Test Your TTAB Judge-Ability on this Section 2(d) Refusal of READYSHIP over SHIPREADY
Are you ready to shape up or ship out? The PTO refused registration of READYSHIP for "expedited product shipment services, namely shipment of plumbing products and bathroom accessories," on the ground of likely confusion with the registered mark SHIPREADY for various transportation services, including "storage and delivery of goods, "shipping and freight forwarding," and "forwarding of cargo." Applicant Brasstech appealed. How would you rule? In re Brasstech, Inc., Serial No. 77810266 (January 24, 2012) [not precedential].
The marks: The Board got right down to brass tacks. Its precedents hold that confusion is likely between two marks consisting of reverse combinations of the same words if they convey the same meaning or substantially similar commercial impressions. [E.g., RUST BUSTER and BUST RUST; THE WINE SOCIETY OF AMERICA and AMERICAN WINE SOCIETY]. [Or, hypothetically: PAPER SCISSORS ROCK; SCISSORS ROCK PAPER; SCISSORS PAPER ROCK; ROCK SCISSORS PAPER; ROCK PAPER SCISSORS; and PAPER ROCK SCISSORS. - ed.-].
Here, "the transposed marks engender the same commercial impression."
The services: Brasstech lamely argued that its shipping services are offered as a convenience to its customers, and it does not make the actual delivery. The Board, however, was constrained to decide the case based on the recitations of services in the application and the cited registration. [Not sure that why that would make a difference anyway - ed.].
Registrant's services are not limited as to type of goods shipped; they encompass "expedited" shipment of plumbing and bathroom products. Therefore the services are legally identical.
Moreover, for what it's worth, third-party registrations showed that both shipment and delivery services are of a kind that may emanate from a single source under a single mark.
And so the Board found confusion likely and it affirmed the refusal.
TTABlog comment: What about ROCK PAPER ROCK?
Text Copyright John L. Welch 2012.