Tuesday, January 31, 2006

"ISHINE" and "ICE SHINE" Sound Confusingly Similar, TTAB Says (Citably)

In its fourth citable decision of 2006, the TTAB sustained a Section 2(d) opposition to registration of the mark ISHINE in the stylized form shown below, finding it likely to cause confusion with the registered mark ICE SHINE, both for floor finishing preparations. The Board ruled that the similarity of the marks in terms of sound outweighed any differences in appearance and meaning. Centraz Indus., Inc. v. Spartan Chem. Co., 77 USPQ2d 1698 (TTAB 2006).

The Board began its du Pont analysis by noting that the goods are legally identical, a fact that "weighs heavily in opposer's favor." Because there are no limitations in the parties' identifications of goods, the Board presumed that the goods will be sold in all normal channels of trade for such goods, including grocery stores, drug stores, and warehouse merchandisers, and will be purchased by ordinary consumers. Again, these factors favored Opposer.

The first du Pont factor, the similarity of the marks, was the crux of the controversy. The Board first observed (once again) that, when the involved goods are identical, the degree of similarity necessary to support a finding of likelihood of confusion declines.

Although the stylization in Applicant's mark gives it a "different look" from Opposer's word mark, prospective purchasers would still "perceive the essence of applicant's mark as 'iSHINE.'" As to connotation, the Board was "unsure as to the meaning of 'i' in applicant's mark," but it found that both marks suggest that "the use of the product will result in a shiny floor."

To the Board, that "[w]hat stands out in the comparison between the marks" is the similarity in sound.

"There is no correct pronunciation of a trademark, and it obviously is not possible for a trademark owner to control how purchasers will vocalize its mark. *** [W]e find quite reasonable opposer's assessment that purchaser may roll the 's' sound from the pronunciation of 'ice' into the 'sh' sound beginning the second syllable 'shine.' When opposer's mark is spoken as such, the two marks at issue herein sound remarkably similar. Even if opposer's mark is pronounced correctly, with a first syllable 'ice,' the marks ICE SHINE and ISHINE sound very much alike. Inasmuch as the goods may be ordered by phone or recommended by word of mouth, the similarity in sound is an important factor in comparing the marks, especially where, as here, identical products are involved."

The Board concluded that the similarity in sound outweighs any differences in appearance and connotation, and that the marks "engender similar overall commercial impressions, both conveying ... the image of a shiny floor as a result of using the product." Therefore, the first du Pont factor weighed in favor of Opposer.

Thus with all the relevant du Pont factors pointing in Opposer's direction, the Board sustained the opposition.

Text Copyright John L. Welch 2006.


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