How to describe a Catch 22

Originally posted 2009-04-02 16:00:41. Republished by Blog Post Promoter

Michael Hall considers the PTO’s “Heads I Win, Tails You Lose” policy, by which it uses trademark registrations as evidence to refuse new applications on the basis of “descriptiveness”:

[T]he Office routinely relies upon them in issuing merely-descriptive refusals, yet when an applicant introduces third-party registrations to support its position, the Office will often dismiss them with a form paragraph stating that third-party registrations are “without evidentiary value.”

It’s good to be the king!  Michael says this policy may be inching toward improvement, but, really, this whole concept that the PTO is exempt from any accountability for its prior determinations — now that’s what needs examination.

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Author:Ron Coleman

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8 Responses to “How to describe a Catch 22”

  1. Jay Wells
    April 2, 2009 at 5:30 pm #

    Why should the Board be bound by individual decisions by individual examiners in individual cases that were never reviewed by the Board? If that were the law, the Board would be stuck with the position of the least capable trademark examining attorney on any given issue.

  2. Robert Pierce
    April 3, 2009 at 9:10 am #

    Jay, the issue here is the PTO’s inconsistent use of the evidence. For example, examiners routinely introduce third party registrations to support their contention that a mark is descriptive. Yet they often reject use of third party registrations from an applicant arguing to the contrary, stating that these registrations lack evidentiary value. Either third party registrations have some evidentiary value and both parties can rely on them or they don’t and neither party can. What we have now is that such registrations have value when used by the PTO but not when they are used by applicants.

  3. Jay Wells
    April 3, 2009 at 9:29 am #

    Have value for what? Are you saying that, in supporting a 2e1 refusal, the PTO cites third party registrations to show that a term is merely descriptive? Is the term disclaimed? Does the term appear in many registrations for particular goods, suggesting that the term is in common use and therefore is a weak formative.

    What is the applicant trying to show? That a term has appeared in a registered mark without disclaimer?

    Are you saying that the PTO never gives third-party registrations any consideration, or that it is inconsistent?

    If you don’t like what Examining Attorney has done, then you should appeal.

  4. April 3, 2009 at 5:31 pm #

    Jay, it’s a little callous to say, “No matter how nearly random the decisions of Examining Attorneys are as to legal issues, tough luck — if your client’s good for $3K worth of prosecution, it will love $15K plus of TTAB practice.”

    Why should an administrative agency, making what are, after all, legal determinations be utterly exempt from some precedential impact of the “law” it is making, even in terms of consideration of aggregates or trends?

    Predictability is a cornerstone of fairness under any system, even in administrative law. And predictability is based largely on precedent. The argument here is not that the law should estop the PTO or establish Examining Attorney-level determinations as dispositive, but that it is preposterous to say that even a hundred prior applications are of “no evidentiary value.”

    Isn’t this especially compelling when you consider that District Courts presumptively defer to a single descriptiveness determination at this level in an action on a trademark before them? They’re not merely considering such a finding to be admissible, they are deferring to that same “least capable trademark examining attorney”!

  5. April 6, 2009 at 11:40 am #

    Other than to demonstrate goods or services are related or the meaning of a term, do you know of any case where the Board or a court found numerous third-party registrations persuasive of any issue (even if the court or Board did not ultimately side with the party offering the third-registrations)?

  6. Jay Wells
    April 6, 2009 at 8:03 pm #

    What you are proposing is that the Examining Attorneys make the law, and the TTAB then must follow it. In actuality, the system works the opposite way.

    BTW for a case in which past PTO examination practice did have an impact, see the MISS NUDE CENTERFOLD SEARCH case (Serial No. 76608812), which mark the Board found to be not merely descriptive. Third-party registrations for marks that included the word MISS led the Board to rule that the word MISS was not descriptive for videotapes.

    So much for the argument that past pto practice is never considered.

  7. April 6, 2009 at 9:22 pm #

    Actually this was not about the TTAB following what the EA’s do. There’s nothing here about the Board.

    It’s not even about the Office itself having to follow its own determinations.

    It’s about the Office acknowledging them as evidence, at the very least. And should there be some precedential effect? It’s debatable. But the present practice is dismissive of the real down-to-earth law that’s made out there — the mass of trademark registration determinations.

    Glad you found a case where there was an exception to the non-rule, Jay. I’m not sure how that supports your case. I think it supports mine on two scores: The world did not come to an end when the Board chose to examine a number of EA determinations. And the Board, and the Office, mainly do what they want to on this issue.

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