Test Your TTAB Judge-Ability on these Five Section 2(d) Appeals
I once heard a TTAB judge say that the outcome of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods or services, without more. Well, your would-be honor, try your skills on these five recent appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board. [Answer in first comment].
In re Special Fruit NV, Serial No. 79112203 (September 17, 2014) [not precedential]. [Refusal to register BERRY FRESH & Design (shown below) for "fresh fruits and vegetables" [BERRY FRESH disclaimed] in view of three marks registered on the Supplemental Register: BERRY FRESH for "independent sales representatives in the field of assorted fresh berries specifically, fresh blueberries, blackberries, raspberries and strawberries" [BERRY disclaimed]; BERRY FRESH PRODUCE for "fresh fruits; fruits, namely, assorted fresh berries specifically, fresh blueberries, blackberries, raspberries and strawberries" [BERRY PRODUCE disclaimed]; and Berry Fresh, in standard character form, for "fresh fruits; fruits, namely, assorted fresh berries, specifically, fresh blueberries, blackberries, raspberries and strawberries" [BERRY disclaimed]].
In re Progressive Foam Technologies, Inc., Serial No. 85738691 (September 17, 2014) [not precedential]. [Refusal to register the mark PROGRESSIVE FOAM & Design for "construction materials, namely, exterior building insulation made of polystyrene, expanded polystyrene, or other foamed thermoplastic, shaped to conform with other building products such as siding, roofing, decking, or fencing" [FOAM disclaimed], in view of the registered mark PROGRESSIVE INSULATION & WINDOWS & Design for "home energy assessments leading to and including installation of advanced insulation systems to create a more energy efficient home thermal envelope" [INSULATION AND WINDOWS disclaimed]].
In re Universal Entertainment Corp., Serial No. 85872412 (September 17, 2014) [not precedential]. [Refusal to register PROSPEROUS YEAR for "slot machines and replacement parts therefor, video slot machines and replacement parts therefor; gaming machines and replacement parts therefor; gaming machines with liquid crystal displays and replacement parts therefor; mechanical reel type slot machines with liquid crystal displays and replacement parts therefor" in view of the registered mark PROSPEROUS LIFE for "gaming machines"].
In re United Fibers LLC, Serial No. 85721638 (September 16, 2014) [not precedential].[Refusal to register GREEN DEPOT & Design (shown first below) for "recycling" [GREEN disclaimed], in view of the registered mark GREENDEPOT & Design (second below) for "on-line retail store services featuring home improvement products; retail stores featuring home improvement products"].
In re East Meadow Corp. d/b/a Uncle Guiseppe’s Marketplace, Serial No. 85540708 (September 16, 2014) [not precedential]. [Refusal to register the mark UNCLE GIUSEPPE'S MARKETPLACE & Design (shown first below) for "ready-made sauces" [MARKETPLACE disclaimed], in view of the registered mark GIUSSEPPE'S, in stylized form, for "pre[-]prepared prepackaged frozen entrees consisting primarily of pasta and sauces for sale in food stores"].
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TTABlog Note: Hey Joe, see any WYHA's here?
Text Copyright John L. Welch 2014.
posted by John L. Welch @ 9/19/2014
4 comments
4 Comments:
All affirmed, except the first refusal in the BERRY FRESH case.
In the BERRY FRESH case, how do disclaimers work on the Supplemental Register? And what determines whether a word must be disclaimed on the Supplemental Register (in the first cited BERRY FRESH mark on the Supplemental Register, for example, only BERRY is disclaimed, not FRESH, whereas both words are descriptive).
John, answer to your question of WIHA is "no". No disrespect to anyone, but all superficially look like losers and they were. When I read the Berry case and saw that there was a registration for identical goods I wondered what I was missing. Still not sure why that was appealed. As to the question on disclaimers, I recall Saul Lefkowitz wrote an article with a great title called "Disclaimers, May They Rest in Peace". All these years later and various examination guides and articles later and they do not rest in peace.
I think the appealer of the Berry mark must have been banking on the TTAB saying that the mark is diluted and weak and therefore adding 1 more registration to the mix would be harmless. But the marks and goods were as close as could be, I think, so the TTAB granted the extremely limited protection that SR registrations could be granted.
DISCLAIMER: I am not the appealer nor do I maintain any bias or affiliation with same.
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