TTABlog Test: Is BRAINCARE Merely Descriptive of Goods and Services Related to Analysis of Brain Waves?

The USPTO refused to register the proposed mark BRAINCARE for various goods and services related to the analysis of brainwave activity, deeming the mark to be merely descriptive under Section 2(e)(1). Applicant argued on appeal that the terms “brain” and “care” include so many different definitions that the mark could relate to just about anything, that the mark is merely suggestive because it does not "identify" a type of software or service, and that third parties have registered marks that include those terms. How do you think this came out? In re Wave Neuroscience, Inc., Serial No. 90630144 (September 11, 2024) [not precedential] (Opinion by Judge Albert J. Zervas).

Examining Attorney Roger McDorman relied on dictionary definitions and on website references using the terms "brain care" or "braincare" in arguing that the proposed mark is merely descriptive of "things or activities that are used or provided for the purpose of caring for, i.e., analyzing, studying, treating, training, and otherwise determining the condition and/or furthering the well-being of, the brain."

As to applicant's argument that braincare could refer to "just about anything," the Board observed once again that the subject mark must be considered in the contest of the identified goods and services. “That a term may have other meanings in different contexts is not controlling.”

The webpages with “brain” juxtaposed with “care” consistently use the two-word term to identify a particular type of care, i.e., care for preserving or enhancing mental acuity.

Applicant's assertion that BRAINCARE does not identify a type of software or services was misplaced. "BRAINCARE does not need to be the common descriptive name for a type of software, a medical device, medical, scientific or clinical research, or medical services, to be refused registration as merely descriptive."

Finally, the third-party registrations relied on by applicant had no probative value. Some were for unrelated goods and services, others covered marks that contained matter additional to BRAINCARE, thereby distinguishing the marks. Moreover, they were too few in number to persuade the Board that the USPTO "considers BRAIN CARE or BRAINCARE as a suggestive term for Applicant’s Identified Goods and Services."

Upon consideration of all of the evidence of record and Applicant’s arguments, we conclude that Applicant’s proposed mark merely describes a purpose for Applicant’s Identified Goods and Services, without thought or conjecture. When considered separately, the two terms in the mark, BRAIN and CARE, each describe a purpose for Applicant’s Identified Goods and Services, namely, that they are used for, or involve, the care of the brain. When combined, the terms retain their meaning and do not convey “any distinctive source-identifying impression contrary to the descriptiveness of the individual parts.”

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Is this a no-brainer? i.e., a WYHA? Do you care?

Text Copyright John L. Welch 2024.

"A CHANCE TO LIVE LONGER" Fails to Function as a Source Indicator for Medical Information, Says TTAB

The Board affirmed a refusal to register the proposed mark A CHANCE TO LIVE LONGER in the stylized form below, for "Printed matter, namely, brochures and pamphlets in the field of cancer" and for "Medical information services," because Applicant Bristol-Myers refused to disclaim the phrase. The Board agreed with the USPTO that the phrase fails to function as a source indicator, and therefore must be disclaimed under Trademark Rule 6(a). In re Bristol-Myers Squibb Company, Serial No. 90536031 (September 6, 2024) [not precedential] (Opinion by Judge Robert H. Coggins).

Examining Attorney David Collier maintained that the phrase is unregistrable matter under Trademark Act Sections 1, 2, 3, and 45 because “it is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment and would not be perceived as distinguishing the goods and/or services and identifying their source." The Board agreed.

The Examining Attorney submitted evidence from more than twenty varied sources showing use of A CHANCE TO LIVER LONGER (with or without the initial “a”) in the medical context, and particularly for cancer-related information. He argued that people would understand the wording merely to mean that the medical information provided by the applicant will give people with cancer a chance to live longer than they might without the applicant’s pharmaceuticals. In addition, he submitted applicant’s press release in which "one medical professional is quoted using the exact wording of the proposed mark in a way that merely imparts information about Applicant’s pharmaceutical goods, and two other medical professionals advance the same idea with similar language."

Bristol-Myers contended that the USPTO registered “the identical phrase A CHANCE TO LIVE LONGER” to a third party, thereby demonstrating that the phrase is capable of serving as a trademark. It asserted that the phrase A CHANCE TO LIVE LONGER is not a commonplace message and is suggestive and aspirational, pointing to 50 registrations that cover similar aspirational slogans. And it argued that it uses A CHANCE TO LIVE LONGER in a manner that projects trademark and service mark significance because the "specimen shows that the slogan A CHANCE TO LIVE LONGER is presented in the same stylization and colors, and with the same embedded diagonal-streak design element, as the pharmaceutical brand name to which it relates."

