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2(d) Reversal Due to Mark Differences And Third-Party Uses (Of Overlapping Weak Terms)

In a recent reversal by the Trademark Trial and Appeal Board (the “Board” or the “TTAB”),  In re Just a Pinch Recipe Club, LLC, Serial No. 88463841 (April 15, 2021) [not precedential], it becomes evident that just because two trademarks share terms, this may not be enough to find a likelihood of confusion. There must be an evaluation of whether the shared terms are distinctive terms and thus strong or highly suggestive or descriptive terms and therefore weak. Assuming that one of the marks contains additional terms (other than the shared terms) that consumers can rely on to distinguish the goods, then the fact that the marks share identical terms may not be enough to support a 2(d) refusal. The applicant in In re Just a Pinch Recipe Club, LLC, was seeking to register the standard character mark PINCH IT! RECIPE BOX (RECIPE disclaimed), and the registrant’s mark was THE RECIPE BOX (RECIPE was disclaimed and the mark was in standard characters). Both parties’ goods were for mobile phone application software for managing recipes. There was no dispute that the goods were related, and the TTAB in the end determined that the goods were either legally identical or closely related.

This case turned on the first (similarities and dissimilarities of the marks) and sixth (number and nature of similar marks in use on similar goods) DuPont factors. When assessing whether DuPont factor one weighs in favor of finding a likelihood of confusion the marks in their entireties must be evaluated. This means examining the similarities in the appearance, sound, meaning and commercial impression of the marks. Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018). This test focuses on the recollection of the average customer, who retains a general rather than specific impression of marks. In re i.am.symbolic, llc, 127 USPQ2d 1627, 1630 (TTAB 2018).

An important consideration for the comparison of marks’ similarities is whether the marks share identical terms, and whether the shared terms are the dominant part of each respective mark. The dominant term of the registrant’s mark was “RECIPE BOX”. The Board determined that the dominant term of the applicant’s mark, PINCH IT! RECIPE BOX was PINCH IT! The TTAB’s logic was that the term PINCH IT! was arbitrary and it was the first element of applicant’s mark. The first part of a mark is often its dominant portion. See, e.g., In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing Presto Prods., Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (the first part of a mark “is most likely to be impressed upon the mind of a purchaser and remembered”); Palm Bay Imps., 73 USPQ2d at 1692. Here, the exclamation mark draws attention to the first element and underscores it. Moreover, both marks disclaimed the term “Recipe” since it is descriptive of the parties’ respective goods. The dominant element of the mark will be given greater weight in the likelihood of confusion analysis. The Board concluded that PINCH IT! was the dominant part of the applicant’s mark.

Evidence was submitted to support the sixth DuPont factor, the number and nature of similar marks in use on similar goods. DuPont factor six impacts the analysis for the scope of protection to be given to a mark. Weak marks are entitled to a narrow scope of protection. In addition, evidence that third parties use similar marks for related goods shows that consumers have become accustom to distinguishing among marks sharing weak terms, and use minor distinctions to differentiate source. Here, the evidence for third party use was similar to that submitted in In re FabFitFun, Inc., 127 USPQ2d 1670, 1673 (TTAB 2018), where the refusal to register I’M SMOKING HOT for cosmetics was reversed (the cited registration was SMOKIN’ HOT SHOW TIME for identical goods) due to a weakness of the common term “smokin(g) hot”.

The applicant in In re FabFitFun, Inc., introduced ten third-party uses of formatives of the common term SMOKIN’ HOT for cosmetics, and four other examples where the descriptive term was applied to make-up. In both this case and In re FabFitFun, Inc., the Board accepted less evidence than did the Federal Circuit in Jack Wolfskin and Juice Generation. This indicates that evidence of third-party use of common terms for related goods shows some degree of weakness for the shared term.

In reversing 2(d) refusals, the Board has accepted examples of third party use in the range of 12-26 examples of others using similar marks for similar goods; (see Juice Generation 26 examples of third-party use,  Jack Wolfskin 16 examples of third-party use, and in In re Boston Juicery, LLC, Serial No. 86877537 (August 21, 2018), 12 examples of third party use sufficed). In the case at bar, the Board determined that 14 examples of use of  “Recipe Box” proved that the mark was relatively weak, and therefore weighed in favor of finding no confusion between sources. The refusal to register was reversed based on the differences between the two marks and the weakness of the shared term, Recipe Box. If you have questions concerning likelihood of confusion or other trademark related inquiries, please contact the firm for a courtesy consultation.

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