Monday, April 23, 2012

WYHP? TTAB Denies Section 2(d) Petition to Cancel SCIENTIFIC SOLUTIONS Registration Due To Dissimilarity of Goods

The Board denied this petition to cancel a registration for the mark SCIENTIFIC SOLUTIONS & Design for dietary and nutritional supplements [SCIENTIFIC SOLUTIONS disclaimed], finding the mark not likely to cause confusion with the identical mark registered for "Computer hardware and software for use in the fields of industrial automation and scientific and engineering data acquisition, control and analysis and for controlling, monitoring and emulating scientific and engineering instruments and instrumentation systems, and for performing instrumentation functions, and instruction manuals sold therewith." Petitioner claimed actual confusion, but the Board pooh-poohed the evidence thereof. Respondent did not take testimony, submit any evidence, or file a brief. [The old rope-a-dope approach]. Would You Have Petitioned? Scientific Solutions, Inc. v. Scientific Solutions, LLC, Cancellation No. 92051031 (March 30, 2012) [not precedential].

Not surprisingly, the Board found the marks to be very similar in sound, appearance, meaning and commercial impression, since the literal portions of the marks are identical. Respondent's disclaimer of the two words has no bearing on the likelihood-of confusion analysis.

However, to prove likely confusion, Petitioner must establish some viable relationship between the goods "such that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks used thereon, give rise to the mistaken belief that they emanate from or are associated with the same source."

The goods appear wholly unrelated on their respective faces, and Petitioner failed to show or explain how they are commercially related. Respondent's goods would be sold in drug stores and groceries, where computer hardware and software are not customarily found.

Petitioner pointed out, however, that both parties market via the Internet. Not good enough, said the Board. "[T]he mere fact that goods and services may both be advertised and offered through the Internet is not a sufficient basis to find that they are sold through the same channels of trade." Parfums de Coeur Ltd. v. Lazarus, 83 USPQ2d 1012, 1021 (TTAB 2007).

The involved goods would be sold to different classes of consumers, the Board observed, and even though the purchasers of Petitioner's highly technical goods [rocket scientists, engineers, and the like] may also be purchasers of Respondent's goods, "the likelihood for any kind of confusion as to the source or sponsorship of the parties' goods is de minimis."

Finally, Petitioner contended that actual confusion has already occurred: it received four misdirected phone calls over a two-year period, each inquiring about vitamins or male enhancement pills. The Board, however, found the evidence of no probative value. Although the callers were confused, the nature of that confusion was entirely unclear from the testimony.

Indeed, petitioner has offered no testimony as to what caused these individuals to contact petitioner instead of respondent. There could be any number of reasons for the mistake other than confusion as to source for respondent’s and petitioner’s goods. They may have mistaken one mark for the other, which would account for their misdirected calls, but there is no indication that mistake occurred because of any belief that respondent’s nutritional supplements came from the same source as petitioner’s computer goods. In fact, it is not even clear that the callers were aware of petitioner’s goods.

The Board concluded that, because the goods are so "fundamentally dissimilar," a likelihood of confusion does not exist.

TTABlog comment: So what would be a probative telephone call? "Hello? I just wanted you to know that your male enhancement pill was a dud. You can be sure I'll never buy your software!"

Text Copyright John L. Welch 2012.


At 4:48 AM, Anonymous Cliff Kuehn said...

"They may have mistaken one mark for the other..." - I thought this was quite counter to the Board´s finding that there was no confusion. I´m at a loss for examples where an actual mistaking of one mark for another is not evidence of LOC. I would have better understood if the Board said something to the effect of "while evidence of the 4 phone calls is probative, it is insufficient for a finding of likelihood of confusion".


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