Episode 2

What is this series?

We break down a recently-filed, successful Office Action Response, looking at the case law, evidence, and strategic decisions that made it a success.

The Office Action – PROT-LUNG

Today, we are looking at a successful Office Action Response filed in the course of prosecuting an application for PROT-LUNG for herbal supplements focused on lung health in International Class 5, Ser. No. 86/890,321. The applicant, Biocalth International, is represented by Thomas Rozsa of Rozsa Law Group.

The main issue raised by the USTPO Examining Attorney was a likelihood of confusion refusal under Section 2(d) of the Lanham Act with a prior registration for PROT BEAUTY for vitamins and food supplements, Reg. No. 4,254,836.

Analyzing the Office Action

We will do a quick analysis of the Office Action through TM TKO’s tools. You can see an interactive version of this search report here.

First, the strength of the term. PROT is the most distinctive portion of the mark – slightly diluted with third-party-owned marks, but not much; LUNG, unsurprisingly, grades out as even less distinctive.

It’s no surprise, then, that the Examining Attorney focuses on the common term PROT in PROT-LUNG and PROT BEAUTY as potentially generating a likelihood of consumer confusion. Like the Examining Attorney, TM TKO’s report identified the three most-similar third-party marks as an incontestable registration for PROT-LIVER (owned by the applicant for similar goods), the cited PROT BEAUTY registration, and a later third-party filing for PROT GOLD for supplements as the most similar marks. The later-filed application would not have been relevant for examination purposes.

Plotting out mark similarity, with mark similarity on the vertical axis and goods/services similarity on the horizontal axis, the registration for PROT BEAUTY shows up as fairly similar, with the overall risk profile is comparable to two several similarly-situated marks, including the applicant’s own PROT-LIVER registration.

Note: common owners show up in the same color. The applicant for PROT-LUNG and the registrant for PROT-LIVER have small variations in their corporate names, so are not color-coded as having a common owner.

The Office Action Response

Biocalth’s response strategy began with that very PROT-LIVER registration, which was claimed as a prior registration from the initial application.

Biocalth noted, quite reasonably, that its PROT-LIVER registration issued before the PROT BEAUTY application was ever filed. If PROT-LIVER and PROT BEAUTY co-exist without confusion, and without intervention by the Office’s examination, there is no reason why PROT-LUNG and PROT BEAUTY shouldn’t do the same.

The Office Action Response simply argues the principle but does not point to any case law. Why not?

In general, the case law does not support the argument, even though it is intuitively powerful. The so-called Morehouse defense, based on Morehouse Mfg. Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969), is perhaps the best-established line of cases acknowledging a similar argument. The Morehouse defense is available where the applicant owns an active registration on the Principal Register for essentially the same mark for the same goods. The marks in question do not need to be identical; they just need to contain the same portion of the mark for which confusion is asserted. See, e.g., The Place for Vision, Inc. v. Pearle Vision Center, Inc., 218 USPQ 1022, 1023 (TTAB 1983) (approving defense where the applicant sought to register “PEARLE VISION CENTER” and a design element for the same goods for which the applicant had a previous registration for “VISION CENTER,” since the alleged confusion related the “VISION CENTER” portion of applicant’s mark and not to “PEARLE” or to the design portions of the mark).

Unfortunately for our applicant here, and indeed for all applicants in ex parte examination, the Morehouse defense is just that – a defense, and an equitable one. Like all equitable defenses, such as laches and acquiescence, the Morehouse defense is only available against a party. There is no adverse party in an ex parte examination, and the defense is not available.

What can the applicant do? There are three approaches, each of which can be effective.

First, simply make the argument without citation. That lets you make the argument to the Examining Attorney, and point towards the fair result, without getting burdened in the case law. That was the approach adopted here, and it worked.

Second, the applicant can explain the most-nearly-applicable case, acknowledge that it isn’t controlling, but note that the doctrinal concerns behind the case’s holding apply with considerable strength to the present situation. It makes for a longer argument, but can be effective with Examining Attorneys who prefer a response grounded in the policy and principles underlying case law. The risk is that “explaining too much” may reduce the equitable punch of the argument.

Third, the applicant can argue that the prior registration is significant evidence under the catch-all thirteenth Du Pont factor. There is some good case law on supporting this approach, and it’s probably the author’s favorite of the three options. See In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) (finding ANYWEAR (stylized) for footwear unlikely to be confused with a registration for ANYWEAR BY JOSIE NATORI & Design for “jackets, shirts, pants, stretch t-tops, and stoles,” largely because the applicant owned a prior, active registration for ANYWEARS for footwear).

What does the Office Action Response here do after leading with an un-cited Morehouse-style argument? It focuses on the differences between the marks, and on case law finding no confusion where the later-filed mark contains all or a part of a prior registered mark, if the marks as a whole differ, especially those where the common term was suggestive. This avoided a need to argue that the PROT portion of the mark was diluted or otherwise not conceptually strong, since doing so would potentially limit the applicant’s rights in both PROT-LUNG and PROT-LIVER in the future.

Together, the two types of arguments carried the day, and the application was published for opposition.

TL;DR

Limited or absent case law support does not mean that you cannot make an argument. If your argument makes doctrinal trademark sense and leads towards a fair (and favorable) result, make it anyway!