A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal about 95% of the time just by looking at the marks and the goods/services. Here are three recent Board decisions. How do you think they came out?
In re Alliant Insurance Services, Inc., Serial No. 973516444 (November 5, 2024) [not precedential] (Opinion by Judge Albert J. Zervas). [Section 2(d) refusal of the mark ALLIANT INSURANCE FOUNDATION for “charitable foundation services, namely, providing financial support to individuals, institutions and organizations for providing opportunities relating to classes instruction and careers in insurance” [INSURANCE FOUNDATION disclaimed] in view of the registered mark ALLIANT for "Health insurance underwriting; insurance underwriting in the field of health insurance for individuals and businesses; insurance administration; health, dental, and vision insurance administration and underwriting; insurance services, namely, underwriting, issuance, and administration of health, dental, and vision insurance plans.”]
In re Positivevolution Pty Ltd, Serial No. 79348303 (November 5, 2024) [not precedential] (Opinion by Judge Robert Lavache) [Section 2(d) refusal of the mark ENSOMBL for, inter alia, "Netcasting, namely, broadcasting programs via global computer network in the field of finance and investing for financial professionals and investment advisors;” “electronic transmission of pictures, images, audio and/or video via online forums for financial professionals and investment advisors;” and “transmission of financial, investment and legal news," in view of the registered mark ENSEMBLE for "Telecommunication services, namely, routing calls, SMS messages, and push-notifications to local third-party motorized vehicle operators and food and grocery delivery agents in the vicinity of the caller using mobile phones; Telecommunications, namely, transfer of data by telecommunications."]
In re Orlando Bathing Suit, LLC, Serial No. 97782597 (November 4, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal of the mark VITAMIN SEA for "swimwear" in view of the identical mark registered for, inter alia, "scarves."]
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TTABlogger comment: In the first case, Applicant submitted 58,921 pages of evidence. The Board was not pleased.
Text Copyright John L. Welch 2024.
All three were affirmed
ReplyDeleteIt's part of the stacked deck that 2d applicants face. Only recourse is a Section 18 petition to restrict the cited registration
ReplyDeleteThe Board cannot look to extrinsic evidence to "narrow the scope." If it is unclear what the goods are -- e.g., technical descriptions, etc., they can look at extrinsic evidence to clarify what the goods are. E.g., there are older numerous registrations that cover computer software in general. The Board has no description to limit the scope of coverage. As John has stated, the only recourse is to file a Section 18 cancellation.
ReplyDelete"TTABlogger comment: In the first case, Applicant submitted 58,921 pages of evidence. The Board was not pleased."
ReplyDeleteYa, but the partners were quite pleased with that associate's billings for the month.
As a corollary to the Section 18 approach, one could contact the registrant and ask for consent, pointing out that you'd rather not have to seek restriction of the registration
ReplyDelete@ Gene, the two terms do not mean the same thing. The PTO can look to extrinsic evidence to clarify or determine (to put it another way) what the are. It cannot use this evidence to limit the scope of the goods. These are clearly two different things.
ReplyDelete