Articles Posted in Likelihood Of Confusion

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As a trademark practitioner, it is important to carefully review 2(d) reversals by the Board since they occur infrequently. Approximately 90 percent of likelihood of confusion refusals are affirmed. In a recent reversal by the Board, a number of factors contributed to the decision to allow registration, but in my opinion the most significant factors were the differences in the services and the weakness of the term AUBURN. See In re Capital Schools, Serial Nos. 86931396 and 87048675 (April 23, 2018) [not precedential], where the Applicant filed two applications: (1) THE AUBURN SCHOOL in standard characters and (2) CAMP ARISTOTLE AT THE AUBURN SCHOOL in special form. The services included “educational services, namely, providing courses of instruction for children at the early elementary to high school level with special needs; educational services, namely, courses of instructions in the field of math, science, language arts, social studies, foreign language, physical education, music and art for children at the early elementary to high school level with special needs; educational services, namely, providing summer camp programs for children at the early elementary to high school level with special needs”.

The Registrant’s cited marks included word marks and special form marks using the term AUBURN, but the Trademark Trial and Appeal Board (the “Board”) focused on the standard character mark for AUBURN. This mark was the most similar to the Applicant’s marks. The Registrant’s services include: “education services, namely university and community education, public lectures and workshops, seminars and conferences…” In addition, there are entertainment services relating to sports, theatre, concerts, and dance. The Examining Attorney argued that the Registrant’s mark AUBURN is a famous trademark. To support that position, the Examiner submitted a definition from the American Heritage Dictionary: “Auburn is an Alabama city and the “seat of Auburn University…”

Typically, the Board will take judicial notice of dictionary definitions to determine meanings of words, but because this definition was offered into evidence to prove fame, the Board decided it would not take judicial notice. The Board reasoned that evidence of fame is not usually of record in ex parte proceedings. In the majority of cases, Examining Attorneys do not have access to the types of evidence that can prove fame. Therefore, the Applicant did not know to address this issue in its brief. Moreover, the dictionary definition in and of itself does not prove that the public is aware of the information. The Examining Attorney also argued that the fact that the Registrant owns 111 trademark registrations shows fame. The Board on the same logic disagreed, stating that the public was not likely aware of the number of registrations owned by the Registrant. The Board determined that the mark was not famous.

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In a recent Trademark Trial and Appeal Board (“Board” or “TTAB”) decision, the Board reversed the Examiner’s refusal to register the mark YUMMIES and Design (a winking smiley face wearing a crown) for Latin American style food products, namely, processed flavored plantains slices, processed flavored yucca chips, fried pork with salt and chili, potato flakes of different flavors, fired flavored peanuts and baked flavored peanuts and fried corn tortilla snack foods with different flavors. The Examining Attorney cited three different registrations (each with different owners) against the Applicant’s mark. These included: (1) a special format mark for YUMMIES (with a heart shape over the letter “i” in YUMMIES) for candy for consumption on and off the premises; (2) a special format mark for YUMMY’S CHOICE (with a blue ribbon after the term choice) for dairy-based snack foods excluding ice cream, ice milk and frozen yogurt; fruit-based food beverage; oils and fats for food; snack food dips; vegetable-based snack foods; and (3) a standard character mark for SUPER YUMMYS for vegetable-based snack foods; fruit-based snack foods; and milk products excluding ice cream, ice milk and frozen yogurt on the Supplemental Register.

Since The Board affirms approximately ninety percent of the cases appealed in likelihood of confusion refusals, the question to ask is what makes this case different. Before arriving at the answer the Board summarized its method for reviewing these types of refusals. The Board analyzes the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). Although there are thirteen factors to consider, the two key considerations are the similarities between the marks and the relatedness of the goods or services. The Board in this matter focused on the fact that the shared term between the marks was weak, and that there were differences among the marks.

