Monday, September 19, 2011

Finding Prior Trade Identity Rights in PLATEFRAME, TTAB Cancels PRETTYPLATEFRAMES Registration for License Plate Frames

Although Petitioner MacNeil Automotive's mark PLATEFRAME for license plate frames is a weak mark, the Board granted this petition to cancel the mark "PRETTYPLATEFRAMES" for the same goods, on the ground of likelihood of confusion. Petitioner proved that it had acquired "trade identity rights" in its mark prior to Respondent Harris's priority date (her application filing date), and so priority was established. MacNeil Automotive Products, Limited v. Theresa Harris, Cancellation No. 92051000 (September 2, 2011) [not precedential].

Priority: Registrant Harris, appearing pro se, did not introduce any evidence. The Board applied the Otto Roth doctrine in observing that Petitioner "cannot prevail unless its designation is, or has become, distinctive of its goods prior to the earliest date that respondent can rely upon, namely, the application filing date for her involved registration."

The Court of Appeals for the Federal Circuit has taken the position that "[u]nder the reasoning of Otto Roth, the proper focus of section 2(d) is not on 'mark' or 'trade name' but on whether there is a likelihood of confusion as a result of trade identity rights that the opposer/petitioner has acquired." Towers v. Advent, 16 USPQ2d at 1042.

Considering the definitions of the words "plate" and "frame" in the context of Petitioner's goods, the Board deemed PLATEFRAME to be "at the very best... highly descriptive." As to the genericness of the term PLATEFRAME, the Board noted that "[g]iven the posture of this case, the issue of the capability of this combined term has not yet been fully pursued under the two step test." [Emphasis added. Is the Board suggesting that this issue should be taken up by the PTO when Petitioner's currently-suspended application is examined?].

The question, then, was "whether petitioner has acquired sufficient trade identity rights to establish priority herein." The Board answered in the affirmative:

Based upon [the] evidence showing ad copy prominently displaying the PLATEFRAME mark and goods, and specifically the extensive magazine advertisements between October 2003 and November 2005, we find that petitioner’s mark had acquired sufficient trade identity rights prior to the application filing date for respondent’s involved registration, and hence, petitioner has shown its priority.

Likelihood of confusion: The Board batted back Petitioner's claim that PLATEFRAME is a famous mark for Section 2(d) purposes:

[W]hile we find that petitioner’s cumulative evidence of the tens, if not hundreds, of millions of impressions of the alleged mark may be satisfactory to establish a sufficient level of distinctiveness for purposes of establishing priority of a distinctive source indicator, we find that this record does not establish that, by virtue of petitioner’s use and advertising of its PLATEFRAME mark for its license plates frames, petitioner’s claimed mark has become a strong mark.

Therefore, the Board deemed PLATEFRAME to be "an inherently weak mark that is not entitled to a broad scope of protection."

The Board found the marks to be "highly similar" in overall commercial impression. However, even week marks are entitled to protection vis-a-vis a confusingly similar mark used on identical goods.

And so the Board granted the petition for cancellation.

TTABlog comment: In footnote 19, the Board pointed out that a different conclusion on the issue of distinctiveness might be reached on a different record created during an ex parte examination under Section 2(f). In other words, the pro se Respondent here submitted no evidence regarding genericness or descriptiveness, whereas a properly developed record might result in a finding that the term PLATEFRAME is not registrable.

Text Copyright John L. Welch 2011.


At 11:12 AM, Anonymous Anonymous said...

"trade identity rights"

I don't recall seeing this phrase before. Is it different than a trade name? How about a descriptive mark without secondary meaning? Trade dress?

At 11:32 AM, Anonymous engineer said...

Then note 19 is a subtle hint to the EA that he should have attempted to prove up a genericness refusal instead of or in addition to the 2(d) refusal?

At 3:40 PM, Blogger John L. Welch said...

I think that "trade identity rights" are akin to "use analogous to trademark use."

At 10:03 AM, Anonymous Anonymous said...

I see now. "trade identity rights" are whatever the judge feels like they ought to be when he/she/it decides the case.

Kinda like obscenity: I know it when I see it, but don't you, mere members of the public charged with obeying the law, try to know what it is.


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