Quadruple WYHA? Would You Have Appealed These Four Section 2(d) Refusals?
The USPTO refused registration of the following four marks for "IT consulting services" - MAC SUPPORT AT WORK, MAC SUPPORT AT HOME, BIZMACS, and HOMEMACS [SUPPORT AT WORK disclaimed in the first mark] - finding the marks likely to cause confusion with Apple's registered marks MAC, MAC OS, and MAC.COM for computers and related devices, storage media, software, leasing services, and telecommunication services. Would you have appealed???? In re BizMacs, Inc., Serial Nos. 85652874, 85652879, 85652890 and 85652893 (September 3, 2014) [not precedential].
The Board found Applicant's services to be "at least related" to Registrant's computers, peripherals, operating system software, and computer programs and software. In fact, the Board noted, "IT" (information technology) services are by definition related to computers, peripherals, and software.
Third-party registrations demonstrated that the same sources under the same mark offer both IT consulting services and one or more of registrant's goods. And applicant's marks and specimens of use revealed that its IT services are provided to owners of Registrant's MAC computers. [Well, I'll be danged! - ed.]. Applicant's website offers "help" to MAC owners, and applicant offers to "build" and "support" computers, including mail servers and web servers - indicating a relationship to Registrant's electronic mail and message services telecommunication services. Applicant effectively conceded the point, and this duPont factor weighed heavily against applicant.
Since applicant targets Apple's customers, the channels of trade for the involved goods and services are identical.
Turning to the marks, the applied-for marks include registrant's MAC mark combined with merely descriptive wording. Thus the term MAC dominates applicant's mark.
Applicant pointed to a number of third-party registrations containing the term MAC, but the Board was unimpressed. There was no evidence that any of those marks were in use, and in any case the Board is not bound by prior decisions of examining attorneys in allowing marks to register. Moreover, as examining attorney C. Skye Young pointed out, most of the third-party registrations are irrelevant because they contain arbitrary terms or otherwise create a different commercial impression than the marks here at issue.
Applicant urged that the relevant consumers are highly sophisticated: "men and women of all ages who use Macintosh products in their business and occasionally need to hire an IT professional who specializes in Macintosh products." Its services cost from $95-180 per hour, while Apple's products cost about $300 for software and up to $3000 for some computer systems. Again the Board was unimpressed. Applicant's customers include sophisticated and unsophisticated consumers, and those who only occasionally hire IT professionals are likely to be less sophisticated. Even if some care is assumed, however, even careful consumers may be confused "where substantially similar marks are used on highly related and/or complementary goods."
Finally and feebly, applicant pointed to the lack of actual confusion, but the Board pointed out that there was no evidence regarding whether there had been meaningful opportunity for confusion, and further that in an ex parte context the registrant is afforded no opportunity to address that issue.
Considering the relevant duPont factors, the Board found confusion likely and it affirmed the refusals.
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TTABlog note: Well, would you have????
Text Copyright John L. Welch 2014.