Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1044526
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`Filing date:
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`03/24/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`Applicant
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`86670074
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`QVC, Inc.
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`Applied for Mark
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`DENIM & CO.
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`Correspondence
`Address
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`KIERAN G DOYLE
`COWAN LIEBOWITZ & LATMAN PC
`114 WEST 47TH STREET
`NEW YORK, NY 10036-1525
`UNITED STATES
`trademark@cll.com, rxa@cll.com, kgd@cll.com
`212-790-9200
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`Submission
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`Attachments
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Appeal to District Court
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`Applicants Notice of Civil Action.pdf(718971 bytes )
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`Kieran G. Doyle / Dasha Chestukhin
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`trademark@cll.com, rxa@cll.com, kgd@cll.com, dxc@cll.com
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`/Dasha Chestukhin/
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`03/24/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In re Application of QVC, Inc.
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`Mark: DENIM & CO.
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`Class: 25
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`Serial No. 86/670,074
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`Filed: June 22, 2015
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`Examining Attorney: David I, Law Office 114
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`APPLICANT’S
`NOTICE OF CIVIL ACTION
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`PLEASE TAKE NOTICE that, pursuant to 15 U.S.C. § 1071(b), 37 C.F.R. § 2.145(c)(2)
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`and Trademark Trial and Appeal Board Manual of Procedure § 903, Applicant QVC, Inc.
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`(“Applicant”) hereby notifies the Board that, on March 23, 2020, Applicant filed a complaint in
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`the United States District Court for the Eastern District of Virginia, under the caption QVC, Inc.
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`v. Iancu, Case No. 1:20-cv-00319, a copy of which is attached hereto as Exhibit 1, seeking
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`judicial review of the Board’s decision dated January 21, 2020 affirming the partial refusal of the
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`above-captioned Application (TTABVUE No. 18) (the “Decision”), including the findings,
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`determinations, orders, decisions, rulings and opinions contained in the Decision.
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`Dated: New York, New York
`March 24, 2020
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` 21324/602/3460417.1
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`Respectfully submitted,
`COWAN LIEBOWITZ & LATMAN, P.C.
`Attorneys for Applicant QVC, Inc.
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`By: __________________________________
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`Kieran G. Doyle
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`Dasha Chestukhin
`114 West 47th Street
`New York, New York 10036
`(212) 790-9200
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`21324/602/3460417.1
` 21324/602/3460417.1
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`Exhibit 1
`Exhibit 1
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`Case 1:20-cv-00319 Document 1 Filed 03/23/20 Page 1 of 15 PageID# 1
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`
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`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
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`__________________________________________
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`QVC, Inc.
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`1200 Wilson Drive
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`West Chester, PA 19380
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`Plaintiff,
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`) CASE NO. _________________
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`vs.
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`ANDREI IANCU,
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`In his official capacity as Director of the
`United States Patent and Trademark Office, )
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`600 Dulany Street, Madison East
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`Concourse Level
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`Alexandria, VA 22314
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`Defendant.
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`__________________________________________)
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`COMPLAINT
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`QVC, Inc. (“Plaintiff” or “QVC”), by counsel, as and for its Complaint against
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`Defendant, Andrei Iancu, in his capacity as the Director of the United States Patent and
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`Trademark Office (the “Director”), alleges as follows:
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`PARTIES, JURISDICTION AND VENUE
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`1.
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`QVC, Inc. is a Delaware Corporation with its principal headquarters at 1200
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`Wilson Drive, West Chester, Pennsylvania 19380.
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`2.
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`Andrei Iancu is the Director of the U.S. Patent and Trademark Office with an
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`Case 1:20-cv-00319 Document 1 Filed 03/23/20 Page 2 of 15 PageID# 2
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`address at 600 Dulany Street, Madison East, Concourse Level, Alexandria, VA 22314.
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`3.
