TTAB Posts August 2019 Hearing Schedule
The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled seven (7) oral hearings for the month of August 2019. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. Briefs and other papers for these cases may be found at TTABVUE via the links provided.
August 6, 2019 - 11 AM: In re PCS Petroleum LLC, Serial No. 87728983 [Section 2(d) refusal to register the mark KP QUIK STOP & Deign for retail convenience stores, in view of the registered mark KWIK STOP for "Retail convenience store services featuring gasoline, other petroleum products and alcoholic beverages"].
August 7, 2019 - 10 AM: Park Hotel Management Pte Ltd. v. Park Hotels & Resorts, Inc., Opposition No. 91233165 [Section 2(d) opposition to PARK HOTELS & RESORTS for "Investment services, namely, asset acquisition, consultation, development and management services; Real estate investment trust services" in view of alleged prior use of the mark PARK HOTEL for hotel reservation and booking services, and travel services].
August 14, 2019 - 9 AM: In re My Reelex Packaging Solutions, Inc., Serial Nos. 87285383 and 87285412 [Refusals to register the two packaging configurations shown below as trademarks for "electrical cables and wires" on the grounds of functionality under Section 2(e)(5), non-distinctiveness, and failure to function as a source indicator].
August 15, 2019 - 1 PM: In re Capital Automotive LLC, Serial No. 87573194 [Section 2(d) refusal of the mark shown below for "Financial services provided to the aviation industry, namely, providing the aviation industry with real estate investment trust services, real estate investment services and financial services in the nature of money lending" in view of the registered marks (same owner) TAILWIND and TAILWIND CAPITAL for "financial services, namely, equity capital investment and financial consultation services"].
August 20, 2019 - 2 PM: In re Inventive, LLC, Serial No. 86796893 [Section 2(d) refusal of FISH FIGHTER & Design for fishing tackle hand tools, fishing measuring tapes, apparel, and fishing tackle, in view of the registered mark FISHING FIGHTERS & Design for apparel, fishing tackle, and fishing gloves].
August 22, 2019 - 1 PM: In re Capital Automotive LLC, Serial No. 87573198 [Section 2(d) refusal of the mark shown below, for "Financial services provided to the automotive retail industry, namely, providing automotive dealers with real estate investment trust services, real estate investment services and financial services in the nature of equity investing and money lending for real estate development" in view of four registered marks owned by the same entity for the marks CAF, CAF AMERICA and CAFAMERICA for charitable fundraising and related financial services].
August 28, 2019 - 10 AM: In re Kitz Corporation, Serial No. 79221711 [Section 2(d) refusal of TOYO & Design for "iron and steel" in view of the registered mark TOYO KAHAN for, inter alia, iron and steel].
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TTABlog note: Any predictions? See any WYHA?s?
Text Copyright John L. Welch 2019.
posted by John L. Welch @ 7/31/2019
3 comments
3 Comments:
In the TOYO case, the Examining Attorney criticized the applicant's reliance on Strategic Partners with the following form paragraph:
"[I]n In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts: (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds). See TMEP §1207.01. The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal."
The Office really should pay more attention to its form paragraphs. Strategic Partners did not state or even imply that the facts of a case "would generally need to fit within these precise parameters to overcome a Section 2(d) refusal." Indeed, in In re Daboub and Giner, Serial No. 87351674 (T.T.A.B. August 28, 2018) (non-precedential), the Board addressed this form paragraph's misstatement of Strategic Partners:
"The Examining Attorney contends that the factual circumstances presented here are distinguishable from those in In re Strategic Partners, supra, inasmuch as in that case, the applicant’s prior registration had co-existed for at least five years with the cited registration, and that both registrations were immune from a petition to cancel based on the ground of likelihood of confusion. The Examining Attorney takes the position that these precise parameters must exist in order to successfully invoke the thirteenth du Pont factor to overcome an ex parte Section 2(d) refusal. In support thereof, the Examining Attorney cites to Section 1207.01 of the Trademark Manual of Examining Procedure (Oct. 2017) discussing the significance of In re Strategic Partners. We have reviewed all of the Board’s decisions on this issue and do not interpret the application of the thirteenth factor so narrowly. Again, we emphasize that we must take into account all of the circumstances of a particular case, and in doing so, we have found that the fact that the cited registration is not over five years old is not fatal."
KP Quickstop, In re Reelex packaging, and, maybe, Toyo (though perhaps I could be persuaded otherwise if Toyo means "iron" or something like that).
Thanks, Michael! I have a case with this Strategic Partners form language right now and this is helpful.
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