Thursday, December 10, 2020

TTABlog Test: Which of These Section 2(d) Refusals Was/Were Reversed?

Some people think that one can successfully predict the outcome of a Section 2(d) appeal by looking just at the goods/services and the marks. Here are three recent decisions in appeals from Section 2(d) refusals. At least one of the refusals was reversed. How do you think these came out? [Answers in first comment].

In re Roost Living LLC, Serial No. 88186224 (November 20, 2020) [not precedential] (Opinion by Judge Mark Lebow) [Section 2(d) refusal of ROOSTUP (in standard character form) for "roommate vetting, matching, and referral services" and for "rental of real estate; rental of apartments; rental of real estate featuring residential co-living housing; rental of furnished and equipped apartments; rental of real estate featuring furnished and equipped residential co-living housing; real estate management services," in view of the registered marks ROOST for "Real estate services, namely, rental of short-term furnished apartments" and "Hotel services; providing temporary housing accommodations; residential hotel services”; RENTAL ROOST for "Providing an interactive website matching potential individual renters with rental properties based on needs and preferences regarding lifestyle, amenities, location, and budget with rental properties available for rent from others"' and ROOST REAL ESTATE CO. (in a box design) for "Real estate brokerage excluding the rental of short-term furnished apartments." Applicant asserted, based on third-party use evidence, that "ROOST" is a weak formative.]

In re Laboratoires Quinton International, S.L., Serial No. 79251083 (December 3, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of TOTUM SPORT for "Dietary supplements, specifically sea-water-based beverages" [SPORT DISCLAIMED], in view of the registered mark TOTUM for "Pharmaceutical products, namely, analgesics; dietetic products, namely, dietetic food supplements and nutritional supplements containing vitamins, minerals, herbs and amino-acids sold in the form of pills, capsules, tablets, powder, bars, liquids, patches and vials, intended for skin improvement, stimulating weight loss, improving blood circulation, improving digestion, alleviating joint pain, alleviating sleep and mood disorders, alleviating physical and mental fatigue, alleviating the effects of menopause and hormone disorders in general; disinfectants for sanitary purposes, namely, hand gels." Applicant maintained that that there was no evidence that "sea-water-based beverages and ‘pharmaceutical or dietetic products’ are related" and that its goods are neither pharmaceutical nor medicinal but "integrate one’s diet by boosting hydration."]

In re Globus Medical, Inc.
, Serial No. 88676830 (December 8, 2020) [not precedential] (Opinion by Judge Christen M. English). [Section 2(d) refusal of TRIFECTA for "Implant material comprised principally or completely of human tissue material for use in orthopedic surgery" in International Class 5, in view of identical mark, registered for "Medical devices, namely, heart valve prostheses" in International Class 10. The Examining Attorney maintained that at least eight third-party registrations showed the relatedness of the goods because "implants consisting of artificial material" or "similar wording" in these registrations “encompasses registrant’s heart valve prostheses.”]

Read comments and post your comment here.

TTABlog comment: How did you do? Any WYHAs here?

Text Copyright John L. Welch 2020.


At 6:49 AM, Blogger John L. Welch said...

The first and third were reversed.

At 9:49 AM, Anonymous Carole Barrett said...

Got them....I have had success with reversals in the medical field....

At 12:33 PM, Anonymous Paul Reidl said...

I got it. The Board has issued several non-precedential decisions that discuss the highly specialized and sophisticated nature of doctors. I have an appeal right now that touches on this point.

At 3:18 PM, Anonymous Anonymous said...

The third decision didn't surprise me, being in the medical field, but the first did.

The arguments on third-party use and the co-existence of other registrations are the kind of arguments that usually seem to get less credit from the TTAB than I think they should.

I wouldn't have been surprised for that to get a "We accorded these arguments little probative value because websites aren't sufficient to show the extent of actual use, and the fact that past examining attorneys may have incorrectly granted registrations doesn't matter because each case stands on its own" response.


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