In In re House Beer, LLC, the US Trademark Trial and Appeal Board (TTAB) issued a precedential opinion affirming an Examining Attorney's refusal under Section 2(d) of the Lanham Act to register a mark based on another mark that the USPTO registered despite procedural errors in its examination.
On March 27, 2015, in In re House Beer, LLC, the US Trademark Trial and Appeal Board (TTAB) affirmed an Examining Attorney's refusal to register House Beer, LLC's (HB) mark HOUSE BEER for "retail store services featuring beer" based on Section 2(d) of the Lanham Act because HB's mark was likely to cause consumer confusion with a registrant's identical registered mark for "beer" (No. 85684754 (TTAB Mar. 27, 2015)) (15 U.S.C. § 1052(d)). Notably, the TTAB upheld the Section 2(d) refusal despite HB's argument that:
The Examining Attorney incorrectly followed internal USPTO examination procedures concerning the cited registration.
HB's pending application had an earlier filing date than the cited registration.
Generally, the USPTO assigns applications for examination in the order they are received (see Section 702.01 of the Trademark Manual of Examining Procedure (TMEP)). For pending applications that appear sufficiently similar that they may be refused under Section 2(d):
The application with the earliest effective filing date should be the first to proceed toward publication for opposition, if eligible for registration on the Principal Register, or toward registration, if eligible for registration on the Supplemental Register.
The proceedings on the application with the later effective filing date should be suspended until the earlier-filed application either matures into registration or is abandoned.
In this case, the applicant for the cited registration filed its application (Underlying Application) on December 7, 2011, before HB's filing date but then filed an amendment to allege use and to move the Underlying Application to the Supplemental Register. This changed the Underlying Application's effective filing date and made it later than HB's.
During this time, HB's pending application had been suspended pending final resolution of the Underlying Application. Neither the Examining Attorney nor HB noticed the change in the Underlying Application's effective filing date and the Underlying Application subsequently issued as a registration and was cited against the pending application.
In its appeal, HB pointed out certain trademark examining procedures that were not followed:
If the Examining Attorney for the pending application had noticed the change in filing date, she should have proceeded with review of the pending application and either approved it for publication or taken other action (TMEP § 206.04).
The Examining Attorney for the Underlying Application should have notified the Examining Attorney for the pending application of the change in the Underlying Application's effective filing date (TMEP § 1208.01).
The TTAB concluded that the Examining Attorney's refusal to register the pending application was correct despite these errors because the refusal was based on a registered mark. Specifically:
Section 2(d) of the Lanham Act states that if a mark is registered it may be cited as a grounds for refusing registration regardless of its filing date.
Compliance with the examining procedures that HB complains about is not a prerequisite to issuing a Section 2(d) registration refusal.
The TTAB noted that HB could have instituted a cancellation proceeding against the cited registration and used its pending application's earlier filing date to remove the cited registration as a bar to its pending application.
The TTAB then analyzed the merits of the Examining Attorney's Section 2(d) refusal based on the du Pont likelihood of confusion factors and found there was a likelihood of confusion because:
The marks were identical.
The goods and services, beer and retail stores featuring beer, were similar so that customers would likely believe the product and services are related.
Neither HB nor the Examining Attorney presented evidence to the other factors so those factors were neutral.