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Articles Tagged with Confusion Is Not Likely If The Shared Term Is Descriptive

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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.

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