TTAB Test: Which One of these Three Section 2(d) Refusals Was Reversed?
I once heard a TTAB judge say that the outcome 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. Well, try your luck on these three appeals. Which one resulted in a reversal? [Answer in first comment.]
In re B&M Noble Co., Serial No. 86338620 (October 4, 2016) [not precedential]. [Refusal to register DUCHATEAU DOORS for "wooden doors excluding garage doors, namely, wooden interior doors and wooden entry doors; wood door frames; non-metal decorative moldings and decorative trim for use in building construction; wood moldings; doors of wood clad in aluminum"[DOORS disclaimed] in view of the registered mark CHATEAU for "non-metal garage doors"].
In re Alia Sonara Design Works, LLC, Serial No. 86338224 (September 29, 2016) [not precedential]. [Refusal to register the mark ALIA SONARA in the form shown below, for "Bow ties; boxer briefs; boxer shorts; head scarves; shoulder scarves; silk scarves; ties" on the ground of likelihood of confusion with the registered mark ALIA for "“ladies' clothing, namely jackets, skirts, blouses, tops, pants, pant suits, shirts, coats, sweaters, tunics, housecoats, jumpers, jeans, t-shirts, vests, tank tops, cullotes, tunics, and suits"].
In re Zen Marketing, LLC, Serial No. 86487195 (September 29, 2016) [not precedential]. [Refusal to register ZEN TEA TRADERS & Design (shown below left) for "Black tea; Earl Grey tea; Fruit teas; Green tea; Japanese green tea; Oolong tea; Rooibos tea; Tea; Tea for infusions" [TEA TRADERS disclaimed], in view of the registered marks ZenTea & Design for "tea" (shown below right) and MY ZEN TEA for "Tea, herbal tea, teabased beverages, coffee, sugar, spices"].
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TTABlog comment: How did you do?
Text Copyright John L. Welch 2016.
posted by John L. Welch @ 10/26/2016
5 comments
5 Comments:
The Zen Tea decision was reversed.
It would be nice if the TTAB let us know whether the differences in the marks was enough (I think they implied so much but that's not the holding since they also discussed the weakness of ZEN, although they seemed to discuss that as an afterthought). Their decisions are always too ambiguous. The cases would be more helpful if they decided them on the minimum number of factors instead of the way they do it.
Wow. I was positive that of the three - Zen Tea was upheld, but could not decide on which of the other two was reversed.
I now wonder if the outcome of a Section 2(d) likelihood of confusion cases can best be predicted by the flip of a coin.
I do see there were two third party ZEN registrations owned by separate companies. The Board basically said, since there are already two ZEN marks - why not three? I am not sure that two third party registrations is “powerful” evidence of weakness, but the Board went that way.
Perhaps this case shows the importance of not allowing third parties to "squeeze in" to your space or you will soon have a flood of marks that will dilute your branding.
Perhaps an Opposition on the horizon here?
A round of applause (clap with one hand only please) for those who correctly answered your question.
Wow. I was expecting Zen Tea to be a WYHA, which I guess shows the value of taking long shots.
Nine times out of ten, that third-party evidence would have been dismissed with "There's no evidence of the extent of actual use or sales of those products, so the evidence of third-party use is given little weight".
I have to wonder how much the panel was influenced by the fact that it's tough to make a coherent argument for how 'My Zen Tea' deserved registration and this mark doesn't, though consistency is not usually something the PTO cares about.
(My money was on 'Chateau', with the weakness of the cited mark being enough for the differences in the products to carry the day.)
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