Cases for Discussion: Likelihood of Confusion in the PTO

Analysis of the Similarity of Marks During Examination

Case No. 1

Application
To register KENNETH for "coats, jackets, overcoats, rainwear and topcoats, suits, blazers, shirts, slacks, dresses, sweaters, jeans, t-shirts, sweatshirts, swim wear, shorts; underwear, loungewear, lingerie, robes and pajamas; neckwear, scarves, gloves, mittens, headwear, belts; footwear, socks and hosiery."

Office Action
Refused, citing KENETH KNITS, for "knitted tops." The dominant part of the KENETH KNITS mark is KENETH. Applicant's "shirts" and "sweaters" could be knitted.

Response
There are numerous third party registrations containing KENNETH, and therefore the marks are weak. Applicant's and Registrant's clothing are sold in different trade channels. Clothing buyers are sophisticated purchasers.

Case No. 2

Application
To register LAWORLD and the LAWORLD Logo for "legal services performed by the members of the applicant," a law firm.

Office Action
Refused, citing LAWWORLD, registered for "providing access to an on-line computer database and bulletin board service featuring advertisement and marketing information for legal products and services offered to users of a global computer network; on-line computerized ordering of legal products and services." All three marks project the commercial impression of "law world."

Response
Applicant's marks and Registrant's mark are visually distinct, and the cited mark is weak. Applicant's services are provided by lawyers to clients, while Registrant's services are provided to lawyers for use in their practices. Applicant's services are not provided over the Internet as are Registrant's. The buyers of the two companies' services are sophisticated.

Case No. 3

Application
To register ST. CLAIR APPAREL for "men's, women's and children's clothing, namely, tops, sport shirts, T-shirts."

Office Action
Refused, citing three registrations: CARLY ST. CLAIRE for "clothing, namely, sweaters"; MARIE ST. CLAIRE for "women's clothing, namely, dresses"; and NINA ST. CLAIRE for "women's clothing, namely, skirts, pants, shorts, culottes, jackets, vests, jumpsuits, blouses, shirts, tops, belts and scarves." It is common for clothing companies to market under both full names and surnames alone, citing examples of the registered marks CLAIBORNE and LIZ CLAIBORNE; LAUREN and RALPH LAUREN; and ADRIENNE VITTADINI and VITTADINI SPORT.

Response
Applicant's mark would be understood to refer to a (fictitious) place called St. Clair, rather than to a person named St. Clair. The shared portion of the registered marks, ST. CLAIRE, is weak. Since the three cited marks coexist, so can Applicant's mark.

Analysis of the Relatedness of Goods and Services During Examination

Case No. 4

Application
To register DATAGUARD for "electronic data vaulting services in the nature of electric data storage."

Office Action
Refused, citing DATAGUARD, registered for "computerized business information system providing protection, storage and retrieval services."

Response
Applicant allows customers to store data over telecommunications lines, while Registrant picks up and delivers physical data storage media. Both companies' customers are sophisticated businesspersons. DATAGUARD (data + guard) is a weak mark in this field.

Case No. 5

Application
To register HOT SEAT for "insulated cushions for fishing, hunting and outdoor use to insulate the buttocks from and conform to irregular surfaces."

Office Action
Refused, citing HOT SEATS, registered for "furniture, namely, fireside benches." Third parties have registered marks for both cushions and benches.

Response
The meaning of the marks would be perceived differently: Applicant's suggests a comfortable seat in challenging conditions, while Registrant's suggests the warmth of sitting by a fire. Applicant's cushions are designed for use on uneven surfaces, while Registrant's benches present a uniform surface; therefore, the two would not be used together. Applicant's cushions would not be sold in a furniture store, as would Registrant's benches.

Case No. 6

Application
To register CANDY PLANET for "a full line of candy, ice cream and frozen confections sold separately and as a unit with toys."

Office Action
Refused, citing COOKIE PLANET, registered for "bakery products, namely, cakes, cookies, pastries, breads, brownies, blondies and muffins; confectioneries, namely, fudge." The dominant portion of both marks is PLANET. Numerous third parties have registered marks for both applicant's and registrant's goods.

Response
Applicant's candies are sculpted in the form of animated characters or human action stars, or are used to fill toys having those shapes, while Registrant's mark is used on premium gift cookies with gourmet ingredients. There are 37 registrations for marks containing PLANET for baked goods, confectionary items, or closely related food products, and therefore the registered mark is weak. Registrant's good are sold only by phone, mail, and online.

Case No. 7

Application
To register SURE PAY for "banking services directed to corporate and business customers, namely, a security service monitoring checks deposited by such customers to detect fraudulent check prior to posting."

Office Action
Refused, citing SUREPAY, for "overdraft protection and line of credit services." The marks are identical, and both marks are used with services offered by banks in relation to checking accounts.

Response
Applicant's services are offered exclusively to business customers, while Registrant's overdraft protection services would typically only be used with consumer accounts; line of credit services are not closely related to Applicant's services. Applicant's customers are sophisticated and will not assume there is a relationship based on the similarity of the marks. Furthermore, the marks have different connotations: Registrant's mark suggests, in relation to its services, that checks are sure to be paid, while Applicant's mark suggests, in connection with its services, that only authorized checks will be paid. Moreover, the Registrant's mark is weak: it is highly suggestive and there are five registrations of SUREPAY owned by third parties for various financial and insurance services.

