Weight of refusal lifted from PERSONAL POST OFFICE mark
In In re Luppen Holdings Inc, the US Patent Office's (USPTO) Trademark Trial and Appeal Board (TTAB) has overturned an earlier decision refusing the registration of the mark PERSONAL POST OFFICE for a hand-held metal scales for weighing letters and packages.
Following Luppen Holdings Inc's application to register the mark, an examiner at the USPTO refused registration on three grounds. On appeal, the TTAB overturned the earlier decision and allowed registration.
First, it dismissed the examiner's findings that the mark "immediately conveys that the identified goods are of a 'personal nature' and 'provide a post-office function'". The TTAB agreed with Luppen that the mark required mental steps to identify what the goods and services were.
Next, it dismissed the examiner's Section 2(a) of the Lanham Act 'false connection' refusal, finding that the US Postal Service (USPS) does not have an exclusive monopoly over the phrase 'post office'. The TTAB pointed out that various summer camps in the United States use the term 'post office' to refer to their internal mail facility. Moreover, it accepted as evidence a declaration from a linguistics professor at the University of Southern California summarily concluding that the term 'post office' is generic.
Finally, it made short work of the third refusal to register, namely a Section 2(d) refusal based on four cited registrations owned by the USPS:
- UNITED STATES POST OFFICE;
- UNITED STATES POST OFFICE EXPRESS;
- UNITED STATES POST OFFICE and Eagle design; and
- UNITED STATES POST OFFICE EXPRESS and Eagle design.
The TTAB held that although Luppen's marks and the cited trademarks both contain the term 'post office', this term is highly descriptive or generic of USPS's services meaning that its inclusion in these marks could not be a basis for finding that the two parties' marks, when considered as a whole, were similar.
It is worth noting that the USPS has filed a protest letter alleging that registration of this mark would violate and infringe upon its common law rights in the trademark POST OFFICE. The protest letter would seem to herald an opposition in the offing and may be one reason why the TTAB has ruled that its decision is uncitable.
Katherine C Spelman, DLA Piper Rudnick Gray Cary US LLP, San Francisco
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