Precedential No. 23: Finding Third-Party Registrations Not Probative, TTAB Reverses 2(d) Refusal

In this precedential ruling, the Board reversed a Section 2(d) refusal to register the mark EPIC for "personal headlamps," finding the mark not confusingly similar to the identical mark for "electric lighting fixtures." The Board took a dim view of the third-party registrations introduced by the Examining Attorney, deeming them not probative and pointing out that that "examining attorneys must review the registrations carefully to ensure that each registration presented is probative and that the number of registrations is sufficient, along with other types of evidence, to establish that the types of goods at issue are related." In re Princeton Tectonics, Inc., 95 USPQ2d 1509 (TTAB 2010) [precedential].


The Examining Attorney first feebly argued that personal headlamps and electric lighting fixtures are related because both emit light. Next, she argued that registrant's identified goods encompass applicant's goods because "a fixture can include a personal headlamp, as such goods are placed in a fixed position on one's head or helmet." The Board was understandably not impressed.

The Examining Attorney also submitted six third-party registrations and copies of several webpages, but the Board emasculated them. Two of the registrations listed a diversity of unrelated goods -- one included "virtually everything under the sun, including the kitchen sink" -- and therefore their probative value was diminished. Only one registration "arguably includes headlamps," but one registration is not enough to show that the involved goods are related.

In sum, we find that the third-party registrations are not probative of whether personal headlamps and electric lighting fixtures are related. While third-party registrations can play an important role in establishing that the types of goods at issue are related, examining attorneys must review the registrations carefully to ensure that each registration presented is probative and that the number of registrations is sufficient, along with other types of evidence, to establish that the types of goods at issue are related.

The website evidence was likewise non-probative because it either failed to identify the goods at issue here, or it presented a broad range of varied and unrelated goods.

And so the Board reversed the refusal to register.

TTABlog comment: Judge Walsh, who wrote this decision, recently co-authored (with Michael Hall) a paper on third-party registration evidence and its potential weaknesses. (TTABlogged here).

Compare the recent TTAB decision in Franciscan Vineyards, Inc. v. BeauxKat Enterprises LLC, Opposition No. 91181755 (June 21, 2010) [not precedential], finding beer and wine related based in part on 30 third-party registrations that included beer and wine in their identifications of goods. Judge Walsh was a member of the Board panel.

Text Copyright John L. Welch 2010.