Wednesday, October 11, 2017

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

It has been said that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the goods or services. Presented for your contemplation are three recent TTAB decisions in Section 2(d) appeals. One was reversed. What do you think? [Answer in first comment].


In re Nikon Corporation, Serial No. 86828751 ((October 6, 2017) [not precedential] [Section 2(d) refusal to register the mark MMD (in standard characters) for “laser scanners for industrial inspection and for geometrical measurement, and not for use with land surveying equipment; software for collection and interpretation of data in the operation of laser scanners, not for use with land surveying equipment,” in view of the registered mark shown below for "levelling rods; surveying chains; surveying compass needles; surveying instruments; surveying machines and instruments; transits; tripods”].


In re Ruby A. Bacardi, Serial No. 86809072 (October 3, 2017) [not precedential] [Section 2(d) refusals of the marks THIRTEEN 1330 and 1330 for "Clothing, namely, dresses, skirts, blouses, shirts, pants, and jackets," in view of the registered mark LOGAN 1330 for various clothing items].


In re Benchmark Brewing LLC, Serial No. 86586142 (September 29, 2017) [not precedential] [Section 2(d) refusal of the mark BENCHMARK BREWING COMPANY for "taproom services" [BREWING COMPANY disclaimed] in view of the word + design mark shown below for "restaurant services [RESTAURANT disclaimed]].


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Text Copyright John L. Welch 2017.

3 Comments:

At 6:01 AM, Blogger John L. Welch said...

The MMD refusal was reversed.

 
At 9:06 AM, Anonymous Anonymous said...

In the MMD case, the examining attorney did a good job of gathering evidence, but in doing that she seems to have lost sight of the big picture.

 
At 9:06 AM, Anonymous Anonymous said...

In the Nikon case, and I use "case" pejorative, the TTAB's decisions are bordering on the ridiculous. These TTAB decisions have no basis in business reality. Please someone stop them already.

The TTAB "surmised" that the Nikon's and prior registrant's marketing channels and purchasers are different WITHOUT ANY EVIDENCE OF THAT FACT. There is nothing in the listed goods that would say that Nikon's goods are "hand-held"

"laser scanners for industrial inspection and for geometrical measurement, and not for use with land surveying equipment; software for collection and interpretation of data in the operation of laser scanners,not for use with land surveying equipment"

There is also NOTHING to suggest that prior registrant's goods are only used by "engineers in manufacturing."

How many cases has the TTAB cited to cases saying that if the registration has no limit as to fields of use, the ID is read as covering all fields of use.

SURVEY EQUIPMENT vs SURVEY EQUIPMENT.

The TTAB bent over backwards to allow Nikon,, a major corporation, to register this mark, a WORD MARK that could, conceivable be used for identical goods as Registrant's. How many times has the TTAB thrown that at Applicant's?

If Registrant's ID had limitations and Nikon's had limitations to show separate fields of use, then this is an excellent decision because the business reality is that these two goods would never be confused.

The TTAB also assumes consumers are easily confused. If they are confused, it is not because of confusion as to trademarks, but plain ignorance. A consumer would tell you that Coke and Pepsi are made by different companies. I mean, ordinary people on a local TV news segment, could not remember that Columbus sailed in 1492.

In all honesty, the likelihood of confusion test, which is by a preponderance, needs to upped to the next level. At least "Clear and Convincing Evidence" in ex parte cases and Substantial Evidence for inter partes. Or maybe switch those.

 

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