The Board did not have a lot of evidence to consider for the relatedness of the goods and trade channels. One registration did contain a restriction in trade channels, but the others did not. Since the Applicant failed to present arguments on these factors, the Board concluded that the similarities of the goods, channels of trade and overlap of the classes of consumers weighed in favor of finding confusion. The Board moved on to review the marks, and the marks have to be evaluated in their entireties in connection with visual appearance, sound, meaning and commercial impression. Consumers will retain a general and not a specific impression of a trademark. A good test is to observe a mark for five to ten seconds, then to close your eyes, and think of what you remember about the mark.

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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 not 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.

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Once an Examining Attorney refuses a trademark application on the grounds of likelihood of confusion (2(d) grounds), it is unlikely the Trademark Trial and Appeal Board (“TTAB” or the “Board”) will reverse the refusal. Statistics demonstrate that approximately nine out of ten times, the Board will affirm a likelihood of confusion refusal. However, the Board reversed the refusal in the case that will be discussed in this blog, and you can decide if you agree with the Board or the Examining Attorney on this matter. The Applicant applied for the mark FIT IN YOUR GENES in standard characters for among other services, a weight loss program. The Examiner cited the registration FITGENES and Design (the design consisting of a letter V upright and one upside intersecting with the upright letter V) also for weight loss services in part, as grounds for a likelihood of confusion refusal. See In re Druz, Serial No. 86614598 (January 22, 2018) [not precedential].

The Applicant argued that the design element in the mark, the intersected letter Vs, was sufficient to distinguish the two marks. The Board disagreed with this point. It is well settled law that when evaluating a standard character mark and a composite mark, generally speaking, the word element will be considered the dominant element of the mark, and the indicator of source. The rationale for this general rule is that the word element of the mark is the portion of the trademark that consumers will use to refer to the services. Thus, if the literal elements of two marks are similar enough to create a likelihood of confusion, adding a design element to one mark, will not generally distinguish the trademarks.

Regarding the literal portions of the marks, on the surface it appears that there are similarities between the marks that may cause confusion. However, the Board found otherwise. In comparing the trademarks, the following factors are considered, appearance, sound, connotation and commercial impression. Trademark law aims to protect consumers by avoiding confusion in the marketplace upon encountering two similar trademarks for related goods or services. In this case, both marks include the terms, “fit” and “genes” and therefore, the appearance of the two marks is similar. But the connotations and the commercial impressions are different. The Board took judicial notice of the definition of the term “fit” from the Merriam-Webster Online Dictionary, both as a verb and as an adjective. It also noted the definition of the term “gene”.

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Since the precedential decision of  In re Bay State Brewing Co., 119 USPQ2d 1958 (TTAB 2016), the Board has more carefully reviewed Consent Agreements. Some may say the TTAB has since been scrutinizing Consent Agreements, seeking to find very detailed reasons for why confusion will not occur between two sources in the marketplace. For more on the influential case of In re Bay State Brewing Co., see our blog post entitled, A Recent TTAB Decision Impacting Consent And Coexistence Agreements. After the issuance of this decision, other decisions followed in the trend of rejecting Consent Agreements. The latest in this line is In re 8-Brewing LLC, Serial No.86760527 (October 30, 2017) [not precedential]. This decision affirmed the refusal of the Applicant’s mark and stated that the restrictions set forth in the parties’ Consent Agreement would not eliminate confusion in the market place.

8-Brewing LLC, (the “Applicant”) was seeking registration on the Principal Register of the mark, 8-BIT ALEWORKS, for beer in standard characters. The mark was refused due to a likelihood of confusion with the registered mark 8 BIT Brewing Company (a word mark and also a design mark with the same literal terms) for beer, ale, lager, stout and porter, malt liquor and pale beer. The parties submitted a Consent Agreement as part of the record of evidence. A Consent Agreement is evaluated under du Pont factor ten, the market interface between the Applicant and the owner of a prior mark.