The Board concluded, however, that the specimens show that prospective consumers of Bristol-Myers' goods and services will understand the phrase A CHANCE TO LIVE LONGER to refer to the possibility that cancer patients may live longer when using certain treatments that Applicant describes as “FDA approved” and have been demonstrated to “reduce[] the risk of dying.”

The Internet evidence made of record by the Examining Attorney demonstrates common use of the phrase A CHANCE TO LIVE LONGER in context with information about medicine and cancer, and shows that the same meaning of this phrase (i.e., the possibility of living longer) always attaches when informing consumers about pharmaceutical products and procedures related to cancer.

As to third-party registrations, the Board observed once again that it must assess registrability in each case on its own evidentiary record. "Here, our analysis must focus on the particular wording in Applicant’s proposed mark and its use in the marketplace rather than on registrations for other marks conveying different messages, especially when the evidence demonstrates that the phrase A CHANCE TO LIVE LONGER is commonly used in the marketplace to convey a particular informational message."

Accordingly, we find that the existence of these third-party registrations (and uses) for different “aspirational” marks for sometimes different services lacks probative force as to consumer perception of A CHANCE TO LIVE LONGER for the applied-for goods and services in light of the specific evidentiary record in this case.

Finally, the Board dismissed applicant's argument about the particular display of the phrase, noting that the issue was "whether the proposed phrase is such a commonplace expression that it would not be perceived a source indicator, not the particular mode or manner in which the mark is presented." In fact, the proposed mark has sufficient stylization to qualify for registration, if the phrase is disclaimed.

And so, the Board affirmed the refusal.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2024.

TTABlog Test: Which of these Three Section 2(d) Refusals Was/Were Reversed?

Here are three recent TTAB Decisions in Section 2(d) appeals. At least one of the appeals led to a reversal. How do you think they came out?

In re Kristian J. Bell, Serial No. 97497611 (September 10, 2024) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) refusal of the mark shown first below in view of the registered mark shown second below, both for real estate brokerage services.]

In re OxeFit, Inc., Serial No. 90556063 (September 10, 2024) [not precedential] (Opinion by Judge Robert Lavache) [Section 2(d) refusal of the mark shown below left in view of the registered mark below right, for legally identical and related software and services in the fields of fitness instruction, fitness equipment, and social networking.]

In re Oakley, Inc., Serial No. 97538932 (September 8, 2024) [not precedential] (Opinion by Judge Robert H. Coggins). [Section 2(d) refusal of the mark OAKLEY KATO for, inter alia, sunglasses in view of the registered mark CATO for sunglasses.]

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TTABlogger comment: See any WYHA?s?

Text Copyright John L. Welch 2024.

Precedential No. 22: Failure to Respond to Requests for Admissions Leads to Cancelled Registration

Tip from the TTABlog: never fail to respond to admission requests. Respondent Hua Yongfu did just that, and it led to summary judgment and an order to cancel his registration for the mark LEARN JOURNEY for various products in Class 16. Petitioner pleaded several grounds for cancellation, including abandonment. When Respondent failed to respond to its admission requests, Petitioner moved for summary judgment and the Board granted the motion. The Learning Journey International, L.L.C. v. Hua Yongfu, Cancellation No. 92082654 (September 6, 2024) [precedential].

FRCP 36(a)(3) provides that “[a] matter is admitted unless, within 30 days after being served, the party to whom the request is directed serves on the requesting party a written answer or objection addressed to the matter and signed by the party or its attorney.” Respondent did not respond to petitioner’s requests for admission in any manner, and so the requests were deemed admitted by operation of law.

As a result of the failure to respond, the subject matter of the requests is “conclusively established unless the [Board], on motion, permits the admission[s] to be withdrawn or amended” under Fed. R. Civ. P. 36(b), or reopens the time to respond to the admission requests “so that the admissions would not be deemed admitted as put.”

Respondent’s only argument in opposition to the motion was that “Petitioner cannot rely on Rule 36(a)(3) as their requests for admission asked Respondent to admit what it had already denied in a responsive pleading.” The Board was unmoved, citing Perez, 297 F.3d at 1269 (“[t]he mere fact that a party has previously denied the matter about which an admission is sought does not obviate the need to respond to a Rule 36 request for admissions”), quoting U.S. v. Young, 1990 WL 135734, at *2 (S.D.N.Y. Sept. 10, 1990).

