In response to a refusal to register a trademark, declarations may be submitted setting forth facts to rebut the grounds for refusal.

Cookie-cutter declarations, however, might be given less weight than bespoke declarations. See In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1051 (TTAB 2013) (“probative weight … [of declarations] is affected somewhat by the fact that they are all essentially identical in form and were clearly not composed individually. … [S]uch statements are less persuasive than statements expressed in the declarants' own words.”); see also In re EBSCO Indus. Inc., 41 USPQ2d 1913, 1917 (TTAB 1996) (giving “little weight” to declarations that are “forms, with the declarant filling in only his name and address”).

For example, where multiple affidavits are “nearly identical,” “conclusorily worded,” and “represent the views of a small segment of the relevant market,” then “they are not the kind of ‘competent evidence' that could carry [the] burden of rebutting the PTO's prima facie case.” In re Pacer Tech., 338 F.3d 1348, 67 USPQ2d 1629, 1633 (Fed. Cir. 2003).

Cali-Style Vietnamese Food

The Trademark Trial and Appeal Board (“TTAB”) recently addressed this issue in connection with the CALI BANH MI mark for “Restaurant services featuring banh mi baguettes, banh mi sandwiches, pastries, noodles bowls, rice bowls, salad bowls, soups, boba tea drinks and blended drinks.” In re Cali Banh Mi Inc., Ser. No. 90000386 (TTAB Jul. 27, 2022). Registration had been refused under Section 2(d) based on a likelihood of confusion with the prior registered BÁNH MÌ & CHÈ CALI mark for “Restaurant services; Take-out restaurant services.” In both instances, the term “banh mi” was disclaimed, and “& chè” also was disclaimed in the prior registered mark.

Twelve Formulaic Fill-in-the-Blank Declarations

In response to Section 2(d) refusal, the applicant submitted twelve declarations regarding the meaning of “chè” and “CHÈ CALI” those with Vietnamese ethnic and cultural backgrounds. All of the declarations included Wikipedia entry for “Chè” stating that chè varieties are “designated by a descriptive word or phrase that follows the word chè, such as chè dau do (literally ‘red bean chè')” and the additional statement that “[i]f someone told me that we were having BÁNH MÌ & CHÈ CALI, I would immediately understand that we would be having traditional Vietnamese bread or sandwich and some sort of California style sweet beverage, dessert soup or pudding.” (emphasis in originals).

[T]he 12 declarations appear on preprinted forms with blanks for the declarant to fill in the location of residence, signature, printed name, phone number and date. We find the declarations formulaic and less persuasive because someone other than the declarants apparently prepared these documents, rather than the declarants using their own words.

The TTAB also found that, even if it were to credit the declarations more robustly, their substance “essentially concede that both marks refer to California-style Vietnamese food and drink.” Because the declarations tend to show that both marks refer to Vietnamese foods and drinks that are “Cali-style,” they supported finding the marks convey a similar meaning and commercial impression.

The trademark attorneys at Thomas P. Howard, LLC are experienced in the prosecution of trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.