Monday, March 15, 2010

"PAPERCLIP CLUB" for Office Supply Services Not Confusingly Similar to "PAPERCLIP" for Office Furniture, Says TTAB

The Board reversed a Section 2(d) refusal to register the mark PAPERCLIP CLUB & Design for "on-line wholesale and retail store services featuring office and home office supplies," finding it not likely to cause confusion with the registered mark PAPERCLIP for "office and residential furniture." In re The Paperclip Club, LLC, Serial No. 77501562 (March 2, 2010) [not precedential].

The Board concluded that the marks are "highly similar," in light of the shared term PAPERCLIP. The word CLUB is descriptive of Applicant's services, since Applicant's website indicates that it operates a membership club. The design portion of the mark simply reinforce the term PAPERCLIP. [I like to reinforce paperclips with STAPLES - ed.].

As to the goods/services, the Examining Attorney pointed to Applicant's website, which shows that Applicant sells furniture, and she argued that office supplies encompass furniture. Applicant contended that consumers of its services and purchasers of office furniture are sophisticated.

The Board found the Examining Attorney's evidence insufficient. There was no evidence that office furniture is "encompassed within office and home office supplies:" i.e., no evidence that "purchasers understand or refer to office furniture such as desks, chairs, and bookcases as office supplies." In fact, Applicant's website has separate categories for furniture and office supplies.

Thus, the principle that confusion is likely to result from the use of the same or similar mark for goods, on the one hand, and for services involving those goods, on the other, is not applicable in this case. Furthermore, the mere fact that office furniture is one of the many products applicant sells is insufficient to show that applicant’s identified services and registrant’s goods are related. There is no evidence that applicant’s services and registrant’s goods are of a type which may emanate from a single source ....

As to Applicant's "sophistication" argument, the Board pointed out that there are no pertinent limitations in the application or cited registration, and therefore the Board must assume that all normal classes of purchasers are involved, including ordinary consumers.

And so, the Board reversed the refusal to register, but pointed out that "on a more complete evidentiary record, it might reach a different conclusion."

TTABlog comment: I wonder why the Board sometimes makes the statement that "on a more complete evidentiary record," it might reach a different result. It certainly is an encouragement for the cited registrant to oppose, isn't it? Or is it intended to teach the Examining Attorney a lesson? Anyway, it seems inappropriate to me.

Text Copyright John L. Welch 2010.


At 12:32 PM, Anonymous Neill Levy said...

Isn't PAPERCLIB CLUB AND DESIGN descriptive for office supplies? Why didn't the examiner refuse the application on that ground?


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