TTABlog Test: Is CLINCH PICK for Knives Confusable with CLINCH DRIVE for Wrenches?
The USPTO refused to register the mark CLINCH PICK for "Military and tactical knives; fixed bladed knives" [PICK disclaimed] on the ground of likelihood of confusion with the registered mark CLINCH DRIVE for "Hand tools, namely, wrenches" [DRIVE disclaimed]. Given the disclaimers, the marks seem pretty close. What about the goods? How do you think this came out? In re Shivworks Products Group, LLC, Serial No. 88330418 (September 4, 2020) [not precedential] (Opinion by Judge George C. Pologeorgis).
Sure enough, the Board found that, although the meanings or connotations of the words PICK and DRIVE may differ, consumers are likely to place more significance on the initial and distinctive word CLINCH. Viewing the marks in their entireties, the Board found them to be more similar than dissimilar.
As to the goods, the examining attorney maintained that both applicant’s and registrant’s goods are a type of hand tool often found in the same shopping category called "KNIVES and TOOLS," as illustrated by screenshots from several online retailers. In addition, some manufacturers offer a product called a multi-tool which commonly includes knives and wrenches as components. Furthermore, he asserted, knives and wrenches are provided "as both survival and utility goods meant to be used together for a variety of projects and situations." Thus, the involved goods are similar or complementary in terms of function and therefore are related for likelihood of confusion purposes.
The Board threw a monkey wrench into the examining attorney's argument. "While the evidence submitted by the Examining Attorney . . . demonstrates that Applicant’s and Registrant’s goods travel in similar trade channels and are offered to overlapping classes of consumers, the evidence of record nonetheless is insufficient to show that a single entity provides both Applicant’s and Registrant’s goods under a single mark."
The fact that the involved goods are found under the same shopping category, “KNIVES and TOOLS,” does not necessarily show that the goods are related for likelihood of confusion purposes. "Indeed, the shopping category itself delineates the goods by identifying them separately." Moreover, neither applicant or registrant offers a multi-tool with a wrench and a knife, and in any case the multi-tool examples of the examining attorney include folding knives, not fixed blade knives.
In sum, the USPTO's evidence failed to show that the involved goods are related.
And so the Board reversed the refusal to register.
Read comments and post your comment here.
TTABlogger comment: How did you do? Do you have a fixed blade knife in your home tool box?
Text Copyright John L. Welch 2020.
posted by John L. Welch @ 9/08/2020
5 comments
5 Comments:
If you run a trademark search report for a clothing-related mark and it doesn't catch a similar mark used in connection with jewelry, then you need to reassess the search service. It should be catching that, without any doubt.
I do think there has been an uptick in 2(d) refusals where the goods are questionably related. Anyone else?
When clearing a mark for clothing, do you check jewelry marks? --> I start with a broad general search for any marks that are close regardless of class. In this case, the jewelry mark would have popped up the search. I would advise my client that jewelry and clothing are sometimes related and could be an issue. Just yesterday, gave this exact advice to a client for them to decide whether to proceed or not.
I have not been searching Class 14, but will begin. I feel there has been a huge increase in 2(d) refusals in my practice. I am having much success overcoming them, but it is a waste of client money and very frustrating.
AS the founder and former CEO of CORSEARCH I can tell you that when we searched clothing marks we always searched jewelry and leather goods because all can be worn. We had a large cosmetics company as a customer and for them, because cosmetics are "worn", we also searched clothing and leather goods. The concept of related classes is important.
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