Double WYHA? RENTED.COM Merely Descriptive and Confusable with RENT.COM for Real Estate Services
The USPTO refused registration of the mark RENTED.COM for "Computer services, namely, providing search platforms to allow users to request content from and receive content to a computer or mobile device in relation to real estate," finding the mark both merely descriptive of the services under Section 2(e)(1) and likely to cause confusion with the registered mark RENT.COM, in standard character and design form, for providing online real estate information and providing a website for promotion of rental properties." The Board affirmed the refusals. Would You Have Appealed? In re VacationFutures Inc., Serial No. 86634983 (August 22, 2016) [not precedential].
Mere Descriptiveness: Applicant VacationFutures did not address the Section 2(e)(1) refusal in its appeal brief, but the Board reviewed the refusal anyway. Internet evidence submitted by Examining Attorney Seth A. Rappaport showed, not surprisingly, that the terms "rent," "rental" or "rented" are commonly used as descriptors in connection with services identical or similar to Applicant’s services. Of course, ".com" has no source-identifying significance. Only in exceptional circumstances does the addition of ".com" to an unregistrable term yield a registrable result.
Here, no such exceptional circumstances exist. The “RENTED” portion of the applied-for mark is unregistrable by itself, and the addition of the “.COM” gTLD does not create a witty double entendre or add any other significance capable of identifying source or acquiring distinctiveness.
And so the Board affirmed the mere descriptiveness refusal.
Likelihood of Confusion: The Board found the applied-for mark to be "highly similar to Registrant's mark or to the dominant portion of Registrant's marks, with respect to sound, appearance and commercial impression."
Applicant argued that the cited marks are weak, noting that RENT.COM is registered on the Supplemental Register. The Board, however, pointed out that "marks deemed 'weak' or merely descriptive are still entitled to protection against the registration by a subsequent user of a similar mark for closely related goods and/or services." That applies to marks registered not only on the Principal Register, but those on the Supplemental Register as well.
Evidence of third-party use demonstrated that "the same entity commonly markets and provides the relevant services under the same mark, and that the [involved] services are sold or provided through the same trade channels and to the same classes of consumers in the same fields of use." The Board noted for the umpteenth time that when the marks at issue are highly similar, a lesser degree of similarity between the involved goods or services is necessary to support a finding of likely confusion.
The Board therefore found confusion likely and it affirmed the Section 2(d) refusal.
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Text Copyright John L. Welch 2016.