Thursday, August 04, 2022

TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?

So far this year, the Board has affirmed 112 of the 119 Section 2(d) refusals on appeal. How do you think these three recent appeals came out? [Results in first comment].

In re P&P Imports LLC, Serial No. 90110212 (August 2, 2022) [not precedential] (Opinion by Judge Frances S. Wolfson) [Section 2(d) refusal of the mark BATTLE STRIKE for “equipment sold as a unit for playing projectile shooting games" in view of the identical mark registered for "computer game programmes; downloadable computer game software via a global computer network and wireless devices; downloadable computer programs featuring positionable game piece figures for use in the field of computer games; electronic game software accessible via computers, wired and wireless electronic devices; interactive game software."]

In re Congo, LLC, Serial No. 88952001 (August 2, 2022) [not precedential] (Opinion by Judge Christopher Larkin). [Section 2(d) refusal of CONGO for "wholesale and retail store services featuring energy drinks, protein shakes, and dietary and nutr[i]tional supplement products; wholesale distributorships featuring energy drinks, protein shakes, and dietary and nutr[i]tional supplement products; Transportation logistics services, namely, arranging the transportation of dietary and nutritional products, energy drinks, protein shakes for others, expressly excluding any transportation services in the oil industry” in view of the registered mark CONGO APPLE PEAR for “Non-alcoholic beverages containing fruit juices; fruit flavored beverages; fruit-flavored drinks; fruit based beverages; fruit based beverages enhanced with antioxidants; fruit flavored beverages enhanced with antioxidants" [APPLE PEAR disclaimed]].

In re Mark Feldberg
, Serial No. 90406741 (August 2, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo) [Section 2(d) refusal of INFLATION DEFENDER for "Financial services, namely, hedge fund investment services and trading funds for others" [inflation disclaimed] in view of the registered mark INFLATION DEFENSE for "“Platform as a service (PAAS) featuring computer software platforms for financial services, namely, providing an online platform for accessing, reviewing, selecting and allocating funds to investments, exchange-traded funds, equity securities and/or fixed-income instruments."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2022.


At 7:48 AM, Blogger John L. Welch said...

All three were affirmed

At 8:38 AM, Blogger Gene Bolmarcich, Esq. said...

These all fell neatly into the rule that one can virtually always determine the outcome by just looking at the marks and the IDs. I would have bet my life savings that these were all affirmed. All $10 of it.

At 9:47 AM, Anonymous Anonymous said...

I work with a number of beverage manufacturers, brewers, and coffee roasters. In the marketplace the registered CONGO APPLE PEAR will be viewed as a flavor of beverages produced by, and under the house mark, BAI.

BAI seemingly has a naming convention for its flavored waters: [Geographic name] [generic descriptive words]. As in ANDES COCONUT LIME, BRASILIA BLUEBERRY, CONGO APPLE PEAR, DOMINICA DRAGON PASSION FRUIT, & etc. These flavor names are in small print with the strongest and largest-sized literal element of the product packaging being the word BAI.

It is frustrating to tell clients you can't launch under your preferred brand name (here, CONGO) because someone already in the market uses that word as part of a flavor name -- one flavor among dozens. This happens all too frequently when doing clearances in ICs crowded with registrations, especially the many crowded ICs for non-alcoholic and alcoholic beverages which must all be considered under the "related" goods rule.

I know the standard rules. Word marks can appear anywhere in any form and the Office cannot make assumptions about the displays of marks & etc.

But these standard rules are having anticompetitive effects because finding a brand name is a huge barrier to new entrants in the marketplace and/or product line expansions.

The Trademark Act appears in the US Code title devoted to commerce. We've got to find a way to have the realities of the marketplace reflected in examinations.

Every time I read an opinion like the one affirming the CONGO refusal, I think back to the Harvard law (??) article of a couple of years ago asking, "are we running out of trademarks?"

Thank you TTABlog - I'm a regular reader but not a regular commenter. I appreciate the thoughtfulness of this forum and the excellent quality of the content found here.

At 3:10 PM, Anonymous Anonymous said...

The US Trademark Office is now run by robots who have no capacity to understand the "real world" or how to balance the DuPont factors.

At 4:21 PM, Blogger Gene Bolmarcich, Esq. said...

I agree with Anonymous that there should be a way to designate that a mark is a flavor name as opposed to a house mark (just as an example...I haven't yet worked this all out but that's the general idea...a way to differentiate marks based on HOW they are used - aligned with the various ways that the branding world sees trademarks (product names, taglines, house marks, etc.)


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