[E-trademarks] Case citation?

Mon Feb 24 17:11:58 UTC 2025

I have used this argument successfully about half the times I make it.  In the cases where I was successful, I was able to provide dramatically more citations than the examiner was (i.e. the examiner did their usual 3 cites, and I responded with 40-50 counterexamples).

Kevin Grierson

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Pamela Chestek via E-trademarks
Sent: Monday, February 24, 2025 12:08 PM
To: e-trademarks at oppedahl-lists.com
Cc: Pamela Chestek <pamela at chesteklegal.com>
Subject: Re: [E-trademarks] Case citation?

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But how often does it work? It seems like the TTAB doesn't give the argument much weight, but maybe that's because it's a weak theory by the time it gets to the TTAB. Do people have success with the argument with examining attorneys? How many references, and how close, does it typically take?

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On 2/24/2025 9:00 AM, Kevin Grierson via E-trademarks wrote:
And keep in mind you can use ThorCheck or a similar service to rebut the relatedness argument by showing that there are identical marks owned by different owners in the same two categories the examiner said were related (this is from a response to an office action I wrote a while back):

Just as examining attorneys may use third-party registrations or web sites to show relatedness of goods and services, “applicants may submit sets of third-party registrations to suggest the opposite, i.e., that the Office has registered the same mark to different parties for the goods at issue.”  In re G.B.I. Tile and Stone, Inc., 92 U.S.P.Q.2d 1366, 1369-70 (T.T.A.B. 2009).  As explained more fully in another case:

By submitting the third-party registrations, the Examining Attorney is essentially asking us to draw the inference that when different products are listed in the same registration, those products may emanate from a single source.  Applicant may rebut this inference with evidence (e.g., a declaration from counsel or a paralegal that he/she investigated the use of the marks in the third-party registrations and could not find any evidence that the registrants used the marks on both of the products at issue and/or an equal or greater number of third-party registrations owned by different entities for the same or similar marks where each entity has registered its mark for one of the goods at issue). In re Ayurvedic Concepts, Ltd., Serial No. 78800436 (T.T.A.B. December 5, 2008)(non-precedential).

In re Hyundai Motor Am., Serial No. 78889340 (T.T.A.B. September 14, 2009) (non-precedential) (“the fact that there are numerous third-party registrations for similar marks owned by different entities for tires and automobiles is consistent with the conclusion that trademark owners in these respective industries do not believe that there is a likelihood of confusion between these marks for the listed goods.”)

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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 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><mailto:e-trademarks at oppedahl-lists.com>
Cc: Sam Castree <sam at castreelaw.com><mailto:sam at castreelaw.com>
Subject: Re: [E-trademarks] Case citation?

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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<mailto: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

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