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Beware Of Adopting Legally Identical Trademarks

The USPTO and the Trademark Trial and Appeal Board (“TTAB” or the “Board”) have been trending towards refusing marks and affirming refusals where the trademarks are legally identical, and where the goods are complementary, or in other cases where the goods are intrinsically related. The burden is on the Applicant to adopt a mark that is not confusingly similar to another brand in its industry or in a related industry. Where the trademarks are identical or nearly identical, a lesser degree of relatedness between the goods is necessary to support a finding of likely confusion. See a recent Board decision, In re Spin80, Inc., U.S. Serial No. 87116915 (January 31, 2018) [not precedential], where a refusal was affirmed for the marks CODEGREEN for nutritional supplements in pill and powder form, and CODE GREEN for fruit beverages and vegetable based food beverages.

The Board concluded that the marks were indistinguishable in appearance, and identical in sound, meaning and commercial impression. Any applicant that adopts an identical mark or a nearly identical mark is immediately at a disadvantage, since a different standard will apply in the likelihood of confusion analysis. A lesser degree of similarity between the goods or services will suffice. The Examining Attorney produced evidence of third-party websites. These five websites showed that one mark was used in connection with both fruit and juice beverages, and nutritional supplements in a pill form. The Examiner also submitted evidence of 11 use-based third-party registrations that identified both fruit beverages and nutritional supplements in pill form. This evidence demonstrates that the goods may emanate from the same source. Based on this evidence, the Board determined that the goods were related, and that consumers could mistakenly believe the goods originated from the same source.

Upon reviewing the identifications of the Applicant and Registrant, the Board noted there were no restrictions indicated. This means that there is an assumption that the goods travel in all the normal and usual channels of trade. The Board held that the trade channels and classes of consumers overlapped. The refusal to register the mark was affirmed.

In another recent case decided by the Board, the same reasoning prevailed. See In re El Galan, Inc., Serial No. 86961428 (February 1, 2018) [not precedential]. At issue in this case were two marks both for the term TERNURA in standard characters. The registrant’s mark was used in connection with liquor, tequila, vodka and wine. The applicant’s mark branded cigars. In any likelihood of confusion analysis, the two key factors are the similarities between the marks and the similarities between the goods. The trademarks in this case were identical in sound, appearance, connotation and commercial impression. The Board pointed out, the well settled rule that the goods need not be identical or competitive. The goods only need to be either related or their marketing gives rise to the belief that the goods come from the same source.

Relatedness can be demonstrated by showing that: (1) the goods are used together; (2) the goods are used by the same purchasers; (3) the goods are advertised together; (4) the goods are offered under the same mark by the same manufacturer or dealer; or (5) there are third-party use based registrations showing one mark and both goods indicated in the identification. For example, if certain recipes call for ingredients and those ingredients are using confusingly similar marks, it would be determined that the ingredients are used together and used by the same purchasers. Therefore, consumers are likely to purchase the products at the same time and in the same stores. See In re Davia, 110 USPQ2d 1810 (TTAB 2014), where pepper sauce and agave sweetener were found to be related, the evidence showed they were used together in the same recipes.   Even when products are not intrinsically related, the use of identical or nearly identical marks can lead to the assumption that they emanate from the same source.

The Examiner in In re El Galan, produced Internet evidence showing third parties manufactured and sold cigars and alcoholic beverages under the same mark. In addition, the Examining Attorney argued that cigars and alcohol are complementary goods, marketed together for simultaneous consumption. Articles from the Internet were introduced discussing the complementary nature of cigars and alcoholic beverages. The same logic has been applied to sandwich ingredients. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 799 (TTAB 1986).

It is important to keep in mind the five manners in which relatedness can be demonstrated when determining if the second du Pont factor will weigh in favor of likelihood of confusion. If you have questions concerning the relatedness of different goods or other trademark inquiries, please feel free to contact our office for a courtesy consultation.