TTABlog Test: Are Battery Monitors Related to Fault Diagnosis Instruments?

The USPTO refused to register the mark MBBM for "battery monitors" on the ground of likelihood of confusion with the registered mark MBBM-VAS for, inter alia, "apparatus and instruments for conducting, switching, transforming, accumulating, voltage regulating, and controlling electric signals and electricity ... in the fields of development, quality control and fault diagnosis, but not in the field of factory equipment." The marks are too close for comfort, but what about the goods? Well, you have to dig into the USPTO's evidence. How do you think this came out? In re Vanner, Inc., Serial No. 88877168 (July 29, 2022) [not precedential] (Opinion by Judge Angela Lykos).

Applicant Vanner got off on the wrong foot when it argued that it was using its mark for six years prior to registrant. The Board pointed out, however, that priority is not an issue in an ex parte proceeding involving a Section 2(d) appeal. Likewise, Vanner's argument that the registrant was no longer using the mark constituted an improper collateral attack on the cited registration. Cancellation, reexamination, and expungement are proper avenues for such an attack.

As to the involved goods, the examining attorney relied on third-party websites purportedly showing that certain companies offer both battery monitors and fault diagnosis equipment under the same trademark. The Board, however, found that the websites did not support the USPTO's position. None of the websites displayed products for use in the field to which registrant's goods are restricted: "the field of development, quality control and fault diagnosis, but not in the field of factory equipment."

The involved goods all fall under the general category of electrical products, but "that standing alone does not suffice to show that the goods are related."

Although the similarity of the marks weighs in favor of finding a likelihood of confusion, the record fails to show that the goods are related. We emphasize that we have reached our determination that confusion is not likely based on the record before us. On a different record, such as might be adduced in an inter partes proceeding, we might well come to a different conclusion.

And so, the Board reversed the refusal to register.

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TTABlogger comment: By my count, this is the seventh reversal of a Section 2(d) refusal out of 126 TTAB decisons in 2022. That's an affirmance rate of 94.5%, a bit higher than usual.

Text Copyright John L. Welch 2022.