Monday, July 08, 2024

Precedential No. 14: TTAB Affirms Two Expungement Decisions Based on Nonuse of SMARTLOCK for Evaporative Air Coolers

In this appeal from final refusals issued in two expungement proceedings, the Board affirmed the USPTO Director's decision to cancel registrations for the mark SMARTLOCK, in standard character and design form, for "Components for air conditioning and cooling systems, namely, evaporative air coolers." The Board found that Registrant Locus Link USA never used the mark in connection with "evaporative air coolers," and rejected Locus Link's interpretation of the identification of goods. In re Locus Link USA, 2024 USPQ2d 1181 (TTAB 2024) (Expungements Nos. 2022-100137E and 2022-100138E) [precedential] (Opinion by Judge Jennifer L. Elgin).

Expungement proceedings, created by the Trademark Modernization Act of 2020, are ex parte proceedings in which the USPTO may cancel a registration, in whole or in part, if the registered mark has never been used in commerce in connection with some or all of the goods/services identified in the registration. [In contrast, reexamination proceedings concern a registered mark that was not in use as of a specific date: the filing date of a use-based application, or the filing of an amendment to allege use, or before the deadline for filing a statement of use.]

Locus Links's CEO explained that its goods are "refrigerant fittings" for use with HVAC units, but not limited to evaporative air coolers. [See examples below].

Examining Attorney Laura E. Fionda maintained that the subject registrations cover only the specific goods following the term "namely" in the identification of goods: i.e., "evaporative air coolers." 

Locus Link agreed that it did not use the marks with finished goods, and so the Board found that "Registrant has not used the SMARTLOCK Marks in commerce in connection with fully manufactured 'evaporative air coolers.'" However, Locus Link insisted on a different interpretation of the identifications: that the identified goods are components for evaporative air coolers.

The Board observed that "use of the word 'namely' . . .  is acceptable only if the words that follow it define and fall within the scope of the introductory wording that precedes 'namely' (e.g., 'clothing, namely, shirts')" Furthermore, according to TMEP Section 1402.05(a):

When a mark is used to identify only a component or ingredient of a product, and not the entire product, the identification must (1) precisely set forth the common name of the component or ingredient, (2) indicate that the component or ingredient is sold as a component or ingredient of another finished product, and (3) set forth the common name of the finished product of which the identified component or ingredient forms a part . . . . The identification should leave no doubt that the mark refers only to the component or ingredient and not to the entire product.

The Board agreed with the Examining Attorney that "evaporative air coolers" modifies the otherwise indefinite wording "components for air conditioning systems." "In other words, the identification of goods, as set forth in the ’466 and ’467 Registrations, covers evaporative air coolers that are components of air cooling systems. It does not identify or encompass component parts for evaporative air coolers, such as Registrant’s connectors."

Finally, the Board rejected Locus Link's reliance on the Examining Attorney's acceptance of the specimen of use as validation of its interpretation of the identification of goods. As the Board has often pointed out, it is not bound by prior decisions of Examining Attorneys.

Moreover, the acceptance of specimens by the Examining Attorney does not control the ultimate question of use. Cf. Century 21 Real Estate Corp. v. Century Life of Am., Opp. No. 91075090, 1989 TTAB LEXIS 6, at *3 (TTAB 1989) (“[T]he mere acceptance of specimens by the Examining Attorney does not mandate a finding by us that service mark usage was made.”).

The Board therefore affirmed the decisions to cancel the subject registrations.

Read comments and post your comment here.

TTABlogger comment: Rather straightforward. Precedential?

Text Copyright John L. Welch 2024.

3 Comments:

At 10:41 AM, Anonymous Anonymous said...

This is not straightforward to anyone who understands normal English grammar and proper placement of modifiers. At it's facacta that registrants can't rely on the propriety of the office's actions.

 
At 3:05 PM, Blogger John L. Welch said...

I think it is straightforward to anyone who understands grammar. It's not straightforward for those who don't. BTW, is it the Board's role to teach us grammar laws?

 
At 11:46 PM, Anonymous Anonymous said...

Perhaps it is a precedent merely because it is the first Board appeal of the new expungement proceedings.

 

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