A Registrant’s Natural Scope Of Expansion Is Not Applicable in Ex Parte Trademark Proceedings

The Trademark Trial and Appeal Board’s recent decision In re Kysela Pere et Fils, Ltd. found that the Applicant’s application for HB in standard characters for wine was confusingly similar to the Registrant’s HB design marks for beer.

However, in so holding, the Trademark Trial and Appeal Board took the time to note that the examining attorney sought to support his position by saying that wine was in the Registrant’s natural scope of expansion and that such was improper:

Before leaving the topic of the relatedness of the goods, we must comment on both applicant’s and the examining attorney’s arguments regarding whether wine is within the registrant’s natural scope of expansion. The examining attorney, citing In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1584 (TTAB 2007), stated that “evidence that third parties offer the goods and/or services of both the registrant and applicant suggest [sic] that it is likely that the registrant would expand their business to include applicant’s goods and/or services,” Office action Nov. 16, 2009, and applicant responded by noting that, although one of the cited registrations herein, No. 3211587, is for a wide variety of goods and services, it does not include “wine,” thereby indicating that the registrant has no intention to expand to such goods. However, the examining attorney’s statement and applicant’s response is not a correct interpretation of 1st USA Realty, which explained that the expansion of trade doctrine is more appropriate to inter partes cases, and that in the context of an ex parte proceeding the analysis should be whether consumers are likely to believe that the services emanate from a single source, rather than whether the owner of the cited registration has or is likely to expand its particular business to include the goods of applicant. To be clear, examining attorneys may and are encouraged to use evidence of third-party registrations that include in their identifications the goods and services of the applicant and the goods and services identified in the cited registration(s), and to use Internet, catalog and advertising information to show third parties offer for sale the same types of goods or render the same services that are identified in the application and cited registration(s). However, the purpose of such evidence is to show that consumers are likely to believe that such goods and services emanate from a single source, in other words, is evidence from which we can draw the conclusion that the goods and services are related. The significance of this evidence is not to show the probability that the owner of the cited registration(s) is likely to expand the use of its mark to the goods or services of the applicant. Therefore, neither the argument by an examining attorney that the applicant’s goods or services are within the natural scope of expansion of the goods or services of the registrant, nor the argument by an applicant that it is not likely that the particular registrant that owns the cited registration(s) will so expand its use of its mark, is applicable in an ex parte proceeding. Accordingly, in our analysis of the similarity of the goods in the present case we have not considered whether the owner of the cited registrations is likely to expand into selling wine. The evidence that third parties have adopted a single mark for beer and for wine (as well as the evidence that third parties sell both beer and wine) is sufficient to show that the public is likely to believe that these goods emanate from a single source.

Accordingly, because the In re Kysela decision is precedential, applicants can cite the decision to an examining attorney in the event the examining attorney attempts to make an improper natural scope of expansion argument.

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