Friday, May 15, 2015

WYHA? TTAB Finds MASTERBAITER Confusable With MASTERBAIT & Design, Both for Clothing

In an ultimately futile exercise, Applicant Packed House Publications, LLC, appealed from a Section 2(d) refusal to register the mark MASTERBAITER for a laundry list of clothing items in class 25, including various items of athletic apparel. Examining Attorney Eugenia K. Martin had deemed the mark likely to cause confusion with the registered mark shown below, for "athletic apparel, namely, shirts, pants," etc. Would you have appealed? In re Packed House Publications, LLC, Serial No. 85955911 (May 13, 2015) [not precedential].

Applicant argued lamely that the involved goods are not related because its mark "is used with humorous t-shirts and apparel," whereas the cited mark is used for clothing sold exclusively in connection with fishing bait. The Board, however, pointed out for the umpteenth time that the goods at issue must be compared as identified in the application and cited registration, regardless of actual marketplace usage.

Because the goods are in part identical, the Board must presume that they travel through the same trade channels to the same classes of consumers. Moreover, the involved goods include non-expensive items sold to ordinary consumers having no particular sophistication.

Turning to the marks, the Board noted once again that when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Both the applied-for mark and the word portion of the registered mark are "readily recognized as misspellings of the words masturbate and masturbator," and thus have the same connotation. The marks are similar in pronunciation and also in appearance, since the word MASTERBAIT is the dominant part of the cited mark. "Both marks share the overall commercial impression of being slightly racy, and the addition of the fish design in registrant's mark, while reinforcing the double entendre created thereby, does not obviate this similarity."

Applicant argued that the cited mark is weak in view of ten third-party registrations for marks incorporating the word BAIT or MASTER, but there was no evidence of use of the marks, or of any public recognition thereof. Moreover, only five of the marks were registered for clothing, and four of those contained additional wording (BITE ME BAIT & Design, SKINBAIT, XCITE BAITS, and BAM BAITS) that differentiated the marks from the marks involved here. The existence of the fifth registration, for BAIT for "tee shirts," did not establish that MASTERBAIT is weak for clothing. In short, the third-party registrations had no probative value regarding the alleged weakness of the mark MASTERBAIT.

And so the Board found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here

TTABlog note: Well, would you have?

Text Copyright John L. Welch 2015.


At 9:10 AM, Anonymous Anonymous said...

immoral? scandalous?

At 12:45 PM, Anonymous Anonymous said...

What does WHYA stand for?

At 1:47 PM, Anonymous Anonymous said...

Beats me.

At 1:52 PM, Blogger John L. Welch said...

WYHA? is shorthand for "Would you have appealed?"

At 3:04 PM, Anonymous Anonymous said...

Apart from the constitutional concerns with the whole immoral/scandalous thing, there is the problem of inconsistent administration of the rule when you have Examiners that must telecommute from a rock that they live under. Perhaps the PTO should hire a few middle-schoolers as Special Examiners to clue them in on obvious innuendo.

At 10:04 AM, Anonymous Anonymous said...

This raises an persistent question for me. The examiner has to take the goods as listed in the application and registration, without reference to the marketplace. Fine. Got it. But then why do we need evidence about the market when relying on other registrations they the PTO found not to be confusingly similar? If the register exists in a vacuum for one situation, why doesn't it for all?

At 4:35 PM, Anonymous Anonymous said...

Anonymous 3:04, you insult Examiners yet clearly have little knowledge about the subject on which you so brashly comment. This was not an issue of scandalous/immoral subject matter but of 2d, likelihood of confusion between two nearly identical marks for identical goods. There was no 2a refusal issued, so it's unclear why you mention constitutional concerns. And, your implication that there should be no 2d refusal because of the innuendo is equally off base.. what would sexual innuendo (that both marks share) have to do with this 2d refusal? Perhaps you know less than you think you do.

At 11:56 AM, Anonymous Anonymous said...

@Anonymous 4:35 - Quite aware that there was no 2a refusal. While not a fan of 2a, that seems to me a big miss on the part of the Examiner. That's my point in my original comment. Sorry if it was not clear.



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