Thursday, March 23, 2006

"GOSMILE PM" Applicant Seeks District Court Review of TTAB 2(d) Affirmance

GoSMILE, Inc. has filed a civil action in the United States District Court for the Eastern District of Virginia, pursuant to 15 U.S.C. Section 1071(b), seeking review of the TTAB's decision in In re GoSMILE, Inc., Serial No. 76518244 (January 20, 2006) [not citable]. As discussed here at the TTABlog, the Board, in a less than convincing ruling, affirmed a Section 2(d) refusal to register the mark GOSMILE PM for toothpaste, finding the mark likely to cause confusion with the registered mark P.M. for "toothpaste and gel."

In the Complaint, captioned GoSMILE, Inc. v. Dudas, Civil Action No. 1:06 CV 291-GBL/TRJ (E.D.Va. filed March 17, 2006), GoSMILE asserts that the Board disregarded its evidence of the weakness of the term "PM" based on third-party use, and failed to follow applicable Board precedent, including Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) (blogged here).

By choosing the district court route rather than appealing to the Federal Circuit, GoSMILE will have the opportunity to submit additional evidence on the likelihood of confusion issue, and particularly on the Knight Textile issue of the weakness of the cited mark. See McCarthy on Trademarks and Unfair Competition, Section 21:21.

Text Copyright John L. Welch 2006.


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