TTAB Ex Parte Appeal to Review Final Decision by an Examining Attorney Refusing to Register a Trademark

March 22nd, 2012

The Trademark Trial and Appeal Board (TTAB) not only handles inter partes proceedings, such as trademark oppositions and trademark cancellations, it also is responsible for handling an appeal of a final refusal to register a trademark.  An appeal is typically based upon a substantive finding of a likelihood of confusion (Section 2(f)) or mere descriptiveness (Section 2(e)(1)) refusal by the examining attorney.  A Notice of Appeal must be filed within six (6) months after the mailing date of the final refusal.  The applicant must also pay the filing fee, which is currently $100 per international class.

Once an appeal is filed, the applicant must argue, based upon the record, why the USPTO examining attorney was wrong and why the applied for trademark or service mark should be registered.  This is typically done in a brief, but an oral argument at a hearing may also be requested.

A recent precedential decision from the TTAB, and one involving the Michigan-based Grand Hotel, located in Mackinac Island, provides a good example of the kinds of issues raised on appeal and how the TTAB may decide.  In the appeal, In re Hartz Hotel Services, Inc., Serial No. 76692673 (March 19, 2012) [precedential], the TTAB reversed a Section 2(d) refusal that was based upon a likelihood of confusion between the registered mark GRAND HOTEL and the applied for mark GRAND HOTEL NYC.  In doing so, the TTAB recognized that the GRAND HOTEL mark could not be attacked as being merely descriptive since it was entitled to a presumption of validity as a registered, incontestable mark, but ultimately concluded that the term “Grand” was relatively weak.  Based upon this determination, coupled with the fact that the term “Hotel” was disclaimed, the TTAB found that the addition of the geographic indicator of NYC was enough to distinguish the marks from one another and avoid a likelihood of consumer confusion.  The applicant relied upon third party registrations and third party use of the term “Grand” in successfully overcoming the refusal.

The important lessons to be gleaned from this TTAB appeal decision are as follows:

1. Just because one owns a registered trademark, and that registered trademark forms the basis for a likelihood of confusion refusal from the USPTO examining attorney, an applicant may be able to establish the relative weakness of the mark en route to successfully registering its own mark.

2. Third party trademark registrations and third party trademark uses are strong evidence in a TTAB appeal when attempting to show the relative weakness of a mark, which is the most important factor in the likelihood of confusion test and analysis.

3. It is important to police third party usage of your trademark or service mark in an effort to minimize the number of other uses and registrations that could ultimately weaken your own mark.

TTAB trademark matters like this one reinforce many important principles underlying both the trademark application process as well as the trademark maintenance best practices.  While the GRAND HOTEL mark is still a registered trademark and subject to both protection and enforcement, this decision highlights its weaknesses and jeopardizes the registrant’s ability to successfully maintain its exclusive right to use the GRAND HOTEL mark in connection with hotel services, especially where there are minor differences between it and other marks.  A trademark attorney can help you maintain the strength of your mark and, alternatively, help your application proceed to registration, even if via a TTAB appeal.