A (current) TTAB Administrative Trademark Judge once said to me that one can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and the goods or services. Here are three recent decisions in appeals from Section 2(d) refusals. How do you think these came out? [Answers in first comment].
In re E8 Storage Systems Ltd., Serial No. 87597189 (December 11, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) refusal of E8 STORAGE for computer software and hardware for the storage of data, excluding anti-virus software [STORAGE DISCLAIMED], in view of the registered mark E8 SECURITY for computer anti-virus software [SECURITY disclaimed]. Applicant contended that the differences in the goods and the sophistication of the relevant purchasers make confusion unlikely].
In re Game On International, LLC, Serial No. 87606762 (December 12, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman) [Section 2(d) refusal of the word+design mark shown below [INTERNATIONAL disclaimed] for advertising, promotion, and marketing services, in view of the registered marks GAME ON for "advertising and marketing services, namely, promoting the goods, services and interests of others in the field of billiards via print and electronic media," and GAME ON! LEARNING for "business training; interactive on-line training services in the field of business and sales skills; teaching and training in business, industry and information technology." Applicant argued that the first cited mark is used for a billiard blog rather than for the services identified in the registration, and as to the second mark there was no evidence that the mark is being used at all.]
In re Bayco Products, Inc., Serial No. 87708217 (December 17, 2019) [not precedential] (Opinion by Judge Karen Kuhlke). [Section 2(d) refusal of INTEGRITAS for "Flashlights, namely, portable, rechargeable lanterns," in view of the registered mark ENTEGRITY, in stylized form, for "Light bulbs; Light bulbs, electric; Lighting fixtures; Lighting installations; Lighting tubes; Electric light bulbs; Fixtures for incandescent light bulbs; Fluorescent electric light bulbs; Halogen light bulbs; Incandescent light bulbs; LED light bulbs."Applicant maintained that registrant's goods are "specialized light bulb products" for "high end energy efficient lighting projects" for "stationary installation in commercial buildings" while applicant's goods are rechargeable, hand-held, portable flashlights "sold to a very specialized market, such as one that services firemen, police, and other first responders."]
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.