The Board commenced its review with the goods identified in the trademark application and registrations. Part of the parties’ identifications is identical, “beer”. Because there is an overlapping identical good, it is presumed that the channels of trade and classes of purchasers are the same. Another presumption that attaches when the goods are identical is the “degree of similarity necessary to support a conclusion of likely confusion declines”. See Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). The relatedness of the goods as described in the application and registrations, weigh in favor of finding a likelihood of confusion.

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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.

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Earlier this summer the Board relied on the “Something More” standard in reversing a refusal to register a trademark for beer. See In re Iron Hill Brewery, LLC, Serial No. 86682532 (July 28, 2017). The Applicant was seeking to register the mark CANNIBAL in standard characters for beer. There was a registered mark CANNIBAL for restaurant services and the Examining Attorney held that there was a likelihood of confusion between the two CANNIBAL marks. See our blog post entitled, The Origin Of The Something More Standard In Trademark Law, for a review of prior cases applying this standard. The application of this standard can be traced back to In re Coors Brewing Co. 343 F.3d 1340 (Fed. cir. 2003) and Jacobs v. Int’l Multifoods Corp., 668 F.ed 1234 (CCPA 1982). Cases following have expanded the reach of this standard in likelihood of confusion cases.

In this case, the Examining Attorney refused Applicant’s CANNIBAL mark for beer on 2(d) grounds and made this refusal final. The Applicant appealed to the Board after the request for reconsideration was denied. The Board started its likelihood of confusion analysis with evaluating the goods and services. Since the marks are identical, the Examining Attorney was required to show something more than the same mark was used to brand restaurant services and food or beverage products. In other words, the Examiner could not simply argue that since restaurants occasionally sell their own beer, beer and restaurant services are related. There is no general rule in trademark law that certain goods and services are related.

In prior cases, the Board found the “something more” standard satisfied, when evidence has been shown that registrant’s mark is very unique and strong or if there was evidence that Applicant’s restaurant specialized in Registrant’s type of food products. See In re Coors Brewing Co., where the Court held that it was not sufficient to find a relatedness of the goods and services based only on the fact that a tiny percentage of all restaurants use the same mark for both its restaurant services and to brand beer. The Examining Attorney in this case, produced evidence of websites from restaurants and argued that these restaurants also sold beer, but did not show evidence that the same trademark was used to brand both the restaurant services and the beer.

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It appears that more often than not the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) issues favorable decisions for the big corporations. However, this one came down against Williams-Sonoma Inc. (the “Applicant”) last month. See In re Williams-Sonoma, Inc., Serial No. 86092589 (June 28, 2017), where the Applicant filed an application for the mark MANHATTAN in standard characters for upholstered furniture in international class 20. The Examining Attorney refused the application and the Board affirmed the refusal based on the registration for MANHATTAN CABINETRY in standard characters for custom designed and crafted furniture in class 20 on grounds of likelihood of confusion. To overcome these types of refusals, see our webpage entitled, Overcoming Likelihood Of Confusion Refusals.

One of the Applicant’s arguments as to why the mark MANHATTAN for upholstered furniture should be allowed to register was that the Registrant’s mark MANHATTAN CABINETRY for custom designed furniture was weak. The Applicant argued that since Manhattan is a geographic term, it is only entitled to a narrow scope of protection. This argument backfired on Williams-Sonoma because the Registrant’s mark registered under the provision of Section 2(f) of the Lanham Act. This means that the mark was held to have acquired distinctiveness. It is important to note that marks having acquired distinctiveness under §2(f) of the Lanham Act (also known as the Trademark Act of 1946) are entitled to the same trademark protection as inherently distinctive marks. The board cited E.I. du Pont de Nemours & Co. v. Societe Dupont, 161 USPQ 489, 491 (TTAB 1969) for this proposition. The Board also pointed out that there was no evidence that the term Manhattan was commonly used in the relevant field. Therefore, there was no basis for the Applicant to argue that the mark was entitled to a narrow scope of protection.

