TTABlog Test: Is "ACUITI" Confusable with "QIACUITY" for Medical Testing Services?

The USPTO refused registration of the mark ACUITI for cancer screening and genetic testing software, finding confusion likely with the registered mark QIACUITY for identical and overlapping services. The second and third DuPont factors weighed heavily against the applicant, the fifth and sixth were neutral, and the fourth factor - consumer sophistication - favored the applicant. But what about the marks? How do you think this came out? In re GRAIL, LLC, Serial No. 90777742 (August 29, 2024) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Board first noted that because some of the parties' services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Applicant argued that the marks at issue differ in appearance, sound, connotation and commercial impression in light of the uncommon "QI" in the cited mark, because QI is an alternative spelling of CHI, and because the "QI" prefix is the "primary, dominant, and most memorable element of the cited mark."

The Board, however, found the marks to be similar because "Applicant’s mark is the phonetic equivalent of a significant portion of the cited mark." As to appearance and sound "both marks contain the same string of letters 'ACUIT,' which would be pronounced identically." There was no evidence regarding an alternative meaning of QI, or why registrant chose those letters; since the registrant's name is Qiagen GmbH, QI may be an abbreviation of that name. Furthermore, the purported rarity of the letters "QI" "does not change the visual impression of the cited mark because the visual presentation forms a single word, "which when viewed in its entirety suggests that it is part of an ACUITY brand."

Applicant has merely adopted the phonetic equivalent of a significant portion of the cited mark. Adding or deleting terms from a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).

Moreover, the Board pointed out that since the cited mark is in standard characters, it may be displayed in any font style, size or color.

In other words, we must anticipate Registrant’s cited mark being displayed in a manner in which there is more emphasis on the latter part of the mark, e.g., qiACUITY, thereby appearing quite similar to Applicant’s ACUITI mark and both evoking the term ACUITY which is defined as “keenness of perception.” As such, both marks are similar in connotation and overall commercial impression.

In sum, the Board found that the marks are "more similar than dissimilar in appearance, sound, connotation, and overall commercial impression due to the common presence of the phonetically identical term 'acuity.'"

The Board concluded that confusion is likely because the first, second, and third DuPont factors outweighed the fourth DuPont factor (consumer sophistication).

Read comments and post your comment here.

TTABlogger comment: This nose-of-wax approach to consideration of the display of standard character marks is rather troublesome, don't you think? Note that the registrant does not display its mark as qiACUITY as the Board hypothesized, but as QIAcuity.

Text Copyright John L. Welch 2024.

TTABlog Test: Are These Design/Stylized Marks for Clothing and Purses Confusable?

The Director of the USPTO intervened in this appeal from the Board's dismissal [pdf here] of an opposition to registration of the mark shown below right, for various clothing items. The Board found confusion unlikely with the two registered marks shown below left, the first for "purses and wallets" and the second for "handbags, shoulder bags, tote bags, satchels, purses, clutches, and wallets." The Board found the first DuPont factor - the similarity or dissimilarity of the marks - to be dispositive. How do you think this appeal came out? Tribe of Two, LLC v. Vidal, Appeal No. 2023-1193 (Fed. Cir. September 3, 2024) [not precedential].

The CAFC ruled that the Board did not err in its DuPont analysis: "the TTAB found [Applicant] Eritaj’s and Tribe of Two’s marks to be visually distinct and create different commercial impressions (factor 1), despite finding overlapping goods [actually, the Board found the goods to be related, not overlapping - ed.] and channels of trade and classes of consumers (factors 2 and 3)."

Tribe of Two argued that TTAB should have found the literal elements of the Eritaj’s mark to be dominant. The CAFC sided with the Board:

The TTAB concluded that, although the letters “TT” are discernible in Eritaj’s mark, “they do not form the dominant impression. Instead, the inversion of the letters T, the doubled horizontal lines, and the use of negative space to create a rectangle among the vertical and horizontal lines creates the impression of a rectangular geometric design. TTAB Decision, 2022 WL 4397523, at *7. This finding has substantial-evidence support.

