TTAB Test: Which of these Three Section 2(d) Refusals Was Reversed?
Here are three recently decided Section 2(d) appeals. One of the refusals was reversed. Applying your jurisprudential skills and/or well-honed TTAB instincts, how do you think these came out? [Answer in first comment].
In re Dyson Technology Limited, Serial No. 79188560 (May 8, 2018) [not precedential] (Opinion by Judge Anthony R. Masiello). [Section 2(d) refusal of CU-BEAM for "Suspended lights in the nature of LED lighting fixtures designed to be suspended from a ceiling with uplighters and/or downlighters, the aforesaid optimized to reduce eye strain and increase comfort and productivity; parts and fittings for the aforesaid goods," in view of the registered mark Q-BEAM SPOT/FLOOD for a "hand-held combination spotlight and floodlight" [SPOT/FLOOD disclaimed]].
In re Bodegas Eduardo Garrido, S.L., Serial No. 87334693 (May 14) [not precedential] (Opinion by Judge Frances Wolfson). [Section 2(d) refusal of the mark shown below left for "wine" in view of the registered mark shown below right, both for wine].
In re Henson, Serial No. 87130461 (May 14, 2018) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of the mark LYKAN for athletic apparel, in view of the identical mark registered for watches and jewelry].
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Text Copyright John L. Welch 2018.
posted by John L. Welch @ 5/17/2018
4 comments
4 Comments:
The first one (CU-BEAM) was reversed.
The GARRIDO decision is a good example of a certain heads-I-win, tails-you-lose mentality that sometimes pops up at the PTO. In this case, the wording “EDUARDO GARRIDO CARGIA” is in the same size font in applicant’s applied-for mark. However, the Board looked to “a page from Applicant’s website, showing that in other versions of the mark, Applicant emphasizes the GARRIDO surname,” and based in part on that website, found that “it is likely that when recalling Applicant’s wine, consumers will focus on the surname ‘Garrido.’” [There was other evidence too, but irrelevant to this point.]
But suppose hypothetically that instead of emphasizing “Garrido,” Applicant’s other version of the mark emphasized “Eduardo,” and further suppose Applicant made the same argument made here by the examining attorney and the Board, namely that, based on its real-world use of a similar mark emphasizing “Eduardo,” consumers would focus on “Eduardo” in the applied-for mark. In that scenario, the examining attorney and the Board would have refused – correctly – to give that fact any weight, and cited the cases holding that “[l]ikelihood of confusion is determined based on the mark as shown in the drawing of an application and the mark(s) shown in the cited registration(s).” In re Kysela Pere et Fils Ltd., 98 U.S.P.Q.2d 1261, 1268 (T.T.A.B. 2011).
When an applicant’s real-world use of a similar mark tends to show how consumers might view part of the applied-for mark, is there any justification for giving that evidence weight when it supports the refusal, but refusing to give it any weight when it supports the applicant? Does the relevance of the evidence depend merely on which side it helps?
Michael:
Excellent point. The TTAB has been increasingly relying on the "real world" presentation and use of trademarks in assessing a likelihood of confusion between a registered trademark and a trademark that is the subject of an application. Yet the TTAB still holds tightly to the traditional rule that a likelihood of confusion is evaluated and determined based on a comparison only between the trademark depicted in the registration and the goods/services recited in the registration and the trademark as depicted in the application and the goods/services recited in the application.
The TTAB tries to have it both ways by spouting the pretense that the "real world" presentations and uses simply "confirm" their decision regarding a likelihood of confusion. As you note, the "real world" presentations and uses have traditionally been completely irrelevant to a likelihood of confusion determination between a registration and an application.
No justification whatsoever. The TTAB has a strikingly clear and very prominent bias against approving trademarks and this is but one of many kinds of slight of hand they employ to ensure the death of a trademark application
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