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The USPTO refused to register the mark MBBM for
“battery monitors” on the ground of likelihood of
confusion with the registered mark MBBM-VAS for,
inter alia, “apparatus and instruments for
conducting, switching, transforming, accumulating, voltage
regulating, and controlling electric signals and electricity … in
the fields of development, quality control and fault diagnosis, but
not in the field of factory equipment.” The marks are too
close for comfort, but what about the goods? Well, you have to dig
into the USPTO’s evidence. How do you think this came out?
In re Vanner, Inc., Serial No. 88877168 (July 29, 2022)
[not precedential] (Opinion by Judge Angela Lykos).
Applicant Vanner got off on the wrong foot when it argued that
it was using its mark for six years prior to registrant. The Board
pointed out, however, that priority is not an issue in an ex parte
proceeding involving a Section 2(d) appeal. Likewise, Vanner’s
argument that the registrant was no longer using the mark
constituted an improper collateral attack on the cited
registration. Cancellation, reexamination, and expungement are
proper avenues for such an attack.
As to the involved goods, the examining attorney relied on
third-party websites purportedly showing that certain companies
offer both battery monitors and fault diagnosis equipment under the
same trademark. The Board, however, found that the websites did not
support the USPTO’s position. None of the websites displayed
products for use in the field to which registrant’s goods are
restricted: “the field of development, quality control and
fault diagnosis, but not in the field of factory
The involved goods all fall under the general category of
electrical products, but “that standing alone does not suffice
to show that the goods are related.”
Although the similarity of the marks
weighs in favor of finding a likelihood of confusion, the record
fails to show that the goods are related. We emphasize that we have
reached our determination that confusion is not likely based on the
record before us. On a different record, such as might be adduced
in an inter partes proceeding, we might well come to a different
And so, the Board reversed the refusal to register.
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