[E-trademarks] 11th DuPont Factor - Strength on Appeal to TTAB

[Lauren A. Malone Esq.]

Good afternoon all,

My client received a Final Office Action on a 2(d) refusal. We argued DuPont factors 1 through 8, but also factor 11 on the basis that my client had a prior registration for a virtually identical mark and identical in part services. The prior registration had been registered for over 5 years before Registrant's mark registered. Then, my client's mark and Registrant's mark co-existed on the Principal Register for only 3 days before my client's mark was cancelled for an inadvertent failure to file Section 8 declaration. We argued that my client's right to exclude (by virtue of the prior registration) was valid at the time of Registrant's registration. Yet, Registrant's mark registered anyway, which tells me no likelihood of confusion was found at the time of examination and, thus, no likelihood of confusion should be found now. However, the EA has made the refusal final and has cited In re Strategic Partners Inc. which has the following "unique" set of facts:

(1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”);
(2) the goods were identical in part; and
(3) the prior registration had coexisted for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds).

The EA has maintained the refusal and noted "applicant’s prior registration would generally need to fit within these parameters to overcome a Section 2(d) refusal." My client satisfies numbers 1 and 2 above, but not 3. It sounds like the EA is saying had the marks co-existed for at least 5 years, this factor would be considered, but since they only co-existed for 3 days (even though my client's registration was over 5 years old at the time of co-existence), it is not being considered.

I believe this to be our strongest argument (next to factors 1, 4, 6, and 8), especially since my client continued to use the mark since 2016 and the prior registration was only cancelled due to an inadvertent administrative failure and not any substantive issues. Would this be a viable argument in appealing the EA's decision?

I appreciate any feedback!

Lauren A. Malone, Esq.

Law Office of Lauren A. Malone, LLC
CultureHUB
1202 N. 3rd Street, Suite 103
Phoenix, AZ 85004
(623) 267-5924 Ext. 101
www.lamaloneesq.com<http://www.lamaloneesq.com>


*Licensed in New Mexico. Authorized to practice in Arizona under A.R.S. Sup. Ct. Rule 42, Rules of Prof. Conduct, ER 5.5(d)

The information contained in this message is attorney/client privileged and/or confidential information intended only for the use of the individual(s) named above. If the reader of this message is not the intended recipient, you are hereby notified that any dissemination, distribution, copying, or printing of this communication is strictly prohibited! If you have received this message in error, please notify us immediately by telephone at (623) 267-5924 Ext. 101 (or by reply e-mail) and delete this message. Thank You.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20251006/25c74fef/attachment.html>