Friday, January 13, 2017

TTAB Test: Which Of These Four Section 2(d) Refusals Was Reversed?

Supposedly one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods. Here are four (IV) recent Section 2(d) appeals. Which one resulted in a reversal? [Answer will be found in first comment].

In re SBE Licensing, LLC, Serial No. 86135841 (January 5, 2017) [not precedential]. [Section 2(d) refusal of THE PERQ and Design (below left) for "restaurant, café, coffee, tea, and juice bar services," in view of the registered mark PERQS, in standard character and design form (below right), for "coffee supply services for offices"].

In re MT Enterprises LLC, Serial No. 86420598 (January 6, 2017) [not precedential]. [Section 2(d) refusal to register (on the Supplemental Register) the mark The No Pull Harness & Leash in One, in standard character form, for "Animal harnesses for dogs; Animal leashes; Dog leashes; Leashes for animals; Pet products, namely, pet restraining devices consisting of leashes, collars, harnesses, restraining straps, and leashes with locking devices" [HARNESS & LEASH disclaimed], in view of the registered mark NO-PULL for "halters for domesticated animals”].

In re Clipper City Brewing Co., LP, Serial No. 86353682 (January 10, 2017) [not precedential]. [Section 2(d) refusal of BLACKBEARD’S BREAKFAST for "beverages, namely, beers, ales, and malt liquors," in view of the registered mark shown below, for "beers" ["Ale", "Virgin Islands Ale Co.", "St. Thomas", "Tortolas", "St. John", "St. Croix" and "Caribbean Sea" disclaimed.].

In re Eyefluence, Inc., Serial No. 86249068 (January 10, 2017) [not precedential]. [Section 2(d) refusal of EYEOS for "Computer hardware and software for providing a user interface involving eye tracking and/or eye movement for wearable devices," in view of the identical mark registered for various eyewear products, including eyeglasses, sunglasses, and frames].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.


At 6:40 AM, Blogger John L. Welch said...

The fourth one (EYEOS) was reversed.

At 12:16 PM, Anonymous Anonymous said...

I can see that one (pun intended) based on the differences of goods, but am a little surprised at the Blackbeard one in light of all of the (albeit) disclaimed words in the registration plus the historical figure of Blackbeard. Seems the Board is allowing a monopoly on a historical figure for beer - which is contrary to what I would have expected based on some decisions I have recently received. Of course consistency at the Board (let alone with the Examining Attorneys) has always been elusive.

At 5:31 PM, Anonymous Nick Forgione said...

I'm not entirely convinced the fourth refusal (eyeos) should have been reversed. Since the marks are identical, the Board rightly focused on the similarity of the goods and services as the central issue; however, I don’t think the close relationship between the Registrant’s physical eyewear (namely eyeglasses) and the Applicant’s hardware and software for wearable devices was given enough weight. In this case, the test to consider is whether the goods and services are related in some manner such that they could give rise to a mistaken belief that the goods emanate from the same source. The dictionary definition of “wearable computer” given in the opinion specifically mentions eyeglasses as an example of a wearable computer. It seems fair to imagine some likelihood of confusion as to a good’s source between a company making software for wearable devices and a company making eyewear, especially given that their names are identical. The opinion also states that there is no evidence that eyewear like Registrant’s does or even could emanate from the same source as computer hardware and software. An advertisement cited just one page prior seems to contradict that statement. The cited ad offers “an eye-tracking software designed for use with our low-cost glasses…” The ad seems to suggest a company offering both eyewear and software. Given that the first DuPont factor, similarity of the marks, weighed so heavily in favor of finding a likelihood of confusion, I don’t think that the Board’s conclusion that the two party’s goods are not related is persuasive.


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