Friday, August 26, 2016

Precedential No. 22: Appellants Fail To Address PTO Refusals, TTAB Affirms

The Board affirmed the USPTO's refusal to register the mark HEMP HOME HEALTH for "home health care services" because Applicants, in their appeal, failed to address the three grounds of refusal: mere descriptiveness or deceptive misdescriptiveness under Section 2(e)(1) and failure to respond to a Rule 2.61(b) request for information. In re Heather Harley and Carolyn Jones, 119 USPQ2d 1755 (TTAB 2016) [precedential].

During prosecution, Examining Attorney Jeffrey J. Look issued the Section 2(e)(1) refusals and requested information under Rule 2.61: concerning the significance of HEMP as applied to the services, whether the services comply with the Controlled Substances Act ("CSA"), and whether applicants will be using hemp-based products in their services. He twice issued advisories regarding a possible refusal based on the ground that the use of the applied-for mark would not be lawful. Applicants complied in part, but not fully, with the Rule 2.61 request, The Examining Attorney made the three refusals final.

In their appeal, applicants framed the issue as follows: "Can an Applicant's lawful use of a trademark be denied for use in connection with legal goods because the Applicant also sells substances that may be illegal under the CSA?"[Actually, a refusal of registration has nothing to do with whether applicants may use the mark - ed.]. Applicants did not address the three grounds for refusal that were issued by the Examining Attorney.

The Board observed that applicant's arguments "suggest that they are attempting to appeal a mere advisory statement made in the Examining Attorney's Office Actions." But an advisory action is not a refusal to register. The TTAB has jurisdiction only over "a final decision of the examiner in charge of the registration of marks." See Lanham Act Section 20.

The filing of a notice of appeal has the effect of appealing all refusals or requirements made final. Applicants' failure to address these refusals is a basis for affirming the refusal of registration on all grounds.

Therefore, the Board affirmed the refusals to register.

Read comments and post your comment here.

TTABlog comment: Gee, I wonder who applicants' attorney was?

Text Copyright John L. Welch 2016.


At 8:20 AM, Blogger Brad Salai said...

I don't know, but I'm pretty sure (s)he doesn't read this!

At 10:55 AM, Blogger Unknown said...

And the attorney was - wait for it - Matthew Swyers. I haven't heard about him since I learned that the PTO was giving him a colonoscopy looking for malignant malpractice. He solicited one of my clients to sign up for his Standard (trademark) Enforcement Packages. When I started reading this post, I began to feel empathy for what had to be a couple of pro se applicants navigating the wonderful world of ex parte appeals. Empathy gave way to disgust, however, when I saw that Mr. Swyers was representing the applicants. How could a trademark practitioner be so off base? He failed to address the three grounds for refusal! Yikes.

At 11:31 AM, Anonymous Anonymous said...

Has Mr. Swyers ever appeared at an oral hearing before the Board?

At 12:28 PM, Blogger Unknown said...

Still seems like the TTAB should have addressed the merits of the failure-to-respond refusal. The issue wasn't set up very clearly in the appeal brief, but if a Rule 2.61(b) information request is improper in the first place, shouldn't a final refusal based on failure to respond to that request be reversed on appeal?

If you squint, I think you could read the applicant's argument as saying that the Examiner's question ("Do you intend to sell marijuana?") has no bearing on whether the applicant has a bona fide intent to use the mark in connection with lawful services.

At 1:31 PM, Anonymous Anonymous said...

And Swyer's representation was probably the reason why this decision was deemed "precedential."

At 6:24 PM, Blogger John L. Welch said...

Even if you construe the appeal as being directed to the 2.61 request for information, the applicants did not address the other two refusals, and therefor they lose anyway. So why address the third refusal?

At 8:22 AM, Anonymous Darlene Klinksieck said...

Next time Swyers has an oral argument I'm going to go over (quick Metro ride, thankfully) to sit in and watch for myself ...

At 8:31 AM, Blogger John L. Welch said...

Darlene, I don't think oral argument is included in The Trademark Company's $695 appeal package.


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