Valvoline Licensing and Intellectual Property LLCDownload PDFTrademark Trial and Appeal BoardJan 27, 202087707717 (T.T.A.B. Jan. 27, 2020) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: January 27, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Valvoline Licensing and Intellectual Property LLC _____ Serial No. 87707717 _____ Michael G. Frey of Wood Herron & Evans LLP, for Valvoline Licensing and Intellectual Property LLC. Cameron L. McBride, Trademark Examining Attorney, Law Office 106, Mary Sparrow, Managing Attorney. _____ Before Ritchie, Kuczma, and Larkin, Administrative Trademark Judges. Opinion by Larkin, Administrative Trademark Judge: Valvoline Licensing and Intellectual Property LLC (“Applicant”) seeks registration on the Principal Register of the proposed mark shown below (“EASY POUR” disclaimed) Serial No. 87707717 - 2 - for “automotive lubricants; automotive greases; motor oils” in International Class 4.1 The Trademark Examining Attorney has refused registration of Applicant’s mark on two grounds. The first ground, under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), is that Applicant’s proposed mark so resembles the registered mark shown below (“EASY POUR” disclaimed) for “antifreeze; coolants for vehicle engines; windshield antifreeze fluids; windshield deicer fluids” in International Class 1,2 as to be likely, when used on or in connection with the goods identified in the application, to cause confusion, to cause mistake, or to deceive. The second ground, under Sections 1, 2, and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, and 1127, is that Applicant’s proposed mark fails to function as a trademark as it is used on Applicant’s specimens of use. 1 Application Serial No. 87707717 was filed on December 4, 2017 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claimed first use of the mark and first use of the mark in commerce at least as early as September 28, 2017. Applicant describes its proposed mark as “the words ‘EASY POUR’ in a stacked format adjacent to the spout of an open oil bottle top, with a drop of liquid dripping out of the spout.” Color is not claimed as a feature of the mark. 2 Registration No. 2626334 issued on September 24, 2002 and has been renewed. The registrant describes its mark as “includ[ing] a graphic depiction of a partial container pouring liquid.” Serial No. 87707717 - 3 - When the Examining Attorney made the refusals final, Applicant appealed and requested reconsideration, which was denied. Applicant and the Examining Attorney have filed briefs.3 We affirm the failure-to-function refusal to register and because we find that Applicant’s proposed mark does not function as one, we do not reach the likelihood-of-confusion refusal. I. Record on Appeal4 The record on appeal includes Applicant’s specimens of use, two of which are reproduced below 5 3 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the number preceding TTABVUE corresponds to the docket entry number, and any numbers following TTABVUE refer to the page number(s) of the docket entry where the cited materials appear. 4 Citations in this opinion to the application record, including the request for reconsideration and its denial, are to pages in the Trademark Status & Document Retrieval (“TSDR”) database of the United States Patent and Trademark Office (“USPTO”). 5 December 4, 2017 Specimen of Use at TSDR 1. Serial No. 87707717 - 4 - 6 and the following additional materials: • TSDR records regarding the cited registration, made of record by the Examining Attorney;7 • Third-party registrations,8 and third-party webpages,9 which the Examining Attorney offers to show that the involved goods are offered by the same companies under the same marks, and other third-party webpages, which the 6 Id. at TSDR 3. 7 April 18, 2018 Office Action at TSDR 2-4. 8 Id. at TSDR 5-29. 9 November 8, 2018 Final Office Action at TSDR 2-7. Serial No. 87707717 - 5 - Examining Attorney offers to show how the words EASY POUR have been touted as product features in various industries,10 • Dictionary definitions of “easy” and “pour,” made of record by the Examining Attorney;11 • An article entitled Off Brands: Understanding the terrible spelling and punctuation in corporate names, by Matthew J.X. Malady, made of record by Applicant;12 • The specimen of use submitted to obtain the cited registration, made of record by Applicant;13 and • Records from the USPTO’s Trademark Electronic Search System (“TESS”) database regarding a third-party Supplemental Register registration of EASY POUR for dietary supplements for pets, and a photograph of the products sold under that mark, made of record by Applicant.14 II. Failure-to-Function Refusal A. Applicable Law “The Trademark Act is not an act to register mere words, but rather to register trademarks. Before there can be registration, there must be a trademark, and unless words have been so used they cannot qualify.” In re Bose Corp., 546 F.2d 893, 192 10 Id. at TSDR 8-11. 11 April 18, 2018 Office Action at TSDR 30-31. 12 October 17, 2018 Response to Office Action at TSDR 10-13. 13 April 18, 2019 Request for Reconsideration at TSDR 16. 