[E-trademarks] Arguments during prosecution
Mark Kaufman
kaufman at kaufmankahn.com
Tue Aug 12 15:56:41 EDT 2025
Among the exceptions to which Ted refers is a recent court decision *Apple
v. Zerodensity* (E.D. Va 1:24-cv-284, August 1, 2025). Despite defendant’s
success at the TTAB in opposing Apple’s REALITY COMPOSER and REALITY
CONVERTER trademark, Zerodensity was heavily outgunned in the district
court by Apple (who provided no less than 4 expert witness reports in
support of its motion for summary judgment). Apple won its motion. The
court noted (admittedly referencing a relatively small part of the
decision), “As to third-party usage, plaintiff correctly argues that if the
marks were descriptive, one would expect third parties to use them” and
added, a propos of this discussion, “Plaintiff also points out that *defendant
argued in prosecuting its own marks* that lack of usage was a sign of
non-descriptiveness.“
“Anything you say can and will be used against you in a court of law.”
Thank you,
Mark
Mark S. Kaufman
Kaufman & Kahn, LLP
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*From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
Of *Davis, Ted via E-trademarks
*Sent:* Tuesday, August 12, 2025 3:32 PM
*To:* For trademark practitioners. This is not for laypersons to seek legal
advice. <e-trademarks at oppedahl-lists.com>
*Cc:* Davis, Ted <TDavis at ktslaw.com>
*Subject:* Re: [E-trademarks] Arguments during prosecution
With some exceptions, *e.g.*, *Lucky Stores, Inc. v. Red &
White Found*., 145 U.S.P.Q. 47, 48 (T.T.A.B. 1965) (dismissing notice of
opposition based in part on opposer’s success in distinguishing marks
similar to its own in registration process), inconsistent representations
regarding the likelihood of confusion between marks generally don’t count
for much in later inter partes litigation and certainly don’t trigger
findings of estoppel. *See, e.g.*, *Stone Lion Cap. Partners, L.P. v. Lion
Cap. LLP*, 746 F.3d 1317, 1322 (Fed. Cir. 2014) (“A party’s prior arguments
may be considered as ‘illuminative of shade and tone in the total picture,’
but do not alter the Board’s obligation to reach its own conclusion on the
record.” (quoting *Interstate Brands Corp. v. Celestial Seasonings, Inc*.,
576 F.2d 926, 929 (C.C.P.A. 1978)); *Home Juice Co. v. Runglin Cos*., 231
U.S.P.Q. 897, 899 (T.T.A.B. 1986) (“[T]he inconsistency between the
position taken by petitioner before the Examining Attorney and in the
petition to cancel on the likelihood of confusion issue is not violative of
the liberal pleading rule.”); *Taffy’s of Cleveland, Inc. v. Taffy’s, Inc*.,
189 U.S.P.Q. 154, 157-58 (T.T.A.B. 1975) (“The fact that petitioner argued
before the Examiner of Trademarks that its mark and that of respondent were
not confusingly similar, in no way precludes petitioner from now asserting
likelihood of confusion as a ground of damage.”); *Institutional
Wholesalers, Inc. v. Saxons Sandwich Shoppes, Inc*., 170 U.S.P.Q. 107, 109
(T.T.A.B. 1971) (“Turning now to applicant’s contention that opposer is
estopped from asserting a likelihood of confusion because of statements
made in its application out of which its registration issued, it is well
settled that any such statements do not give rise to estoppel in subsequent
proceedings. Additionally, applicant cannot invoke this doctrine since it
has not been shown that it acted in reliance on the conduct said to create
the estoppel.” (citation omitted)).
Nevertheless, and obviously depending on the circumstances,
the significance of those representations in later infringement litigation
in the regional circuits may be a different matter. *See, e.g.*, *RiseandShine
Corp. v. PepsiCo, Inc*., 41 F.4th 112, 123 (2d Cir. 2022); *Freedom Card,
Inc. v. JPMorgan Chase & Co*., 432 F.3d 463, 476 (3d Cir. 2005); *Petro
Stopping Ctrs., L.P. v. James River Petroleum, Inc*., 130 F.3d 88, 94 (4th
Cir. 1997).
