Eric Jacobson

Trademark Trial and Appeal Board

Jan 15, 2003

No. 75702771re (T.T.A.B. Jan. 15, 2003)

Mailed: January 15, 2003
Paper No. 17
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UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Eric Jacobson
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Serial No. 75/702,771
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Request for Reconsideration
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Jeffrey H. Greger of Mason, Maxon & Albright for Eric
Jacobson.1
Thomas J. Gleason, Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney).
Before Seeherman, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
1 Applicant’s power of attorney and correspondence address
change filed December 13, 2002 has been entered in the record.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/702,771
2
Eric Jacobson has timely requested reconsideration of
the Board’s November 13, 2002 decision affirming the
Examining Attorney’s refusal of registration.
Applicant asserts that the Board inappropriately
concluded that prior registrations show that goods such as
the registrant’s lithographic prints or photographs and
applicant’s professional photography services2 may emanate
from a single source under a single mark, stating that none
of the third-party registrations of record covers
lithographic prints or lithography services. Applicant is
correct that the third-party registrations do not specify
that they are for lithographic prints. However, as
applicant has acknowledged, lithographic printing may be
used for such items as post cards and posters. Appeal
brief, p. 5. In fact, the specimens from the file of the
cited registration, which applicant had made of record,
show that the registrant’s lithographic prints include
postcards and “mini-pictures.” Thus, the third-party
registrations referred to in our opinion at page 5, e.g.,
Registration No. 2,342,733 for, inter alia, postcards,
posters and portrait photography, and No. 1,771,329 for
2 Applicant’s identification of services reads, in its entirety,
“professional photography services, namely, customized individual
photographic portrait and portfolio services exclusively for
athletes, namely fitness and physique photography and athletic
model photography.”
Ser No. 75/702,771
3
calendars and portrait photography services for sports
teams, demonstrate the relatedness of applicant’s services
and the goods in the cited registration.
Applicant also asserts that the Board erred in
assuming that ordinary individuals would be interested in
having lithographic prints made of their photographs. Even
if this is correct, such individuals (including amateur
athletes) may certainly wish to obtain photographic
services of the type identified in applicant’s application,
i.e., photographic portrait and portfolio services for
athletes. These individuals may encounter postcards,
posters and other lithographic prints of photographs of
athletes3 under the mark IMPACT, even if they do not wish to
have their own photographs reproduced by a lithographic
process, and they may also encounter applicant’s
photography services offered under the mark IMPACT
PHOTOGRAPHY. Because of the similarity, indeed virtual
identity of the marks (the only difference being the
generic and disclaimed term PHOTOGRAPHY in applicant’s
mark), they might well assume an association between the
goods and the services. Even when goods or servies are not
3 The identification of goods in the cited registration is for
“lithographic prints of photographs,” and thus would encompass
prints of photographs of athletes and athletic models.
Ser No. 75/702,771
4
competitive or intriscially related, the use of identical
marks can lead to the assumption that there is a common
source. In re Shell Oil Co., 992 F.2d 1204, 26 uso12d 1687
(Fed. Cir. 1993). Thus, while we acknowledge that there
are differences between the applicant’s services and the
registrant’s identified goods, the issue is not whether
consumers will distinguish the goods and services, but
whether they are likely to believe that, because of the
similarities of the marks and the relatedness of the goods
and services, the goods and services emanate from a single
source. Moreover, in making this determination, as
explained in the original decision and as discussed herein,
any doubt on the issue of likelihood of confusion must be
resolved in favor of the registrant.
Applicant also asserts that the Board erred in
refusing to acknowledge evidence of the diluted nature of
the mark IMPACT. The Board found that the evidence
applicant submitted with its brief was untimely, and
refused to take judicial notice that over 1,000 IMPACT
marks exist in the records of the U.S. Patent and Trademark
Office, and we adhere to that position, which is amply
supported by case law. Applicant now states that it should
not have been necessary for applicant to submit copies of
over 1,000 registrations. We agree that such a submission
