A recent precedential case from the Trademark Trial and Appeal Board (“TTAB” or the “Board”) highlights the problems associated with adopting weak marks. See Shenzhen IVPS Technology Co. Ltd. V. Fancy Pants Products, LLC, 2022 USPQ2d 1035 (TTAB 2022) [precedential], where the Board dismissed an opposition under Section 2(d) of the Lanham Act because the weakness of the common element SMOK/SMOKES mandated the opposer’s mark be given a narrow scope of protection. In addition to battling enforcement of a weak mark, the opposer did not prove an overlap of trade channels. However, the Board determined that opposer’s electronic cigarettes were related to the applicant’s cigarettes containing tobacco substitutes because both products could be used for the same purpose, vaping or smoking a substance.
Regarding the marks, the Board also held that Applicant’s SMOKES (& Design) mark was the phonetic equivalent of Opposer’s mark, SMOK mark. The interesting twist to this precedential decision is that typically once the Board determines the marks are phonetic equivalents and the goods are related, often the opposition based on 2(d) grounds is sustained, but not so here. Here, the weakness of the opposer’s mark played a pivotal role in dismissing the opposition. See our firm page, Disadvantages of Descriptive Trademarks, for more on this topic.
The mark SMOKES or its phonetic equivalent SMOK is descriptive in connection with Opposer’s electronic cigarettes, parts, and accessories and retail store services featuring those goods. Therefore, the applicant correctly argued that the common wording [SMOKES and SMOK] dictated a narrow scope of protection be given to opposer’s mark due to its descriptive nature. In fact, the Board relied on the well-established principle that when the word portion of a mark is highly suggestive or descriptive, the presence of a design may be a more significant factor. See In re Hamilton Bank, 222 USPQ 174, 179 (TTAB 1984).
Moreover, if the shared element of the two marks is “weak” in that it is generic, descriptive, or highly suggestive of the goods or services identified in the application or registration, then other matter in the marks may be sufficient to obviate confusion. See In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986). See also, See Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, at *17 (TTAB 2020). The Board held that the pronunciations were similar and so were the meanings of the applicant’s and the opposer’s marks. Lastly, the Board stated, “Opposer’s SMOK mark and the literal portion of Applicant’s composite mark, SMOKES, have similar commercial impressions because they may evoke smokable goods or goods used for smoking.” However, when considering the marks in their entireties, the Board emphasized that the design features in the applicant’s mark were sufficient to distinguish it from opposer’s mark to avoid confusion. The first DuPont factor favored no confusion.