Respondent had “two separate avenues for relief: … either (1) move to reopen its time to respond to the admission requests because its failure to timely respond was the result of excusable neglect under Fed. R. Civ. P. 6(b)[(1)(B)], or (2) move to withdraw and amend its admissions pursuant to Fed. R. Civ. P. 36(b).” Giersch, 85 USPQ2d at 1307. It did neither.

While the Board generally takes a liberal approach in construing responses to motions based on deemed admissions as motions to withdraw or amend the admissions or, to a lesser degree, to reopen time, Respondent has made no showing that we can construe as going to the two-part test prescribed under Rule 36(b) or to a showing of excusable neglect as required under Rule 6(b)(1)(B).

The Board noted that when matter has been conclusively established under Rule 36, it is taken as a judicial, rather than an evidential, admission that “cannot be rebutted by contrary testimony or ignored by the [Board] simply because it finds the evidence presented by the party against whom the admission operates more credible,” and this “applies equally to those admissions made affirmatively and those established by default, even if the matters admitted relate to material facts that defeat a party’s claim.” Am. Auto. Ass’n (Inc.) v. AAA Legal Clinic of Jefferson Crooke, P.C., 930 F.2d 1117, 19 USPQ2d 1142, 1144 (5th Cir. 1991)>

Responded admitted (by default) that it had not sold any of the goods listed in the registration and did not have an intention to do so. Even though it submitted some evidence in opposition to the summary judgment motion that might suggest some use of the mark, "such evidence cannot raise a genuine dispute as to the material facts that have been conclusively established through Respondent’s deemed admissions."

The Board therefore granted the motion for summary judgment on the ground of abandonment.

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TTABlogger comment: So, it's worthwhile to serve admission requests that go to the heart of the case even if you expect denials, since this scenario might arise.

Text Copyright John L. Welch 2024.<

TTABlog Test: Is LEATHER MAN LTD & Design Deceptive for Belts Not Made of Leather?

Invoking Section 2(a) of the Trademark Act, the USPTO refused to register the mark shown below, finding it deceptive for the following goods not comprised of leather: Belts; Belts for clothing; Belts made out of cloth; Belts of textile; Fabric belts; Waist belts. Applicant argued that the words "LEATHER MAN" would be perceived as referring to the “old Leather [M]an, … a vagabond [who] was famous for the leather suit of clothes he wore.” At the end of the 19th Century, the Leather Man meandered around the Essex, Connecticut area, "where he would have food and necessities ready for him upon his arrival." How do you think this appeal came out? In re Brockway Ferry Corp DBA Leather Man Ltd., Serial No. 90127025 (September 3, 2024) [not precedential] (Opinion by Judge Angela Lykos).

The test for determining whether a mark is deceptive under Section 2(a) sets forth three requirements: (1) Does the mark consist of or comprise a term that misdescribes the character, quality, function, composition, or use of the goods? (2) Are prospective purchasers likely to believe that the misdescription actually describes the goods? and (3) Is the misdescription likely to affect the purchasing decision of a significant or substantial portion of relevant consumers?

The USPTO's refusal hinged on the inclusion of the single word “Leather” in Applicant’s mark. The Board noted that, although “Leather” might be misdescriptive of the items in Applicant’s identification not made of leather, the meaning of the term must be viewed in the context of the mark in its entirety.

When we consider the mark as a whole, the term “Leather” does not take on its ordinary meaning, but rather is used to evoke the imagery of the legend of the Leather Man indigenous to the Essex region of Connecticut. In other words, the “[m]isdescriptiveness of [the word leather] [is] negated by its meaning in the context of the whole mark” because the combination of “Leather Man,” along with the geographic location of “Essex, CT” and a sailing motif creates an entirely different “unitary impression.”

The Board asserted that the examining attorney improperly considered the word “Leather” out of context. According to the Board, the mark "conveys the impression of a person, not a product component, by combining the words 'Leather' and 'Man.'" It therefore found that “Leather” in Applicant’s mark is not deceptively misdescriptive, and the proposed mark, taken as a whole, is not deceptive under Section 2(a). 

And so, the Board reversed the refusal.

