when you see our name on a label, you can be assured that the product contains: YES quality ingredients NO artificial flavors." Alleging unfair competition, false advertising and negligent misrepresentation, the plaintiff seeks class certification, damages, corrective advertising and attorney's fees. In addition, Trader Joe's has filed a notice of opposition to an application for the…

The French agency responsible for protecting the country’s agricultural appellations of origin has filed a notice of opposition to a California winery’s application for the trademark “Beardeaux,” arguing that the use would dilute the protected term “Bordeaux” used to designate wines from southwestern France. Institut National de l’Origine et de la Qualité v. Bear River Winery LLC, No. 91240350 (T.T.A.B., notice of opposition filed March 29, 2018). The notice asserts that wines from the Bordeaux region of France are entitled to use an “appellation d’origine contrôlée (AOC)” that “delimits the specific areas to which the appellation pertains, but also specifies the agricultural products from which the product may be derived and production methods and techniques that may be used to make the product.” Further, it argues that U.S. law recognizes the Bordeaux AOC “as a foreign nongeneric name of geographic significance which is also a distinctive designation of a specific…

The Trademark Trial and Appeal Board (TTAB) has ruled that Pan American Properties Corp. cannot register “White Sangriiia” as a trademark because both terms, as well as their combination, are “merely descriptive.” In re Pan American Props., Corp., No. 86556214 (T.T.A.B., entered February 26, 2018). TTAB also rejected the company’s argument that the term was “fanciful or suggestive.” Although Pan American Properties referred to its previous registration of the “fanciful” term “Gasolina Sangriiia” for prepared cocktails in its appeal, TTAB noted that neither the company nor the examining attorney included the registration in the application record before the appeal was filed, and TTAB refused to take judicial notice of “registrations residing in the Office.” Finally, TTAB found insufficient evidence to prove the term “sangriiia” had acquired distinctiveness; even if Pan American Properties had provided enough evidence to prove five years of sales, the board held, that period is not long enough…

The Trademark Trial and Appeal Board has denied Hy-Vee Inc.'s application to register the “Peaceful Piranha” mark for a line of snack foods, deeming the mark to be too similar to the mark for an existing line of “Piraña” snack foods. In re Hy-Vee, Inc., No., 87120774 (T.T.A.B., entered February 6, 2018). Finding “piranha” to be the dominant portion of the mark, the board found the term likely to confuse consumers unfamiliar with Spanish because they may read the pronunciation of the terms as identical. Further, consumers who understand Spanish may be confused because they would understand the cognate terms as a reference to the fish. Although Hy-Vee argued that “peaceful” and “piranha” are counterintuitive, creating an entirely different connotation with no association to “vicious” piranha fish, the board found the term “peaceful” was not likely to distinguish the marks because “it would merely indicate an atypical piranha, possibly for use…

American Beverage Corp., which sells alcohol cocktails under the “Darty” mark, has filed a notice of opposition to Boston Beer Co.’s application for a “Day Party” mark for beer. Am. Bev. Corp. v. Boston Beer Corp., No. 91239170 (T.T.A.B., notice filed January 29, 2018). The notice asserts that the "colloquial meaning of DARTY is 'Day Party.'" American Beverage claims priority in filing and first use date, and the notice alleges that the goods are so similar as to cause consumer confusion about their source.

Iceland has filed a notice of opposition to a trademark application filed by an Ecuadorean company for use of the mark “I ' CELAND” for vodka, arguing that consumers will be confused as to the origin of the product, which features a label with images of snow-capped mountains and the term “Iceland Vodka.” Republic of Iceland, Ministry for Foreign Affairs v. Cosmica Cia. Ltda., No. 91239021 (T.T.A.B., notice filed January 17, 2018). Iceland’s Ministry for Foreign Affairs coordinates the exports of Icelandic businesses and alleges it is responsible for protecting the “Iceland” mark, which has been used for various Icelandic alcohol products, including vodka. Iceland registered its mark with the U.S. Patent and Trade Office in 2009.

A winery has filed a notice of opposition against BuzzFeed Inc.'s trademark application for Wordy Wine, a wine brand allowing purchases to customize the label. Kalaris v. BuzzFeed Inc., No. 91238653 (T.T.A.B., filed December 29, 2017). Although the words “Wordy Wine” do not appear on the purchaser’s custom label, Axios Napa Valley Wines alleges the term is nearly identical to the mark for its line of “Worthy” wines.

Sazerac Brands has filed a notice of opposition to ROSC Global's application to trademark “St. Paddy’s Brigade” for agave liquor, arguing that consumers are likely to confuse the mark with Sazerac’s “Paddy” line of Irish whiskies. Sazerac Brands LLC v. ROSC Global, LLC, No. 91237863 (T.T.A.B., filed November 16, 2017). ROSC Global applied for the mark in May 2017, while Sazerac asserts the company and its predecessors-in-interest have used the “Paddy” marks for alcoholic beverages since 1927.

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