A Precedential Case Reinforces – Weak Marks Are Narrowly Protected

A recent precedential case from the Trademark Trial and Appeal Board (“TTAB” or the “Board”) highlights the problems associated with adopting weak marks. See Shenzhen IVPS Technology Co. Ltd. V. Fancy Pants Products, LLC, 2022 USPQ2d 1035 (TTAB 2022) [precedential], where the Board dismissed an opposition under Section 2(d) of the Lanham Act because the weakness of the common element SMOK/SMOKES mandated the opposer’s mark be given a narrow scope of protection. In addition to battling enforcement of a weak mark, the opposer did not prove an overlap of trade channels. However, the Board determined that opposer’s electronic cigarettes were related to the applicant’s cigarettes containing tobacco substitutes because both products could be used for the same purpose, vaping or smoking a substance.

Regarding the marks, the Board also held that Applicant’s SMOKES (& Design) mark was the phonetic equivalent of Opposer’s mark, SMOK mark. The interesting twist to this precedential decision is that typically once the Board determines the marks are phonetic equivalents and the goods are related, often the opposition based on 2(d) grounds is sustained, but not so here. Here, the weakness of the opposer’s mark played a pivotal role in dismissing the opposition. See our firm page, Disadvantages of Descriptive Trademarks, for more on this topic.

The mark SMOKES or its phonetic equivalent SMOK is descriptive in connection with Opposer’s electronic cigarettes, parts, and accessories and retail store services featuring those goods. Therefore, the applicant correctly argued that the common wording [SMOKES and SMOK] dictated  a narrow scope of protection be given to opposer’s mark due to its descriptive nature. In fact, the Board relied on the well-established principle that when the word portion of a mark is highly suggestive or descriptive, the presence of a design may be a more significant factor. See In re Hamilton Bank, 222 USPQ 174, 179 (TTAB 1984).

Moreover, if the shared element of the two marks is “weak” in that it is generic, descriptive, or highly suggestive of the goods or services identified in the application or registration, then other matter in the marks may be sufficient to obviate confusion. See In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986). See also, See Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, at *17 (TTAB 2020). The Board held that the pronunciations were similar and so were the meanings of the applicant’s and the opposer’s marks. Lastly, the Board stated, “Opposer’s SMOK mark and the literal portion of Applicant’s composite mark, SMOKES, have similar commercial impressions because they may evoke smokable goods or goods used for smoking.” However, when considering the marks in their entireties, the Board emphasized that the design features in the applicant’s mark were sufficient to distinguish it from opposer’s mark to avoid confusion. The first DuPont factor favored no confusion.

Regarding the second DuPont factor, the Board considered applicant’s goods, ““Cigarettes containing tobacco substitutes not for medical purposes containing only cannabis with a delta-9 THC concentration of not more than 0.3% on a dry weight basis” and opposer’s goods, electronic cigarettes, “a battery-operated device that is typically designed to resemble a traditional cigarette and is used to inhale a usually nicotine-containing vapor. Evidence included, third party websites showing consumers had been exposed to vaping goods that could be used in connection with either nicotine or cannabis. There was other evidence demonstrating that electronic cigarettes could be used with tobacco substitutes such as cannabis or hemp. The Board held that applicant’s and opposer’s goods were related.

However, with regard to trade channels, the evidence did not point to an overlap. The website evidence did not prove on its face that the offering of both these types of goods occurred on the same websites. Opposer failed to demonstrate that smoking shops, vaping shops, and convenience stores constitute an ordinary trade channel for Applicant’s identified goods (cigarettes containing cannabis). There wasn’t sufficient evidence to show that cannabis products and tobacco products are sold in the same trade channels to the same consumers. However, on a different record, it’s possible that the Board could find that cannabis and tobacco products have overlapping trade channels. The strong take away from this precedential case is that there are significant disadvantages to adopting a weak mark, similar marks for related goods will be permitted to co-exist. If you need to speak with trademark counsel about the strength of your mark or wish to have a courtesy consultation concerning adopting a trademark, kindly contact the firm.