Mini Melts, Inc. v. Reckitt Benckiser LLC (Opposition No. 91173963)

The Trademark Trial and Appeal Board (Board or TTAB) finally concluded a nine-year trademark battle between opposer Mini Melts, Inc. (MMI) and applicant Reckitt Benckiser LLC (RB), refusing RB’s mark on the basis of descriptiveness.

RB sought to register the marks MINIMELTS and MINI-MELTS, in standard characters, for “pharmaceutical preparations for use as an expectorant” in International Class 5. MMI opposed, alleging likelihood of confusion under Section 2(d) of the Trademark Act in light of MMI’s previously registered MINI MELTS mark for “ice cream.” As a secondary argument, MMI alleged that RB’s marks were merely descriptive under Section 2(e)(1) of the Trademark Act. RB countered, denying the allegations of likely confusion, and affirmatively alleging that its marks had acquired distinctiveness under Lanham Act Section 2(f).

The original notice of opposition by MMI was filed over nine years ago, with intervening district court proceedings resulting in suspension of the opposition for over four years. In the district court, RB was successful in overcoming MMI’s challenge to RB’s use of the marks “Children’s Mucinex Mini-Melts” as likely to cause confusion. As a first step in addressing the likelihood of confusion and descriptiveness issues presented in the opposition, the TTAB examined whether the proceedings in the district court precluded its independent assessment of those issues in the opposition context. The Board concluded that it was not precluded because the facts in the opposition were sufficiently different. In particular, the opposition related to the registrability of the terms MINIMELTS and MINI-MELTS; the district court focused on the alleged likelihood of confusion occasioned by the use by RB of the term “Mini-Melts” in conjunction with the trademark MUCINEX. Thus, the Board concluded that the proceedings differed enough that neither issue preclusion nor estoppel precluded an independent assessment of the issues raised in the opposition.

Turning to the issue of likelihood of confusion, the TTAB centered its analysis on the factors delineated in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973). On the first factor – similarity between the marks – the TTAB found “virtual identity” between MMI’s MINI MELTS mark and RB’s two marks. The Board found that the lack of a space between MINI and MELTS in RB’s first mark and the hyphen between those words in RB’s second mark were both insufficient to distinguish them from MMI’s mark. The Board also noted that the marks were phonetically identical, and conveyed identical meanings. RB’s argument that design or house marks would be included with the marks sought to be registered when the marks were ultimately used on packaging was irrelevant, because design or house marks were not features of the marks shown in the opposed applications. The strong similarity between the marks tipped this factor in favor of MMI.

The TTAB found that the second factor – similarity or dissimilarity of the goods – weighed in favor of RB. While a lesser degree of similarity between the goods is needed to find likelihood of confusion when the marks are strikingly similar, the TTAB found that there was not even a “viable relationship” between the goods to which the marks would be applied, as ice cream and pharmaceutical preparations are “very different.” MMI attempted to argue that the form of its ice cream was similar to the form of RB’s pharmaceutical composition. The TTAB found this distinction irrelevant, as the issue at hand was the relatedness of the goods themselves, not the relatedness of their forms.

Having found the two primary du Pont factors to weigh in favor of different parties, the TTAB went on to review the other du Pont factors relevant to the opposition. Looking at trade channels, the TTAB found that factor to weigh in favor of MMI. While the evidence showed that, in actuality, MMI’s ice cream and RB’s pharmaceuticals were sold in different places, the fact that MMI’s registration covered all types of ice cream meant that all places which sold ice cream had to be considered as trade channels, including the drug stores and retail outlets where RB’s pharmaceuticals would be sold. Classes of purchasers also weighed in favor of likelihood of confusion, as parents would be purchasing both products, while conditions of sale weighed against, as parents would likely be more discerning when buying pharmaceuticals for a sick child, and there would be “no possibility” that consumers would mistake pharmaceuticals with ice cream products.