Ser No. 75/702,771
5
would have been not only unnecessary, but onerous.
However, there is a distinction between not submitting any
evidence of these registrations, and submitting a
representative sample of them. Applicant did not provide
the latter either. Instead, to support its contention that
there are over 1,000 registrations for IMPACT marks,
applicant is attempting to rely on the Examining Attorney’s
search statement page. We previously discussed the
problems with this statement in terms of showing the
existence of actual registrations, and will not do so
again. Suffice it to say that the list does not show what
marks were registered, or the goods or services, and the
list is insufficient to show that the mark IMPACT is weak
in terms of the specific goods and services at issue.
Applicant itself acknowledges that “the numerous IMPACT
formative marks were outside of Class 16 and not directly
in the same field as the marks at issue,” request for
recon, p. 4. The weakness of a mark for goods and services
which are far different from those at issue is not relevant
to a determination of the strength of a mark for goods and
services within the field.
As for the IMPACT formative marks which are within the
relevant field, we discussed this evidence at length in our
opinion, and will not do so again. As we said, the third-
Ser No. 75/702,771
6
party registrations are competent to show that IMPACT has a
suggestive significance, but that suggestion is the same
for both applicant’s and the registrant’s marks. And,
although the cited registration may be entitled to a lesser
scope of protection than would an arbitrary mark, that
scope of protection is still broad enough to prevent the
registration of the virtually identical mark IMPACT
PHOTOGRAPHY for related services.
Finally, applicant has made the point that “at the
Oral Argument, the Board noted that legal precedent in
support of the premise that doubt in favor of publication
could help the Board and the Board would be very interested
in legal authority to support the very proposition that in
arguably close cases, such as this case, that doubt could
be resolved in favor of publication....” p. 8. In point of
fact, the Board asked applicant’s attorney if he could
point to any legal support for his contention that any
doubt on the issue of likelihood of confusion in this case
should be resolved in applicant’s favor. It appears from
the request for reconsideration that applicant has not been
able to find such legal support. Instead, applicant argues
that there should be a distinction between inter partes and
ex parte proceedings, and that in ex parte cases the Board
should resolve doubt in favor of publication. Applicant
Ser No. 75/702,771
7
further states that “the Board has in its power the ability
to make its own precedent and treat ex parte cases as it
sees fit.” p. 9. We are not persuaded by applicant’s
arguments. In fact, the Board is governed by, inter alia,
the precedent established by our primary reviewing Court,
the Court of Appeals for the Federal Circuit, and its
predecessor courts. As indicated in the Pneumatiques
decision cited at page 12 of the Board’s decision, even in
ex parte cases doubt must be resolved in favor of the
registrant and prior user. That principle was reconfirmed
by the Court of Appeals for the Federal Circuit as recently
as January 2, 2003, in In re Majestic Distilling Company,
Inc., __F.3d__, __USPQ2d__, SN 75/622,781, in which it
quoted the following statement from In re Dixie Rests.,
Inc., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1535 (Fed. Cir.
1997):
[I]t is the duty of the PTO and this
court to determine whether there is a
likelihood of confusion between two
marks. In re Apparel, Inc., 366 F.2d
1022, 1023, 151 USPQ 353, 354 (CCPA
1966). It is also our duty “to afford
rights to registrants without
constantly subjecting them to the
financial and other burdens of
opposition proceedings.” Id.; see also
In re Clorox Co., 578 F.2d 305, 308,
198 USPQ 337, 341 (CCPA 1978);
McCarthy, [McCarthy on Trademarks and
Unfair Competition] §23.24[1][d] (where
PTO rejects an application under
Ser No. 75/702,771
8
section 1052(d), “it is no answer for
the applicant to ask that the
application be passed to publication to
see whether the owner of the cited mark
will oppose the registration”).
Otherwise protecting their rights under
the Lanham Act would be an onerous
burden for registrants.
Finally, we note applicant’s statement that it has
contacted the registrant and commenced negotiations about a
possible consent agreement. Applicant is reminded that
Trademark Rule 2.142(g) provides that an application which
has been considered and decided on appeal will not be
reopened except for the entry of a disclaimer under Section
6 of the Act or upon order of the Commissioner.
The Board, not being persuaded of any error in the
rendering of its decision, hereby denies applicant’s
request for reconsideration.