Wednesday, January 08, 2020

Despite Weakness of Opposer's Mark, TTAB Finds SHARED SPACE Confusable WIth SHARED for Coworking Spaces

In a 50-page opinion, the Board sustained a Section 2(d) opposition to registration of the mark SHARED SPACE in the word+design form shown first below, finding it likely to cause confusion with the registered mark SHARED in the word+design mark shown second below, for overlapping office space services. Although the Board granted a counterclaim to cancel opposer's block-letter registration for SHARED on the ground of mere descriptiveness, and although it deemed opposer's SHARED + design  mark to be weak, it nonetheless found confusion likely with applicant's mark. Shared LLC v. SharedSpaceofAtlanta LLC, Opposition No. 91228478 (December 31, 2019) [not precedential] (Opinion by Judge Robert H. Coggins).



The Counterclaims: The Board found that opposer’s standard character mark SHARED is merely descriptive and that opposer's composite mark should not have registered without a disclaimer of the merely descriptive word “shared.” "The term 'shared' immediately describes a feature and characteristic of Opposer’s services, namely, work and office space that is used and occupied by more than one person."

Turning to the opposer's Section 2(f) claim, the Board found that opposer had failed to prove that the term “shared” had acquired distinctiveness as a source-indicator for Opposer’s services. And so it granted applicant's counterclaim for both of opposer's registrations, but it allowed opposer thirty days to file a disclaimer of SHARED in the word+design registration.

Likelihood of Confusion: Applicant conceded priority, and the parties did not raise the issue of whether opposer's composite mark SHARED + design is comprised of non-distinctive
design elements.

Inasmuch as Applicant conceded priority, and Opposer may maintain registration of the mark with entry of a disclaimer, we will presume, solely for purposes of determining Opposer’s claim of likelihood of confusion, that Opposer has filed the required disclaimer and thus maintains proprietary rights in the service mark as a whole for the incubation services listed in the registration, such mark is distinctive, whether inherently or otherwise, and that Opposer maintains its standing to bring the opposition.

The Board then focused its likelihood of confusion inquiry on opposer’s composite mark SHARED + design. Again, the "overwhelming evidence" - including the dictionary definitions, internet excerpts explaining the nature of coworking spaces and incubators, Opposer’'s own website, third-party use of 'shared' to describe both Opposer's services and those of third-parties’ -  established that the 'shared' word portion of the composite mark "is highly descriptive, and when combined with the simple rounded square backdrop for each letter the overall mark as a whole is conceptually weak."

Considering the record as a whole, the extreme conceptual weakness of the term “shared” for incubation and coworking spaces, and that simple rounded square backdrop for each letter are on the “less distinctive part of the spectrum,” Serial Podcast, 126 USPQ2d 1075, we find that Opposer’s composite mark is appropriately placed at the lower or weaker end of the spectrum of “very strong to very weak.”

The Boare noted that 'shared' is not only the first element of applicant’s mark, but is the entire literal element of opposer’s mark. The addition of "space" to "shared" in applicant’s mark "presents the same meaning as 'shared' in Opposer’s mark (i.e., shared space is a desirable feature and defining characteristic of coworking space). Indeed, the combination of these terms makes the marks resemble each other very closely in sight, sound, connotation and commercial impression."

The Board concluded that the overall similarities in sound, meaning, and commercial impression outweigh any visual difference. It observed that "[e]ven marks that are deemed 'weak' or merely descriptive are still entitled to protection under Section 2(d) against the registration by a subsequent user of a similar mark for related services."

Because the services are in-part identical and unrestricted as to trade channels, the second and third du Pont factors favor finding that confusion is likely. The overall similarities in sound, connotation, and commercial impression between the marks outweigh their visual differences. Although Opposer’s composite mark is neither conceptually nor commercial strong, it is still entitled to protection. The factors involving the conditions under which and buyers to whom sales are made, nature and
extent of any actual confusion, and extent of the opportunity for actual confusion are all neutral. On balance, we find that the in-part identity of the services and the similarity of the marks’ commercial impressions outweigh any weaknesses in Opposer’s mark, and that confusion is likely between Opposer’s mark and Applicant’s mark .

Conclusion: The Board sustained the opposition to applicant's mark.

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TTABlog comment:

Text Copyright John L. Welch 2020.

3 Comments:

At 2:55 PM, Anonymous Anonymous said...

How is the mark SHAREDSPACE or SHARED SPACE any more distinctive than the word SHARED for these services? SHARED and SHARED SPACE are totally descriptive and should be allowed to share space on the register.

 
At 5:56 PM, Blogger Ken in Cali said...

So now an owner of a merely descriptive mark where the exclusive right to the literal portion has been disclaimed still owns the right to exclude others. It may be true that marks should be considered as a whole (including the disclaimed part) [e.g., TMEP 1213.10], but how does one find confusion when the only element common between the marks has been disclaimed?

 
At 2:45 PM, Blogger Gene Bolmarcich, Esq. said...

A great case to show to clients when trying to sell the fact that disclaimers are meaningless

 

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