TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)

June 2013

TBMP 1215 Alternative Positions

(See Chap 1200 at NoticeOfOpposition.com)


1215 Alternative Positions

Just as the examining attorney may refuse registration on alternative grounds (such as, that applicant's mark, as applied to its goods and/or services, is either merely descriptive or deceptively misdescriptive of them within the meaning of Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1)), so, too, the applicant may, in appropriate cases, take alternative positions with respect to a refusal to register. For example, where registration has been refused on the ground that the applicant's mark, as applied to its goods and/or services, is merely descriptive of them, the applicant may take the position that its mark is not merely descriptive, and, alternatively, assert a claim, under the provisions of Trademark Act § 2(f), 15 U.S.C. § 1052(f), that its mark has become distinctive of its goods and/or services in commerce. [Note 1.] Cf. TBMP § 309.03 and TBMP § 311.02(b). However, it is the applicant’s responsibility to make clear that it is taking alternative positions. [Note 2.]


When an applicant asserts alternative positions, and is not willing to accept registration on the basis of its “fallback” position unless the Board determines, on appeal, that the applicant's primary position is not well taken, the applicant should make its wishes clear both to the examining attorney and to the Board. For example, when the applicant, in response to a refusal on the ground of mere descriptiveness, has asserted alternatively that its mark is not merely descriptive and that the mark has become distinctive through its use in commerce, but the applicant is not willing to accept a registration issued under Trademark Act § 2(f), 15 U.S.C. § 1052(f) on the basis of the claim of acquired distinctiveness unless the Board holds, on appeal from the refusal to register, that the mark is merely descriptive, the applicant should clearly state that its claim is “in the alternative.” [Note 3.] Otherwise, if the examining attorney finds the applicant's claim of acquired distinctiveness to be persuasive (and there is no other outstanding ground for refusal to register), the examining attorney will approve the application for publication on that basis, and any registration issued to the applicant will be issued under the provisions of Trademark Act § 2(f), 15 U.S.C. § 1052(f). [Note 4.]


If, in an application that is the subject of an ex parte appeal to the Board, the applicant has asserted alternative positions (such as, that its mark is not merely descriptive of its goods and/or services, and that the mark has, in any event, become distinctive of its goods and/or services in commerce; or that its mark has become distinctive of its goods and/or services in commerce, and that the mark is, in any event, registrable on the Supplemental Register), the examining attorney should clearly state his or her position with respect to each of the applicant's alternative claims. [Note 5.]


NOTES:

1. See, e.g., In re Brouwerij Bosteels, 96 USPQ2d 1414, 1419 (TTAB 2010); In re E S Robbins Corp., 30 USPQ2d 1540, 1541 (TTAB 1992); In re Analog Devices Inc., 6 USPQ2d 1808, 1808- 09 (TTAB 1988), aff'd, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989); In re Engineering Systems Corp., 2 USPQ2d 1075, 1075 (TTAB 1986); In re Seaman & Associates Inc., 1 USPQ2d 1657, 1657 (TTAB 1986); In re Professional Learning Centers, Inc., 230 USPQ 70, 71 n.2 (TTAB 1986); In re American Home Products Corp., 226 USPQ 327, 328 (TTAB 1985); TMEP § 1212.02(c). See also, for additional situations in which an applicant has taken alternative positions, In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012) (applicant clearly consented to entry of disclaimers only in the alternative because on appeal applicant maintained that the terms were not descriptive); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009)(applicant asserted that his mark was not primarily merely a surname and in the alternative that it had acquired distinctiveness); In re Reed Elsevier Properties Inc., 77 USPQ2d 1649, 1652 (TTAB 2005), aff’d, 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007); In re DNI Holdings Ltd.¸ 77 USPQ2d 1435, 1436 (TTAB 2005); In re Lillian Vernon Corp., 225 USPQ 213, 213 (TTAB 1985); In re Narwood Productions, Inc., 223 USPQ 1034, 1036 (TTAB 1984); In re Anania Associates, Inc., 223 USPQ 740, 740 n.1 (TTAB 1984); In re Perfect Fit Industries, Inc., 223 USPQ 92, 93 (TTAB 1984); In re House of Windsor, Inc., 221 USPQ 53, 54 n.3 (TTAB 1983); In re Capital Formation Counselors, Inc., 219 USPQ 916, 917 (TTAB 1983); In re Harrington, 219 USPQ 854, 855 n.1 (TTAB 1983). Cf. Fed. R. Civ. P. 8(d)(2).


2. See In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012) (in request for reconsideration and on appeal, applicant clearly asserted alternative positions with respect to the disclaimer requirement); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897 n.2 (TTAB 2001) (applicant did not assert Trademark Act § 2(f) claim in the alternative); In re Caterpillar Inc., 43 USPQ2d 1335, 1337 n.2 (TTAB 1997) (Board found that applicant had abandoned its claim that its mark was inherently distinctive early in the prosecution and therefore Board refused to consider claim of inherent distinctiveness made in reply brief, or to view the claim of acquired distinctiveness as an alternative claim); In re Sandberg & Sikorski Diamond Corp., 42 USPQ2d 1544, 1546 n.2 (TTAB 1996) (applicant did not pursue its contention that the marks were inherently distinctive during prosecution, and Board found this claim to have been waived).


Cf. In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1713 (TTAB 2011) (applicant maintained claim of acquired distinctiveness under Trademark Act § 2(f) in the alternative, but better practice would have been for examining attorney to have reviewed files of applicant's prior registrations to determine whether applicant had previously conceded the mark was merely descriptive).


But see In re Central Sprinkler Co., 49 USPQ2d 1194, 1195 n.3 (TTAB 1998) (Board considered registrability on both Principal and Supplemental Registers even though applicant’s amendment to the Supplemental Register was originally not made in the alternative, noting that examining attorney continued to refuse registration on both registers, and subsequent papers of both applicant and examining attorney, including request for reconsideration and decision on that request, discussed the amendment as being in the alternative); In re Brouwerij Bosteels, 96 USPQ2d 1414, 1419 n.7 (TTAB 2010) (although applicant did not expressly claim acquired distinctiveness in the alternative, Board treated the claim as such because it was filed after examining attorney requested a remand of the application to consider a new issue); In re Binion, 93 USPQ2d 1531. 1538 (TTAB 2009) (although applicant did not couch his Trademark Act § 2(f) claim in the alternative when he argued against surname refusal, because applicant and examining attorney treated the claim as an alternative one Board did as well). 3. In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1685 n.8 (Fed. Cir. 2010) (if applicant asserts mark is inherently distinctive and asserts acquired distinctiveness in the alternative, and if examining attorney accepts claim of acquired distinctiveness, examining attorney must give applicant option to either appeal refusal of inherent distinctivenss or accept registration under Trademark Act § 2(f)).


4. See TMEP § 1212.02(c).


5. See TMEP § 1212.02(c).

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