[E-trademarks] competing volume of evidence question

Thu Feb 8 16:31:49 EST 2024

Regarding the examples, don’t forget the “Disney Rule” regarding conglomerates that sell lots of products:

Third-party registrations in the nature of house marks used for a wide variety of items are of little value by themselves to show that the various goods for which they are registered are all related.  Similarly, here where the website evidence shows house marks used on a wide variety of goods, it is not so probative of this factor.
In re Marko Schuhfabrik GmbH, Serial No. 79040612 (T.T.A.B. December 23, 2009) (non-precedential).

Kevin Grierson
CULHANE|MEADOWS PLLC<http://www.culhanemeadows.com/>
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Scott Landsbaum via E-trademarks
Sent: Thursday, February 8, 2024 4:27 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Scott Landsbaum <scott at scottlandsbaum.com>
Subject: Re: [E-trademarks] competing volume of evidence question

EXTERNAL EMAIL
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

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On Thu, Feb 8, 2024 at 1:15 PM Pamela Chestek via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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
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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<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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