At oral argument, Tribe of Two "devoted considerable time to argue that the TTAB overlooked possible coloring and shading of the letters 'TT' of Eritaj’s marks, which Tribe of Two asserts would allow an emphasis on the letter Ts and deemphasize its stylized mark." [The nose-of-wax argument - ed.]. Tribe of Two conceded, however, that this argument was not expressly made before the Board. The CAFC noted that this argument was "barely noted in Tribe of Two’s appellate briefing." The court concluded that the argument was forfeited because it was insufficiently developed, and therefore there was no error by the TTAB.

Finally, Tribe of Two claimed that the Board should have given it the benefit of the doubt because it was the senior user. The CAFC pooh-poohed that argument:

Tribe of Two, however, has not identified where the TTAB has expressed any doubt regarding a likelihood of confusion between the marks. On de novo review, nor do we. Like the TTAB, we find the marks so dissimilar that, in this case, this single DuPont factor is dispositive. TTAB Decision, 2022 WL 4397523, at *8. And unlike Century 21, where the TTAB decision there noted that the case was “difficult to resolve” and that “the prior mark is famous,” 970 F.2d at 878, neither circumstance is present here.

And so, the CAFC affirmed the Board's decision

Read comments and post your comment here.

TTABlogger comment: Is this an appellate WYHA? The nose-of-wax argument seems to be appearing more frequently lately. 

Text Copyright John L. Welch 2024.

TTABlog Test: Are Mascara and Clothing Related for Section 2(d) Purposes?

The USPTO refused to register the mark CHEAT CODE for "mascara," finding confusion likely with the registered mark CHEAT CODES for, inter alia, various clothing items (including hats and shirts). The marks are essentially identical and therefore the first DuPont factor weighed heavily in favor of affirmance. But what about the goods? Are they related? Do they travel in the same trade channels? How do you think this came out? In re The Lip Bar, Inc., Serial No. 97546404 (August 30, 2024) [not precedential] (Opinion by Judge Robert H. Coggins).

Examining Attorney David Hutchison, submitted excerpts from ten third-party websites showing clothing companies using the same mark in connection with their own apparel and mascara:ARMANI, AVON, CHANEL, H&M, TOM FORD, DIOR, GUCCI, SAIE, VALENTINO, and ZARA. He also introduced six use-based, third-party registrations showing that the same entity has registered a single mark identifying at least mascara and clothing, as well as 25 third-party used-based registrations of marks identifying “makeup” or “cosmetics” and one or more of the specific clothing items listed in the cited registration. As to the latter group of registrations, the Board must presume that they encompass all such goods, including "mascara."

In response, Applicant submitted 100 sets of printouts from TSDR of third-party registrations purporting to show that the Office has registered the same mark to different parties for the mascara and clothing goods at issue. The Board tossed out at least 38 of them for various reasons.

Applicant argued that it provided more third-party registrations than the Examining Attorney, but the Board noted that the "'the PTO is an agency of limited resources' for obtaining evidence when examining applications for registration; the practicalities of these limited resources are routinely taken into account when reviewing an examining attorney’s action." Furthermore, Applicant provided no evidence regarding the extent of use of these marks, or consumers’ familiarity with them. “[W]here the ‘record includes no evidence about the extent of [third-party] uses . . . [t]he probative value of this evidence is thus minimal.”

The Board concluded that "the Examining Attorney’s third-party evidence is sufficient to establish that mascara and clothing are of a type that commonly originate from the same source under the same mark."

As to channels of trade and classes of consumers, the third-party commercial websites mentioned above, including Dior, Saie, H&M, and Zara, that advertise and offer mascara and clothing under those marks indicate that the goods may be encountered by the same classes of consumers under the same marks in at least two common trade channels - the websites and the physical locations of the companies’ stores. Moreover, the application and cited registration encompass low-priced goods that may be purchased on impulse.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Note that applicant's third-party registration evidence was minimally probative because of lack of proof of extent of use. No such evidentiary requirement for the Office's third-party registrations.

Text Copyright John L. Welch 2024.

