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Keywords

appealtrialpatenttrademarksustained

appealtrialwilltrademarkharassment

Related Cases

Otto Roth & Co., Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 U.S.P.Q. 40

Facts

This case involves an appeal from a decision by the United States Patent and Trademark Office Trademark Trial and Appeal Board, which sustained an opposition against the registration of the trademark 'ESPRIT NOUVEAU' for cheese products by Otto Roth & Company, Inc. The opposition was filed by Lankor International, Inc., which had previously applied for the trademark 'BRIE NOUVEAU' for similar goods. The Board found that 'BRIE NOUVEAU' was merely descriptive of the goods and that there was a likelihood of confusion between the two marks.

Issue

Whether the trademark 'ESPRIT NOUVEAU' should be registered given the opposition based on the prior use of 'BRIE NOUVEAU' and the issue of distinctiveness.

Rule

Under the Lanham Act, a trademark may not be refused registration on the principal register solely based on its nature unless it resembles a mark already registered or used by another that is likely to cause confusion. Additionally, a mark must be distinctive, either inherently or through secondary meaning, to qualify for registration.

Analysis

The Board's decision hinged on the distinctiveness of 'BRIE NOUVEAU.' Since it was previously determined to be merely descriptive, it could not serve as a basis for opposing the registration of 'ESPRIT NOUVEAU' unless it had acquired secondary meaning. The court noted that the likelihood of confusion must be assessed based on the distinctiveness of the opposer's mark, which was not established in this case.

The board stated, as we have pointed out above, that prior use of a term in a descriptive sense is sufficient to successfully oppose registration of an otherwise registrable mark provided (1) there is a likelihood that consumers will confuse the two and thus the source of the goods to which they are applied, or (2) that a registration would frustrate the opposer's right to use the term in a descriptive sense unhindered and free from harassment.

Conclusion

The court vacated the Board's decision and remanded the case for further proceedings to determine the distinctiveness of 'BRIE NOUVEAU.'

We vacate the decision below and remand the case to the board for determination of the issue of the distinctiveness of BRIE NOUVEAU and for further proceedings consistent with this opinion.

Who won?

The prevailing party in this case is Otto Roth & Company, Inc. The court found that the Trademark Trial and Appeal Board had erred in its analysis by not properly considering the distinctiveness of the opposer's mark, 'BRIE NOUVEAU.' As a result, the court vacated the Board's decision, allowing Otto Roth to pursue the registration of 'ESPRIT NOUVEAU' without the opposition being sustained.

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