The sixth du Pont factor – strength of MMI’s mark – was found to weigh against MMI. While MMI pointed to various pieces of evidence demonstrating its supposed success, including sales numbers and a survey, that evidence did not establish that MMI’s mark was “commercially strong” – the same conclusion reached in the civil action. Conversely, RB relied on both the file history for MMI’s trademark application as well as on third-party registrations for the term MINI MELTS (including two food-related applications pending when MMI originally filed for registration and two candy-related applications discovered after the conclusion of the civil trial), to argue that the term was weak. The TTAB found RB’s submissions to be persuasive. The third-party registrations were closer in nature to the goods covered by MMI’s registration, and indicated that MINI MELTS has a “highly suggestive connotation in the [food] industry.” Even if MMI’s mark was strong for just ice cream, there was no evidence that this strength carried over into other “noncompetitive” goods.

Turning to the seventh du Pont factor – actual confusion – the Board found that much of what MMI submitted on its behalf was little more than hearsay. Although MMI did not submit a survey of its own in the opposition, it attempted to rely upon a survey submitted by RB in the district court action. MMI argued that proper interpretation of the RB survey resulted in a much greater showing of confusion than that reported by RB. The Board was not persuaded, and found RB’s survey, methodology, and accompanying expert opinion to be credible, while chastising MMI for not conducting their own survey or hiring their own expert. The Board found the results of the survey – which showed confusion at a 7%-8.5% level – to be de minimis.

The Board also looked at the other unique factors presented in the case. MMI had long argued that there were safety concerns inherent in the use of the two parties’ marks, focusing on the idea that the identical nature of the marks could mean that a child who gained access to RB’s pharmaceutical composition would think it was one of MMI’s ice cream products and ingest more than the correct amount. The TTAB acknowledged the concern, but reiterated that the test at hand was not confusion between the products themselves, but confusion as to the source of the goods. A child’s potential mix-up between an ice cream product and a pharmaceutical product provided no reliable evidence that a consumer would misuse RB’s product “as a result of trademark confusion.” (emphasis added.) Therefore, the totality of the evidence under the du Pont factors weighed against a finding of likelihood of confusion.

After concluding that RB’s mark was not likely to cause confusion in light of MMI’s registered mark, the Board turned to the question of whether RB’s mark was registrable or whether it was merely descriptive and thus incapable of registration. Under Section 2(e)(1) of the Trademark Act and the Federal Circuit case In re Chamber of Commerce of the U.S., 675 F.3d 1297 (Fed. Cir. 2012), a term cannot be registered if it is merely descriptive, meaning that the term “immediately conveys knowledge of a quality, feature, function or characteristic of the goods with which it is used.” Merely descriptive marks can, however, be registrable, where they have come to be associated with the trademark owner through long-term use.

Here, RB had applied to register its marks on the basis of its bona fide intention to use the marks in connection with the products identified in its applications. Thereafter, although RB had actually begun using its marks (and, if fact, had used them for several years while the district court proceeding was ongoing), it was not in a position to file statements of use in connection with the applications due to the pending nature of the opposition. Nevertheless, RB did file amendments to the applications seeking registration under Lanham Act Section 2(f), arguing that the marks had acquired distinctiveness as a result of RB’s long-term use. In so doing, the Board found that RB had conceded that RB’s applied-for marks were at least merely descriptive under Section 2(e)(1); indeed, RB’s own statements acknowledged that “MINI MELTS” described the mini granules of its product that melted on the tongue. Irrespective of that, however, because the applications remained as intent-to-use applications, the Board found that a claim of acquired distinctiveness under 2(f) “by definition, requires prior use.” Therefore, the Board found that RB could not claim the benefit of Section 2(f) as of yet because it had not filed any of the required documents under Sections 1(c) or 1(d) alleging use. Despite this obstacle, the Board chose to decide the issue of acquired distinctiveness because it was an issue litigated by the parties.

RB claimed that MINI MELTS had acquired distinctiveness “through substantially exclusive and continuous use in commerce for at least the five years immediately preceding the date of this statement [October 23, 2012],” and offered sales and advertising numbers to prove its position. The Board, however, found the proffered evidence fell short, as the issue at hand was not whether the mark could become distinctive, but whether it had in fact become distinctive to consumers. RB’s numbers showed that it had made efforts to market its product and that consumers had purchased its product, but these numbers could not be found to demonstrate RB’s success in its efforts without further supporting evidence that consumers do, in fact, “recogni[ze]…the proposed mark as a source indicator.”

