1216 Effect of Applicant’s Prior Registrations

1216.01 Decisions Involving Prior Registrations Not Controlling

Trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence of record that exist at the time registration is sought. In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9 (C.C.P.A. 1982); In re Thunderbird Prods. Corp., 406 F.2d 1389, 160 USPQ 730 (C.C.P.A. 1969); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001); In re Styleclick.com Inc., 58 USPQ2d 1523 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000).

Each case must be decided on its own facts. The USPTO is not bound by the decisions of the examiners who examined the applications for the applicant’s previously registered marks, based on different records. See In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007) (upholding examining attorney’s requirement for amendment of the term "chronographs" in the identification of goods, notwithstanding applicant’s ownership of several registrations in which this term appears without further qualification in the identification); In re Merrill Lynch, Pierce, Fenner, & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987) (incontestable registration of CASH MANAGEMENT ACCOUNT for credit card services did not automatically entitle applicant to registration of the same mark for broader financial services); In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (examining attorney could properly refuse registration on ground that DURANGO for chewing tobacco is primarily geographically deceptively misdescriptive, even though applicant owned incontestable registration of same mark for cigars); In re Rodale Inc., 80 USPQ2d 1696 (TTAB 2006) (NUTRITION BULLETIN generic for "providing information in the field of health and diet via a web site on the Internet," notwithstanding applicant’s claims of ownership of six prior registrations on the Supplemental Register that included the term "bulletin" in the mark for related goods and services (e.g., "Weight-Loss Bulletin," "Sex Bulletin," "Muscle Bulletin," and "Nutrition Bulletin")); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (applicant’s ownership of registration of BEST! did not preclude examining attorney from requiring disclaimer of "Best" in applications seeking registration of BEST! SUPPORTPLUS and BEST! SUPPORTPLUS PREMIER for the same and additional services); In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994) (examining attorney not precluded from refusing registration of ULTRA for "gasoline, motor oil, automotive grease, general purpose grease, machine grease and gear oil," even though applicant owned registrations of same mark for "motor oil" and "gasoline for use as automotive fuel, sold only in applicant’s automotive service stations"); In re Medical Disposables Co., 25 USPQ2d 1801 (TTAB 1992) (disclaimer of the unitary term "MEDICAL DISPOSABLES" required, notwithstanding applicant’s ownership of a prior registration in which a piecemeal disclaimer of the words "MEDICAL" and "DISPOSABLES" was permitted); In re Perez, 21 USPQ2d 1075 (TTAB 1991) (likelihood of confusion between applicant’s EL GALLO for fresh tomatoes and peppers and the previously registered mark ROOSTER for fresh citrus fruit, notwithstanding applicant’s ownership of an expired registration of the same mark for the same goods); In re Lean Line, Inc., 229 USPQ 781 (TTAB 1986) (LEAN merely descriptive of low-calorie foods, even though applicant had registered the term for other goods and services and a third-party had registered the term "LEAN CUISINE" with no disclaimer); In re McDonald’s Corp., 229 USPQ 555 (TTAB 1985) (Board not bound to allow registration of APPLE PIE TREE for restaurant services merely because applicant had succeeded in registering the character and name as trademarks and the character as a service mark); In re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) (LAW & BUSINESS incapable of distinguishing the services of arranging and conducting seminars in the field of business law, notwithstanding applicant’s ownership of a registration on the Supplemental Register for the same mark for books, pamphlets, and monographs); In re Local Trademarks, Inc., 220 USPQ 728 (TTAB 1983) (upholding refusal of registration on the ground that WHEN IT’S TIME TO ACT did not identify advertising services; Board not bound to allow registration simply because applicant owned registrations for identical services); In re Pilon, 195 USPQ 178 (TTAB 1977) (title of chapter or section of book not registrable, even though applicant owned prior registrations of marks comprising chapter titles). See also In re Wilson, 57 USPQ2d 1863 (TTAB 2001) ("reasoned decisionmaking" doctrine, which prohibits a federal agency from creating conflicting lines of precedent governing identical situations, did not entitle applicant to registration of PINE CONE BRAND for packaged fresh citrus fruit, even though USPTO issued registration for similar PINE CONE mark in 1933 despite then-existing registration for PINE CONE mark that was cited against applicant).

