Test Your TTAB Judge-Ability: Are C•PREME and SUPREME Confusingly Similar for Bicycles?
This applicant sought to register the mark shown below for bicycles and parts therefor, but the PTO refused registration under Section 2(d) in view of the registered mark SUPREME, in standard character form, for the same goods. The Board agreed with the Examining Attorney that "C•PREME" is the dominant element in the applied-for mark. But otherwise are the marks too close for comfort? How do you think this came out? In re C. Preme Limited, LLC, Serial No. 85316370 (June 28, 2013) [not precedential].
Because the involved goods are in part identical, the Board must assume, absent any limitations in the application and the cited registration, that the goods travel in the same, normal channels of trade to the same classes of consumers.
The Board agreed with the Examining Attorney that the literal portion of the applied-for mark "is the dominant portion because consumers will refer to applicant's goods using this portion of the mark." The Examining Attorney further contended that the involved marks are "phonetic equivalents" because applicant's mark "could reasonably be pronounced 'seh-preme,' the equivalent of 'supreme,'" and furthermore even if the applied-for mark were pronounced "see-preme" the marks would still sound quite similar. Finally, the Examining Attorney pointed out that C•PREME is not found in dictionaries, and submitted that the term is merely a "creative spelling" of SUPREME.
The Board, however, did not agree that C•PREME, which is not an actual word, is sufficiently similar to the actual word SUPREME to result in confusion.
In fact, there is no evidence that there are any words in the English language which include an individual letter separated from the rest of the word by a symbol such as applicant’s “dot” or “•.” More importantly, there is no similarity whatsoever between the first two characters of the respective marks, “SU” and “C•,” and the mere fact that registrant’s mark and the literal portion of applicant’s mark end in PREME, which is not itself an English-language word, is not enough for the marks to create similar overall commercial impressions.
Moreover, the cited mark SUPREME is laudatory and therefore weak and not entitled to broad protection.
In short, C•PREME and SUPREME look different, sound different, and convey different meanings (SUPREME having a commonly-understood meaning, whereas C•PREME has no meaning.)
The design element of the applied-for mark is large, distinctive, and impossible to ignore. Indeed the Board may not ignore it. But there is nothing in the design that calls to mind the word SUPREME. Despite the inclusion of "PREME" in both marks, they, on balance, create entirely different commercial impressions.
And so the Board reversed the Section 2(d) refusal.
Disclaimer requirement: The Board also reversed a requirement that applicant disclaim the word C•PREME. The Board disagreed that the word C•PREME is a misspelling of SUPREME or that it calls to mind that word. It concluded that C•PREME is not descriptive of anything, and so a disclaimer was neither necessary nor appropriate.
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Text Copyright John L. Welch 2013.