Test Your TTAB Judge-Ability: Are "ITOWNS" and "IVILLAGE" Confusingly Similar for Related News Services?
Managing Attorney Chris Doninger refused registration of the mark ITOWNS, in standard character form, for general circulation newspapers and related websites, finding it likely to cause confusion with the registered mark IVILLAGE for newsletters and websites concerning various issues, including health, astrology, and fitness. The services overlapped, but are the marks too close? In re The Hartford Courant Company, Serial No. 77404276 (April 22, 2011) [not precedential].
The Board found the involved goods to be related, noting that Applicant's newspaper is not limited as to subject matter and presumably encompasses the specific topics listed in the cited registrations. The involved services are similarly related.
"[A]applicant’s goods and services are broadly identified, with no restriction as to topics and issues covered, so we must presume that applicant’s website covers topics of interest to women, children and families, such as parenting, fitness, diet and careers. The fact that applicant’s goods and services may feature information of particular importance to the Hartford, Connecticut metropolitan area is irrelevant because no such limitation is indicated in applicant’s identifications."
Third-party websites and registrations confirmed the relatedness of the goods and services. The Board therefore presumed that the goods and services travel in the same channels of trade to the same classes of purchasers. Those purchasers would include ordinary consumers exercising only ordinary care.
Turning to the marks, Managing Attorney Doninger relied on numerous documents, including thesaurus listings, NEXIS articles, excerpts from the parties' websites, and third-party websites and registrations, in urging that "the ordinary meaning and usage of the terms 'village' and 'town' are so close as to create confusion in the minds of consumers, who clearly are not experts in the technicalities of the definitions of municipalities, nor do they care about such things when surfing the internet for information about current events, politics, horoscopes or fashion."
The Board recognized that the words TOWNS and VILLAGE neither sound nor look alike, but it ruled that their "similarity or identity" in meaning outweighed the differences so that the marks as a whole are similar in commercial impression.
The Board acknowledged that "there may be a distinction between the technical meanings of the two words 'village' and 'towns,'" but pointed out that it is "primarily concerned with the meaning of the marks to the prospective purchasing public (in this case, ordinary consumers), and not to geographers, experts on municipality designations, or linguists."
"Accordingly, as shown by the thesaurus entries, and confirmed by the interchangeability of the words in actual language, we believe that the popular or ordinary meanings of the words 'village' and 'towns' are virtually identical, although there are technical distinctions between the two words. The ordinary meaning and usage of the two words are so close as to render the marks similar in the minds of ordinary consumers, who are not likely to be experts in the definitions of municipalities."
And so the Board concluded that the "substantially similar meaning between 'village' and 'towns' outweighs any difference in sound and appearance." The letter "I" at the beginning of each mark indicates "Internet," and the marks "engender overall commercial impressions that are similar."
It therefore affirmed the refusal to register.
TTABlog comment: Several decades ago, I suggested to a law student working at my firm in Boston, that a good place to start in trademark law would be as an Examining Attorney at the USPTO. I'm happy to report that Chris Doninger took my advice.
Here, the Board panel stated its appreciation for Managing Attorney Doninger's thorough and organized effort in presenting the PTO's evidence. It's good to see the Board commend an Examining Attorney for a change.
Text Copyright John L. Welch 2011.