Improper Strength Analysis Sinks Another Trademark Applicant

The strength analysis trend of a 10 third-party registration minimum to establish the conceptual weakness of a trademark rolls on. In the most recent Trademark Trial and Appeal Board case, seven third-party registrations were insufficient, and so were the statements of one trademark owner.

Shin-Kyu Choi applied to register the mark PRINCE KONG (in standard characters) for a variety of toys, games, sporting goods, and sporting good equipment. The Trademark Office refused registration of the PRINCE KONG mark on the ground that it was likely to cause confusion with two prior registered marks for KING KONG (stylized) in connection with toys, games, sporting goods, and sporting good equipment. Because Shin-Kyu Choi did not attempt to narrow the descriptions in the PRINCE KONG application or the KING KONG registrations, the Board concluded that the goods at issue were legally related.

With the goods at issue legally related, Applicant’s primary argument to focus on the strength analysis; namely, that the KING KONG registrations were conceptually weak and entitled to a narrow scope of rights. To support this argument Shin-Kyu Choi offered seven third-party registrations for KING KONG or contained the KONG term. There were issues with the relevance of the third-party registrations offered by Shin-Kyu Choi but the Board found that even giving the Applicant the benefit of the doubt, seven third-party registrations were too few to establish conceptual weakness.

Shin-Kyu Choi also offered the prior statements of one KING KONG trademark owner where during the prosecution of the application the trademark owner made the statement that KING KONG was a weak mark. The Board stated that a trademark owner’s contrary position during the prosecution of the application cannot substitute for the Board’s reaching its own conclusion on the record before it. The Board went on to say that such prior statements may be received in evidence “as merely illuminative of shade and tone in the total picture confronting the decision maker.”

This is an interesting position taken by the Board that prior statements are not given more weight. The second rule in the Trademark Trial and Appeal Board Manual of Procedure says that the rules of evidence for proceedings before the Board are the Federal Rules of Evidence. Federal Rule of Evidence 804 governs statements against interest, which is a statement statement made by a person which places them in a less advantageous position than if they had not made the statement and is as a consequence deemed credible as evidence. Finally, the Board’s precedent is clear that the Trademark Office’s opinion for what theoretically is happening in the marketplace should not displace the opinion of those in the marketplace.

Trademark attorneys are generally very careful about the positions are taken during the prosecution of an application for this very reason. And we should want trademark applicants to have consistent positions. Facts and circumstances change all the time when it comes to analyzing a trademark, but the burden should be on the party to demonstrate the change in circumstances, not that the Board simply gives prior statements little weight even in an ex parte situation.

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