TTAB Reverses Section 2(d) Refusal of OCTAVE for Mental Health Services Due to Ambiguity in Cited Registration

The Board overturned a refusal to register the mark OCTAVE for "outpatient mental health services delivered by licensed counselors," finding that the USPTO's evidence failed to support the refusal. The Office deemed applicant's mark likely to cause confusion with the identical mark registered for software and SAAS for use as a medical patient care management platform in the fields of neurology and autoimmune diseases and disorders. The Board, however, found the registration's identification of goods and services to be too ambiguous to be understood. In re Evolve Health Group, Inc., Serial No. 88030138 (August 29, 2024) [not precedential] (Opinion by Judge Marc Thurmon).

The Board observed that "it is not entirely clear how the services identified in the cited Registration are provided. Nor is it clear who the intended consumers are for those services."

Applicant’s consumers are persons seeking mental health counseling, for themselves or for others (e.g., a parent seeking care for their minor child). Registrant’s consumers are harder to define, but from the identification it appears the customers of the Registrant are medical offices or medical groups that provide services to patients. But do regular patients of these providers also see Registrant’s OCTAVE mark?

The Examining Attorney asserted that the goods and services are related “because there is an overlap in the fields of healthcare, specifically mental health and neurology.” But there was no evidence as to how the registered mark is used. When there is ambiguity in an identification, the Board may turn to extrinsic evidence to better understand the nature of the identified services.

The Board considered that registrant's mark may be used internally with software by medical professionals, or with a type of patient portal software that may or may not display the mark to the patient.

Without at least some patient exposure to the cited OCTAVE mark, there can be no likelihood of confusion as to this group of consumers. The Examining Attorney apparently assumed the cited mark is used in a manner that exposes patients to that mark, but there is no basis in the record for making such a finding.

The Board discussed several other possible scenarios for use of the cite mark, but they "raised many more questions than answers given the record in this appeal." In sum, there was insufficient evidence to show that the goods and services are sufficiently related, or travel in the same trade channels, so as to lead to consumer confusion. Therefore, the Board concluded that the second and third DuPont factors weighed "heavily" against a likelihood of confusion.

The Board next found that relevant consumers of applicant's services would exercise greater care than in a typical purchasing scenario.

Although the identity of the marks at issue weighed "heavily" in favor of a finding of likely confusion, it was "clear the evidence of record does not support the refusal."

Read comments and post your comment here.

TTABlogger comment: When the marks are identical, the applicant obviously starts behind the octave-ball. But kudos to the Board for sorting this out.

Text Copyright John L. Welch 2024.

TTABlog Test: Is UGLY DOG SALOON for Restaurant and Bar Services Confusable with UGLY DOG for Distilled Spirits?

The USPTO refused to register the mark UGLY DOG SALOON for "Bar and restaurant services; catering services" [SALOON disclaimed], finding confusion likely with the registered mark UGLY DOG for "alcoholic beverages, namely, distilled spirits; alcoholic cocktail mixes." Applicant argued that "it is very uncommon for a restaurant to offer distilled spirits under a common mark." How do you think this appeal came out? In re Saloon Promotions, Inc., Serial No. 90849904 (August 28, 2024) [not precedential] (Opinion by Judge Melanye K. Johnson).

The Board noted that the record "is devoid of any uses of, or registrations containing, 'ugly dog' for 'alcoholic beverages.'" It therefore found the cited mark to be arbitrary and inherently distinctive. "Arbitrary marks are inherently or conceptually strong," and so the cited mark is entitled to a "broad scope of protection."

Turning to the goods and services, applicant asserted that the Office is required (and failed) to show "'something more,' evidence-wise, than just marks that are used for both 'bar and restaurant services' and alcoholic beverages." See In re Coors Brewing Co., 343 F.3d 1340, 1345 (Fed. Cir. 2003) (quoting Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 1236 (CCPA 1982)).

The Board observed that "[t]here is no per se rule that certain goods are related, such as restaurant services and food and beverages." However, the Board has found the "something more" requirement to be met when, for example, an applicant’s mark clearly demonstrates its restaurant specializes in the registrant’s type of goods, or when the cited mark is particularly strong.

