Thursday, March 26, 2015

TTAB Reverses 2(d) Refusal Due to Specific Differences in Involved Software

The Board affirms 90% of the Section 2(d) refusals it gets its hands on, but here's one that it reversed. The applicant sought to register the mark MISTORE for "Computer software for use in connection with retail point of sale and inventory management." The examining attorney maintained that the mark was confusingly similar to the registered mark shown below, for "computer e-commerce software to allow users to perform electronic business transactions via a global computer network." In re Micros Systems, Inc., Serial No. 85826131 (March 6, 2015) [not precedential].

The marks: The Board found applicant’s mark MISTORE to be the phonetic equivalent of the dominant portion of the cited mark, MYSTORE. Applicant’s argument regarding the descriptiveness of the term "mystore," although not supported evidence, persuaded that Board that the term "is not arbitrary, which does somewhat narrow the scope of protection afforded the cited mark." On the other hand, applicant’s misspelling of the term "MY STORE" does not make "MI STORE" a "coined term," as applicant argued. Accordingly, the Board found the marks in their entireties to be similar in appearance, sound, connotation and commercial impression.

The goods: The examining attorney relied on dictionary definitions of “business transactions,” “point-of-sale,” and “e-commerce,” and information about applicant’s software from applicant’s
brief. However, two of the dictionaries existed only online and not in print, and so the Board refused to take judicial notice of them. The third definition was from a dictionary published in the United Kingdom, but was obtained from the dictionary’s American English database and so was eligible for judicial notice.

The definition of e-commerce from the third dictionary requires that the business be conducted on the Internet. There was no evidence that applicant’s software relates to any business transaction conducted on the Internet. "To the contrary, access and use of the electronic data is restricted to store personal and not the general public." [Moreover, the examining attorney’s position was contradicted by one of the rejected definitions, for a business transaction in electronic commerce, which is a “monetary transaction that is made between consumers or businesses via the Internet.”]

The Board concluded that the sparse record in the case failed to establish that the goods are related.

Channels of trade: Because the goods are not related, the Board could not presume that they travel in the same channels of trade to the same classes of consumers. There was no evidence regarding the actual channels of trade, and so this factor was deemed neutral.

And so the Board concluded that the differences in the goods outweighed any similarity between the marks, and it therefore reversed the refusal.

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Text Copyright John L. Welch 2015.


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