[E-trademarks] competing volume of evidence question

Thu Feb 8 16:45:37 EST 2024

I think the reason it's hit-or-miss is because it's entirely capricious. 
The premise is that three websites (I had only two in a refusal 
recently) are somehow representative of an entire industry, which is 
just silly. I can't imagine /any/ industry where three websites could be 
considered representative. So it just boils down to an examining 
attorney's sensibility, fed by the fear that their action will be 
reviewed and their work deemed inadequate and a natural inclination to 
want to be right.

I'm curious when they look for related goods and services. If there are 
two identical marks, do they always look for proof of relateness, no 
matter how distant they are? Dolls and nuclear reactors? How do they 
decide they need to do the web search? I've also had the searches 
generalized way beyond the actual goods and services, e.g., "counseling 
services in the field of baldness" reduced to "counseling services," 
with a claim that it's proof that baldness counseling is related to 
therapeutic horseback riding services because they're both counseling 
(not the actual services, but you get the point). There /is/ a 
precedential opinion for that one, /In re OSF Healthcare System,/ 2023 
USPQ2d 1089 (TTAB 2023).

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 1:26 PM, Scott Landsbaum via E-trademarks wrote:
> 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.
> 323-314-7881 <tel:323-314-7881> / f 323-714-2454
> 8306 Wilshire Blvd., Suite 420, Beverly Hills, CA  90211
> www.scottlandsbaum.com <http://www.scottlandsbaum.com/> / 
> www.linkedin.com/in/scottlandsbaum/ 
> <https://www.linkedin.com/in/scottlandsbaum/>
>
> NOTICE: This e-mail is intended solely for the individual or 
> individuals to whom it is addressed and may contain confidential 
> attorney-client privileged information and attorney work product. If 
> you are not the intended recipient, please do not read, forward, 
> print, copy or distribute it or any of the information it contains.  
> Please delete it immediately and notify us by return e-mail or by 
> telephone at (323) 314-7881 <tel:%28323%29%20314-7881>.
>
> IRS CIRCULAR 230 DISCLOSURE:Any discussion of tax matters contained in 
> this or any email (including any attachments) or in any oral or other 
> written communication is not intended to be used and cannot be used 
> for the purpose of avoiding U.S. tax related penalties or in 
> connection with the promotion, marketing or recommendation of any of 
> the matters addressed in the communication.
>
>
> 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 <http://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
>>
>>
>
>     -- 
>     E-trademarks mailing list
>     E-trademarks at oppedahl-lists.com
>     http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240208/2362d365/attachment.htm>