TMEP 1207.01(d)(iii): Third-Party Registrations and Evidence of Third-Party Use

October 2017 Edition of the TMEP

Previous: §1207.01(d)(ii) | Next: §1207.01(d)(iv)

1207.01(d)(iii)    Third-Party Registrations and Evidence of Third-Party Use

Generally, the existence of third-party registrations cannot justify the registration of another mark that is so similar to a previously registered mark as to create a likelihood of confusion, or to cause mistake, or to deceive. E.g., In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009). However, active third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services. See, e.g., In re, llc, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-40, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015); Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1036 (TTAB 2016); In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB 1988); Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). Properly used in this limited manner, third-party registrations are similar to dictionaries showing how language is generally used. See, e.g., Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917, 189 USPQ 693, 694-95 (C.C.P.A. 1976); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987). However, cancelled or expired third-party registrations for similar marks are not probative evidence of a mark’s descriptiveness, suggestiveness, or strength. See Bond v. Taylor, 119 USPQ2d 1049, 1054 n. 10 (TTAB 2016).

Third-party registrations that cover a number of different goods or services may have some probative value to the extent that they may serve to suggest that goods or services are of a type that may emanate from a single source, if the registrations are based on use in commerce. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that "a single company sells the goods and services of both parties, if presented, is relevant to the relatedness analysis"); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988); see also In re Princeton Tectonics, Inc., 95 USPQ2d 1509, 1511 (TTAB 2010) ("While third-party registrations can play an important role in establishing that the types of goods at issue are related, examining attorneys must review the registrations carefully to ensure that each registration presented is probative and that the number of registrations is sufficient, along with other types of evidence, to establish that the types of goods at issue are related."). Third-party registrations that are not based on use in commerce, such as those registered under §66 of the Trademark Act (15 U.S.C. §1141f(a) ), or those registered solely under §44 of the Trademark Act (15 U.S.C. §1126(e) ), and for which no §8 or §71 affidavits or declarations of continuing use have been filed (15 U.S.C. §1058), have very little, if any, persuasive value. See Calypso Tech., Inc. v. Calypso Capital Mgmt., LP, 100 USPQ2d 1213, 1221 n.15 (TTAB 2011); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).

A list of registrations or a copy of a search report is not proper evidence of third-party registrations. See, e.g., In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006); 78 USPQ2d 1301, 1304 (TTAB 2006); In re Dos Padres, Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998); TBMP §1208.02.  To make registrations of record, copies of the registrations or the electronic equivalent thereof (i.e., printouts or electronic copies of the registrations taken from the electronic database of the USPTO) must be submitted. In re Ruffin Gaming, LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994);TBMP §1208.02; TMEP §710.03.

Evidence of third-party use falls under the sixth du Pont factor – the "number and nature of similar marks in use on similar goods." In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, it "is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection." Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016) (noting that evidence that third parties had adopted marks that were the same as or similar to opposer’s mark for use in connection with food products "may show that a term carries a highly suggestive connotation in the industry and, therefore, may be considered weak"); but see Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967) ("the existence of confusingly similar marks already on the register will not aid an applicant to register another confusingly similar mark").