[E-trademarks] competing volume of evidence question

[Pamela Chestek]

I believe the question was about relatedness of the goods and services, 
though, not distinctiveness of the mark. I have been mulling whether one 
could find a way to import the similar standard into relatedness of 
goods though.

Pam

Pamela S. Chestek
Chestek Legal
300 Fayetteville Street
Unit 2492
Raleigh, NC 27602
pamela at chesteklegal.com
(919) 800-8033
www.chesteklegal.com

On 2/8/2024 12:34 PM, Sam Castree via E-trademarks wrote:
> 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> 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>
>     -- 
>     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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