Precedential No. 11: Despite Examination Errors, Issued Registration Must Be Cited as Section 2(d) Bar
The Board affirmed a refusal to register the mark HOUSE BEER for "retail store services featuring beer," finding it likely to cause confusion with the identical mark for "beer." Applicant did not address the substance of the refusal in its appeal, but instead focused on certain procedures that were not followed during examination of the application underlying the cited registration (the "Underlying Application") and during examination of the application under appeal. The Board, however, ruled that once the cited registration had issued, the USPTO must apply Section 2(d), even though the application here on appeal had an earlier filing date than the Underlying Application. In re House Beer, LLC, 114 USPQ2d 1073 (TTAB 2015) [precedential].
When the USPTO is faced with conflicting applications - i.e., applications filed by different applicants, that appear to be sufficiently similar that they may require a Section 2(d) refusal - it is standard examining procedure to allow the application with the earlier filing date to proceed to publication, while suspending the later-filed application.
The Underlying Application was filed based on intent-to-use under Section 1(b), prior to applicant's filing date, but it was later amended to seek registration on the Supplemental Register. When that happens, the application loses its original filing date and the effective filing date becomes the date of filing the allegation of use that is a prerequisite to such an amendment. Here, the allegation of use was filed at least a year after applicant's filing date.
At the time when the allegation of use was filed, applicant's application was suspended in view of the Underlying Application, but the change in effective filing date for the Underlying Application went unnoticed by both the examining attorney and the applicant. [The examining attorney of the Underlying Application should have conducted a new search once the effective filing date was changed, and he or she should have found applicant's application and should have notified the other examining attorney of the change in effective filing date.]
The examining attorney maintained that she properly cited the issued registration under Section 2(d). The Board agreed. Under Section 2(d), if the mark is registered, it may be cited. That section makes no reference to the filing date of the application underlying the registration.
Applicant requested that the refusal be deemed invalid because the pertinent examination procedures were not followed, but the Board observed that it cannot give the internal examination procedures of the USPTO primacy over statutory law. "Strict compliance with those procedures is by no means a prerequisite to issuing a refusal that Section 2(d) of the Act requires."
In short, "the Examining Attorney's refusal, being required by the express terms of Section 2(d), is not rendered invalid by the procedural mishaps described herein."
The Board noted that if indeed applicant has priority of use, it may have a valid Section 2(d) ground for cancellation of the cited registration. However, mere error in the examination of the Underlying Application would not be a valid ground for cancellation.
The Board then found the involved goods and services to be related for Section 2(d) purposes, and it affirmed the refusal to register.
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TTABlog note: All's well that ends well? Well, we shall see.
Text Copyright John L. Welch 2015.
posted by John L. Welch @ 4/01/2015
8 comments
8 Comments:
I had something very similar happen. We filed an application. Later someone else filed an application for something very similar. The examiner in the second application missed or decided there was no confusion and the second application issued first (while the first application was still pending). The examiner then issued a 2(d) refusal. Nothing you could do because the statute says you are not entitled to a registration if there's a confusingly similar prior application or registration (prior only qualifies the application not registration). The registration does not have to have a prior filing date or earlier date of first use - it just has to be a registration.
This decision is sound but creates no incentive for the PTO to follow proper procedures and no penalty for major screw ups such as this. Applicant and the Board found itself between a rock and hard place.
I think this decision wrongly puts the burden on the party with priority to fix the Examiner's errors. It affords the now-junior applicant rights that it would not have had but for the error of the Examiner. This just rewards careless Examiners at the expense of applicants.
There's a way to fix the problem presented by the first comment but no cure for carelessness (or perhaps just ignorance of the procedures). Disclaimer...I represented the Applicant.
Does this Applicant have any recourse, such as remand back to the Examiner for further action, and stay pending a cancellation proceeding? There has been at least one case where affirmance of the Examining Attorney terminated the proceedings.
The senior user can file for cancellation and their application will be stayed pending cancellation. The messier scenario involves two foreign applicants, where the Examiner blows the controlling date for a 66a applicant, which is the earlier of the Paris priority claimed, the int'l reg date (with USA REP), or the subsequent designation date. THIS HAPPENS ALL OF THE TIME.
Yes!! Let's give collateral estoppel to that morsel of wisdom from the TTAB
Assuming Applicant files a cancellation action, it would have gone from initially arguing confusion, then arguing no confusion (when it suddenly had priority...or thought it did...to once again arguing confusion in a cancellation action. I realize that this happens a lot and is not a concern to anyone but it's a bit strange and probably unique to the trademark field that a party would switch it's basic argument so many times as the law demands it to.
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