Wednesday, June 03, 2015

CAFC affirms TTAB in Beling

The CAFC affirmed the TTAB because appellant had not produced evidence:

Joel Beling appeals from the Trademark Trial and
Appeal Board’s dismissal on summary judgment of his
petition to cancel Ennis, Inc.’s trademark. Mr. Beling
alleged that Ennis’s trademark is generic and merely
descriptive of Ennis’s printing services, and was fraudulently
procured. Because Mr. Beling failed to produce
evidence sufficient for a reasonable person to find in his
favor, we affirm.
On May 18, 2011, Mr. Beling filed an application to
register COLOR WARS based on his intent to use the
mark in commerce. On February 15, 2012, Ennis filed an
opposition to Mr. Beling’s application, alleging a likelihood
of confusion with its trademark, the stylized version
of COLORWORX shown below. Ennis had previously
registered this mark for “printing services.”


None of Mr. Beling’s evidence suggests that Ennis
knew that a confusingly similar mark was already in use
or that Ennis intended to deceive the PTO that such
marks did not exist. At most, Mr. Beling’s evidence of
third-party marks might suggest that Ennis should have
known that they existed. But to prove fraudulent misrepresentation,
a party must show actual knowledge, and
Mr. Beling has failed to submit any evidence that tends to
show Ennis actually knew the marks existed.


Mr. Beling also submitted dictionary definitions for “color”
and “works.” But Mr. Beling fails to submit any evidence
of how the public understands those words when used
together in a compound form. See Princeton Vanguard,
LLC v. Frito-Lay N. Am., Inc., __ F.3d __, No. 14-1517,
2015 WL 2337417, at *3 (Fed. Cir. May 15, 2015) (noting
that to determine whether compound terms are generic,
“the Board must consider the record evidence of the
public’s understanding of the mark as a whole.”); DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695
F.3d 1247, 1252 (Fed. Cir. 2012) (“When determining
whether a mark is merely descriptive, the Board must
consider the commercial impression of the mark as a


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