[E-trademarks] Case citation?

[carla calcagno]

I think it also depends on the other Du Pont factors ( e.g. house
marks/supermarket marks and whether the marks are in use) and how much case
law exists holding that the goods at issue are legally related.  For
example,  since the 80's the PTO has typically taught Examiners that beer
and nonalcoholic beverages are legally related. I do think for those goods,
the TTAB would likely find some way around even a  weak showing by the
Examiner based on third party registrations.

I would contrast this with tires v automobiles where I think  the Board has
not had as much precedent finding those related except in the case of very
strong  auto marks.

On Mon, Feb 24, 2025 at 12:29 PM Welch, John L. via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> As Pam suggested, once you get to the TTAB, you have a major hill to climb:
>
>
>
> For example:
>
>
>
> The TTABlog<sup>®</sup>: TTABlog Test: Is OTTO'S for Soda Pops Confusable
> With OTTO'S OATMEAL STOUT for Beer?
> <http://thettablog.blogspot.com/2024/03/ttablog-test-is-ottos-for-soda-pops.html>
>
>
>
> Pointing to its 83 third-party registrations, C&D argued that the evidence
> "suggests that soda pops are instead the types of goods that are typically
> sold under the same mark … by distinct owners" and "overwhelmingly suggests
> that the respective industries have agreed that soda pop/soft drinks and
> beer are not related."
>
>
>
> The Board noted that more than 50 of the pairs include marks that differ
> by additional wording, design or stylization features that distinguish the
> marks. Furthermore, there was no supporting evidence of any use of any of
> the marks that comprise the pairs. "There is also an absence of proof, such
> as by declaration or submission of copies of the relevant file histories,
> that no licenses or coexistence agreements are in place between any of the
> paired registrants; or that they do not coexist because of limited
> geographic areas of actual use known to the owners of the involved
> registrations."
>
>
>
> “[T]he fact that the Examining Attorney did not submit more third-party
> examples does not detract from the fact that this evidence reveals that
> beer and soda are often offered by the same party under the same mark. The
> Court of Appeals for the Federal Circuit and Trademark Trial and Appeal
> Board have long recognized that "the PTO is an agency of limited resources"
> for obtaining evidence when examining applications for registration; the
> practicalities of these limited resources are routinely taken into account
> when reviewing a trademark examining attorney’s action.”
>
>
>
> JLW
>
>
>
> *John L. Welch*
>
> *Senior Counsel*
>
> Admitted to Practice: Massachusetts, New York, and Washington, DC
>
> jwelch at WolfGreenfield.com
>
> Tel. 617.646.8285
>
> <http://thettablog.blogspot.com/>
>
> *Wolf, Greenfield & Sacks, P.C.*
>
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> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Kevin Grierson via E-trademarks
> *Sent:* Monday, February 24, 2025 12:12 PM
> *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] Case citation?
>
>
>
> 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**​**​**​**​*
>
> |
>
> Partner
>
> <https://www.cm.law/>
>
> [image: Mobile:]
>
>   757-726-7799
>
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>
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>   kgrierson at cm.law
>
> *Please note: Culhane Meadows is now CM Law
> <https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/>*
>
>
>
> *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?
>
>
>
> EXTERNAL EMAIL
>
> 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?
>
> Pam
>
> Pamela S. Chestek
> Chestek Legal
> PLEASE NOTE OUR NEW MAILING ADDRESS
> 4641 Post St.
> Unit 4316
> El Dorado Hills, CA 95762
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> pamela at chesteklegal.com
> www.chesteklegal.com
>
> 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.”)
>
>
>
>
>
>
>
> *Kevin Grierson**​**​**​**​*
>
> |
>
> Partner
>
> <https://www.cm.law/>
>
> [image: Mobile:]
>
>   757-726-7799
>
> [image: Fax:]
>
>   866-521-5663
>
> [image: Email:]
>
>   kgrierson at cm.law
>
> *Please note: Culhane Meadows is now CM Law
> <https://www.cm.law/cm-law-formerly-culhane-meadows-launches-second-decade-with-fresh-name-and-modern-brand/>*
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com>
> <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>
> <e-trademarks at oppedahl-lists.com>
> *Cc:* Sam Castree <sam at castreelaw.com> <sam at castreelaw.com>
> *Subject:* Re: [E-trademarks] Case citation?
>
>
>
> EXTERNAL EMAIL
>
> 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
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>
> w: www.brandandbranch.com
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>
>
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>
> --
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