Tuesday, May 18, 2010

In Stinging Reversal, TTAB Finds "SOLIGA FOREST HONEY" Not Confusingly Similer to "FOREST HONEY" Design Mark

Just two days after oral argument, the Board issued its decision in In re Himalaya Global Holdings, Ltd., Serial No. 77117183 (May 14, 2010) [not precedential], reversing a Section 2(d) refusal of the mark SOLIGA FOREST HONEY for honey [FOREST HONEY disclaimed]. The Examining Attorney had found the mark confusingly similar to the registered mark FOREST HONEY & Design for honey [HONEY disclaimed], but the Board found that not to bee the case.

Applicant stated that SOLIGA “refers to a tribal group living in the forest regions of the Karnataka State of India,” and that SOLIGA FOREST "has no significance in the relevant trade or industry or as applied to the goods/services listed in the application, no geographical significance, nor any meaning in a foreign language.”

Applicant and the Examining Attorney agreed that "forest honey" is a type of honey. However, the Examining Attorney "appeared to believe" that the term cannot be considered merely descriptive of the registrant’s goods because the registration contains a disclaimer of only the word HONEY, not FOREST HONEY. She considered Applicant’s arguments that the term FOREST HONEY is generic to be an improper collateral attack on the validity of the registration.

The Board disagreed: "The registration affords prima facie rights in the mark as a whole, not in any component. Thus, a showing of descriptiveness or genericness of a part of a mark does not constitute an attack on the registration."

The Examining Attorney also considered the word portion of the registered mark to be entitled to greater weight in the 2(d) analysis. However, the Board pointed out, that is not a fixed rule. Here, "because of the highly descriptive, if not generic, nature of the words FOREST HONEY, the prominent display of the design, and the depiction of the word HONEY, which gives the appearance of being written with honey, we consider the design portion of the cited mark to be dominant."

On the other hand, SOLIGA is the dominant portion of the applied-for mark.

Consequently, the Board concluded that the marks are so different that confusion is not likely to result, and so it reversed the 2(d) refusal.

TTABlog comment: One of my least favorite songs of all time:

One of my favorites:

Text Copyright John L. Welch 2010.


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