Wednesday, June 24, 2009

Would You Have Appealed from this TTAB Trifusal?

It's time for another WYHA! Attorney Peter S. Herrick attempted to register the logo mark shown immediately below for "attorney services," but Examining Attorney Ty Murray hit him with a triple refusal. Mr. Murray maintained that registration is barred by Sections 2(a) and 2(b), and he also deemed Applicant's drawing to be unacceptable. Undaunted, Mr. Herrick appealed, but the Board upheld all three refusals. In re Peter S. Herrick, P.A., 91 USPQ2d 1505 (TTAB 2009) [not precedential]. [NB: Re-designated as precedential on June 26, 2009 (here).]

Section 2(a): The PTO contended that Applicant's mark falsely suggests a connection with United States Customs and Border Protection, formerly known as the United States Customs Service, a U.S. government agency. Herrick pointed out, however, that the U.S. Customs Service is no longer in existence, having been merged into the Department of Homeland Security in 2003 and becoming "United States Customs and Border Protection." But the Board noted that the agency still refers to itself as the U.S. Customs Service, as do members of the public.

Prior to its name change, the Customs Service used a seal (immediately below) that is "virtually identical" to Applicant’s mark. The Board found Herrick's mark to be "a close approximation of the former name and/or current identity of the United States Customs and Border Protection."

Deeming Applicant's focus on U.S. Customs law to be "strong evidence" that Herrick was attempting to draw a connection between his services and the agency that oversees customs issues, and finding that "the name 'U.S. Customs Service' has meaning only as a governmental agency," the Board concluded that the subject mark "points uniquely [and] unmistakably to United States Customs and Border Protection."

Finally, in light of the "ubiquitous presence" of the United States Border and Protection Agency and the close relationship between Applicant's legal services and the duties of the agency, the Board found that "a connection with the agency would be presumed if applicant’s mark were used in connection with legal services."

Consequently, the Board affirmed the Section 2(a) refusal.

Section 2(b): Applicant Herrick made a bit of headway in his attack on the Section 2(b) refusal. That section bars registration of a marks that consists of or comprises "the flag or coat of arms or other insignia of the United States ... or any simulation thereof." However, department insignia that are "merely used to identify a service or facility of the Government are not insignia of national authority ... and do not fall within the general prohibitions of this section of the Statute."

And so the U.S. Customs Service seal is not protected by Section 2(d). However, the Examining Attorney also cited the seal of the Department of the Treasury, which is an insignia protected by Section 2(b).

The question then became whether Herrick's mark is a "simulation" of the Treasury seal in the context of Section 2(d). The Board found the two seals to be "virtually identical, and that the average person upon seeing applicant's mark would associate it with Department of Treasury seal." Therefore, Herrick's mark consists of a simulation of an insignia of the United States and is barred from registration under Section 2(b).

Drawing: Applicant Herrick ignored the PTO's requirement that he submit a new drawing, and the Board noted that the application should have been deemed abandoned at that point for failure to respond. See Rule 2.65(a).

There were two problems with the drawing: (1) it was not clear (see above), and (2) Herrick claimed the colors blue, yellow, and white as features of the mark, but refused to file a new drawing. Because the Examining Attorney raised the issue on appeal, and even though Herrick did not address the issue, the Board considered it "for purposes of completeness."

Trademark Rule 2.54, in pertinent part, requires that the drawing depict the mark in color if color is claimed as a feature of the mark, and that all lines be "clean, sharp and solid." As to the former requirement, the Board found Herrick’s unacceptable because, as the Examining Attorney pointed out, “the depiction of the mark is unclear; the drawing is a photocopy of the mark with a smudged white line appearing across the top of the image, which will not reproduce satisfactorily.” As to the latter, the black and white drawing is unacceptable because Herrick claimed color as a feature of the mark.

Consequently, the Board affirmed this third refusal under Trademark Rules 2.52-2.55.

TTABlog comment: Okay, so Mr. Herrick at least had some semblance of an argument regarding the first two refusals. But the third? Gimme a break!

I suspect the Board went ahead with its consideration of the two substantive refusals, rather than just throwing this case out in view of the unacceptable drawing, because it figured Mr. Herrick would file a new application with a color drawing and the same two substantive issues would arise again.

TTABlog sidebar: I coined the word "fraudit" several years ago, only to see it become generic for a fraud-detecting audit of one's trademark portfolio. Now I have coined the term "trifusal" for a triple-based PTO refusal. How long, I wonder, before the term "trifusal" makes its way into common trademark parlance?

Text Copyright John L. Welch 2009.


At 8:18 AM, Anonymous Darren Spielman said...

I like "trifusal" and I have a feelings it will apply in other places as well.

At 11:08 AM, Blogger John L. Welch said...

Like where?

At 2:27 PM, Anonymous Marta Randall said...

Maybe if a the bettor selects the first three finishers in reverse order?


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