Tag: likelihood of confusion

United States Trademark Application Refusals Based on Likelihood of Confusion

Arguing the Weakness of Cited Trademarks

Topic Focus: United States Trademark Application Refusals Based on Likelihood of Confusion

Introduction / Summary

A recent U.S. Trademark Trial and Appeal Board (“TTAB”) decision (In re Elephant Learning, LLC) highlights certain risks that trademark owners encounter when seeking U.S. trademark registration.

In this case, Applicant sought registration of the mark ELEPHANT LEARNING MATH ACADEMY (LEARNING and MATH ACADEMY disclaimed) for downloadable children’s educational mobile applications; downloadable educational mobile applications featuring instruction in math.

The Examining Attorney refused registration on the basis Applicant’s mark is confusingly similar to the following registered marks:

1. ELEPHANT GAMES (GAMES disclaimed) for computer game programs, electronic game programs, computer game programs downloadable via the Internet, downloadable electronic game programs, electronic game software for cellular telephones, and

2. ELEPHANT GAMES and Design (GAMES disclaimed) for video screens; electronic notice boards; video game cartridges; computer keyboards; mouse pads; computers; notebook computers; computer hardware, namely, monitors; recorded computer programs for entertainment, namely, game software; computer game programs for personal computers and for mobile devices for entertainment; computer programs, namely, downloadable game software for personal computers and for mobile devices for entertainment; downloadable electronic publications, namely, game guidelines and instructions for use; downloadable electronic publications, namely, brochures, articles, newsletters, magazines, trading cards and postcards in the field of entertainment; computer peripheral devices.

Examining Attorney’s Arguments

The Examining Attorney concluded that the parties’ respective marks are essentially the same because the marks share the same dominant term ELEPHANT, Applicant’s goods are highly similar to the cited registrant’s goods and channels of trade within which the parties’ respective goods travel and the customers for those goods are the same.

In so holding, the Examining Attorney argued, in part, that the:

dominant feature of each mark is the term “ELEPHANT” because this term appears first in each mark and it is most likely to be impressed in purchasers’ memories;

other elements in each mark are less significant because the trailing terms GAMES and LEARNING and MATH ACADEMY have been disclaimed; and

design element in one of the cited registrations would not be verbalized.

When the Examining Attorney issued the Final refusal, Applicant appealed that decision to the TTAB.

Trademark Application Refusals Based on Likelihood of Confusion
U.S. Patent and Trademark Office
TTAB Appeal and Decision

On appeal, and during the examination process, Applicant argued, in part, that although the parties’ respective marks share the same term ELEPHANT, the term ELEPHANT is nonetheless a diluted term (or weak) in that there are many registered marks that incorporate the term ELEPHANT for similar goods and services. Accordingly, Applicant argued, the parties’ respective marks are overall sufficently dissimilar when viewed as a whole.

With respect to Applicant’s argument that the term ELEPHANT should receive narrow and limited trademark protection, it referenced other third-party trademark registrations for ELEPHANT-formative marks for relevant goods and services. Those marks include:

BUBBLES THE ELEPHANT

ELEPHANT TREASURES

ASIAN ELEPHANT

BULL ELEPHANT

GREAT ELEPHANT

ROYAL ELEPHANT

The TTAB agreed with Applicant and stated, in part:

Because similarity is determined based on the marks in their entireties, our analysis is not predicated on dissecting the marks into their various components… On the other hand, “there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”

Due to the third-party registrations of ELEPHANT-formative marks for software, we accord the cited registered marks a somewhat narrower scope of protection than that to which marks with inherently distinctive terms normally are entitled.

We agree that the marks are similar because they share the identical, leading literal term ELEPHANT. However, the evidence discussed above demonstrates that the common term ELEPHANT is somewhat weak due to the various third-party registrations for software. The different connotations of the trailing words GAMES and LEARNING MATH ACADEMY significantly contribute to the different commercial impressions of the marks, as GAMES describes the computer games identified in the cited registrations, and LEARNING MATH ACADEMY describes the purpose of Applicant’s educational mobile applications, which children will use to learn math. When considered in their entireties, and keeping in mind the relative weakness of the only common term shared by the marks, namely ELEPHANT, we find Applicant’s mark and the cited registered marks to be more dissimilar than similar in appearance, sound and meaning, and overall, to convey dissimilar commercial impressions.

Although the TTAB acknowledges that:

  1. the parties’ respective marks share the same dominant term,
  2. the remaining elements of the parties’ marks are non-distinctive,
  3. the goods of the parties are legally identical, in part, and
  4. the goods of the parties move through the same channels of trade to the same class of buyers,

the Board held there is not a likelihood of confusion as to the source of the parties’ respective goods due to the diluted nature of the common term appearing in the parties’ marks. The TTAB also noted Applicant’s prior registrations for ELEPHANT-formative marks.

Decision: The refusal to register Applicant’s mark is reversed under Trademark Act Section 2(d).

This decision overturns the Examining Attorney’s refusal and allows the mark to proceed to the publication phase of the application process.

A Few Take-Aways

1. This case highlights that although selected marks are arguably eligible for trademark use and registration, the process of registering trademarks may encounter significant obstacles during the application review process. Also, those obstacles can be costly and time consuming.                       