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TTABlogger comment: What the . . . ? What does the depiction of a sailing ship have to do with the Leather Man? What percentage of the US population ever heard of the "Leather Man" legend? Even if a few current denizens of Essex, Connecticut might be acquainted with the legend, what about the vast majority of consumers who would expect applicant's goods to be made of leather?

Text Copyright John L. Welch 2024.

Precedential No. 21: TTAB Grants Motion to Bifurcate VELCRO Cancellation into two Phases

In a less than fasten-ating ruling arising out of its Final Pretrial Conference Pilot program, the Board granted Respondent Velcro's motion for an order bifurcating this long-running cancellation proceeding into two phases: the first dealing solely with the issue of Petitioner’s entitlement to a statutory cause of action; and the second, assuming Petitioner survives the first phase, with the issue of genericness of Respondent's registered mark VELCRO for hook-and-loop fasteners. NHDNC LLC v. Velcro BVBA and Velcro IP Holdings LLC, Cancellation No. 92074468 (September 6, 2024) [precedential].

In a seconded amended petition for cancellation, Petitioner relied on its intent-to-use application to register the mark shown above, for hook-and-loop fasteners. Velcro moved to dismiss, but the Board found that the pleading sufficiently alleged entitlement because “[a] party’s reasonable belief that registration of its application will be refused because of defendant’s registration provides a proper basis for entitlement to a cause of action.” However, the Board noted that, “Respondent . . . may attack the legitimacy of Petitioner’s assertion in the newly pleaded application that it has a bona fide intent to use the pleaded mark in commerce.”

The Board observed that courts and the Board have broad discretion to bifurcate proceedings “[f]or convenience, to avoid prejudice, or to expedite and economize” cases.

A case-by-case approach to bifurcation is applied considering several factors, including, (1) separability of issues, (2) simplification of discovery and conservation of resources, and (3) prejudice to the parties. Yung v. Raymark Indus., Inc., 789 F.2d 397, 400 (6th Cir. 1986). Bifurcation may be particularly appropriate when resolution of a single claim or issue could resolve the entire case, by “first dealing with an easier dispositive issue.”

In short, the party seeking bifurcation must establish that bifurcation will promote judicial economy, or avoid inconvenience, and that no party would be prejudiced by the separate trials. The Board has previously severed the issue of entitlement to a statutory cause of action from the substantive grounds asserted, and decided the issue of entitlement as “a single threshold question."

The Board concluded that bifurcation is appropriate here:

Now that discovery has been completed in this case, . . . severance of the issues will simplify the presentation of evidence and conserve the Board’s judicial resources by first considering entitlement, as its resolution may be dispositive of this proceeding. The issue of genericness is a fact-specific inquiry that often involves the development and review of voluminous evidence, including any expert reports. Bifurcation potentially saves the parties time and resources as a decision on the statutory entitlement issue should simplify the final pretrial conference order. The evidence of Petitioner’s entitlement to a statutory cause of action is within its control and does not present an undue burden or prejudice to Petitioner, as it is Petitioner’s burden to demonstrate its entitlement in any event.

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TTABlogger comment:Precedential? Maybe because of the pilot program approach.

Text Copyright John L. Welch 2024.

TTABlog Test: Which of these Three Section 2(d) Refusals Was/Were Reversed?

Here are three recent TTAB Decisions in Section 2(d) appeals. At least one of the appeals led to a reversal. How do you think they came out?

In re Liberty Orchards Company. Inc, Serial No. 97840459 (September 3, 2024) [not precedential] (Opinion by Judge Catherine Dugan O'Connor). [Section 2(d) refusal of COCOZEN (Stylized) for "Coconut milk; coconut milk for culinary purposes; coconut milk-based beverages; dried coconuts; grated coconut; coconut oil for food; coconut butter for food; coconut chips; pressed fruit paste; coconut, processed; condensed milk," in Class 29, and "coconut water; coconut-based beverages not being milk substitutes, in Class 32, in view of the registered mark COCOZEN for "Dietary supplements."]

In re Brockway Ferry Corp DBA Leather Man Ltd., Serial No. 90127025 (September 3, 2024) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of the mark shown first below, for "Belts; Belts for clothing; Belts made of leather; Belts made out of cloth; Belts of textile; Fabric belts; Leather belts; Waist belts” [LEATHER, LTD and ESSEX, CT disclaimed] in view of the registered marks shown second below, for "Clothing made in whole or part of leather, namely, coats, jackets, belts, shoes, skirts, and ties."]