14 Id. at 17-19. Serial No. 87707717 - 6 - USPQ 213, 214 (CCPA 1976). The “law pronounced in the Bose case is just as applicable to pictures and illustrations as it is to words: [The] Trademark Act is for the registration, not the creation, of trademarks.” In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (citing In re Int’l Spike, Inc., 196 USPQ 447, 449 (TTAB 1977)). Sections 1, 2, and 45 of the Trademark Act provide the statutory basis for refusal to register subject matter that fails to function as a trademark. Id. Section 45 of the Trademark Act defines a “trademark” as any “word, name, symbol, or device, or any combination thereof—(1) used by a person . . . to identify and distinguish his or her goods . . . from those manufactured or sold by others, and to indicate the source of the goods, even if that source is unknown.” 15 U.S.C. § 1127. The USPTO “is statutorily constrained to register matter on the Principal Register only if it functions as a mark.” Keep A Breast Found., 123 USPQ2d at 1879. “[N]ot every designation adopted with the intention that it performs a trademark function and even labelled as a trademark necessarily accomplishes that purpose . . . .” Id. (quoting Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973)). “[T]he central question in determining whether Applicant’s proposed mark functions as a [trademark] is the commercial impression it makes on the relevant public (e.g., whether the term sought to be registered would be perceived as identifying the source of the [goods]).” Id. (citing In re Aerospace Optico, Inc., 78 USPQ2d 1881, 1882 (TTAB 2006)). “To make this determination we look to the specimens and other evidence of record showing how the designation is actually used Serial No. 87707717 - 7 - in the marketplace.” Id. (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)). B. Arguments From Applicant and the Examining Attorney 1. The Basis for the Failure-to-Function Refusal The Examining Attorney contends that Applicant’s proposed mark fails to function as one because “it simply touts the benefits of selecting Applicant’s goods over other goods, and [ ] does not have any source-identifying function.” 9 TTABVUE 19. He clarifies “that it is the way that the mark is used on the specimen of record that creates the issue, rather than anything inherent as to the nature of the mark.” Id. 2. Applicant’s Arguments Applicant offers multiple arguments in support of its position that the proposed mark functions as one. First, Applicant “perceives no appreciable or legally significant difference between the way its mark appears on its products and the manner in which the cited mark PRESTONE E-Z POUR and Design is used on the specimens of record associated with that registration.” 7 TTABVUE 19. Applicant focuses on the similar positioning of the claimed marks on the respective products: Serial No. 87707717 - 8 - Id. at 20. Applicant states that both “marks appear on the bottles in which the goods are contained,” and that both marks “are located near the top of the container, near – but not adjacent to – the spout through which the goods are poured.” Id. at 19. Applicant argues that “[a]s this manner of use was sufficient to function as a trademark in the Prestone case, Applicant sees no reason why its similar use does not also function as a mark.” Id. at 20. Second, Applicant “maintains that its composite mark would be perceived by consumers as a source identifier.” Id. Applicant argues that the “composite mark, consisting of both the words and illustrative elements . . . is not purely informational” because it “presents this information in a unique manner that is exclusive to Applicant.” Id. Applicant notes that the claimed mark “appears on a number of different products offered by the Applicant,” and claims that “consumers seeing these various types of motor oil in the stores will recognize the composite mark on the different products as another indication that all originate from a common source.” Id. Serial No. 87707717 - 9 - Third, Applicant argues that its claimed mark is set off from other material on its packaging and is eye-catching, and is thus likely to be noticed by consumers, citing the Board’s non-precedential decision in In re The Language Workshop of Children/Cercle Franco Americain, Inc., 2003 WL 21996100 (TTAB August 14, 2003). Id. at 21. Applicant devotes considerable attention to the third-party examples of use of “Easy Pour” made of record by the Examining Attorney and reproduced below: Id. Applicant argues that its use is “far more analogous to that employed by Prestone” than it is to these examples because while its proposed mark and the Prestone mark appear on the respective packages, they “are not directly linked to the package spouts through which the product would be poured,” id., and “where the wording does not appear next to the feature, the link is not as intuitive.” Id. at 22. Applicant also argues that its proposed mark “contains a design element and is a composite whole, rather than simply informational wording,” and that “[n]o other wording appears with EASY POUR to give the terms any clear context or to link the terms to a particular product feature.” Id. Serial No. 87707717 - 10 - Fourth, Applicant relies on Supplemental Register Registration No. 5211139 for the mark EASY POUR for dietary supplements for