Wednesday, January 11, 2006

What is the TTAB Affirmance Rate for Ex Parte Refusals? The TTABlog Reports

A painstaking review of the TTAB's decisions for the past year has yielded the following approximate statistics regarding the Board's affirmance rate for ex parte refusals.

Kenmore Square, Boston
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By my reckoning, in 2005 the TTAB issued final decisions in 341 ex parte appeals: 174 involving Section 2(d) refusals, 94 Section 2(e)(1) mere descriptiveness refusals, 27 genericness refusals, and 10 Section 2(e)(4) surname refusals. The remainder were scattered among other Section 2 (e) cases, functionality refusals, failures to function as a mark, rejected specimens, etc. The results:

  • Section 2(d) likelihood of confusion ---80% affirmed

  • Section 2(e)(1) mere descriptiveness ---86%

  • Genericness ---61%

  • Section 2(e)(4) surname --- 60%

These figures may be somewhat surprising: one might expect the Section 2(d) rate of affirmance to be higher than the 2(e)(1) rate because in 2(d) cases, the Board will lean toward protection of the registered mark against the newcomer, while in mere descriptiveness cases the Applicant gets the benefit of the doubt. On the other hand, there is usually more room for argument in likelihood of confusion cases under the various du Pont factors. In genericness cases, the PTO must provide clear evidence to support a refusal, and hence the affirmance rate is likely to be lower. As to surname cases, the number of decisions is probably too small to allow one to draw a meaningful conclusion.

Other TTAB 2005 facts and trivia:

Text and photograph Copyright John L. Welch 2006.


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