Another Strategic Partners Argument Fails: TTAB Affirms Refusal of "REACH & Design" for Vehicle Parts
The Board upheld a Section 2(d) refusal to register the mark shown below, for vehicle radiators and air conditioner parts, finding confusion likely with the registered mark REACH for "Motor vehicles, namely, automobiles, trucks, vans, sport utility vehicles and structural parts therefor; trucks and structural parts therefor; vans and structural parts therefor." Applicant Reach International argued that, under the Strategic Partners approach, its prior registration for a similar mark should serve to overcome the refusal. The Board, however, found that Reach overreached. In re Reach International, Inc., Serial No. 97335655 (November 25, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).
In Strategic Partners, the Board faced "the unique situation presented by the coexistence of applicant’s existing registration with the cited registration for over five years, when applicant’s applied-for mark is substantially similar to its existing registered mark, both for identical goods.” Strategic Partners, 102 USPQ2d at 1400. The applicant owned a registration for the mark ANYWEARS, which was substantially similar to the mark ANYWEAR that applicant sought to register, for the same goods (footwear).
Here, Applicant Reach owned a registration for the mark shown immediately below. That registration issued in 2005 but expired in 2016 when it wasn't renewed.
Examining Attorney Nathaniel Pettican argued that, unlike in Strategic Partners, the applicant's earlier registration had co-existed on the Trademark Register for only four years (not five) and furthermore that the earlier registration here had expired. The Board, however, agreed with Reach that, under the case law, five years of co-existence is not required. But a live registration is necessary in order to invoke Strategic Partners.
The Strategic Partners holding is based, in part, on the view that the owner of the cited registration in that case faced no new or different harm if a substantially similar mark was registered again for the same goods. The prior registration owned by the applicant in Strategic Partners had been registered for more than five years, which meant the owner of the cited registration could no longer petition to cancel the applicant’s prior registration.
In this case, Applicant does not own a prior registration. "The cited registration stands alone, at least with respect to any registrations owned by this Applicant. If the registration of Applicant’s new version of its mark causes harm to the owner of the cited registration, that will be a new harm, not duplicative of any existing situation."
[W]e have found no Board decision applying this holding to a case where the applicant’s prior registration was cancelled, nor does Applicant cite to any. In at least three recent decisions (all nonprecedential), the Board distinguished Strategic Partners for the same reason we do here: because the prior registration was cancelled.
The Board further noted "another important distinction" between this appeal and the “unique situation” in Strategic Partners. Reach is currently seeking registration in two classes (International Classes 7 and 11), but its cancelled registration identified goods only in International Class 7. In short, the subject application includes goods that did not appear in the deceased registration.
The Board swiftly found the marks similar, the goods related, and the rade channels overlapping. And so, it affirmed the refusal.
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TTABlogger comment: Strategic Partners provides a very small loophole in the USPTO's Section 2(d) net.
Text Copyright John L. Welch 2024.
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