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`This Court has jurisdiction over the subject matter of this action pursuant to
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`Section 21(b) of the U.S. Trademark Act of 1946 (the “Lanham Act”), as amended, 15 U.S.C. §
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`1071(b), which provides that a party dissatisfied with a final decision of the Trademark Trial and
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`Appeal Board (“TTAB”) may institute a new civil action in a Federal District Court challenging
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`such decision. This Court also has subject matter jurisdiction pursuant to 28 U.S.C. § 1331.
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`4.
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`Venue is proper in this district pursuant to 28 U.S.C. § 1391(e)(1)(A).
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`FACTUAL BACKGROUND
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`QVC, Inc.
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`5.
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`QVC is one of the world’s largest multimedia retailers and broadcasters.
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`Headquartered in the United States, QVC offers direct response retail services primarily by
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`means of television, including cable, satellite and over-the-air broadcasts, as well as via the
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`Internet.
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`6.
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`QVC was founded in 1986 by entrepreneur Joseph Segel, who saw an opportunity
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`for a new kind of retail service built upon technology, yet guided by three customer-focused
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`principles: quality, value and convenience.
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`7.
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`Within its first year of operations, QVC set a new record for first full-year fiscal
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`sales by a new public company in the U.S., garnering over U.S. $112 million in revenue.
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`8.
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`The first live QVC broadcast took place in the U.S. on November 24, 1986.
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`Initially, QVC’s live broadcast ran for 16 hours per day. Today, QVC’s live programs in the
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`U.S. are now broadcast 24 hours per day, 7 days per week, and are live 364 days out of the year.
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`9.
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`QVC now has three television networks: QVC, QVC2, and QVC3.
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`Case 1:20-cv-00319 Document 1 Filed 03/23/20 Page 3 of 15 PageID# 3
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`10.
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`Since 1996, QVC has also offered its direct response retail services via the
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`Internet. In that year, QVC launched qvc.com.
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`11.
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` QVC’s website and mobile apps have been enormously popular. In 2019 alone,
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`there were nearly 840 million digital sessions across QVC’s U.S. website, mobile web, and apps.
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`12.
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`Since 2002, a live stream of the QVC broadcast appears on the U.S. websites.
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`13.
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`In 2006, QVC expanded its reach on the Worldwide Web by establishing
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`accounts with Facebook and Twitter, two of the world’s most popular and trafficked social
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`networking sites, as well as YouTube, the highly trafficked video sharing website. These sites
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`have been enormously popular with consumers worldwide.
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`14.
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`As of March 20, 2020, QVC has over 2 million Facebook fans.
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`15.
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`By any measure – program reach, number of customers served, or financial and
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`sales revenue – QVC is among the largest multi-platform, direct response retailers in the world.
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`In 2019, QVC reached 92 million homes in the U.S. and served over 8 million customers. : In
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`fiscal year 2019, of QVC’s $10.99 billion in global net revenue, approximately $8.28 billion was
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`generated in the U.S.
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`16.
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`QVC sells a wide variety of goods, including third-party vendor products. QVC
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`also sells products that are manufactured by third-party manufacturers, but are branded with
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`QVC’s trademarks and private labels (“Proprietary Brands”).
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`17.
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`92% of QVC sales come from repeat customers.
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`18.
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`Existing QVC customers order 26 items per year.
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`
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`The DENIM & CO. Trademark
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`19.
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`DENIM & CO. is QVC’s most popular and best-selling Proprietary Brand of
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`Case 1:20-cv-00319 Document 1 Filed 03/23/20 Page 4 of 15 PageID# 4
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`clothing.
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`20.
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`Since 1994, QVC has used the mark DENIM & CO. in connection with and on
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`women’s apparel.
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`21.
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`Over the brand’s 26-year history, QVC has sold over 125,000,000 units of
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`DENIM & CO.-branded garments in the U.S. These sales translated to over $3.5 billion dollars
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`in revenue.
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`22.
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`In 2019 alone, QVC shipped 4,412,975 orders for DENIM & CO. apparel items.
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`23.