Therefore, although RB succeeded in defeating the claim of likelihood of confusion, it failed to prove acquired distinctiveness, and its registrations were refused on this basis. Trademark applicants seeking to register an arguably descriptive mark on the basis of acquired distinctiveness should keep in mind that mere advertising and sales evidence – even significant numbers – may not be sufficient to support their claim. Rather, under the Mini Melts decision, it appears important to provide evidence establishing that the efforts made to build consumer awareness have been successful in educating consumers to the source-indicating nature of the mark.

In re Florists’ Transworld Delivery, Inc. (Serial No. 85164876)

In an instructive decision for trademark applicants relying on social media to help advertise and promote their products and services, the Trademark Trial and Appeal Board (Board or TTAB) in In re Florists’ Transworld Delivery, Inc. concluded that advertising and promoting via a social-networking website does not, in and of itself, support a registration of a trademark for such services unless the applicant is in the business of providing such services. As such, a trademark applicant utilizing a social media platform to create an on-line community for users for the purpose of advertising and promoting its products and services generally is not in a position to obtain a trademark registration for such services.

Applicant Florists’ Transworld Delivery, Inc. (Florists) filed an intent-to-use application for the mark SAY IT YOUR WAY for both “[o]nline retail store services featuring flowers and gifts, and promoting the retail services of member florists” in International Class 35, and “[c]reating an on-line community for registered users to participate in discussions, get feedback from their peers, form communities, and engage in social networking featuring information on flowers, floral products and gifts” in International Class 42. In support of its application, Florists submitted the following specimen depicting a page from its Twitter profile:

Click here to view the image.

The Examiner refused registration, finding that the specimen did not show the applied-for mark being used in connection with the identified services in either class. A substitute specimen was submitted, containing more pictures from the Twitter profile. The Examiner subsequently withdrew the refusal as to Class 35 (agreeing that the pages properly depicted the mark as used in connection with on-line retail store services), but maintained the refusal as to Class 42, concluding that the specimen did not show use of the applied-for mark in connection with the applied-for services. Florists appealed, contending that it had “created its own smaller community, within the much broader Twitter sphere,” for people interested in its product.

The Board agreed with the Examiner. Referring to the Trademark Manual of Examining Procedure (TMEP), the Board noted that § 904.07(a), states that the submitted specimen must show “use for the specific goods/services identified.” Moreover, TMEP § 1301.04(d) states that “registration must be refused if the specimen shows the mark is used only to promote goods rather than the identified services, or the mark is used as a service mark but not for the identified services (i.e., the applicant misidentified the services).”

Advertising materials can be submitted as specimens, but to be accepted must do one of two things: (i) show the mark advertising the identified services and form a direct association “by containing a reference to the specified service(s)” and using the mark so that it “identif[ies] and distinguish[es] the service(s) and source thereof,” or (ii) show no reference to the identified services, but instead show the applicant using the mark to provide the identified services, in a manner which “creates in the mind of the purchaser an association between the mark and the service activity.” The Board explained that the TMEP provides further guidance in § 1301.04(h)(iv)(C), stating “[s]ome applicants may mistakenly mischaracterize their services as ‘social networking’ because they assume that advertising or promoting their non-social-networking services via a social-networking website means they are providing social-networking services…[s]uch a specimen is not acceptable…since it does not demonstrate that the applicant is providing [the applied-for] services.”

In reaching its decision to uphold the refusal as to Class 42, the Board found the images linked in Florists’ specimen to be merely pages of Florists’ Twitter profile, showing the profile’s home page, an entry from Florists’ past tweets, and a link from that entry which took users to a list of florists participating in an event sponsored by Florists. Thus, the specimen did not show an advertisement for “creating an on-line community” or show Florists providing the specified services. It simply showed Florist using an already-established online community to disseminate information and address consumer complaints. No new online community or platform was provided where users could craft a profile specific to Florists’ services. While Florists attempted to argue that they provided a separately registrable service simply by virtue of being on Twitter’s platform, the Board refused to accept that argument as support for the creation of an actual user forum; rather, it was merely use of an existing social-networking site for the benefit of Florists. Any advertisement provided by Florists on its Twitter page was “merely incidental to the production or sale of goods.” Thus, Florists’ submitted specimen was found to be insufficient to show use of its mark in association with the services identified in the application.

