EX (T.T.A.B. Dec. 6, 2018)

James Fallon

Trademark Trial and Appeal BoardDec 6, 2018

EX (T.T.A.B. Dec. 6, 2018)

This Opinion is Not a Precedent of the TTAB Mailed: December 6, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Fallon _____ Serial No. 86915495 _____ Morland C. Fischer of Law Offices of Morland C. Fischer, for James S. Fallon. Christopher Buongiorno, Trademark Examining Attorney, Law Office 102, Mitchell Front, Managing Attorney. _____ Before Kuczma, Larkin, and Coggins, Administrative Trademark Judges. Opinion by Larkin, Administrative Trademark Judge: James S. Fallon (“Applicant”) seeks registration on the Principal Register of the mark MAX-FLOW in standard characters for goods identified (as amended) as “an oral appliance having an integral frontal air opening used in the mouth and worn over the teeth of an individual while sleeping to reduce the effects of snoring and sleep apnea,” in International Class 10.1 1 Application Serial No. 86915495 was filed on February 22, 2016 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s allegation of a bona fide intention to use the mark in commerce. Serial No. 86915495 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that on Applicant’s substitute specimen of use (reproduced below), the mark fails to function as a trademark for the goods identified in the application.2 2 Applicant claims that this appeal “has facts and issues that are similar to those” in Applicant’s appeal in Application Serial No. 86882668, and suggests that “for purposes of efficiency, both appeals could be decided at the same time.” 4 TTABVUE 1. To the extent that this is a request to consolidate the two appeals, or to decide them in a single opinion, it is denied. Although the appeal in Serial No. 86882668 nominally includes a failure-to-function refusal, it involves a different mark appearing on a different specimen for different goods. Given the fact-intensive nature of specimen refusals, we elect to decide the two appeals in separate opinions. See generally TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) Section 1214 (2018) and cases cited therein. See also In re Minerva Assocs., Inc., 125 USPQ2d 1634, 1636 n.9 (TTAB 2018) (the Board is not bound by registrability decisions in other cases, including decisions involving the same applicant’s specimens). Serial No. 86915495 - 3 - Applicant and the Examining Attorney have filed briefs. We affirm the refusal to register. I. Prosecution History and Record on Appeal Applicant’s goods were originally identified in his application as a “frontal air opening breathing feature that is integral to an oral appliance to be used in the mouth and worn over the teeth of an individual during sleep to reduce the effects of snoring and sleep apnea.” The identification was amended twice, first to “a frontal air opening that is an integral component of an oral appliance used in the mouth and worn over the teeth of an individual during sleep to reduce the effects of snoring and sleep apnea,”3 and then to the current identification, “an oral appliance having an integral frontal air opening used in the mouth and worn over the teeth of an individual while sleeping to reduce the effects of snoring and sleep apnea.”4 Following the latter amendment, the application was published for opposition and a Notice of Allowance was issued. Applicant subsequently filed a Statement of Use supported by a specimen that was rejected by the Examining Attorney because it did not show the entire package for the goods.5 Applicant then filed the substitute specimen that is at issue in this appeal.6 3 June 2, 2016 Response to Office Action at 1. All citations to the record are to pages in the Trademark Status & Document Retrieval (“TSDR”) database. 4 June 21, 2016 Examiner’s Amendment at 1. 5 February 27, 2017 Office Action at 1. 6 March 2, 2017 Response to Office Action at 1. Serial No. 86915495 - 4 - In his first Office Action rejecting Applicant’s substitute specimen, the Examining Attorney made of record Applicant’s specimens of use in his Application Serial No. 86915516 to register the mark POSI-LOCK for “a position adjustment ratchet lock that is an integral component of an oral appliance used in the mouth and worn over the teeth of an individual during sleep to reduce the effects of snoring and sleep apnea,” and in his Application Serial No. 86915554 to register the mark THE PREDICTOR for “an adjustable oral appliance to be used in the mouth and worn over the teeth of an individual during sleep to reduce the effects of snoring and sleep apnea and to enable healthcare workers to determine the individual’s acceptance of said oral appliance and the ideal setting for said oral appliance in the individual’s mouth.”7 In his final Office Action, the Examining Attorney made of record pages from the TSDR database regarding Registration Nos. 5183043 and 5187899, into which Application Serial Nos. 86915516 and 86915554 had respectively matured,8 and pages from the website at apnearx.com.9 II. Analysis of Specimen Refusal “An application initially based on Trademark Act Section 1(b) must, upon the filing of . . . a statement of use under Section 1(d), include one specimen showing the applied-for mark in use in commerce, on or in connection with those goods or services 7 March 21, 2017 Office Action at 2-3. The Examining Attorney examined these applications as well, and the specimens are the same in all three applications. 