[E-trademarks] competing volume of evidence question

[Sam Castree]

Just change the parts in italics to match your actual issue.  Should work
just fine, I would think.

Cheers,

Sam Castree, III

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



On Thu, Feb 8, 2024 at 3:15 PM Pamela Chestek via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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 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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