In addition to the inherent strength of Registrant’s UGLY DOG marks, to satisfy the “something more” requirement, the Examining Attorney submitted 20 valid and subsisting registrations to demonstrate that the same entity has registered a single mark for catering, bar, or restaurant services, as well as alcoholic beverages, distilled spirits, or alcoholic cocktail mixes.

The Examining Attorney also submitted printed pages from 28 third-party Internet websites showing that the same entity offers “bar and restaurant services” or catering services under a mark, and manufactures, produces, or offers for sale distilled spirits under that same mark.

Applicant’s principal argument is that, considering the holding of In re Coors, the facts and evidence here require us to find "it is very uncommon for a restaurant to offer distilled spirits under a common mark." The Board found applicant's evidence non probative and/or unpersuasive.

After consideration of the admissible evidence of record, we find . . . that collectively, the evidence of record here meets the “something more” requirement. In addition to the cited UGLY DOG registrations being arbitrary and inherently strong, as discussed above, the Examining Attorney submitted 20 third-party use-based registrations showing Registrant’s goods and Applicant’s services registered under the same mark. The Examining Attorney also submitted printed pages from 28 distinct third-party Internet websites showing the same entity offering Registrant’s goods and Applicant’s services at the websites, supporting our finding that the goods and services are complementary.

The Board also noted that applicant’s mark contains the word "saloon" - defined as "a place where alcoholic drinks are sold and drunk; a tavern." And Applicant’s specimen of record lists "Adult Beverages: Ask about cocktails + frozen drinks to-go" as a menu item.

And so, finding the marks confusingly similar, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: The Ugly Dog Saloon is located in New Orleans. We'll have to check it out during the INTA mid-year meeting. PS: I think in these restaurant/alcoholic beverage cases, your only hope of winning is to weaken the cited mark through third-party evidence and then distinguish the two marks.

Text Copyright John L. Welch 2024.

TTAB Posts September 2024 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled eight (8) oral hearings for the month of September 2024. As indicated below, five of the hearings will be held virtually; the remaining three will be held in-person at the USPTO's Madison East Building in Alexandria, Virginia. Briefs and other papers for each case may be found at TTABVUE via the links provided.

September 5, 2024 - 1 PM [Virtual]: In re Metabeauty, Inc., Serial No. 97492557 [Section 2(d) refusal of the mark shown below, for non-medicated skin care preparations and related retail store services, in view of the registered mark TWELVE COSMETICS for cosmetics [COSMETICS disclaimed].]

September 10, 2024 - 1PM [Virtual]: Lucasfilm Ltd. LLC and Lucasfilm Entertainment Company Ltd. LLC v. Aubray McPherson, Opposition No. 91273412 [ Opposition to registration of the mark shown below, for "Professional business consulting" on the grounds of likelihood of confusion with, and likely dilution of, various registered JEDI marks for a variety of goods and services.]

September 11, 2024 - 10 AM [Virtual]: Morris Bart, III and Morris Bart, LLC v. Laborde Earles Law Firm, LLC, Serial No. 97325462 [Opposition to registration of ON MY SIDE for legal services, in view of opposer's registered mark I’M ON YOUR SIDE for legal services.]

September 17, 2024 - 10 AM [In-Person]: Revolution Jewelry Works, Inc. v. Stonebrook Jewelry, LLC DBA Revolution Jewelry, Oppositions Nos. 91248007 and 91248009 [Oppositions to REVOLUTION JEWELRY, in standard character form, and REVOLUTION JEWELRY DESIGNS in the design form shown below, for jewelry, in view of the allegedly previously used mark REVOLUTION JEWELRY WORKS for jewelry.]

September 19, 2024 - 11 AM [Virtual]: U.S. Department of Homeland Security Office of The General Counsel v. Safepassport, Inc., Opposition No. 91268135 [Opposition to registration of the mark COVID PRE & Design shown first below, for "Licensing of software in the framework of software publishing," in view of the registered marks TSA PRE & Design, shown second below, and TSA PRECHECK, in standard character form, both for "Airline passenger security screening services, namely, an expedited screening initiative that enhances aviation security and expedites the travel experience by pre-screening individuals who volunteer to participate in the program."]

