GleanMark · Precedent library
The cases behind Office Action refusals
The TTAB, Federal Circuit and CCPA decisions that likelihood-of-confusion and descriptiveness refusals turn on: what each case was about, what it held, how it is cited in a response, and when it will not help.
15 cases
The precedent library
§2(d) · Likelihood of confusion
12 casesIn re du Pont
The §2(d) factors · CCPA 1973
The CCPA reviewed a Section 2(d) refusal and used the case to set out how likelihood of confusion should be evaluated across the full evidentiary picture.
Run a §2(d) clearance analysisJuice Generation
Crowded field of weak marks · Fed. Cir. 2015
GS Enterprises opposed registration of PEACE LOVE AND JUICE for juice-bar services, citing its family of PEACE & LOVE restaurant marks.
Surface crowded-field evidenceIn re i.am.symbolic
Marks compared in their entireties · Fed. Cir. 2017
will.i.am's company sought to register I AM for cosmetics, fragrances, and sunglasses; the examiner refused over prior I AM registrations.
Run a §2(d) clearance analysisPalm Bay v. Veuve Clicquot
Foreign equivalents & fame · Fed. Cir. 2005
The maker of VEUVE CLICQUOT champagne opposed VEUVE ROYALE for sparkling wine.
Run a §2(d) clearance analysisJack Wolfskin
Crowded field; weak design elements · Fed. Cir. 2015
In an opposition, New Millennium Sports blocked Jack Wolfskin's paw-print design mark for apparel, relying on its own registered paw design; the TTAB found a likelihood of confusion.
Surface crowded-field evidenceCoach v. Triumph Learning
Fame as a §2(d) factor · Fed. Cir. 2012
Coach (luxury handbags) opposed COACH for educational test-preparation materials, asserting likelihood of confusion and dilution.
Run a §2(d) clearance analysisIn re Viterra
Similarity; standard-character display · Fed. Cir. 2012
XCEED in standard characters for agricultural seeds was refused over the registered X-Seed design mark.
Run a §2(d) clearance analysisIn re Thor Tech
Goods-relatedness coexistence · TTAB 2015
TERRAIN for recreational-vehicle trailers was refused over TERRAIN for trucks.
See coexistence evidence on the registerIn re Shell Oil
Relatedness of goods and services · Fed. Cir. 1993
RIGHT-A-WAY for vehicle lubrication services was refused over a registered RIGHT-A-WAY design mark for related automotive goods and services.
See coexistence evidence on the registerIn re National Data
Dominant feature; disclaimed matter · Fed. Cir. 1985
THE CASH MANAGEMENT EXCHANGE was refused over CASH MANAGEMENT ACCOUNT for related financial services.
Run a §2(d) clearance analysis§2(e)(1) · Mere descriptiveness
3 casesIn re Gyulay
Mere descriptiveness · Fed. Cir. 1987
APPLE PIE was refused registration for potpourri as merely descriptive of the scent.
Draft a descriptiveness responseAbout these summaries
Holdings. Each summary is drawn from the opinion itself: the TTAB e-FOIA reading room for TTAB decisions, and the Federal Circuit and CCPA opinions for the appellate cases. All are public-domain government works.
Not legal advice. A precedent helps only where its facts fit yours, and citing a case does not win a response. Each case page says when the case will not help.