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Wirecard : The Top Ten TTAB Decisions Of 2020 (Part II)

01/12/2021 | 11:19am

This is the second of two posts; the first five selections were posted  here yesterday. Additional commentary on each case may be found at the linked TTABlog post. The cases are not necessarily listed in order of importance (whatever that means).

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Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086 (TTAB 2020) [precedential] (Opinion by Judge Elizabeth A. Dunn). [TTABlogged  here]. On October 20, 2015, Striatum Ventures B.V. (a Netherlands company) obtained a registration for the mark ZUPR in the word-plus-design form shown here, for software and various business services, via the Madrid Protocol (Section 66(a) of the Trademark Act). On October 22, 2018, Wirecard AG filed a petition for cancellation of that registration on the ground of abandonment. The parties, proceeding under the Board's Accelerated Case Resolution ("ACR") procedure, stipulated that during the period from the issuance of the registration through the date of the stipulation (May 28, 2019), no goods or services had been sold in the United States under Striatum's mark. The Board observed that, although the Trademark Act refers to "abandonment," the allegation that a mark was never used "pleads the necessary non use for abandonment, so long as the period of nonuse is at least three years or, if less that three years, is accompanied by a lack of intent to resume or commence use." (Emphasis added). The Board found that Striatum carried its burden of proving an intent to commence use of its mark in commerce during the three-year statutory period of nonuse and therefore had rebutted Wirecard's prima facie showing of abandonment. "Following registration in the U.S., Respondent entered into a contract for a U.S. marketing strategy, retooled its platform in response to that marketing strategy, demonstrated the retooled products to its public relations firm, and reached agreement at least orally with a retailer's representative to use the ZUPR goods and services in the U.S. following the product launch in 2019."

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In re Team Jesus LLC, 2020 USPQ2d 11489 (TTAB 2020) [precedential] (Opinion by Judge Cynthia C. Lynch). [TTABlogged here]. In one of several precedential failure-to-function rulings, the Board upheld a refusal to register TEAM JESUS for clothing items and educational and entertainment services promoting religion, under Sections 1, 2, 3, and 45 of the Trademark Act. The Board pointed out once again that "[m]atter that is widely used to convey ordinary or familiar concepts or sentiments, or social, political, religious, or similar informational messages that are in common use, would not be perceived as indicating source and is not registrable as a mark." The examining attorney proffered numerous examples evidencing general use, in a variety of contexts, of the phrase TEAM JESUS to convey a Christian affiliation: including at various religious websites, in media articles, on many t-shirts, and on bracelets, lanyards, and buttons. The Board found that, in light of the nature of use of the phrase TEAM JESUS, including on apparel from many sources, "it does not create the commercial impression of a source indicator, even when displayed on a hangtag or label." [In similar rulings, the Board found that the following terms fail to function as trademarks: GOD BLESS THE USA for pillows; PAST PRESENT FUTURE for t-shirts; and TEXAS LOVE for t-shirts].

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In re Vox Populi Registry Ltd. , 2020 USPQ2d 11289 (TTAB 2020) [precedential] (Opinion by Judge Thomas W. Wellington). [TTABlogged  here]. The Board upheld refusals to register the term .SUCKS in the stylized form shown here, as a service mark for "Domain registry operator services related to the gTLD in the mark, in International Class 42," and the standard character mark .SUCKS for those same services and for "Domain name registration services featuring the gTLD in the mark; registration of domain names for identification of users on a global computer network featuring the gTLD in the mark, in International Class 45." The Board observed that "consumers are 'highly conditioned' to view a gTLD as signifying its function as a portion of an Internet domain name." Despite applicant's attempts to use .SUCKS in the manner of a source-identifier, "the evidence shows that consumers will view it as only a non-source identifying part of a domain name, rather than as a mark." As to the stylized version, the Board found that "it does not create a sufficiently distinct commercial impression separate from the non-source-identifying element, .SUCKS. While the pixelated design may be antiquated since it was once 'mandated by technological limitations,' given the ubiquity of the design in the 'early days' of computing, consumers would view pixelated lettering as ordinary."

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City of London Distillery, Ltd. v. Hayman Group Limited, 2020 USPQ2d 11487 (TTAB 2020) [precedential] (Opinion by Judge Marc A. Bergsman). [TTABlogged  here]. This applicant squeaked by with a Supplemental Registration for CITY OF LONDON for gin [LONDON disclaimed], after surviving an opposition based on four grounds: Section 2(e)(1) mere descriptiveness, Section 2(e)(2) geographical descriptiveness, Section 2(e)(3) geographically deceptive descriptiveness, and failure-to-function as a trademark. The Board sustained the geographical descriptiveness claim, dismissed the other three, rejected applicant's claim of acquired distinctiveness, and then granted its motion to amend to seek registration on the Supplemental Register. The Board found that CITY OF LONDON is the name of a geographic place known generally to the American gin drinking and purchasing public, namely London, England. Although applicant's gin does not originate in the technical City of London (i.e., within the boundaries of the financial district subdivision of London), it does originate in London. As to the other three claims, however, there was nothing misdescriptive or deceptive about the mark, nor was the mark so highly descriptive as to be incapable of functioning as a mark. The Board found applicant's meager proofs inadequate to satisfy Section 2(f), but it granted applicant's motion to amend to the Supplemental Register as timely, even though filed after discovery had closed. 

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In re tapio GmbH, 2020 USPQ2d 11387 (TTAB 2020) [precedential] (Opinion by Judge Melanye K. Johnson). [TTABlogged  here]. The Board affirmed two refusals to register the proposed mark TAPIO for various Internet-related goods and services, finding applicant's identification of goods unacceptably indefinite in part, and deeming the term TAPIO to be primarily merely a surname under Section 2(e)(4). The Board found the phrase "devices and services" in applicant's Class 9 identification of goods to be indefinite because the phrase could include goods or services in more than one class. As to the surname refusal, the Board refused to adopt applicant's proposed standard requiring "celebrity status," "national notoriety," or "significant media attention" in order to establish that a surname, although not common, has sufficient public exposure to be deemed primarily merely a surname under Section 2(e)(4). The examining attorney submitted LexisNexis® evidence showing 374 occurrences of the surname "Tapio," database search results that included 71,018 "hits" for the surname "Tapio," news items referring to five people with the surname Tapio (including a South Dakota state senator), and a page from the Internet website of a forty-year-old construction business located in Vancouver, Washington using the founder's name, "Tapio." The Board observed that "while TAPIO is not a common surname, there is meaningful and fairly widespread public exposure to the surname throughout the United States." It further found that TAPIO has the structure and pronunciation of a surname and has no non-surname meaning, and so the Board concluded that TAPIO is primarily merely a surname.

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The TTABlog

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Mr John L. Welch
Wolf, Greenfield & Sacks, P.C.
600 Atlantic Avenue
Boston
MA 02210
UNITED STATES
Tel: 617646 8000
Fax: 617646 8646
E-mail: www.wolfgreenfield.com
URL: www.wolfgreenfield.com

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