The examining attorney asserted that applicant's materials are "cast" or poured as a liquid, into a defined area, where they harden to create a "floor." The Board observed, however, that the PTO's definition of "cast" calls for "pouring molten material into a mold." Nothing in applicant's description of its goods refers to use of a mold. And the use of troweling to shape the floor appears to be inconsistent with a casting process.
The examining attorney further relied on a number of third-party websites in contending that applicant's goods are used to create what is known in the industry as "cast floors." However, those webpages originated in foreign countries (including Holland, the UAE, Ireland, and Lithuania). Although written in English (sometimes nonidiomatic English), they were not "good evidence of the way in which the expression 'cast floor' would be understood by customers in the United States." In any case, the third-party websites were "too equivocal" to persuade the Board that "cast" describes the method used with applicant's materials.
And so the Board concluded that the examining attorney had failed to make a prima facie case, and it reversed the refusal to register.
Judge Wolfson concurred, noting that the nature of the goods makes it unlikely that US consumers will purchase the goods from vendors outside this country. She agreed that the doubt created by the record evidence must be resolved in favor of applicant.
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TTABlog note: Wouldn't the "confined area" into which applicant's materials are poured be considered a "mold"?
Text Copyright John L. Welch 2015.
If this had come out the other way, I bet you would have considered this a WYHA. This shows how unpredictable the Board can be and why there probably is no such thing as a WYHA.
ReplyDeleteJohn - I could totally see where this could go the other way (the Board mentioning that if this matter were an opposition by a competitor, then the reverse could be true).
ReplyDeleteThe issue here was the definition of a "cast" floor. I saw that the Board found fault with Examiner's definition of cast. She could have submitted a google search in support of her brief using the search cast floor vs. poured floor to obtain a better picture which may or may not have swayed the Board to her side.
Now I have some food for thought.... and tools for my arsenal.