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`In 2019, QVC shipped an average of over 12,000 orders for DENIM & CO.
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`apparel items per day.
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`24.
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`QVC’s DENIM & CO. web pages on qvc.com received an average of 980,000
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`unique U.S. visitors per month over the 14-month period from January 2019 through February
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`2020.
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`25.
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`Over 5 million QVC customers have signed up to join QVC’s email list. Those
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`who have purchased DENIM & CO. products in the past receive emails promoting the DENIM
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`& CO. brand. From time to time, even those who have not previously purchased DENIM & CO.
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`products will also receive emails promoting the DENIM & CO. brand.
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`26.
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`The DENIM & CO. line of women’s apparel covers a wide range of garments,
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`among them, shirts, dresses, skirts, tops, bottoms, sweaters, shorts, pants, jackets, leggings, t-
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`shirts, and swimwear.
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`27.
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`The unitary DENIM & CO. mark was chosen by QVC not as a narrow reference
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`to the material fabrication of the clothing in this line, but rather to convey to its consumers that
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`DENIM & CO. clothing is relaxed and comfortable, perfectly in keeping with the casual “denim
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`lifestyle.” Accordingly, while some of the garments in the DENIM & CO. line are, in fact, made
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`Case 1:20-cv-00319 Document 1 Filed 03/23/20 Page 5 of 15 PageID# 5
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`in whole or significant part of denim, others are not. Indeed, some of the garments – such as
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`sweaters, t-shirts, and swimwear – by their very nature, could not possibly be made of denim.
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`28.
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`The unitary mark DENIM & CO. was designed to inform consumers that the
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`product line goes well beyond items made from denim. Combining “& Co.” with a common
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`noun, such as a fabric type, creates an odd juxtaposition which conveys to consumers that the
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`mark refers to Denim fabrics “and so much more”, indicating that other fabrics are also offered
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`in the DENIM & CO. clothing line.
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`29.
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`The fabric content of DENIM & CO. clothing is clearly communicated to QVC
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`consumers. Both on air and online, during the audio/visual presentations that are part of the
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`purchasing events, QVC identifies the material from which its DENIM & CO. garments are
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`made; thus, there can be no plausible question of deception. These materials include jersey,
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`cotton, gauze, gingham, seersucker, linen, terry, stretch lace, mesh lace, and leather, to name a
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`few.
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`30.
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`QVC is not alone in using the term “denim” as part of a trademark for both denim
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`and non-denim apparel. For example, Ralph Lauren has a line called “DENIM & SUPPLY,”
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`that like QVC’s DENIM & CO. line, is intended to be casual and comfortable and, like QVC’s
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`line, Ralph Lauren’s DENIM & SUPPLY line includes many items that are not denim in
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`fabrication.
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`31. With millions of consumers purchasing clothing items from QVC’s DENIM &
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`CO. line over a 26-year period, it is clear that consumers are purchasing these items due to the
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`high quality of these goods and due to the well-established fame and extensive goodwill
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`associated with the DENIM & CO. mark, and not because of their mistaken notion that QVC’s
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`jersey, cotton, gauze, gingham, seersucker, linen, terry, lace, and leather clothing is made of
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`Case 1:20-cv-00319 Document 1 Filed 03/23/20 Page 6 of 15 PageID# 6
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`denim.
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`
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`The Procedural History in the Trademark Trial and Appeal Board
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`32.
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`On June 22, 2015, QVC filed a use-based federal trademark application for the
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`mark DENIM & CO., Application Serial No. 85/485,097, in Class 25 for various items of
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`women’s clothing (“Application”).
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`33.
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`Following a series of Office Actions and Office Action responses, QVC amended
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`the description of goods in the Application to read:
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`Women’s clothing, namely, shirts, dresses, skirts, tops, bottoms, sweaters, shorts, pants,
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`jackets, leggings, t-shirts made in whole or substantial part of denim; and
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`women’s clothing, namely, shirts, dresses, skirts, tops, bottoms, sweaters, shorts, pants,
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`jackets, leggings, t-shirts made of materials other than denim all sold through
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`interactive television and interactive online media wherein the clothing products
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`offered for sale are modeled and whereby detailed information regarding such clothing
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`products is provided including information as to the fabrics and materials from which
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`such clothing products are made.