September 19, 2024 - 1 PM [Virtual]: Hangzhou Mengku Technology Co., Ltd and Fuzhou Mengku Technology Co., Ltd v. Shanghai Zhenglang Technology Co., Ltd, Opposition No. 91272143 [Opposition to registration of the mark shown below for computer game software, on the ground of mere descriptiveness.]

September26, 2024 - 1 PM [In-Person]: In re Audemars Piguet Holding SA, Serial No. 90045780 [Refusal to register the product design mark shown below, for "watches, wristwatches" on the ground of Section 2(e)(5) functionality and, alternatively, on the ground of lack of acquired distinctiveness.]

September 26, 2024 - 1:30 PM [In-Person]: In re Audemars Piguet Holding SA, Serial No. 90045814 [Refusal to register the product design mark shown below, for "watches, wristwatches" on the ground of Section 2(e)(5) functionality and, alternatively, on the ground of lack of acquired distinctiveness.]

Read comments and post your comment here.

TTABlog comment:  Any predictions? See any WYHAs? Any WYHOs?

Text Copyright John L. Welch 2024.

TTABlog Test: Is "LIP TAR" Confusable with "THE LIP BAR" for Lip Gloss?

The parties to this opposition proceeding filed cross-motions for summary judgment but stipulated that the Board could decide the case on the merits based solely on the summary judgment papers, including resolution of any genuine disputes of material facts. The Board treated these stipulations as an agreement to go forward under the Accelerated Case Resolution (ACR) procedure. Applicant Metro1 sought registration of the mark LIP TAR for "lip gloss" [LIP disclaimed]]. Opposer claimed likelihood of confusion with its registered mark THE LIP BAR for, inter alia, lip gloss [LIP disclaimed]. How do you think this came out? The Lip Bar, Inc. v. Metro1 Solutions, LLC, Opposition No. 91289231 (August 22, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Since the goods overlap, they presumably travel in the same channels of trade to the same classes of consumers. Actually, Metro1 so stipulated. It also stipulated that the relevant consumers would exercise only ordinary care in their purchasing decisions.

The Board found opposer’s mark to be "inherently distinctive–at least suggestive–because it is registered on the Principal Register," although its strength is "somewhat limited by its disclaimer of LIP which is descriptive or generic for cosmetics for the lips such as lip gloss or lipstick." As to commercial strength, opposer's evidence and testimony was unimpressive. And so, the Board concluded that opposer's mark "is entitled to a normal scope of protection of an inherently distinctive mark.

Turning to the key issue, the similarity of the marks, the Board found that TAR and BAR are the dominant elements of the marks. Metro1 conceded that the marks are "somewhat similar" in appearance and sound. The Board went a step further:

The marks are similar visually, with both marks containing the term LIP, with the dominant portion of each mark differing by one letter, BAR/TAR. The marks also sound similar because although Opposer’s mark includes THE, both marks contain the descriptive if not generic term LIP followed by a three-letter word with a similar “AR” construction–BAR/TAR.

Metro1 argued that the differences in connotation and commercial impression avoid confusion: i.e., Opposer’s mark connotes that it is sold in bar form or is manufactured or sold by a retail store called “The Lip Bar,” whereas the word “tar’ in its mark "suggests to consumers that its lip gloss is a viscous and durable substance that fully covers and sticks to one’s lips." The Board agreed that the marks have somewhat different connotations.

Nonetheless, we find that when considered in their entireties, the similarities in sound and appearance outweigh the differences in meaning resulting from the words BAR/TAR, or the addition of THE in Opposer’s mark, particularly because “the average customer ... retains a general rather than specific impression of marks.”

And so, the Board found that the first DuPont factor favored Opposer.