8 September 29, 2017 Final Office Action at 4-7. 9 Id. at 2-3. Apnea Sciences Corporation claims to own the copyright in the webpages. Id. at 3. The relationship between that company and Applicant in unclear, but the webpages show the product and mark at issue. Serial No. 86915495 - 5 - identified in the application . . . .” In re Florists’ Transworld Delivery, Inc., 119 USPQ2d 1056, 1062 (TTAB 2016). “A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods.” Trademark Rule 2.56(b)(1), 37 C.F.R. § 2.56(b)(1). Applicant submitted a photograph of a package, a “container for the goods,” as a specimen of use, and the Examining Attorney does not dispute that the package is an appropriate specimen under Rule 2.56(b)(1). Instead, the Examining Attorney bases the refusal to register on the manner in which the MAX- FLOW mark is used on the package, framing the issue on appeal as “whether the applied-for mark, as used on the specimen of record, functions as a trademark to indicate the source of an oral appliance.” 6 TTABVUE 4. For ease of reference in following our summary and analysis of Applicant’s and the Examining Attorney’s arguments, we reproduce Applicant’s substitute specimen: Serial No. 86915495 - 6 - Applicant argues as follows: There is simply no reason, and indeed the Examining Attorney has not provided one, why a consumer would not believe that each of the trademarks THE PREDICTOR® and MAX-FLOW™ which are printed on the [specimen] so as to lie adjacent [to] the same image of the applicant’s oral appliance and above the words “Adjustable Sleep Apnea Appliance” would not function as trademarks and identify the applicant as the source of its oral appliance sold within and pictured on the package. . . . [A]pplicant’s trademark POSI-LOCK® is printed on the same specimen . . . on which is also printed each of the applicant’s registered trademark THE PREDICTOR® and its applied for mark MAX- FLOW™. . . . POSI-LOCK® is positioned at one side of the applicant’s oral appliance so as to lie opposite the applied for mark MAX-FLOW™ which is positioned on the other side. Although POSI-LOCK® is used to designate an integral feature (i.e., a position adjustment ratchet lock) of the applicant’s oral appliance pictured on its package, Registration No. 5,183,043 . . . was nevertheless issued to the applicant . . . by the same Examining Attorney. [T]he applicant maintains that the specimen of record . . . . shows the applicant’s use in commerce of THE PREDICTOR®, POSI-LOCK®[,] as well as the applied for mark MAX- FLOW™ on or in connection with or related to the identical goods (i.e., an oral appliance) such that all 3 marks function as trademarks that are equally capable of indicating the applicant as the source of its goods sold in its package on which all of the marks are printed. 4 TTABVUE 4-5. The Examining Attorney responds that the substitute specimen shows applicant’s proposed mark to the left of a picture of an oral appliance on the same horizontal plane as the word “Posi-Lock” that appears on the opposite side. The wording “Max-Flow” is in the same font as the wording “Posi-Lock.” Above the picture of the oral appliance is the wording “The Predictor” in larger text than that of “Max-Flow” and ‘Posi- Lock.” As positioned on the package, the wording “Max- Flow” appears immediately next to the opening of the oral appliance to bring attention to that particular feature of the appliance. When consumers view this wording on the Serial No. 86915495 - 7 - package, they are more likely to perceive it as highlighting the opening rather than serving as a source indication for the oral appliance itself. 6 TTABVUE 5. The Examining Attorney argues that Applicant’s brief acknowledges that the applied-for mark “is ‘located on the package so as to lie immediately adjacent [to] the frontal air opening which is an integral component of the applicant’s oral appliance that is illustrated at the center of the package,” id. (citing 4 TTABVUE 2-3 (emphasis supplied by the Examining Attorney)), and that Applicant admitted during prosecution that the applied-for mark “‘describes a feature of the applicant’s oral appliance.’” Id. (quoting September 20, 2017 Response to Office Action at 1). The Examining Attorney also points to a page from the website at apnearx.com, which he claims “shows the wording in the proposed mark used to identify an opening or feature of an oral appliance,” id. at 5-6, and argues that Applicant’s registrations of the marks THE PREDICTOR and POSI-LOCK support the refusal. Id. at 6. He notes that on the specimen, the “wording ‘Posi-Lock’ appears near a component of the oral appliance exactly as it appears on the specimen associated with the applied-for mark on appeal,” such that “neither the word ‘Max-Flow’ nor ‘Posi-Lock’ functions as source indicators for the oral appliance itself.” Id. at 8. Neither Applicant nor the Examining Attorney discusses the standard for determining when an applied-for mark is associated on a specimen with the goods for which registration is sought. “Implicit in the definition of a trademark is a requirement that there be a direct association between the mark sought to be registered and the goods specified in the application, that is, that the mark be used Serial No. 86915495 - 8 - in such a manner that it would be readily perceived as identifying the specified goods and distinguishing a single source or origin for the goods.” Minerva