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Similarity In Meaning Must Be Weighed Against Dissimilarities In Appearance And Sound

In a rare reversal by the Trademark Trial and Appeal Board (the “Board” or the “TTAB”), it was determined that there was no confusion among the marks NABOSO (English translation barefoot) and BAREFOOT for overlapping goods. See In re Naboso Technology, LLC, Serial No. 87236262 (February 27, 2019) [not precedential], where the applicant filed a trademark application for the foreign term NABOSO, a Czech word that translates to barefoot in English. The applicant’s goods included orthotics, yoga mats, and rubber flooring while the Registrant owned four marks, two for BAREFOOT in standard characters, and two for BAREFOOT Composite marks for orthotics, for rubber floor mats, and yoga accessories including yoga exercise mats. This case although not a precedent of the TTAB is a good case to cite if the applicant is faced with the Doctrine of Foreign Equivalents in a 2(d) refusal.  Based on In re Naboso Technology, LLC, the applicant should argue that the Examining Attorney or Board must weigh all the relevant du Pont factors in a confusion analysis, in particular all the elements of mark similarity, including appearance, sound and commercial impression against the similarity of meaning before rendering a decision.

The Board reminds us that the most important inquiry in a likelihood of confusion analysis is the cumulative effect of the similarities or the differences in the marks and the goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).The applicant in this matter does not dispute that the goods are related. In fact, with the exception of applicant’s flooring the goods were identical to the registrant’s products. Therefore, the Board presumed that the channels of trademark and relevant consumers were the same. Both of these du Pont factors favored finding a likelihood of confusion.

Next the Board examined the similarities of the marks. The strength of a trademark is determined by both its inherent distinctiveness (conceptual strength) and its marketplace strength. To ascertain the conceptual strength, one must determine where the mark lies on the continuum, frequently referred to as the spectrum of distinctiveness. To learn more about determining the strength of a trademark, see the firm web page entitled, The Importance Of Selecting A Distinctive And Inventive Trademark. Both marketplace strength and inherent distinctiveness are reviewed under the du Pont factor known as the number and nature of similar marks in use on similar goods. It is important to keep in mind that the relevance of third party marks depends on whether or not the marks are in use in commerce. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 UsPQ2d 1689 (Fed. Cir. 2005).

Regarding marketplace strength, the applicant in the case at bar submitted third party registrations using the term barefoot, but most of the third party registrations were for goods unrelated to the applicant’s goods. The Federal Circuit has emphasized that under the sixth du Pont factor, third party registrations must be in use on related or similar goods and services to be probative. In addition, there must be a “substantial” number of these types of third party registrations. See Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 1271 USPQ2d (TTAB 2009), aff’d 415 Appx. 222 (Fed. Cir. 2010), where the Board held that twenty-nine third party uses and registrations were persuasive evidence. See also, Juice Generation, Inc., 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015), where the TTAB held that twenty-six third party uses were extensive evidence of weakness of the mark. In Jack Wolfskin Austrustung Fur Draussen GmbH & Co. KGAA v. Millennium Sports, sixteen similar marks in use for similar goods were held sufficient to show the mark was weak. Lastly, see In re Boston Juicery, LLC, Serial No. 86877537 (August 21, 2018), where the Board held that twelve third party registrations proved that the mark was highly suggestive, and conceptually weak.

In the case at bar, the applicant listed eleven third party marks, but only submitted six certificates of registration and did not properly admit those into evidence. Thus, the Board couldn’t find that the mark was weak due to third party uses, but concluded it was conceptually weak based on the definition of “barefoot” and the identified goods. In the end, the Board reversed the refusal based on the dissimilarities of the marks. Although, the doctrine of foreign equivalents would most likely apply here, and the meanings would therefore be identical, the appearance and sound of the marks are dissimilar and weigh against finding confusion. If you have questions regarding trademark registration, please feel free to contact the firm for a courtesy consultation.