TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
So far this year, the TTAB has affirmed 172 of the 184 Section 2(d) refusals on appeal (about 93.5%). Here are three decisions that came down recently. How do you think they came out? [Results in first comment].
In re Derrick Coleman, Serial No. 90231251 (December 2, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington) [Section 2(d) refusal of the mark GREAT LAKES DISTRIBUTION in slightly stylized form for "distribution services, namely, delivery of third party goods" [DISTRIBUTION disclaimed], in view of the registered marks (separately owned) GREAT LAKES FABRICS for "distributorship in the field of upholstery fabrics and textiles; distributorship in the field of upholstery supplies" [FABRICS disclaimed], GREAT LAKES PETROLEUM for “fuel delivery services; storage, distribution, and transportation of liquefied petroleum gas" [PETROLEUM disclaimed], GREAT LAKES TIRE for "distribution services, namely, delivery of new and retread tires" [TIRE disclaimed], and GREAT LAKES PIPE AND SUPPLY COMPANY & Design for "distribution services, namely, delivery of pipe, fittings, and valves used for the conveyance of liquid, gas, and electricity" [GREAT LAKES PIPE AND SUPPLY COMPANY disclaimed].
In re OEC, LLC, Serial Nos. 90274429 and 90350840 (December 2, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson) [Section 2(d) refusal of the mark HOLIDAY ROAD, in standard and in logo form (below), for "Online retail store services featuring bags, backpacks, blankets, holiday and seasonal decorations and ornaments, holiday lights, toys, baskets, cups" [HOLIDAY disclaimed], in view of the registered mark HOLIDAY LANE for "musical figures and figurines made of plastic,' "musical figures and figurines made of glass," "Christmas figures and figurines made of plastic," and "Christmas tree ornaments and decorations; Christmas garlands," and "electric Christmas tree lights," [HOLIDAY disclaimed].]
In re Knitpro International, Serial No. 90064151 (November 30, 2022) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of THE MANDALA COLLECTION for "Buttons; Needles; Hooks and eyes; Sewing pins; all the foregoing not for use in making craft jewelry, and excluding knitting and crocheting yarns, cords, cordage, ropes, twines and hemp thread" [COLLECTION disclaimed], in view of the registered mark MANDALA for "“knitting and crocheting yarn, not for use in making craft jewelry."].
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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 @ 12/06/2022
4 comments
4 Comments:
All three were affirmed
Unimportant but potential celebrity tie in? Derrick Coleman, arguably the most talented power forward ever hailed from Detroit. Couldn't find an immediate tie through google but maybe he's building businesses (though without any registered trademarks).
Re the MANDALA decision - The applicant seems to have tried to avoid the 2(d) refusal by incorporating exclusions into its identification of goods (yarns etc). I think about incorporating such exclusions, often in the food and beverage space. Something like: "chocolate confections, and excluding BBQ sauce" or "BBQ sauce, and excluding syrups and concentrates for making beverages." But, as a practical matter, I wonder how solid/reliable such a strategy would be. Would like to read what other commenters have to say on this.
Clients roll their eyes in disbelief when clearance reports for something like a candy discuss other products like BBQ sauces or spice blends. I am sure there are registrations covering both types of disparate Class 30 goods and that it would take the Examining Attorney nanoseconds to find them. For an easy example, there are JACK DANIEL'S candies/chocolates, BBQ sauces, cakes, spice blends, and toys, and jewelry, and ad nauseum plus, of course, the whiskey. The SUFFERING CLIENT'S candy is not knocking off a major/famous brand and will never, ever be confused with the registrant's BBQ sauce. Yet, we must flag the issue and deal with it. All too often with a recommendation to find a different mark for the candy. Or try the co-existence route, which can be a real sweet "treat" when the registrant is a small or unrepresented business.
Re: the Mandala decision's attempted exclusionary wording - As a former examiner, I would say the Office has seemingly moved away from accepting such carve outs or exclusions in the ID to overcome 2d refusals, although it isnt a formal rule and would depend on the specific set of goods/services. The sentiment being that if you need to carve out/exclude particular goods/services in the ID to distinguish them, that is probative of at least a tangential and/or logical relationship between the goods (with the standard being relatedness not similarity).
However, in some recent instances we have still had success with certain exclusionary language, but its generally been effective where the relationship between the goods is already tangential at best.
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