Third Party Registrations can be Used, or Not Used, by the TTAB

The In re Perlot, LLC case is interesting for a second reason….third party registrations.

In a successfully argued “crowded field” scenario, the TTAB will use third party registrations to support a finding that the disputed term, common to the identified third party registrations, is the weak portion of the mark.  

On the other hand, the TTAB often discounts third party registrations claiming such evidence is of limited probative value because the existence of the registrations is not evidence of what is happening in the marketplace, nor that consumers are familiar with the associated trademarks, nor that the registrations are proof of actual use of the identified mark.

As a reminder, the Applicant filed for the following trademark for clothing:

 k8n1xHslwEWOigS4BLjICIjcncRwCXCRERC5O4nhEuAiIyBydxLDRQb8v1mpQc63SDUuAAAAAElFTkSuQmCC

The application was denied based on a cited registration, also for clothing, for:

DHjAAAAAElFTkSuQmCC

In support of its case, Applicant identified the following third party registrations containing the words “mountain” and “life”:  

 

(i)  BUILT FOR THE MOUNTAIN LIFE (word mark);

(ii)

ABK8v6f941PwAAAAAElFTkSuQmCC

(iii)

bbhbod0G92a7Ozuh3QZqbstwv9BzeqCA2eyPMhAAAAAElFTkSuQmCC

All three third party registrations were for clothes, just as with Applicant’s application.  
Nevertheless, in reaching the decision to uphold the refusal to register, the TTAB held that the existence of these three third party registrations did not help the Applicant, for the reasons just stated above.  

Author: Gary Nelson

Image Courtesy of: Tom Hall Used under Creative Commons license.