Thursday, March 30, 2017

Despite Applicant's Prior Registrations, TTAB Affirms 2(d) Refusal of SWIRL WORLD & Design for Frozen Yogurt

The Board affirmed a Section 2(d) refusal to register the mark shown below left, for "frozen yogurt" and for "self-serve yogurt shop services," finding it likely to cause confusion with the registered mark shown below right, for "self-serve frozen yogurt shop services." Applicant pointed to its two existing registrations for the identical mark, except for the color claim, for the identical goods and services. Not good enough, said the Board. In re RaceTrac Petroleum, Inc., Serial No. 86636421 (March 28, 2017) [not precedential] (Opinion by Judge Pologeorgis).

The Board found the design elements in the marks to be less dominant than the literal elements. The latter are highly similar in sound, appearance, and commercial impression. The involved services are identical, and applicant's goods are related to the services of the cited registration. As to channels of trade, the evidence showed that frozen yogurt and self-serve yogurt shop services may be provided in the same marketplace to all relevant classes of purchasers.

Applicant invoked the 13th du Pont factor, which permits the Board to consider any other information relevant to the issue of likelihood of confusion. Applicant argued that, since it owns two registrations for a mark that is identical to the applied-for mark, except for the claim of color, for goods and services identical to those in the applied for application, and since it has priority of use, it would be inequitable to not allow the applied-for mark to register. It further noted that the mark of the prior registrations has coexisted with that of the cited registration for more than four years.

The Board distinguished In re Strategic Partners [TTABlogged here], because there the prior registrations were more than five  years old and thus no longer subject to cancellation under Section 2(d). Here, applicant's registrations were not yet five years old.

The Board acknowledged that denying registration here is inconsistent with the issuance of applicant's earlier registrations, but to hold otherwise "would give preclusive effect to the decisions of Examining Attorneys in granting Applicant's prior registrations, and the Board is not bound by the decisions of Examining Attorneys."

As to applicant's assertion of priority, the Board pointed out that such an assertion of priority of use can be given no consideration in an ex parte proceeding when registration has been refused under Section 2(d) in view of a subsisting registration.

The Board concluded that the existence of applicant's prior registrations did not outweigh the other du Pont factors.

The Board noted that applicant was not without remedy. It could have sought suspension of the application in order to pursue (1) a cancellation proceeding against the cited registrations, or (2) a consent agreement with registrant. An applicant's assertion of priority of use constitutes a collateral attack on the cited registration, which cannot be entertained in an ex parte proceeding.

Read comments and post your comment here.

TTABlog comment: Hmmm. Some interesting strategic decisions were made here.

Text Copyright John L. Welch 2017.


At 9:41 AM, Blogger Gene Bolmarcich, Esq. said...

This flies in the face of their own precedent. None of the facts that the Board deemed relevant here to distinguish it from Allegis Staffing were mentioned at all in the aforementioned case as being factors in the "test" devised therein.

At 9:45 AM, Anonymous Anonymous said...

At the risk of repeating myself:

Stare Decisis? Stare Decisis? We don't need no stare decisis!

At 10:11 AM, Anonymous Morris said...

I strongly disagree with the TTAB's decision in this case, essentially because there is no additional harm to the Registrant by allowing the registration of Applicant's mark. Having said that, I note that Applicant was fully aware of Registrant's mark because it filed an Extension of Time to oppose Registrant's mark. However, Applicant never followed through with the Notice of Opposition.

At 12:04 PM, Blogger John L. Welch said...

Forget Stare Decisis. That applies to court decisions. TTAB can't be bound by decision of a single examining attorney, or we would be reduced to following the least competent examiners. What it is more like is an estoppel situation because it's the same party before the USPTO.

At 3:29 PM, Blogger Ron Coleman said...

How is the "least competent examiners" problem any different if we view it as estoppel?

Anyway isn't estoppel generally unavailable against the government -- more or less for that reason, i.e., "the government is not bound by the acts of its [least competent] agents"?

At 6:04 PM, Anonymous Anonymous said...

I can see how the Board got here. I think that the late submission of the third-party registrations did them in.

At 7:45 PM, Blogger John L. Welch said...

I didn't say it was "estoppel." I said it was "more like an estoppel situation" - i.e., unfair. I agree that the Board should not be bound by the decisions of a single examiner.


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