Thursday, January 30, 2014

Test Your TTAB Judge-Ability: Are "ENDORPHINS" and "ENDORPHIN & Design" Confusable for Clothing?

Applicant Adam Khatib sought to register the mark ENDORPHINS for "hats; sweatshirts; t-shirts; tank tops," but Examining Attorney David Yontef refused registration on the ground of likelihood of confusion with the registered mark ENDORPHIN & Design (shown below) for various clothing items, including hats and t-shirts. Khatib appealed, arguing that the term ENDORPHIN is a weak-formative in view of seven existing registrations, two of which were for clothing: ENDORPHIN WARRRIOR; GOT ENDORPHINS?; ENDORPHIN SPORTS; SWIM WITH THE ENDORPHINS; EF ENDORPHIN FITNESS; ENDOMONDO FREE YOUR ENDORPHINS; AND NDORFNZ. How do you think this came out? In re Adam Khatib, Serial No. 85556033 (January 22, 2014) [not precedential].

The goods of the application and cited registration overlap, and the Board must presume that these goods travel through the same channels of trade to the same classes of consumers. The goods may be inexpensive and purchased without a great deal of care. All of these factors favored a finding of likely confusion.

As to the marks, the word ENDORPHIN is the dominant portion of the cited mark, since the stylization and design element are minimal. To the extent consumers would recognize the design as "a molecular design of the chemical endorphin," that merely visually represents the word ENDORPHIN and does not distinguish the marks. The Board concluded that the marks are sufficiently similar in appearance, sound, meaning, and connotation that confusion is likely to occur.

As to the seven registrations submitted by applicant, none of them consist of the words ENDORPHIN or ENDORPHINS alone or with a minimal design element. Five of the registrations are for services, not clothing, and the two for clothing (ENDORPHIN WARRIOR and GOT ENDORPHINS?) are for marks that create commercial impressions that are "quite different from" applicant's and registrants' marks. Moreover, third-party registrations are of limited value in the absence of evidence of use of the marks and of the public's familiarity with them.

And so the Board concluded that confusion is likely, and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note:  So how did you do? Do you think this is a WYHA?

Text Copyright John L. Welch 2014.


At 8:18 AM, Anonymous Anonymous said...


At 12:36 PM, Anonymous Rob said...

I think at least some Federal Circuit judges would fail the TTAB Judge-Ability test. Which says more about the test that the judges.

At 10:27 AM, Anonymous Daniel P said...

The decision was spot on in a textbook Section 2(d) case. In fact, it was so “textbook” that I don’t see how it could’ve come out any other way, making this post more WYHA worthy. Citing Federal Foods, Inc. v. Fort Howard Paper Co., the opinion identified the two key factors when evaluating likelihood of confusion: (1) similarities between the marks and (2) similarities between the goods and services.

The evidence supporting similarity of goods was pretty substantial. Both companies sold hats and t-shirts within the same channels of trade. The opinion also pointed to the relatively low cost of the goods of both companies, acknowledging that low price tends to increase the likelihood of confusion.

What surprised me about this case was the similarity between the marks. True, the appearance of the registrant’s mark can be distinguished by the design element before the word and by the singular form of the word “endorphin.” However, as the opinion rightly pointed, the word in this case is the dominant portion of the mark. We are now left with almost identical appearance, sound, and meaning of two marks. Endorphin and Endorphins. Making an arbitrary mark plural is just not going to cut it when attempting to distinguish from a senior mark. This is yet another reason why it is important to use an attorney (familiar with IP) when establishing a brand…


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