Wednesday, February 25, 2015

TTAB Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?

At least one of the three Section 2(d) refusals summarized below was reversed, and a least one was affirmed. Can you figure out what happened in each case?  [Answer in first comment]. 

In re James Harris, Serial No. 85918970 (February 23, 2015) [not precedential]. [Section 2(d) refusal THE WASH BOX for "portable vehicle wash water filter" [WASH disclaimed], finding it confusingly similar to the registered mark WASH IN A BOX for "vehicle washing and cleaning equipment, namely, automated pressure washing and pressure rinsing machines and electronic and mechanical controls therefor, all sold as a unit; vehicle washing machines and parts therefor."]

In re World of Wine Events, LLC, Serial No. 86013688 (February 19, 2015) [not precedential]. [Section 2(d) refusal of SAN DIEGO BAY WINE & FOOD FESTIVAL for "arranging, organizing, conducting, and hosting social entertainment events; conducting entertainment exhibitions in the nature of food and wine festivals; consultation in the field of special event planning for social entertainment purposes; entertainment services, namely, wine and food tastings" in view of the registered mark SAN DIEGO BAY for promoting tourism and economic development in the San Diego Bay area.]

In re Sunton Enterprises, Inc., Serial No. 85863532 (February 19, 2015) [not precedential]. [Refusal to register AYLAZZARO for "handbags, luggage and trunks," in view of the registered mark LAZARO for "handbags, briefcases, briefcase-type portfolios and wallets."]

Read comments and post your comment here

TTABlog note: So how did you do?

Text Copyright John L. Welch 2015.


At 6:53 AM, Blogger John L. Welch said...

The first two were reversed, the third affirmed.

At 8:38 AM, Blogger RT said...

Well, I'm surprised! I would've gone for the second two.

At 3:28 AM, Blogger jcabb8 said...

I was surprised that the TTAB overturned the refusal in the In re James Harris case. Especially puzzling to me was the board’ emphasis on the fact that most vehicle washing systems do not come with portable water filters. The board cited the that, although many vehicle washing systems have water filters, few, if any, have portable water filters. The Examining Attorney pointed to many vehicle washing systems that included water filters. The other similarities in use between the registrants and applicants products seem more important than whether or not the water filters can move.

The TTAB’s decision in the second case was more persuasive to me than the Harris case.
Because of the weakness of the registrant’s mark, it makes sense that the applicant’s mark would have to be almost identical and identify services that are very closely related. The Examining Attorney’s opinion that, because the applicant promotes its own festivals, its services were closely related to the registrant’s, does not seem to hold weight. Promoting one’s own business is not the same service as the one offered by a company that operates almost as a chamber of commerce for a variety of third party events. I also agreed with the Board’s argument that, because of the weak nature of the marks, the added specificity of “Wine and Food Festival” at the end of the applicant’s mark is enough to distinguish the two marks and limit consumer confusion.

I agree with the affirmation of the registration refusal in the Lazaro case. After looking at the sound, appearance, and meaning of Aylazaro and Lazaro, it is clear that they are extremely similar. When spoken, the words sound almost identical with or without the “ay.” Even with the addition of “ay” and the different number of “z”s, the two words look very similar. The different spelling also does not suggest any differentiation in the meaning between the two words. I also agree with the TTAB when it rejected the applicant’s argument that one third party use of the word “Lazaro” as part of a much longer name describing a handbag means that Lazaro is a word commonly associated with handbags.


Post a Comment

<< Home