Thursday, December 05, 2013

Test Your TTAB Judge-Ability: Which One of these Section 2(d) Refusals Was Reversed?

It has been said that that the outcome of most Section 2(d) likelihood of confusion cases may be predicted just by looking at the marks and the identified goods/services, without more. So try your adjudicatory skills on these four appeals. [Answer in first comment].

In re Grain Audio, LLC, Serial No. 85528202 (November 22, 2013) [not precedential]. [Refusal of GRAIN AUDIO for audio speakers, amplifiers, receivers, and other audio equipment [AUDIO disclaimed], in view of the registered mark EGRAIN for, inter alia, radio transmitters and audio

In re Sunton Enterprises Inc., Serial No. 85253147 (November 25, 2013) [not precedential].[Refusal of AY LAZZARO for "handbags; trunks," in view of the registered mark LAZARO for "handbags, briefcases, briefcase-type portfolios, wallets"].

In re Jay at Play International Hong Kong Limited, Serial Nos. 76709622 and 76709776 (November 26, 2013) [not precedential]. [Refusals of CUDDLEUP FRIENDS and CUDDLEUPPETS for "plush stuffed animals integrally attached to blankets," in light of the registered mark CUDDLE-UPS for "plush toys, namely, soft cushioned animal figures"].

In re The Works Gourmet Burger Bistro, Inc., Serial No. 76704958 (November 29, 2013) [not precedential]. [Refusal to register THE WORKS for "Clothing, namely, t-shirts, tank tops, vests, jackets,sweatshirts, hats and baseball caps related to restaurant services and food products," in view of the registered mark WORKS for "clothing, namely, t-shirts related to motorsports, motorsports racing jerseys, and motorcycle racing pants"].

Read comments and post your comment here.

TTABlog note: See any WYHA?s here?

Text Copyright John L. Welch 2013.


At 6:33 AM, Blogger John L. Welch said...


At 9:17 AM, Anonymous ian said...

THE WORKS and WORKS have different commercial impressions.

This is one of the few instances where the addition of the term "THE" to a mark makes a big difference, because "THE WORKS" is a common phrase with a meaning separate from "WORKS".

At 10:45 AM, Anonymous Anonymous said...

Wow. The moral of this story is never say never.

At 3:13 PM, Anonymous Anonymous said...

Thank you for beginning to post answers! This will make your quizzes much more useful and entertaining.

At 7:28 PM, Anonymous Anonymous said...

The answers are always available in the decisions he links to... saying the answers in the comments just spoils the "guessing game" in the comments. I think he should just say "skip to the bottom of the decisions to see the answers" and let the comments be for people who want to guess.

At 10:37 PM, Anonymous Anonymous said...

I'm surprised by the GRAIN AUDIO / EGRAIN opinion.
I would have thought that the TTAB would use the same standards for likelihood of confusion as trial courts.

The products are not similar: They all include electronic component parts, but one is highly technical computer equipment, and the other is home audio equipment. The marketing channels are different: one is marketed in stores and on the internet, and the other isn't (Google was unable to find EGRAIN equipment). The consumers themselves are different: The typical purchaser of speakers and MP3 players are not the typical purchasers of highly specialized network equipment, sensors, and indicators. GRAIN AUDIO had no intent to confuse consumers, and there is no evidence that consumers were or would be confused. The opinion notes that "applicant's argument that its customers will take care in ensuring that applicant's equipment is compatible with their other audio equipment or with a particular room in their homes is well-taken," and that "customers will exercise care in purchasing registrant's goods, due to their technical nature," but dismisses these findings as irrelevant.

Finally, even the marks are somewhat dissimilar: While GRAIN and EGRAIN are superficially similar in appearance, their sound is likely different. Unless EGRAIN was eGrain, I would presume it was pronounced Egg-ren, or EGG-rain, or possibly ai-GRAN, none of which sound like GRAIN.

However, as I said, I expected the TTAB to do a similar analysis as a trial court. Reading this opinion was enlightening. I now appreciate the different analyses in cases involving registration as opposed to claims of infringement.


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