In In Re Cynosure Inc., the Trademark Trial and Appeal Board (TTAB) applied the test determining the likelihood of confusion while affirming the Examining Attorney’s refusal of Cynosure Inc.’s mark, CYNERGY (76653359). The latter would be used in conjunction with medical lasers for the purpose of cosmetic and medical treatment of the face, available for direct sale to licensed medical practitioners. The applicant’s mark was refused under 15 U.S.C. § 1052(d) on the grounds that it would likely be confused with the registered mark SYNERGIE PEEL with regards to medical devices used to practice microdermabrasion.

In Re Vertex LLC, the Trademark Trial and Appeal Board (“TTAB”) affirmed the examining attorney’s refusal to register the applicant’s sound mark in connection with a child’s bracelet designed as a personal security alarm.The TTAB found that the product did not serve to identify and distinguish the source of applicant’s goods from similar goods of others. The TTAB also found that the proposed sound mark was not registrable because it is functional – the use of the alarm is essential to the purpose of the applicant’s product.

The TTAB affirmed the decision of In re General Electric Broadcasting Co., Inc.,199 USPQ 560, 563(TTAB 1978) where it was found that when sounds are arbitrary, unique or distinctive so as to attach to the mind of the listener, registration may be possible. On the other hand, in order for common place sounds to become registrable they need to have acquired distinctiveness. For goods that make a particular sound in their normal course of operation, registration is possible only if distinctiveness is acquired. The applicant’s mark had not acquired distinctiveness.

In In Re Spirits International, N.V, the United States Court of Appeals for the Federal Circuit (CAFC) remanded an appeal from theTrademark Trial Appeals Board (TTAB), In Re Spirits International, N.V (86 USPQ2d 1078) ["Spirits"], where the TTAB affirmed the decision of the U.S. Patent and Trademark Office (PTO). The PTO based its rejection of Spirit’s mark “MOSKOVSKAYA” (74/382,759) for registration in connection with vodka, on 15 U.S.C. § 1052(a) & (e)(3). However, the TTAB narrowed the relevant section to 15 U.S.C. § 1052(e)(3) and concluded that the mark was primarily geographically deceptively misdescriptive given that Russia is well-known for its vodka.

At issue was the TTAB’s application of the third component of the test establishing a prima facie case that a mark is primarily geographically deceptively misdescriptive of wares, the materiality requirement