Wednesday, August 31, 2011

Test Your TTAB Judge-Ability Against This Opinion By New Judge Thomas Shaw

Rookie TTAB Judge Thomas Shaw stepped into the TTABatter's box to face this appeal from a Section 2(d) refusal to register the mark ARCTIC HEAT for, inter alia, "therapeutic hot and cold compression wraps for cooling or warming parts of the human body." PTO Examining Attorney Charisma Hampton deemed the mark likely to cause confusion with the registered mark shown below for, inter alia, "human and veterinary medical devices, namely cooling and heating rehabilitation packs." How would you rule? In re Poly-Gel L.L.C., Serial No. 77850772 (August 16, 2011) [not precedential].

As to the marks, the Board not surprisingly found ARCTIC HEAT to be the dominant portion of the cited mark. The rectangular carrier design has no source-indicating value, and the words COOL DOWN AND FIRE UP, appearing in small type, merely reinforce "the suggestion of cold and hot conveyed by ARCTIC HEAT." The Board concluded that the two marks are similar in appearance, connotation, and commercial impression.

Applicant argued that the word ARCTIC and HEAT are suggestive, or even descriptive, when used for cold or heat packs, but the Board found no evidence that ARCTIC HEAT is weak or commonly used in connection with the subject goods. "On the contrary, the juxtaposition of the seemingly opposite terms ARCTIC and HEAT creates a noticeable and arbitrary mark."

As to the goods, the Board found that Applicant's "therapeutic hot and cold compression wraps for cooling or warming parts of the human body" are closely related to registrant's "cooling and heating rehabilitation packs," since both "are used to provide localized heat or cold to treat parts of the human body." The Examining Attorney's website evidence showed that heat or cold packs are often used in wraps to heat or cool body parts. Applicant's own website likewise showed such packs used in such wraps. Furthermore, third-party registration evidence demonstrated that healing or cooling wraps or packs emanate from a single source.

And so the Board found these involved goods to be closely related and, in view of the similarity of the marks, it affirmed the refusal to register.

TTABlog comment: Well, how did you do? Looks to me like Judge Shaw was thrown a slowball right over the plate for his first time at bat.

Text Copyright John L. Welch 2011.


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