Finally, Metro1 pointed out that Opposer’s mark previously co-existed with a LIP TAR mark on the trademark register and that Opposer was not harmed by its co-existence. Although acknowledging that expired registrations have no probative value and that the Board is not bound by prior examining attorney decisions, Metro1 contended that consistency and predictability in examination should be considered. In short, if the marks co-existed in the past, they should be able to co-exist now. The Board was not impressed: "The fact that Opposer’s THE LIP BAR mark co-existed on the trademark register with another LIP TAR mark does not prove that they coexisted during that time without confusion in the marketplace."

And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: FWIW, I think the Board got this wrong.

Text Copyright John L. Welch 2024.

EAGLE PARK DISTILLING for Alcoholic Beverages Not Confusable with EAGLE RARE for Bourbon Whiskey, Says TTAB

In a 50-page opinion, the Board dismissed this opposition to registration of the marks EAGLE PARK DISTILLING for "distilled spirits; alcoholic beverages, except beer," and EAGLE PARK BREWING COMPANY for "alcoholic beverages, namely beer," finding confusion unlikely with Sazerac's registered marks EAGLE RARE for "bourbon whiskey" and the design mark shown below for "whiskey." The dissimilarity of the marks underpinned the dismissal as to the first challenged mark and, combined with the lack of proof of relatedness of beer and whiskey, also underpinned the dismissal as to the second mark. Sazerac Brands, LLC v. Eagle Trace Brewing Company LLC, Opposition No. 91272260 (August 22, 2024) [not precedential] (Opinion by Judge Mark Lebow).

The Marks: The Board found the word EAGLE to be the dominant element in the EAGLE RARE mark. However, in applicant's marks, EAGLE is used as an attributive noun modifying the noun PARK "such that the combination of EAGLE and PARK conveys the idea of a geographic place, real or imagined where one might or might not see an eagle." Likewise, the eagle design mark and applicant's marks have "distinct overall connotations and commercial impressions." 

The Board concluded that the first Dupont factor "strongly" favors a finding of no likelihood of confusion, and indeed was dispositive as to the EAGLE PARK DISTILLING mark.

Survey Evidence:With respect to the EAGLE PARK DISTILLING mark, Opposer Sazerac submitted the results of a Squirt-style survey based on the EAGLE RARE mark, resulting in the following conclusion: “The overall net rate of confusion, using the Control Group rate to net out ‘survey noise’ or guessing, is 18.7 percent.” The Board, however, agreed with the applicant that a number of defects in the survey diminished its probative value to the extent that the Board "cannot rely on it with any confidence. " In sum:

For the various reasons discussed, including but not limited to our finding that (i) the Squirt-style survey format is more conducive where an opposer’s mark is not alleged to be commercially strong; (ii) the survey has significant design flaws, including with respect to—for example—the brands chosen for the array, and the universe of participants; (iii) the low net confusion rate, and, perhaps most significantly, (iv) the survey fails to sufficiently approximate market conditions, we are unable to infer that there is a likelihood of confusion between Opposer’s EAGLE RARE mark and Applicant’s EAGLE PARK DISTILLING mark based on the survey.

Beer and Whiskey: The Board noted once again that there is no per se rule that all alcoholic beverages are related for Section 2(d) purposes. "Even though whiskey and beer (and other alcoholic beverages) have been found related in other cases, we must decide the outcome of this proceeding, just as we do with all cases, based on the facts and evidence submitted in this case."

Sazerac pointed to applicant as an example of a company that sells both beer and whiskey, but the Board was unimpressed: "[O]ne example of the same company using two different marks (EAGLE PARK DISTILLING and EAGLE PARK BREWING COMPANY) for different alcoholic beverages does not, itself, suffice to establish relatedness of the goods." Sazerac simply failed to prove that beer and whiskey are related for purposes of finding a likelihood of confusion, and so the second DuPont factor favored the applicant.

Finding that likelihood of confusion is "even more remote" with respect to applicant's mark EAGLE PARK BREWING COMPANY for beer, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: The Board was quite critical of the Squirt form of survey, not just for this case, but generally.

Text Copyright John L. Welch 2024.

