Challenging Third-Party Registrations in a 2(d) Refusal
Once a trademark application is filed with the United States Patent & Trademark Office, some months later it is common for an Office Action to be issued. If the Examining Attorney refuses the application based on likelihood of confusion with a prior registration it could be that the relatedness argument was the focus of the determination. For general information on 2(d) Refusals, see our firm page entitled, Likelihood of Confusion Refusals-2(d) Refusals. It is also likely that the Examining Attorney included third-party registrations to support the relatedness argument. The Examining Attorney will argue that third-party registrations are probative of the fact that the goods and/or services are of a type that come from a single source (a single company) and thus are related for purposes of likelihood of confusion. In re Mucky Duck Mustard Co. Inc., 6 U.S.P.Q.2d 1467 (TTAB 1988); In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). See also, the firm’s blog post entitled, Evidence Of Third-Party Use and Third-Party Registrations.
When the Examining Attorney introduces this type of evidence, an applicant should also introduce the same type of evidence to rebut the Examining Attorney’s relatedness argument. An applicant can introduce sets of third-party registrations showing the same or similar marks owned by different entities including the type of goods and services of the Applicant and the Registrant for the purposes of demonstrating the goods and services are not related. See In re Thor, Tech. Inc., 113 USPQ2d 1546 (TTAB 2015) [precedential], where the TTAB reversed a refusal based on the Applicant submitting 50 sets of third-party registrations for the same or similar marks owned by different entities for the subject goods. See also, In re G.B.I. Tile and Stone, Inc., 92 USPQ2d 1366 (TTAB 2009). A large set of third-party registrations for the same or similar mark owned by different entities suggests that trademark owners in the industry do not believe confusion will result for the goods or services at issue even with identical trademarks. If possible, the Applicant should introduce a greater number of sets of third-party registrations than the number of registrations offered by the Examining Attorney.
In addition, the applicant’s attorney can research the websites of the owners of the third-party registrations to determine if the same mark is used on the goods or services at issue. If not a declaration from counsel can be submitted attesting to the findings. It’s important to keep in mind that use evidence from a company’s website is critically important and should be presented if available in addition to third-party registrations. If the Examining Attorney only presents evidence of third-party registrations and not third-party use, the applicant can argue that third-party registrations are not probative of whether the public will find confusion when used in commerce.
If third-party registrations are presented, there are methods to discredit some of the evidence. If the registrations do not include both the applicant’s goods and the registrant’s goods this must be pointed out in the Response to the Office Action. If the goods and/or services are not identical and only similar, the evidence is less probative, and the applicant can argue the Examining Attorney has not met his or her burden. See In re Band-It-IDEX, Inc., Serial No. 77363240 (TTAB October 20, 2009). If you can knock out numerous third-party registrations, then the registrations remaining may not be sufficient to show relatedness. In re Carrier Corp., Serial No. 78329277 (TTAB February 15, 2008). Applicants should check ownership of the registrations, because if several are owned by the same entity, those duplicate marks will be knocked out from consideration. Verify if the third-party registrations are house marks. It’s generally accepted that registrations containing house marks, covering a variety and a broad range of goods will be less probative, and not necessarily related. Applicants can refer to In re Mucky Duck Mustard Co. Inc. and In re Albert Trostel & Sons Co. to support this argument. See also, In re Gebhard, Serial No. 78950320 (TTAB March 26, 2009).
Applicants should also research the number of registrations containing only one of the goods or services at issue compared to the number of registrations containing both of the goods and/or services at issue. A statistical analysis may show that the registrations containing both applicant’s and registrant’s goods are de minimis and not probative. The most obvious way to discredit the third-party registrations is to show the registrations were not based on use in commerce. See In re 1st USA Realty Prof’ls. Inc., 84 USPQ2d 1581, 1583 (TTAB 2007), where it was held that the registrations cited by the Examining Attorney were based on Sections 44 and 66 Of the Trademark Act, therefore the registrations had no probative value in showing the relatedness of the services. See also, Calypso Tech., Inc. v. Calypso Capital Mgmt., LP, 100 USPQ2d 1213 (TTAB 2011). Finally, as a matter of practice, remember to check if the cited third-party registrations are “live”, valid registrations. If you have questions concerning an Office Action you received, or other trademark related questions, please feel free to contact the firm for a courtesy consultation.