Test Your TTAB Judge-Ability: Is "ME SO HUNGRY" Confusable with "MISOFISHY" for Catering Services?
It has been said, by a TTAB judge no less, that the outcome of the vast majority of likelihood of confusion cases may be correctly predicted just by looking at the involved marks and the goods/services. Let's see how you do with this one. Applicant Ewing sought to register ME SO HUNGRY for catering services, but Solohay, Inc. opposed, based on its alleged prior use of, and alleged likelihood of confusion with, the mark MISOFISHY for restaurant, bar, and catering services. Solohay, Inc. v. James Michael Ewing DBA Me So Hungry and Me So Hungry LLC, Opposition No. 91199692 (September 18, 2013) [not precedential].
Priority: Although Opposer obtained a registration for the MISOFISHY mark while the opposition was pending, it failed to properly submit the registration into evidence. It submitted a photocopy of the registration with its notice of reliance, but that was not good enough. It did not submit either a printout from a USPTO database showing status and title, or an "original or photocopy of the registration prepared and issued by the United States Patent and Trademark Office showing both the current status and current title to the registration." Trademark Rule 2.122(d)(1).
Opposer could have proven priority via testimony (including ownership of the registration), but it did not submit any testimony. Excerpts from online articles discussing opposer did not constitute proof that oppposer was using the mark on the date the article was published. The pages were probative only for what they showed on their faces; as to any facts stated therein, they were mere hearsay.
In sum, the record lacked any evidence to support opposer's claim of priority.
Likelihood of Confusion: Nonetheless, The Board assumed, for its Section 2(d) discussion, that opposer had properly submitted its registration, thereby removing priority as an issue. [This was a clear sign that opposer would lose on this issue as well].
Since the respective services of the parties were identical (catering services), the similarity of the marks was the key issue. Of course, when the services are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.
Opposer pointed out that the first parts of the marks, MESO and MISO, are "phonetically identical and visually very similar." The Board was unimpressed:
While ME SO may be phonetically similar to MISO, the appearance and, more importantly, the connotation is completely different, in that MISO is "a fermented seasoning paste of soybeans, often with rice or barley added, used to flavor soups and sauces," and ME SO in the phrase ME SO HUNGRY simply refers to an individual who is hungry. Phonetically, opposer’s mark could be perceived as having the double meaning "me so" and "miso," but the meaning “miso” would not be lost on customers of restaurant and catering services.
Moreover, the Board observed, HUNGRY is very different from FISHY. Therefore the Board concluded that the dissimilarities between the marks outweigh the similarities, and that because the marks are so different, this duPont factor outweighed the other factors and required dismissal of the Section 2(d) claim.
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TTABlog note: How did you do? Me So Sure you did well!
If the Board had dismissed based solely on opposer's failure to prove priority, opposer might cure the defect by seeking review via civil action, where it could submit its registration properly or provide testimony regarding priority. So the Section 2(d) issue would like re-appear. Maybe that's why the Board went on to decide the issue. BTW: is the entire Section 2(d) analysis here merely dictum?
Text Copyright John L. Welch 2013.