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`(emphasis added).
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`34.
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`On August 13, 2018, the Examining Attorney issued a Final Action in which he
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`accepted the above amendment of goods, approved the Application as to the clothing items made
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`in whole or in part from denim, but rejected the Application as to the following goods:
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`Women’s clothing, namely, shirts, dresses, skirts, tops, bottoms, sweaters, shorts, pants,
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`jackets, leggings, t-shirts made of materials other than denim all sold through
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`interactive television and interactive online media wherein the clothing products
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`Case 1:20-cv-00319 Document 1 Filed 03/23/20 Page 7 of 15 PageID# 7
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`offered for sale are modeled and whereby detailed information regarding such clothing
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`products is provided including information as to the fabrics and materials from which
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`such clothing products are made.
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`(emphasis added).
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`35.
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`The Examining Attorney based this refusal on his opinion that consumers seeing
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`the DENIM & CO. applied to apparel “sold through interactive television and interactive online
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`media wherein the clothing products offered for sale are modeled and whereby detailed
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`information regarding such clothing products is provided including information as to the fabrics
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`and materials from which such clothing products are made” would, nonetheless, be deceived into
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`thinking those clothes are made of denim.
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`36.
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`This partial refusal rested on the Examining Attorney’s determination that
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`DENIM & CO. as applied to “women’s clothing, namely, shirts, dresses, skirts, tops, bottoms,
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`sweaters, shorts, pants, jackets, leggings, t-shirts made of materials other than denim all sold
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`through interactive television and interactive online media wherein the clothing products offered
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`for sale are modeled and whereby detailed information regarding such clothing products is
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`provided including information as to the fabrics and materials from which such clothing products
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`are made” is deceptive under Trademark Act Section 2(a), 15 U.S.C. § 1052(a) and deceptively
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`misdescriptive under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1).
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`37.
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`QVC appealed this refusal to the TTAB on February 11, 2019.
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`38.
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`QVC filed an Appeal Brief on February 14, 2019 and a Reply Brief on April 30,
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`2019. The Examining Attorney filed an Appeal Brief on behalf of the United States Patent and
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`Trademark Office on April 10, 2019.
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`Case 1:20-cv-00319 Document 1 Filed 03/23/20 Page 8 of 15 PageID# 8
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`39.
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`On September 18, 2019, at QVC’s request, the appeal was argued before a three-
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`judge panel of the TTAB.
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`
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`The Ruling of the Trademark Trial and Appeal Board
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`40.
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`In a 2-1 Opinion, with a robust dissent, the TTAB majority affirmed the
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`Examining Attorney’s refusal to register DENIM & CO. for “women’s clothing, namely, shirts,
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`dresses, skirts, tops, bottoms, sweaters, shorts, pants, jackets, leggings, t-shirts made of materials
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`other than denim all sold through interactive television and interactive online media wherein the
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`clothing products offered for sale are modeled and whereby detailed information regarding such
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`clothing products is provided including information as to the fabrics and materials from which
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`such clothing products are made.” In re QVC, Inc., 2020 BL 40314 (T.T.A.B. 2020), Attached
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`as Exhibit A hereto.
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`41.
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`The majority was correct when it set forth the test for deceptiveness, stating:
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`A proposed mark must be refused as deceptive if: (1) it consists of or comprises a
`term that misdescribes the character, quality, function, composition, or use of the
`goods; (2) prospective purchasers are likely to believe that the misdescription
`actually describes the goods; and (3) the misdescription is likely to affect the
`purchasing decision of a significant or substantial portion of relevant consumers.
