Precedential No. 22: Appellants Fail To Address PTO Refusals, TTAB Affirms
The Board affirmed the USPTO's refusal to register the mark HEMP HOME HEALTH for "home health care services" because Applicants, in their appeal, failed to address the three grounds of refusal: mere descriptiveness or deceptive misdescriptiveness under Section 2(e)(1) and failure to respond to a Rule 2.61(b) request for information. In re Heather Harley and Carolyn Jones, 119 USPQ2d 1755 (TTAB 2016) [precedential].
During prosecution, Examining Attorney Jeffrey J. Look issued the Section 2(e)(1) refusals and requested information under Rule 2.61: concerning the significance of HEMP as applied to the services, whether the services comply with the Controlled Substances Act ("CSA"), and whether applicants will be using hemp-based products in their services. He twice issued advisories regarding a possible refusal based on the ground that the use of the applied-for mark would not be lawful. Applicants complied in part, but not fully, with the Rule 2.61 request, The Examining Attorney made the three refusals final.
In their appeal, applicants framed the issue as follows: "Can an Applicant's lawful use of a trademark be denied for use in connection with legal goods because the Applicant also sells substances that may be illegal under the CSA?"[Actually, a refusal of registration has nothing to do with whether applicants may use the mark - ed.]. Applicants did not address the three grounds for refusal that were issued by the Examining Attorney.
The Board observed that applicant's arguments "suggest that they are attempting to appeal a mere advisory statement made in the Examining Attorney's Office Actions." But an advisory action is not a refusal to register. The TTAB has jurisdiction only over "a final decision of the examiner in charge of the registration of marks." See Lanham Act Section 20.
The filing of a notice of appeal has the effect of appealing all refusals or requirements made final. Applicants' failure to address these refusals is a basis for affirming the refusal of registration on all grounds.
Therefore, the Board affirmed the refusals to register.
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TTABlog comment: Gee, I wonder who applicants' attorney was?
Text Copyright John L. Welch 2016.