1216.02 Effect of "Incontestability" in Ex Parte Examination

Section 15 of the Trademark Act, 15 U.S.C. §1065, provides a procedure by which a registrant’s exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration can become incontestable. See TMEP §§1605–1605.06 for information about the requirements for filing an affidavit of incontestability under §15.

In Park ‘N Fly v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327 (1985), the Supreme Court held that the owner of a registered mark may rely on incontestability to enjoin infringement, and that an incontestable registration, therefore, cannot be challenged on the ground that the mark is merely descriptive.

In In re Am. Sail Training Ass’n, 230 USPQ 879 (TTAB 1986), the Trademark Trial and Appeal Board held that an examining attorney could not require a disclaimer of "TALL SHIPS" in an application for registration of the mark RETURN OF THE TALL SHIPS, where the applicant owned an incontestable registration for the mark TALL SHIPS for the identical services. This would be a collateral attack on an incontestable registration. However, this applies only where both the marks and the goods or services are identical, and the identical part of the applied-for mark would not be considered generic. The Board noted that the matter required to be disclaimed was "identical to the subject matter of applicant’s incontestable registration," and that "the services described in applicant’s application are identical to those recited in the prior incontestable registration." Id. at 880.

For determining likelihood of confusion, "the fact that opposer's federally-registered trademark has achieved incontestable status means that it is conclusively considered to be valid, but it does not dictate that the mark is 'strong.'" Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1036 (TTAB 2010). Moreover, although "an incontestable registration may not be challenged as invalid for mere descriptiveness," incontestability does not preclude a finding that, in terms of conceptual strength, the mark is descriptive for purposes of determining the inherent strength of a mark as a factor relevant to likelihood of confusion. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476-77 (TTAB 2014).

Ownership of an incontestable registration does not give the applicant a right to register the same mark for different goods or services, even if they are closely related to the goods or services in the incontestable registration. See In re Save Venice N.Y. Inc., 259 F.3d 1346, 1353, 59 USPQ2d 1778, 1782 (Fed. Cir. 2001) (applicant’s ownership of incontestable registration of the word mark SAVE VENICE for newsletters, brochures, and fundraising services did not preclude examining attorney from refusing registration of a composite mark consisting of the phrases THE VENICE COLLECTION and SAVE VENICE INC. with an image of the winged Lion of St. Mark for different goods; "[a] registered mark is incontestable only in the form registered and for the goods or services claimed."); In re Merrill Lynch, Pierce, Fenner, & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987) (incontestable registration of CASH MANAGEMENT ACCOUNT for credit card services did not automatically entitle applicant to registration of the same mark for broader financial services); In re Bose Corp., 772 F.2d 866, 873, 227 USPQ 1, 6–7 (Fed. Cir. 1985) (incontestable status of registration for one speaker design did not establish nonfunctionality of another speaker design with shared feature); In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (examining attorney could properly refuse registration on ground that mark DURANGO for chewing tobacco is primarily geographically deceptively misdescriptive, even though applicant owned incontestable registration of same mark for cigars); In re Best Software Inc., 63 USPQ2d 1109, 1113 (TTAB 2002) (applicant’s ownership of incontestable registration for the mark BEST! did not preclude examining attorney from requiring disclaimer of "BEST" in applications seeking registration of BEST! IMPERATIV HRMS "for goods which, although similar, are nevertheless somewhat different"); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (applicant’s ownership of incontestable registration for the mark BEST! did not preclude the examining attorney from requiring disclaimer of "BEST" in applications seeking registration of BEST! SUPPORTPLUS and BEST! SUPPORTPLUS PREMIER for the same and additional services); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988) (examining attorney could properly refuse registration on the ground that a mark is primarily merely a surname even if applicant owned incontestable registration of same mark for unrelated goods); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986) (examining attorney could refuse registration of BANK OF AMERICA under §§2(e)(1) and 2(e)(2), despite applicant’s ownership of incontestable registrations of same mark for related services).