Friday, January 29, 2010

Weakness of "UNITED" Mark for Money-Transfer Services Leads to TTAB 2(d) Reversal

Twenty-five third-party registrations for marks containing the word "UNITED" for financial services convinced the Board that UNITED is a weak formative, leading to a reversal of a Section 2(d) refusal of the mark shown below for money-transfer services. The Board found Applicant's mark not confusingly similar to the registered mark UNITED for the same services. In re Unidos Financial Services, Inc., Serial No. 77126814 (January 27, 2009) [not precedential].

In light of the identity of the involved services and the lack of any limitations in the registration and application, the Board assumed that the services are offered in all normal channels of trade to the usual classes of purchasers, namely the general public, who will exhibit "all levels of sophistication and care."

As to the marks, Applicant provided a translation of its mark as "UNITED WITHIN YOUR REACH." The Examining Attorney maintained that the doctrine of foreign equivalents applies because Spanish is the second most common language in the USA [What's the first? - ed.] and she contended that the ordinary American purchaser familiar with Spanish will stop and translate UNIDOS into UNITED.

The Board not surprisingly found that an appreciable number of U.S. consumers speak or understand both English and Spanish [I speak English but don't understand it; as to Spanish, nada - ed.], and that the doctrine of foreign equivalents is applicable.

I seems likely that, in connection with money-transfer services, this appreciable number of English/Spanish bi-lingual U.S. consumers will translate applicant's Spanish-language mark into English.There is nothing in this record that indicates the contrary.

Turning to the strength of the term UNIDOS/UNITED in connection with money-transfer services, Applicant submitted 25 third-party registrations for marks containing the word UNITED for services in the financial field. This evidence suggested "that UNITED is one of those ubiquitous terms, like ACME, used in many trademarks in the financial services field, and more specifically, in connection with money transfer and related services." [I never heard of ACME Bank - ed.]

The Board then found that the additional wording and the design elements in Applicant's mark "are both significant aspects of the overall commercial impression of the mark." In view of the weakness of the mark UNITED, it concluded that the marks at issue here are "more dissimilar than similar."

And so it reversed the refusal to register.

TTABlog comment: What if the Board were faced with just the word UNIDOS in the form and color displayed above? Would that stylized, single-word mark be confusingly similar to the registered UNITED mark, both for money-transfer services?

Funny you should ask. That was the very issue raised in the appeal of Applicant's co-pending application Serial No. 77042799, scheduled for oral argument on January 28, 2010 (yesterday). However, after the Board's decision came down in this case on January 27th, the Examining Attorney withdrew the refusal to register in the UNIDOS case. Hmmm. Seems like she had a shot at winning that one.

Text Copyright John L. Welch 2010.


Post a Comment

<< Home