Tuesday, September 14, 2010

Test Your TTAB Judge-Ability: Are the Marks "FIRESIDE GLOW" and "FIRESIDE WARMTH" Confusingly Similar for Air Fresheners?

In this appeal from a Section 2(d) refusal, the Board found applicant's goods (air fresheners and deodorizers) to be partly identical to goods of the cited registration (air fresheners and deodorizers). There were no restrictions on the channels of trade, and so the Board deemed them identical. It then came down to the marks: is Applicant's mark FIRESIDE GLOW ["FIRESIDE" disclaimed] likely to cause confusion with the registered mark FIRESIDE WARMTH? What do you think? In re Pure & Natural Company, Serial No. 77153360 (August 30, 2010) [not precedential].

Applicant vigorously attacked the cited registration, which was registered under Section 44, first arguing that it should be accorded a narrower scope of protection than a use-based registration in the context of Section 2(d).

Applicant reasons that the scope of the cited registration should be limited because the mark was registered without a showing of use and, thus, the statute and underlying treaty obligation, give a foreign national an “unfair” advantage over U.S. applicants and registrants.

However, the cases cited by Applicant for its "fairness" argument were not on point, and none "sets legal limitations on a Section 44 application or registration based on any notion of “fairness” and it would be inaccurate to read such a factor into the Trademark Act."

Applicant next asserted that any doubt regarding likelihood of confusion should not be resolved in favor of a registration based on Section 44 "because of the inherent unfairness of permitting registration without a showing of use." Again, the Board found "no basis in law or precedent for this argument and we have not considered it further."

Finally, Applicant complained that the owner of the cited registration is a domestic entity who improperly asserted Section 44 to obtain its registration. The Board, however, agreed with the Examining Attorney that the validity of the cited registration is not at issue here.

Turning to the du Pont analysis, and particularly to the similarity or dissimilarity of the marks, Applicant submitted evidence showing that "fireside" is descriptive of a fragrance associated with the goods. Applicant did not dispute that "glow" and "warmth" are arbitrary terms in the context of the goods.

Comparing the marks in their entireties, the Board found them dissimilar.

Both second terms, “glow” and “warmth” suggest features of a fire, as described by applicant. *** At the same time, the terms “glow” and “warmth” have no significance in the context of the respectively identified goods in this case and, therefore, are clearly the dominant terms in the marks. Therefore, we find that applicant’s mark, FIRESIDE GLOW, is sufficiently distinguished from the cited registered mark, FIRESIDE WARMTH, by the second term in each mark.

And so the Board reversed the refusal.

TTABlog comment: Well, how did y'all do? I was a bit surprised by the outcome: it did not leave me with a warm glow.

I guess Applicant's attack on Section 44 had a beneficial effect. This case reminds me of why managers and coaches yell at umpires and referees: if you holler long enough about an umpire's strike zone, or about a referee's charging calls, you just might soften him or her up so that you eventually get a call in your favor when it comes to crunch time.

Text Copyright John L. Welch 2010.


At 6:29 PM, Anonymous Marta R. said...

I too am surprised, John. The goods are identical, and when the marks are compared in their totalities, they are pretty darned close -- a consumer could easily believe that FIRESIDE GLOW is a particular scent and FIRESIDE WARMTH is another, and both come from the same source.

So perhaps you are right that whining is a useful strategy before the TTAB.

At 10:14 AM, Anonymous Orrin A. Falby said...

At first glance, one would think that these marks would cause confusion. However, I would had came to the same conclusion, that there is no liklihood of confusion, once I had reviewed the record that was presented in this case. The fact is that the record demonstrates that FIRESIDE is a highly suggestive and weak term when used in connection with the goods identified in the application and registration. When you chose such marks, you have to live with the fact that third parties would be allowed to come very close to your mark, as long as they could show that there is some distinguishing elements between the marks. That is the law!! The question is whether this should be a general rule or are there exceptions to this rule? For example, eould the outcome here be different if the cited mark was proven to be a famous mark, despite the suggestiveness of the common element?

At 8:56 PM, Anonymous Anonymous said...

I'm with Orrin, and that argument from the examining attorney, described by the Board as being "incorrect in so many ways," was positively inane.


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