Thursday, March 04, 2021

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

The TTAB recently decided the appeals from the three Section 2(d) likelihood of confusion refusals. At least one of the refusals was reversed. Which one(s)? [Answer will be found in the first comment.]

In re Ubican Global Licensing, LLC, Application Serial No. 88731594 (February 24, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of HEALIX for "herbs for smoking, none of the hemp derived ingredients of which contain a delta-9 tetrahyrocannabinol (THC) concentration of more than 0.3 percent on a dry weight basis," in view of the registered mark HELIX & Design for "smoking pipes."]

In re The Jacob D. Fuchsberg Law Firm, LLP, Serial No. 87843998 (February 26, 2021) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) Refusal of JACOB FUCHSBERG LAW FIRM & Design in view of the registered marks TOURO LAW TOURO COLLEGE JACOB D. FUCHSBERG LAW CENTER & Design, all for legal services].

In re Conmed Corporation, Application Serial No. 88355889 (March 2, 2021) [not precedential] (Opinion by Judge Robert H. Coggins). [Section 2(d) refusal of MIMIX for "medical cutting devices, namely, arthroscopic shavers and burs for small joints" in view of the identical mark registered for "bone implants, namely, bone replacement material composed of a synthetic powder which is mixed with a solution to form a paste, used for the surgical correction of cranial defects."]

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

Text Copyright John L. Welch 2021.


At 6:48 AM, Blogger John L. Welch said...

Only the second one was reversed (Fuchsberg)

At 7:26 AM, Blogger Gene Bolmarcich, Esq. said...

I STILL would have appealed Ubican Global (and really should take it to the CAFC). SO ridiculous. Are we allowed to comment on our own cases?

At 8:17 AM, Blogger Gene Bolmarcich, Esq. said...

In the Conmed case, the Board says something very confusing at the end. It states that the fact that both parties use the same "trade channel" of sales representatives to sell the products, albeit to DIFFERENT and sophisticated, knowledgeable, buyers. That seems contradictory to me. First, if the sales representatives are calling on non-overlapping purchasers, how can that be a similar trade channel and thus weigh in favor of confusion? This sentence in the Conclusion section just makes no sense to me: "The marks are identical, and the goods have been shown to commonly emanate from a single source and travel in the same trade channels; however, the goods are sold to separate classes of sophisticated consumers". Doesn't "same trade channels" imply that the same consumers would encounter the goods? If not, then what would be the relevance?

At 11:00 AM, Blogger Elana Greenway Faniel said...

I got this one right!

At 11:45 AM, Blogger Unknown said...

I see no contradiction. I've always understood "trade channel" to be a factor independent of customer class. Trade channels are broad concepts like direct retail in a brick-and-mortar store, wholesale, multi-channel such as networks of distributors and value-added resellers, or the use of direct sales reps who call on customers. Thus, if the applicant and registrant both sell in wholesale channels to distributors, they're in the same trade channel, even if the distributors are different and have different levels of sophistication. The trade channel factor can weigh in favor of the likelihood of confusion because using the same channel increases the likelihood that the same customers will receive promotions of the parties' respective goods and marks. Of course, it's possible that a significant difference in customer sophistication could outweigh the trade channel factor in the overall analysis.

At 8:04 AM, Blogger Gene Bolmarcich, Esq. said...

That wasn't my point Unknown. It is well-settled (there is a precedential case but can't think of the cite right now) that if two companies sell to completely different consumers there cannot be confusion. That's the end of the inquiry, even if all other factors favor confusion.


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