Analysis of the Similarity of Marks and Goods in Opposition

These cases arise in a different context: The Examiner approved the mark for publication, believing that there was no likelihood of confusion based on earlier-registered marks, but the applications were opposed by others prior to registration.

Case No. 8

Application
To register SLIM FATS for "vitamin and mineral dietary supplements."

Opposer's Position
Applicant's mark should be refused registration because it creates a likelihood of confusion with Opposer's name and earlier registered mark SLIM-FAST for: "protein food supplement"; "beverage powder meal replacement mix"; and "dietary meal replacement nutritional bars, and instant pudding meal replacement mix." Third parties sell both Applicant's and Opposer's goods under the same name or mark. Opposer's mark is well-known due to extensive advertising.

Response
The marks have different connotations due to the different meanings of FAST and FATS. Applicant's products cannot be substituted for Opposer's products, and vice versa. Applicant's products are sold in specialty boutique chains, while Opposer's products are sold in supermarkets. Numerous third parties use SLIM or FAST in marks for similar goods, so Opposer's mark is weak.

Case No. 9

Application
To register WALCOM and WALCOM with a design element for "rental of computer hardware to companies for employee computer training; leasing computer facilities to companies for employee computer training; registration of participants for others at computer conferences and seminars; computer consulting services to businesses for the optimum layout of office computer hardware."

Opposer's Position
Applicant's mark should be refused registration because it creates a likelihood of confusion with Opposer's earlier registered mark WACOM for "computer input hardware, namely, digitizers." The marks are virtually identical, differing only in one interior letter, and both create the similar commercial impression of being a surname. Employees may use Opposer's digitizers during computer training, and the application is broad enough to cover them. Although Opposer sells its digitizers rather than renting them, the method of acquisition is insignificant.

Response
The two marks are not likely to be confused due to the clear difference in sound and pronunciation between wa-com and wal-com. There is a difference between purchasing a product which carries a particular brand and renting a product from a company whose rental services are provided under that brand. Consumers will perceive the difference. Moreover, Applicant's services cover the entire business of computer training, from finding and designing facilities, to providing conference registration services. The relationship to digitizers is tenuous at best.

Case No. 10

Application
To register SPACECAM for "stereoscopic, virtual reality products, namely, video cameras, computer port interface boards, device drivers for stereoscopic viewing devices, and data and computer software recorded on magnetic tape and compact disks for making and viewing stereoscopic presentations."

Opposer's Position
Applicant's mark should be refused registration because it creates a likelihood of confusion with Opposer's name and common law trademark and service mark SPACECAM, which has been used in connection with "rental of remote-controlled, gyro-stabilized cameras used in photography and filming of motion pictures, television productions and commercials" and "photography and filming of motion pictures, television productions and commercials." The marks are identical, and Opposer's projects have included the motion pictures displayed by amusement parks to create simulated motion rides. All of the equipment rented by Opposer displays the SPACECAM mark in large lettering, and its films contain the SPACECAM name in the screen credits.

Response
Opposer's highly specialized products have no relationship to the "end-user" equipment on which Applicant uses its marks. That cameras are involved in both applications is irrelevant.

Case No. 11

Application
To register SEVERE ATTITUDE (stylized) for "clothing, namely t-shirts, hats, shorts, jackets, sweatshirts, sweat pants, boots, shoes, gloves and socks."

Opposer's Position
Applicant's mark should be refused registration because it creates a likelihood of confusion with Opposer's registered marks ATTITUDE and ATTITUDE ANYWEAR for: "clothing and sportswear, namely jackets, sweatsuits, shorts, swimwear, and shirts, t-shirts, sweatshirts, hats and tanktops." Applicant has completely appropriated Opposer's mark ATTITUDE in its mark; the word SEVERE should be given less weight in the comparison because it would be understood to the kind of weather conditions in which the clothes are intended to be used. Although Applicant's mark is limited to a particular stylization, Registrant's rights in ATTITUDE and ATTITUDE ANYWEAR extend to all stylizations.

Response
[No response was filed. What arguments would you make?]

Analysis of the Similarity of Marks and Goods in Cancellation

These cases arise in a yet another procedural context: The mark became registered, but a third party, believing that there is a likelihood of confusion with its earlier-used or registered mark, filed a petition to cancel the registration.

Case No. 12

Registration
FRESHEN UP for "pre-moistened dental patient wipes."

Petitioner's Position
Registrant's mark should be canceled because it creates a likelihood of confusion with Petitioner's common law trademark FRESH'N UP, which was earlier used in connection with "pre-moistened towelettes." Petitioner used the FRESH'N UP mark for products for general cleaning of the hands and face before Registrant's first use of FRESHEN UP. Petitioner later expanded its use to antibacterial wipes and pre-moistened toilet tissue, and plans to continue expanding its product line. The towelettes are sold in units of 16 or more to retailers and distributors, and directly to institutional customers, including some in the health professions. Dentists have called to inquire about Petitioner's willingness to sell FRESH'N UP towelettes directly to them after seeing them at Walmart or another store.

Response
Registrant's wipes are intended for use after dental procedures, as a courtesy to patients (and dentists and hygienists) so they can wipe their faces and hand and feel refreshed after a procedure. The wipes are individually wrapped, and sold only to dental distributors. They are promoted through dental magazines and trade shows, and through distribution of free samples to dental distributors. Registrant is not aware of any incidents of actual confusion.

Copyright © 2003 Jefferson F. Scher.