Trademark Review - CloudTV, StonShield, and Harry Winston (August 2014)

by Knobbe Martens Olson & Bear LLP
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“CloudTV” is Held to Be Generic and Fully Available for Use 

ActiveVideo Networks sought to register CLOUDTV for interactive, television content-based services offered by cable and satellite television providers to television customers. 

The Patent and Trademark Office (“PTO”) Examining Attorney refused registration on the ground that the term is generic and, alternatively, that the mark is merely descriptive and has not acquired distinctiveness.   On appeal, the Trademark and Trial Appeal Board (“Board”) confirmed the Examining Attorney’s refusal.  The Board disagreed with the applicant’s attempts to demonstrate that “cloud” is an ambiguous term when considered in conjunction with its goods and services.  In fact, the evidence showed the applicant repeatedly used the term “cloud” to describe its own goods and services. 

The applicant also argued that the PTO has permitted numerous similar marks for computer software and related services to register.  In response, the Board noted that rapid innovation in relation to online video streaming, interactive television and video-on-demand has led to quick adoption of terms, like cloud, by consumers.  The Board noted that a term that was once distinctive, may become generic.  The Board found the PTO met the burden of demonstrating by clear and convincing evidence that the relevant public perceive “CloudTV” to be a generic term for television provided through a video-on-demand service to consumers having screens connected to the Internet.  

Despite the applicant’s assertion that “CloudTV” cannot be generic because the applicant coined the term, the Board found that “CloudTV” names the “central focus” or “key aspect” of the applicant’s goods and services,  and thus, is generic.  The Board also affirmed the alternative refusal that the mark is merely descriptive and has not acquired distinctiveness.   

In re ActiveVideo Networks, Inc., Serial No. 77967395 (TTAB July 9, 2014) [Precedential]. 


Despite the Board’s Error in Analyzing Pronunciation, STONSHIELD is Still Held Not Similar to ARMORSTONE

StonCor Group opposed registration of the mark ARMORSTONE, asserting likelihood of confusion with StonCor’s registered mark STONSHIELD.  The Board dismissed the opposition finding no likelihood of confusion.  StonCor appealed to the Federal Circuit.  The Federal Circuit ruled that although the Board erred in part of its analysis, the error was harmless because the dismissal was supported by substantial evidence and in accordance with the law, and thus, affirmed the ruling.  

The Board found that the spelling of “STON” dictated that the “o” would be pronounced with a short vowel sound, as in the word “on.”  Based on this pronunciation, the Board found there was a dissimilarity in pronunciation between STONSHIELD and ARMORSTONE.  The Board gave little weight to StonCor’s evidence that suggested consumers would pronounce “STON” as “stone.”  The Federal Circuit found the Board’s pronunciation analysis was not supported by substantial evidence. There is no correct pronunciation of a trademark that is not a recognized word.  When a trademark is not a recognized word, and the weight of the evidence supports a finding for a particular pronunciation, the Court held it is error for the Board to ignore that evidence entirely and supply its own pronunciation.  

Stoncor Group, Inc. v. Specialty Coatings, Inc. 2013-1448, Opposition No. 91187787 (July 16, 2014, United States Court of Appeals for the Federal Circuit).


A Family Feud Over the Family Name

Harry Winston Inc. has prevailed in its opposition to registration of BRUCE WINSTON, the name of Harry Winston’s son.   

Harry Winston is one of the most well-known names in fine jewelry.  For over 80 years Harry Winston, Inc. has used the marks WINSTON and HARRY WINSTON in connection with jewelry, and owns several registrations incorporating those marks.  Harry’s son Bruce Winston is the chairman of the corporation, Bruce Winston Gem Corp., which was formed in 2002 (long after Harry Winston’s death in 1978).  Both companies sell high-end jewelry with particularly large gemstones, large numbers of gemstones, or both.  The jewelry sells  for a few thousand dollars, a few hundred thousand dollars and, in some cases, a few million dollars.

The Board found the WINSTON and HARRY WINSTON marks to be famous in the jewelry industry for purposes of analyzing likelihood of confusion.  The Board noted numerous examples of the notoriety of the HARRY WINSTON brand for jewelry.  For example, in the 1953 movie “Gentlemen Prefer Blondes,” Marilyn Monroe sang the song “Diamonds Are a Girl’s Best Friend” which includes the lyric “Talk to me, Harry Winston, tell me all about it.” Harry Winston himself was very well known in the industry, having donated the Hope diamond to the Smithsonian Institution.  One of the rooms in the Smithsonian’s National Museum of Natural History is named “The Harry Winston Gallery.”  Beginning in the 1940’s, Harry Winston would lend his jewelry to celebrities to wear at red carpet events such as the Oscars, and continued to do so for decades, resulting in significant publicity.  Even Princess Diana was photographed wearing HARRY WINSTON jewelry.

In addition, the Board found that the evidence demonstrated a “strong proclivity among the press and other third parties to spontaneously perceive and promote an association between applicant’s founder and opposers’ founder and a connection between their two businesses.”  Bruce Winston even acknowledged that to him, being Bruce Winston means being the son of a famous jeweler.  This factor also strongly supported a finding of likelihood of confusion.

Harry Winston Inc. et al., v. Bruce Winston Gem Corp., Opposition No. 91153147 (TTAB July 9, 2014) [Precedential]. 

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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