In re NOMVDIC Corporation, Serial Nos. 97087812, 97087849, 97088315, 97088393 (September 4, 2024) [not precedential] (Opinion by Judge Karen S. Kuhlke) [Section 2(d) refusals of the marks NOMVDIC2 and NOMVDIC-INNOVATION and the two stylized/design marks shown below, for "Projectors, namely, multimedia projectors, cinematographic projectors, picture projectors, video projectors; transparency projection apparatus, slide projection apparatus and photograph projection apparatus; projection screens; computer hardware; computer monitors; . . . ; computer keyboards; computer memory devices; computers," in view of the registered mark NOMADIC GEAR for “mounting devices for photographic equipment; tripods; monopods for cameras and cell phones; camera straps; cases for photographic apparatus" [GEAR DISCLAIMED].

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2024.

TTABlog Test: Is "ACUITI" Confusable with "QIACUITY" for Medical Testing Services?

The USPTO refused registration of the mark ACUITI for cancer screening and genetic testing software, finding confusion likely with the registered mark QIACUITY for identical and overlapping services. The second and third DuPont factors weighed heavily against the applicant, the fifth and sixth were neutral, and the fourth factor - consumer sophistication - favored the applicant. But what about the marks? How do you think this came out? In re GRAIL, LLC, Serial No. 90777742 (August 29, 2024) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Board first noted that because some of the parties' services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Applicant argued that the marks at issue differ in appearance, sound, connotation and commercial impression in light of the uncommon "QI" in the cited mark, because QI is an alternative spelling of CHI, and because the "QI" prefix is the "primary, dominant, and most memorable element of the cited mark."

The Board, however, found the marks to be similar because "Applicant’s mark is the phonetic equivalent of a significant portion of the cited mark." As to appearance and sound "both marks contain the same string of letters 'ACUIT,' which would be pronounced identically." There was no evidence regarding an alternative meaning of QI, or why registrant chose those letters; since the registrant's name is Qiagen GmbH, QI may be an abbreviation of that name. Furthermore, the purported rarity of the letters "QI" "does not change the visual impression of the cited mark because the visual presentation forms a single word, "which when viewed in its entirety suggests that it is part of an ACUITY brand."

Applicant has merely adopted the phonetic equivalent of a significant portion of the cited mark. Adding or deleting terms from a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).

Moreover, the Board pointed out that since the cited mark is in standard characters, it may be displayed in any font style, size or color.

In other words, we must anticipate Registrant’s cited mark being displayed in a manner in which there is more emphasis on the latter part of the mark, e.g., qiACUITY, thereby appearing quite similar to Applicant’s ACUITI mark and both evoking the term ACUITY which is defined as “keenness of perception.” As such, both marks are similar in connotation and overall commercial impression.

In sum, the Board found that the marks are "more similar than dissimilar in appearance, sound, connotation, and overall commercial impression due to the common presence of the phonetically identical term 'acuity.'"

The Board concluded that confusion is likely because the first, second, and third DuPont factors outweighed the fourth DuPont factor (consumer sophistication).

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TTABlogger comment: This nose-of-wax approach to consideration of the display of standard character marks is rather troublesome, don't you think? Note that the registrant does not display its mark as qiACUITY as the Board hypothesized, but as QIAcuity.

Text Copyright John L. Welch 2024.

TTABlog Test: Are These Design/Stylized Marks for Clothing and Purses Confusable?

The Director of the USPTO intervened in this appeal from the Board's dismissal [pdf here] of an opposition to registration of the mark shown below right, for various clothing items. The Board found confusion unlikely with the two registered marks shown below left, the first for "purses and wallets" and the second for "handbags, shoulder bags, tote bags, satchels, purses, clutches, and wallets." The Board found the first DuPont factor - the similarity or dissimilarity of the marks - to be dispositive. How do you think this appeal came out? Tribe of Two, LLC v. Vidal, Appeal No. 2023-1193 (Fed. Cir. September 3, 2024) [not precedential].

The CAFC ruled that the Board did not err in its DuPont analysis: "the TTAB found [Applicant] Eritaj’s and Tribe of Two’s marks to be visually distinct and create different commercial impressions (factor 1), despite finding overlapping goods [actually, the Board found the goods to be related, not overlapping - ed.] and channels of trade and classes of consumers (factors 2 and 3)."

