3/5/2012
June 10, 2011
Brian Edward Banner
Member
p y Law,, PLLC
H&A Intellectual Property
Alexandria, Virginia
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Overview
An ex parte appeal is where an applicant timely
asks the Trademark Trial and Appeal Board
(TTAB or Board) to act as an appellate court over
the Examiner’s final action of rejection of your
application. Any repeated requirement or refusal
may be the subject of an appeal to the Board.
Today,
Today we will review the issuance of a final
rejection made on the basis of likelihood of
confusion and the appeal therefrom.
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3/5/2012
When the Examining Attorney (EA) compares the
trademark in the application against other
i
l registered
i
d mark
k and
d concludes
l d
h
previously
that
confusion between them is likely under Section
2(d), an Office action is made. If traversing
arguments are unsuccessful in overcoming the
basis for the refusal the Applicant’s recourse is to
file an ex parte appeal.
appeal
Timing – Within 6 months of the Final O.A.
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Creating A Record
Hire or associate with a trademark attorney
familiar with the process.
Know and follow the relevant rules and case
law.
Answer each issue raised in the Office Action.
Anticipate what you need to place into the
record
your position.
d that
h favors
f
ii
Do not make arguments that are repetitive,
contrary to the law, unclear or unlikely to succeed.
Submit clear evidence to support your
theory of the case.
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3/5/2012
The Max Capital Group Ltd. filed an
application to register the combination
trademark “MAX and pillar design” below for
ii
d casualty
l insurance
i
d
writing
property and
and
reinsurance; life, health and annuity
reinsurance
underwriting;
property
catastrophe reinsurance, aviation reinsurance,
marine reinsurance, and energy reinsurance
underwriting; excess and surplus insurance
services, namely, property, inland marine,
casualty, excess liability and umbrella
insurance underwriting.
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In re Max Capital Group Ltd. (SN 77/186,166) (TTAB 1/4/2010)
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3/5/2012
The Examining Attorney issued an initial refusal of
the mark in the application. The basis of that initial
rejection was Section 2(d) likelihood of confusion based
on two prior registrations namely, “MAX” word mark
reflected in Registration No. 2,866,938, issued July 27,
2004 and “MAX” (and design)
both for underwriting of property and casualty insurance.
Not surprisingly, both were owned by the same entity.
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In determining whether there is a likelihood of
confusion between marks, the Board needs to consider all
E I.
I Du Pont de Nemours
of the relevant factors listed in E.
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). You
should review cases from the CAFC on 2(d) and follow
them. Under du Pont thirteen factors may be considered.
They are:
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3/5/2012
Likelihood of Confusion
The similarity or dissimilarity of the marks in their
i i as to appearance, sound,
d connotation
i and
d
entireties
commercial impression.
The similarity or dissimilarity, and nature, of the goods or
services as described in an application or registration or
in connection with which a prior mark is in use.
The similarity or dissimilarity of established, likely to
continue trade channels.
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Likelihood of Confusion
The conditions under which, and buyers to whom, sales
d ii.e., “impulse”
“i
l ” vs. careful,
f l sophisticated
hi i
d
are made,
purchasing.
The fame of the prior mark (sales, advertising, length of
use).
The number and nature off similar marks in use on similar
goods.
The nature and extent of any actual confusion.
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3/5/2012
Likelihood of Confusion
The length of time during and conditions under which there has
been concurrent use without evidence of actual confusion.
The variety of goods on which the mark is or is not used (house
mark, “family” mark, product mark).
The market interface between Applicant and the owner of
a prior mark:
(a) a mere “consent” to register or use;
(b) agreement provisions designed to preclude confusion, i.e.,
limitations on continued use of the marks by each party;
(c) assignment of mark,
mark application,
application registration and goodwill
of the related business;
(d) laches and estoppel attributable to the owner of prior mark
and indicative of lack of confusion.
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Likelihood of Confusion
The extent to which Applicant
has a right
pp
g to exclude others
from use of its mark on its goods.
The extent of potential confusion, i.e., whether de minimus
or substantial.
Anyy other established fact p
probative of the effect of use.
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3/5/2012
ARGUMENTS
The Applicant argued that the word “max” is a weak
mark,, used byy others in the industryy and in related
industries and therefore is entitled to a narrow scope of
protection. Further, the word derives from Latin and is
the English slang term for “maximum”. Its combined
mark includes a pillar design before the weak word and
suggests “longevity, stability, and reliability, along with
the intellectual prestige associated with classical
architecture and culture.” As such, the commercial
impression that is created by its mark is unlikely to the
confused by careful, sophisticated and discriminating
purchasers with either of the two cited registrations.
