Monday, August 08, 2005

TTAB Condemns "THIS MOLD HOUSE" Despite Poorly Constructed 2(d) Opposition

Opposer This Old House constructed a skeletal but successful Section 2(d) opposition to registration of the mark THIS MOLD HOUSE for "educational services, namely, conducting classes in the field of mold remediation training." This Old House Ventures, Inc. v. Restoration Services, Inc., Opposition No. 91152820 (July 25, 2005) [not citable].

Opposer's house of cards almost collapsed due to lack of any evidence in the record: in its Notice of Opposition, Opposer pleaded ownership of sixteen valid and existing registrations for the mark THIS OLD HOUSE in block letter and design form. However, it neglected to submit status and title copies with its Notice of Opposition or via Notice of Reliance, and it did not introduce the registrations via live testimony. [See Rule 2.122(d)]. Indeed, Opposer submitted no other evidence at all. Applicant, appearing pro se, did nothing in the case other than submit a "Notice of Response" that did not directly address each of Opposer's allegations, but which the Board treated as an Answer. Thus the record before the Board consisted only of the pleadings and Applicant's file history.

The Board was not pleased with this state of affairs: "The type of legal representation of opposer in this case is something that we neither commend nor wish to encourage." Nonetheless, the Board saved Opposer's case from collapse by concluding that Applicant had admitted Opposer's ownership of the pleaded registrations by failing to deny same and by referring to each of the registrations in its answer. The Board noted that Applicant "has had fair notice of the case it had to meet," and therefore it considered the registrations to be of record. From that point on, Opposer was home free.

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The Board summarized the scope of Opposer's relevant registrations as covering "educational products in the nature of videos, computer programs, CD-ROMS, books and magazines, and educational services in the nature of television programs and Internet websites, all pertaining to home renovation, improvement and design." Noting that both parties "provide educational services pertaining to work that is performed on a home," it concluded that Applicant's services "are closely related to, if not encompassed by the services identified in opposer's registrations."

As to the marks, the Board found the phrase THIS OLD HOUSE to be predominant in Opposer's marks, and noted that it contains two of the same words as, rhymes with, and has the same cadence as the applied-for mark. The Board concluded that the marks are "sufficiently similar that, if used in connection with closely related goods or services, confusion as to source is likely."

Consequently, the Board ruled that, in light of the "substantial similarity in commercial impression" between the marks, their contemporaneous use on closely related goods is likely to cause source confusion.

Text Copyright 2005 John L. Welch. All Rights Reserved.


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