Wednesday, August 19, 2009

Re-Test Your TTAB Judge-Ability: Can You Handle Another Nut Case?

Here we go again! Another chance to prove that you are TTAB judicial material. Applicant Sunland, Inc., sought to register the mark SUNLAND for processed nuts and nut butters, raw nuts, peanut butter, and raw peanuts. The Examining Attorney refused registration under Section 2(d), finding a likelihood of confusion with the registered mark SUN-LAND for "raisins, dried fruits, preserved fruits." Applicant argued on appeal that "[a] purchaser of raisins and dried fruits at a store knows fruits from nuts." How would you rule? In re Sunland, Inc., Serial Nos. 77310231 and 77307289 (August 7, 2009) [not precedential].

Of course, the two block-letter marks are "virtually identical." Sunland's assertion that Registrant uses its mark in an "inconspicuous manner on its packaging" was inappropriate, since Registrant's rights in its mark cannot be restricted based on applicant's assertions as to how the mark is used, nor can the marks at issue be distinguished based on how Applicant uses its mark.

Sunland oddly contended that the marks would be pronounced differently, but as the Board has proclaimed many times, "there is no correct pronunciation of a trademark." [What about BLACK CAT for firecrackers? - ed.] In any case, "the presence or absence of a hyphen is hardly sufficient under these circumstances to distinguish the marks."

Turning to the goods, they of course need not be identical in order to support a finding that confusion is likely. "They need only be related in such a way that the circumstances surrounding their marketing would result in relevant consumers mistakenly believing that the goods originate from or are associated with the same source." Moreover, when the marks are virtually identical, a lesser degree of relatedness between the goods is necessary to support a likelihood of confusion.

The Examining Attorney maintained that the goods are "closely related because they are both natural snack products commonly sold by the same companies, they travel in the same channels of trade and are compl[e]mentary goods commonly packaged and/or sold together." He relied on numerous third-party, use-based registrations for marks covering both types of goods, as well as Internet website evidence indicating that specialty retailers offer both types of goods under the same mark.

Sunland pointed to Registrant's deletion of "roasted nuts" from its registration, claiming that this evidenced Registrant's express abandonment of any rights in its mark for nuts. The Board disagreed, and in fact noted that the original inclusion of nuts in the registration supported the relatedness of the goods because it shows that "historically companies have sold both types of goods under the same mark."

The Board had "no hesitation in concluding that the goods identified in the applications and the cited registration are closely related." Did you hesitate?

TTABlog comment: I suspect that, based on third-party registration evidence, one can show that any snack item is related to any other snack item for likelihood of confusion purposes. The same holds for any two beverages, any two items of clothing, any two cosmetic items, etc. So don't we in effect have certain per se rules for the relatedness of these goods? Should the PTO allow broad descriptions in identifications of goods, like clothing, snack food, and beverages?

Text Copyright John L. Welch 2009.


At 8:44 AM, Blogger Frank said...

Based on third party registration evidence it is possible to prove that a loaf of bread is related to an airplane. I've done it. I think that this type of evidence should be given "junk bond" level of credibility. With the internet available only a lazy Examiner relies on third-party registrations.

At 10:16 AM, Anonymous F. A. said...

I continue to have a problem with statements such as "[t]he analysis required in an infringement case differs significantly from the analysis in this registration case." See, for example, Vitarroz Corp. v. Borden Inc., 644 F.2d 960 (2nd Cir. 1981) (BRAVO'S for crackers not infringed by BRAVOS for tortilla chips).

At 10:25 AM, Anonymous Clinton said...

Re your query about broad IDs such as clothing, beverages, etc. I say no for beverages, especially in a state that makes you buy beer, wine, and soda in three different stores.

I think that "clothing" is definitely eligible for such a broad classification. But - CARTERS for baby clothes and CARHARTT for outdoor wear. Not so much. Shirts, pants, sweaters?

I have clients that are inclined to put all manner of clothing items in the ID, and risk failure to show use on all goods, when I feel that hats, shirts, pants will suffice as far as PTO refusal of subsequent applications for related goods.

At 2:08 PM, Anonymous JLHDEA said...

The board relies heavily on third-party registrations in their 2d analyses, so how is an examiner lazy for producing such evidence to the board? This is exactly the kind and type of evidence the board wants to see. Seems crystal clear to me that a thorough and diligent examiner produces third party evidence to the board.


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