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Weak And Descriptive Marks Are Entitled To A Narrow Scope of Protection

The Trademark Trial and Appeal Board (the “Board” or “TTAB”) recently reversed a refusal to register a mark on the grounds of likelihood of confusion. See In re Marathon Tours, Inc., Serial No. 86086458 (January 23, 2020) [not precedential]. In this case, it was a bit surprising that the Board justified its decision based solely on the marks being sufficiently different while finding the other relevant factors weighing in favor of finding a likelihood of confusion. The decision underscores a point that cannot be emphasized enough in trademark practice; descriptive marks severely restrict the scope of protection for those terms. The Board focused on the descriptive and generic terms in the registered mark.

The applicant was seeking registration on the Principal Register for the mark ANTARTICA MARATHON, in standard characters for “travel services, namely, organizing and arranging travel, travel tours, excursions, and sightseeing travel tours; providing travel guide and travel information services; and making transport reservation.” The applicant claimed acquired distinctiveness under 2(f) of the Trademark Act. The Examining Attorney accepted the 2(f) claim. However, the Examining Attorney cited the mark ANTARCTIC ICE MARATHON & 100K and Design for “Athletic and sports event services, namely, arranging, organizing, operating and conducting marathon races,” as likely to cause confusion with the applicant’s mark. The cited registration had a disclaimer for the term “ANTARCTIC ICE MARATHON & 100K” and for the design of the geographic representation of Antarctica. Upon issuance of a final refusal, the applicant appealed the refusal to register.

In its decision, the Board focused first on the marks. The shared terms in the parties’ marks were variations of “Antarctica” and “Marathon”. These terms are weak in relationship to the services. Registrant had to disclaim the terms since one describes the geographic location of the services and the other the type of race. Determining the strength of the terms is an important part of the analysis. See our recent blog post entitled, How To Overcome A 2(d) Likelihood Of Confusion Refusal, wherein it was emphasized, if shared terms are descriptive, additions to a mark may suffice to avoid likelihood of confusion. See also, the Trademark Manual Of Examining Procedure §1207.01(b)iii which discusses this point.

This rule emphasizes that if the terms common to both marks are generic or descriptive, it is unlikely that the terms will be perceived by consumers as source indicators, and that other differences between the marks may be adequate to obviate confusion. In other words, if consumers will not rely on the shared terms to distinguish source, additional terms in the mark may be able to differentiate the sources. Since the registrant’s mark contains generic and highly descriptive terms, the mark will receive a narrow scope of protection. The board concluded that applicant’s mark did not fall within the narrow scope of protection and therefore, the first du Pont factor weighed against finding confusion.

Regarding the relatedness of the services, the Examining Attorney produced evidence from the Internet showing third parties provided the type of services identified in the application, travel, hotel and touring services as well as the services in the cited registration, operation of marathon races. Additionally, the applicant admitted that its organization provided both travel services and operation of marathon services. The Board determined that the services were complementary and related, and that the services traveled in like trade channels to similar classes of consumers. The second and third du Pont factors favored finding confusion.

The applicant attempted to argue that the seventh (no actual confusion) and eighth (co-existence) du Pont factors favored finding no likelihood of confusion. However, the Board disagreed with the applicant, and held these factors were neutral in the analysis. The Board’s decision regarding these two factors was made in the context of the appeal being an ex parte proceeding. Therefore, there was no opportunity for the TTAB to hear from the registrant on the two issues of actual confusion and co-existence.

In reversing this refusal to register, the Board relies on the principal that one du Pont factor in the analysis can be dispositive. The Board cited Kellogg Co. v. Pack’em Ent. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular case, a single DuPont factor may not be dispositive.”) to support this premise.  In the end, the TTAB found the marks were dissimilar in sight, sound, meaning and commercial impression. If you have questions regarding the likelihood of confusion analysis, please contact the firm for a courtesy consultation.