Articles Tagged with Not Enough Third Party Evidence To Show Weak Mark

A recent decision issued by the Trademark Trial and Appeal Board (“TTAB” or the “Board”) finds women’s athletic clothing and bicycle clothing related to electric bicycles for purposes of likelihood of confusion. The Applicant filed a trademark application for the mark LUNACYCLE in standard characters on the Principal Register for electric bicycles and related parts (frames and motors) in international class 12. The Examining Attorney refused the application citing the registration for the mark LUNA in a stylized format, view the stylization here,  for women’s bicycle clothing and clothing accessories in international class 25. Applicant appealed to the Board. See In re Cycles, Serial No. 87132160 (September 18, 2018).

The marks at issue must be considered as a whole and not dissected. More or less weight may be given to a particular aspect of the mark or a particular feature. Therefore, the visual appearance may be enough to conclude the marks are similar, the sounds of the marks when pronounced may be sufficient, the meanings of the marks in and of itself may be adequate to determine that this du Pont factor favors finding a likelihood of confusion. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Applicant argued that his mark incorporated the word lunacy, but there was no reason to believe consumers purchasing bicycles would perceive the term LUNACYCLE  as “lunacy cle”. The Board pointed out that there is no correct pronunciation for a trademark, and that it is more likely that consumers of bicycles would understand that the mark represented two words Luna and Cycle. Moreover it is likely that the consumer would focus on the arbitrary word Luna and less significance would be given to the generic word cycle.

In regard to the registrant’s mark, even though it contains a word LUNA and design features, the word is considered the dominant element of the mark, since consumers will use the word element to request the goods. Therefore, the term LUNA is the dominant feature of both marks. The rectangular feature of the mark is quite common and thus, not given much weight in the commercial impression, similar to a descriptive word that is disclaimed in a trademark. The Board concluded that the design features in registrant’s mark did not lessen the similarities between the marks, and that the similarities weigh in favor of finding a likelihood of confusion.

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