Thursday, June 27, 2013

Finding Likely Confusion With REGISTERED MAIL, TTAB Cancels Registrations For REGISTERED E-MAIL and (R)EGISTERED E-MAIL

The Board cancelled registrations for the marks REGISTERED E-MAIL and (R)EGISTERED E-MAIL for electronic message delivery services "equivalent to registered mail," finding the marks likely to cause confusion with the common law mark REGISTERED MAIL, owned by the U.S. Postal Service for secure mail delivery services. However, the Board dismissed the USPS's oppositions to registration of (R)ETURN RECEIPT and (R)EGISTERED RECEIPT, finding those two marks neither merely descriptive of the services nor falsely suggestive of a connection with the USPS. United States Postal Service v. RPost International Ltd., Oppositions Nos. 91158431 and 91158514 and Cancellations Nos. 92044260 and 92043665 (June 17, 2013) [not precedential] [affirmed per curiam by the CAFC, April 10, 2015].

Likelihood of confusion: USPS established use of the REGISTERED MAIL mark since 1855 in connection with mail delivery services. Nonetheless, the Board deemed it (without explanation) a "very weak mark." The similarities between REGISTERED MAIL and the two registered marks of RPost International, REGISTERED E-MAIL and (R)EGISTERED E-MAIL, "far outweigh the differences."

Third-party registrations showed that various entities provide paper mail delivery, package delivery, and tracking services, as well as electronic messaging and related proof-of-delivery services. Therefore the Board concluded that the involved services are related. Although the respective services may be marketed in different channels of trade, the consumers are the same. The lack of actual confusion evidence was outweighed by the other duPont factors.

And so the Board sustained the petitions to cancel on the Section 2(d) ground.

Section 2(a): False suggestion of a connection: USPS asserted this ground against all four of Applicant's marks, but the Board noted the lack of explanation as to how RPost's marks are a "close approximation" of USPS's identity, or how they uniquely point to USPS's identity. And USPS "failed to argue or establish that REGISTERED MAIL is synonymous with its identity such that the requisite connection would be presumed."

Mere Descriptiveness: USPS contended that three of RPost's marks are merely descriptive of its services: (R)EGISTERED E-MAIL, (R)ETURN RECEIPT, and (R)EGISTERED RECEIPT. RPost disclaimed the words "Registered E-Mail," "Return Receipt," and "Registered Receipt." [USPS did not claim trademark rights in the phrases "Return Receipt" or "Registered Receipt"].

The evidence indicated that typing “(R)” in the subject header of an email is a method of triggering RPost's services. However, USPS failed to demonstrate how that feature, "viewed in the context of defendant’s involved marks, renders them merely descriptive." Consumers viewing the marks would perceive not just the wording, but the "additional significance of '(R)' and understand the marks to suggest, rather than merely describe, a number of functions or features of the services."

The Board observed that this is not a case where the addition of punctuation does not change the meaning of a word or term. Instead, RPost has placed parentheses around a single letter "in a novel manner that imparts a significance thereto beyond the wording."

And so the Board denied the Section 2(e)(1) claims.

In sum, the Board granted the petitions for cancellation on Section 2(d) grounds, but dismissed the oppositions, which were brought on Section 2(a) and 2(e)(1) grounds.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.


At 4:55 PM, Anonymous Erik Pelton said...

Burning question: did the parties agree to electronic service?
Interesting note: the proceeding last 8 1/2 years!


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