David John Critchley

Trademark Trial and Appeal BoardNov 30, 2012

No. 78877552re (T.T.A.B. Nov. 30, 2012)

OPN Mailed: November 30, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Critchley ________ Serial No. 78877552 _______ Peter B. Kunin of Downs Rachlin Martin PLLC for David John Critchley. Kyle Christopher Peete, Trademark Examining Attorney, Law Office 112 (Angela Bishop Wilson, Managing Attorney). _______ Before Bucher, Zervas and Wolfson, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: On October 29, 2012, David John Critchley (“applicant”) filed a request for reconsideration of our final decision dated September 28, 2012. In our final decision, we affirmed the examining attorney’s refusal under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), to register KICK ASS (in standard character form) on the Principal Register for “energy drinks, fruit and vegetable juices, fruit and vegetable juice-based THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 78877552 2 drinks, bottled drinking water, mineral and tonic water” in International Class 32. Generally, the premise underlying a request for reconsideration under Trademark Rule 2.129(c), 37 CFR § 2.129(c), is that, based on the evidence of record and the prevailing authorities, the Board erred in reaching the decision it issued. The request should not be devoted simply to a reargument of the points presented in the requesting party's brief on the case. Rather, the request normally should be limited to a demonstration that, based on the evidence properly of record and the applicable law, the Board's ruling is in error and requires appropriate change. See TBMP § 543 (3d ed. rev. 1 2012). Applicant seeks reconsideration of our decision to the extent that the decision was based on cited Registration No. 2896141 as amended to KICK ASS from KICK ASS COFFEE. According to applicant, the amended mark KICK ASS was not the subject of the final refusal for purposes of the appeal; the mark KICK ASS COFFEE was the subject of the final refusal. “Because Appellant was not notified of the amendment, it did not have an adequate opportunity to seek remand for further argument or submission of additional evidence in light of the amendment”; and “there is no evidence that the Examining Attorney actually considered Serial No. 78877552 3 the mark as amended. Nor did the Examining Attorney notify Appellant of the amendment so further prosecution could proceed while the application was on remand.” Request at 2 – 3. Section 2(d) states, in relevant part: No trademark … shall be refused registration on the principal register on account of its nature unless it— * * * (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office … as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive …. (Emphasis added.) The examining attorney refused registration in view of “a mark registered in the Patent and Trademark Office,” which was the subject of Registration No. 2896141. The mark registered at the time of our decision was KICK ASS, not KICK ASS COFFEE. However, to render a complete decision, we considered the issue of likelihood of confusion based on both KICK ASS and KICK ASS COFFEE. Applicant has not noted any specific prejudice to it, or pointed to any evidence that it would have introduced into the record had prosecution been reopened and the application remanded to the examining attorney. Thus, applicant’s arguments based on the actual refusal, lack of fairness, and prejudice are not well taken. Serial No. 78877552 4 Applicant also argues that the Board did not “adequately consider the laudatory and therefore weak, nature of the term ‘KICK ASS.’” Request at 4. Applicant did not raise this argument regarding an inherent weakness in the mark KICK ASS in either its appeal brief or its reply brief, but first raises it in the request for reconsideration. Applicant essentially is contending that the decision is in error because we did not consider an issue applicant did not discuss in either of its briefs. In our decision, we considered registrant’s mark first as KICK ASS and then as KICK ASS COFFEE. With regard to KICK ASS COFFEE, we found that “coffee” is the generic term for registrant’s goods; that KICK ASS, as a unitary term, is the dominant component of KICK ASS COFFEE, which is the legal equivalent of KICK ASS; and that applicant’s mark is identical to the dominant component of the mark. Decision at 7. Even if we did not make a specific finding on whether the term “kick ass” is laudatory, we found that the addition of COFFEE does not distinguish the marks. The term “kick ass” does have some suggestive connotation in relation to the goods, but the addition of COFFEE to KICK ASS, even in light of the suggestive meaning of “kick ass,” does not change the connotation. As we stated at p. 7 of our opinion, the mark KICK ASS COFFEE is the legal Serial No. 78877552 5 equivalent of the mark KICK ASS. The addition of the term COFFEE, a generic term, does not suffice to distinguish applicant’s mark KICK ASS from KICK ASS COFFEE. Decision: Applicant’s request for reconsideration is denied.