Tuesday, January 09, 2007

Citable No. 56: TTAB Refuses to Review Procedural Propriety of PTO's Belated 2(d) Refusal

[This citable decision, dated June 21, 2006, somehow slipped by me last summer. I think I was on vacation in Chicago at the time. My apologies to TTABlog readers.] In a citable decision, the Board affirmed a Section 2(d) refusal to register the mark JUMP DESIGNS for various furniture items, finding it likely to cause confusion with the registered mark JUMP for furniture and related goods. The Board refused to consider Applicant's argument that the refusal, issued after Applicant had filed its Statement of Use, was improper and untimely; the propriety of the PTO's action involves a procedural issue that should have been taken up on petition to the Director. In re Jump Designs, LLC, 80 USPQ2d 1370 (TTAB 2006).

Applicant Jump Designs contended that the PTO's Section 2(d) refusal was untimely and "procedurally defective" because it was issued after Applicant had filed its statement of use. Jump Designs also argued, unsuccessfully, that the Section 2(d) refusal was groundless.

Examining Attorney Susan Stiglitz asserted that, when the subject application was abandoned and then revived, a second search was conducted. It would have been "clear error," she urged, if the JUMP registration were not cited.

Applicant, in turn, pointed out that the Examining Attorney never indicated that "the failure to issue the refusal would be a 'clear error' or that the refusal was based on use-related issues." It maintained that the PTO should not be allowed "a second bite of the apple."
"Applicant is aware that challenges to the application of the clear error standard must be brought by way of petition to the Director (TMEP Section 1109.08.) Here, however, because there is no assertion in the Office Action that the refusal to register was based on application of the clear error standard, there is no basis to petition the Director."

The Board was not sympathetic: it ruled that Applicant should have petitioned the Director regarding this issue, rather than appeal:

"The fact that there was not a statement in the Office action that the Section 2(d) refusal was made under the 'clear error' standard does not excuse applicant for its failure to follow the proper procedure in seeking review. Given the procedural posture of the application, it should have been obvious to applicant that the examining attorney made the Section 2(d) refusal under the clear error standard. See TMEP Section 1109.08."

Thus the Board's determination on this appeal was limited to "the underlying substantive refusal," and it refused to consider "the merits of applicant's arguement that the refusal is procedurally deficient under the 'clear error' standard."

As to the Section 2(d) refusal, the Board found the goods to be, in part, legally identical, and the marks to be "similar in sound, appearance, meaning and overall commercial impression" (bearing in mind the descriptiveness of the word "designs" in Applicant's mark).

In sum, the Board affirmed the Section 2(d) refusal to register.

Text Copyright John L. Welch 2007.


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