Tribe of Two argued that TTAB should have found the literal elements of the Eritaj’s mark to be dominant. The CAFC sided with the Board:

The TTAB concluded that, although the letters “TT” are discernible in Eritaj’s mark, “they do not form the dominant impression. Instead, the inversion of the letters T, the doubled horizontal lines, and the use of negative space to create a rectangle among the vertical and horizontal lines creates the impression of a rectangular geometric design. TTAB Decision, 2022 WL 4397523, at *7. This finding has substantial-evidence support.

At oral argument, Tribe of Two "devoted considerable time to argue that the TTAB overlooked possible coloring and shading of the letters 'TT' of Eritaj’s marks, which Tribe of Two asserts would allow an emphasis on the letter Ts and deemphasize its stylized mark." [The nose-of-wax argument - ed.]. Tribe of Two conceded, however, that this argument was not expressly made before the Board. The CAFC noted that this argument was "barely noted in Tribe of Two’s appellate briefing." The court concluded that the argument was forfeited because it was insufficiently developed, and therefore there was no error by the TTAB.

Finally, Tribe of Two claimed that the Board should have given it the benefit of the doubt because it was the senior user. The CAFC pooh-poohed that argument:

Tribe of Two, however, has not identified where the TTAB has expressed any doubt regarding a likelihood of confusion between the marks. On de novo review, nor do we. Like the TTAB, we find the marks so dissimilar that, in this case, this single DuPont factor is dispositive. TTAB Decision, 2022 WL 4397523, at *8. And unlike Century 21, where the TTAB decision there noted that the case was “difficult to resolve” and that “the prior mark is famous,” 970 F.2d at 878, neither circumstance is present here.

And so, the CAFC affirmed the Board's decision

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TTABlogger comment: Is this an appellate WYHA? The nose-of-wax argument seems to be appearing more frequently lately. 

Text Copyright John L. Welch 2024.

TTABlog Test: Are Mascara and Clothing Related for Section 2(d) Purposes?

The USPTO refused to register the mark CHEAT CODE for "mascara," finding confusion likely with the registered mark CHEAT CODES for, inter alia, various clothing items (including hats and shirts). The marks are essentially identical and therefore the first DuPont factor weighed heavily in favor of affirmance. But what about the goods? Are they related? Do they travel in the same trade channels? How do you think this came out? In re The Lip Bar, Inc., Serial No. 97546404 (August 30, 2024) [not precedential] (Opinion by Judge Robert H. Coggins).

Examining Attorney David Hutchison, submitted excerpts from ten third-party websites showing clothing companies using the same mark in connection with their own apparel and mascara:ARMANI, AVON, CHANEL, H&M, TOM FORD, DIOR, GUCCI, SAIE, VALENTINO, and ZARA. He also introduced six use-based, third-party registrations showing that the same entity has registered a single mark identifying at least mascara and clothing, as well as 25 third-party used-based registrations of marks identifying “makeup” or “cosmetics” and one or more of the specific clothing items listed in the cited registration. As to the latter group of registrations, the Board must presume that they encompass all such goods, including "mascara."

In response, Applicant submitted 100 sets of printouts from TSDR of third-party registrations purporting to show that the Office has registered the same mark to different parties for the mascara and clothing goods at issue. The Board tossed out at least 38 of them for various reasons.

Applicant argued that it provided more third-party registrations than the Examining Attorney, but the Board noted that the "'the PTO is an agency of limited resources' for obtaining evidence when examining applications for registration; the practicalities of these limited resources are routinely taken into account when reviewing an examining attorney’s action." Furthermore, Applicant provided no evidence regarding the extent of use of these marks, or consumers’ familiarity with them. “[W]here the ‘record includes no evidence about the extent of [third-party] uses . . . [t]he probative value of this evidence is thus minimal.”

The Board concluded that "the Examining Attorney’s third-party evidence is sufficient to establish that mascara and clothing are of a type that commonly originate from the same source under the same mark."

As to channels of trade and classes of consumers, the third-party commercial websites mentioned above, including Dior, Saie, H&M, and Zara, that advertise and offer mascara and clothing under those marks indicate that the goods may be encountered by the same classes of consumers under the same marks in at least two common trade channels - the websites and the physical locations of the companies’ stores. Moreover, the application and cited registration encompass low-priced goods that may be purchased on impulse.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Note that applicant's third-party registration evidence was minimally probative because of lack of proof of extent of use. No such evidentiary requirement for the Office's third-party registrations.

Text Copyright John L. Welch 2024.