TTABlog Test: How Did These Three Recent Section 2(d) Proceedings Come Out?
Here are three recent decisions in Section 2(d) proceedings: two oppositions and one cancellation. Can you guess how they came out based on the minimal information I have provided? [Answer in first comment].
Sean Stevens v. Valino Tires USA LLC, Cancellation No. 92073974 (February 28, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson). [Petition for cancellation of a registration for the mark VALINO & Design for "tires; tires for land vehicles; tires for vehicle wheels; automobile tires," in view of petitioner's common law mark VELLANO FORGED WHEELS for wheel rims and wheels. The Board found that petitioner’s products are forged, custom built, luxury wheels and rims directed to purchasers "who would exercise a much higher degree of care than an average purchaser of wheels and rims, and as a result, the high degree of care exercised by these purchasers weighs against a finding of likelihood of confusion."]
Sun Bum LLC v. Health Bomb LLC, Opposition No. 91264019 (March 10, 2022) [not precedential] (Opinion by Judge Christopher Larkin) [Opposition to registration of SKI BUM for "Face creams, non-medicated face serum" in view of the registered mark SUN BUM & Design for, inter alia, "body and beauty care cosmetics," "cosmetic preparations, namely, firming creams and lotions," and "facial moisturizers." The goods are legally identical, but are the marks close enough? The Board found that opposer's mark falls on the “strong” side of the spectrum, but not “on the much higher end of the commercial strength spectrum.” Opposer's mark is entitled to something more than “the normal scope of protection to which inherently distinctive marks are entitled.”]
Westguard Insurance Company v. Hanover Stone Partners, LLC , Opposition No. 91234475 (March 11, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Opposition to registration of WORKERSCOMP GUARD for various services in the field of workers’ compensation insurance [WORKERSCOMP disclaimed], in view of the opposer's common law mark and shortened trade name GUARD for insurance services and other related services. The Board found opposer's mark to be conceptually weak but commercially strong.]
Read comments and post your comment here.
TTABlog comment: How did you do?
Text Copyright John L. Welch 2022.
posted by John L. Welch @ 3/15/2022
4 comments
4 Comments:
The "plaintiff" won in all three cases. Both oppositions sustained, and the petition for cancellation was granted.
Trademark world is a trademark dystopia. The TTAB thinks consumers are ignorant, easily deceived, stupid, careless, unobservant, and that every Applicant is either attempting to willfully infringe or adopts mark in bad faith.
It is really time for the USPTO to notify cited marks to the prior Registrant prior to publication and allow the prior Registrant to make its own business decision about Opposing or not.
TTAB - you are supposed to promte commerce and competition, not create monopolies of extremely weak, commonly used, marks easily differentiate by "reasonable consumers," and extend registrations to theorectical relatedness. This is especially true that most App,icant's geographic area of use is limited (despite websites accesible anywhere). Will someone is Sesttle buy 4 heavyn tires and pay to have them shipped to Florida or Hawaii?
The USPTO has resources ($$$$) to investigate Applicants prior to issuing 2(d) First Actions or Final Refusals.
I'm a former USPTO Examiner (and robot) and it is time to change Examination procedures. Applicant's, especially start-ups or small companies, need to spend their limited resources on their business, not lawyers.
I don't agree with the first decision.
I, like Valerie N, am surprised by the first decision.
Also, as a former examiner myself, I disagree with IT JUST DOESN'T MATTER in every respect.
Post a Comment
<< Home