TTABlog Test: Are These Two "MW" Design Marks Confusingly Similar for Metal Fabrication Services?

The USPTO refused to register the mark shown below left, for "Metal fabrication and finishing services for others; Machine shop services, namely, machining parts for others," finding confusion likely with the registered mark shown below right for, inter alia, "Treatment of materials, namely, treatment of metals;" "treatment and conversion of metal;" and "rental of machines and machine tools for milling, grinding and treatment of metals." The Board found the involved services to be identical in part, but what about the marks? They look pretty different to me. In re Truth Partners LLC, dba Mid State Fabricating, Serial No. 88944166 (March 29, 2022) [not precedential] (Opinion by Judge Frances S. Wolfson).

The Board found the marks to be "quite similar" in appearance, sound, connotation and commercial impression. "The only cognizable distinction between the marks is the differing stylization of the identical lettering and the differing background designs surrounding and incorporating the letters MW. These distinctions do not serve to produce a meaningful difference between them."

The Board found the letters MW to be the dominant portion or each mark. First, MW is the only pronounceable portion of the marks. Second, the literal element "is more likely than the design features to be impressed upon a purchaser’s memory and to 'be used by consumers to request the goods [or services].'" Third, the stylization of the lettering "is not so unique or unusual that it adds any meaningful distinctiveness to either mark." And fourth, the circular and hexagonal design elements of the marks are ordinary geometric shapes that serve as mere background for the lettering.

Contrary to Applicant’s argument, the fact that the letters MW are visually incorporated into the overall design of each mark does not render the marks distinguishable. “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.”

Applicant pointed to "numerous" application and registrations in Class 40 for MW-formative marks for allegedly similar goods and services. The Board pointed out, however, that applications are proof only that they were filed. Registrations have little probative value with regard to commercial strength, without evidence that the marks "are in use on a commercial scale or that the public has become familiar with them." Registrations are relevant with regard to the inherent or conceptual strength of a term "because they are probative of how terms are used in connection with the goods or services identified in the registrations." Here, however, the services set forth in the third-party registrations were unrelated to applicant’s services, and so they were of no probative value.

Finally, the Board observed that "arbitrary arrangements of letters are generally given a wide scope of protection because they are more difficult to remember than word marks. Thus, when multiple-letter marks are similar, the difficulty of remembering them makes the likelihood of confusion between them more probable." 

And so, the Board affirmed the refusal to register.

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Text Copyright John L. Welch 2022.