The Board’s decision in In re Florists’ Transworld Delivery, Inc. is consistent with the Board’s decisions relating to applications relying on advertising material to support registration of marks for the advertising and promotion of one’s own products and services. The Board has repeatedly refused to allow trademark applicants to secure registrations for advertising- and promotion-related services when the applicant is merely advertising and promoting its own products or services – as opposed to acting as an advertising/promotional agency whose services are retained for the benefit of others. Here, in refusing to register applicant’s mark for “creating an on-line community of users,” the Board has again made clear that the goods/services of the applicant were not the creation of a social media site, but rather were selling and arranging for the sale and delivery of flowers. While it is often difficult for those not familiar with the nuances of trademark prosecution practice to understand, it is extremely important when drafting applications to ensure that the scope of the covered goods/services both reflects what the applicant will do under the mark, and is consistent with what the Trademark Office will accept.

In re Loggerhead Tools, LLC (Serial No. 85700986)

In another chapter chronicling the relationship between functionality and trademarks, the Trademark Trial and Appeal Board (Board or TTAB) has found that an application claiming “a motion mark” depicting a specific product configuration was functional, thereby making the mark unregistrable.

Loggerhead Tools, LLC (Loggerhead) filed an application to register a mark for “hand tools, namely, gripping tools in the nature of wrenches and wire crimpers for sale through mass merchandisers to retail consumers.” The mark was as follows:

Click here to view the image.

In its application, Loggerhead described its mark as “a motion mark depicting the product configuration of a hand tool in which six rectangular-shaped jaw-like elements of the circular head of a hand tool radially move in and out.” The motion was described as “symmetrical[]” and “a mechanical iris-type motion.” The Examiner refused registration of the mark under Section 2(e)(5) of the Trademark Act, on the ground that the mark was functional. On appeal, the TTAB agreed with the Examiner, and affirmed the refusal to register the mark.

The Board initially noted that under the Supreme Court’s decision in TrafFix Devices Inc. v. Marketing Displays Inc., 532 US 23, 58 (2001), “a product feature is functional…if ‘it is essential to the use or purpose of the article or if it affects the cost or quality of the article.’” A functional feature is ineligible for trademark registration; that is the domain of patent law.

The Board then turned to the four-factor test put forward by the Federal Circuit in In re Morton-Norwich Products, Inc., 671 F.2d 1332 (CCPA 1982), noting that although Morton-Norwich came before TrafFix (and other Supreme Court cases dealing with trademark functionality), “the Federal Circuit has since determined that the four [Morton-Norwich] factors continue to be availing in a functionality analysis.” The factors are: a) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered; b) advertising by the applicant that touts the utilitarian advantages of the design; c) facts pertaining to the availability of alternative designs; and d) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

In regards to the first Morton-Norwich factor, Loggerhead owned a United States utility patent for an “Adjustable Gripping Tool.” The patent disclosed “six gripping elements,” and the background of the patent discussed the tool’s “symmetrical” movement as espoused by Loggerhead’s trademark application. The Board found that such a patent is “strong evidence” of functionality. Although Loggerhead attempted to argue that the motion disclosed in its trademark application was not claimed in the utility patent, the Board pointed out that the Supreme Court in TrafFix found that evidence of functionality need not be specifically in the claims, and statements in the specification can be just as compelling.

To counter the issue raised by the utility patent, Loggerhead argued that the design of its wrench was actually covered by U.S. Patent No. D618,974, a design patent for a “Hydrant Tool,” thus emphasizing non-functionality of the design. The Board was not persuaded. Relying on Federal Circuit precedent from In re Becton, Dickinson & Co., 675 F.3d 1368 (Fed Cir. 2012), the Board found that “the fact that a device is or was the subject of a design patent does not, without more, bestow upon said device the aura of distinctiveness or recognition as a trademark.” Moreover, the Board noted that the asserted design patent only featured five gripping elements, not the six shown in both the utility patent and the applied-for mark. Further still, the design patent did not discuss the motion of the wrench, as did the trademark application and the utility patent. Thus, the design patent was insufficient evidence to overcome the conclusion warranted by the utility patent that the applied-for design was functional.

