Friday, October 31, 2014

Test Your TTAB Judge-Ability On These Four Section 2(d) Refusals

I once heard a TTAB judge state that the outcomes of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Try your adjudicatory skills on these four recently-decided appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board. [Answer in first comment].

In re Santini Fine Wines, Inc., Serial No. 85592838 (October 29, 2014) [not precedential]. [Refusal to register the mark LEONESSA for wine, in view of the registered mark LEONESS CELLARS (Stylized) for "bottles of wine, namely, wine sold in bottles" [CELLARS disclaimed]].

In re DNA Consulting LLC, Serial No. 85574196 (October 27, 2014) [not precedential]. [Refusal to register CELEBRITY SOUR for "alcoholic beverages, namely, pre-mixed alcoholic cocktails," in view of the registered mark CELEBRITY CELLARS for wine [CELLARS disclaimed]].

In re Evolved Ingenuity, LLC, Serial No. 85807923 (October 22, 2014) [not precedential]. [Refusal to register RECON for "hunting blinds and hunting tree stands" in view of the identical mark registered for "crossbows"].

In re CreditPal, LLC, Serial No. 77900983 (October 15, 2014) [not precedential]. [Refusal to register CreditPal, in standard character form, for "advisory services relating to credit and debit control, investment, grants and financing of loans; consumer credit consultation," in view of the registered mark CREDITPAL & Design for, inter alia accountancy services and provision of business information for credit, finance and insurance evaluation and analysis].

Read comments and post your comment here.

TTABlog Comment:  Would You Have Appealed any of these refusals?

Text Copyright John L. Welch 2014.


At 6:13 AM, Blogger John L. Welch said...

All affirmed.

At 9:34 AM, Anonymous Anonymous said...


At 10:11 AM, Anonymous Anonymous said...

I disagree with the second decision. In my opinion, CELEBRITY is a pretty weak term akin to a laudatory term. Admittedly, SOUR and CELLARS are descriptive terms, but in the context of the goods I think they have sufficiently different connotations. And while this case is not the worst offender, I also think the Board takes an overly expansive view of the relatedness of various types of alcoholic beverages.

At 11:39 AM, Anonymous Joe Dreitler said...

Given the standard for overturning a 2(d) refusal (as opposed to a merely descriptive one), the answer is no. I hope that the lawyers all told their clients that the chances of success on appeal were no more than 15-20% before they filed it. I also would expect that, like most clients, the lawyer got this question, "if you were me what would YOU do?" If the answer wasn't "I would not spend my money appealing this", well, that's too bad.

At 7:00 PM, Anonymous Brad Heisler said...

I would carefully consider appealing the second decision. The other three are probably correct and unlikely to win on appeal.

At 11:38 AM, Blogger Lance said...

Disagree with the second decision. Two entirely different connotations.

At 7:16 PM, Anonymous Anonymous said...

How do the marks in the second case create two entirely different connotations? It seems to me that the only distinctive element of each mark is "celebrity". Maybe a better articulated argument concerning how these marks create different commercial impressions would have resulted in a different outcome.


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