Monday, September 09, 2019

TTABlog Test: How Did These Three Recent Section 2(d) Appeals Come Out?

Here are three very recent TTAB decisions in Section 2(d) appeals, decided on the same day. I'm not giving any hints, so you're on your own. How do you think these appeals came out? [Answer in first comment].

In re Smith & Wesson Corp., Serial No. 87390227 (September 4, 2019) [not precedential] (Opinion by Judge Albert Zervas). [Section 2(d) refusal of M&P SHIELD for knives, can openers, hatchets, and machetes, in view of the registered mark SHIELD for "knives"].

In re EP Family, Corp., Serial Nos. 87561113 and 87561116 (September 4, 2019) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of the mark CHA4TEA in standard character and stylized form (below left) for "Instant tea; Tea," in view of the registered mark CHA FOR TEA and design (below right) for "Food preparation services; preparation of food and beverages; provision of food and drink in restaurants; restaurant services, including sit-down service of food and take-out restaurant services; restaurant services, namely, providing of food and beverages for consumption on and off the premises; serving of food and drink/beverage" [CHA and FOR TEA disclaimed].

In re Monsieur Touton Selection Ltd., Serial No. 87874805 (September 4, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo). [Section 2(d) refusal of the mark PACIFIC VIEW VINEYARDS for wine [VINEYARDS disclaimed], in view of the registered mark PACIFIC VISTA for wine].

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHAs?

Text Copyright John L. Welch 2019.


At 5:15 AM, Blogger John L. Welch said...

All three were affirmed

At 10:18 AM, Blogger Catherine said...

Not surprising how these came out, definitely in WYHA territory. Yet, re the CHA4TEA case, 10 or 20 years ago I would have appealed for certain. I am fascinated with the TTAB's expansive view of the word portion of design marks. It seems they are erasing the distinction between standard word and word & design marks. In this case, all the words were disclaimed and the designs are clearly and demonstrably different, yet the registrant got the same protection they would have had with a standard word mark, and I believe that's improper and troublesome trademark policy.

If the distinction is to have any meaning, it must be enforced at least sometimes, and I am hard pressed to find a case in which a different design was permitted to register in light of a registered mark with similar words but a strikingly different design. Does anyone know when TTAB last upheld the design limitation?

At 11:50 AM, Anonymous MM said...

One curious aspect of the CHA4TEA case is this: "We have also considered Applicant’s argument that CHA is 'conceptually weak' because it is a 'commonly used term in association with tea'.”

There is no mention of the fact that CHA means "tea" in Mandarin. It's more than just "commonly used in association with tea" - it is "tea."

Regarding the disclaimer, it is also significant (perhaps) that the registrant disclaimed "CHA" and "FOR TEA" separately. They did not disclaim the entire phrase "CHA FOR TEA."


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