Thursday, June 04, 2009

TTABlog WYHA: Would You Have Appealed This 2(d) Refusal?

Our latest WYHA case involves an application to register the mark GIO for "metal hardware, namely knobs and pulls for kitchen and bath cabinetry." Examining Attorney Melvin T. Axilbund refused registration on the ground that the mark is likely to cause confusion with the registered mark GEO & Design for "metal door hardware, namely, locksets, leversets, deadbolts, handlesets, locks, padlocks, knobs, levers, handles, keys and key blanks." Applicant appealed. Would you have? In re Liberty Hardware Mfg. Corp., Serial No. 77141148 (May 22, 2009) [not precedential].

The Board found that the marks would be pronounced similarly, if not identically, and look similar "in spite of the keyhole design inasmuch as applicant's mark can be displayed with the same general style of letters as registrant's." Neither GIO nor GEO is an English word and "many purchasers may not attribute any meaning to them." And there is no basis for concluding that the commercial impressions of the marks would be significantly different.

As to the goods, the Examining Attorney submitted evidence showing them to be related: websites offering both cabinet hardware and locksets, and a third-party registration covering both cabinet and door hardware. Moreover, the Board noted, the metal door hardware in the cited registration could include door hardware for cabinets.

Applicant feebly argued that its goods are decorative while those of the registration are "purchased for their functionality." The Board failed to see why the goods could not be both.

In any event, even if the goods do not overlap, the Board found them to be "closely related." "Both applicant's and registrant's goods include knobs for doors that can be purchased and used on doors and cabinets when remodeling a kitchen or bathroom." [or both - ed.].

Finally, Applicant's lame argument that the goods travel in different channels of trade was demolished by the PTO's website evidence.

And so the Board affirmed the Section 2(d) refusal.

TTABlog comment: OK, hindsight may be 20-20 (unless you misplace your glasses), but would you have appealed this one? Applicant's brief on appeal was just a bit more than one single-spaced page with no legal citations, so the appeal was not a costly endeavor, at least for the applicant. But are there other potential costs to be considered when putting your name on an appeal brief?

Text Copyright John L. Welch 2009.


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