[E-trademarks] [EXT] Re: competing volume of evidence question

[diana lo-dp.com]

Thank you!
________________________________
From: Alex Butterman <abutterman at dbllawyers.com>
Sent: Friday, February 9, 2024 10:37 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: carla calcagno <cccalcagno at gmail.com>; diana lo-dp.com <diana at lo-dp.com>
Subject: Re: [EXT] Re: [E-trademarks] competing volume of evidence question

I think the In re Coors case directly addresses this issue of relatedness evidence. In addition to quantities of businesses that offer or do not offer both G/S, the examiner needs to show “something more” that explains why the G/S are related for commercial reasons. So if you can argue why the G/S are not typically related and that reason makes business sense, that should be persuasive. The opposite is true for the examiner.

One caveat is that I have heard some say this rule applies only to services because that is what was involved in Coors, but I don’t see why this should be different when both marks are for goods.


Sent from my iPhone
Alex Butterman
Dunlap Bennett & Ludwig PLLC
Partner
571-577-8369 (direct)

On Feb 8, 2024, at 6:51 PM, diana lo-dp.com via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:


Thanks, Carla. I appreciate your insights.
________________________________
From: carla calcagno <cccalcagno at gmail.com>
Sent: Thursday, February 8, 2024 3:38 PM
To: diana lo-dp.com <diana at lo-dp.com>
Cc: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] competing volume of evidence question

Unless the EA put in the record just a few examples of marks owned by Big Box companies or others who have unusually wide ranges of goods, I don't think the TTAB is going to be swayed merely by a quantitative analysis of the number of third-party registrations each side has entered ( although I likely would argue it if there is a  huge disparity).

If you can make a reasonable argument that the marks are weak and/or diluted, in my humble opinion, that is likely to be (a) more persuasive to the Board and (2) also explain the inconsistency on the USPTO register you have noted.



On Thu, Feb 8, 2024 at 4:24 PM diana lo-dp.com<http://lo-dp.com> <diana at lo-dp.com<mailto:diana at lo-dp.com>> wrote:
Possibly, if differences in word tenses and things of that sort at considered the same word. I haven't figured that out yet.

________________________________
From: carla calcagno <cccalcagno at gmail.com<mailto:cccalcagno at gmail.com>>
Sent: Thursday, February 8, 2024 2:57 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: diana lo-dp.com<http://lo-dp.com> <diana at lo-dp.com<mailto:diana at lo-dp.com>>
Subject: Re: [E-trademarks] competing volume of evidence question

Are these inherently weak or diluted marks?

Sent from my iPhone

On Feb 8, 2024, at 2:35 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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