Wednesday, January 04, 2006

Belated Amendment of I.D. Overcomes "GRAVITY" in TTAB 2(d) Appeal

A belated amendment of its recitation of services halted Gravity Systems, Inc.'s plunge toward defeat in this TTAB ex parte appeal. The Board reversed a Section 2(d) refusal to register GRAVITY SYSTEMS for computer consultation, installation, and repair services after Gravity explicitly excluded "film and video editing and compositing" from its application ("SYSTEMS" disclaimed). The Board found the mark not likely to cause confusion with the registered mark GRAVITY for computer software for film and video editing and compositing. In re Gravity Systems, Inc., Serial No. 78330413 (December 23, 2005) [not citable].

In its appeal briefs, Gravity stated its willingness to exclude film and video editing and compositing from its recitation of services. The Board allowed Gravity twenty days within which to file a "proper request for remand," accompanied by "the proposed identification of services in its entirety." Gravity did so, but the Examining Attorney maintained the refusal, and the case went bounced back to the TTAB.

The Board found the marks "highly similar in appearance and pronunciation [TTABlog comment: as long as you don't pronounce the word "SYSTEMS"], and virtually identical in connotation and commercial impression."

As to the relatedness of the goods and services, the Examining Attorney made of record 43 third-party registrations, but the Board found them to be of little import. Eleven were based on foreign registrations rather than actual use; of the remaining 32, the Board was able to identify only one registration "that might possibly be said to include computer hardware and software for film and video editing and compositing." That lone registration "is not sufficient" to demonstrate that Registrant's goods and Applicant's services "are normally offered by companies under a single mark."

"On the contrary, the fact that the Examining Attorney was able to find only one such third-party registration despite the extensive search he apparently undertook ... indicates that such goods and services normally are not offered by companies under a single mark."

moreover, the Board noted, Applicant Gravity specifically excluded services relating to film and video editing and compositing. "In view thereof, it is not readily apparent how ... the trade channels for the respective services and goods would be the same."

The Board also found that the buyers of the goods and services must be considered "sophisticated purchasers" who will "know their industry." These purchasers are "not likely to assume that such goods and services emanate from a single source, even if they are offered under the same mark."

The Board therefore reversed the refusal to register.

TTABlog comment: This Applicant seemingly stumbled onto a winning formula. For a particularly clever amendment to an application on appeal, see the fancy footwork in In re Oppedahl & Larson, Serial No. 75051843 (March 11, 2005) [not citable]. (discussed here at the TTABlog.)

Text Copyright John L. Welch 2006.


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