Monday, November 05, 2012

"THE BUTTERFLY EFFECT" Confusable With "BUTTERFLY FX" For Business Consultation Services, Says TTAB

The Board affirmed a Section 2(d) refusal to register the mark THE BUTTERFLY EFFECT for "providing employee recognition programs to businesses to promote and reward job quality, productivity, loyalty and longevity." It agreed with Examining Attorney Laurie Mayes that the mark is likely to cause confusion with the registered mark BUTTERFLY FX for "business consulting services featuring professional consultations and business planning." In re TharpeRobbins Company, Inc., Serial No. 85266411 (October 23, 2012) [not precedential].

Eastern Swallowtail (female)
(click on photo for larger picture)

The marks: The Board found the marks to be similar in appearance and sound. Any difference in sound between FX and EFFECTS is so subtle as to escape notice or appreciation even by the most careful listener. Moreover, the marks are identical in meaning, each referring to the "butterfly effect" of chaos theory: "the idea ... that something insignificant my have great ramifications, such as the beating of a butterfly's wings can transform atmospheric conditions and may cause (or even prevent) a storm thousands of miles away." Applicant's advertising refers to the butterfly effect, and idea is likewise applicable to the Registrant's consultation services: that small changes can create large effects.

TharpeRobbins argued that FX has many meanings (e.g., foreign exchange, navigational fix, field exercise), but the Board noted that, when coupled with BUTTERFLY, the term will likely be seen as meaning "effects" and as referring to the "butterfly effect." Consumers are not likely to attribute some other, less relevant meaning to FX.

The services: Registrant's broadly-worded identification of goods must be construed to encompass all types of business consultation and planning, including employee recognition programs. The evidence showed that business consulting services "routinely cover employee recognition programs." The Board agreed with the Examining Attorney that "human resource issues are a major part of business planning," and thus it is "no surprise that business planning consultations include consulting related to human resources." Third-party registration and Internet evidence bolstered the Board's finding the consumers are likely to believe that Applicant's and Registrant's services emanate from the same source.

ThorpeRobbins contended that the relevant purchasers would exercise care, planning, and foresight in choosing the involved services. The Board pointed out, however, that Applicant failed to submit evidence to support that contention, and furthermore that even sophisticated consumers may be confused by similar marks for closely related services.

The Board therefore affirmed the refusal to register.

Text and photograph Copyright John L. Welch 2012.


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