pets,15 which Applicant contends issued based on the specimen of use shown below: Applicant argues that the “existence of this registration demonstrates that the Trademark Office has already found that the phrase EASY POUR standing alone, when used on product packaging with a spout, can function as a mark.” Id. at 23. Applicant further argues that “it is apparent that this type of use constitutes trademark use, or (stated another way) that a mark used in this manner functions as a trademark,” id. at 24, because the mark “appears as a ‘tag’ that is ‘removed from’ other material on the label, and is ‘eye-catching.’” Id. Finally, Applicant argues that the USPTO’s “treatment of the Prestone and [Supplemental Register] marks should cast some doubt as to whether Applicant’s 15 April 18, 2019 Request for Reconsideration at TSDR 17-19. Serial No. 87707717 - 11 - mark fails to function as a mark,” and that any such doubt should be resolved in its favor. Id. at 24. 3. The Examining Attorney’s Arguments The Examining Attorney argues that Applicant’s bases for traversing the refusal to register are unavailing. He first argues that the Supplemental Register registration of EASY POUR does not bind him or the Board because each application must be considered on its own merits and because “trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence in the record at the time registration is sought, which includes during examination and any related appeal.” 9 TTABVUE 13. The Examining Attorney next rejects Applicant’s argument “that the composite mark will be perceived as a source-identifier because it is presented in a manner that is exclusive to Applicant and it is set off from other material on the product label” because “whether a designation functions as a mark depends on the commercial impression it makes on the relevant public,” id. at 14, and “as shown in the pieces of evidence, consumers are used to seeing this type of designation appear near the top of a bottle or packaging, and the mark in this case is not necessarily any larger or more dominant than any of the wording or designs on the labels.” Id. at 15. The Examining Attorney concludes that “the way that the mark is being used on the goods does not function as a source-identifier, and will only be seen as touting a feature of the goods, as seen in the submitted specimens and the evidence of record.” Id. Serial No. 87707717 - 12 - C. Analysis of Failure-to-Function Refusal Applicant “recognizes that the Trademark Office is not bound by past decisions regarding registration, and that the registration of these other marks does not mandate registration of its own mark,” 7 TTABVUE 23, but nevertheless relies heavily on the fact that the USPTO issued the cited Principal Register registration for antifreeze, coolants for vehicle engines, windshield antifreeze fluids, and windshield deicer fluids, and the Supplemental Register registration of EASY POUR for dietary supplements for pets. Applicant’s reliance on these registrations is misplaced for two reasons. First and foremost, as Applicant acknowledges, it “is axiomatic that we must decide each case on its own merits,” In re United Trademark Holdings, Inc., 122 USPQ2d 1796, 1800 (TTAB 2017), and the registrability decisions reflected in the issuance of the two registrations, which involved different marks on different records, do not obligate the USPTO to issue a registration of Applicant’s proposed mark if the record here shows that the mark is not eligible for registration. See, e.g., In re Omniome, Inc., 2020 BL 3222, *10 (TTAB 2020) and cases cited therein. Second, these registrations are materially different from the registration that Applicant seeks. The issuance of the Principal Register registration of the cited composite mark for various automotive fluids, which includes the PRESTONE house mark, a design, and the phrase E-Z POUR, tells us nothing about whether Applicant’s proposed mark functions as a mark. As a condition to issuance of the cited registration, the USPTO required a disclaimer of the words EASY POUR (the Serial No. 87707717 - 13 - phonetic equivalent of E-Z POUR in the cited mark), which indicates that the USPTO found, and the registrant acknowledged, that E-Z POUR and its equivalent EASY POUR are not source-identifying subject matter. There is nothing in the record to suggest that the USPTO would have issued a registration of the cited mark if it did not contain what Applicant describes as “the prominent and distinctive house mark PRESTONE,” 7 TTABVUE 16, and Applicant does not seek registration of a composite mark that includes its VALVOLINE house mark, which is not at issue here. The existence of the Supplemental Register registration of EASY POUR similarly tells us nothing about whether Applicant’s proposed mark functions as one. The issuance of this registration establishes only, as Applicant puts it, that on the basis of the record in that case, the USPTO “found that the phrase EASY POUR standing alone, when used on product packaging with a spout, can function as a mark.” 7 TTABVUE 23 (emphasis in original). Applicant does not seek registration on the Supplemental Register because it claims that its proposed mark “can function as a mark,” id., but instead seeks registration on the Principal Register because it claims that its proposed mark does function as a mark. Applicant’s several arguments regarding the placement and prominence of the proposed mark on its specimens are also unpersuasive. It is well-settled that in “every case, the question is not whether the mark has been associated with the goods by a particular mode or manner, but whether the matter sought to be registered performs the function of a trademark by signifying to purchasers the source of the goods sold Serial No. 87707717 - 14 - or offered for sale.” In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982). “[A]s Applicant has admitted through its disclaimer, the wording EASY POUR is descriptive and informational in nature.” 