"INVENT! INVENT! INVENT! PATENT IT! Confusingly Similar to "PATENT IT!," Says TTAB

Palmer Patent Consultants perhaps needed a trademark consultant in connection with its attempt to register the mark INVENT! INVENT! INVENT! PATENT IT! for "intellectual property consultation" [PATENT disclaimed]. The Board affirmed a Section 2(d) refusal, finding the mark likely to cause confusion with the registered mark PATENT IT! for "legal services." In re Palmer Patent Consultants, LLC, Serial No. 76673151 (October 7, 2010).

What's the invention here?
The Board began by determining that the services of the parties are identical, since "[i]ntellectual property is a field of law and consultation in this field includes the rendering of legal services." The channels of trade are therefore presumed to be identical.

Applicant urged that the purchasers of the services are sophisticated, but the Board pointed out that this class of consumers is likely to included not only scientists and engineers but also artists and individuals. In short, there was no evidence that this "broad class of purchasers is sophisticated or knowledgeable about trademarks or source confusion."

As to the marks, Examining Attorney Raul Cordova argued that Applicant's slogan culminates with the command PATENT IT! and that this command "will make the greatest impression on the purchaser." He recognized that PATENT is merely descriptive, but urged that INVENT! is at least highly suggestive and that the repetition of the phrase does not create an impression distinct from the single word INVENT!

Applicant maintained that INVENT! INVENT! INVENT! is dominant, that PATENT is at least merely descriptive, and that its mark is "in the nature of a pep rally slogan." [I understand that this very cheer is heard at MIT pep rallies! - ed.].

The Board found no evidence in the record that the cited mark is weak, nor had it been shown that PATENT IT! is merely descriptive in connection with Respondent's services. [Isn't it obvious? - ed] . It found the marks to be similar in their entireties:

Because inventions are the subject of patents, the phrase INVENT! is conceptually related to the phrase PATENT IT! and suggests to inventors that they obtain patents. The mere repetition of the phrase three times does not change this connotation. Neither does the fact that the one-word exclamatory phrase INVENT is followed by an exclamation point change the connotation. Rather, in addition to containing the phrase PATENT IT!, which is identical to the registered mark, the exclamatory nature of the repetitive word INVENT! repeats the exclamatory nature of the phrase PATENT IT! and increases its visual similarity to the registered mark. We view the mark as a unitary whole wherein no one term is dominant.

And so the Board affirmed the refusal.

TTABlog comment: I'm not buying the Board's reasoning. If the Applicant's mark is seen as a "unitary whole," then I think it is quite different from the cited mark. And how exactly does the repetition of INVENT! increase the mark's visual similarity to the registered mark?

Text Copyright John L. Welch.