Monday, November 21, 2011

Test Your TTAB Judge-Ability: Are "RETHINKING YOUR FUTURE" and "CREATING YOUR FUTURE" Confusingly Similar for Self-Help Goods/Services?

The outcome of this Section 2(d) opposition hinged on the issue of the similarity or dissimilarity of the marks. Applicant Andrea Gallagher applied to register the mark RETHINKING YOUR FUTURE for publications and services in the field of life/career planning. Opposer Everett W. "Tad" James claimed that the mark would likely cause confusion with his registered mark CREATING YOUR FUTURE for publications and services in the field of self-improvement. The Board found the goods and services to be related, since self-improvement is a "target" of Applicant's life/career planning. But what about the marks? Too close for comfort? Is a TTAB Judgeship in your future? Everett W. James v. Andrea Gallagher, Opposition No. 91191941 (October 27, 2011) [not precedential].

Applicant Gallagher contended that the shared phrase "your future" is highly suggestive of the involved goods and services, and therefore the first word in each mark is the dominant portion. She provided some two dozen third-party registrations for marks in class 41 that include the phrase "your future." The Board noted that third-party registrations may demonstrate that a mark or a portion of a mark is suggestive or descriptive.

In addition, we take judicial notice of the term “your” as meaning “a person’s; one’s” and “future” as meaning “something that will happen in time to come.” We find these terms to be highly suggestive of the goods and services offered by applicant and opposer in both the pleaded registrations and the application, which are clearly targeted toward shaping the future of those who purchase their goods and services.

The Board therefore turned to the dominant portions of the marks, observing that "rethinking" and "creating" neither look nor sound alike. Moreover, the connotations of the two marks are different:

We find the commercial impression of opposer’s mark in the slightly stylized “CREATING YOUR FUTURE” to be one of inviting participant’s to invent their own path in self improvement. By contrast, we find the commercial impression generated by applicant’s mark “RETHINKING YOUR FUTURE” to be one of asking participants to reconsider and possibly change decisions they have already made regarding retirement and other life planning.

The Board concluded that the dissimilarities in connotation and commercial impression between the marks outweigh whatever similarities there are in sight and sound.

Balancing the du Pont factors, the Board found confusion unlikely and it dismissed the opposition.

TTABlog comment: Applicant alleged that his mark is famous, but his proofs fell short even of showing that the mark is well known. His own testimony did not help his cause: “So it’s not that we’re famous. We’re a legend in our own mind.”

So, how did you do, Judge Fill-in-the-blank?

Text Copyright John L. Welch 2011.


At 9:50 AM, Anonymous Anonymous said...

I nailed it! I'm a TTAB legend in my own mind.

At 11:11 AM, Anonymous Anonymous said...

Agree with the decision. But I don't understand how Opposer's mark got registered in the first place - why is it not completely descriptive? Doesn't it describe the content of the publications and info services?


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