TTABlog Test: Which One of These Three Section 2(d) Refusals Was Reversed?
A TTAB Administrative Trademark Judge once said to me that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the involved goods or services. Here are three recent decisions in appeals from Section 2(d) refusals. One refusal was reversed. Which one? [Answers in first comment].
In re Rod’s Western Palace, Inc., Serial No. 87914427 (April 17, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of ROD’S, in standard character form, for retail store services featuring a wide variety of consumer goods, including apparel, leather goods, jewelry, home furnishings, furniture, and garden supplies, in view of the registered mark ROD’S AMERICAN MARKET PUTTING AMERICA BACK TO WORK and design, shown below, for “Retail apparel stores; Retail furniture stores; Retail gift shops; Retail variety stores; Referrals in the field of hunting and outdoor gear; Retail gift shops [sic]"].
In re Aiko Beauty, Inc., Serial No. 88109580 (April 17, 2020) [not precedential] (Opinion by George C. Pologeorgis). [Section 2(d) refusal of GIVON for "Cosmetics; Cosmetics and cosmetic preparations; Cosmetic creams; Cosmetic creams for skin care; Cosmetic preparations for skin care; Facial cleansers; Skin cleansers; Skin lotions; Skin toners" in view of the registered mark GG GIVONI (Stylized as below) for "Make-up"].
In re Coats & Clark Inc., Serial No. 79236578 (April 17, 2020) (Opinion by Judge Elizabeth A. Dunn). [Section 2(d) refusal of SUPER SAVER FAIR ISLE for "Yarns and threads, for textile use" [FAIR ISLE disclaimed] in view of the mark FAIR ISLE registered on the Supplemental Register for "knitting yarn; yarn; hand knitting yarns" and for "crochet hooks; crochet needles; knitting counters; knitting implements, namely, stitch holders; knitting implements, namely, stitch markers; knitting needles; hand-knitting needles.]"
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TTABlog comment: How did you do? Any WYHAs here?
Text Copyright John L. Welch 2020.
posted by John L. Welch @ 4/20/2020
6 comments
6 Comments:
The third one was reversed.
Wait, "SUPER SAVER" is inherently distinctive? Was the EA and the TTAB asleep at the wheel? See Reg. Nos. 3221366, 3316513, 4556516, 4083696, 4714222, 4824851, 4582053, and 5563630. In these eight registrations the words "SUPER SAVER" or "SUPER SAVERS" were either disclaimed, or the respective marks were registered under Section 2(f), or registered on the Supplemental Register. Can we get a reading here on whether or not the combination of the words "SUPER SAVER" or "SUPER SAVERS" is in fact distinctive?
I am puzzled by the fact that FAIR ISLE is the subject of a registration on the Supplemental Register which presumably means that through use the mark could become distinctive. But the applicant fully incorporates the registered mark and disclaims exclusive rights in it and is entitled to registration as a whole despite the fact that a portion of the mark is a claimed trademark right (and arguably a registered right) of another third party? Why even have the Supplemental Register honestly.
I knew it. Examiners still don't understand what "Supplemental Register" means.
It's fairly insane that "Fair Isle" is on the Supplemental Register; it is a famous style of knitting, https://en.m.wikipedia.org/wiki/Fair_Isle_(technique). It is entirely non-distinctive for anything to do with knitting, Supplemental Registration notwithstanding.
WYHA? -I am not sure that I would have appealed the registration refusal. Taking into consideration the due diligence owed to a client, it may seem likely that appealing a reversal of a registered mark that has existed on the market would be a no-brainer. However, I am not sure that in the long term this reversal provides the client the best way to prevent consumers from being confused or deceived about the source of their goods in the marketplace, and to protect the goodwill that the owners of this mark have built over time. Furthermore, the cost and time-consuming effect of undergoing an appeal of a trademark refusal is significant. In hindsight, the owner of SUPER SAVER obtained success, so going down the appeal route is tempting. If I were counsel, I would advise continued efforts on building brand messaging that distinguishes the product from others on the market including capitalizing on their promise of selling a sincerely wholesome and good product. It appears to me that efforts would have been better served in strengthening the consumer connection to the brand, especially in light of the existence of this registration since 1989 and the apparent reputation of the product as a reliable, long-standing quality yarn and thread at a low price. Presently, the online presence of the mark is mostly as Red Heart Super Saver Yarn or Red Heart Yarn. Perhaps, cultivating this aspect of the mark is more fruitful for the client than undertaking a strategy to exclude others from using SUPER SAVER in this class of goods.
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