Tuesday, May 24, 2011

Test Your TTAB Judge-Ability: Are GIFTERGO and GIFTANGO Confusingly Similar for Gift Card Services?

Applicant Phoenix filed three applications to register the mark GIFTERGO, one in standard character form and two in design form (the two designs are shown immediately below), for, inter alia, "online retail store services featuring downloadable gift cards." The Examining Attorney refused registration under Section 2(d), finding the mark likely to cause confusion with the registered mark GIFTANGO for retail store services featuring gift cards. Given that the services overlap, how would you rule on this appeal? In re Phoenix Intangibles Holding Company, Serial Nos. 77732429, 77799403 and 77799400 (May 11, 2011) [not precedential].

The Board observed that the "retail store" services of the cited registration encompass both brick-and-mortar and online stores. Since the involved services are thus legally identical in part, the Board assumes that these services travel through the same channels of trade to the same, usual customers.

Of course, when the involved services are identical, a lesser degree of similarity between the marks is required to support a finding of likely confusion.

Turning to the marks, Applicant submitted five registrations for marks containing the words "gifts" and "go," contending that the cited mark is weak. The Board, however, found those registration to be of minimal probative value because they were few in number and unaccompanied by any information regarding use of the marks. Moreover, the goods involved in four of the five registrations were not gift cards.

The Board first considered the standard character mark GIFTERGO: "Because GIFT and GO are actual words, consumers are likely to perceive both marks as the word GIFT separated by some letters from the word GO."

"The fact that the syllables separating the words differ between the two marks is less likely to be remembered and consumers are likely to perceive GIFT and GO as the dominant portions in each mark. The fact that 'an' in the registered mark may suggest 'and,' whereas 'er' in the application has no apparent meaning is of little significance. Rather, the commercial impression of the marks is substantially similar."

As to the first design mark, the Board found the design element insufficient to distinguish the marks. The darker font for the word GO merely emphasizes a word that appears in both marks.

The third application adds color and the house mark GIANT EAGLE, but the differing colors between GIFTER and GO "serves primarily to emphasize and distinguish the word GO which is, again, identical to the same portion in the registered mark." The addition of the house mark in smaller font is unlikely to distinguish the marks.

"In fact, when, as in this case, marks are otherwise substantially similar, the addition of a house mark is more likely to add to the likelihood of confusion than to distinguish the marks; it is likely that the two products sold under such marks would be attributed to the same source."

Resolving any doubts in favor of the prior registrant, the Board affirmed the refusal to register.

TTABlog comment: The registered mark looks like GIFT TANGO to me, but then I've needed new glasses for a while. Not new frames, just new lenses. The frames are my trademark. Or service mark?

Text Copyright John L. Welch 2011.


At 1:59 PM, Anonymous Anonymous said...

I agree.

In viewing the marks as a whole, I think they would be viewed by the ordinary consumer as GIFT TANGO v. GIFTER GO.

Alas, I got it wrong.

I think the Board and the Office are too often "dissecting" marks which they are not supposed to do.

A likelihood of confusion cannot be predicated on dissection of a mark. I understand that more or less weight can be given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.

In my opinion, that did not happen here.


Post a Comment

<< Home