[E-trademarks] Challenge Examiner's Reliance on Non-U.S. Websites

Wed May 22 08:33:58 EDT 2024

One should also assess whether a consumer is able to purchase from the website and ship to the US.  I recently had a matter with an expungement proceeding where the good for a cited US mark were not available for shipment to the US.  

Ed Welch

IP&L Solutions

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Paul Reidl via E-trademarks
Sent: Sunday, May 19, 2024 8:59 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Paul Reidl <reidl at sbcglobal.net>
Subject: Re: [E-trademarks] Challenge Examiner's Reliance on Non-U.S. Websites

I am late to the game here because I am on vacation, but this may be a little trickier than first meets the eye.

The law is clear that what happens outside the United States has no bearing on what a consumer is likely to observe in the United States.  But I do not think that automatically excludes non-US web sites.  I think one needs to drill down on the specifics of the web site to assess whether it is likely that a US consumer would purchase goods from the cite or whether the owner is soliciting purchases from the USA.  Factors might include currency, shipping, types of goods (e.g. alcohol and fresh meats are unlikely to be purchased and shipped to the USA), language of the cite, how deep are the goods buried in the site, etc.  I think that the absence of the two allegedly related goods from similar retailers in the USA would also be probative.

Take, for example. a Danish web site that offers coffee and tinned herring.  It is priced in Krone and there is no indication that the owner would ship to the USA.  That should not count.  But, if the retailer offered shipping to the USA, it may count (although the currency and the nature of the goods make it unlikely that a consumer would purchase from he web site.  Why would any consumer purchase coffee and/or tinned herring from Denmark when these products are ubiquitous in the USA for much less than the cost of purchasing them in Krone and having them shipped to the USA.)

To be sure, there is the argument that "anyone with a web browser could access the site"  but I think that proves nothing.  It does not tell you whether a consumer is likely to access the site and then dig down into its sub-structure to see the two allegedly related goods being offered by the retailer. I think that in all cases the Examining Attorney should carry the burden of proving that a consumer is likely to purchase the goods from the web site.

Paul

Paul Reidl

Dickenson, Peatman & Fogarty

Napa, CA

On Saturday, May 18, 2024 at 12:51:40 PM PDT, Robert Pierce via E-trademarks <e-trademarks at oppedahl-lists.com <mailto:e-trademarks at oppedahl-lists.com> > wrote: 

I would also make the commonsensical point that foreign based websites are not evidence that U.S. consumers would consider the relevant goods are related. Consumers in Country X may find that snow cones and day spa services are related, but that doesn't mean U.S. consumers would make the connection.

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com <mailto:e-trademarks-bounces at oppedahl-lists.com> > On Behalf Of Orvis via E-trademarks
Sent: Saturday, May 18, 2024 2:26 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: Orvis <orvispc at gmail.com <mailto:orvispc at gmail.com> >
Subject: Re: [E-trademarks] Challenge Examiner's Reliance on Non-U.S. Websites

I have challenged such evidence with an analogy to Mucky Duck. Mucky Duck relatedness cannot rely on Section 44 registrations because there is no evidence of use in the US. The same should apply to a foreign based website. 

May 18, 2024 2:17:05 PM Richard Schafer via E-trademarks <e-trademarks at oppedahl-lists.com <mailto:e-trademarks at oppedahl-lists.com> >:

You should probably review the Bayer-Belmora FLANAX litigation, as well.

Best regards,
Richard A. Schafer | Schafer IP Law
P.O. Box 230081 | Houston, TX 77223
M: 832.283.6564 |  <mailto:richard at schafer-ip.com> richard at schafer-ip.com

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com <mailto:e-trademarks-bounces at oppedahl-lists.com> > On Behalf Of Janet Satterthwaite via E-trademarks
Sent: Saturday, May 18, 2024 12:03 PM
To: Rick Bigelow via E-trademarks <e-trademarks at oppedahl-lists.com <mailto:e-trademarks at oppedahl-lists.com> >
Cc: Janet Satterthwaite <jsatterthwaite at potomaclaw.com <mailto:jsatterthwaite at potomaclaw.com> >
Subject: Re: [E-trademarks] Challenge Examiner's Reliance on Non-U.S. Websites

These are cites from a TTAB brief on an opposition objecting to introduction of foreign confusion  evidence.  I did not write the brief and have not read the cases,  but they may be helpful

Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612-13 (TTAB 1991); Johnson & Johnson v. Salve S.A., 183 USPQ 375, 376 (TTAB 1974) (foreign use of mark creates no rights in mark in U.S.). See also Oland’s Breweries [1971] Ltd. v. Miller Brewing Co., 189 USPQ 481, 489 n.2 (TTAB 1975) (use or promotion of a mark confined

to a foreign country, including Canada, is immaterial to ownership and registration in U.S.), aff’d, Miller Brewing Co. v. Oland’s Breweries, 548 F.2d 349, 192 USPQ 266 (CCPA 1976). Concerning possible exceptions, see Article 6bis of the Paris Convention; Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1480 (Fed. Cir. 1990) (knowledge of foreign use, in itself, does not preclude good faith adoption and use in U.S.); Double J of Broward Inc. v. Skalony Sportswear GmbH, 21 USPQ2d 1609, 1612- 13 (TTAB 1991); See TBMP section 414(13).

Janet F. Satterthwaite|Partner/ Chair, Trademark Practice|Potomac Law Group, PLLC

1717 Pennsylvania Avenue, NW, Suite 1025 

Washington, D.C. 20006

202-486-1578

jsatterthwaite at potomaclaw.com <mailto:jsatterthwaite at potomaclaw.com> |www.potomaclaw.com <https://www.potomaclaw.com> 

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com <mailto:e-trademarks-bounces at oppedahl-lists.com> > on behalf of Steve Zemanick via E-trademarks <e-trademarks at oppedahl-lists.com <mailto:e-trademarks at oppedahl-lists.com> >
Sent: Saturday, May 18, 2024 11:04 AM
To: Rick Bigelow via E-trademarks <e-trademarks at oppedahl-lists.com <mailto:e-trademarks at oppedahl-lists.com> >
Cc: Steve Zemanick <Steve at fourreasonslegal.com <mailto:Steve at fourreasonslegal.com> >
Subject: [E-trademarks] Challenge Examiner's Reliance on Non-U.S. Websites

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Happy weekend listmates,

I’m hoping someone has suggestions for challenging an Examiner’s reliance on third-party websites to demonstrate relatedness when the websites in question are for non-U.S. entities.  It seems to me that without a showing that these entities are conducting business in the U.S., the evidence is irrelevant or at least non-probative.  Citations or examples of past submitted arguments are most welcome.

Thank you as always.

Steve Zemanick

Four Reasons Legal

8074 E 34th Ave 

Denver, CO 80238

 <mailto:steve at fourreasonslegal.com> steve at fourreasonslegal.com

720.937.6599

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