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.