[E-trademarks] competing volume of evidence question

[Sam Castree]

Dear Diana,

I've had this issue a handful of times, although usually the examiner only
provides maybe 2 or 3 examples.  I provide a dozen or two counterexamples,
and I lead with this paragraph:

"Applicant acknowledges that the PTO's allowance of prior third-party
registrations is not *per se* binding on registrations by later
applicants.  Nevertheless, third-party registrations can be relevant to
show whether *a mark, or a portion thereof, is descriptive or suggestive*.
TMEP § 1207.01(d)(iii); *see also, e.g., Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports*, S.L.U. 797 F.3d 1363
(Fed. Cir. 2015).  Moreover, the Federal Circuit “encourages the PTO to
achieve a uniform standard for assessing registrability of marks.” *In Re
Nett Designs*, 236 F.3d 1339, 1342 (Fed. Cir., 2001). Thus, in the interest
of maintaining uniform standard of registrability, Applicant submits that
*[word]*, when applied to *[goods]*, is at least suggestive, rather than
merely descriptive."


It's worked pretty well for me.

Cheers,

Sam Castree, III

*Sam Castree Law, LLC*
*3421 W. Elm St.*
*McHenry, IL 60050*
*(815) 344-6300*

On Thu, Feb 8, 2024 at 1:36 PM diana lo-dp.com via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Interested in whether anyone has successfully persuaded TTAB that their
> volume of evidence in a 2(d) outweighs the examiner's. Overall issue is
> that the USPTO appears to have inconsistent practice history. Examiner has
> refused registration because an identical mark exists in another class, and
> there are a variety examples of companies providing both types of goods. On
> the other hand, there are a substantial number of counter-examples of
> coexistence, i.e., Company 1 sells goods in one of the classes, Company 2
> sells goods in the other class, mark is identical, and they coexist,
> without 2(d) ever being issued.  Examiner has issued 2(d) and is sticking
> by it, indicating that not bound by what other examiner do. The evidence in
> terms of USPTO records is conflicting, and the USPTO practice is
> inconsistent, with many records on both sides. Does something like this get
> resolved on each examiner's whim, or is there something more predictable
> and orderly? Thank you!
>
> Diana Palchik
> palchik.net
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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