TTAB Finds WIZGEAR Confusable with THE WIZ and NOBODY BEATS THE WIZ, Denies Abandonment and Fraud Counterclaims

In a 43-page opinion, the Board sustained a Section 2(d) opposition to registration of WIZGEAR for "Electronic accessories, namely, cell phone cases, computer tablet cases, protective cases for smartphones and computer tablets, smartphone mounts, computer tablet mounts; Small electronics, namely, headphones and earphone" in view of the registered marks THE WIZ and NOBODY BEATS THE WIZ for retail services for, inter alia, computers and electronics and electronic accessories and appliances, computer hardware and audio and visual equipment. Because opposer has not operated a brick-and-mortar store since 2003, applicant claimed abandonment, and threw in a fraud claim for good measure. But nobody beats the Wiz. P.C. Richard & Son Long Island Corporation v. Jon Bargains Inc., Opposition No. 91223383 (July 25, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman). [Affirmed under FRAP 36 by the CAFC, October 7, 2020]

Abandonment: The Board first determined the meaning of "retail store services," concluding that the term is not limited to "brick-and-mortar" stores but includes online sales (i.e., an online retail store). This was crucial to the abandonment issue because Opposer acquired the pleaded marks in September 2003 through a bankruptcy sale. At that time, there were no THE WIZ or NOBODY BEATS THE WIZ retail stores in operation and opposer never opened or operated a brick and mortar retail store under the marks.

From November 2004, Opposer was operated websites at www.thewiz.com and www.nobodybeatsthewiz.com where consumers could purchase a wide array of consumer electronics and related services. However, from July 2013 through November 2015, consumers could only place telephone orders. “[T]he cart button forwarded the user to a customer services telephone number in order to place their order.” From October/November 2015 through February 2017, access to the websites was suspended and a user would reach an “under construction” notice at those websites

Prior to February 2017, Opposer decided to integrate the THE WIZ and NOBODY BEATS THE WIZ URLs its overall marketing plan by having those URLs direct consumers to Opposer’s PCRICHARD.com website. Google searches using the WIZ marks would direct consumers to that website.

Reviewing in detail the record evidence, the Board concluded that applicant had "failed to show that Opposer stopped using the marks THE WIZ or NOBODY BEATS THE WIZ for three consecutive years or that Opposer stopped using those marks with no intent to resume use." And so it denied the abandonment counterclaim.

Fraud: As usual, the counterclaim for fraud went nowhere. Applicant contended that when Opposer renewed its NOBODY BEATS THE WIZ registration, it was not using the mark for any retail store service since its websites were under construction and not accessible to customers. However, applicant failed to introduce any evidence regarding Opposer’s intent to deceive the USPTO, and so the Board went no further.

Likelihood of Confusion: The Board wasted little time in finding applicant's goods related to opposer's services. It also found the channels of trade and classes of customers to be the same.

With regard to actual confusion, the Board found that "both parties are heavily invested in online selling and using keywords including the term "Wiz,'" and therefore there has been an opportunity for confusion to have occurred (approximately four years). Under the circumstances, it found that this du Pont factor favored applicant.

Since neither the challenged application nor the cited registrations contain any restrictions on channels of trade, classes of consumers, price points or quality, the Board presumed, as it must, that purchasers include ordinary consumers who might not exercise a high degree of purchasing care. Therefore, this factor favored opposer.

As to the strength of the cited marks, the Board found THE WIZ and NOBODY BEATS THE WIZ to be inherently strong: "they do not describe, nor suggest, any quality, characteristic or function of the services." However, third-party registrations and uses of and a dictionary definition of "wizard" (a person of amazing skill or accomplishment) led the Board to find that "while the term 'Wiz' is inherently distinctive, it is a suggestive term connoting good quality or skill."

As to commercial strength, opposer claimed that its marks are famous but its proofs fell short. First, the length of time of use of the marks is not itself sufficient to prove fame. Furthermore, the Board noted that opposer acquired the marks at a bankruptcy sale, "where it paid a minimal amount for the goodwill associated with the marks and its predecessor’s customer list indicating that the marks had little residual value." Opposer’s subsequent sales generated through THEWIZ.com and
NOBODYBEATSTHEWIZ.com websites from 2003 through 2013 were minimal, and after 2013 it did not even keep track of sales generated through those websites. And there was no evidence of third party recognition of the marks.

The Board concluded that the marks are entitled to a "restricted scope of protection:"

In other words, Opposer’s marks THE WIZ and NOBODY BEATS THE WIZ are not entitled to such a broad scope of protection that they will bar the registration of every mark comprising, in whole or in part, the term “Wiz”; they are, nevertheless, sufficient to bar the registration of marks "as to which the resemblance to [Opposer’s marks] is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two."

Finally, turning to a comparison of the marks, the Board observed that when the goods and services involved, a lesser degree of similarity between the marks is needed to support a finding of likely confusion.

The Board found the term "Wiz" to be the dominant portion of applicant’s mark because the term "Gear" is descriptive of applicant’s goods. Likewise, the same term dominates opposer's marks.

As to commercial impression, the Board found some "peripheral differences," but not serious enough to avoid the overall similarity of the marks.

While some consumers may perceive Applicant’s mark WIZGEAR to mean and engender the commercial impression of high quality consumer electronics and accessories, others are likely to perceive WIZGEAR as referring to products related [to] Opposer’s THE WIZ and NOBODY BEATS THE WIZ retail stores in the field of consumer electronics and accessories. The peripheral differences in this case fail to distinguish the marks.

In view of the dominance of the term "Wiz" in the involved marks, the Board found them to be similar in sound, appearance, connotation, and commercial impression.

Conclusion: Acknowledging that the term "the Wiz" is entitled to a "somewhat narrow scope of protection," the Board nonetheless found confusion likely and it therefore sustained the opposition.

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TTABlog comment: Here's a suggestion: if you are writing a brief on the issue of likelihood of confusion, find a recent opinion by Judge Bergsman and you will find many helpful citations and explanations. Also on evidentiary issues.

Text Copyright John L. Welch 2019.