`In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988); see
`also In re Tapco Int’l Corp., 122 USPQ2d 1369, 1371 (TTAB 2017); cf. In re
`Miracle Tuesday, LLC, 695 F.3d 1339, 104 USPQ2d 1330, 1334 (Fed. Cir. 2012)
`(the test for materiality incorporates a requirement that a significant portion of the
`relevant consumers be deceived).
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` In re QVC, Inc., 2020 BL 40314 at 2 (emphasis added).
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`But the majority failed to apply this test and, therefore, its decision was not in
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`42.
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`accordance with the law.
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`43.
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`Specifically, in assessing the facts and reaching its legal conclusions, the majority
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`Case 1:20-cv-00319 Document 1 Filed 03/23/20 Page 9 of 15 PageID# 9
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`read the word “likely” out of the three-part test.
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`44.
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`The word “likely” only appears in the majority’s decision when setting forth the
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`test for deceptiveness and when quoting or referencing other cases. The majority never used the
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`work “likely” when evaluating the evidence or making factual and legal determinations. Instead,
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`the majority’s findings and conclusions with regard to the second and third prongs of the test
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`illustrate that it applied some lower standard.
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`45.
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`The majority used words and phrases like “believable,” “plausible,” “does not
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`prevent a consumer from believing,” “may,” “may not,” and “potential deception.” None of
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`these are synonyms for “likely” and none convey the impression of being “very probable.”1
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`46.
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`The majority also erred by not evaluating the registrability of DENIM & CO. as
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`that mark relates to the goods actually listed in the Application.
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`47.
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`The majority did acknowledge:
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`Registrability of a mark is always considered in conjunction with the identified
`goods or services, for an applicant cannot obtain rights in a mark in the abstract,
`only in connection with specified goods or services. In re ALP of S. Beach Inc.,
`79 USPQ2d 1009, 1019 (TTAB 2006); see also Roselux Chem. Inc. v. Parson’s
`Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962) (whether a
`term or mark is merely descriptive must be decided in relation to the goods for
`which registration is sought and the impact that it is likely to make on the average
`purchaser of those goods).
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`In re QVC, Inc., 2020 BL 40314 at 2.
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`48.
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`As the TTAB dissent correctly noted, “the majority fail[ed] to give proper weight
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`to the explanatory information in the description of goods.” Id. at 13.
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`49.
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`The majority erred by suggesting that the description of goods found in the
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`1 MERRIAM-WEBSTER DICTIONARY ONLINE, https://www.merriam-webster.com/dictionary/likely
`(last visited Mar. 23, 2020).
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`Case 1:20-cv-00319 Document 1 Filed 03/23/20 Page 10 of 15 PageID# 10
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`Application included the term “fabric content.” The description of goods found in the
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`Application never refers to “fabric content”, such as 85% cotton and 15% spandex.
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`50.
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`Instead, the Application refers to “fabrics and materials,” such as lace, terry,
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`denim, gingham, fleece, poplin, textured knit, waffle, waffle knit, chenille, crepe, corduroy,
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`jersey, gauze, seersucker, linen, leather, and taffeta.
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`51.
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`The majority erred when it suggested that QVC was seeking to register DENIM &
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`CO. for apparel for which either advertisements or labels alone would provide consumers the
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`information regarding the fabric and material from which the apparel was made.
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`52.
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`The goods for which Applicant seeks registration are “all sold through interactive
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`television and interactive online media wherein the clothing products offered for sale are
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`modeled and whereby detailed information regarding such clothing products is provided
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`including information as to the fabrics and materials from which such clothing products are
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`made.”
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`53.
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`The description of goods in the DENIM & CO. Application makes no mention of
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`advertisements or labels as the vehicles through which the types of fabrics and materials are
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`communicated. Rather, it refers to the information being communicated in the immediate,
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`inseparable context of the purchasing event.
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`54.
