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A Single DuPont Factor May Be Dispositive In A 2(d) Refusal

In a very recent Trademark Trial and Appeal Board (the “Board”) decision, there was a reversal of a 2(d) refusal. See our webpage entitled, Likelihood Of Confusion Refusals, for more information on the likelihood of confusion analysis and the DuPont factors. The case here involved the marks MMD & Design  for “levelling rods; surveying chains; surveying compass needles; surveying instruments; surveying machines and instruments; transits; tripods,” and MMD (standard characters) for “laser scanners for industrial inspection and for geometrical measurement, and not for use with land surveying equipment; software for collection and interpretation of data in the operation of laser scanners, not for use with land surveying equipment,”. See In re Nikon Corporation, Serial No. 86828751 (October 6, 2017) [not precedential]. The Board first examined the similarities and dissimilarities between the marks.

Both trademarks share the letters MMD. However, the parties based their marks on different words. The Board held that the derivation was of no particular significance to the Board. It is common for applicants to adopt marks that are acronyms for their corporate or trade names. The Board emphasized that this was unimportant because consumers are likely not to be aware of the derivation. Because the relevant purchaser would perceive the letters in the respective marks as arbitrary, the registrant’s mark will receive a broad scope of protection. Part of the rationale for granting a wide scope of protection to arbitrary letters is that it is difficult to remember and thus would be tantamount to a fanciful trademark. In the end, the Board determined that the two marks would carry the same meaning and commercial impression.

Regarding the design element in the registrant’s mark, the Board cited the general rule that when words and design elements are used together, the words are generally considered the dominant element of the mark. Often dominant elements are given more weight. Had there been third-party evidence in the record showing the dominant element of the mark was weak or diluted, the design element could have taken on a more significant role in distinguishing the mark. However, that was not the case here. Consumers were not conditioned to encountering multiple MMD branded products in the marketplace. The Board concluded that the marks were similar in sight, sound, meaning and commercial impression.

Next the Board evaluated whether the respective parties’ goods were related. The Examining Attorney found the goods to be related because the evidence demonstrated that non-land surveying laser scanners are sold by the same sources that provide surveying instruments. The Applicant contested this evidence stating that although the goods may emanate from one source, the goods are sold under different marks. The Board reviewed the third-party use evidence and held that the goods were indeed related. However, the case turned on the trade channel evidence.

The Board concluded that the Registrant’s goods were sold to land surveyors for the purpose of determining the exact form, boundaries and position of a particular section of land. Conversely, the Applicant’s goods are sold to industrial engineers for use in manufacturing applications. The goods of the parties move in different channels of trade. Therefore, the same consumers will not encounter the goods in the marketplace under circumstances that will lead to a false belief that the products are generated from the same source.

Regarding the conditions of sale, the nature of the products indicated that the consumers are sophisticated and will exercise a high degree of care. Based on this analysis, the Board reversed the refusal to register the Applicant’s mark. This case is a good example of the principal that any single DuPont factor can be dispositive. See Oakville Hills Center, Inc. v. Georgallis Holdings, LLC, Case No. 16-1103 (Fed. Cir. 2016), where the Court held a single DuPont factor can be dispositive in a likelihood of confusion analysis. See also, Odom’s Tennessee Pride Sausage, Inc. v. FF Acquisition, LLC, Case No. 09-1473 (Fed. Cir. 2010). If you have questions pertaining to likelihood of confusion or other trademark related inquiries, please contact us for a courtesy consultation.