Precedential No. 35: Third-Party Evidence Keys Dismissal of ROSE SENIOR LIVING Section 2(d) Opposition

According "significant weight" to applicant's evidence of third-party use and registration of marks containing the word "rose" for retirement home services, the Board dismissed this opposition to registration of the mark ROSE SENIOR LIVING for "Rental of apartments; rental of residential housing; management of senior housing communities (Class 36); Retirement homes; providing assisted living facilities; providing assisted living facilities for Alzheimer and dementia clients (Class 43); and Nursing home services; managed health care services (Class 44)" [SENIOR LIVING disclaimed]. Opposer had claimed a likelihood of confusion with its registered mark PRIMROSE for "providing congregate, independent, and assisted living facilities." Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030 (TTAB 2016) [precedential].

The Board found the services to be identical or nearly identical, and it therefore presumed that the relevant trade channels and classes of consumers were the same.

Turning to the marks, the Board first considered the sixth du Pont factor, the number and nature of similar marks in use on similar services. Applicant submitted evidence of eight existing registrations for marks containing the word "rose" in the field of assisted living services, and more than 90 websites showing various ROSE or ROSE-containing marks used in connection with senior living communities and related services. In addition, applicant provided expert testimony averring that the word "rose" is "commonly used as a naming convention for many senior living communities under different ownership." The expert listed 76 senior living communities using the word "Rose" as part of their names.

The Board observed that, in light of recent Federal Circuit decisions, this type of evidence - "even where the specific extent and impact of the usage has not been established" - is relevant to show that a term "may have a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that [term] is relatively weak," and "can show that customers have been educated to distinguish between different marks on the basis of minute distinctions." Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)).

The Federal Circuit indicated that evidence of extensive use and registration of a term by others as a mark can be "powerful on its face, even when the specific extent and impact of the usage has not been established." Jack Wolfskin, 116 USPQ2d at 1136.

Moreover, opposer's founder testified that, in at least five cases opposer did not purse legal recourse against known third-party users of PRIMROSE, and it made no effort to enforce its mark against any entity that did not include "Primrose" in its name.

The Board concluded that customers have been exposed to so many different ROSE and ROSE-formative marks and names in connection with senior living communities that they likely have become alert to "minute distinctions" between the various marks. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1691. Consequently, a mark comprising or containing the word "Rose" in this field should be given a restricted scope of protection. See In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565 (TTAB 1996).

In other words, Opposer’s mark PRIMROSE is not entitled to such a broad scope of protection that it is a bar to the registration of every mark comprising, in whole or in part, the word “Rose”; it will only bar the registration of marks “as to which the resemblance to [Opposer’s mark] is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two.” Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010) (quoting Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983).

With regard to the first du Pont factor, the similarity or dissimilarity of the marks, the Board observed once again that when the involved services are identical, a lesser degree of similarity is necessary to support a finding of likely confusion. It found ROSE to clearly be the dominant portion of applicant's mark. In opposer's mark, the initial element "PRIM" is prominent and gives the mark a sound and appearance different from applicant's mark.

As to meaning, each mark refers to a flowering plant, albeit different ones. Opposer pointed to the similarity in trade dress used by the parties, the Board noting that although it does not ordinarily look to trade dress for word marks (since the trade dress may be changed at any time), trade dress nonetheless may provide evidence as to whether the marks project confusingly similar commercial impressions. Here, the parties use a similar rose color and both include a picture of a flower. Thus the flower designs reinforce the meanings of PRIMROSE and ROSE.

In sum, although there are similarities between the marks, the marks are specifically different in sound, appearance and meaning. When viewed against the background of significant third-party uses and registrations as discussed above, these differences outweigh the similarities, resulting in different overall commercial impressions. We find that this factor weighs in favor of a finding of no likelihood of confusion.

Turning to the fourth du Pont factor, the conditions under which purchases are made, applicant's expert opined that the decision to purchase the involved services "is a very important, one-time decision and for most, is their largest lifetime expenditure." Opposer's witness indicated that prospective purchasers "do their research before making this decision," and that "clients shopping for assisted living services take great care in selecting the facility." The Board recognized, however, that in some cases, this decision is made hastily and under duress. Nevertheless, given the nature of the services and their high cost, the conditions of sale favor a finding of no likelihood of confusion. And even though the Board must consider the least sophisticated potential purchaser, "a decision as important as choosing a senior living community will be made with some thought and research, even when made hastily."

Therefore, the Board found that the sixth du Pont factor favored applicant.

Balancing the relevant du Pont factors, the Board concluded that confusion as to the source of the involved services is not likely, and it therefore dismissed the opposition.

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TTABlog comment: That trade dress is rather close, don't you think? Personally, I thought a primrose was a small rose. How many people do you think would know the difference?

Text Copyright John L. Welch 2016.