Minimum Third-Party Registration Trend Bites The Trademark Office

It’s not often, but sometimes the Trademark Office relies on the trademark weakness argument to support a decision to refuse registration of a mark. In 2018, we talked about the emergence of a trend requiring a trademark applicant to offer at least 10 relevant, third-party registrations in order to demonstrate conceptual weakness. This trend carried over to 2019 and for the first time, we saw the trend applied to the Trademark Office.

Morgenstern Center for Orbital and Facial Plastic Surgery Inc. – that’s a mouthful so we will just use “Applicant” going forward – applied to register the mark MAIN LINE REFRESH (“MAIN LINE” disclaimed) for “medical consultations; medical services; cosmetic and plastic surgery.” The Trademark Office refused registration of Applicant’s mark on the ground that it was likely to cause confusion with three prior registered marks owned by two different entities:

(1) MAIN LINE HEALTH (standard characters, “HEALTH” disclaimed) for, among other services, “medical services”;

(2) MAIN LINE HEALTH & Design (“HEALTH” disclaimed) for, among other services, “medical services”; and

(3) MAIN LINE PLATIC SURGERY & Design for, among other services, “cosmetic and plastic surgery.”

Neither Applicant’s mark nor any of the cited marks contained limitations in the descriptions of the services. Accordingly, the services were deemed to be legally related, traveled in the same channels of trade, and appealed to all classes of consumers. It also meant that less similarity between the marks was necessary for a likelihood of confusion to exist.

Applicant successfully demonstrated that MAIN LINE was a weak term. Not only is the term geographically descriptive of a place in Pennsylvania, but it is also used by 110 medical clinics, physicians, and surgeons located in Pennsylvania. Accordingly, Applicant argued that the addition of the suggestive term REFRESH was sufficient to distinguish its MAIN LINE mark from the other MAIN LINE marks.

The Trademark Office attempted to demonstrate that REFRESH was conceptually weak and even descriptive of Applicant’s services by offered seven third-party registrations. This showing was three less than what the Trademark Trial and Appeal Board required in prior cases, so the Board held that REFRESH was suggestive of Applicant’s services. Because of this finding, the Board reversed the Trademark Office’s registration refusal.

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