TMEP 1216.01: Decisions Involving Prior Registrations Not Controlling

October 2017 Edition of the TMEP

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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 Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) ("The PTO is required to examine all trademark applications for compliance with each and every eligibility requirement... even if the PTO earlier mistakenly registered a similar or identical mark suffering the same defect."); 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 USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017) ("The issuance of Applicant's first registration does not require the approval of a second registration if, on the facts of the case, it would be improper to do so under the governing legal standard."); 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).