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Articles Posted in Likelihood Of Confusion

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 See In re Druz, Serial No. 86614598 (January 22, 2018) [not precedential].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”.

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.

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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A recent Trademark Trial and Appeal Board (“Board”) decision from last week emphasizes the detailed analysis required when comparing a composite mark (in this case words and a design) to a design mark. Here, the applicant, the University of Houston System (“Applicant”) is seeking to register a mark, UHCL Hawks and a design of a flying hawk (view here) for various goods in international classes 16, 21, 25, and 41. Retail Royalty Company (“Opposer”) filed a Notice of Opposition based on the ground of likelihood of confusion based on its ownership of U.S. Registration 3878197 (hereinafter “Flying Eagle Mark”) a design image of a flying eagle (view here). Opposer’s Flying Eagle Mark is registered for various goods in class 3 (creams and perfumes etc.), 18 (handbags and wallets etc.), 25 (various apparel), and 35 (retail store services featuring clothing, sunglasses, jewelry etc.). Opposer claims rights in prior registered marks for AMERICAN EAGLE OUTFITTERS and “AMERICAN EAGLE family of marks” for a broad range of lifestyle products.

Opposer did not directly argue that its mark was “famous”, but did argue the Flying Eagle Mark was “strong and entitled to broad protection”. Opposer also stated that its mark has been used in widespread and extensive advertising and the company maintains strong sales in relationship to the branded goods. These statements were supported by substantial evidence. The net U.S. sales for the years 2010-2015 were over $3 Billion. However, the evidence showed that Opposer’s Flying Eagle Mark does not have a strong commercial presence or consumer recognition except with retail clothing goods and services.

Conversely, Applicant argued that the Flying Eagle Mark was not strong, but instead was dramatically diluted by the existence of numerous third party bird design marks for general retail including clothing. Applicant argued that purchasers have become conditioned to numerous bird marks in the marketplace and are capable of distinguishig the sources by small differences in the marks. Among the co-existing marks are bird designs of Hollister (owned by Abercrombie and Fitch) and Eddie Bauer. The Board reviewed numerous bird design marks submitted by the Applicant (120 were submitted) and referenced twelve in the decision stating,” we find the following as bearing the closest resemblance to Opposer’s (or Applicant’s) bird logo.” And of the twelve only a few were identified as bearing a strong resemblance. The Board stated that to assess the strength of the mark, they evaluate the inherent strength based on the trademark alone and also the commercial strength based on marketplace recognition by consumers.

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A Consent Agreement is a written agreement between two trademark owners where typically one party agrees that the other party can use and register its mark. It is usually triggered by a refusal issued in an Office Action by the USPTO. See our web page entitled, Resolving Trademark Disputes Without Litigation, for general information regarding how a Consent Agreement can aid in registering a trademark or in facilitating a resolution in a trademark dispute. In a recent case before the Trademark Trial and Appeal Board (the “Board”) it was determined that the parties’ Consent Agreement was not sufficient to avoid a likelihood of confusion between the sources of the trademarks. See In re Bay State Brewing Company, Inc., Serial No. 85826258 (TTAB February 25, 2016) [precedential], where the Board in a precedential decision determined that despite the parties’ Consent Agreement, consumer confusion was likely to occur.

Bay State Brewing Company, Inc. (the “Applicant”) filed an application for the mark TIME TRAVELER BLONDE in standard characters for beer. The Examining Attorney refused the application on the grounds that when the mark TIME TRAVELER BLONDE is used with the Applicant’s goods it causes a likelihood of confusion with a previously registered word mark, TIME TRAVELER for beer, ale, and lager. There was a final refusal issued and an appeal followed.

Under a 2(d) analysis, all the du Pont factors that are relevant to the facts in evidence are considered. The Applicant offered a Consent Agreement for consideration. It is relevant because it relates to the market interface between the Applicant and the Registrant. Regarding the relatedness of the goods, both parties are using the trademarks to brand beer. Therefore the goods are identical with respect to beer. Because the goods are in part identical, the trade channels and classes of consumers are presumed to be the same. Another factor weighing in favor of finding a likelihood of confusion is the condition of sale. Beer is inexpensive and often subject to impulse purchases.

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One of the many grounds an Examining Attorney can cite for a refusal of a trademark application is likelihood of confusion between a proposed trademark and a mark contained either in a pending application or a prior registration. A Section 2(d) Refusal is a trademark refusal based on likelihood of confusion grounds. If dissatisfied with a refusal, an applicant can appeal the decision to the Trademark Trial and Appeal Board (“TTAB” or “Board”) of the United States Patent & Trademark Office (“USPTO”). This is an extremely common ground for refusal, however when appealed often the refusal is affirmed. In the year 2014, there was a 90% affirmance rate for refusals based on likelihood of confusion grounds. Recently, the Board issued a reversal, see In re SDI Petroleum, LLC, Serial No. 86011946 (November 30, 2015).

The applicant in In re SDI Petroleum, LLC was seeking registration of the mark DASH NEIGHBORHOOD for retail store services featuring gasoline. The Examining Attorney refused the application based on prior registrations for the marks DASH IN and D DASH & Design for retail store services featuring convenience store items and gasoline. The registered marks are owned by the same registrant. The applicant requested reconsideration and that was denied and the appeal proceeded.

A likelihood of confusion analysis will consider all relevant facts in evidence and the factors set forth in In re E.I. du Pont de Nemours & Co 476 F.2d 1357, 177 USPQ 563 (CCPA 1976). The Board first reviewed the services. The marks contained services that were in part identical. There were no restrictions in the identification of services pertaining to the channels of trade. Since the identifications were in part identical, it is presumed that the trade channels and classes of consumers are overlapping for those identical services. Therefore, trade channels and services weigh in favor of finding likelihood of confusion.

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