Weakness of "SMART CHOICE" Formative Leads to TTAB Reversal of 2(d) Refusals

Relying on Knight Textile, the Board reversed two Section 2(d) refusals to register the mark GUNN SMARTCHOICE SERVICE for "vehicle repair services" [SMARTCHOICE SERVICE disclaimed], finding it not likely to cause confusion with the registered marks SMART CHOICE [Supplemental Register] and AMERICA'S SMART CHOICE for the same services. In re Gunn GP LLC, Serial No. 78497204 (October 30, 2006) [not citable].


The reader will recall that in Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005), the Board ruled that the mark NORTON McNAUGHTON was not confusingly similar to the registered mark ESSENTIALS, both for clothing, due to the weakness of the term ESSENTIALS. Here, with regard to the SMART CHOICE registration, the Board found that "SMART CHOICE is obviously and inherently a laudatory and descriptive phrase, as is evidenced by the fact that it is registered on the Supplemental Register." The panel concluded that the points of dissimilarity between the marks outweigh the points of similarity, and that purchasers will be able to distinguish between the respective sources of the services.

As to AMERICA'S SMART CHOICE, despite the fact that the mark is registered on the Principal Register without any disclaimer, the Board found that SMART CHOICE is "inherently quite laudatory and weak as a source indicator." The presence of the house mark GUNN in Applicant's mark and the word AMERICA'S in the cited mark "suffice to enable purchasers to distinguish between the sources of the services rendered under the marks." (again citing Knight Textile.)

The Board accordingly reversed the refusals to register.

TTABlog comment: In the Knight Textile case, 23 registrations in the clothing field (owned by 21 different owners) for marks that include the word ESSENTIALS corroborated the dictionary definition of that word, and led the Board to conclude that ESSENTIALS is a "highly suggestive term as applied to clothing," and that purchasers "are able to distinguish among various ESSENTIALS marks by looking to other elements of the marks."

Here, there was no indication in the Board's opinion that the phrase SMART CHOICE is included in more than the two registrations cited, and there is no reference to any dictionary definitions of the term. In other words, the proofs were rather skimpy in this case.

As to Applicant's disclaimer of SMARTCHOICE, the Board noted that this disclaimer was made voluntarily and not at the insistence of the PTO. Had the Examining Attorney required the disclaimer, might that have bolstered the argument regarding the weakness of the SMART CHOICE formative? On that point see the GOSMILE PM case, TTABlogged here, in which the Board gave no weight to the fact that the PTO had required a disclaimer of PM because the Examining Attorney had not cited any evidence to support the disclaimer requirement.

Text and photograph © John L. Welch 2006.