The Board compared both marks and held that based on the standard that a consumer does not retain a specific impression but instead a general impression, a consumer will find the marks substantially similar. The Board determined that if the two marks are used on overlapping goods, then there will be confusion, mistake or deception. In the case at bar, the term Manhattan is the dominant element of both marks. When comparing the goods, the Board held that both identifications (upholstered furniture and custom designed and crafted furniture) are broadly worded so that each respective mark encompasses custom designed and upholstered furniture. Therefore, the Board held that the goods were overlapping in scope. When goods of the parties overlap, then the degree of similarity required between the marks is not as great as it would be if the goods were diverse.

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Applicant sought to register the mark BUNGEE BLAST for a foam flying toy and hand-powered non-mechanical toy in class 28. The applicant applied for a standard character mark and disclaimed the term “BUNGEE”. The Examining Attorney refused the application citing a registration, BUNGEE GLIDERZ for toy airplanes, toy gliders, and toy sling planes in class 28 as a basis for a likelihood of confusion. The registrant disclaimed the term “GLIDERZ”. See In re Dennis Binkley, Serial No. 86429294 (May 30, 2017) [not precedential].

The Board initiated the likelihood of confusion analysis with reviewing the relatedness of the goods. The Board held that applicant’s identification was broad enough to include the toys identified in the registration and was therefore legally identical. In light of the same goods and the lack of restrictions in the identifications, the Board was able to presume that the goods travelled in the same channels of trade (toy stores) and would be sold to the same purchasers. This factor weighs in favor of finding a likelihood of confusion between the sources of BUNGEE BLAST and BUNGEE GLIDERZ.

Next the Board evaluated the similarities and the differences between the marks. The following factors were examined, appearance, sound, connotation and commercial impression. The Board stated the general rule that consumers maintain a general rather than a specific impression. If purchasers would assume there is a connection between the sources when encountering the marks, then it can be said that confusion is likely. The term “Blast” has several meanings which include among them, a sudden loud sound or a violent effect of an explosion. Conversely, the term “Glider” means a light engineless aircraft designed to glide after being towed aloft. The Board held that the second terms in the respective marks were distinct and that due to the second terms the marks differed significantly in sight, sound, meaning and commercial impression.

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The Trademark Trial and Appeal Board (the “Board”) decided this appeal a few days ago. The Board determined that the trademark PA’DENTRO when used in connection with liquor and liqueurs namely tequila, resembles the registrant’s mark ADENTRO for wines and causes confusion and/or deceives consumers under the Trademark Act. See In re Cruz, Serial No. 86845373 (May 10, 2017) [not precedential], where the applicant was seeking registration on the Principal Register for the mark PA’DENTRO in standard characters and the Examiner refused the application under 2(d) of the Trademark Act. A likelihood of confusion analysis will evaluate the probative facts in evidence.

A likelihood of confusion analysis will evaluate all the probative facts in evidence.  The two key considerations are similarities between the marks and similarities between the goods and/or services. When reviewing the likeness between the marks, the emphasis is on the general impression the average consumer will retain and not on a specific recollection. See In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009). In the case at bar, the Board held that the marks PA’DENTRO and ADENTRO have almost identical appearances and only have slight differences in sound. Moreover, the marks translate identically (to the English word “inside”), therefore they have the same meaning. In sum, the Board held that with respect to the marks, the similarities in sound, appearance and meaning create a similar overall commercial impression.

Next, the Board evaluated the relatedness of the goods. Keep in mind that the goods do not have to be similar or competitive to support a finding of likelihood of confusion. The goods need only be related in some manner or that the conditions surrounding the marketing permit the same persons to encounter the marks under circumstances that would give rise to a belief that the goods originate from the same source or  that both goods are associated with the same producer. The Examining Attorney introduced into evidence eleven use based registrations where the registrant sells both tequila and wine under a single brand.

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