Friday, March 27, 2015

TTAB Test: Are These Two Marks For Overlapping Goods/Services Confusingly Similar?

The USPTO refused registration of the mark shown first below, finding it likely to cause confusion with the mark shown second below, for goods/services that "perform overlapping functions, namely, the promotion of goods and services of others via the Internet by way of offering coupons and discounts in exchange for product and/or service reviews." So it all came down to the first du Pont factor. How do you think this appeal came out? In re Hy-Vee, Inc., Serial No. 86105555 (March 25, 2015) [not precedential].

The marks are obviously similar in that they share the words DIGITAL COUPONS or its phonetic equivalent. However, those terms have "descriptive, if not generic, significance" with respect to the involved goods and services. It is therefore more likely that consumers will "equate" those term with the goods and services rather than viewing them as source indicators.

The letters DQ in the cited mark play a dominant role due to their size and location, and the comprise the portion most likely to be remembered by consumers. In addition, the "computer mouse" design element in applicant’s mark is "dissimilar enough from Registrant’s mark to distinguish Applicant’s goods and services." The Board concluded that the marks engender "substantially different commercial impressions."

The Board acknowledged, as the examining attorney contended, that the words in a word+design mark usually predominate. However, that is not always the case. The Board also acknowledged that when the involved goods/services are legally identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Here, however, given the highly descriptive or generic meaning of DIGITAL COUPONS, the marks are so different that confusion is not likely.

And so the Board reversed the refusal to register.

Read comments and post your comment here

TTABlog note: Well, how did you do?

Text Copyright John L. Welch 2015.


At 6:36 AM, Blogger Brad Salai said...

Seems like a pretty reasonable decision to me.

At 9:47 AM, Blogger Ed said...

I think recognizing "commercial impression" as a point of difference between these marks is actually quite dangerous. The way these marks might be referred to will not always include the entire logo or mark. Instead a consumer might only refer to this source by name. Someone who has never seen these marks will be unable to identify which source was being identified. Although the logo uses images that created different impressions, the test is "likelihood of confusion." Does the test require a specific kind of confusion or any kind of confusion? Phonetically, "digital coupon" cannot distinguish the spelling of these two sources. Any search for these companies will necessarily require the spelling to be different, and any consumer would require additional information to find these companies in a search for digital coupon providers.

Perhaps, the test for highly descriptive or generic work marks should include an evaluation of how a consumer would go about identifying the source, not merely that a consumer could tell them apart.


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