Tuesday, October 15, 2013

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Inc. v. James Michael Ewing DBA Me So Hungry and Me So Hungry LLC, Opposition No. 91199692 (September 18, 2013) [not precedential].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.

Read comments and post your comment here.

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.


At 9:19 AM, Anonymous Anonymous said...

I still wonder why TTAB judges can't do what we trademark lawyers do EVERY DAY... look up registrations and the assignment histories and file histories on TESS, TSDR etc.

At 12:44 PM, Anonymous Orrin A. Falby said...

Remember that TTAB is an appellate body. They cannot consider evidence that is not part of the record.

At 2:18 PM, Anonymous Anonymous said...

So, if the TTAB cannot consider such evidence why did they assume opposer had properly submitted its registration?

It just reflects that the TTAB twists its opinions and does what they want to make a decision come out the way they think it should. The rules should be the rules, but the TTAB follows them sometimes and not others. I have seen this recently for cases with SJ rulings regarding ITU applications. Some cases tossed for lack of bona fide intent and others not on basically the same facts. Different judges different rulings.

So you are tossing a coin when you let the TTAB decide. Another reason to head to USDC when possible and avoid the TTAB.

Very sad.

At 9:32 AM, Anonymous Orrin A. Falby said...

I believe, as John has hinted, that the Section 2(d) analysis is merely dictum. They are sending a clear message to the Opposer that its case lack merit. The 2(d) analysis is based on the "theory" that even if the registration was properly submitted into the record and Oposer got pass threshold issues such as priority and standing, there is no likelihood of confusion. The holding of the case is that the Opposer did not prove it had priority, so the case is dismissed on that ground. Now the Opposer could go ahead and file a Civil Action, but it would need more than priority to win this one. If it could get a survey that supports it position and is willing to spend the money, then why not file the Civil Action?


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