Turning to the second Morton-Norwich factor, the Examiner had drawn attention to the various instances in Loggerhead’s submitted advertising where the utilitarian aspects of its wrench were publicized. Several examples were given, including a statement to the effect that “[t]hese tools combine the functionality of an adjustable wrench and pliers to automatically size and grip fasteners.” The TTAB agreed with the Examiner that the advertising materials submitted by Loggerhead strongly supported a finding of functionality.

Although the TTAB noted that the findings for the first two factors were sufficient to find functionality of Loggerhead’s design, it considered the third and fourth Morton-Norwich factors in the interest of completeness. In analyzing availability of alternative designs, Loggerhead’s experts had testified to the existence of several alternatives to an adjustable tool, which had “very different aesthetic appearances.” The expert declarations also referenced various examples of adjustable wrenches. While Loggerhead referred to this evidence as “overwhelming,” the TTAB found that neither the expert testimony nor the proffered examples referenced the “iris-type motion” set forth in Loggerhead’s application, instead discussing a “general motion of adjustability.” Between this evidence and Loggerhead’s own assertion that its design was among the best, the TTAB was unpersuaded that there were viable alternative designs available.

The fourth and final Morton-Norwich factor – how the claimed feature affects the cost or quality of the article – once again weighed for a finding of functionality. The TTAB considered testimony of Loggerhead’s president stating that the design of the wrench was “not the most cost-effective combination” available, but noted it had already found the design to affect the quality, and was likewise unpersuaded that the design was not otherwise cost-effective.

Finally, the TTAB considered Loggerhead’s other arguments, including that the design had acquired distinctiveness and thus functioned as a trademark capable of registration on the Principal Register. While the Board recognized that Loggerhead was claiming acquired distinctiveness, it noted that, under the Lanham Act, refusal for functionality excludes the mark from a Section 2(f) acquired distinctiveness claim.

While the range of things that can (and often do) function as trademarks – words, images, sounds, etc. – is vast, it is nonetheless reined in by doctrines such as functionality. When preparing and filing applications for non-traditional trademarks, trademark practitioners should ensure that the appropriate questions have been asked and answered as related to issues such as functionality.

In re Hodgdon Powder Company, Inc. (Serial No. 85947962)

In a rare decision resulting in trademark registration status for a color mark, the Trademark Trial and Appeal Board (Board or TTAB) has found the color white to be registrable.

Applicant Hodgdon Powder Company, Inc. (Hodgdon) applied for registration under Section 2(f) of the Trademark Act for the color white, for gunpowder, specifically for “preformed gunpowder charges for muzzleloading firearms,” in the following form:

Click here to view the image.

Hodgdon claimed “substantially exclusive and continuous use” of white for gunpowder in commerce for at least five years before it filed its application. Hodgdon had a previous registration for WHITE HOTS in standard character form for “gunpowder,” and submitted evidence that the color white in conjunction with the claimed goods had acquired distinctiveness. The Examiner found Hodgdon’s evidence of acquired distinctiveness unpersuasive, and refused registration.

The TTAB reversed, noting that while a mark “comprised of a single color alone” cannot be inherently distinctive, a product’s color can be protected as a trademark, and acquired distinctiveness can be found for a color in conjunction with a product. In Hodgdon’s case, “gunpowder” has historically always been gray or black, and the white color of Hodgdon’s gunpowder does no more than identify its product. None of its competitors produced white gunpowder, and for years Hodgdon marketed its product as “the only white gunpowder.” Among the evidence submitted by Hodgdon in support of its claim of acquired distinctiveness was a declaration attesting to Hodgdon’s continuous use, an informal survey showing customer awareness of its exclusivity in the white gunpowder market, and several advertising samples and expense statements showing Hodgdon’s continued marketing of its white gunpowder, high product sales, and the associated consumer awareness. While the informal survey was found to be invalid for purposes of acquired distinctiveness, the TTAB found the remainder of Hodgdon’s submitted evidence to be persuasive as to acquired distinctiveness.