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`To the extent the majority based its decision on advertisements for DENIM &
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`CO. apparel, it committed error. As noted by the dissent,
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`advertising is not relevant in the deceptiveness analysis. As noted above,
`registrability, even in a Section 2(a) refusal that Applicant’s mark is
`deceptive, is determined in connection with the description of goods or
`services at issue. In this appeal, Applicant’s description of goods includes
`the explanatory statement that the apparel is sold through interactive
`television and interactive online media where the clothing is modeled and
`‘detailed information regarding such clothing products is provided
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`Case 1:20-cv-00319 Document 1 Filed 03/23/20 Page 11 of 15 PageID# 11
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`including information as to the fabrics and materials from which such
`clothing products are made.’ The explanation of how the goods are sold as
`part of the description of goods cannot be ignored.
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`Id. at 15.
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`55.
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`The majority erred when it “assess[ed] whether prospective purchasers consider
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`denim clothing particularly appealing or desirable,” id. at 9, insofar as it assessed the desirability
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`of denim in relation to “clothing” generally as opposed to the clothing listed in the Application,
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`such as sweaters and t-shirts.
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`56.
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`The dissent correctly criticized the majority for focusing on clothing items, per se,
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`as opposed to the clothing items described in the Application and noted that because the law
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`requires the analysis to be conducted based on the description of goods found in the Application,
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`“[t]he explanation of how the goods are sold as part of the description of goods cannot be
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`ignored.” Id. at 15.
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`57.
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`The majority erred in concluding that the “& CO.” portion of the unitary mark
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`DENIM & CO. will be perceived as a mere corporate designation as opposed to a clever way of
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`saying “and more” or “and so much more.”
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`58. While “& CO.” following a proper noun may be perceived as a corporate
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`designation or as a reference to a group of additional individuals or entities, when “& Co.”
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`follows a common noun, such as a fabric type, it creates an odd juxtaposition which conveys to
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`consumers that the mark refers to Denim fabrics “and so much more”, indicating that other
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`fabrics are also offered in the DENIM & CO. clothing line.
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`59.
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`The majority erred when it held that “in the context of clothing, the mark gives
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`the impression of a business enterprise connected with denim fabric.” Id. at 5.
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`60.
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`This holding may have had some merit if the mark were DENIM CO. - - without
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`Case 1:20-cv-00319 Document 1 Filed 03/23/20 Page 12 of 15 PageID# 12
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`the “&.” But the inclusion of the “&” to form DENIM & CO. creates an altogether different
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`impression.
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`61.
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`As the dissent observed,
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`[ . . . ] “company” can mean a group. The mark DENIM & CO. when used
`in connection with denim clothing and clothing made from other materials
`engenders the commercial impression of denim and other materials in part
`due to Applicant’s long, extensive, and successful use of DENIM & CO.
`See Woolrich Woolen Mills, 13 USPQ2d at 1238 (holding that the
`significance of WOOLRICH is that of a trademark-indicating applicant
`because any descriptive or misdescriptive significance has been replaced
`by trademark significance as a result of applicant’s long and extensive
`use).
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`In re QVC, Inc., 2020 BL 40314 at 12.
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`62.
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`The dissent continued its discussion of the “& CO.” portion of the mark and in
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`doing so, addressed the majority’s errors:
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`The majority disagrees with the preceding analysis, arguing that the most
`common meaning of the word “Company” is a “business enterprise,”
`which makes sense if the mark were DENIM CO. However, the mark is
`DENIM & CO. used in connection with clothing made from denim and
`other materials. Thus, the meaning and commercial impression of the
`mark changes to a meaning and commercial impression that is not
`deceptive (i.e., denim and other materials).
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`Id.
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`63.
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`Further addressing the majority’s flawed reasoning, the dissent observed “the
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`majority does not explain the basis for holding that ‘it is too much of a stretch to expand this
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`definition to mean a group of other non-denim fabrics.’ The majority offers only a conclusion.”
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`Id. at 13.
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`64.
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`The majority was correct when it wrote:
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`[m]isdescriptiveness of a term may be negated by its meaning in the
`context of the whole mark inasmuch as the combination is seen together
`and makes a unitary impression. Budge, 8 USPQ2d at 1261 (citing A.F.
