[E-trademarks] Case citation?

[Mark Kaufman]

Thank you, Sam!  Shabnam is not the only one facing this issue!



Take care,



Mark S. Kaufman

Kaufman & Kahn, LLP

Email:  kaufman at kaufmankahn.com

www.kaufmankahn.com



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*From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
Of *Sam Castree via E-trademarks
*Sent:* Monday, February 24, 2025 11:00 AM
*To:* For trademark practitioners. This is not for laypersons to seek legal
advice. <e-trademarks at oppedahl-lists.com>
*Cc:* Sam Castree <sam at castreelaw.com>
*Subject:* Re: [E-trademarks] Case citation?



Dear Shabnam,



This question has come up before, and I've gathered several of these in a
Word doc for when I need them.  Admittedly, a bunch of these are
non-prededential, but it should be enough to get you started.





(“. . . although the Board had before it a few registrations for both
restaurant services and beer, . . . the small number of such registrations
suggests that it is quite uncommon for restaurants and beer to share the
same trademark.”)

--*In re Coors Brewing Co.,* 68 U.S.P.Q.2d 1059, 1063 (Fed. Cir. 2003)



“We have given no weight to those third-party registrations for marks which
are in the nature of house marks, designer marks and merchandising marks,
as it is well-recognized that such marks may be used for a wide variety of
items, and therefore they are of little value in showing that the goods for
which they are registered are all related.”

--*In re Gebhard*, Serial No. 78950320 (T.T.A.B. March 26, 2009)
(non-precedential)



“Third-party registrations in the nature of house marks used for a wide
variety of items are of little value by themselves to show that the various
goods for which they are registered are all related.  Similarly, here where
the website evidence shows house marks used on a wide variety of goods, it
is not so probative of this factor.”

--*In re Marko Schuhfabrik GmbH*, Serial No. 79040612 (T.T.A.B. December
23, 2009) (non-precedential).



“[M]any of the third-party registrations are owned by supermarkets that
sell their own brand of virtually every product.  In that marketing milieu,
consumers do not perceive the supermarket house brand, appearing on a wide
variety of products, as necessarily signaling that all such branded
products are commercially related products.  Otherwise, giving such
third-party registrations probative value would in effect create a “per se”
rule that all products and services available in a modern supermarket are
related.  In this regard, the fact that applicant has applied to register a
wide variety of products does not change the perception of consumers or
give the third-party registrations any added probative value.”

 --*In re Land O Sky, LLC*, No. 76633815, 2010 WL 183227, at *6 (T.T.A.B.
Jan. 4, 2010) (nonprecedential).


Cheers,



Sam Castree, III



*Sam Castree Law, LLC*

*3421 W. Elm St.*

*McHenry, IL 60050*

*(815) 344-6300*







On Mon, Feb 24, 2025 at 9:49 AM Shabnam Malek via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

Hello folks,



I am looking for a case citation that says something along the lines of
"the mere fact that registrations cited by the EA include both applicant's
and the cited goods/services does not mean those two things are necessarily
related." Any help is greatly appreciated.



Thank you!

Shabnam



Shabnam Malek



BRAND & BRANCH, PC

1531 17th Ave.
San Francisco, CA 94122

p: (510) 984-4285

e: shabnam at brandandbranch.com

w: www.brandandbranch.com



*Have you heard about the **International Cannabis Bar Association?* *Check
us out* <http://www.canbar.org/> *and use my name MALEK for a 15% discount
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