Although Hodgdon was successful in its effort to obtain trademark protection for its white gunpowder, the process of obtaining color registrations – especially registrations for a single color – remains difficult. The registration in Hodgdon was the culmination of many years of targeted, persistent advertising and marketing efforts, while at the same time ensuring that Hodgdon’s gunpowder was the only white gunpowder on the in the relevant market. Proof of acquired distinctiveness in the single-color context typically requires long-term planning and significant expense.

In re Morgan Brown (Serial No. 86362968)

The Trademark Trial and Appeal Board (Board or TTAB) recently reiterated its position that a product or service which is legal at the state level cannot qualify for a federal service mark registration if the product or service is unlawful under federal law. This ruling is especially relevant in view of the growing number of states legalizing marijuana. As with any other retail establishment, the owners of shops specializing in the legal (at state level) distribution and sale of marijuana are looking to “brand” their services. The recent decision in In re Morgan Brown continues the Trademark Office’s prohibition on such registrations.

Applicant Morgan Brown (Brown) filed for registration of the mark HERBAL ACCESS in standard characters for “retail store services featuring herbs,” with a disclaimer of the term “herbal.” The Examiner refused registration concluding, based on the Applicant’s specimens and website, that the applied-for mark was to be used in connection with the sale of, among other things, marijuana-related products which are illegal under the federal Controlled Substances Act (CSA).

The TTAB agreed with the Examiner’s finding, and affirmed the refusal to register. Under consistent TTAB precedent, use of a mark in commerce must be “lawful” to qualify the mark for federal service mark protection. “Lawful” means that the applied-for goods or services cannot be illegal under federal law, and lawfulness under state statute is not relevant to the discussion of legality under federal law. The US Trademark Office does presume lawful use of a mark in commerce under federal law; however, refusal can be warranted where: (a) a violation of federal law is indicated by the application record or other evidence; or (b) the applicant’s application-relevant activities involve a per se violation of a federal law.

In Brown’s case, the Examiner found a per se violation of law, using Brown’s submitted evidence to bolster the refusal. Brown’s specimen of use showed various ways in which marijuana was marketed for sale in its facilities, including several green crosses, pictures of marijuana plants, and the wording “Marijuana for the Masses.” The specimen also showed Brown’s encouragement of potential consumers, via his website, to contact his dispensary and inquire about purchasing marijuana. The entirety of the evidence thus demonstrated that the services Brown was intending to offer under the applied-for mark encompassed providing a drug whose active component (THC) was still a Schedule 1 controlled substance under the CSA.

While Brown admitted the illegality of the sale of marijuana under the CSA, he argued that his specified services were “retail store services featuring herbs,” and herbs, per se, were not illegal substances. However, the fact that the mark may be used in conjunction with the sale of some “legal” products (e.g., herbs other than marijuana) did not sway the Board. Further, Applicant’s argument that the Examiner made of record no evidence showing use of the mark “specifically in connection with one particular herb: marijuana” was unpersuasive in light of Applicant’s admission that he “may sell marijuana” and the well-known colloquial use of the term “herb” to reference marijuana.

While the illegal nature of marijuana is not news, In re Brown is interesting because it demonstrates the growing practice of the Trademark Office to look beyond the language used by applicants in an effort to determine whether there is any sort of hidden agenda in the manner in which the goods/services are described in a trademark application. Trademark applicants seem increasingly savvy to the prohibitions on registering marks for products and services that are illegal at the Federal level. However, the fact that some things – such as marijuana – are legal in at least some states provides incentive to build brand awareness and to take steps to protect that brand. The growing practice by Examiners of looking not only at the evidence submitted by the applicant but also to an applicant’s website (and other on-line references) will make it all the more difficult for applicants to craft a recitation in a way that successfully “hides” an intention to use a mark in connection with federally prohibited goods or services.