Hale

Trademark Trial and Appeal Board

Nov 21, 2008

No. 78963970re (T.T.A.B. Nov. 21, 2008)

Mailed:
November 21, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hale

REQUEST FOR RECONSIDERATION
________

Serial No. 78963970
_______

B. Craig Killough of Barnwell Whaley Patterson & Helms LLC
for Nathan S. Hale.

Cimmerian Coleman, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Hairston, Zervas and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Nathan S. Hale (“applicant”) filed an intent-to-use
application to register the mark WHISKEY CREEK RANCH, in
standard character format, for services ultimately
identified as follows:
Recreational services, namely, providing hunting
preserves; summer camps and not including golf courses
or golf tournaments; environmental education services,
namely, providing classes about the environment;
recreational camp services, namely, providing wildlife
and nature studies for others, in Class 41; and,

Dude ranches, in Class 43.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78963970
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Applicant disclaimed the exclusive right to use the word
“ranch.”
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s
mark is likely to cause confusion with the mark WHISKEY
CREEK, in typed drawing format, for “golf courses, golf
tournaments, and providing facilities for recreational
activities,” in Class 41.1
In a decision mailed on October 24, 2008, the Board
affirmed the refusal to register the application on the
ground that applicant’s mark is likely to cause confusion
with the registered mark.
On November 17, 2008, applicant filed a request for
reconsideration of the October 24, 2008 decision.
Applicant requests that the Board consider a consent
agreement between applicant and the registrant. Applicant
makes the following arguments in support of its request for
reconsideration:
8. During the pendency of the Appeal,
and over a period of months,
Applicant and Registrant of the
Registration negotiated a Consent
Agreement.

1 Registration No. 2492786, issued September 25, 2001; affidavits
under Sections 8 and 15 accepted and acknowledged.
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9. While the Applicant regrets that
the Consent Agreement was not
consummated in time to submit
prior to the issuance of the
Decision, consent agreements are
“inherently difficult and time-
consuming to obtain, and may be
highly persuasive of
registrability.”

* * * *

11. On or about October 23, 2008, the
day before the Board issued its
Decision, Applicant and Registrant
entered into a Consent Agreement
relating to Applicant’s use of its
mark.

12. Applicant consummated the Consent
Agreement in a reasonably prompt
fashion, but was unable to do so
prior to the Board’s Decision.

* * * *

31. Although Applicant was unable to
move for remand prior to the
Decision, the interests of justice
and the purposes of the trademark
laws would best be served by
vacating or rescinding the
decision and remanding this case
to the Examiner for consideration
of the Agreement.

Applicant is actually requesting that the Board reopen
prosecution to consider the consent agreement. See
Applicant’s Request for Reconsideration ¶29 quoting
Trademark Rule 2.142(d), 37 CFR §2.142(d) (“After an appeal
is filed, if the appellant or the examiner desires to
introduce additional evidence, the appellant or the
Serial No. 78963970
4
examiner may request the Board to suspend the appeal and to
remand the application for further examination”). In this
situation, however, Trademark Rule 2.143(g), 37 CFR
§2.143(g) is applicable.2 That rule reads as follows:
An application which has been
considered and decided on appeal will
not be reopened except for the entry of
a disclaimer under §6 of the Act of
1946 or upon order of the Director, but
a petition to the Director to reopen
will be considered only upon a showing
of sufficient cause for consideration
of any matter not already adjudicated.

Accordingly, the Board may only reopen prosecution to enter
a disclaimer, not to consider a consent agreement.
The general premise of a request for consideration is
that based on the evidence or record and the prevailing
authorities, the Board erred in reaching the decision on
the merits. The request for reconsideration may not be
used to introduce additional evidence (i.e., a consent
agreement obtained after the decision has issued), or to
merely reargue points that have been previously made. The
request for reconsideration should be limited to a
demonstration of an error that the Board made in

2 As a practical matter, after the Board renders a decision
in an appeal, there is no longer any pending appeal to be
suspended.
Serial No. 78963970
5
interpreting the law or the facts. TBMP §§ 543 and 1219.01
(2nd ed. rev. 2004). As indicated above, applicant does not
contend that the Board made an error in interpreting the
facts or law, rather applicant is asking the Board to
reopen the prosecution of the application to consider a
recently obtained consent agreement.
While we acknowledge that it can be difficult and time
consuming to obtain a consent agreement, applicant’s only
alternative, in this case, would have been to submit the
consent agreement and requested a suspension of the appeal
at any time prior to the issuance of the decision. See
Trademark Rule 2.142(d).
Applicant also argues that if the Board reopens
prosecution and remands the application for consideration
of the consent agreement, applicant will not have to cancel
the cited registration, thus avoiding the cost and burden
of that proceeding to the parties and the Board.3 While
applicant is free to pursue that course, the better
alternative may be to refile the application and submit the
consent agreement if, and when, the examining attorney
cites the registrant’s registration as a bar to applicant’s
registration.

3 Applicant’s Request for Reconsideration ¶33.
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Because applicant is requesting the Board to reopen
the prosecution of the application after it has issued a
decision on appeal, and because the Board may only reopen
prosecution to enter a disclaimer, applicant’s request for
reconsideration is denied.