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`Case 1:20-cv-00319 Document 1 Filed 03/23/20 Page 13 of 15 PageID# 13
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`Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459,
`460 (TTAB 1962) (COPY CALF not deceptive of non-leather goods
`because the mark as a whole indicates the goods “are imitations or copies
`of wallets and billfolds made of calf skin”)); see also In re Simmons, Inc.,
`192 USPQ 331, 333 (TTAB 1976) (WHITE SABLE for “brushes used for
`artistic painting” is construed in light of the fact that the “characteristic
`color of sable fur is black” and thus white sable must come from a
`fictitious animal that cannot deceptively represent brush hair from a real
`animal).
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`In re QVC, Inc., 2020 BL 40314 at 3.
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`65.
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`The majority erred, however, in concluding that DENIM & CO. is a composite
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`mark, as opposed to a unitary mark.
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`66.
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`The majority erred when it found that “by entering a disclaimer in part, has
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`implicitly conceded that the mark is not unitary with respect to denim clothing.” Id.
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`67.
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`Applicant’s disclaimer of “denim” applied only to products made from denim and
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`was not a concession that the mark is not unitary.
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`68. Moreover, as noted by the dissent:
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`Applicant’s disclaimer of the term “Denim” is of little import because it
`applies to the clothing made of denim, not the goods at issue in the appeal.
`In other words, for purposes of this appeal, Applicant has not disclaimed
`the exclusive right to use the word “Denim.” In addition, consumers are
`not aware of disclaimers that reside in trademark registrations and they
`play little, if any, role in determining the meaning or commercial
`impression of a mark.
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`Id. at 12.
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`69.
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`In addition to affirming the partial refusal to register the mark as being deceptive,
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`the majority affirmed the partial refusal of the mark as deceptively misdescriptive.
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`70.
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`As the majority correctly noted, “the test for deceptive misdescriptiveness is
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`identical to the first two prongs of the deceptiveness test.”
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`71.
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`Because the majority’s many errors in assessing deceptiveness apply equally to its
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`Case 1:20-cv-00319 Document 1 Filed 03/23/20 Page 14 of 15 PageID# 14
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`assessment of whether DENIM & CO. is deceptively misdescriptive, its affirmance of the
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`Examining Attorney’s refusal based on deceptive misdescription was the product of errors in
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`both law and fact.
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`FIRST CAUSE OF ACTION
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`72.
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`Plaintiff incorporates by reference paragraphs 1 through 71 above as if the same
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`were fully set forth herein.
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`73.
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`The unitary trademark DENIM & CO. should be declared neither deceptive nor
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`deceptively misdescriptive in connection with “women’s clothing, namely, shirts, dresses, skirts,
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`tops, bottoms, sweaters, shorts, pants, jackets, leggings, t-shirts made of materials other than
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`denim all sold through interactive television and interactive online media wherein the clothing
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`products offered for sale are modeled and whereby detailed information regarding such clothing
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`products is provided including information as to the fabrics and materials from which such
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`clothing products are made,” and the Director should be directed forthwith to pass the mark to
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`publication.
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`PRAYER OF RELIEF
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`WHEREFORE, Plaintiff requests this Court enter judgment:
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`(a) Reversing the decisions of the TTAB, dated January 21, 2020, and directing the
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`Director forthwith to pass the Application to publication for registration on the Principal
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`Register; and
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`(b) Awarding Plaintiff such other relief as this Court may deem just and proper.
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`Case 1:20-cv-00319 Document 1 Filed 03/23/20 Page 15 of 15 PageID# 15
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`Dated: March 23, 2020
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`Respectfully submitted,
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`/s/ David I. Bledsoe
`David I. Bledsoe
`VSB 29826
`600 Cameron Street
`Suite 203
`Alexandria VA 22314
`Telephone: (703) 340-1628
`Fax: (703) 340-1642
`Email: bledsoelaw@earthlink.net
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`Counsel for Plaintiff QVC, Inc.