Recommended Reading: The Trademark Reporter, July-August 2024 Issue

The July–August 2024 (Vol. 114 No. 4) issue of The Trademark Reporter (TMR) is now published [pdf here]. Willard Knox, Editor-in-Chief, summarizes the contents as follows (and below): "This issue offers our readers an article on the new frontier of Web 3.0 (the next phase of the World Wide Web) and the potential promise and peril of blockchain domain names for brand owners, as well as a book review of a practitioner’s guide to winning domain name disputes (in the current version of the Internet)."

Back to the Future with Blockchain Domain Names: Toward a Global Policy to Fight Cybersquatting in Web 3.0, by Vera Glonina. The author of this in-depth article guides brand owners through the nascent world of Web 3.0—the next stage of the World Wide Web. The author explores the potential promise and peril of blockchain domain names in Web 3.0 and calls for a new regulatory framework to protect trademarks against cryptosquatters (the next iteration of bad-faith cybersquatters in the current version of the Internet).

Book Review: Prosecuting and Defending Domain Name Disputes: Effective Litigation Strategies. Daniel R. Bereskin. Reviewed by Karen L. Elburg. The reviewer of this book finds it offers readers a comprehensive yet compact guide on how practitioners can navigate the complex world of domain names and effectively represent their clients in related disputes.

Read comments and post your comment here.

TTABlog comment: This issue of the TMR is Copyright © 2024, the International Trademark Association, and is made available with the permission of the Trademark Reporter®.

TTAB Reverses Section 2(d) Refusal of "LendingOne & Design" Over LENDERS ONE Due to Differences in Mortgage Lending Services

Two Section 2(d) refusals reversed in one week? I kid you not. The Board overturned a refusal to register the mark shown below, for various mortgage lending services, finding confusion unlikely with the registered mark LENDERS ONE for "cooperative mortgage lending services" [LENDERS disclaimed]. The Board found the marks to be highly similar, but the second, third and fourth DuPont factors favored the applicant, and the cited mark was somewhat weak. In re LendingOne, LLC, Serial No. 97627670 (August 20, 2024) [not precedential] (Opinion by Judge Angela Lykos).

 

Applicant identified its services as: "Origination of single and one-to-four family rental, fix-and-flip, and small-balance multifamily business-purpose mortgage loans and non-bank commercial real estate mortgage loans related to the private money lending business secured by non-owner occupied residential investment, multifamily, or commercial real property, specifically excluding mortgage lending services to mortgage lenders in connection with business services at negotiated prices."

The Board began with an assessment of the strength of the cited mark. It reviewed a number of registrations for and uses of marks including the words "lend" or "lending" but none were as close to the registered mark as applicant's mark. Nonetheless, the Board concluded that "the cited mark’s strength is somewhat limited by the first word LENDERS which has been shown to be conceptually weak by third-party registration evidence and has been disclaimed."

Turning to registrant's services, the Board looked to extrinsic evidence to discern the meaning of "cooperative mortgage lending services."

This evidence clarifies that Registrant does not provide mortgage loans to real estate investors. Nor does Registrant even provide mortgage lending services. Rather, Registrant is a cooperative comprised of independent mortgage bankers that provides bundled support services to its members in order to compete against large mortgage lenders.

Applicant’s specimen of use states that the focus of its services is the provision of loans to real estate investors, such as “Fix & Flip Loans,” “Multifamily Bridge Loans,” and “Rental Loans.” 

The Board found it "obvious" that applicant’s and registrant’s services are not legally identical. Moreover, there was no evidence (i.e., third-party registrations or excerpts from third-party websites)  that these services may emanate from a single source.

The Board next found that, "although the classes of consumers differ, both Applicant’s and Registrant’s consumers are likely to exercise great care in purchasing their respective services."

The Board concluded that the first factor was outweighed by the second, third and fourth factors, and "slightly by the sixth factor." "In other words, although the marks are highly similar, this is outweighed by the findings that the services are unrelated, the channels of trade and classes of purchasers do not overlap, and consumers of both Applicant’s and Registrant’s services will exercise more than ordinary care in their purchasing decisions."

Read comments and post your comment here.

TTABlogger comment: The rate of affirmance of Section 2(d) refusals is running at about 93% so far this year.

Text Copyright John L. Welch 2024.