[E-trademarks] competing volume of evidence question

Thu Feb 8 16:58:21 EST 2024

I have had some success with using Thorcheck from TMTKO to deluge the examiner with sometimes dozens of examples of identical marks for the supposedly related goods where the marks are owned by unrelated companies.  That usually gets me past the “3 websites” type of relatedness refusal, though the examiner on a few occasions has come back with registration evidence of her own.

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 Pamela Chestek via E-trademarks
Sent: Thursday, February 8, 2024 4:46 PM
To: e-trademarks at oppedahl-lists.com
Cc: Pamela Chestek <pamela at chesteklegal.com>
Subject: Re: [E-trademarks] competing volume of evidence question

EXTERNAL EMAIL
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<mailto:pamela at chesteklegal.com>
(919) 800-8033
www.chesteklegal.com<http://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

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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
Chestek Legal
300 Fayetteville Street
Unit 2492
Raleigh, NC 27602
pamela at chesteklegal.com<mailto: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<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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