Pursell Tech-nologies, Inc.

Trademark Trial and Appeal Board

Jun 17, 2004

No. 75916274re (T.T.A.B. Jun. 17, 2004)

Mailed: June 17, 2004
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Pursell Technologies, Inc.
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Serial No. 75916274
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Request for Rehearing, Reconsideration and
Modification
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Theodore A. Breiner of Breiner & Breiner, L.L.C. for
Pursell Technologies, Inc.
Yong Oh (Richard) Kim, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
_______
Before Simms, Quinn1 and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
On April 21, 2004 applicant filed a request for
rehearing, reconsideration and modification of the Board’s
decision issued March 19, 2004, wherein the Board affirmed
1 Judge Quinn has been substituted for Judge Cissel who has
retired from government service.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75916274
2
the refusal to register applicant’s mark FARMLINKS for
“golf club services” in view of Registration No. 1,547,559
for the mark THE FARM for “recreational services, namely
golf and country club services.”
In particular, applicant argues that the Board gave
insufficient weight to: (1) the existence of Registration
No. 2,466,349 for the mark THE OLDE FARM for “golf club
services”, which is owned by a third party, and (2) the
fact that the owner of the cited registration (THE FARM)
consented to registration of THE OLDE FARM. Applicant
argues that this is evidence that the cited registration is
entitled to a limited scope of protection.
Further, applicant contends that the Board erred in
finding that applicant’s mark FARMLINKS and the cited mark
THE FARM have similar commercial impressions.
At the outset, we note that the Board generally does
not grant rehearing in connection with a request for
reconsideration/modification. Thus, applicant’s request
for rehearing is denied.
As the Board indicated in its decision, the existence
of a single third-party registration does not justify the
registration of a confusingly similar mark. It is well
settled that third-party registrations are not evidence of
use of the marks therein or that the relevant consumers
Ser No. 75916274
3
have been exposed to them. See Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992) and AMF Inc. v. American Leisure Products, Inc. 474
F.2d 1403, 1406, 177 USPQ 268, 269 (CCPA 1973). Compare
also In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001) [“Even if some prior
registrations had some characteristics similar to
(applicant’s) application, the PTO’s allowance of such
prior registrations does not bind the Board or this
Court.”]
We recognize that the owner of the cited registration
(THE FARM) consented to registration of THE OLDE FARM mark.
Relying on 1 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition, §18.25 (3rd ed. 2001) and cases cited
therein, applicant argues “when a party gives a consent to
another this limits the scope of protection to be accorded
the trademark and the registration.” (Brief, p. 4). The
section of McCarthy’s relied on by applicant discusses the
effect of consents in infringement actions and inter partes
proceedings before the Board; not ex parte cases, as is the
case before us. Thus, we are not persuaded from McCarthy’s
and the cases referenced therein that the cited mark in
this case is entitled to a limited scope of protection.
Moreover, our primary reviewing court rejected a similar
Ser No. 75916274
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argument by the applicant in In re Majestic Distilling
Company, Inc., 315 F.23d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In that case, the applicant (Majestic) argued that
the owner of the cited registration (Stroh) had entered
into agreements with third-parties regarding use of the
mark RED BULL. The Court noted that “no presumption can be
made that Stroh consents to Majestic’s use of the mark or
that Stroh has determined or admits that confusion of the
public by Majestic’s concurrent use of the mark is
unlikely.” Majestic Distilling, 65 USPQ2d at 1205.
With respect to the commercial impressions created by
the marks, applicant argues that we have dissected the
marks and that there is no evidentiary basis for our
statement that purchasers may believe that the golf club
services offered by applicant under the FARMLINKS mark
represents a new golf course from the same source as THE
FARM golf club services.
The purpose of reconsideration is to point out errors
made by the Board in making its decision, not to merely
reargue the case as applicant has done. The basis for the
finding that the involved marks create similar commercial
impressions is clearly articulated therein and we do not
find any error in reaching that finding.
Ser No. 75916274
5
In view of the foregoing, applicant’s request for
reconsideration and modification of the Board’s decision is
denied, and the decision of March 19, 2004 stands.