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USPTO ARGUMENT
Examining Attorney Kahn (EA) argued in the initial
rejection that the marks were very similar and the
services were overlapping and legally identical in part.
Applicant’s service of “writing property and casualty
insurance” was identical to the “underwriting of property
and casualty insurance” listed in both cited registrations.
As such, the du Pont factor of the similarity of the
services supports a finding of likelihood of confusion.
confusion
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3/5/2012
What do you think?
Does the proposed mark create a sufficiently
distinctive different commercial impression
compared with either the word mark or the
combined word and design mark in the two prior
registrations to negate likelihood of confusion as
to source, origin or sponsorship of the listed
services?
i ?
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Likelihood of Confusion
The Court of Appeals for the Fedearl Circuit provided
guidance with regard to determining and articulating
likelihood of confusion by stating:
The basic principle in determining confusion between
marks is that marks must be compared in their entireties
and must be considered in connection with the
particular
for
ti l goods
d or services
i
f which
hi h they
th are used.
d It
follows from that principle that likelihood of confusion
cannot be predicated on dissection of a mark, that is, on
only part of a mark.
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3/5/2012
Final Refusals
Based on the record the EA issued the FINAL refusal
citing Section 2(d) likelihood of confusion as its basis for the
holding.
Applicant timely filed a Notice of Appeal and a request
for reconsideration of the final refusal. When that request
pp
g
argued
the same du Pont factors to the Board.
failed Applicant
It properly enter over 300 pages of third party registrations
and internet excerpts showing that MAX was used by third
parties. That evidence was not organized and Applicant failed
to state in its brief which part of the evidence supported its
main theory of its case.
This severely weakened the
Applicant’s entire argument.
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Requests For Reconsideration
This mayy be filed within the time for filing
parte
g the ex p
appeal but it does not extend the time in which to file the
appeal. Always file this if possible.
Now is the time to add any new information, evidence,
consent agreements, evidence of the purchase of the cited
registration or the cited registration’s cancellation, survey
evidence, additional Lexis-Nexis records, additional
declarations of consumers, additional book and dictionary
references and any other published records that support your
position.
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3/5/2012
Example of Request for Reconsideration
Filing date: 06/18/2009
Application Serial No
No. 790123456
Applicant MOHAWK LLP
To the Commissioner for Trademarks:
Request for Reconsideration after Final Action
ARGUMENT
MOHAWK LLP REQUESTS RECONSIDERATION of the final refusal under Section 2(d)
with respect to Application Serial No. 790123456 based on a restriction and
amendment to the identification of goods and customer declarations attached hereto
not previously available.
Applicant therefore respectfully requests that the Examining Attorney withdraw the
Section 2(d) likelihood of confusion refusal in this matter.
matter This action is respectfully
requested.
The refusal to register has been appealed as to the following class of goods/services:
Class 025. All goods and services in the class are appealed, namely: FOOTWEAR,
BATHING SUITS, BELTS.
Respectfully submitted,
Brian E. Banner
June 18, 2009
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Outcome Of Ex Parte Appeal
On appeal
the Board concluded that the EA p
properly
pp
p y applied
pp
the case law and affirmed the final refusal. It noted that the two
key considerations on any likelihood of confusion analysis are the
similarities between the marks [here the applied for combined
mark and the word mark MAX in the first cited registration] and
the similarities between the goods and/or services. The Board
agreed with the EA that the services were legally identical. It
concluded that while the cited word mark registration MAX has a
suggestive meaning and is therefore not entitled to a broad scope
of protection, even suggestive or weak marks are entitled to
protection from the use of a very similar mark for legally identical
services.
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REASONING
As to the impact of the third-party registrations of
applicant’ss theory of its
record arguably favoring the applicant
case, the Board noted:
[A]n applicant does not overcome a likelihood of
confusion refusal by pointing to other registrations and
arguing that they are as similar to the cited registration
as applicant’s mark. While third-party registrations
may be used to demonstrate that a portion of the mark
is suggestive or descriptive, they cannot justify the
registration of another confusingly similar mark.
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Since the internet evidence was cumulative,
repetitive, disorganized and confirmed the meaning of
MAX, and since the applicant did not state in its brief
what part of that body of evidence was the principal
support for its arguments, the Board was not
persuaded by the evidence and afforded it limited
weight and consideration. Here the applicant’s
attorney did not present a strong evidentiary picture
for the Board. The Board will not guess at the meaning
off such
or sift
h evidence
id
ift through
th
h it to
t find
fi d the
th mostt
important elements. Be clear and careful with the
evidence you submit in the case and identify it with
particularity in your main brief.
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3/5/2012
Good luck with your appeal!
Thank you for your attention and have a
good afternoon. If you would like a copy of these
slides please let me know and I will e-mail them
to you for your personal use.
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