Evidence of Actual Confusion Clinches Section 2(d) Opposition Victory

The Board sustained an opposition to registration of the mark CUTLERYANDBEYOND for retail and on-online stores featuring cutlery and kitchenware, finding the mark likely to cause confusion with the registered mark CUTLERYANDMORE.COM, in the special form shown below, for "on-line retail store services featuring cutlery, cookware, kitchen items and accessories therefor." Evidence of actual confusion, rarely proffered successfully in Section 2(d) proceedings, helped carry the day for opposer. Cutlery and More, LLC v. Dasalla Trading Company, Opposition No. 91201666 (October 31, 2014) [not precedential].

The Board found the involved services to be "essentially identical." and it therefore presumed that the services are offered through the same channels of trade to the same classes of consumers.

As to the marks, the stylized lettering and design element in opposer's mark was not particularly distinctive. In any case, "the specific style of a registered mark cannot serve to distinguish an applicant's mark that is in standard character form." Moreover, in a design plus word mark, the words are normally given greater weight.

Here, both marks begin with "CUTLERYAND," and the Board noted consumers are most likely to remember the first part of a mark. The marks have quite similar meanings, and neither MORE or BEYOND is a significantly distinctive term. In view of the "run-on" nature of the marks, the Board saw "little reason to designate any component of the marks as a 'dominant' component."

In sum, the Board found that the similarities between the marks outweigh the differences, and consequently this du Pont factor weighed in favor of opposer.

Third-party registration evidence submitted by applicant was of no probative value on the likelihood of confusion issue because there was no evidence of use of the third-party marks. The registrations did confirm, however, that the term "cutlery" has significance in the field of cutting implements and related retail services. [Doh! - ed.].

Opposer submitted proof of several incidents of actual confusion (mostly emails and telephone call transcripts). Applicant contended that the evidence was inadmissible hearsay. The Board, however, found that most of the evidence was not offered to prove the truth of what was said, and therefore was not subject to the hearsay exclusion of Rule 801(c). In any case, the Board further noted that such evidence has been accepted by the Board under the "state of mind" exception to the hearsay rule, "even when offered for the truth of an out-of-court declarant's assertion."

Applicant argued that the amount of actual confusion in a nine-year period of co-existence was de minimis, and in fact showed that confusion is unlikely to occur. The Board, however, noted that confusion evidence is "notoriously difficult to come by," and that actual confusion evidence is, according to the CAFC, "highly probative, if not conclusive, of a high likelihood of confusion." The Board therefore found that this du Pont factor favored opposer.

And so the Board sustained the opposition.

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TTABlog comment: Is there anything more important for an attorney to fully grasp at the trial stage than the hearsay rule?

Text Copyright John L. Welch 2014.