The Board affirmed a Section 2(d) refusal to register the mark shown below left, for "frozen yogurt" and for "self-serve yogurt shop services," finding it likely to cause confusion with the registered mark shown below right, for "self-serve frozen yogurt shop services." Applicant pointed to its two existing registrations for the identical mark, except for the color claim, for the identical goods and services. Not good enough, said the Board. In re RaceTrac Petroleum, Inc., Serial No. 86636421 (March 28, 2017) [not precedential] (Opinion by Judge Pologeorgis).

The Board found the design elements in the marks to be less dominant than the literal elements. The latter are highly similar in sound, appearance, and commercial impression. The involved services are identical, and applicant's goods are related to the services of the cited registration. As to channels of trade, the evidence showed that frozen yogurt and self-serve yogurt shop services may be provided in the same marketplace to all relevant classes of purchasers.

Applicant invoked the 13th du Pont factor, which permits the Board to consider any other information relevant to the issue of likelihood of confusion. Applicant argued that, since it owns two registrations for a mark that is identical to the applied-for mark, except for the claim of color, for goods and services identical to those in the applied for application, and since it has priority of use, it would be inequitable to not allow the applied-for mark to register. It further noted that the mark of the prior registrations has coexisted with that of the cited registration for more than four years.

The Board distinguished In re Strategic Partners [TTABlogged here], because there the prior registrations were more than five years old and thus no longer subject to cancellation under Section 2(d). Here, applicant's registrations were not yet five years old.

The Board acknowledged that denying registration here is inconsistent with the issuance of applicant's earlier registrations, but to hold otherwise "would give preclusive effect to the decisions of Examining Attorneys in granting Applicant's prior registrations, and the Board is not bound by the decisions of Examining Attorneys."

As to applicant's assertion of priority, the Board pointed out that such an assertion of priority of use can be given no consideration in an ex parte proceeding when registration has been refused under Section 2(d) in view of a subsisting registration.

The Board concluded that the existence of applicant's prior registrations did not outweigh the other du Pont factors.

The Board noted that applicant was not without remedy. It could have sought suspension of the application in order to pursue (1) a cancellation proceeding against the cited registrations, or (2) a consent agreement with registrant. An applicant's assertion of priority of use constitutes a collateral attack on the cited registration, which cannot be entertained in an ex parte proceeding.