Important Rules Applied In Likelihood Of Confusion Cases

A few weeks ago the Board issued a decision in In re Vox Media Inc., Serial No. 87099703 (July 18, 2018) [not presidential]. This case is instructive on multiple general rules that are commonly applied by the Board when determining if there is likelihood of confusion between the sources of two marks. In this case, the Examining Attorney refused the applicant’s mark on the grounds of likelihood of confusion. The decision sets forth rules that practitioners and applicants must keep in mind when clearing trademarks, filing for trademarks, responding to office actions, and lastly when determining if an appeal or an opposition or cancellation should be filed. The marks in the instant case are CODE2040 (the cited registrant’s mark) and CODE (the applicant’s mark).

The services for CODE2040 are: “Educational services, namely, providing internships and apprenticeships in the fields of engineering and technology; educational services, namely, providing workshops, classes, and retreats in the fields of leadership, business, entrepreneurship, technology, engineering, design, job searching, job interviewing skills, and professional networking”.

The services for CODE are: “Educational services, namely, arranging, organizing, and conducting educational events, conferences, seminars, and symposia in the fields of media, technology, business, commerce, consumer products, entrepreneurship, startup businesses, enterprise technology, digital technology, and mobile platforms.”

Goods and services are compared by the identifications set forth in the applications and registrations. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Extrinsic evidence will not be viewed, only the language used to identify the goods and services in the application or registration is relevant. See In re I-Coat Co., LLC, 126 USPQ2d 1730 (TTAB 2018). As long as there is overlap in any one good or service the other goods or services need not be examined, because likelihood of confusion will be found in connection with the class of goods or services with any overlap at all. See In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010).

Since the services were identical in part and overlapping, special rules apply. the Board presumes the distribution channels and the classes of consumers are the same. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). In addition, the Board will also require a lesser degree of similarities between the marks. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Thus, in the case at bar, the second and third du Pont factors weigh in favor of finding a likelihood of confusion.

Next the Board reviewed the marks. It held that the two trademarks share the term, “code” and this makes them similar in appearance and pronunciation. Another general rule employed by the Board is that the focus is on the memory of the average consumer, who retains a general recollection not a specific impression of the marks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016). The Board goes on to state another common rule: the first term in a mark is more likely to be remembered by the average consumer. See Presto Products Inc. v. Nice-Pak Products, Inc.,9 USPQ2d 1895, 1897 (TTAB 1988). This is true especially if the second term or element in a mark is descriptive or informational, like in the case at bar with the second term being the date 2040. Lastly, the Board cites the rule that if one mark incorporates the entirety of the other mark, likelihood of confusion is frequently found. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010).

The Board reviewed the applicant’s specimen, reminding practitioners that an applicant’s use of the mark is relevant to the determination of connotation and commercial impression. Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984). Regarding third party registrations, the applicant presented only nine registrations using the term “code” for educational services. The Board held that nine registrations fell short of the extensive and voluminous use evidence presented in Jack Wolfskin and Juice Generation, where third party registrations and use evidence was used to show that a mark was weak and should be given a narrow scope of protection. The applicant in Jack Wolfskin presented 26 third party uses or registrations of record.

Regarding the sophistication level of consumers, in the case at bar it ranged from sophisticated to unsophisticated first time students. The Board stated that it would base its decision on the least sophisticated potential purchaser. Finally, applicant presented evidence that in four years of simultaneous use, there was no actual confusion. The Board held that in an ex parte context, lack of actual confusion is given very little weight. Thus, this du Pont factor would be neutral. In the end, the Board affirmed the refusal to register relying heavily on the finding that the services were in part legally identical and that the marks had several similarities. Please feel free to contact our office for a courtesy consultation, if you have questions concerning likelihood of confusion determinations or other trademark related inquiries.