ER Marks, Inc.

Trademark Trial and Appeal Board

Oct 5, 2004

No. 76289638re (T.T.A.B. Oct. 5, 2004)

Mailed: 10/5/2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re ER Marks, Inc.
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Serial No. 76289638
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Request for Reconsideration
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Manny D. Pokotilow of Caesar, Rivise, Bernstein, Cohen &
Pokotilow, Ltd. for ER Marks, Inc.
Alex S. Keam, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______
Before Seeherman, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On August 9, 2004, the Board affirmed the Examining
Attorney’s refusal to register applicant’s mark shown below
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76289638
2
for “credit card services” under Section 2(d) of the
Trademark Act in view of the registered mark shown below
for “credit card services.”
Applicant filed on August 24, 2004 (via certificate of
mailing) a “motion for reconsideration or in the
alternative to stay the proceedings at the Board.” In
support of its request for reconsideration, applicant
contends that the Board’s prior decision (at pages 6-8)
erroneously “identified the [cited] registered mark as a
stylized letter Q with the word CARD and it was error to
determine that both the Applicant’s [currently applied-for]
mark and the cited registered mark are identical in sound
and connotation and similar in appearance.” (Applicant’s
motion for reconsideration, p. 2.) Applicant specifically
argues that the cited registered mark is a design mark;
that “an examination of the [cited] registered mark shows
that it is not a stylized letter Q which is used in the
[cited] registered mark. A careful examination of the
design in the [cited] registered mark is a rectangular
arrow followed by the word ‘CARD’”; that in this case, it
Ser. No. 76289638
3
is clear that applicant’s mark would be pronounced “Q
CARD,” but “it is not so clear that the [cited] registered
mark would be pronounced Q CARD” (applicant’s motion for
reconsideration, p. 4); and that, in fact, “it is doubtful
most people would even recognize the square arrow as a
‘Q.’” (Applicant’s motion for reconsideration, pp. 4-5.)
In the alternative, applicant requests that the Board
stay this appeal until its recently filed petition to
cancel Registration No. 2071555 (Cancellation No. 92043631)
has been finally decided.
Applicant’s new arguments and cited cases regarding
the nature of the involved cited registered mark are not
persuasive. While applicant argues the cited mark will not
be perceived as the letter “Q,” applicant presented no
evidence thereof. We adhere to the position that consumers
will view the design element in the cited mark as a letter
“Q.”1
In its request for reconsideration, applicant now
places great reliance on the case of In re Electrolyte
Laboratories, Inc., 929 F.2d 645, 16 USPQ2d 1239 (Fed. Cir.
1 Although this is not properly of record, we note that applicant
submitted with its request for reconsideration photocopies of
photographs of signs showing the cited registered mark appearing
just below the word Quarles. This would reinforce our conclusion
that purchasers would perceive the cited registered mark as “Q
CARD.”
Ser. No. 76289638
4
1990) and cases cited therein. However, in that case, the
Court recognized that stylized letter marks “partake of
both visual and oral indicia, and both must be weighed in
the context in which they occur.” (16 USPQ2d at 1240.) In
the context of the marks involved herein, because they
consist of a stylized letter and the word CARD, the letter
portion of the mark is likely to be vocalized as well as
the word “CARD.” Further, marks used in connection with
credit card services are generally spoken, such as when
sales people advise consumers which credit cards are
accepted (e.g., MASTERCARD, AMERICAN EXPRESS CARD, DISCOVER
CARD).
Applicant has not provided any persuasive reason why
our August 9, 2004 decision regarding either the
similarities of applicant’s applied-for mark and the cited
registered mark and/or the ultimate decision on likelihood
of confusion was in error.
Applicant’s alternative request that the Board stay
this appeal is not well taken because there is no action
the Board could suspend. That is, once the Board issued a
final decision on the merits on August 9, 2004, this appeal
was finally decided by the Board.2 If applicant wanted
2 As we noted in footnote 7 of our prior August 9, 2004 decision,
(i) during the earlier prosecution of this application, applicant
Ser. No. 76289638
5
to attempt to again seek cancellation of the cited
registration in order for this application to go forward,
applicant should have done so prior to the Board’s issuance
of a final decision. See Trademark Rule 2.142(g).
Applicant’s request for reconsideration is denied.
Applicant’s alternative request for suspension of the
appeal at the Board is denied.
Applicant’s time to appeal the Board’s decision in
this case is two months from the mailing date of this
decision on the motion for reconsideration. See Trademark
Rule 2.145(d)(1). See also, TBMP §1219.01 (2d ed. rev.
2004).
had filed a petition to cancel the cited registration
(Registration No. 20715551 -- Cancellation No. 92040925), but
applicant (as petitioner) withdrew the petition to cancel prior
to answer being filed by respondent, and (ii) the first petition
to cancel was based on a ground barred by Section 14(1) of the
Trademark Act.