Thursday, April 12, 2012

Test Your TTAB Judge-Ability on these Four Section 2(d) Appeals

Some say that one may predict the outcome of a Section 2(d) case just by looking at the marks and the goods or services involved. Well, let's put that theory to the test with the four Section 2(d) appeals set out below. How do you think the appeals came out?

In re Dayton Power and Light Company, Serial Nos. 77445394 and 77445395 (March 14, 2012) [not precedential]. [Refusal to register GREEN CONNECT in standard character and design form for "promoting consumer awareness in the field of renewable energy and promoting consumer use of renewable energy sources through incentive programs where customers can purchase renewable energy certificate-based services," in view of the mark GREEN CONNECTED in standard character and design form for "promoting the goods and services of others who engage in and promote environmentally sound practices in the fields of environmentally sound practices and environmentally sound lifestyles, residential and commercial renovation, construction and repair, storage, packaging, transportation, and logistics by means of providing a website with hypertext links to the web sites of others” and for “computer services, namely, search engine services for users seeking information about goods and services of others that engage in and promote environmentally sound practices and environmentally sound lifestyles"].

In re Ameristar Fence Products, Inc., Serial Nos. 77955361 and 77955366 (March 19, 2012) [not precedential]. [Refusal of the mark
440 in standard character and stylized form for “metal fences and gates and structural component parts thereof for ranching use” in light of the the registered mark 440-XH for "steel in the form of metal powder and compacted metal powder and wrought products, namely wire, rod, bar, strip, billet, and other shapes"].

In re Nissan North America, Inc., Serial Nos. 77865978 and 77866625 (March 30, 2012) [not precedential]. [Refusals of ONE-TO-ONE SERVICE, in standard character and design form, for “customer relationship management services in the field of vehicle maintenance and repair offered exclusively to applicant’s authorized vehicle dealerships,” in view of ONE-TO-ONE SERVICE.COM in standard and design form for "online business services, namely, tracking, managing and cataloging customer service inquiries from web-site visitors and customers, and providing online responses thereto; and, conducting and analyzing the results of customer surveys"].

In re Steamboat Springs Chamber-Resort Association, Inc., Serial No. 77939915 (March 31, 2002) [not precedential]. [Refusal of BIKE TOWN USA for "organizing athletic competitions, namely, bicycle races" [BIKE and USA disclaimed] over BIKETOWN for "Promoting the interests of consumers involved in lifestyle enhancement and improved health through the distribution of printed material; promoting public awareness of the need for improved health and lifestyle enhancement; promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with promotional contests"].

TTABlog hint:
All four cases came out the same way.

Text Copyright John L. Welch 2012.


At 1:41 PM, Anonymous Anonymous said...

There was some serious hand slapping of the examining attorney in the Green Connect case.

As a registrant you like to see the examiner refuse third parties so you do not have to waste time or money on an opposition. On the other hand, as an applicant it is nice to see the Board reverse overzealous examiners.

Here though, in my opinion, the Board takes a position and then writes the facts to support the wrong decision.

In the Green Connect the Board says: We find that because the marks are dissimilar ... confusion is not likely between applicant’s mark for its identified goods and the mark in the cited registration.

Seriously? Green Connect and Green Connected and both have leaves. How they can say the marks are not similar. I guess simply because the Boards says it - it must be true.

This is sad. It will be interesting to see if any of these get opposed. I suspect none - because few companies use a watch.


Post a Comment

<< Home