2. In my experience (as a private practitioner and as a former USPTO Trademark Examining Attorney), these types of citations can be anticipated based on how Examining Attorneys are trained to handle trademark applications and third-party citations.                                                                     

3. Trademark Examining Attorneys typically DO NOT entertain the “diluted and weakness” argument as the sole reason for withdrawing citations; an argument that prevailed in this case. That is so because they cite to case decisions that state that even weak marks are entitled to some scope of protection.

4. Certain trademark Examining Attorneys may take a more conservative approach during the application process. Therefore, understanding that trademark law is subjective and one cannot predict how a mark may be perceived by the assigned Examining Attorney are intangible factors that must be considered.   

5. There are decisions rendered by the TTAB that many believe are wrong. This decision may be among them based on past TTAB decisions with similar facts.                                                                      

6. Understanding the potential obstacles to registration is critical. Therefore, undertaking a trademark search before filing an application is an important step in the application and trademark adoption process.

7. To avoid these potentially significant and time-consuming obstacles, including trademark application refusals based on likelihood of confusion, taking a more conservative approach during the search and adoption phase is recommended.

Podcasts: To learn about how to select and register valuable trademarks, including avoiding trademark application refusals based on likelihood of confusion, listen to our podcasts, including here and here.

Trademark FRUTTA DI VITA Confusingly Similar to Registered Trademark FRÜT A VIE Says U.S. Patent and Trademark Office: Put on Your “Judge Hat” and Opine

Another recent trademark decision rendered by the U.S. Trademark Trial and Appeal Board (the “Board”) has, again, highlighted the importance of trademark selection and the intricacies of trademark clearance and trademark infringement analysis.  

In that case, the trademark applicant sought registration of mark FRUTTA DI VITA for “cosmetics and cosmetic preparations; concealers; cosmetic facial blotting papers; cosmetic sun-protecting preparations; and cosmetic sun-tanning preparations.” 

The U.S. Patent and Trademark Office Examining Attorney refused registration of the mark FRUTTA DI VITA on the basis it is confusingly similar to the registered mark FRÜT A VIE for “cosmetic creams for skin care; cosmetic preparations for skin renewal; skin and body topical lotions, creams and oils for cosmetic use; wrinkle removing skin care preparations.” 

FRUTTA DI VITA

    VS.

FRÜT A VIE

                      

When the Applicant appealed the refusal to register its mark, the Board affirmed the Examining Attorney’s rejection based primarily upon the following four trademark principles and findings: 

  1. The goods listed in the parties’ respective filings are identical or essentially identical. 
  2. Since there are no limitations set forth in the parties’ respective filings as to the channels of trade in which their goods travel (i.e., professional buyers vs. retail consumers), the goods are presumed to travel in all normal (thus overlapping) channels of trade.
  3. Buyers of the parties’ respective goods are presumed to be the same/overlapping. 

Applicant argued that the applied for mark is used exclusively for higher-priced anti-aging skin preparations and not for general cosmetics or general skin care preparations and the buyers for its goods are well-informed consumers, thus consumer confusion between the marks is unlikely.  Unfortunately for Applicant, however, the USPTO must compare the parties’ respective goods as identified in their trademark filings, which, in this case, were presumed to be identical or essentially identical cosmetic and skin care preparations and also presumed to travel in the same channels of trade to the same class of buyers. 

  1. The marks FRUTTA DI VITA and FRÜT A VIE are similar in terms of appearance and sound. 

During its analysis of the parties’ respective marks, the Board concluded that Applicant’s mark FRUTTA DI VITA translates into English as FRUIT OF LIFE, while the cited mark FRÜT A VIE has no direct English translation; thus the “doctrine of foreign equivalents” would not apply in the case. 

However, the Board held that the parties’ respective marks are sufficiently similar in terms of appearance and sound so as to cause a likelihood of consumer confusion – or trademark infringement.  The Board stated the following: 

  • “Thus, while in some respects, the marks differ in appearance, their basic structure (including first and last words beginning FRUT— and VI—, respectively) and their general appearance of foreignness are more likely to be recalled by consumers than the more detailed and specific differences between them.” 
  • “Finally, we find that the marks are also similar in their sound or pronunciation.” 

The Board correctly noted that the test for whether marks are likely to cause consumer confusion as to the source of goods and services is not based upon a side-by-side comparison of the marks, but rather based upon the recollection of marks by the average consumer.    

Two important trademark principles applied in this case are that (1) when the goods or services of the parties are identical or essentially identical, the marks of the parties need not be that close or identical to support a finding of likelihood of consumer confusion – or trademark infringement and (2) trademark infringement analysis with respect to the marks is not based upon whether there is another party using the same mark, but rather whether there is another party using a confusingly similar mark – one that would likely cause consumer confusion as to the source of the parties’ respective goods or services. 

One can certainly check the USPTO database to see if someone has already filed an application for a specific mark with a specific spelling.  However, one must also check the USPTO database for third-party marks that are confusingly similar to a proposed mark.  Also, since U.S. trademark rights are created based upon actual use in the marketplace and not registration, one must not only consider registered trademarks (state and federal) but also common law (unregistered) trademarks and even business names. 

When brand owners are selecting new brand names / trademarks (including logo designs), they should consider my rule of “The Four D’s of Trademark Selection.”    

Brand name selection does not have to be that difficult.  Proper consideration of brand names does take time and thought-provoking analysis, however.  Not considering the rule of the Four D’s could potentially prove fatal for a company’s new product launch and, as I have said before, could be the difference between brand success and failure.