Thanks to John L. Welch’s hundreds of blog articles about 2d refusals, I have gotten to the point where sometimes I can guess correctly the outcome of an ex parte appeal of a 2d refusal. The alert reader might ask:
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- What is a “2d refusal”?
- Why would it be interesting to try to guess “the outcome of an ex parte appeal of a 2d refusal”?
- How might it be that hundreds of blog articles by John L. Welch might lead to a situation in which sometimes I can guess the outcome of such an appeal?
- And, what can be said of John L. Welch’s extraordinary contributions to the trademark community through his blog?
What is a “2d refusal”? The law that controls the federal trademark system in the US is the Lanham Act (Wikipedia article).
When somebody files an application for a US trademark registration at the USPTO (the “Trademark Office”), it eventually reaches the desk of a trademark Examining Attorney (an “Examiner”). One of the tasks of the Examiner is to conduct a search of records of the Trademark Office to see whether there is some earlier trademark filing by somebody other than the applicant, that might be a reason to refuse registration to the applicant. The question is whether the applicant’s proposed trademark, taking into account its goods and/or services, would:
be likely … to cause confusion, or to cause mistake, or to deceive …
due to its resemblance to that earlier trademark filing. (This is a quotation from Section 2d of the Lanham Act.)
If indeed this turns up in the Examiner’s search of earlier trademark filings, then the Examiner will mail out an Office Action that asserts what we call “a 2d refusal”.
When a 2d refusal happens, sometimes the applicant will overcome it. This might happen in any of a variety of ways. A first possibility is that the applicant might come up with some arguments as to why supposedly the two marks do not resemble each other as much as the Examiner says. A second possibility is that the applicant might narrow its identification of goods and/or services so as to prompt the Examiner to withdraw the 2d refusal. If the applicant is unable to think of anything to do or say to get the Examiner to withdraw the 2d refusal, the applicant might give up and might let the application go abandoned. Or the applicant might conduct an ex parte appeal of the 2d refusal to the TTAB (the Trademark Trial and Appeal Board, Wikipedia article).
Dozens of times per year, one applicant or another will indeed choose to conduct an ex parte appeal of a 2d refusal to the TTAB. And as many members of the trademark community know, for more than twenty years now, John L. Welch has been analyzing and discussing every decision of the TTAB, including every decision of the TTAB in a 2d refusal. He shares his analysis and discussion in his blog, called the TTABlog.
When I need to find a case to cite in some trademark task for a client, I often find that I can go to the search box at the TTABlog, plug in one or two search terms, and immediately find a wealth of information provided by John, that helps me to do my job. (Thank you, John.)
But now we return to the main topic of this blog article …
Why would it be interesting to try to guess “the outcome of an ex parte appeal of a 2d refusal?” The alert reader realizes that if dozens of times per year a trademark applicant will conduct an ex parte appeal of a 2d refusal to the TTAB, then dozens of times per year the TTAB will render a decision in an ex parte appeal of a 2d refusal.
As any regular reader of the TTABlog learns, John tends to group the 2d refusal decisions in groups of three, and each group of three becomes a blog article in his blog. He offers his readers the opportunity to take a “TTABlog Test“. The blog article is, by tradition, entitled:
TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
The loyal reader of the TTABlog learns to look forward to each new TTABlog Test. It settles into a very comfortable routine. John starts by reminding us that statistically, most 2d refusals (these days, more than 90% of them) get affirmed. He then takes up the first of the three decisions in today’s grouping. He presents the two marks, side by side. He summarizes the goods and/or services that are thought by the Examiner to overlap. He reminds us that a judge on the TTAB once told him that almost always, one can very quickly and accurately predict the outcome of an appeal of a 2d refusal simply by momentarily glancing at the two marks and just as momentarily glancing at the goods and/or services. John then challenges us, the loyal readers, to join him in trying to guess the actual outcome in the first case.
And he repeats this challenge to us, the loyal readers, in the second case, and in the third case.
We are invited to try to make three guesses. And then we are invited to scroll down to the “comments” section of the blog article, where he reveals the three outcomes.
It turns out that by now in the year 2025, after more than twenty years of his blog, John has published more than 250 such TTABlog Tests.
In some TTABlog Test articles, John will give an occasional wink or nod or hint as to the outcome. In other articles, such as today’s TTABlog Test, he gives no hints but simply presents the facts.
If you or I, as one of the loyal readers of John’s blog, were to reach a point where we could often guess correctly the outcome of an appeal of a 2d refusal, then maybe we could serve our clients better. And maybe we could feel a bit of an “aha” moment, realizing that we had somehow managed to learn a thing or two. Which now brings us to this question …
How might it be that hundreds of blog articles by John L. Welch might lead to a situation in which sometimes I can guess the outcome of such an appeal? By now the question pretty much answers itself. If, like me, you have looked forward to each of John’s TTABlog Tests, and have diligently worked through many of the tests, then maybe you, like me, have gotten to the point of being fairly successful at guessing the outcomes of such appeals.
In today’s TTABlog Test, it turns out that I guessed correctly on all three appeals. And if you want to know why, it is that John provided hundreds of previous TTABlog Tests.
And, what can be said of John L. Welch’s extraordinary contributions to the trademark community through his blog? What can be said is that John has offered, and continues to offer, extraordinary contributions to the trademark community through his blog.
Thank you, John.
Loyal readers, have you benefited from John’s blog (the TTABlog)? Have you reached the point that you can sometimes predict the outcome of an appeal of a 2d refusal? Please post a comment below.