Tuesday, April 09, 2013

Precedential No. 14: Refusing to Read Cited Registration Narrowly, TTAB Affirms 2(d) Refusal of LOTUS for Casino Bar Services

The Board affirmed a refusal to register the mark LOTUS for "bar services located in a casino," finding it likely to cause confusion with the identical mark registered for "providing banquet and social function facilities for special occasions; restaurant and bar services." Applicant argued that the "restaurant and bar services" of the cited registration must be considered in the context of the entire recitation of services and therefore read narrowly to be services offered in connection with "banquet and social function facilities for special occasions." The Board disagreed, and instead read the disputed phrase as identifying discrete and separate services. In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163 (TTAB 2013) [precedential].

The crux of the matter was, of course, the similarity of the services. Applicant limited its "bar services" to those offered in a casino, but there was no restriction on the "restaurant and bar services" in the cited registration. The Board presumed that the latter services included bar services located in a casino. See Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).

The Board acknowledged that it is unlikely that registrant would be offering its bar and restaurant services in the same casinos as those in which applicant rendered its bar services. "However, the relevant class of purchasers, i.e., casino patrons, would be the same in both cases, and we must assume that they could encounter applicant's and registrant's services in the different casinos."

Applicant argued that Registrant's "restaurant and bar services' must be considered in the context of Registrant's recitation of services in its entirety, so that the restaurant and bar services should be limited to those offered in connection with "providing banquet and social function facilities for special occasions." The Board was not persuaded.

In the cited registration’s identification of services, the "providing banquet and social function facilities for special occasions" are services separated by a semicolon from the "restaurant and bar services." Under standard examination practice, a semicolon is used to separate distinct categories of goods or services. See Trademark Manual of Examining Procedure Section 1402.01(a) (October 2012).

The Board observed that applicant essentially was asserting that "restaurant and bar services" should be read in pari materia with "providing banquet and social function facilities for special occasions." That argument was unavailing. See In re Thor Tech Inc., 90 USPQ2d 1634 (TTAB 2009) [Interpreting the term "trailers" broadly in the phrase "trailers, dump trailers, and truck bodies" to include recreational trailers, rather than restrictively to refer to industrial and commercial trailers].

Finally, the Board found that the relevant purchasers include ordinary consumers who would exercise only a normal degree of care in their purchasing decisions.

And so the Board affirmed the refusal to register.

TTABlog comment: WYHDTDP? Would you have deemed this decision precedential?

Read comments and post your comments here.

Text Copyright John L. Welch 2013.


At 12:23 PM, Anonymous Anonymous said...

Hi John - maybe on the precedential. My take on your report is that Applicant is not clear on interpretation of the goods/services ID - broad vs. narrow. I agree with the Board on their decision. What I am unsure of is whether the Board is elevating this decision to precedence to put practitioners on notice that the basic trademark prosecution skills are on the wane.

At 12:50 PM, Anonymous Anonymous said...

I recall this legal point of trying to narrow a cited registration's ID by "reading it in context" being discussed on the E-Trademarks listserv. I think that is a somewhat novel argument that I suspected would not have much support and sway with the Board and I think that is why the Board elevated this to precedential. But the ID at issue here was rather simple and explained away too easily by the Board when concluding that the semi-colon is dispositive of the interpretration.

I attempted this argument in a response to a 2(d) refusal when the applicant had to get around "all-purpose cleaning solutions" because both applicant and cited registrant offered cleaning solutions. However, one could clearly distinguish the markets of the cleaning solutions once one viewed each business and their intended markets. The cited registrant catered to only a specific field and offered products for use only in that field. Also, a reality in the field of marks for cleaning products is that virtually every applicant seeks to cover "all-purpose cleaning solutions" because they can - that ID is in the ID Manual and therefore never questioned. I felt I had no choice but to make that argument because applicant was not in a position to file a partial cancellation action against the cited registrant. Fortunately, the response persuaded the examiner to withdraw the 2(d) refusal so this never needed to be argued on appeal.

I still feel that a legitimate argument can be made to read certain ID's in context in order to more properly conform them to what one could see is the obvious actual use of the mark and lack of confusing similarity with a subsequent mark, given the right facts. But I realize that may be a rather liberal decision which the TTAB is not likely to undertake anytime soon.


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