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  • Accordingly, the fact that opposer's federally-registered trademark has achieved incontestable status means that it is conclusively considered to be valid, but it does not dictate that the mark is "strong" for purposes of determining likelihood of confusion.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Accordingly, the fact that opposer's federally-registered trademark has achieved incontestable status means that it is conclusively considered to be valid, but it does not dictate that the mark is "strong" for purposes of determining likelihood of confusion. McCarthy On Trademark and Unfair Competition §§11:82 and 32:155 (4th ed. 2009).
  • Appellate courts are split as to the effect of incontestability on the strength of a registered mark.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Appellate courts are split as to the effect of incontestability on the strength of a registered mark. Some presume that incontestable status is an indicia of strength. Sports Authority Inc. v. Prime Hospitality Corp., 89 F.3d 955, 39 USPQ2d 1511, 1514 (2nd Cir. 1996); Dieter v. B & H Industries of Southwest Florida, Inc., 880 F.2d 322, 11 USPQ2d 1721, 1726 (11th Cir. 1989); Wynn Oil Co. v. Thomas, 839 F.2d 1183, 5 USPQ2d 1944, 1946 (6th Cir. 1988). Other courts hold that incontestable status refers to the validity of the registration, not the registered mark's degree of strength. Lone Star Steakhouse & Saloon v. Alpha of Virginia, 43 F.3d 922, 33 USPQ2d 1481, 1490 (4th Cir. 1995); Miss World (UK), Ltd. v. Mrs. America Pageants, Inc., 856 F.2d 1445, 8 USPQ2d 1237, 1240 (9th Cir. 1988); M-F-G Corp. v. EMRA Corp., 817 F.2d 410, 2 USPQ2d 1538, 1539 (7th Cir. 1987); Oreck Corp. v. U.S. Floor Systems, Inc., 803 F.2d 166, 231 USPQ 634, 637 (5th Cir. 1986).
  • Trademark rights are not static and that the strength of a mark may change over time.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • However, the CCPA has recognized that trademark rights are not static and that the strength of a mark may change over time. Jiffy, Inc. v. Jordan Industries, Inc., 481 F.2d 1323, 179 USPQ 169, 170 (CCPA 1973) ("a weak mark need not remain a weak mark forever. Development of association with the user as a source of the goods through continued sales and advertising of the goods may turn a ‘weak' mark into a strong, distinctive trademark"); Standard International Corp. v. American Sponge and Chamois Co., Inc., 394 F.2d 599, 157 USPQ 630, 631 (CCPA 1968) ("a mark which is initially a weak one may, by reason of subsequent use and promotion, acquire such distinctiveness that it can function as a significant indication of a particular producer as source of the goods with which it is used"). Because trademark rights are not static, an inherently weak mark may become a strong mark through extensive promotion.
  • Incontestability concerns a statutory presumption flowing from a mark that has been registered for more than five years (i.e., a registration that has been registered for more than five years is conclusive evidence of the registrant's ownership of the mark, the validity of the registration, and the registrant's exclusive right to use the mark in commerce).
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Incontestability concerns a statutory presumption flowing from a mark that has been registered for more than five years (i.e., a registration that has been registered for more than five years is conclusive evidence of the registrant's ownership of the mark, the validity of the registration, and the registrant's exclusive right to use the mark in commerce). Section 33(b) of the Trademark Act of 1946, 15 U.S.C. §1115(b).
  • Neither the Court of Appeals for the Federal Circuit, or the Court of Customs and Patent Appeals, has expressly addressed whether the incontestable status of a federally-registered mark is an indicia of strength in the likelihood of confusion analysis.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • Neither our primary reviewing court, the Court of Appeals for the Federal Circuit, nor its predecessor, the Court of Customs and Patent Appeals, has expressly addressed whether the incontestable status of a federally-registered mark is an indicia of strength in the likelihood of confusion analysis.12 FOOTNOTE 12 "We note that opposer's counsel prosecuted two oppositions resulting in nonprecendential decisions where the Board held that incontestable status does not make a registered mark strong for purposes of determining likelihood of confusion. Tensar Corp. v. McElroy Metal Mill (Opposition No. 91174290, March 17, 2009) ("We reject opposer's argument that incontestable status alone dictates that the MESA mark is strong and entitled to broader protection than otherwise may apply"); Panelfold v. ChemRex, (Opposition No. 91103270, July 12, 2002) ("the fact that a registration has achieved incontestable status does not make a mark ‘strong'")."
  • The TTAB has previously held that statutory presumptions do not affect the likelihood of confusion analysis.
    • Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010)
      • "The Board has previously held that statutory presumptions do not affect the likelihood of confusion analysis. Byk-Gulden, Inc. v. Trimen Laboratories, Inc., 211 USPQ 364, 368 (TTAB 1981), quoting Hyde Park Footwear Co., Inc. v. Hampshire-Designers, Inc., 197 USPQ 639, 641 (TTAB 1977): ""The statutory presumptions, however, do not answer the question of whether applicant's mark, for the goods identified in the application, so resemble either of opposer's marks as to be likely to cause confusion, mistake or deception. The registrations alone are incompetent to establish any facts with regard to the nature or extent of opposer's use and advertising of its trademarks or any reputation they enjoy or what purchasers' reactions to them may be."" See also Martha White, Inc. v. American Bakeries Co., 157 USPQ 215, 217 (TTAB 1968) (opposer's registration is not evidence of the nature and extent of opposer's use and advertising of its mark and, thus, is not probative of consumer reaction to the mark no matter how long it has been registered)."
Safer, Inc. v. OMS Investments, Inc., Opposition No. 91176445 (TTAB 2010) Grand Total
Tensar Corp. v. McElroy Metal Mill (Opposition No. 91174290, March 17, 2009) 1
Panelfold v. ChemRex, (Opposition No. 91103270, July 12, 2002) 1
Sports Authority Inc. v. Prime Hospitality Corp., 89 F.3d 955, 39 USPQ2d 1511 (2nd Cir. 1996) 1
Lone Star Steakhouse & Saloon v. Alpha of Virginia, 43 F.3d 922, 33 USPQ2d 1481 (4th Cir. 1995) 1
Dieter v. B & H Industries of Southwest Florida, Inc., 880 F.2d 322, 11 USPQ2d 1721 (11th Cir. 1989) 1
Miss World (UK), Ltd. v. Mrs. America Pageants, Inc., 856 F.2d 1445, 8 USPQ2d 1237 (9th Cir. 1988) 1
Wynn Oil Co. v. Thomas, 839 F.2d 1183, 5 USPQ2d 1944 (6th Cir. 1988) 1
M-F-G Corp. v. EMRA Corp., 817 F.2d 410, 2 USPQ2d 1538 (7th Cir. 1987) 1
Oreck Corporation v. U.S. Floor Systems Inc., 803 F.2d 166, 231 USPQ 634 (5th Cir. 1986) 1
Byk-Gulden, Inc. v. Trimen Laboratories, Inc., 211 USPQ 364 (TTAB 1981) 1
Hyde Park Footwear Co., Inc. v. Hampshire-Designers, Inc., 197 USPQ 639 (TTAB 1977) 1
Jiffy, Inc. v. Jordan Industries, Inc., 481 F.2d 1323, 179 USPQ 169 (CCPA 1973) 1
Martha White, Inc. v. American Bakeries Co., 157 USPQ 215 (TTAB 1968) 1
Standard International Corp. v. American Sponge and Chamois Co., Inc., 394 F.2d 599, 157 USPQ 630 (CCPA 1968) 1
Grand Total 14 14
No Statutes Listed

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