Wednesday, September 14, 2016

TTAB Test: Are These Design Marks Confusable for Jewelry?

Omega SA opposed an application to register the mark shown to the right, for jewelry, claiming a likelihood of confusion with its registered and common law marks (shown below) for watches and watch parts, and for jewelry. The Board found the goods to be identical and/or closely related (not surprisingly), and Opposer's marks to be famous for Section 2(d) purposes. But are the marks confusingly similar? Well, close enough to result in a divided panel decision. Omega SA (Omega AG) (Omega LTD.) v. Derral Leon Reynolds, Opposition No. 91197643 (September 12, 2016) [not precedential].

The panel majority observed that "[t]he Lanham Act's tolerance for similarity between competing marks varies inversely with the fame of the prior mark." [Strike One?] Moreover, when the involved goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. [Strike Two?] And in his application, Applicant Reynolds stated that his mark consists of "the Greek letter Alpha nestled inside of the Greek letter Omega." [Strike Three?]

Consumers will likely pronounce Opposer's marks as "omega." Applicant, by his statement, considers the letter "Ω" to be a readily discernable part of  his mark. "If he articulates the 'omega' component of his mark, as he does in the description of his mark, it is likely that his consumers will also articulate the 'omega' component of his mark." [That seems like a nonsequitur to me - ed.].

The panel majority found that the Greek letter "Ω" is readily recognizable in Applicant's mark, surrounding the "A" or "alpha." Thus the involved marks are similar in appearance because they both include "Ω".  Even when consumers note the "alpha" element in applicant's mark, they are likely to see the mark as a variation of opposer's well known Omega marks.

Balancing the relevant factors, the panel majority found confusion likely and so it sustained the opposition.

Dissent: Judge Francie R. Gorowitz dissented, concluding that the marks are so different that confusion is unlikely. She asserted that the majority put too much weight on applicant's description of his mark, when the important issue is the public's perception of the mark and not applicant's description. She opined that consumers would not likely perceive the curve around the "A" as the letter omega, but rather would see the mark as a capital "A" with a slight design element.

Read comments and post your comment here.

TTABlog comment: I agree with the dissent. To me, applicant's mark looks like a capital "A" with an arc around it. What do you think?

Text Copyright John L. Welch 2016.


At 8:19 AM, Blogger Brad Salai said...

I agree, I think they gave the applicant's description too much weight, the description isn't even correct, A is not a symbol for alpha, and maybe even more important, they put a lot of weight on fame, but acknowledged that there was not much direct evidence of that fame. He filed the application and prosecuted the opposition pro se as far as I can tell. Not a good plan as it turns out.

At 8:59 AM, Anonymous Anonymous said...

Yes, A is the symbol for alpha. That being said, I think the applicant missed the opportunity for utilizing it in the meaning of the mark. Not only is the dissent correct that the mark appears at first glance to be an A in an arc, but even if dissociated into alpha and omega, that has a different significance than omega. In common understanding, alpha and omega is understood as the beginning to the end, while omega is understood as the end. Since Omega does not appear to use the symbol for omega by itself but always reinforced with the word omega and the dominant portion of the applicant's mark is the letter A (if the consumer does not immediately notice the omega) or the symbol for alpha, it would seem that these two marks give different commercial impressions.

At 9:22 AM, Anonymous Darlene Klinksieck said...

Agree with you and Judge Gorowitz. To me, it looks like an A inside a horseshoe.

At 9:28 AM, Blogger Bob Klein said...

It certainly seems like a survey could have been helpful to the applicant. And does anyone remember the Alpha Omega chain of jewelry stores that went belly-up about 10 years ago? That was the first connection I made.

At 11:34 AM, Blogger Jane Shay Wald said...

I agree with you and Judge Gorowitz. It looks like two doves kissing or else a big capital A jumping rope at a rodeo. It likes nothing like the Omega Mark. It looks nothing like an omega at all. Judge Gorowitz supplied compelling authority that what an applicant says is not relevant to how the public perceives the mark. And it is the public perception that counts. If this were not the case, applicants could avoid prior, cited registrations for, say, a polo player logo by saying "the mark consists of a clown atop a tortoise."

At 2:33 PM, Anonymous Anonymous said...

I think everyone is missing the point. Both marks are capable of being spoken. When spoken, they are similar in sound. Since OMEGA is famous - end of story.

I assume Applicant's mark is spoken either as ALPHA OMEGA or OMEGA ALPHA.

Applicant's application specifically said:

"The mark consists of the Greek letter Alpha nestled inside of the Greek letter Omega."

Either way, if I owned OMEGA I would not be happy because the pronunciation of the mark is a problem.

At 2:50 PM, Anonymous Melissa said...

Did Omega present evidence concerning how the mark is/will be referred to by the consuming public? Did they ask applicant how he is/was going to instruct the consuming public to pronounce his mark? If not, then I think that whole line of reasoning is irrelevant as there is no evidence either way. I didn't notice the omega when I first viewed the mark.


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