Tuesday, May 03, 2011

TTAB Reverses 2(d) Refusal of FUJITECH: Third-Party Registrations Insufficient to Show Relatedness of Various Electronic Goods

The Board reversed Section 2(d) refusals to register the mark FUJITECH in standard character and stylized form (shown below), for various electronic goods, finding the mark not likely to cause confusion with the marks of seven different registrations, owned by two different companies, consisting of or including the word FUJI for various electronic goods. In re Fujitech Ltd., Serial Nos. 77270424 and 77270426 (March 31, 2011) [not precedential].

The Board did not appreciate the Examining Attorney's "very minimalist approach in her argument and presentation of evidence" regarding the relatedness of the goods.

In light of the fact that seven different registrations owned by two different entities have been cited in support of the likelihood of confusion refusal to registration, it was incumbent upon her to explain, at the very least, which goods from each registration were most likely to support the refusal.

The Examining Attorney relied exclusively on the printouts of 44 third-party registrations, but more than one-third were based on Section 44(e) and not on use, and therefore had no probative value.

Moreover, the Examiner Attorney presented printouts of the third-party registrations, with "no attempt ... to spell out the goods in the third-party registrations that are relevant to showing a relationship between applicant’s goods vis-à-vis any of the goods listed in the seven different registrations."

The Board found that the use-based registrations did include at least one item from Applicant's identification of goods and one from a cited registration, but there was "not a significant number of registrations covering the same specific item in the applications and the same specific item found in any one of the seven different registrations."

In sum, the third-party registrations are not sufficiently convincing of the relatedness of the goods. In particular, there are too few showing the relatedness of any specific item in the application with an item in a given cited registration. Furthermore, it would be too tenuous of a connection for us to somehow consider all of the registrations conjunctively for purposes of showing that all or certain of the goods of applicant’s and any one of the registrant’s are related.

And so the Board ruled that the Examining Attorney had failed to make a prima facie case, and it reversed the refusal.

TTABlog comment: Underscoring the point, the Board noted that "on a different record, such as might be adduced by a competitor in an opposition proceeding, a different result may be reached on the issue of the relatedness of the goods." On must wonder, will Fuji erupt?

Text Copyright John L. Welch 2011.


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