TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
So far this year, the Board has affirmed 158 of the 170 Section 2(d) refusals on appeal (just about 93%). Here are three decisions that came down recently. How do you think they came out? [Results in first comment].
In re Robert Green Hospitality, LLC, Serial No. 90065535 (November 10, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington) [Section 2(d) refusal of the mark LYDIA for "Hotel services, namely, high end boutique resort hotel services" in view of the registered mark LIDIA’S KANSAS CITY for restaurant services (KANSAS CITY disclaimed)].
In re Uri Charles, Serial No. 90235507 (November 10, 2022) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) refusal of FLVSH for "Downloadable mobile application software for use in text messaging, in-app messaging, location-based messaging, chatting, sharing and transmitting of photos, images, pictures, videos, audio content, multimedia content, electronic files, information and data, and storing contacts," in view of the registered mark FLASH for "Computer software, software applications and mobile applications for picture sharing"].
In re Blake Farms Hard Apple Cider, Serial No. 90567569 (November 16, 2022) [not precedential] (Opinion by Judge Mark Lebow) [Section 2(d) refusal of BLAKE’S BACK 40 for beer, in view of the registered mark BACK 40, also for beer].
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TTABlog comment: How did you do? See any non-WYHAs?.
Text Copyright John L. Welch 2022.
posted by John L. Welch @ 11/18/2022
5 comments
5 Comments:
All three were affirmed.
What drives such a high number of WYHA's? Is it applicants opting to not search in advance and then pushing forward despite counsel's advice? Is it counsel not having a good handle on how TTAB decisions shake out and giving poor advice? Is it not enough attorneys reading the TTABlog daily?
The sad truth is that for every WYHA there is someone that made a poor decision leading up to that slam dunk opinion for the Board.
The last one is clearly a frivolous appeal, and the second one is close to also being one, but the first one is the type of case I would love to see a finer grained analysis applied to by the Board. One can reasonably weigh the dissimilarity between LIDIA'S and LYDIA (especially given the inherent weakness of names as marks), and between hotel services and restaurant services, and conclude no likelihood of confusion (are the words "the CUMULATIVE effect of the differences in the marks and differences in the goods" meaningless?).
The LYDIA applicant should have described its services as "high end boutique hotel resort services, without a restaurant" (even if it had one, couldn't they apply ONLY for the hotel portion of their service?) and that would have forced the examining attorney to come up with evidence that hotels without restaurants also operate standalone restaurants. Refusal reversed. I'm just being as mechanical in my analysis as the Board is, so I don't see how that couldn't work
If my client has settled on a trademark before I had a chance to search for conflicts, there is a rate of refusal that is > 50%. If I search, the chances are low, say < 5%. So based on my experience, the high number is attributable to applicants opting to not search in advance and then pushing forward despite counsel's advice.
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