[E-trademarks] competing volume of evidence question

[Scott Landsbaum]

In my experience it's very hit or miss as to whether an examiner is open to
competing evidence of multiple registrations for the same mark for
different goods by different owners to overcome a 2(d) refusal.  Maybe 20%
of the time it works and the rest it doesn't.  And of course this has
become extremely difficult because it's so easy, at least in the consumer
products field where massive brands produce almost everything, for an
examiner to find 3 examples of any two goods sold under the same mark and
then issue a refusal.  Quite frustrating.

Regards,
Scott

Scott Landsbaum, Inc.
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On Thu, Feb 8, 2024 at 1:15 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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>
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