The Board affirmed a refusal to register the mark WATER BABIES in the design form shown below, for various swimming instruction services, finding a likelihood of confusion with the registered mark WATERBABIES for “swimming instruction.” Applicant maintained that the refusal was improper because its application had priority and the USPTO should have refused registration to the WATERBABIES mark. The Board disagreed. In re Water Babies Limited, Serial No. 79147272 (February 21, 2019) [not precedential] (Opinion by Judge David K. Heasley).

The Board dealt with a similar situation in In re House Beer, LLC, 114 USPQ2d 1073 (TTAB 2015) [TTABlogged here], where it observed that Section 2(d):

makes no reference to the filing date of the application underlying the registration cited as the basis for the refusal. If the mark is registered, it may be cited as grounds for refusing registration. … Applicant asks us to find that a refusal that is clearly authorized by Section 2(d) is invalid because certain examination procedures were not followed during the independent examinations of Applicant’s application and the Underlying Application. We cannot give the internal examining procedures of the USPTO such primacy over statutory law. … [T]he owner of the cited registration is not a party to the appeal now before us, and we can neither cancel nor ignore the registration. Id. at 1076-77.

Examining Attorney John M.C. Kelly pointed out that the cited registration is entitled to a presumption of validity under Section 7(b) and can be cited under Section 2(d) as a ground for refusal. Applicant cannot effectively challenge the registration’s validity in an ex parte appeal. In fact, the House Beer case was cited against this same applicant in another appeal involving the same cited registration. Applicant now argued that the instant case was different because here the USPTO errors took place during examination of the application at issue in this appeal. The Board was unmoved.

Nonetheless, the applicable principles remain the same. Regardless of any procedural irregularities in the cited Registration’s path to registration, once registered, it was and is entitled to a presumption of validity under 15 U.S.C. § 1057(b). In re Solid State Design Inc., 125 USPQ2d 1409, 1410 (TTAB 2018). It cannot be collaterally attacked in this ex parte proceeding. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018).

The Board then turned to the Section 2(d) refusal. Applicant feebly argued that the marks are dissimilar due to the color, font, and “bubble” over the letter “i,” and because of the lack of a space in the cited mark, which prevents the mark from being displayed on two lines like applicant’s. The Board, not surprisingly, found the marks highly similar, and since the services are in part identical, it affirmed the Section 2(d) refusal.

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TTABlog comment: Well, would you have appealed?

Text Copyright John L. Welch 2019.