TTABlog test: Are glass ornaments related to dried flower arrangements under section 2 (d)? – Intellectual property

United States: TTABlog test: Are glass ornaments related to dried flower arrangements under section 2 (d)?

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USPTO refused registration of proposed trademark
Eternal ROSE for “Glass ornaments; Glass ornaments, namely glass roses ”, noting probable confusion with the identical mark registered for“ Dried flower arrangements; Dried flowers; Dried flowers for decoration ”. The applicant submitted three third party registrations for formative marks EVERLASTING (for baskets for flower arrangements, live plants and jewelry) arguing that “EVERLASTING” is a weak formator, and he underlined the registrant’s arguments regarding the weakness of “EVERLASTING” when the registrant has overcome a denial of their underlying claim. How do you think this came out?
About 1-800-FLOWERS.COM, Inc., Serial number 88690528 (December 6, 2021) [not precedential] (Opinion of Judge Cindy B. Greenbaum).


In the absence of proof of use, third-party registrations have no impact on the commercial strength of the cited mark. However, together with a dictionary definition of ‘immortal’, this evidence led the Commission to conclude that ‘immortelle’ refers to dried flowers, ‘because consumers would expect dried flowers to outlast live flowers. , but they wouldn’t expect them to literally last forever. “In any event, none of the three third-party marks is as close to the proprietor’s mark as the applicant’s mark. [How could they be? – ed.].

With respect to the proprietor’s earlier arguments, the Board observed that “File Envelope Estoppel is not applicable in trademark cases, nor is it [sic] an admission against interests. In short, the registrant’s earlier argument has limited probative value:

[T]It is a fact that a party has previously indicated a contrary opinion regarding the conclusion of a similar proceeding involving similar brands and goods, and this fact may be admitted in evidence as a mere indication of shade and tone. of the overall picture facing the decision maker. To that limited extent, a party’s prior contrary opinion may be considered relevant and competent.

The board concluded that the cited mark is not weak and is entitled to the normal scope of protection of an inherently distinctive mark.

With respect to the goods in issue, the Commission concluded that they were “prima facie related [sic] in that both cover products of a type which can be used (separately or together) as decorative elements of interior decoration for rooms and as centerpieces or mantels. “Dried flowers” ​​such as those identified in the cited record for use as decoration or as a souvenir. ” [Ornaments of glass may
be filled with jelly beans, too – does that make jelly beans
related? – ed.].

Third party recordings and internet evidence supported the Board’s finding of family relationship. Internet evidence has shown that the affected goods “circulate through the same channels of commerce, namely florists, and are sold to the same categories of consumers, namely members of the general public. Thus, the trade channels and the categories of buyers for the goods overlap.

And so, the Council confirmed the refusal of registration.


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