Overcoming a §2(d) Likelihood of Confusion Office Action Part 3: Canceling the Cited Mark and Seeking Registration on the Supplemental Register
M.J. Williams | February 02, 2022
M.J. Williams is a partner at Wissing Miller LLP, a boutique intellectual property firm in New York City. She provides counsel and representation on trademarks and copyrights to creatives and creative businesses, from start-ups to global corporations. She also supports reporters, media companies, and activists with Freedom of Information matters, frequently litigating against law enforcement agencies for release of public records.
§2(d) Likelihood of Confusion refusals are often some of the most difficult hurdles to overcome when prosecuting a USPTO trademark application. This series of articles will describe in detail three different scenarios before the USPTO where IP attorney M.J. Williams came up with successful and creative solutions to overcome the examiners’ refusals. Set forth in Q&A format and responding to questions from Alt Legal, M.J. breaks down the process, highlights successful strategies that she’s used, and provides practical tips for all practitioners.
Check out each of the articles in this series:
- Part 3: Canceling the Cited Mark and Seeking Registration on the Supplemental Register (read below)
Background – Application and the Client
The applicant proposed the mark COOL DRY COVERS to be used in connection with golf seat covers. The application listed the goods as: Fitted seat covers for vehicles; Fitted vehicle seat covers. M.J. came on as attorney of record after the applicant, an Australian company, had filed the application pro se and was required by the USPTO to obtain US counsel. The Examining Attorney issued an office action refusing the mark based on §2(d) likelihood of confusion with the registered mark COOL COVER used in connection with semi-fitted reflective covers for automobiles. Additionally, the examiner refused the mark based on §2(d) likelihood of confusion with a prior pending application for the mark COOL used in connection with various types of vehicles, parts, and accessories including “fitted seat covers for vehicles; fitted vehicle covers.” The examiner also refused the applied-for mark on the basis of §2(e)(1), that the applied-for mark is merely descriptive.
Here is the link to M.J.’s office action response and link to PDF with arguments..
This is a tough case. You’re clearly dealing with nearly identical marks and very closely-related goods. How do you approach the response?
The terms “cool” and “cover” are widely used for automotive products, so the strongest available argument was the cited registered marks’ weakness, and the heightened significance of the differences between the marks and their goods.
When seeking registration on the Supplemental Register, how do you discuss this with a client and explain the differences between the Principal and Supplemental Registers?
Most clients, including this one, immediately understand the pay-off when choosing a brand that in some way describes the goods or services offered under it. It’s easier to market goods when their branding communicates some features about them. When explaining the registers’ differences, I inform clients that the Supplemental Register is reserved for brands like theirs that are in the process of gaining the ability to point to them, as the goods’ source, in addition to the goods’ features. Most immediately important to clients, however, are the similar benefits of registration on either the Supplemental or Principal Register, including barring registration of confusingly-similar marks and use of the Ⓡ symbol.
After you submitted your response, the examiner accepted your request to move to the Supplemental Register, withdrew the refusal as to the COOL registration, but upheld his refusal based on §2(d) likelihood of confusion with the COOL COVER mark. Your next step was to pursue cancellation of the registered mark. How did you go about doing that? What are some investigative tactics you can use to determine if a registered mark is in use?
In the final Office Action, the Examining Attorney made it clear he would not be convinced by additional evidence or arguments that COOL COVER and my client’s COOL DRY COVERS could coexist without consumer confusion, given the marks’ identical terms and comparable goods. I had a feeling that the COOL COVER mark might have fallen out of use because the owner used the same specimen both to register the mark and years later to renew the registration. I scoured the Internet for opportunities to buy COOL COVER car covers, for mention of those goods or of its owner, and came up with nothing. I asked the client to engage in its own investigation. Based on our collective research, the goods were MIA in the marketplace.
If canceling the registered mark wasn’t an option in this scenario, how might you have approached the response? Would you consider a coexistence agreement?
If we had found evidence of use, I absolutely would have recommended my client consider approaching the COOL COVER owner about coexistence.
How might the trajectory of the cancellation proceeding have changed in light of the new expungement and reexamination procedures introduced by the Trademark Modernization Act?
In this case, my client would have preferred expungement, if that option had been available and if our research had indicated COOL COVER had never been used in commerce. (Instead, we researched for abandonment, not the registrant’s total failure to bring the COOL COVER goods to market.) The company was naturally mindful of the potential costs of a cancellation proceeding.
Since reexamination is available only within five years after a mark registers, that procedure would not have been available to my client. COOL COVER had been on the USPTO Register for nearly 20 years. Importantly, too, an expungement proceeding is available for any registration, three years or older, until December 27, 2023. After that initial period, expungement may be requested for registrations that issued within three to ten years.
When does it make sense to use the expungement/reexamination procedures versus a traditional cancellation proceeding?
As mentioned, expungement/reexamination are intended to target younger registrations; by late 2023, no older than ten years. And expungement/reexamination procedures are available when the registrant never used the mark in commerce with some or all of the goods/services a registration identifies. If those conditions are met, these new proceedings require only an initial filing which petitions the USPTO to take action, so they promise to be far less costly than a cancellation proceeding. Deputizing the USPTO via expungement or reexamination is also less aggressive, which can be a wise strategy, particularly if you are attacking a registration owned by an entity with substantially more financial might. Finally, expungement/reexamination are designed to resolve quickly. In adversarial proceedings, like cancellations, decisions on the merits take substantial time and resources. I’m keen to hear what other practitioners think, especially those who’ve already petitioned for expungement or reexamination.
Ultimately, the owner of the registered mark failed to respond to the TTAB cancellation proceeding and you won on default, allowing your client’s mark to proceed to registration. How important was it to the ultimate success of the application to maintain contact with the Examining Attorney throughout the prosecution process?
My client initiated the cancellation proceeding during the application’s final Office Action period, so I absolutely wanted to notify the Examining Attorney myself that we initiated a cancellation proceeding in the TTAB, to ensure examination would be suspended. Likewise, I updated the Examining Attorney when default judgment was entered. The Examining Attorney also would have received notice from the TTAB. Since the Examining Attorney suspended and then reinstated the application the same day he heard from me, it appears that he was responsive to my emails (and I like to think he appreciated them, too!).
Note from Alt Legal: Examining Attorneys definitely appreciate communication! Check out this article from an anonymous USPTO Examining Attorney – Top 12 Trademark Prosecution Tips from a USPTO Examiner.