Assocs., 125 USPQ2d at 1638. Under this standard, we must determine whether the mark MAX- FLOW on Applicant’s substitute specimen would be readily perceived as identifying “an oral appliance having an integral frontal air opening used in the mouth and worn over the teeth of an individual while sleeping to reduce the effects of snoring and sleep apnea.” The manner in which Applicant “has employed [his] asserted mark, as evidenced by the [specimen] of record, must be carefully considered in determining whether the asserted mark has been used as a trademark with respect to the goods identified in the application.” Id. at 1636. We “may also consider other evidence bearing on the question of what impact applicant’s use is likely to have on purchasers and potential purchasers.” In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992). Applicant’s substitute specimen displays seven registered or asserted trademarks and, as noted above, Applicant claims that the marks THE PREDICTOR, POSI- LOCK, and MAX-FLOW all “function as trademarks that are equally capable of indicating the applicant as the source of its [oral appliance].” 4 TTABVUE 5. “[I]t is settled that a product label can bear more than one trademark without diminishing the identifying function of each portion,” Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1629 (TTAB 2007) (internal quotation omitted), but we must determine what is identified by the applied-for MAX-FLOW mark in the context of the specimen as a whole. Serial No. 86915495 - 9 - The marks ApneaRx® and The Predictor™ appear at the top of the package shown on the substitute specimen, directly above the picture of the product, in relatively larger typefaces than those of the other five registered or asserted marks on the substitute specimen. Given their relative size and placement, the ApneaRx and The Predictor marks would be perceived as identifying the oral appliance as a whole. This finding is corroborated by the facts that the mark THE PREDICTOR is now registered, based on the same specimen, for “an adjustable oral appliance to be used in the mouth and worn over the teeth of an individual during sleep to reduce the effects of snoring and sleep apnea and to enable healthcare workers to determine the individual’s acceptance of said oral appliance and the ideal setting for said oral appliance in the individual’s mouth,” and that pages from the website at apnearx.com (depicted below) use the registered ApneaRx mark to refer to the entire appliance when they state, among other things, that “APNEARX is specially designed for comfort,” that the “ApneaRx is specifically designed to treat mild to moderate sleep apnea, and is the only boil and bite device that comes in two sizes, Standard and Small, and is easily adjustable by 1mm increments,” and that the “ApneaRx is available for purchase online or at your local pharmacy or drug store, including Lawtons, London Drugs, Rexall and Shopper Drug Mart.”10 10 September 29, 2017 Final Office Action at 2-3. Serial No. 86915495 - 10 - The Max-Flow™ and Posi-Lock™ marks appear in the middle of the substitute specimen in typeface that is smaller than those of the ApneaRx and The Predictor marks.11 As Applicant puts it, “POSI-LOCK® is positioned at one side of the applicant’s oral appliance so as to lie opposite the applied for mark MAX-FLOW™ 11 The marks Micro Adjust®, Flex Jaw™, and Micro-Fit® appear horizontally at the bottom of the package in typeface that appears to be the same size as that used for the Max-Flow and Posi-Lock marks. Serial No. 86915495 - 11 - which is positioned on the other side.” 4 TTABVUE 4. The MAX-FLOW mark is directly adjacent to the front opening of the appliance. Given the relative size and placement of the Max-Flow and Posi-Lock marks, the nature of the marks, and the presence of the ApneaRx and The Predictor marks at the top of the package, the Max-Flow mark would be perceived as identifying some feature of the appliance, rather than the appliance itself. This finding is corroborated by the facts that POSI-LOCK is now registered, based on the same specimen, for “a position adjustment ratchet lock that is an integral component of an oral appliance used in the mouth and worn over the teeth of an individual during sleep to reduce the effects of snoring and sleep apnea,” and that the website at apnearx.com displays the MAX-FLOW and POSI-LOCK marks in connection with the appliance as follows: 12 Like its counterpart POSI-LOCK, the MAX-FLOW mark is used on this page to refer to a feature of the oral appliance that is located at the front of the device, near where the applied-for mark appears on the substitute specimen.13 12 September 29, 2017 Final Office Action at 2. 13 The Micro-Fit® mark that appears at the bottom of the substitute specimen is also associated on this page with a feature of the appliance. Serial No. 86915495 - 12 - We find that when the applied-for MAX-FLOW mark is considered in the context of Applicant’s substitute specimen as a whole, and against the backdrop of Applicant’s use and registration of the other marks that appear on the substitute specimen, the MAX-FLOW mark would be perceived as identifying a feature of the oral appliance, rather than the oral appliance itself. Applicant’s substitute specimen thus does not show use of the applied-for mark in connection with the goods identified in the application. Decision: The refusal to register is affirmed.