Wednesday, June 23, 2010

TTAB Reverses 2(d) Refusal As Waste of Everyone's Time

The Board took two Examining Attorneys to task in this appeal from a Section 2(d) refusal. Applicant Grand Prix sought to register the mark SPYN in the stylized form shown immediately below, for various automobile parts. The Examining Attorneys saw a likelihood of confusion with the registered mark SPYN in the different stylized form shown next below, for "audio equipment namely speakers, equalizers, and amplifiers." But the Board found no evidence in the record that the involved goods are related, and more specifically that "automobile owners might encounter the respective goods in the same channels of trade." In re Grand Prix Import Inc., Serial No. 77408025 (June 2, 2010) [not precedenital].

The only evidence of record supporting the refusal comprised two webpages: one showing that Don's Car Stereo of Lynchburg, VA, sells auto stereos, installs windshield wipers, tints windows and customizes wheels: the other indicating that Xtreme Cary Toys of Birmingham, AL, offers a wide array of custom accessories allowing an owner to "trick out" his or her vehicle. But neither showed that the involved goods are sold under the same mark.

The original Examining Attorney had provided no evidence with the refusal. When applicant requested reconsideration, a second Examining Attorney, "upon finding a case on appeal with no evidence in the record but determining to adhere to the action from which the appeal was taken, should have rightly wanted to supplement the record with new and substantial evidence."

On the other hand, her weak attempt to introduce insubstantial evidence as an appendage to a form denial of request for reconsideration does not comport with good examination practice, and basically wastes everyone’s time. This situation should have resulted in the newly-assigned Trademark Examining Attorney’s filing a written request for the Board to suspend the appeal and remand the application for further examination. TBMP § 1207.02 (2d ed. 2004).

The Board observed:

Had applicant not requested reconsideration but rather proceeded with merely an appeal, we would have been faced with a case having absolutely no evidence in support of a refusal. Aside from the manifest injustice to applicant of having had to suffer the expense of an appeal in a case with no evidence, the Board would have had to expend its resources in processing and deciding an appeal with a result that would have been clear to all.

And so the Board reversed the refusal.

TTABlog comment: Perhaps we should start a new category of decisions: WYHRR? Would You Have Refused Registration?

Text Copyright John L. Welch 2010.


At 7:54 AM, Anonymous Anonymous said...

A much-needed decision (too bad it's not precedential), because too many examining attorneys make only a token effort (or no effort) to introduce evidence. And often the evidence they do make of record is so obviously not probative that it is apparent the examining attorney didn't even review it.

At 9:08 PM, Anonymous Rob said...

I agree with the result but disagree with the reasoning.

The Board has a blanket policy of granting all examiner requests for remand (and even inviting them) without substantive consideration whether there is good cause, or any cause, for doing so.

In fact, the Board doesn't even require examiners to explain, in a remand request, the nature of the suggested new evidence/refusal, or why it couldn't have been reasonably brought up during initial examination.

In my view, the policy granting all examiner remand requests, irrespective of the circumstances, is abuse of discretion, and specifically, abuse of the remand power.


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