7 TTABVUE 22.16 Applicant’s specimens all identify the source of the goods through the prominent display of Applicant’s VALVOLINE house mark and stylized “V” mark in a central position within an oval design, as shown again below: 16 Applicant’s attempt to distinguish its use of the words EASY POUR from the third-party uses of “easy pour” on the ground that those uses “all show the terminology ‘easy pour’ in very close proximity to the package spouts,” and because its use is “not directly linked to the package spouts through which the product would be poured,” 7 TTABVUE 21-22, is specious. Although the words EASY POUR do not appear on Applicant’s package as close to the actual package spout as they do on the third-party packages, they appear in the proposed mark right next to a depiction of the spout in use. Serial No. 87707717 - 15 - Like the word “NEW” to the upper left of Applicant’s word and letter marks, the proposed mark is positioned to the upper right of those marks, near the bottle handle, which, like the spout shown in the proposed mark, is a package feature that comes into play when lubricants are poured from the package. Applicant’s reliance on the non-precedential decision in In re The Language Workshop of Children is similarly unavailing. Non-precedential decisions are not binding on the Board, In re Procter & Gamble Co., 105 USPQ2d 1119, 1120-21 (TTAB 2012), but the cited case is readily distinguishable in any event. As shown below, the display of the claimed mark in that case was more central and prominent than the display of the proposed mark here, and the claimed mark was denominated as such by an accompanying trademark symbol that signaled to consumers that the applicant claimed proprietary rights in the words “For Tots™”: As discussed above, Applicant’s proposed mark is set off from the center of the package and, unlike the VALVOLINE and V marks that occupy the center, it is Serial No. 87707717 - 16 - unaccompanied by any indication that would signal to consumers that Applicant also claims that the proposed mark is proprietary to it. We also find unpersuasive Applicant’s argument that “[n]o other wording appears with EASY POUR to give the terms any clear context or to link the terms to a particular product feature.” 7 TTABVUE 22. No such verbal context or link is needed. Applicant acknowledges that “[u]se of the products is accomplished by pouring goods out of the bottles,” id. at 11, and that “the wording EASY POUR is descriptive and informational in nature.” Id. at 22. The wording could not plausibly be understood to mean anything other than that Applicant’s package makes it easy to pour the identified lubricants that are contained within. In addition, as noted above, the design element in the proposed mark, which Applicant describes as “the spout of an open oil bottle top, with a drop of liquid dripping out of the spout,”17 visually illustrates one of the product features that contributes to the ease with which lubricants can be poured, and thus visually “link[s] the terms to a particular product feature.” Id. Applicant’s specimens include the shelf talker depicted below: 17 December 4, 2017 Application at TSDR 1. Serial No. 87707717 - 17 - 18 This specimen states that it is “INTRODUCING VALVOLINE’S NEW EASY POUR DESIGN” and displays four particular features of the “new easy pour design.” The text accompanying the pictures is blurry and hard to read, but one feature is the “Easy-Pull Tab” and another appears to the “Precision Pour Spout.” A third feature also appears to involve the portion of Applicant’s packaging shown in the applied-for mark. This specimen removes any doubt that the words “EASY POUR” and the spout design that comprise the proposed mark do nothing more than communicate that the 18 Applicant’s December 4, 2017 Specimen of Use at TSDR 1. Serial No. 87707717 - 18 - VALVOLINE packages on which they appear make it easy to pour Applicant’s lubricants from the packages. We agree with the Examining Attorney that Applicant’s proposed mark “will only be seen as touting a feature of [the] goods, as seen in the submitted specimens and the evidence of record.” 9 TTABVUE 15. The proposed mark fails to function as a mark on the specimens of record and it is thus ineligible for registration on the Principal Register. Accordingly, we need not reach the likelihood-of-confusion ground for refusal. Decision: The failure-to-function refusal to register is affirmed. Copy with citationCopy as parenthetical citation