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Marks Can Share Descriptive/Suggestive Terms If The Dominant Terms Indicate Source

Since about 90 percent or more of 2(d) cases appealed are affirmed by the Trademark Trial and Appeal Board (the “Board”), it is unlikely that the Board disagrees with the Examining Attorney’s conclusions. However, the Board did not see eye to eye with the Examining Attorney on this recently decided matter. In my opinion, the Board got this one right.  The Applicant was seeking to register the mark SIMONIZ CERAMICSHIELD for paint sealant for exterior surfaces of vehicles. The Examining Attorney refused registration based on the mark PLATINUM CERAMIC SHIELD in standard characters and PLATINUM CERAMIC SHIELD & Design for clear coating protectant for use on vehicles with the term “Ceramic”`disclaimed. The Board reversed finding the dominant word in each mark was the first term, SIMONIZ and PLATINUM respectively which allowed consumers to distinguish the sources of the sealant products. See In re Simoniz USA, Inc., Serial No. 85865135 (TTAB November 3, 2020).

In this case, the relatedness of the products was not disputed. Both products are used on vehicles to protect the exterior of the vehicle from environmental elements such as water, air etc. The analysis focused on the similarities and dissimilarities of the marks, since both the Applicant and the Examining Attorney agreed that the first du Pont factor was dispositive in this case. Often, properly identifying the dominant portion of the mark will lead to the ultimate conclusion of whether there will be confusion between the sources of two goods and/or services.

The Examining Attorney argued that the first terms in the respective marks, SIMONIZ and PLATINUM were suggestive and that the more distinctive terms were the shared terms “CERAMIC SHIELD”. The Examining Attorney submitted dictionary definitions for the words Simonize (meaning to polish) and Platinum (of a superior quality). However, the Board, did not agree with the Examining Attorney’s argument that the first terms were suggestive. The Applicant’s mark SIMONIZ CERAMICSHIELD does not use the spelling listed in the dictionary “Simonize”. In addition, the dictionary definition states that the term SIMONIZE has an origin in the term SIMONIZ which is a trademark for metal polish referring to Applicant’s mark. The Board also emphasized the fact that Applicant owns multiple SIMONIZ registrations for coating products for automobiles, including paints, sealants and polishes. The mark SIMONIZ has been in commerce in use with these types of products for over 100 years. SIMONIZ is the oldest brand of automobile products in the marketplace.

On the contrary, after reviewing the dictionary definitions of “Ceramic” and “Shield”, the Board concluded that these terms suggest that the goods will provide a ceramic based cover or shield for vehicles. Therefore, these suggestive or descriptive words will be given less weight in a likelihood of confusion analysis and will not function to indicate source. Since the dominant terms are the first terms, consumers will remember these lead terms. The terms, SIMONIZ AND PLATINUM will make the greatest impression on the relevant purchaser.

The Examining Attorney cited a line of cases where the Board found in several cases that if the registrant’s mark consisted of one term and this one identical term was incorporated into the Applicant’s mark containing additional terms for related goods, then consumers would be confused by the source of the two products. In two of the cases, the subject marks CORAZON and CORAZON BY CHICA and SPARKS and SPARKS BY SASSAFRAS were found likely to cause confusion for related goods. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007) [precedential]; See also In re Apparel Ventures, Inc. 229 USPQ 225 (TTAB 1986). However, the Board pointed out that this line of cases was inapplicable to the case at bar. To be applicable the cited mark would have to consist solely of the shared term CERAMIC SHIELD, and here the cited mark contains another term, (PLATINUM).  In addition, here PLATINUM is capable of functioning as a source indicator.

In the end, the Board determined that although the goods were related and distributed in similar trade channels, the marks were sufficiently different, and reversed the 2(d) refusal. Likelihood of Confusion refusals are challenging to overcome, and only experienced trademark attorneys will be able to craft persuasive and effective legal arguments to convince either the Board to reverse the refusal or persuade the Examining Attorney to withdrawal the refusal. If you have an Office Action and would like an opinion regarding the likelihood of overcoming the refusal, please contact the firm for a courtesy consultation.

 

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