Friday, November 11, 2005

Supplemental Registration Blocks "HALLOWEEN USA" Design Mark Under Section 2(d), Says TTAB

The next time a client asks "what good is a Supplemental Registration?," this case may be worth mentioning. The Board affirmed a refusal to register the mark HALLOWEEN USA & Design (shown below on the left) for retail store services with a Halloween theme, finding it likely to cause confusion with the mark HALLOWEEN, USA & Design shown on the right ("Halloween" disclaimed), registered on the Supplemental Register for the same services. In re Gags and Games, Inc., Serial No. 76508596 (October 24, 2005) [not citable].

Applicant's mark (left); the cited mark(right)

Applicant Gags & Games feebly argued that the cited Supplemental Registration is "inherently weak" and that confusion is not likely because a "side by side comparison of the two marks shows that they are easily distinguishable from each other."

The Board, however, pointed out that a side-by-side comparison of mark is not the proper test "inasmuch as it is not the ordinary way that customers will be exposed to the marks." It noted that the marks are "identical in sound and meaning," the pumpkin design in Applicant's mark is commonplace for a store that sells Halloween-themed merchandise, and the use of stars ("which on the flag of the United States of American are widely known to represent states") to bracket the geographical term USA "can scarcely be said to distinguish" the marks.

As to the fact that the cited registration is on the Supplemental Register, the Board noted:

"While it is true that the Supplemental Register does not afford registrants the full benefits accorded to registrants on the Principal Register, marks on the Supplemental Register are protected under Section 2(d) of the Trademark Act against registration of confusingly similar marks. See In re Amtel Inc., 189 USPQ 58 (TTAB 1976). Similarly, although the Applicant argues that Registrant's mark is 'inherent[ly]' weak, even weak marks are entitled to protection. In re Clorox Co., 198 USPQ 337 (CCPA 1978)."

The Board also affirmed the PTO's requirement that Applicant disclaim the words HALLOWEEN USA in its mark. Applicant effectively conceded that point in its response to an Office Action in the case, and presented no argument in its appeal brief.

Finally, Gags & Games extracted some small satisfaction when the Board reversed the PTO's refusal to register based on its contention that, under Rule 2.51(a)(1), the mark as shown on Applicant's drawing did not comport with the mark shown on the specimen of use (see below).

Applicant's specimen of use

The Examining Attorney oddly based his refusal on the observation that "in the specimen, the word USA and the two stars appear immediately below the word HALLOWEEN. However, the drawing contains a significant space in between these elements."

The Board disagreed, finding nothing "significant" in the space appearing on the drawing. "Such gap is not so wide or otherwise prominent that it alters in any meaningful way the overall commercial impression of the mark as it appears on the specimens of use."

Text Copyright John L. Welch 2005.


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