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Ted Davis
TDavis at ktslaw.com
Kilpatrick Townsend & Stockton LLP
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*From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
Of *Eric Morton via E-trademarks
*Sent:* Tuesday, August 12, 2025 12:47 PM
*To:* For trademark practitioners. This is not for laypersons to seek legal
advice. <e-trademarks at oppedahl-lists.com>
*Cc:* Eric Morton <emorton at clearskylaw.com>
*Subject:* Re: [E-trademarks] Arguments during prosecution
When I taught trademark law and supervised the trademark clinic at
California Western SOL, I cautioned my clinic students that we had to think
through everything we filed with the USPTO – in the applications, SOUs,
responses to OA. I’d tell
When I taught trademark law and supervised the trademark clinic at
California Western SOL, I cautioned my clinic students that we had to think
through everything we filed with the USPTO – in the applications, SOUs,
responses to OA. I’d tell them “anything you file, can be used in a court
of law.”
*--*
*Eric D. Morton*
*Attorney*
*Clear Sky Law Group, P.C.*
*1300 Clay St., Ste. 600, Oakland, CA 94612*
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*F: (510) 751-4598*
*emorton at clearskylaw.com <emorton at clearskylaw.com>*
*www.clearskylaw.com <http://clearskylaw.com/>*
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*From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
Of *Kevin Grierson via E-trademarks
*Sent:* Tuesday, August 12, 2025 8:25 AM
*To:* For trademark practitioners. This is not for laypersons to seek legal
advice. <e-trademarks at oppedahl-lists.com>
*Cc:* Kevin Grierson <kgrierson at cm.law>
*Subject:* Re: [E-trademarks] Arguments during prosecution
The fact specific nature of likelihood of confusion analysis means that
prosecution statements are often of limited probative value regarding 2(d)
arguments generally. The real danger, I think, is when you are forced to
make an argument during prosecution that the predominant term in both marks
is either highly descriptive and/or common in the industry and so the
registrant’s mark (and by extension, the applicant’s) is entitled to a
limited scope of protection from similar marks.
*Kevin Grierson*
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*From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
Of *Richard Straussman via E-trademarks
*Sent:* Tuesday, August 12, 2025 8:32 AM
*To:* e-trademarks at oppedahl-lists.com
*Cc:* Richard Straussman <rstraussman at weitzmanip.com>;
e-trademarks at oppedahl-lists.com
*Subject:* Re: [E-trademarks] Arguments during prosecution
EXTERNAL EMAIL
Although there is no “prosecution history estoppel” on the trademark side,
there are still the doctrines of judicial estoppel and statutory estoppel -
either/both of which MAY apply.
Rich Straussman
On Aug 12, 2025, at 8:26 AM, Ramon G. Vela Cordova via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:
Hi Russell,
McCarthy has a section on this issue with some case citations, 5 McCarthy
on Trademarks and Unfair Competition § 32:111. Basically, although the
patent law doctrine of “file wrapper estoppel” / “prosecution history
estoppel” does not apply to trademark infringement cases, registrant's
arguments or statements of fact during prosecution are admissible (though
not dispositive) evidence against their contrary arguments or statements
during infringement litigation. From what I can tell, courts vary in how
persuasive they take such evidence to be.
Best regards,
Ramón
On Aug 11, 2025, at 11:40 AM, Russell Nugent via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:
Dear Group,
I have a client that is considering responding to a suspension notice, but
we are concerned about creating a problem if/when he has a registration and
needs to enforce it. If we make an argument during prosecution that
another mark is not confusingly similar (because the marks look different
and the goods are distinguishable), may I assume it is conceivable that
during litigation, if he made an argument that contradicts the argument I
make during prosecution, that statement is something that can be used
against him? What happens during prosecution can come up in litigation,
correct? Is there any reason this is not a concern?
Russell D. Nugent
Comprising IP
1213 Culbreth Dr, Ste 112
Wilmington, NC 28405
nugent at comprisingip.com (private)
910-550-3259 (private)
contact at comprisingip.com
910-509-7131
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RGVC
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