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`15
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`EXHIBIT A
`Case 1:20-cv-00319 Document 1-1 Filed 03/23/20 Page 1 of 12 PageID# 16
`In re QVC, Inc., 2020 BL 40314 (T.T.A.B. 2020)
`
`This Opinion Is Not a
`Precedent of the TTAB
`Hearing: September 18, 2019 Mailed: January 21, 2020
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`Pagination
`BL
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`*
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`In re QVC, Inc.
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`Serial No. 86670074
`
`Kieran G. Doyle of Cowan of Liebowitz & Latman, P.C. for QVC, Inc.
`
`David I, Trademark Examining Attorney, Law Office 114, Laurie Kaufman, Managing Attorney.
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`Before Mermelstein, Bergsman and Lynch, Administrative Trademark Judges.
`
`Opinion by Lynch, Administrative Trademark Judge:
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`I. Background and Motion to Amend
`QVC, Inc. (Applicant) seeks registration on the Principal Register of the mark DENIM & CO. (in standard character
`form) for the following goods in International Class 25:1
`Women's clothing, namely, shirts, dresses, skirts, tops, bottoms, sweaters, shorts, pants, jackets,
`leggings, t-shirts made in whole or substantial part of denim; and
`
`Women's clothing, namely, shirts, dresses, skirts, tops, bottoms, sweaters, shorts, pants, jackets,
`leggings, t-shirts made of materials other than denim all sold through interactive television and interactive
`online media wherein the clothing products offered for sale are modeled and whereby detailed information
`regarding such clothing products is provided including information as to the fabrics and materials from
`which such clothing products are made.
`
`The application includes a disclaimer of DENIM only as to "women's clothing, namely, shirts, dresses, skirts, tops,
`bottoms, sweaters, shorts, pants, jackets, leggings, t-shirts made in whole or substantially part of denim." Applicant
`also claimed ownership of a prior registration of the mark DENIM & CO. (in typed drawing form),2 with a disclaimer of
`DENIM, for "women's clothing made in whole or significant part of denim, namely jeans, pants, shirts, jackets, skirts,
`leggings and T-shirts," in Class 25.3
`The Examining Attorney partially refused registration of Applicant's mark under Trademark Act Section 2(a), 15 U.S.C.
`§ 1052(a) , as deceptive when used for the identified clothing "made of materials other than denim," and alternatively
`under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1) , as deceptively misdescriptive when used for the same
`goods. After the Examining Attorney made the partial refusal final, Applicant appealed. Applicant and the Examining
`Attorney filed briefs, and Applicant filed a motion to delete three items from its identification of goods. An oral hearing
`took place.
`On the same date as its Reply Brief, Applicant moved to amend its identification to delete from the list of clothing "in
`whole or substantial part of denim" "sweaters," "leggings," and "t-shirts," but explicitly stated that "Applicant does not
`request remand."4 However, the Board does not act on such proposed amendments during the pendency of an ex
`parte appeal without remanding the application to the Examining Attorney, and we therefore deny the motion. SeeT
`RADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1501.05 (2018); TRADEMARK TRIAL AND
`APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1205.01 (2019) (explaining Board procedure when an
`applicant files an amendment during the appeal); see alsoTBMP § 1204 ("once applicant has filed an appeal brief, a
`request for reconsideration, even if filed within six months of a final action, is treated as a request for remand for which
`good [*2] cause must be shown").
`Even a proposed deletion such as Applicant's often raises other issues requiring further examination. For example,
`Applicant's partial disclaimer is tied to the portion of the identification that Applicant proposes amending, and
`therefore requires a conforming amendment to strike from the partial disclaimer the same goods that would be
`deleted from the identification.5
`Despite our denial of this motion, Applicant may achieve its desired objective. Regardless of the ultimate outcome of
`this appeal of the partial refusal,