Friday, May 16, 2014

Divided TTAB Panel Reverses Mere Descriptiveness Refusal of "GLOBAL MINING HOLDING COMPANY, LLC"

Finding insufficient the PTO's evidence of the meaning of the word "global," the Board reversed a refusal to register the mark GLOBAL MINING HOLDING COMPANY, LLC for "mining extraction of coal" [MINING HOLDING COMPANY, LLC disclaimed]. A definition from an English dictionary published in Scotland was irrelevant, and several third-party registrations for marks containing the disclaimed word "global" were in the same class as the subject mark but did not concern mining services. The Board took judicial notice of one dictionary meaning of the word, but that was not enough to permit the panel majority to find the word to be descriptive of the services. Judge Bucher dissented. In re Global Mining Holding Company LLC, Serial No. 85669303 (May 14, 2014) [not precedential].

In short, the panel majority found the record evidence "entirely too sparse." To find the term "global" to be descriptive of applicant's services based on a single dictionary definition "would be fundamentally unfair to applicant who had no opportunity to submit rebuttal evidence or present arguments addressing such evidence used as an adverse inference prior to appeal."

Judge Bucher noted in dissent that applicant had supplied a definition from the on-line dictionary, which defines "global” as follows: "1. pertaining to the whole world; worldwide; universal: ...." He would acknowledge the generally accepted meaning of "global," as in "global warming," as signifying "worldwide." "Other large mining companies around the world likely assume, with good reason, that they could freely choose such a descriptive tagline to designate that their global entity is in the business of mineral extraction."

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog note:  What do you think?

Text Copyright John L. Welch 2014.


At 11:24 AM, Anonymous Anonymous said...

This is a poor decision in both reasoning and effect. Evaluating the probative value of evidence is a subjective task. While the evidence could be more solid, it isn't remotely incorrect; yet the Board chose to elevate form over substance in pursuit of better examination practice. Furthermore, the Board expressly raised equitable concerns of fairness to the applicant, but ignored, as suggested by the dissent), fairness to all competitors and consumers in having a common term removed from the public domain.


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