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Stopping the Launch at Risk: In re Cyclobenzaprine

Rare TTAB §2(d) Reversal Where Examiner Failed to Heed Rules of Evidence

October 19, 2015

Rare TTAB §2(d) Reversal Where Examiner Failed to Heed Rules of Evidence

October 19, 2015

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While browsing back issues of the indispensable Allen’s Trademark Digest, the blurb for the Trademark Trial & Appeal Board’s decision in the appeal In re Micros Systems, Inc. caught my eye. It was a rarely-seen reversal of an examiner’s refusal to register a mark based on a prior conflicting mark (TTAB statistics indicate that such Section 2(d) refusals are affirmed over 90% of the time), so my interest was piqued.

The applicant had filed for the mark MISTORE for use in connection with “Computer software for use in connection with retail point of sale and inventory management”. The Examining Attorney had refused registration based on a prior registration for the mark MYSTORE XPRESS [& design, shown below], for “computer e-commerce software to allow users to perform electronic business transactions via a global computer network.”

mystorexpress

The Board first considered and rejected the Applicant’s arguments about the similarity or dissimilarity of the marks, finding that the dominant elements of both marks were the words MISTORE and MYSTORE, which are phonetic equivalents. The Board found that the design elements and the word XPRESS in the cited mark were not sufficient to distinguish it from applicant’s mark. Thus the marks were deemed to be similar in their entireties in appearance, sound, connotation and commercial impression.

How, then, did the Applicant snatch victory from the jaws of defeat?

The Board found that the Examiner had failed to establish that the parties’ respective goods were similar or related. Specifically, the Examining Attorney had relied on dictionary definitions of “business transactions”, “point-of-sale” and “e-commerce” in order to forge a link between Applicant’s software and Registrant’s.

The problem was that two of those definitions – “business transactions” and “point-of-sale” — were from online dictionaries with no print edition. As such, the Board could not take judicial notice of them and they were no more than hearsay. And in the absence of any other evidence of relatedness (the Board noted “the sparse record in this case”), there was nothing to link Applicant’s software to any business transaction conducted on the internet.

The Board then concluded that these differences in the goods outweighed any similarities in the marks and reversed the refusal to register. Although a non-precedential decision, this is still an eye-opening result, particularly considering that in Section 2(d) cases all doubts are supposed to be resolved against the applicant. The lesson for trademark practitioners is never to accept an Examiner’s evidence at face value. Check the sources, be mindful of the burdens or proof and rules of evidence. If an Examiner has “mailed it in”, you might have fodder for a successful appeal.

Related Tags

trademark
trademark registration
TTAB
trademark infringement

Blog Authors

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Robert M. O'Connell, Jr. | Of Counsel

Robert O’Connell is Of Counsel in the Boston office of Fish & Richardson. His practice focuses on trademark and copyright strategic advice, prosecution and enforcement, including all aspects of domestic and international trademark law; registration and...

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