[E-trademarks] competing volume of evidence question

[Kevin Grierson]

Not a ton on the relative number of competing sets of registrations, but see:

“By submitting the third-party registrations, the Examining Attorney is essentially asking us to draw the inference that when different products are listed in the same registration, those products may emanate from a single source. Applicant may rebut this inference with evidence (e.g., a declaration from counsel or a paralegal that he/she investigated the use of the marks in the third-party registrations and could not find any evidence that the registrants used the marks on both of the products at issue and/or an equal or greater number of third-party registrations owned by different entities for the same or similar marks where each entity has registered its mark for one of the goods at issue). In re Ayurvedic Concepts, Ltd., Serial No. 78800436 (T.T.A.B. December 5, 2008)(non[1]precedential).”

In re Hyundai Motor Am., Serial No. 78889340 (T.T.A.B. September 14, 2009) (non-precedential)

Kevin Grierson​​​​
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Sam Castree via E-trademarks
Sent: Thursday, February 8, 2024 3:34 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Sam Castree <sam at castreelaw.com>
Subject: Re: [E-trademarks] competing volume of evidence question

EXTERNAL EMAIL
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<http://lo-dp.com/> via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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<http://palchik.net/>
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