Monday, August 22, 2016

TTAB Test: Which of These Three Section 2(d) Refusals Was Reversed?

People are saying that one can predict the outcome of a Section 2(d) case about 95 percent of the time just by looking at the marks and the goods/services. In one of these three recent appeals the Board reversed a likelihood of confusion refusal. Let's see how you do in figuring out which one it was. [Answer will be found in first comment].

In re Folino Estate, LLC, Serial No. 86356824 (August 19, 2016) [not precedential]. [Refusal of the mark FOLINO ESTATE & Design (below left) for wine, bar and restaurant services, and catering services, in view of the registered mark FOLIN CELLARS & Design (below right) for wine].

In re Tax Refund Services, Inc., Serial No. 86670858 (August 18, 2016) [not precedential]. [Refusal to register the mark shown below left for "tax filing services," in view of the registered mark TRS in standard character and design form (below right) for tax advisory services.

In re Mannatech, Inc., Serial No. 86447383 (August 17, 2016) [not precedential]. Refusal of the mark NUTRIVERUS & Design (below left) for "dietary and nutritional supplements sold through a multi-level marketing program," in view of the registered mark NU VERUS & Design (below right) for "liquid nutritional supplement; nutritional supplements; vitamin and mineral supplements].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.


At 5:50 AM, Blogger John L. Welch said...

The top one was reversed. No foolino!

At 8:00 AM, Blogger Brad Salai said...

I narrowed my choice down to one or three, but chose poorly. This seems to a case of three getting the wrong panel. The analysis in the first case would, I think, have resulted in the reversal of the rejection in three.
The panel in three found verus to be prominent in NU verus, but the mortar and pestle not prominent. Really??
I agree that one is correct, but think three should also have been reversed if we are to have any consistency.

At 9:26 AM, Blogger RT said...

I agree with Brad. I don't know if one could do better than simply apply the rule that a large percentage of refusals are upheld in predicting most results these days.

At 11:16 PM, Anonymous Cliff H said...

Once you get to the Examiner's Brief most appeals are denied, but many appeals (in my experience anyway) result in allowance without the Examiner filing a brief. So at the time you file the appeal your chances are, all else equal, much better than whatever the published reversal rate is.

I also find the WYHA question a bit strange for attorneys. If you explain to the client what you think their chances are and they tell you they want to appeal, then you do it. I think all 3 of these cases had some chance of getting a reversal, depending on the type of arguments that were made and the panel that was assigned.

As far as predicting outcomes, that depends on the basis for the refusal. With 2(d) it is often pretty subjective and somewhat difficult to predict. But sometimes it's a no-brainer, when the Examining Attorney is obviously wrong on a point of law relating to geographic descriptiveness or something like that.

At 2:23 PM, Anonymous Anonymous said...

Agreed with Cliff H...just following orders


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